The OncoMouse or Harvard mouse is a type of laboratory mouse that has been genetically modified using modifications designed by Philip Leder and Timothy A Stewart of Harvard University to carry a specific gene called an activated oncogene (v-Ha-ras under the control of the mouse mammary tumor virus promoter). The activated oncogene significantly increases the mouse’s susceptibility to cancer, and thus makes the mouse suitable for cancer research. The rights to the invention were owned by DuPont until recently. The USPTO found that the patent expired in 2005, which means that the Oncomouse is now free for use by other parties (although the name is not, as "OncoMouse" is a registered trademark).
In Canada, the Supreme Court in 2002 rejected the patent in Harvard College v. Canada (Commissioner of Patents), overturning a Federal Court of Appeal verdict which ruled in favor of the patent. However, on 7 October 2003, Canadian patent 1,341,442 CA 1341442 was granted to Harvard College. The patent was amended to omit the "composition of matter" claims on the transgenic mice. The Supreme Court had rejected the entire patent application on the basis of these claims, but Canadian patent law allowed the amended claims to grant under pre-GATT rules and the patent remains valid until 2020.
Europe (through the EPO)
European patent application 85304490.7 was filed in June 1985 by "The President and Fellows of Harvard College". It was initially refused in 1989 by an Examining Division of the European Patent Office (EPO) among other things on the grounds that the European Patent Convention (EPC) excludes patentability of animals per se. The decision was appealed and the Board of Appeal held that animal varieties were excluded of patentability by the EPC (and especially its Article 53(b) EPC), while animals (as such) were not excluded from patentability. The Examining Division then granted the patent in 1992 (its publication number is EP 0169672 ).
The European patent was then opposed by several third parties, more precisely by 17 opponents, notably on the grounds laid out in Article 53(a) EPC, according to which "inventions, the publication or exploitation of which would be contrary to "ordre public" or morality are excluded from patentability. After oral proceedings took place in November 2001, the patent was maintained in amended form. This decision was then appealed and the appeal decision was taken on July 6, 2004. The case was eventually remitted to the first instance, i.e. the Opposition Division, with the order to maintain the patent on a newly amended form. However, revocation of the patent was eventually published on August 16, 2006, more than 20 years after the filing date (the normal term of a European patent under Article 63(1) EPC), for failure to pay the fees and to file the translations of the amended claims under Rule 58(5) EPC 1973.
In 1988, the United States Patent and Trademark Office (USPTO) granted U.S. Patent 4,736,866 (filed Jun 22, 1984, issued Apr 12, 1988, expired April 12, 2005) to Harvard College claiming “a transgenic non-human mammal whose germ cells and somatic cells contain a recombinant activated oncogene sequence introduced into said mammal…” The claim explicitly excluded humans, apparently reflecting moral and legal concerns about patents on human beings, and about modification of the human genome. Remarkably, there were no US courts called to decide on the validity of this patent. Two separate patents were issued to Harvard College covering methods for providing a cell culture from a transgenic non-human animal (U.S. Patent 5,087,571; filed Mar 22, 1988, issued Feb 11, 1992, expired Feb 11, 2009) and testing methods using transgenic mice expressing an oncogene (U.S. Patent 5,925,803; filed Sep 19, 1991, issued Jul 20, 1999, expires July 20, 2016). The patent has been found to expire in 2005 by the USPTO. Dupont is currently bringing suit in the Eastern District of Virginia.
- European Patent Register entry for European patent no. 0169672, under "Inventor(s)". Consulted on February 22, 2008.
- Trademark: USPTO serial number 75797027
- Crouch, Dennis (September 18, 2012). "Harvard’s US OncoMouse Patents are All Expired (For the Time Being)". Patently-O. Retrieved 21 April 2013. "For now, however, it appears that the mice are finally free although their title (OncoMouse) is still a registered trademark owned by DuPont"
- EPO board of appeal decision T 19/90 of October 3, 1990.
- EPO board of appeal decision T 315/03 of July 6, 2004.
- Crouch, Dennis (September 18, 2012). "Harvard’s US OncoMouse Patents are All Expired (For the Time Being)". Patently-O. Retrieved 21 April 2013.
- Sharples, Andrew (April 2003). "The EPO and the Oncomouse: good news for whales, giraffes and patent examiners". CIPA Journal.