Friday, July 21, 2006

The arguments concerning the re-exam of WARF's patents

Sciencenow says of the FTCR/PubPat challenge to the WARF/Thomson patents on stem cells:

Experts say the case raises fundamental questions about the nature of patents. "You can say the technology was almost identical to what they did in mouse [cells], so you could argue it was obvious," says Allan Robins, molecular biologist with Irvine, California–based stem cell startup Novocell. But, "there had been failures in rats and pigs--therefore you could argue that it wasn't obvious." PTO can take up to two years to decide whether to do a full re-examination, and another year or more to rule.

Sciencenow quotes Dan Ravicher of PubPat:

"They tried to pull a fast one on the Patent Office--they've been caught with their hand in the cookie jar."

IPBiz says: The idea that US 5,166,065 anticipates the claims of US 5,843,780 and US 6,200,806 (Thomson) is not well-founded and will not fly at the USPTO. The fact that US '780 explicitly says that LIF didn't work for hESC may play a role, and, if it does, that will be an important patent prosecution practice concept to remember. Many patent practitioners are averse to recording things that don't work in an application for fear of introducing undue limitations to claim scope.

US '065 did NOT describe the making of hESC. It did suggest that, once one had hESC, that LIF could be used to keep them from differentiating. Since that time, it has been learned that LIF works differently between mouse stem cells (the subject of the '065 patent) and human stem cells, a fact not discussed in the challenge by PubPat to the WARF patents.

WISCTV strikes a more conciliatory note about the issue:

"I think it's really born in the fact that they'd like to use the patents to build their program for free. We're certainly willing to work with them to find an equitable solution, somewhere between collaboration and a license I'm sure there's a solution, and we continue to talk with them about that," said Elizabeth Doyle, director of Business Development for the Wisconsin Alumni Research Foundation.

Wistechnology notes:

In challenging the WARF patent, the Public Patent Foundation submitted what it said was unseen "art" or evidence that the previous work of other scientists made the derivation of human embryonic stem cells "obvious and therefore unpatentable."

Dr. Jeanne Loring, a stem cell scientist with the Burnham Institute for Medical Research, said the real invention was made 25 years ago, when embryonic stem cells first were discovered. Loring said Thomson "just followed a recipe written by other scientists, and there's nothing patentable about that."


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