[DIYbio] Fwd: Re:Protein Paintbox, the BPA-Licensed set, and Patents

Remarkably fast turnaround, will be thanking and asking for more clarifications. I'm intrigued that they see the BPA/L as transferring "ownership".

Busy just now, looking forward to discussing later..seems good but bothered by the patent and how they see it interacting with commercial users who slip up with the BPA/L's more unusual demands and loses protection from attack.

Cathal,

Your email bounced around here a bit and ended up with me.  Hope I can address your concerns.

1 - The three BPA-licensed proteins are not included in DNA2.0's Protein Paintbox because we have donated them BioBricks and no longer own them.

2 - Again, we do not include the BPA-licensed proteins in DNA2.0's IP Statement because those proteins now are BioBricks' property.

3 -  Please direct this question directly to BioBricks.  We can not comment on their behalf.

4 - We clarify this point in Section 10 of our Terms & Conditions (https://www.dna20.com/company/terms-and-conditions): "DNA2.0 has filed for US patent protection for certain fluorescent and chromogenic proteins.  DNA2.0 does not intend thereby to assert any patent rights in the IP-Free proteins, including IP-Free proteins as to which such patent protection may be granted, against any CUSTOMER in a manner inconsistent with these Terms & Conditions."  Our intent in filing is to assert and maintain freedom to operate in the field for ongoing and future R&D. 

5 - Your question whether there is "something amiss" with the three BPA-licensed proteins does, in fact, reflect a misunderstanding.  We don't sell the proteins because we've donated them to Biobricks for the community to use; thus, they're no longer ours to sell.

6 - Similarly, your reference to DNA2.0 litigation also reflects a basic misunderstanding.  Of course, like all commercial entities, DNA2.0 reserves the right to litigate against anyone for any legitimate reason, including for infringement and other IP-related claims -- but that basic commercial fact is neither related to our decision to donate the proteins to Biobricks nor an indication on how we might protect our IP interests in future.  In any event, it's certainly not something that should keep you (or anyone else) awake at night.

7 - Your question on hints of IP-litigation is unclear to me and certainly a misunderstanding. Three proteins are donated to BioBricks and fall under their legal agreements. The rest are owned by DNA2.0 and fall under our legal agreements. Seems fairly transparent to me, but happy to elaborate further if any concern.

I hope this helps.  Please let me know if you have further questions or concerns.

Sincerely,

/Claes

Claes Gustafsson, PhD.
Founder, Chief Commercial Officer
DNA2.0 Inc - www.DNA20.com
1140 O'Brien Drive, Menlo Park, CA 94025

cgustafsson@DNA20.com
1.650.853.8347, ext 1013 (Office)
1.877.DNA.TOGO (Toll free)

-------- Original Message --------

Subject:	Protein Paintbox, the BPA-Licensed set, and Patents
Date:	Tue, 16 Jul 2013 17:26:26 +0100
From:	Cathal Garvey <cathalgarvey@cathalgarvey.me>
To:	info@DNA20.com

