Wisconsin State Journal
Licenses and fees of up to $400,000 will be waived for non-commercial stem-cell research, UW-Madison’s tech transfer organization said Monday in a move welcomed by researchers who had complained the cost impeded their work.
“This is a really good step in the right direction,” said Jeanne Loring, a stem-cell researcher in California. She joined consumer watchdog groups last year in forcing a federal review of the university’s wide-ranging stem-cell patents. The review continues.
“I think they were getting a lot of pressure from researchers all over the world,” Loring said.
The Wisconsin Alumni Research Foundation, which holds three patents covering virtually all embryonic stem-cell research in the country, announced two policy changes and a “clarification.”
WARF is trying to make it easier for university scientists to conduct stem-cell research, spokesman Andy Cohn said.
It will no longer require companies that fund stem-cell research at universities or nonprofit groups to buy licenses. The licenses cost $75,000 to $400,000, depending on the size of the company.
Companies will still need licenses to conduct studies in commercial labs or develop products.
In the second change, WARF will allow scientists to share stem cells, meaning some can forgo a $500 access fee.
The foundation also clarified its position regarding the California Institute for Regenerative Medicine, or CIRM, Cohn said. The institute is overseeing California’s $3 billion stem-cell initiative to boost research in the burgeoning field.
The institute won’t need to buy a license from WARF or hand over royalties from its grantees, Cohn said. But companies funded by the institute that commercialize their research will require licenses, he said.
Last year, the institute said its grantees must give 25 percent of royalties to the state on discoveries that yield more than $500,000. That prompted Beth Donley, then a WARF attorney, to say at a biotech meeting in San Francisco that WARF may assert its patents and seek license fees from commercial partners of California grantees.
Though Donley’s comment caused a stir among researchers in California, Cohn said WARF never said the state itself would have to get a license. Monday’s statement clarifies that.
“This will move the science forward,” Cohn said of the three moves. “It will get more companies interested, and that will bring more funding to academic researchers.”
WARF‘s patents are from UW-Madison researcher James Thomson’s discovery in 1998 of how to grow human embryonic stem cells. The patents have brought in $3.2 million in license fees to WARF. They could net much more money before they expire in 2015.
Last July, the Los Angeles-based Foundation for Taxpayer and Consumer Rights, involved in California’s stem-cell initiative, asked the U.S. Patent and Trademark Office to re-examine WARF‘s patents.
The watchdog group, joined by the New York-based Public Patent Foundation, argued Thomson’s accomplishment was “obvious” because other scientists had done similar work in mice and pigs.
In September, the patent office agreed to the review, which could take years. Patents remain active during the process, which results in patents being narrowed or canceled about 70 percent of the time.
John Simpson, spokesman for the California watchdog group, said the pressure of the patent review helped lead to WARF‘s policy changes.
“It’s an acknowledgement that what they had been doing clearly was not in the best interest of stem-cell research in the United States,” Simpson said.
Cohn said the patent review had nothing to do with the policy changes. WARF began reviewing its licensing policies about academic research on stem cells about six months ago, he said, consulting with scientists and the National Institutes of Health.
“It’s a good policy, and now it’s ready to go,” he said.
Jon Soderstrom, managing director of the Office of Cooperative Research at Yale University, said in a statement provided by WARF: “These policy changes should help universities engage industry sponsors in human embryonic stem-cell research projects.”
The NIH awarded WARF a four-year, $16 million grant in 2005 to host the nation’s first and only stem-cell bank. The bank – which puts WARF under direct NIH oversight – stores, grows and distributes stem-cell lines available for federal funding.
The waiving of research licenses comes four months after Gov. Jim Doyle announced a similar arrangement in September for companies that fund research at universities or nonprofits in Wisconsin.
In announcing the program shortly before he was re-elected in November, Doyle said the move would help lure stem-cell companies to move to or invest in the state.
Matt Canter, Doyle’s spokesman, said Monday the governor still wants to bring stem- cell companies here and has other incentives, such as recruitment grants.
“It’s an increasingly competitive market,” Canter said. “As a state, we want there to be robust research everywhere in the country.”
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Contact the author David Wahlberg at 608-252-6125.
