Patent Baristas

The U.S. Patent and Trademark Office (USPTO) announced it will re-examine patents covering embryonic stem cell discoveries made by University of Wisconsin researchers. The patents, US Pat. Nos. 5,843,780, 6,200,806, and 7,029,913, cover all embryonic stem cell research in the U.S. The USPTO could revoke, modify or leave intact the patents but any such action could be months to several years away.

The request for reexamination was made by two nonprofits, the Foundation Taxpayer and Consumer Rights (FTCR) and the Public Patent Foundation (PUBPAT), who believe that the patents are impeding scientific progress and driving vital stem cell research overseas. They argue that the work done by University of Wisconsin researcher James Thomson to isolate stem cell lines was obvious in the light of previous scientific research, making the work unpatentable.

Dr. Jeanne Loring, a stem cell scientist at the Burnham Institute for Medical Research, had filed a statement supporting the challenge stating that: “The real discovery of embryonic stem cells was by Martin Evans, Matt Kaufman, and Gail Martin in 1981, and none of these scientists considered patenting them. It is outrageous that WARF claimed credit for this landmark discovery nearly 15 years after it was made. ”

The Wisconsin Alumni Research Foundation (WARF), a nonprofit group that acts as UW’s tech transfer office, has dismissed the challenge from the two groups as financially and politically motivated at a time when California is hoping to become the leader in the field with a $3 billion grant program. That is, California voters approved Proposition 71,which allocated $3 billion in grants over the next 10 years.

But, I don’t think anyone should go out a throw a party just yet. The patent office grants over 90 percent of the requests for reexamination and many of those patents are issued with substantially the same claims as before reexamination. This issue could take years to resolve.

Still, a lot of money is at stake. WARF has made free licenses and cells available to more than 300 academic research groups but charges companies as much as $400,000. WARF also claims royalties from products produced using the patents. Wisconsin has even announced that companies who fund work at universities and nonprofits in Wisconsin will not have to pay licensing fees.

A legislative ban on using money from Ohio’s Third Frontier Program for embryonic stem cell research was vetoed by Governor Taft. The ban sought to prohibit funding for research even on the pre-existing stem cell lines currently allowed by federal regulations. Taft did, however, issue an executive order saying that stem cell research from the program must follow guidelines for existing cells approved for federal funding.

See more here:

Reexamination of ‘780 Patent (90/008,102)
Reexamination of ‘806 Patent (90/008,139)
Reexamination of ‘913 Patent (95/000,154)

Copies of the challenges filed by FTCR and PUBPAT.