Sunday, March 02, 2008

Looking back on the PubPat challenge to the WARF patents

Back in April 2007, had a post Sorry, Wisconsin: The Jig is Up on Patents in Embryonic Stem Cell Research based on the initial Office Action of the USPTO in the re-exam of three WARF patents on stem cells. The post included text:

The U.S. Patent and Trademark Office has upheld challenges by consumer advocates to three over-reaching patents on human embryonic stem cells and rejected patent claims by the Wisconsin Alumni Research Foundation (WARF), the Foundation for Taxpayer and Consumer Rights (FTCR) said today.

"This is a a great day for scientific research," said John M. Simpson. FTCR stem cell project director. "Given the facts, this is the only conclusion the PTO could have reached. The patents should never have been issued in the first place."

The posting on (a blog of the American Journal of Bioethics) reflected a serious misunderstanding of the procedure of re-examinations within the USPTO. The patent holder gets an opportunity to respond to the initial Office Action. The USPTO makes a final decision ONLY after "both sides" have been heard. On February 25, 2008, the USPTO mailed out its analysis (of the arguments of BOTH sides) on WARF's US 7,029,913, and concluded that the claims were valid. Based on the reasoning on the '913 patent, one expects the claims of the other two patents to be found valid.

An even sillier misunderstanding was reflected in the text: "Now that the PTO has ruled, WARF should simply drop all its claims," said Dan Ravicher, PUBPAT Executive Director. IPBiz notes that the PTO has indicated how it will rule in its February 2008 paper, but one suspects Ravicher and PubPat will not drop their assertions.

See also commentary by Simpson in July, 2006:

Earlier this spring, Dr. Robert Goldstein, chief scientific officer for the Juvenile Diabetes Research Foundation, told a CIRM committee meeting that the patents are "a major inhibition to productive scientific research." Because of WARF's claims, Goldstein said, his foundation has funded scientists in other countries "to create new and better stem cell lines, and that process ¿ is currently flourishing." U.S. companies interested in conducting stem cell research report they have had difficulty getting funding because of the WARF patent demands.

The USPTO rejected the obviousness challenges to the '913 patent, giving a detailed explanation of their lack of merit in the paper mailed on February 25, 2008. One recalls earlier text arguing "for" the obviousness of the patents:

A U.S. Supreme Court decision in favor of KSR International Corp. on Monday strengthens challenges against overreaching human embryonic stem cell patents held by an affiliate of the University of Wisconsin, the Foundation for Taxpayer and Consumer Rights (FTCR) and the Public Patent Foundation (PUBPAT) said.


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