The Chronicle of Higher Education
In a preliminary finding, the U.S. Patent and Trademark Office has determined that three broad patents issued to the University of Wisconsin at Madison on a technique for isolating and maintaining embryonic stem cells were issued in error because the technique was not really new.
In rejecting the patents after re-examining them, the office found that the inventions described in them “would have been obvious to one skilled in the art” at the time the Wisconsin discoveries were made because of prior discoveries, which were known.
The patent office undertook the re-examination of the three patents in response to a request filed in July by the Public Patent Foundation, of New York, and the Foundation for Taxpayer and Consumer Rights, in California.
The two groups also urged the office to act because, they said, Wisconsin’s aggressive enforcement of its patent rights — through the Wisconsin Alumni Research Foundation, or WARF — was impeding scientific research in the field and harming the public. In its rulings, which became public last week, the patent office said “discussion of public harm is outside the scope of re-examination and has no bearing on this proceeding.”
The University of Wisconsin has two months to challenge the preliminary finding, known as an “office action,” before it becomes final.
Carl E. Gulbrandsen, managing director of the Wisconsin Alumni Research Foundation, which manages the university’s patents, said it would “vigorously defend its patent claims” to the patent examiner. If that does not result in the patents being sustained, he said, the foundation “could, and most probably would,” appeal to the patent office’s Board of Patent Appeals and Interferences and, if necessary, to the federal courts.
“WARF has absolute confidence in the appropriateness and legitimacy of these patents,” Mr. Gulbrandsen said, adding that the discovery underlying them “captured the imagination of people all over the globe, from every discipline.”
Wisconsin, and its famed stem-cell scientist James A. Thomson, received the first patent in 1998. Two related patents were issued in 2001 and 2006.
The foundation has also sought patents in Europe on the discoveries, but those applications were rejected. It has appealed.
WARF, which has been criticized by industry and academic groups for its tight grip over stem-cell licensing, loosened some of its licensing requirements in January.
