Castilho Leda R., Moraes Angela Maria (Ed.) Animal Cell Technology: From Biopharmaceuticals to Gene Therapy

Подождите немного. Документ загружается.

transferring the knowledge generated by university laboratories to the

market, through the development of products and/or processes. According

to the result of the sixth annual licensing survey carried out by the

Association of University Technology Managers (AUTM, 1999) of the

United States, sales of products arising from inventions generated by

academic research and licensed to industry reached roughly US$ 20.6

billion in 1996 in that country. Additionally, nearly two-thirds of these

licenses went to small companies, including biotech ﬁrms. This shows

how the biotech sector is dependent on partnerships with the academic

sector (Mu

ller, 2003).

Biotechnology ﬁrms tend to cluster around prestigious universities,

particularly in the United States, where Boston (e.g. Harvard and MIT)

and the San Francisco Bay Area (e.g. UC Berkeley, Stanford, and UC San

Francisco) are noted centers of biotech activity.

For the biotechnology industry, patent rights are important not only

because of the monopoly they guarantee, and hence the return on R&D

investments, but also in many cases they are the only ‘‘product’’ the

company possesses. Patents, then, are of vital importance to obtain ﬁnan-

cing, whether through venture capital or technology transfer agreements.

Additionally, investors look not only at the number of patents, but also

the exact knowledge that is protected and the potential value of the subject

matter of the patents (Mu

ller, 2003).

Therefore, it is fundamental for companies to have precise targets to

decide in which areas to pursue patents and in which areas to invest.

Nevertheless, in the case of new start-ups and research institutions, this

decision on what to patent is not always an easy task. Taking the shotgun

approach of seeking patents on all results can be a waste of time and

money. Establishment of a suitable policy in this respect is needed to

obtain a good ﬁnancial return.

15.3 Ethical and moral aspects of research involving genetic

engineering

Biotechnology as it is known today traces its roots to the revolutionary

research of Cohen (Stanford University) and Boyer (University of Califor-

nia-San Francisco), which resulted in the basic technology of recombinant

DNA. This was the start of molecular biology and it has become the basis

for genetic engineering.

Genetic engineering is part of biotechnology and can be considered one

of the great revolutions of the twentieth and twenty-ﬁrst centuries.

Although the exact deﬁnition of genetic engineering is a subject of debate

in scientiﬁc circles, according to Beier and Straus (1986), it can be consid-

ered as the isolation of genetic material with the aim of building new

recombinant constructs and to insert these constructs of nucleic acids into

live organisms to reproduce them in a new environment.

Genetic engineering takes in a multiplicity of new processes, among

them:

(i) processes to obtain recombinant DNA in vitro, which basically

occurs in four steps: isolating the gene of interest; inserting it into a

374 Animal Cell Technology

vector to obtain a gene transport vehicle, known as a recombinant

vector; separation of the successfully ‘‘constructed’’ cells from those

not transformed, called clone selection; and ﬁnally the proliferation

of these cells, normally through a culture process to synthesize the

product of interest;

(ii) processes to produce monoclonal antibodies (mAbs) with the use of

hybridomas; through fusion of lymphocytes that produce antibodies

with myeloma tumor cells capable of propagating rapidly;

(iii) hybridization processes using somatic cells, which are based on cell

culture experiments and use isolation and fusion of protoplasts,

exploiting the totipotency of plant cells; and

(iv) micro-injection processes, in which DNA sequences that have been

cloned in vitro through recombinant DNA technology are injected

into fertilized animal egg cells.

Examples of the products that can be obtained through the processes

include: DNA vectors, such as plasmids, viruses, bacteriophages and

cosmids; synthetic genes; transformed human viruses (e.g. the Epstein–

Barr virus); transformed bacterial cells containing speciﬁc properties; ani-

mal and plant cells and bacteria; mAbs, tissue cells; regulatory proteins

such as human insulin, interferons and human growth hormones; and

transgenic plants and animals.

