WARF Stem Cell Patents to Be Re-Examined; Patent Office Finds 'Substantial Question' Regarding Validity of WARF's Claim

10/3/2006 2:01:00 PM

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To: National Desk

Contact: John M. Simpson, of the Foundation for Taxpayer and Consumer Rights, 310-392-0522 ext. 317 or 310-292-1902 (cell); Dan Ravicher of the Public Patent Foundation, 212-796-0572; or Dr. Jeanne Loring of the Burnham Institute for Medical Research, 858-205-4093 (cell)

SANTA MONICA, Calif., Oct. 3 /PRNewswire-USNewswire/ -- The United States Patent and Trademark Office (PTO) has granted requests from a consumer group and public service patent attorneys to re-examine three overreaching patents on human embryonic stem cells held by the Wisconsin Alumni Research Foundation (WARF), the groups said today.

The challenges were brought by the Foundation for Taxpayer and Consumer Rights (FTCR) and the Public Patent Foundation (PUBPAT) against WARF patents that are impeding scientific progress and driving vital stem cell research overseas.

In granting the requests to re-examine the three WARF patents, the PTO found that there were "substantial questions" regarding their validity.

"We're pleased the PTO has decided to re-examine these patents," said John M. Simpson, FTCR's stem cell project director. "The patents should never have been issued in the first place."

Simpson said WARF's aggressive assertion of patents was not surprising. "They have a history of putting patents and profits before public benefit," he said.

In 1943 WARF refused to license vitamin D irradiation technology to manufacturers of oleomargarine and was threatened with a federal antitrust suit before relenting. In 1965 and 1975 the government again filed suits against WARF accusing it of impeding scientific advances through restrictive licensing practices.

"They'll tell you they're all about technology transfer and supporting research. Actually WARF is run by managers with dollar signs in their eyes," said Simpson.

Third party requests for patent re-examination, like the ones filed by FTCR and PUBPAT, are successful in having the subject patent either changed or completely revoked roughly 70 percent of the time.

"WARF has been allowed to profit at the expense of public health while many American scientists have been barred from conducting life-saving medical research. These over-reaching patents threaten our health, waste taxpayer money, and send valuable research overseas," said Dan Ravicher, executive director of PUBPAT.

FTCR and PUBPAT argued that the work done by University of Wisconsin researcher James Thomson to isolate stem cell lines was obvious in the light of previous scientific research, making the work unpatentable. To receive a patent, something must be new, useful and non-obvious.

Dr. Jeanne Loring, a stem cell scientist at the Burnham Institute for Medical Research, filed a statement supporting the groups' challenges.

"The real discovery of embryonic stem cells was by Martin Evans, Matt Kaufman, and Gail Martin in 1981, and none of these scientists considered patenting them," said Loring. "It is outrageous that WARF claimed credit for this landmark discovery nearly 15 years after it was made."

The groups said the patents' dubious validity is underscored by the fact that no other country in the world honors them. As a result, U.S. researchers have sent research monies abroad where they can avoid paying royalties to WARF.

Now that re-examination has started, WARF may make an opening statement to the Patent Office, to which FTCR and PUBPAT can respond. After opening statements, the Patent Office will proceed to determine whether WARF's patents are indeed invalid in light of the issues raised by FTCR and PUBPAT.

California voters approved the nation's largest publicly funded stem cell research program in 2004 with Proposition 71, which allocated $3 billion in grants over the next 10 years. For an overview of state stem cell programs and pending legislation go to: http://www.curesforcalifornia.com/page.php?id=122

FTCR and PUBPAT filed challenges against three patents previously granted to WARF:

-- One patent on all primate embryonic stem cells, including humans, issued in 1998 (Patent No. 5,843,780) Read the FTCR & PUBPAT challenge at: http://www.ConsumerWatchdog.org/resources/780Request.pdf

Read the Patent office's decision: http://www.ConsumerWatchdog.org/resources/5843780.pdf

-- A second, specifically on human cells, granted in 2001 (Patent No. 6,200,806). Read the FTCR & PUBPAT challenge at: http://www.ConsumerWatchdog.org/resources/6200806.pdf

Read the Patent office's decision: http://www.ConsumerWatchdog.org/resources/6200806.pdf

-- And a third on human cells issued in April of 2006 (Patent No. 7,029,913). Read the FTCR & PUBPAT challenge at: http://www.ConsumerWatchdog.org/resources/913Request.pdf

Read John Simpson's Op-Ed explaining the need for the patent challenges at: http://www.consumerwatchdog.org/healthcare/co/?postId=6532

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The Foundation for Taxpayer and Consumer Rights is California's leading non-profit and non-partisan consumer watchdog group. For more information visit us on the web at http://www.ConsumerWatchdog.org Our stem cell information page is located at http://www.stemcellwatch.org/

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The Public Patent Foundation is a not-for-profit legal services organization that represents the public's interests against the harms caused by the patent system, particularly the harms caused by wrongly issued patents and unsound patent policy. For more information, visit us on the web at http://www.pubpat.org

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