Milwaukee Journal-Sentinel
The U.S. Patent and Trademark Office will re-examine three key patents on embryonic stem cells held by the Wisconsin Alumni Research Foundation.
The patents are so broadly written that they give the foundation, known as WARF, potential to reap big royalties from any stem cell-related products.
The way WARF is handling the patents is harming scientific progress and California taxpayers, say the two foundations that in July asked for the re-exam. Californians voted in November to fund $3 billion of embryonic stem cell research in their state over the next 10 years
The Foundation for Taxpayer and Consumer Rights in Santa Monica, Calif., and the Public Patent Foundation in New York are alleging that when University of Wisconsin-Madison researcher James Thomson isolated human embryonic stem cells in 1998, he wasn’t the first to do it.
“We believe this is a politically and financially motivated challenge, to which we will respond in the appropriate legal forum,” said Beth Donley, executive director of WiCell Research Institute, a WARF subsidiary, in a statement. WARF believes the patent office will affirm the patents’ validity, she said.
No claim to fame
The foundations are saying Thomson’s achievement wasn’t novel, and was obvious, based on research others had done.
“WARF is trying to exercise complete control over America’s stem cell industry, just in the same way Microsoft is exercising control over America’s computer industry. And it has serious and numerous negative effects on the public and is extremely harmful,” said Dan Ravicher, an attorney with the New York foundation.
WiCell has provided free licenses and cells to 324 research groups that allow them to patent and publish their discoveries, Donley’s statement said. Between 2002 and 2005, 67% of the relevant articles in scientific publications cited WiCell as their source for cells, the statement said.
Wisconsin has tried to use the patents to its competitive advantage. Gov. Jim Doyle announced last week that companies funding embryonic stem cell work at universities and non-profits in Wisconsin will not have to pay licensing fees.
Jealousy not a factor
The foundations aren’t motivated by jealousy over Wisconsin’s patents, said John M. Simpson, of the California foundation.
“If California had these patents with these claims, we’d be trying to challenge them,” said Simpson, who was born in Madison and whose mother worked in a research lab on the UW-Madison campus.
One or more of a patent’s claims are changed 59% of the time when a third party has requested a re-exam, said Brigid Quinn, a patent office spokeswoman. All of the claims are confirmed 29% of the time and the patent is canceled 12% of the time, she said.
Re-examinations sometimes help the original patent holder, said Michael J. Gratz, a patent attorney at Boyle Fredrickson Newholm Stein & Gratz in Milwaukee.
“If the patent office comes back and says the patent claims as issued are still valid, then where’s the next punch coming from? You assume there won’t be any,” Gratz said. Still, the challenge will cost WARF money and headaches, and make it more difficult to move against infringers, he said.
Embryonic stem cell research has produced no therapies, but many scientists believe the cells could potentially lead to cures for diseases such as diabetes and Alzheimer’s.
WARF, one of the country’s oldest university technology transfer organizations, has a $1.5 billion endowment. The foundation will clearly put a lot of muscle into defending its basic patents on such a potentially breakthrough technology, said Tom Still, president of the Wisconsin Technology Council.
“It’s not like WARF woke up one morning after the patents were filed and said, ‘Gosh, what if somebody challenges this?’ ” Still said.
—————
Contact the author at: [email protected]
