Case challenges licenses, royalty claims by University of Wisconsin
THE SAN FRANCISCO CHRONICLE
The U.S. Patent and Trademark Office has agreed to re-evaluate the validity of three core stem cell patents held by a Wisconsin foundation that has been accused of strangling U.S. research in the field with sweeping demands for license fees and royalties from other investigators.
The patent office will assess claims that other scientists had already pioneered key technology in the derivation of embryonic stem cell lines before University of Wisconsin researchers made discoveries in the 1990s that formed the basis of the patents being challenged.
Two citizens groups contested the stem cell patents, taking on the powerhouse intellectual property organization that has represented the interests of the University of Wisconsin-Madison since 1925, the Wisconsin Alumni Research Foundation.
John Simpson, stem cell project director for Santa Monica’s Foundation for Taxpayer and Consumer Rights, said the Wisconsin organization is making it more difficult for academic laboratories and biotech companies to explore the potential of stem cells to advance medicine. “We see these (patents) as a very big impediment to the free flow of ideas that’s necessary to get viable cures out of stem cell research,” he said.
Dan Ravicher, an attorney with the Public Patent Foundation in New York, said the Wisconsin patents, which are not recognized outside the United States, are hampering U.S. research in the promising field and driving it overseas.
Attorney Elizabeth Donley, in a release on behalf of the Wisconsin foundation, said the patents based on the work of University of Wisconsin-Madison researcher James Thomson and others will be proven valid. She said the patent office grants more than 90 percent of requests for re-examination.
“We believe this a politically and financially motivated challenge, to which we will respond in the appropriate legal forum — the United States Patent and Trademark Office,” Donley said. Wisconsin’s “stem cell patents do not inhibit research; in fact, they support and encourage it.”
Patent office spokeswoman Brigid Quinn said the challengers had met the first hurdle to gain a review by submitting written evidence that other scientists may have pioneered stem cell research methods. This raised “a substantial new question of patentability” for the Wisconsin discoveries, Quinn said. Among all such challenges filed between 1981 and 2005, the patent office confirmed the patent holders’ claims in 29 percent of cases; canceled the claims in 12 percent; and modified the patent holders’ claims in 59 percent of cases. The patent holder can appeal the agency’s decisions in court, a process that can stretch on for years.
The outcome could affect the prospects of Geron Corp. of Menlo Park, which holds exclusive licenses on the Wisconsin patents in certain disease areas, giving it the right to collect fees from other companies. Geron spokesman David Schull said the patent office’s agreement to re-assess the patents is a commonly granted request that signals nothing about the merits of the challenges.