WARF patent challengers back new patent continuation rules

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Wisconsin Technology Network

Madison, Wis. – A coalition of consumer advocacy and public interest groups, including two organizations that are challenging stem cell patents held by the Wisconsin Alumni Research Foundation (WARF), have filed legal papers in support of proposed new U.S. Patent and Trademark Office rules that would curtail what they believe is abusive behavior by patent applicants.

In a friend-of-the-court brief filed recently in U.S. District Court in Alexandria, Va., the groups urged that an injunction blocking the proposed rules be lifted and that they be implemented immediately.

“Congress has intentionally implemented a patent system that balances the incentives provided to patentees with the benefit to the public of the disclosure and ultimate dedication of the resulting inventions to society,” the consumer groups said in a statement issued with the filing. “Thus, the public interest lies in an efficiently functioning patent system, not one that is subject to abuse and manipulation.”

WARF, which opposes the proposed changes, has argued they will significantly impact the ability of academic and nonprofit research institutions to fully claim their inventions.

Rearranging the rules

Proposed new regulations ask applicants to justify the need for more than two continuations per application and assist the USPTO in performing initial technological research on applications that contain what proponents believe are an excessive number of claims. The new rules were to have been implemented by the patent office on Nov. 1, but were blocked by suits brought by drug maker GlaxoSmithKline and inventor Triantafyllos Tafas.

The groups joining in filing the Public Interest Amici brief include two groups, the Public Patent Foundation and the California-based Foundation for Taxpayer and Consumer Rights, that have mounted a challenge to WARF‘s stem cell patents. Other groups that were part of the filing are the Computer & Communications Industry Association, American Association of Retired Persons, Consumer Federation of America, Essential Action, Initiative for Medicines, Access & Knowledge, Knowledge Ecology International, Prescription Access Litigation, Public Knowledge, Research on Innovation, and Software Freedom Law Center.

Their brief claims that the public interest overwhelmingly supports new rules for at least two significant reasons. First, they will enable the USPTO to curtail abuses of the patent application process made by patent applicants that seek to “pervert” the system to gain an unfair advantage. Their second assertion was that the rules will help the USPTO improve patent quality, “which is a critical issue for ensuring the patent system benefits the American public,” the brief said.

Under current rules, which allow unlimited continuations, the groups say USPTO examiners often face an endless stream of continuation applications. Professor Mark Lemley of Stanford Law School and Kimberly Moore, a circuit judge on the U.S. Court of Appeals for the Federal Circuit, said these continuing applications may well succeed in wearing down the examiner so that the applicant obtains a broad patent – not because he deserves one, but because the examiner has “neither the incentive nor will to hold out any longer.”

Pharma opposition

Generally speaking, pharmaceutical companies oppose the change. Biotechnology and drug companies file more continuations than companies in other industries, in part because they tend to file expansive patents to protect a number of potential applications. The various applications can take years to develop as drug companies decide which disease targets to pursue, and when to pursue them.

Many universities, including the University of Wisconsin-Madison, also oppose the new rules. WARF, the licensing arm for UW-Madison, noted in comments submitted last May that there now are more than 230 universities with technology transfer offices and they have patented, groundbreaking technologies like magnetic resonance imaging and Vitamin D (UW-Madison), Google (Stanford), and rheumatoid arthritis relief (University of California-San Diego).

WARF views the rule changes as troubling because they may impact an applicant’s ability to claim an invention to its full scope and significantly increase the cost of patent litigation. As a result, discoveries could languish on laboratory shelves, as they did before enactment of the Bayh-Dole Act in the early 1980s.

The act gave U.S. universities, small businesses, and non-profit organizations intellectual property control of their inventions that resulted from federally-funded research.

Consumer Watchdog
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