Public perception of this technology includes admiration and anxiety,

hope and fear and this can interfere with progress. Nevertheless, despite all

the expectations created by genetic engineering, which range from cures

for various diseases to the ﬁght against hunger, the public debate in recent

years has been dominated by its acceptability and questions on who is

responsible for imposing limits. Is it scientists, guided by their own

conviction, or should politicians and law-makers intervene? In reality, the

entire discussion should be centered on how genetic engineering can

promote scientiﬁc and technological development in the search for bene-

ﬁts to society. The debate is perfectly understandable because it deals with

a new ﬁeld, one that like any new technology has been the subject of

misunderstandings and misapprehensions, and still needs some provisional

limits.

In the area of law, economic questions are dominant and the debate on

genetic engineering centers on the balance of beneﬁts between interest

groups. However, safety and minimization of risks are important, as well

as ethical and moral criteria.

In the attempt to promote technical, economic, and scientiﬁc develop-

ment, society uses a special legal instrument, based on patent protection of

inventions. Innovation is recognized by granting exclusive rights for a

limited period. The inventor is rewarded for having achieved results that

are useful to society. Industry, in turn, is encouraged to conduct research.

The patent system is aimed to encourage invention, investment, and

innovation. This promotes knowledge by revealing and disseminating

inventions, which are protected for a ﬁxed period of time from unfair

competition.

The central goal is to promote technology, not to regulate it. However,

the patent system does not promote technological progress and grant

Intellectual property 375

temporary monopolies to all inventions just because they meet the basic

requirements for patentability (novelty, inventive step, and industrial

application). Despite being essentially an instrument of economic and

technical policy, the patent system is subject to the barriers inherent in the

legal system, imposed by constitutions, public policies, and moral percep-

tions. These barriers are set forth in the legislations of virtually all

countries, Brazil included. According to Article 18, I, of the Brazilian

Industrial Property Law (Law 9.279/96), the following are not patentable:

‘‘anything contrary to public morality, decency, safety, order and health’’.

Nevertheless, it should be clariﬁed that innovations are subject to the

general rule that the legal and moral effects of an invention must always be

judged in relation to the use normally expected of the patented product or

process, not just the possibility of misuse. For example, a speciﬁc product

that can be legally used as a pesticide is not excluded from patentability

simply because it can also be used in chemical warfare.

The Enlarged Board of Appeal of the European Patent Ofﬁce made the

following comments when questioned about a recent case involving

transgenic plants (Novartis G 0001/98), in relation to Article 53(a) of the

European Patent Convention (EPC), which establishes that inventions

that are contrary to public morality and customs are not patentable:

‘‘Suppose that a claimed invention deﬁned a copying machine with

features resulting in an improved precision of reproduction and

suppose further that an embodiment of this apparatus could comprise

further features (not claimed but apparent to the skilled person) the

only purpose of which would be that it should also allow reproduction

of security strips in banknotes strikingly similar to those in genuine

banknotes. In such a case, the claimed apparatus would cover an

embodiment for producing counterfeit money which could be consid-

ered to fall under Article 53(a) EPC. There is, however, no reason to

consider the copying machine as claimed to be excluded since its

improved properties could be used for many acceptable purposes’’.

The same principle applies to inventions related to genetic engineering.

Thus, the transfer of exogenous genes by micro-injection, a process

frequently employed in genetic engineering, is not excluded from protec-

tion just because it can be used to transfer genes to human germ cells

(Beier and Straus, 1986).

15.4 Basic concepts of patentability

15.4.1 Discovery versus invention

Discoveries and inventions are increasingly the result of research. But

while discoveries are not protected by industrial property or in any other

form, and can be known and used freely by all, inventions (and so-called

utility models) are protected by patents and their use is restricted: free for

use in research and development, but not for industrial production with-

376 Animal Cell Technology

out the owner’s authorization. This is a universally accepted concept, and

is in general stated explicitly in national laws.

A discovery is the revelation of something that exists in nature, does not

aim at pre-established practical purposes, and only increases the sum of

human knowledge of the physical world. In contrast, an invention is a

solution to a technical problem that seeks to satisfy predetermined ends

and practical needs. It can be said that discovery is not the inventive spirit

that acts, but the speculative spirit and the faculties of observation, so that

with a discovery we are in the ﬁeld of science and speculative intellect,

while with invention we penetrate the domain of engineering and practical

intellect (Gama Cerqueira, 1982).

