Wisconsin-Madison, the U.S. Patent and Trademark Office has upheld two
more patents that cover embryonic stem cell research techniques
discovered at the school.
In rulings made public Tuesday, hearing examiners confirmed the
patents covering UW-Madison scientist James Thomson’s work on isolating
embryonic stem cells from primates and humans.
The examiners rejected arguments from two consumer groups and
some scientists that Thomson’s work was obvious given previous research
on animals and therefore ineligible to be patented.
The patent office upheld a third patent stemming from Thomson’s
work last month. Unlike that ruling, the decisions made public Tuesday
are final and cannot be appealed.
Thomson was the first to isolate embryonic stem cells, which
have great medical potential because they can turn into any type of
cell in the body, in the 1990s. The patents on his work issued in 1995,
1998 and 2001 are held by the
Wisconsin Alumni Research Foundation, a nonprofit that manages the
university’s patents.
The rulings are a boon to the university because they mean the
foundation will continue to control the primary intellectual property
rights to embryonic stem cell research in the U.S. The school could
benefit from royalties if the research leads to successful medical
products before the patents expire in 2015.
In a note to "colleagues and friends" on Tuesday, foundation
managing director Carl Gulbrandsen wrote the rulings clear the way for
additional partnerships with the private sector aimed at developing
cures and treatments to debilitating diseases. They also help cement
Thomson’s legacy as the pioneer of the field.
"This is valuable technology," Gulbrandsen said in an
interview. "We’re glad the patents will be there to help people invest
the dollars to move this technology forward."
The California-based Foundation for Taxpayer and Consumer
Rights and the Public Patent Foundation asked the patent office to
throw out the patents in 2006. The groups argued the foundation’s
aggressive enforcement of the patents
slowed down U.S. stem cell research and drove some investment overseas.
The patent office at first signaled it was preparing to toss
all three patents but upheld them after examining the claims closer. In
all three rulings, the examiners said Thomson’s work was novel and he
did not have a reasonable likelihood of success before he made his
discoveries.
Dan Ravicher, executive director of the Public Patent
Foundation, said he and four scientists backing the challenge disagreed
with the rulings. He pledged to appeal the first ruling and consider
whether to file new challenges to the other two patents.
"It was Thomson’s access to embryos and financing that allowed
him to be the first person to cross the finish line," he said. "It
wasn’t because he invented something non-obvious."
Ravicher noted the Wisconsin group had to slightly modify all
three patents during the process, which means it is not entitled to
past damages for any infringement.
The consumer groups have also taken credit for helping to prod
the foundation to relax its licensing policies to make the cells more
easily available. The foundation agreed last year to waive some fees to
encourage more industry-sponsored research and allow researchers to
share their cells for free.
"They have decreased the chilling effect that they were having on research," Ravicher said.
The foundation’s stem cell affiliate has shipped cells to more
than 560 researchers around the world since 1999. A vial of 6 million
stem cells now costs about $500 for academic researchers.
Gulbrandsen called the challenge politically motivated, saying
Californians are trying to avoid paying royalties to Wisconsin for
future products developed there. California has invested heavily in
promoting stem cell research.
John Simpson, a spokesman for the California group, denied that claim.
"This is a serious scientific challenge," he said, "based on the
science and on the need for these fundamental basic patents that
essentially serve to thwart research in the field to be removed."
