Today, the Federal Circuit affirmed a decision by the Board of Patent Appeals and Interferences holding that in an interference between Pioneer Hi-Bred International's U.S. Patent No. 6,258,999 and Monsanto Technology's U.S. Application No. 11/151,700, Monsanto was not time-barred under 35 U.S.C. § 135(b)(1) and Monsanto's '700 application claims were entitled to seniority.
Pioneer's '999 patent, which issued on July 10, 2001, claims the benefit of U.S. Application No. 07/205,155, which was filed on June 10, 1988. Claim 1 of the '999 patent recites:
1. A fertile transgenic Zea mays plant comprised of stably incorporated foreign DNA, wherein said foreign DNA consists of DNA that is not from a corn plant and that is not comprised of a T-DNA border.
Monsanto's '700 application, which was filed June 13, 2005, claims the benefit of U.S. Application No. 07/467,983, which was filed on January 22, 1990. Claim 1 of the '700 application recites:
1. A fertile transgenic Zea mays plant containing heterologous DNA which is heritable, wherein said heterologous DNA confers a beneficial trait to the plant, wherein said beneficial trait is selected from the group consisting of pest resistance, stress tolerance, drought resistance, disease resistance, and the ability to produce a chemical, wherein the plant expresses a selectable marker gene, and wherein the plant is from a subsequent generation of a plant that is re-generated from a selected transformed cell.
Following the Board's declaration of an interference between all of the claims in Pioneer's '999 patent and twelve claims in Monsanto's '700 application, Pioneer moved for judgment, arguing that the claims of the '700 application were time-barred under § 135(b)(1). That section states that:
A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.
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