Supreme Court affirms basis of patent objection
Milwaukee Sentinel-Journal (Wisconsin)
A Supreme Court ruling this week could make it more difficult for a Wisconsin foundation to defend key embryonic stem cell patents against challenges by two groups, some patent experts and representatives of those groups said Tuesday.
The groups have argued that three fundamental patents the Wisconsin Alumni Research Foundation holds are based on research that would have been obvious to anyone familiar with literature in the field. University of Wisconsin-Madison scientist James Thomson in 1998 was the first to isolate human embryonic stem cells.
The court decision Monday has been widely viewed as one that will make it harder to get patents and defend existing ones. The court said Teleflex Inc. was not entitled to a patent on an automobile brake it developed by combining ideas from two existing patents because joining the concepts was obvious.
“We thought what James Thomson did was obvious when we filed the challenges, so this would, if anything, enhance our case,” said John M. Simpson, stem cell project director at the Foundation for Taxpayer and Consumer Rights, a consumer watchdog group in Santa Monica, Calif. The other group that in July requested the re-examination of WARF‘s patents is the Public Patent Foundation, a New York group that targets the patent system.
The U.S. Patent Office last month issued a preliminary rejection of the three WARF patents. Only about 12% of all patents are canceled, the office has said.
“It looks like the (Supreme Court) decision is going to make it more difficult to defend an obviousness challenge,” said Bill Warren, an intellectual property partner in the Atlanta office of Sutherland Asbill & Brennan LLP.
Peter Balbus, managing partner of a commercialization consulting firm called Pragmaxis LLC, agreed. The decision will change a world in which patents were granted on everything from golf grips to peanut butter and jelly sandwiches with no crusts, he said.
But WARF, which says it has licensed embryonic stem cells to 17 businesses and more than 400 academic institutions, can argue that its peers validated the patents by licensing the technology, Balbus said.
Even if WARF loses the three key stem cell patents, it has a portfolio of at least seven issued and 38 pending stem cell patents that should serve it well going forward, he said.
Withholding judgment
WARF spokesman Andrew Cohn said the court’s decision was “complicated,” adding, “It’s too early to tell what the ramifications will be.”
Virtually all organs, cells and other body tissue arise from stem cells, which many believe have potential to cure diseases such as Alzheimer’s, Parkinson’s and diabetes.
Stem cells from mice and other systems were isolated in the early 1980s, but not until 1994 did Thomson begin to have success with human embryonic stem cells, said Grady Frenchick, a patent attorney in Madison at the Whyte Hirschboeck Dudek law firm.
“If it was so obvious you could do this work with humans, why did it take 14 years to happen?” Frenchick said.
Most significant inventions are obvious in hindsight, one of the best examples being the Post-It note, a $200 million business for 3M Co., said Frenchick.
He also said he expects the court decision to have a harsher impact on mechanical and electrical patent applications than on life sciences requests.
Basic patents like those WARF holds on stem cells are often the underpinnings of whole new industries. The patents expire in 2015.
Balbus has estimated that, if California companies generated $4 million of revenue from stem cell products, WARF could generate as much as $200 million in royalties from them. For any revenue to materialize, however, companies have to turn research into products – and that would have to happen before WARF‘s patents expire.
To open California labs
In an unrelated development, Thomson and another UW-Madison scientist will open labs affiliated with California universities, UW-Madison spokesman Terry Devitt said Tuesday.
Thomson, known as one of the fathers of stem cell research, will operate a lab as an adjunct professor at the University of California-Santa Barbara, said Devitt. Clive Svendsen, another well-known stem cell researcher, will operate a lab as an adjunct professor at Stanford University in Palo Alto.
Both scientists will retain their positions at UW-Madison, Devitt said. Thomson will likely spend about one month a year in California, he said.
“In stem cell biology, Wisconsin remains one of the top institutions in the world, if not the top institution,” Devitt said. “But the catch is, the funding issue at the federal level is inadequate.”
Californians voted in late 2005 to fund $3 billion of embryonic stem cell research in their state over the next 10 years, creating a pocket of funding amid a dearth of federal dollars.
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