However, American patent legislation differs from others, since it

explicitly provides for the possibility of protecting discoveries:

35U.S.C. 101 – Inventions Patentable

Whoever invents or discovers any new and useful improvement

thereof, may obtain a patent therefore subject to the conditions and

requirements of this title.

15.4.2 Requirements for the patentability of inventions

The basic requirements of national laws on protection of inventions by

patents are novelty, inventive step, and industrial application, which are

now examined in turn.

Novelty

An invention possesses novelty when the technical knowledge for which

the patent protection is sought is not included in the state of the art. Not

in the state of the art is usually deﬁned as all the information not available

to the public, in any form of disclosure – oral, written, digitized, use/

exploitation, among others – at the time of ﬁling the patent application.

Absolute novelty is adopted by most countries, meaning that which has

not been disclosed anywhere in the world.

Some countries have legal provisions accepting the disclosure of the

innovation before seeking protection, as long as the patent application is

ﬁled within a reasonable period that is predeﬁned in law. This ranges from

6 months (e.g. Japan) to 1 year (e.g. Brazil and the USA). This term is

called the ‘‘grace period.’’

In Brazil, the safeguard of the rights of inventors, who are often obliged

in some form to disclose their inventions or creations before ﬁling a patent

application, is established in the Industrial Property Law, Article 12, I to

III (inventions and utility models), and Article 96, § 3 (registration of

industrial designs). The provisions of Article 12 are as follows:

Article 12 – The disclosure of an invention or utility model occurring

during the 12 (twelve) months preceding the ﬁling date, or priority

date, of the application shall not be considered to be comprised in the

state of the art if made:

Intellectual property 377

I – by the inventor;

II – by the National Institute of Industrial Property [Instituto

Nacional de Propriedade Industrial – INPI], through ofﬁcial publica-

tion of an application ﬁled without the consent of the inventor, based

on information obtained from the inventor or as a result of his acts; or

III – by third parties on the basis of information obtained directly or

indirectly from the inventor or as a result of his acts.

Sole Paragraph – The INPI may require from the inventor a

statement relating to the disclosure, accompanied under the conditions

established in the regulations.

In spite of the positive aspect conferred by the grace period, it must be

noted that not all countries accept this provision or similar procedures.

Therefore, even though this possibility exists in Brazil, the ﬁling in other

countries that do not accept previous disclosure (the majority of European

countries, for example) can be prejudiced. Hence, even in Brazil disclosure

before ﬁling a patent application should be avoided.

An interesting example of a case concerned with novelty can be cited

from Decision T 301/87 (Interferon Æ/Biogen) by the Opposition Division

of the European Patent Ofﬁce, in a case involving a patent granted to

Biogen (EP 0321 134), where nine opponents requested its cancellation for

lack of novelty (OJ EPO. 1990, 335).

The two main claims are as follows:

(1) A recombinant DNA molecule for use in cloning a DNA sequence in

bacteria, yeasts and animals cells, said recombinant DNA molecule

comprising a DNA sequence selected from:

(a) The DNA inserts of :

Z-pBR322(Pst)/HClF-4c;

Z-pBR322(Pst)/HClF-2h;

Z-pBR322(Pst)/HClF-SN

;

Z-pBR322(Pst)/HClF- SN

Z-Pkt287(Pst)/HClF- 2h- AH6, said DNA inserts being

exempliﬁed, but not limited to the DNA inserts of the

recombinant DNA molecules carried by the microorganisms

identiﬁed by accession numbers DSM 1699-1703, respectively;

(b) DNA sequences which hybridize to any of the foregoing DNA

inserts and which code for a polypeptide of the IFN-alpha type,

and

code to the DNA sequences and inserts deﬁned in (a) and (b) and

which code for a polypeptide of the IFN-alpha type.