-----BEGIN PGP SIGNED MESSAGE-----  Hash: SHA1    Hello DNA2.0,    I, like many in the biotech community, was excited to see that DNA 2.0  had decided to place three fluorescent proteins under the somewhat  permissive "Biobrick Public License" (BPL), which provided an  irrevocable agreement never to assert intellectual property "rights"  over the three sequences in the license document:  https://biobricks.org/bpa/contributions/60/    However, on inspection of that document and the documentation of the  "Protein Paintbox" on DNA 2.0's site:  https://www.dna20.com/products/protein-paintbox  ..as well as the attendant "Intellectual Property Statement":  https://www.dna20.com/wp-content/uploads/2013/04/Intellectual_Property_Statement.pdf  ..I have some questions which are, to me, crucial to my decision on  whether or not to use and advance the usage of the BPL-licensed set.    I was hoping, then, that you might be able to offer some answers in  relation to these uncertainties, so that I can share these answers  with others in my cohort and community. To that end and to provoke  constructive discussion on the important and contentious matter of  Intellectual Property in biotechnology, I am CCing this mail to some  of these community mailing lists, and may publish it later on a Blog  or a similar medium.    1) Absence of the BPA licensed set in the "Protein Paintbox"  As the three BPA licensed proteins are, at least by name, not included  in the paintbox, they would seem not to inherit any warranties or  commercial guarantees applied to the paintbox; why are they not included?    2) Absence of warranty in the "Intellectual Property Statement"  As the three proteins in the BPA license document do not appear in the  Protein Paintbox documentation, they also do not appear in the  "Intellectual Property Statement", which asserts that DNA 2.0 is not  aware of any Patents covering certain proteins (though seemingly not  all) in the "Paintbox".    3) Ambiguity in the BPA license Text Regarding Third Party Patents  Further, the BPA license only seems to include a section asking about  "Intellectual Property" held by the contributor, in this case DNA 2.0,  but does not make a strong point of demanding disclosure of known  third-party monopolies held over the licensed sequences.    4) Anomalous Patent Number in BPA License Text  Finally, a patent number is included in that BPA license section, but  the number does not turn up any search results; either it is in error,  or it is a pending patent; in that case, was the patent application  made before BPA licensing was decided upon, or is there some other  reason why BPA licensed DNA should be patented?    Given that DNA 2.0 does not appear to sell or distribute the licensed  protein subset, it would appear that there is something amiss with the  three proteins chosen for BPA licensing; is this fear warranted, or  merely a misunderstanding?    Also, considering that the DNA 2.0 definition of "IP-Free" appears to  mean "Indemnification of customers from litigation", but not  "Irrevocable indemnification of any and all users from litigation"  (which would be the traditional interpretation), some additional  questions arise:    The BPA provides irrevocable indemnification for those who are in  strict adherence to the BPA, but would DNA 2.0 consider litigation  against a person who, through negligence OR deliberate action,  violated BPA license terms, such as the term requiring the BPA logo to  be attached to everything associated with the licensed sequences?    Does the BPA licensing of only a small subset of the Paintbox provide  some hints as to the intended treatment of the other Paintbox  proteins, IP-litigation wise?    Apologies for the extensive questioning; I would personally love to  make use of the BPA licensed set of proteins if I felt I were safe in  doing so from litigation from third parties, and that the freedoms I  expect from "Open Source Biotech" are in fact guaranteed. However, due  in part to the existence of patents in the biotechnology sector, and  to ambiguities in the BPA license itself, I feel it is necessary to  clarify prior to committing time and money to such a project.    Yours Sincerely,  Cathal Garvey  -----BEGIN PGP SIGNATURE-----  Version: GnuPG v1.4.11 (GNU/Linux)  Comment: Using GnuPG with Thunderbird - http://www.enigmail.net/    iQIcBAEBAgAGBQJR5XQyAAoJEL0iNgSYi5CZi9QQALuBLbDbyN9eUa0qB1hHqVDu  su3AINnDeQ1Yh0FKz74fC1yl3fNTSVo25fwGB8Ajy9wcrAJHlIJnxzaf5TPvtS1d  k9fVXhb07CViXd80f5W8NpI/VH/uXjmsSLiaohZ+m5yZ4zIlZQ/fF+An0zt+HokD  g6wbVwiGJW094Vq+wuhfK2wkk1rgKU7Dw4en4B4Ctp9JJcj4CXieK2gzM+r/pe/i  v/7S0c92iMJO52Yev95kVmcY2u4Y4nMpI61HFaBU1Q5tjAkUX/J/C8cxWVs6x2FZ  lwZGgrVAxEs/Y8sTZVwQ7AzYHxaOUWp0ocpi2BzvbQwbxvesrZHQIMrUD7k4tcjx  4JtU+qIg1V0k4esxcTScP3wEUqiJgxII+xx/VdT6cm2eT94ztkiIZmvGPMpFBtSl  ayDrDoyTG7LYEYoESN8U3ODedEc/J0HyGdbknRS3j8BLwUoyMwTAm56flBTp7oA0  Dzta6T/zWHLEkXR5pDethFpS+dIq08l21ONSeyTcil40IWsTsVx6349WdQua0rEY  iLKlyLV/Ur2fzPJIKevT1qX5cj5T46Ykha5kryPj8wUMFbZ1xSmlGqZjOIFpFEGw  zN9oSXo5SJzJEo90Ms++r3+mLo8xzAKp+JebFLtQOWYeHHD7R0Wo+cHS4ARfznXy  egjzOyG0nvuKSG0MoS6T  =RPwG  -----END PGP SIGNATURE-----  

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