06 Nov Amended stem cell patent claims not enough, consumer groups say
Santa Monica, Calif. – Amended stem cell patent claims submitted by the Wisconsin Alumni Research Foundation should not be enough to overcome the U.S. Patent and Trademark Office examiner’s rejections of those patents, according to consumer groups who have challenged the patents.
In formal comments filed last week, the Foundation for Taxpayer and Consumer Rights and the Public Patent Foundation asked that the rejections first issued by the PTO be made final.
The organizations contend the patents are overly broad and should never have been granted because the discovery on which they are based is “obvious” in light of prior art, or existing science at the time of advances by University of Wisconsin-Madison professor James Thomson.
“Stem cell science would be best served if WARF simply withdrew their overreaching claims,” John M. Simpson, stem cell project director for the FTCR, said in a release.
In July 2006, the two organizations challenged three patents held by WARF on the grounds they are hindering stem cell research, a charge that WARF has repeatedly denied. In its initial ruling in March of 2007, the patent office rejected all the claims of all three patents.
Clarifying language
WARF holds three stem cell patents based on work done by Thomson. In response to the examiner’s initial ruling, WARF submitted counter arguments, questioning the movitation of some stem cell researchers that support the challenge. Last month, the foundation filed technical amendments to the patent claims.
According to WARF, the amendments attempt to clarify claim language to make it consistent among the three stem cell patents under re-examination. The technical language submitted to PTO examiners attempts to more clearly differentiate Thomson’s patented discoveries from prior art.
Since the challenge was filed, WARF also has eased licensing requirements for stem cell researchers.
In their most recent comments, the Foundation for Taxpayer and Consumer Rights and the Public Patent Foundation said “the claims as amended by the patent owner remain unpatentable” and the rejection made by the [patent] examiner still is valid and may properly be made final.
Daniel B. Ravicher, executive director of Public Patent Foundation, said none of WARF’s amendments are sufficient to overcome the examiner’s rejections. “As such, the claims remain unpatentable,” he said.
Janet Kelly, communications director for WARF, said based on its review of the filing, WARF does not believe it offers any relevant new information.
“WARF continues to believe that Dr. James Thomson’s breakthrough discoveries were, and are, patentable,” Kelly said. “We are confident that ultimately our patents will be upheld.”
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