Friday, February 29, 2008

More on the PubPat loss in the re-exam of WARF's US 7,029,913

The reporting of AP in the matter of the “action closing prosecution” for the re-examination of WARF's US 7,029,913 patent on stem cells was garbled:

The patent office said last year it was preparing to toss out all three patents but the Wisconsin Alumni Research Foundation, which holds the patents, appealed. This week's ruling is the first in the appeal process.

In the re-examination of all three WARF patents, there were FIRST OFFICE ACTIONS which produced claim rejections by the USPTO, for which a response was made. A response to an Office Action is NOT an appeal. This week's "action closing prosecution" is not the "first in the appeal process." The AP report is very confused.

The AP report also stated: "The battle is hardly over. We're in this for the long haul," said John Simpson of the California-based Foundation for Taxpayer and Consumer Rights, one of two groups fighting the patents. Neither the AP nor Simpson mentioned that within the 82 pages of USPTO analysis (total document 85 pages) the basic lines of argumentation of PubPat and FTCR were repudiated. The basic references relied upon by PubPat and FTCR were determined by the USPTO to be non-enabling. Thus, the use of these references were about as significant as citing Jules Verne as prior art against a functioning submarine. The declarations of Trounson, Loring, and Melton (which have relevance ONLY to the inter partes proceeding as to US 7,209,913) had no impact on the USPTO decision. At page 46, the USPTO noted: Declarants avowal of obviousness is conclusionary and based on hindsight analysis. In other words, the declarants merely said Thomson's work was "obvious" without backing up their statements.

PubPat and FTCR may in fact continue to harass WARF by dragging out this matter. However, their firepower, comprised of non-enabling (science fiction) references and conclusory declarations, won't get far.

LBE post at Chronicle of Higher Education:

The legal and factual determinations in the “action closing prosecution” for the re-examination of US 7,029,913 suggest that the ex parte challenges to the other two WARF patents will also fail. The key references brought up by PubPat were found to be non-enabling. Although PubPat and FTCR will likely continue their challenge, their loss at this point greatly lowers their likelihood of success on appeal. Separately, the USPTO attached no great weight to the declaration of Trounson, now the head of CIRM.

Further details are available at IPBiz and in my article touching on stem cell patents which appears in 88 JPTOS 239 (2006).

LBE comment at californiastemcellreport.

Also, U.S. patent office upholds WARF patent

See also earlier IPBiz post:
PubPat, FTCR lose in inter partes re-exam of WARF stem cell patent

See also Jacob Goldstein, As Stem Cell Patent Fight Lingers, Science Marches On, which mentions
Challenges to Human Embryonic Stem Cell Patents , but which does NOT mention 88 JPTOS 239 (2006). Of the line: The Public Patent Foundation argues the patents should be invalidated, and has won some legal battles in the larger war, IPBiz predicts that the re-exam battles won by PubPat will ALL shortly be undone as to claim rejections in ALL three patents.

Recall some text on a 15 April 2007 posting of californiastemcellreport:

"WARF’s executives are understandably unhappy about the patent office’s decision because they think they will lose money. But they could save an enormous amount of money, and gain a great deal of good will, by quietly dropping their claims to human embryonic stem cells and allowing the judgment of the patent office to stand. If they did this, they could be seen as a supporter, not an exploiter, of scientific research."

It's glib to talk about the result of an Office Action before the patentee had a chance to respond. Now that the patentee responded, and the claims of the '913 are patentable, perhaps it's time for the "requesters to quietly drop their assertions and allow the judgment of the patent office to stand." IPBiz suspects that the requesters will NOT accept the decision of patentability made by the USPTO. Keep in mind, while this drags on, the claims are valid and enforceable.


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