A patent on stem cell research held by the Wisconsin Alumni Research Foundation was recently revoked by the United States Patent and Trademark Office’s Board due to its impediment of national and global scientific research.
The stem cell patent, which was assigned to WARF and licensed to the California biotechnology firm Geron Corporation in April 2006, covers the development of replicating in-vitro cell culture of human embryonic stem cells derived from a pre-implantation embryo.
In October 2006, the Public Patent Foundation and the Foundation for Taxpayer and Consumer Rights, now called Consumer Watchdog, disputed the patent’s validity through re-examination proceedings organized by the U.S. Patent’s Office, Consumer Watchdog’s Stem Cell Project Director John Simpson said.
“Under the patent, if any scientist used human embryonic stem cells in any way, he or she owed WARF a royalty, and that is just so outrageous and so detrimental to scientific research in the field,” Simpson said. .
This inhibits free and open research by scientists because WARF essentially owns any human embryonic stem cell viable for experimentation, Simpson said.
During the same time period, the two groups also challenged the two other stem cell research patents which had been previously issued to WARF, yet the U.S. Patent’s Office re-examination division chose to uphold all three patents in 2008.
Since the patent followed a different review process than the other two patents, the groups were once again able to contest the patent’s authority through an appeal to the Board of Patent Appeals and Interferences, Simpson said.
Simpson added the groups took issue with the basis of the patent, which was work done by University of Wisconsin researcher James Thomson to isolate stem cell lines, stating it was “obvious” considering earlier scientific research.
No one is attempting to belittle the standing or diminish the efforts of one of the leading researchers in the field of stem cell research in any way, Simpson said, yet a scientific achievement does not necessarily warrant a patent. .
The Board of Patent Appeals and Interferences agreed with the groups and reversed the previous re-examination decision by rejecting the validity of the patent.
Following this decision, WARF has the opportunity to ask for another hearing or can even take the case to federal court if they are unsatisfied with the final ruling, Simpson added.
“WARF has been invited by the Board of Patent Appeals to continue prosecution of this application and plans to do so and vigorously pursue these claims with the patent office,” a statement released by WARF said.
According to the statement, the decision regarding the patent does not affect the U.S. Patent Office’s choice to reaffirm the other two issued patents because these patents are not eligible for further appeal in the re-examination process.
WARF Director of Communications Janet Kelly declined further comment.
Geron Corporation also declined comment but released a statement claiming the recent decision simply reopens the patent to additional examination.
“The immediate effect of the Board of Patent Appeals and Interferences decisions is that WARF will have the opportunity to continue examination of the claims of the…patent at the examination level of the Patent Office,” the statement said.