(2) A recombinant DNA molecule according to claim 1, wherein said

DNA sequence which hybridizes to said DNA insert (a) is selected

from:

(d) the DNA inserts of Z-pBR322(Pst)/HcIF-II-206 and Z-

pBR322(Pst)/HcIF-SN35-AHL6, said DNA inserts being

378 Animal Cell Technology

exempliﬁed, but not limited to, the DNA inserts of the

recombinant DNA molecules carried by the microorganisms

identiﬁed by accession numbers ATCC 31633–31634,

respectively,

(e) DNA sequences which hybridize to any of the foregoing DNA

inserts and which code for a polypeptide of the IFN-alpha type,

and

(f) DNA sequences which are degenerate as a result of the genetic

code to the DNA sequences and inserts deﬁned in (d) and (e) and

which code for a polypeptide of the IFN-alpha type.

According to the opponents, the main argument against granting a

patent was the lack of novelty of the recombinant DNA sequences

claimed, which included the DNA sequences that coded interferon-alpha

(IFN-alpha) as an insert. This prior art referred to DNA genome libraries,

which are fractioned segments (15–20 Kb) of chromosomal DNA of

human fetuses, cloned as derivatives of recombinant º phages.

However, the opinion of the Technical Board of Appeal was that the

prior art cited by the opponents did not compromise the invention’s

novelty, observing that:

‘‘... the mere existence of a DNA sequence coding for a polypeptide

of the IFN-alpha type, within the multitude of clones of ‘‘Lawn’s

gene bank’’ cannot automatically mean that the chemical compound

(polynucleotide) concerned does become part of the state of the art.

The latter would only then be the case if the existence of the com-

pound concerned had recognizably been made publicly available’’.

Hence, according to the Technical Board of Appeal, DNA or genome

libraries of an organism do not anticipate the novelty of the DNA

sequences contained in and isolated there from.

Inventive step

To meet this requirement, an invention may not be obvious in the sense

that the idea would not have occurred to a specialist in the ﬁeld to which

the creation pertains if that specialist were called on to ﬁnd a solution to

the problem resolved by the creation. In other words, the matter to be

protected cannot be a simple substitution of matters or means known by

others who have conceived the same function, nor a mere combination of

known means without a new and unexpected technical effect.

As an example, suppose that it is known to experts in the ﬁeld that an

extract from the plant Clusia criuva has anti-inﬂammatory activity. There-

fore, a specialist in the subject would be led to test other species of the

genus Clusia for the same biological activity (anti-inﬂammatory). Never-

theless, a way to prove inventive step would be to demonstrate that the

species of interest, for example Clusia rosea, presents an unexpected

technical effect. In other words, while the species Clusia criuva has an

undesirable side effect associated with its anti-inﬂammatory action, such

Intellectual property 379

as harm to the intestinal mucous, Clusia rosea does not have this disadvan-

tage, and thus can meet the requirement of inventive step.

The stance of the European Patent Ofﬁce in general is to consider as

indicative of the presence of the inventive step the existence of surprising

or superior properties, which could not be anticipated by persons skilled

in the art. In the case of a new protein, for instance, this might be fewer or

less severe side effects, better absorption, or greater stability.

The same reasoning can be applied to the inventive activity involving

antigens and antibodies. If the antigen is new and has an inventive step

because of surprising properties, then it is patentable. The same goes for a

mAb directed against a patentable antigen, since it is new and a person

skilled in the art would not have found any suggestion of obtaining it. If

on the other hand the antigen (or antiserum) is known, a person skilled in

the art would be capable of preparing mAbs against the antigen, without

difﬁculty, based on his or her technical knowledge. A particular mAb will

be new in this case, because it has not been described in the state of the art,

but will lack an inventive step to the extent that an average specialist in the

ﬁeld could obtain it based on knowledge of the antigen.

However, even if an antigen is known, a speciﬁc mAb could still show

an inventive step as long as it presents a superior property when compared

to other antibodies directed against the same antigen. This superior

activity can be evidenced, for example, by the fact that the mAb has a

complementary structure to an essential epitope (antigenic determinant) of

the antigen’s surface, and thus exhibits exceptional binding properties to

the antigen. The use of this speciﬁc mAb might offer surprising advantages

in diagnosing and/or treating a disease caused by the antigen. The selection

of this speciﬁc mAb, starting from a large number of antibodies aimed

against the same antigen, but possessing diverse epitopes, justiﬁes the

existence of inventive activity.

