Appeal Still Planned Against Narrowed Claims
SANTA MONICA, CA — Closer analysis of the patent office’s decision on
a human embryonic stem cell patent held by the Wisconsin Alumni
Research Foundation (WARF) shows the following gains made for
researchers:
• The original broad patent was abandoned showing it was underserved and new amended claims have been narrowed.
• The original patent covered all embryonic stem cells no matter how
they are derived, but the amended “non-final” ruling, while permitting
the patent, narrowed the claim only to stems cells derived from
pre-implantation embryos.
• The newest stem cell research technology — Induced Pluripotent Stem
Cells (IPS cells) — would clearly not be covered by the narrowed
patent.
• Stem cells derived from fetal tissue could have been claimed under the old patent, but now cannot be.
Consumer groups still believe the narrowed patent is invalid and should
be revoked. They intend to challenge the latest patent office decision.
The challenge brought by the Foundation for Taxpayer and Consumer
Rights (FTCR) and the Public Patent Foundation (PUBPAT) already
produced a major victory for consumers and researchers when WARF
announced in January 2007 that it was substantially easing its
licensing requirements on stem cells. The groups filed re-examination
requests on three patents, the ‘913, ‘806 and ‘780 in July 2006.
“We’ve made progress in thwarting WARF’s overreaching patents and
changing the organization’s aggressive behavior toward the research
community,” said John M. Simpson , FTCR Stem Cell Project Director. “We
are in this for the long haul.”
The groups said they would appeal any later final decision by the
examiner supporting the amended claims to the Patent and Trademark
Office’s Board of Appeals, which frequently overturns the decision made
by examiners. The groups also have the right to appeal any decision
of that board to the U.S. Circuit Court for the Federal Circuit, if
necessary.
The “non-final office decision” in the inter partes re-examination of
the ‘913 patent was posted late Wednesday on the PTO’s website.
“The examiner based his decision on his own belief that it would not
have been obvious to isolate human stem cells using widely known
methods to isolate mouse stem cells, which contradicts the sworn
testimony that we provided of four renowned stem cell embryologists who
were doing such work”, said Dan Ravicher, PUBPAT Executive Director.
“Thus, the examiner took his own opinion over the opinions of our four
leading stem cell scientist witnesses.”
Joining the two consumer groups in the challenge from the beginning was
Dr. Jeanne Loring, now of the Scripps Institute. After the initial
rejection, Dr. Alan Trounson, then of Australia’s Monash University and
now president of the California Institute for Regenerative Medicine,
Dr. Douglas Melton of Harvard and Dr. Chad Cowan of Harvard filed
affidavits supporting the challenge.
“WARF executives were acting like arrogant bullies blinded by dollar
signs,” said Simpson. “Our challenge has engendered a more co-operative
stance on their part.”
Decisions are pending on the ‘780 and ‘806 patents. No other country recognizes the three WARF patents.
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The Foundation for Taxpayer and Consumer Rights is California’s leading
non-profit and non-partisan consumer watchdog group. For more
information visit us on the web at: www.ConsumerWatchdog.org.
The Public Patent Foundation is a not-for-profit legal services
organization that represents the public’s interests against the harms
caused by the patent system, particularly the harms caused by wrongly
issued patents and unsound patent policy. For more information, visit
us on the web at www.pubpat.org.
