MADISON, WI — The United States Patent and Trademark Office officially upheld Tuesday the two remaining patents on stem cell technology held by the Wisconsin Alumni Research Foundation that had been challenged by two watchdog groups.
The decision came nearly two weeks after the patent office issued an initial decision upholding the first of the three challenged patents held by WARF.
Janet Kelly, communications director for WARF, said the organization has had full faith in the strength of the discoveries of James Thomson in 1998 during the entire examination process.
"We’ve believed all along that Dr. Thomson’s discoveries were patentable inventions," Kelly said.
The legitimacy of the patents had been challenged by the Public Patent Foundation, based in New York, and the California-based Foundation for Taxpayer and Consumer Rights, according to John Simpson, FTCR stem cell project director.
Simpson said the patents should be revoked because they do not meet all the requirements of legal U.S. patents. He added Thomson’s discovery was in no way "non-obvious" to other researchers in the field.
"We think this decision is an incorrect decision," Simpson said.
Kelly said these latest two decisions cannot be appealed like the first decision because the affected patents were filed before 1999 and were thus subject to different rules.
Simpson said FTCR will still appeal the decision on the first patent and is not giving up on the other two just because the decision cannot be appealed.
"We are looking in to how to remake the case," Simpson said. "We will try to request a whole new re-examination."
Kelly said WARF feels secure the patents will survive any appeals or challenges from anyone after having already survived a very detailed examination process.
"They have made our patents even stronger through the re-evaluation process," Kelly said. "Our challengers have publicly stated that they will challenge the ruling on the first decision. We believe our case on all three [patents] is stronger now."
Simpson said this second decision in no way affects the appeal of the first because the cases go before different examiners who are independent of one another.
He added he is not completely discouraged because the challenges made by FTCR have already caused WARF to change its patents.
"These patents are not in the form they were in when we challenged them," Simpson said. "WARF has amended and narrowed the claims, and that’s significant."
He said FTCR originally filed the challenges because researchers complained WARF’s licensing requirements were too strict and access to the technology was very difficult to attain.
But under the pressure of the challenges and the bad publicity that has accompanied them, WARF has made the technology more readily available, according to Simpson.
"WARF has started to act as a much more responsible member of the research community," Simpson said.
