A United States Supreme Court decision Monday may have a negative impact on a pending case against three of the University of Wisconsin's embryonic stem cell patents.
Although they are not tied to the Wisconsin Alumni Research Foundation, the main patent arm of UW, the Supreme Court's decision set a precedent against "obvious" patents handed out to an automatic brake manufacturer.
Last month, the U.S. Patent and Trademark Office announced it will investigate allegations by the research foundation for The Foundation for Taxpayer & Consumer Rights and the Public Patent Foundation that UW researcher James Thomson's 1998 isolation of human embryonic stem cell patents was too similar to other discoveries and obvious to researchers in the field.
However, WARF spokesperson Andy Cohn said the Supreme Court decision was very complex and that it is "much too early to tell" if it would be applied to the foundation's stem cell situation.
"The other side will say the decision is a slam dunk, and I guarantee this is not," Cohn said.
Since Monday's decision involved a physical science, Cohn said it is unclear if a distinction would be made with biological sciences.
Jeanne Loring, a stem cell researcher at the Burnham Institute for Medical Research in La Jolla, Calif., who also supported the re-examination of the patents, said the decision would likely apply to stem cells.
"Patent law is patent law. The situations will be interpreted for all fields of patents," Loring said. "People are using patents as bludgeons to beat up the competitors. This is to calm that whole thing down so they don't keep getting patents on little changes."
John Simpson, stem cell project director of FTCR in Santa Monica, Calif., said although Thompson's discovery was important, it should not have been awarded the patents, and the Supreme Court decision would augment their case.
"Basically what it did was strengthen our challenge," Simpson said. "It helped in the underlying legal issues that go directly to the heart of the matter of our case of obviousness."
Cohn said WARF is still working on their response to the U.S. Patent and Trademark Office's challenges, which are due by the end of May.
