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78 J. Pat. & Trademark Off. Soc'y 121 (1996)
Patenting Gene Sequences

handle is hein.journals/jpatos78 and id is 135 raw text is: Patenting Gene Sequences Diana Sheiness* I. INTRODUCTION T hose pursuing biotechnology patents cannot always determine how best to present their inventions to the Patent and Trade Office (PTO). Except for the recent guidelines regarding utility, this relatively new area of technical innovation has received little direct guidance from the PTO. Consequently, practitioners must rely largely on their own experience in determining how to organize their presentations to ensure a favorable reception. In an attempt to discern what, if any, specific rules might govern the PTO's treatment of certain biotechnological subject matter, this pa- per analyzes the scope of claims found in a selection of issued patents accessed through Lexis.1 The primary group of patents analyzed here each included claims to segments of deoxyribonucleic acid (DNA) con- taining information sufficient to encode a functional protein or protein domain. I. DNA IS NOT A TYPICAL CHEMICAL A. The Basics of DNA Although DNA is a type of chemical compound, its structure en- compasses a biological language whose properties belie the dictum that the scope of claims should usually be confined to the exact structures revealed in the specification. The commercially exploitable properties of most ordinary chemicals generally reflect a particular unique molec- ular structure, and properties of such chemicals may vary dramatically if even one atom is altered. But this view is not always appropriate when applied to biological molecules. Of particular importance to bi- * The author received her Ph.D. in cellular biology from Columbia University in 1974, and has conducted research in both academic and industrial settings. She received her J.D. degree from the University of Washington in 1995, and currently is an associate at Christensen O'Connor Johnson & Kindness in Seattle, Washington. The author wishes to thank Prof. Donald Chisum of the University of Washington and Thomas Broderick of Christiansen O'Connor Johnson & Kindness for providing indispensable support for this project. Copyright, 1995. 1 The data presented in this paper were not subjected to statistical analysis.

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