The claim for a speciﬁc mAb, however, will be inevitably restricted. The

surprising technical effect required to establish the presence of an inventive

step imposes limits on the possibilities of generalizing the invention, that

is, the scope of protection.

It should be pointed out that in cases of mAbs, the complex structures

of the corresponding genes, which lead to a vast number and variety of

antibodies, generally mean it is impossible to isolate a single mAb a second

time, so as to satisfy the capacity for repetition. A complete revelation of

the invention to permit it to be repeated – as in the case of a new organism

isolated from nature – can only be guaranteed by depositing the hybrid-

oma producing the speciﬁc mAb with an internationally recognized

depositary authority (IDA) before ﬁling the patent application.

Tables 15.1 and 15.2 summarize the requirements for novelty and

inventive step for patentability of DNA sequences and mAbs.

Industrial application

An invention must have a use in economic or industrial production. The

term ‘‘industrial’’ is used in the broad sense to cover both products and

processes, including any economic activity that involves obtaining pro-

ducts in varied sectors besides industry per se, such as agriculture, ﬁshing,

380 Animal Cell Technology

and mineral extraction, as well as any equipment, instruments or apparatus

used in these endeavors.

In addition to the above three requirements, inventors must also clearly

and completely describe the invention. This is called sufﬁciency of

disclosure. The speciﬁcation of a patent application must clearly and

sufﬁciently describe the subject matter, so that it can be carried out by a

skilled person in the subject. Some countries (such as Brazil and the

United States) also require an indication, when applicable, of the best way

of executing the invention, called the best mode of the invention.

Europe does not have the best-mode requirement in the European

Patent Convention, meaning the applicant is not obliged to deposit bio-

logical material merely with the intent of allowing reproduction of the

invention. Rule 28(1) of that convention cannot be interpreted as obliging

the deposit of biological material to facilitate reproducing the invention, as

long as it can be reproduced from the description (even if this route is

more laborious and lengthy than simply growing the deposited material).

Such an interpretation would be to introduce the best-mode requirement

into European legislation (T 223/92 and T 412/93). It should be pointed

out, however, that in opting not to deposit the biological material, the

applicant should be sure to provide complete information on the material.

There are cases where the European Patent Ofﬁce’s Technical Board of

Appeal, after carefully examining an invention’s description, has indicated

that the information supplied in the application was sufﬁcient to permit a

person skilled in the art to reproduce the invention, even in the absence of

a deposit of the biological material (T 283/86 and T 181/87). In other cases,

Table 15.1 Patentability of DNA sequences that codify a speciﬁc protein

Protein Protection of any

DNA sequence

Protection of a speciﬁc

DNA sequence

Novelty Inventive step Novelty Inventive step

New + + + +

Known – – + +

Table 15.2 Patentability of monoclonal antibodies (mAbs) corresponding to

an antigen

Antigen Protection of any

monoclonal antibody

Protection of a speciﬁc

monoclonal antibody

Novelty Inventive step Novelty Inventive step

New ++ ++

Known – – + +

Deposit of the

hybridoma

Deposit in an IDA not

necessary

Deposit in an IDA necessary

IDA, international depositary authority.

Intellectual property 381

however, the Tribunal has considered the description insufﬁcient (T 815/

90 and T 816/90).

In the case of inventions involving new biological materials that cannot

be described so as to permit repetition of the invention by a skilled person,

it is necessary for the applicant to deposit this material with a depositary

institution indicated in an international convention.

The requirement of descriptive sufﬁciency is covered by Article 24 of

Brazil’s Industrial Property Law, which reads:

Article 24. The description shall clearly and sufﬁciently describe the

subject matter, thus enabling it to be carried out by a person skilled in

the art, and shall where appropriate indicate the best manner of

execution.

Sole Paragraph – In the case of biological material essential for

carrying out the subject matter of the application, which cannot be

described in accordance with this article and which is not accessible to

the public, the description shall be supplemented by the deposit of the

material with an institution authorized by the INPI or referred to in

an international agreement.

