Sunday, April 15, 2007

How the patent re-examination affects the reputation of Thomson

Trying to "undo" certain inferences from the patent challenge, Jeanne Loring writes: "Wisconsin’s leadership in stem cell research has nothing to do with these patents. It has everything to do with the admirable talent and dedication of Wisconsin scientists who devote their lives to this work." Thus, Loring is trying to walk a narrow line between saying what Thomson did was obvious AND still recognizing that Thomson was first with a human embryonic stem cell line. It's a tough sell (cell?), and it didn't work for Glenn Curtiss about 100 years ago. And, as with Curtiss, Loring and CIRM will be trying to get their own patents later in time. Thus, we have a situation: my patents will be good, but Thomson's are bad.

Further to theme of how Thomson's reputation is affected by the results of the patent re-examination, DAVID WAHLBERG has a piece in the Wisconsin State Journal which includes the text:

If the patents are ultimately rejected, the potential damage to WARF's and Thomson's reputations is unclear.

Lawrence Ebert, a patent lawyer in New Jersey who runs an Internet blog about intellectual property, said that if the patents are rejected, Thomson's standing in the stem-cell community would be harmed - but mistakenly.

That's because many people don't understand what's at stake in the patent challenge, Ebert said.

The Los Angeles-based Foundation for Taxpayer and Consumer Rights, which was joined by the New York-based Public Patent Foundation in asking for the federal review, argued that Thomson's accomplishment in 1998 was "obvious" because other scientists had done similar work in mice, sheep and pigs.

The patent office, in its preliminary rejection, agreed.

But nobody is questioning that Thomson was the first to grow a colony of embryonic stem cells from humans in a lab. The question is whether the recipe he used was already available.

The debate is similar to one that plagued Orville and Wilbur Wright in a battle over a patent on their airplane, Ebert said. A man named Glenn Curtiss claimed an aircraft built before the Wright brother's historic flight in 1903 had the capacity to fly, which he argued should have made their patent invalid. The patent was upheld.

"Would the reputation of the Wright brothers have been tarnished if they had lost their patent litigations?" Ebert asked, suggesting it would have been. Likewise, he said, Thomson's reputation could be harmed if WARF loses the stem-cell patents.

"Although sometimes things seem obvious in retrospect, it is curious that no one accomplished the derivation of human (embryonic stem) cells between 1981 ... and 1998," Thomson said in an October e- mail interview. "Some very good, simple ideas only seem obvious afterwards."

Paul Lesko, a patent lawyer with SimmonsCooper in East Alton, Ill., said WARF, UW- Madison and Thomson still would be considered leaders in the stem-cell field.

"It's not like these are allegations of questionable conduct," he said.

IPBiz reiterates the belief that the rejections of patent claims as anticipated over Williams and Hogan were foreseeable, based on presumptions made by the USPTO, but these rejections will NOT hold up. Separately, recall the re-exam of the Eolas/Berkeley patent, wherein the first Office Action rejected claims BUT these rejections were entirely withdrawn once the patentee had an opportunity to respond. As noted above, certain of the assertions against Thomson's claims evoke arguments made by Glenn Curtiss, which arguments really angered the surviving Wright brother, Orville. [In passing, IPBiz found the text "A man named Glenn Curtiss" curious, because Glenn Curtiss, in the context of the Wright Brothers, needs no introduction. The Curtiss-Wright conflict is quite similar to the present stem cell matter in representing a situation wherein a later arriver to the field challenges the VALIDITY of claims of the earlier inventor based upon (unsuccessful) work which preceded the earlier inventor.

Separately, see a paper by Grady Frenchick entitled WARF is likely to hold on to stem cell patent rights. It gives a lot of details on the re-examination process. However, it does not get into the "presumption of enablement" and "In re Best" issues which are significant in these particular re-examinations. Further, such presumptions MUST BE considered if one (Wahlberg) is going to write text:
The patent office, in its preliminary rejection, agreed. At best, the patent office CONDITIONALLY agreed with the arguments of the re-exam requester. Frenchick also does not get into what can happen if a re-exam shifts to the BPAI (recall that the Smucker peanut butter and jelly patent ultimately was defeated in re-exam but NOT by prior art! This aspect of re-exam IS something that WARF should worry about.)

Separately, see a post on californiastemcellreport.


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