Home -> Law Blog Directory -> Patent Law Blogs -> IPBiz

Patent Law

: IPBiz

Nature comments on WARF win over PubPat, FTCR on stem cell patent

By Lawrence B. Ebert, Esq.

In its 5 March 2008 issue, the journal Nature commented on the USPTO action on the re-examined WARF stem cell patent, US 7,029,913:

In 2006, after critics challenged the patents on the basis that they were too broad and hindered the field of embryonic stem-cell research, the patent office said it would re-examine the three. The critics played down last week's decision, saying that WARF has already limited its claims in the upheld patent, and that the other two patents are more important. Rulings on those are still pending.

IPBiz notes that

#1. If WARF's "limiting" of claims in the '913 patent significantly changed the stem cell patent landscape, there would be no need for PubPat/FTCR to appeal. Yet, the losing parties PubPat/FTCR state that they do plan to appeal. If the claim amendments had obtained the objectives of PubPat and FTCR, there would be no need to appeal the USPTO decision. PubPat, FTCR, and Nature neglect to mention that the USPTO rejected basically every argument made by PubPat and FTCR.

#2. Although rulings on the other two patent re-examinations are currently pending, the fact that the USPTO found the two key references in the '913 re-exam not to be enabled will have a significant bearing on the other two re-exams, which in fact rely on the same two key references. Curiously, neither the critics nor Nature bothered to mention that.

See also

PubPat, FTCR lose in inter partes re-exam of WARF stem cell patent

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

Looking back on the PubPat challenge to the WARF patents

Bias of Eli Kintisch shows in "Small Win for Wisconsin in Stem Cell Fight "

For FTCR's take on the USPTO decision, see Closer Analysis Shows Consumer Groups Make Gains in Stem Cell Patent Challenges Against WARF. Appeal Still Planned Against Narrowed Claims:

- The original broad patent was abandoned showing it was under-served and new amended claims have been narrowed.
- The original patent covered all embryonic stem cells no matter how they are derived, but the amended "non-final" ruling, while permitting the patent, narrowed the claim only to stems cells derived from pre-implantation embryos.
- The newest stem cell research technology -- Induced Pluripotent Stem Cells (IPS cells) -- would clearly not be covered by the narrowed patent.
- Stem cells derived from fetal tissue could have been claimed under the old patent, but now cannot be.

As always, one has to watch for the "spinning" by FTCR. One asks

#1. Is anyone currently doing research on what was "given up" by WARF? If so, were they previously under threat of patent infringement by WARF? If not, who cares?

#2. Is anyone doing research on what was NOT SURRENDERED by WARF? If so, were they previously under threat of patent
infringement by WARF? Are they currently under threat of patent infringement by WARF? Are they presently deterred by WARF? If so, then PubPat and FTCR didn't succeed in their objective.

#3. FTCR neglected to mention the patent applications filed in the area of induced pluripotent stem cells.

Full post as published by IPBiz on March 06, 2008 (boomark / email).