15.5 Patentable materials

Under the terms of Article 8 of the Brazilian Industrial Property Law,

patentable inventions are those that have the three basic requirements of

novelty, inventive step, and industrial application. Additionally, from

Article 50, II, if the speciﬁcation does not clearly and sufﬁciently describe

the subject matter so as to enable its reproduction by a technician in the

subject, the so-called sufﬁciency of disclosure, it is against the provisions

of Article 24, and is thus not accepted (Art. 50, II).

Article 10 of that law establishes what may not be considered an

invention or utility model, and for this reason is expressly excluded from

patent protection. According to article 10 (IX) the following is not consid-

ered as an invention or utility model:

‘‘all or part of natural living beings and biological materials found in

nature, or isolated there from, including the genome or germ plasma

of any natural living being and the natural biological processes.’’

Therefore, Brazil does not yet grant patents to extracts and active

ingredients from plants. It does grant use patents, that is, in the form of a

pharmaceutical composition, for example, that contain the extract or active

ingredient(s). However, this practice of granting patents for extracts and

molecules taken from plants is common internationally.

It should be stressed, then, that since patents in this area are being issued

in other countries, such as the United States and various European

countries, it is advisable to evaluate the territory suitable for seeking

protection.

Table 15.3 presents a list with examples of materials considered patent-

able and non-patentable under Article 10, IX, and Article 18, III, of the

382 Animal Cell Technology

Brazilian Law 9279/96. According to the latter provision, all or part of

living things are not patentable, except transgenic microorganisms that

meet the three patentability requirements (novelty, inventive step, and

industrial application) set forth in Article 8 of the law and that are not

mere discoveries.

Scientiﬁc advances have permitted the industrial employment of geneti-

cally modiﬁed microorganisms or cells, capable of producing proteins of

interest in various areas, particularly human health. This technology

permits reproducing proteins identical to their natural counterparts, as

well as to elaborate others that are totally new by alterations resulting

from the insertion of genes into these microorganisms or cells. These

genetically modiﬁed molecules can be more effective than the natural ones

for a predetermined function, for instance through greater biological

activity, longer average lifetimes or fewer or less serious side effects.

Before the advent of the current Law 9.279/96, pharmaceutical products

were not eligible for patent protection in Brazil (under the former

Industrial Property Code, Law 5.772/71). With the new possibility of

patenting pharmaceuticals, the huge advance in biotechnology and genetics

in recent decades has led to the development of a new and important

segment in the chemical-pharmaceutical industry: biopharmaceuticals.

Libraries of new compounds from animals, plants, fungi, bacteria, and

viruses, which provide additional alternatives to chemical processes and

creation of a multiplicity of novel molecules, can be seen.

These advances have brought ethical, economic, and legal implications

to the granting of patents for all or parts of living things, even if genetically

modiﬁed. This has led many countries, among them Brazil, to establish

Table 15.3 Patentable and non-patentable material according to Article 10, IX, and Article 18,

III, of the Brazilian Industrial Property Law

Patentable inventions Non-patentable inventions

Processes related to transformation of plants

Recombinant genes

Transgenic microorganisms*

Expression vectors that carry genes that codify

human insulin isolated or puriﬁed from human

pancreas beta cells

Escherichia coli transformed by such expression

vectors

Processes for production of human insulin involving

the culturing of those transformed E. coli bacteria

Recombinant proteins

Mutants obtained by genetic modiﬁcation of such

recombinant human insulin

Hybridomas that produce antibodies able to

recognize antigen A

Pharmaceutical compounds containing extracts

isolated from plant Y for treating disease Z

Plant and animal cells

Seeds

Human insulin isolated or puriﬁed from human

pancreas beta cells

Genes that code for human insulin isolated or

puriﬁed from human pancreas beta cells

Yeasts isolated or puriﬁed artiﬁcially from nature

Microorganisms isolated or puriﬁed artiﬁcially

from nature and that produce an antibiotic X

Antibiotic X produced by such microorganism

Human hepatocyte Y

Human liver tissue Z

Extracts isolated from plant Y

*For the purposes of Law 9279, transgenic microorganisms are those (except all or part of plants or animals) that

express, through direct human intervention in their genetic composition, a characteristic normally not attainable by

the species in natural conditions.

Intellectual property 383