Wisconsin Group’s Patent Rejected

Potentially opening the way to greater freedom in stem cell research, the U.S. patent office has reversed a key decision that enabled a Wisconsin research foundation to maintain patents on all embryonic stem cells used for research within the United States.

Consumer groups that challenged the patents claimed a major victory Monday.

"These patents have been very detrimental to research," said John Simpson, stem cell project director at Santa Monica’s Consumer Watchdog, which joined with New York’s Public Patent Foundation and Jeanne Loring, a stem cell researcher now at the Scripps Research Institute in La Jolla, to challenge the patents.

But the Wisconsin Alumni Research Foundation, or WARF, said it would challenge the ruling. "We are confident that WARF will make a strong case," David Earp, senior vice president of Geron Corp., which has licensed the patent from WARP, told The Associated Press.

Liz Bui, director of intellectual property at San Diego’s stem cell firm Novocell, said the decision is "another turn on a road that¿s already had a lot of interesting turns. But if it’s upheld, it would be very significant."

In 1998, University of Wisconsin professor James Thomson led the first group to isolate embryonic stem cell lines, and WARF subsequently filed for three patents on his work. The consumer groups have been appealing ever since, arguing that Thomson¿s work merely extended other research that had previously been done on stem cells, such as on mice.

The U.S. Patent and Trademark Office in 2008 narrowed the scope on two patents, which can no longer be appealed. But last Wednesday, the patent office sided with the challenge against the newest patent. Simpson said he hopes the patent office will apply this decision to the first two patents, as well, overturning them entirely.

Many stem cell researchers say WARF never should have been granted patents on the stem cells.

"I’m not a patent attorney, but it strikes me that these stem cells should never have been patented at all," said Larry Goldstein, director of the stem cell research program at the University of California San Diego. "The situation with the patents has held up a significant amount of research work."

When the UCSD labs want to work with a stem cell, Goldstein said, they have to apply for a license from Wisconsin and then do their work under the very precise terms of the license.

"A lot of terms of the license make you generate a lot of paperwork that doesn’t at all contribute to your research," he said. "And if you have questions about the license, WARF can be very slow in responding, so simple things get much more complicated."

Goldstein said the patent procedures are so complicated that some research organizations simply ignore the patent law when doing stem cell research.

All three patents are slated to expire in 2015. But Earp said he believes WARF will be able to obtain patents to protect its discoveries beyond that date.

Contact the author Dean Calbreath at: (619) 293-1891 or [email protected]