The U.S. Patent and Trademark Office’s Board of Appeals and
Interference has reversed an earlier decision from the Patent Office’s
re-examination division that upheld the claims of one of the stem cell
lines held by the Wisconsin
Alumni Research Foundation.
The patent covers one of the three key stem cell lines that were
challenged through re-examination proceedings initiated in October 2006
at the request of consumer watchdog groups New York City-based Public
Patent Foundation and the Santa Monica, Calif.-based Foundation for
Taxpayer and Consumer Rights, now called Consumer
Watchdog.
The re-examination division upheld the validity of the patents in
mid-2008, and the groups were allowed to challenge one of the patents in
an appeal to the Board of Appeals and Interference.
The groups argue that the work done by University of Wisconsin
researcher James Thomson to isolate stem cell lines was obvious in the
light of previous scientific research, making his work unpatentable. The
groups claimed the three WARF patents were "impeding scientific
progress and driving vital stem cell research overseas."
The patent office rejected the arguments by the groups that Thomson’s
discoveries were obvious in light of previous research, finding that
the expert declarations they submitted were "flawed by hindsight
reasoning."
Stem cell research, pioneered at the University
of Wisconsin-Madison, is viewed by many to be the gateway to
finding cures to debilitating neurological and muscular diseases. Such
research is also believed to hold commercial opportunities that could
result in economic development.
The true impact of the Patent Office’s decision remained unclear.
While the groups characterized the Patent Office’s decision as a big
win, Geron
Corp., the California biotechnology firm that’s licensing the
patents from the Wisconsin Alumni Research Foundation, said in a press
statement that the ruling only reopens the patent to further
examination.
"This is not a final rejection of the patent claims," noted David
Earp, Geron’s chief patent counsel and senior vice president of business
development. "We are confident that WARF will make a strong case in
support of the patentability of these claims in continued examination."
John Simpson, Consumer Watchdog’s Stem Cell Project director, had a
different opinion.
"This is a major victory for unfettered scientific research that
could lead to cures for some of the most debilitating diseases," Simpson
said.
The consumer watchdog groups said that under current patent law only
one of the three patent rulings could be appealed by the two groups.
However, the groups say the latest ruling by the Board of Appeals is a
strong decision that could set a precedent leading to the revocation of
the other two patents as well.
"WARF executives were acting like arrogant bullies blinded by dollar
signs," said Simpson "Our challenges prompted a more co-operative stance
towards the stem cell research community on their part."
Both Consumer Watchdog and the Public Patent Foundation stressed that
while University of Wisconsin researcher Thomson deserved acclaim for
his research that isolated human stem cells, important scientific
accomplishments are not necessarily patentable. They said one of the
main reasons he was able to derive a human stem cell line was because he
had access to human embryos and financial support that other
researchers did not have.
WARF may appeal the latest PTO decision by requesting a new hearing
before the board. WARF could also opt to present new evidence to the
original examiner or change the patent’s claims.
