Tuesday, April 03, 2007

Sacramento Bee misreports first Office Action in WARF patent re-exam

On March 30, the USPTO issued a FIRST Office Action in re-examination of three stem cell patents of James Thomson, now assigned to WARF. The Sacramento Bee covered this in the following way:

The U.S. Patent Office on Monday said that the Wisconsin Alumni Research Foundation overreached by asserting patents covering the process that University of Wisconsin researchers used to isolate week-old embryo stem cells.

The decision, which can be appealed, has financial implications for California. Taxpayers three years ago approved $3 billion in state bonds to fund stem cell research. The measure, Proposition 71, is being challenged in the courts.

The issue before the USPTO is whether the claims of the three patents are invalid over prior art. There is no issue about "overreaching by asserting patents." Procedurally, a first Office Action is not a "decision." The next step is to allow WARF to respond to the Office Action. Later, there could be a final Office Action, which WARF could appeal to the BPAI, and thence, if necessary, to the CAFC. The WARF patents are in force during all of this.

The Sacramento Bee includes a quote:

"But what this means for researchers in California and elsewhere is that they don't have to put up the mortgage to conduct their research," said Jamie Court, president of the Santa Monica-based Foundation for Taxpayer and Consumer Rights, one of the nonprofits in the middle of patent the fight. "It's a great day for science."

The trouble is, nothing changed as a result of a first Office Action. Whatever conditions existed before the first Office Action, still exist after the first Office Action. Furthermore, Court's statement ignores the research exemption of 35 USC 271(e)(1). "Researchers" never had to put up the mortgage to conduct research.

A discussion of the rejection of the claims in the '780 patent appears on IPBiz.

Of re-examinations, Eolas' (and UC/Berkeley's) US 5,838,906 survived re-examination first over prior art supplied by a third party and second over additional prior art brought up by the USPTO. Therein, there was a first Office Action rejection of claims, and then there was a second rejection, but, at the end of the day, ALL CLAIMS SURVIVED WITHOUT AMENDMENT. View a prior IPBiz post.

A previous article in the Sacramento Bee manifested unjustified and simply wrong assertions to end the WARF patents.


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