Ingenious e-Brain Solutions, an Intellectual Property (IP) management specialist has recently published a white paper on impact of claiming long sequence listings in patent applications.
The paper is a study of patents/patent applications with long biological sequence listings at the USPTO. Our study reveals that most of the key biotechnology and pharmaceutical companies ranging from innovative startup companies to Fortune 500 companies file patent applications with claimed long sequence listings (large numbers of sequences). Long sequence listings impart negative impact on patent term by increased number of office actions and decrease probability of grant. In approximately 95% of cases, long sequence listings are reduced during prosecution and only less than 100 sequences are present in the claims of the granted patents. Roche filed approximately 1,292 US patents/ patent applications with claimed long sequence listings in the decade 2001- 2010. Out of which, 977 patent applications are abandoned and 312 are granted. In all the granted patents, the numbers of claimed long sequences are reduced to less than 100 after prosecution. The paper highlights the key implications of filing patent applications with claimed long sequence listings at the USPTO and makes recommendations to overcome them.
The paper can be accessed at http://www.ingeniousebrainsolutions.com/wp-content/uploads/2012/07/....
We hope the information provided in the paper will help you align sequence claiming strategies with the prosecution strategies at the USPTO.