With a government decision upholding an important 2006 patent on human stem cell techniques, biomedical researcher James Thomson and his school, the University of Wisconsin, Madison, have won the latest skirmish in a long-running conflict over patents.
The battle began 2 years ago when PubPat, a New York City-based nonprofit, joined with the Foundation for Taxpayer and Consumer Rights to challenge the patent and two others owned by the university-affiliated Wisconsin Alumni Research Foundation (WARF). Earlier this week, the U.S. Patent and Trademark Office (PTO) released an 85-page decision that upholds the patents yet narrows their scope slightly. "We're very pleased," says WARF's managing director, Carl Gulbrandsen. "We believed from the very beginning that Thomson’s discoveries were patentable."
In their effort to challenge the patent, WARF's opponents argued that Thomson's work was obvious when he performed it in the 1990s. Four prominent stem cell scientists--Jeanne Loring of the Scripps Research Institute in San Diego, California; Alan Trounson, now president of the California Institute for Regenerative Medicine, headquartered in San Francisco; and Douglas Melton and Chad Cowan of Harvard University--filed affidavits saying that published techniques that already existed for producing mouse stem cells rendered Thomson's work obvious. But the patent examiner rejected those arguments earlier this week, saying that the published science in the 1990s was too "unpredictable" to lead someone to try making human stem cells "with a reasonable expectation of success." Plus he questioned whether Loring and Trounson were "disinterested" because they have tried to patent stem cell techniques.
"The battle is hardly over," groups that had originally challenged the patent said today in a press statement. They plan to appeal the decision. The 2006 patent relies on the two others that the groups challenged, which were granted in 1998 and 2001 and are currently under review by PTO. Decisions invalidating those patents could severely weaken the 2006 patent, despite its solid position today.