The premier patent management group for the University of Wisconsin announced last Monday it would fight the U.S. Patent and Trademark Office's decision to investigate and possibly eliminate three valuable stem-cell patents.
The Wisconsin Alumni Research Foundation now has less than 60 days to officially respond to the preliminary denial of the existing claims. WARF Managing Director Carl Gulbrandsen was unavailable for further comment, but WARF spokesperson Andy Cohn said Monday that WARF is preparing a response based on the guidelines they've been handed.
Cohn added that historically, around 70 percent of patents stand after being investigated, so he is confident about the outlook.
"We've heard the 70-percent figure, so there's a good chance it will remain in place," Cohn said.
The three embryonic stem-cell patents were challenged last July by the Foundation for Taxpayer and Consumer Rights and the Public Patent Foundation.
John Simpson, stem-cell project director of FTCR in Santa Monica, Calif., said he thinks the patents are inappropriate and should not have been issued to WARF in the first place when James Thomson was touted as the first to isolate human embryonic stem cells back in 1998.
"I can't decide what motivates them," Simpson said of WARF. "An invention has to be new, useful and non-obvious to people in the field. Based on work before or prior art, we cited several examples of prior art and the examiners agreed with us."
Cohn said this challenge is the first of its kind in the 80-year history of WARF.
Dan Ravicher, executive director of the PUBPAT in New York City called the patents "undeserved" Monday and "un-American," contending they restrict freedoms on science.
"There is substantial evidence there is embryonic stem-cell research, … persons and money driven offshore to protect these patents," Ravicher said.
In the statement released last week, WARF said the process may take many months or even years, but while the lengthy review is underway the patents will remain "legally viable."
"We are confident that, when all the facts are known and the process runs its course, our patents will be upheld," Gulbrandsen said in the release.
Jeanne Loring, a stem-cell researcher at the Burnham Institute for Medical Research in La Jolla, Calif., who also supported the reexamination of the patents, said the community in Wisconsin may have unwarranted concern.
"I know Carl Gulbrandsen and (Democratic Gov.) Jim Doyle are not happy, but they are overreacting," Loring said. "It has nothing to do with the quality of science in Wisconsin, as they are suggesting."
Loring also pointed out that because WARF is separate from UW, it operates more like a business with its hold over the royalties for research.
