WARF submits technical changes to stem cell patents

Madison, Wis. - The Wisconsin Alumni Research Foundation has filed amendments with the U.S. Patent and Trademark Office to make technical changes to the claims of its three human embryonic stem cells patents.

The amendments attempt to clarify claim language to make the language consistent among the three stem cell patents under re-examination.

Michael Falk, general counsel for WARF, said the technical language submitted to PTO examiners more clearly differentiates the University of Wisconsin-Madison's patented discoveries from “prior art,” or existing science at the time of UW professor James Thomson's advances.

In 1998, Thomson became the first researcher to isolate human embryonic stem cells, which led to the granting of the university's stem cell patents.

In October 2006, the patent office agreed to re-examine the patents after challenges were brought by the New York-based Public Patent Foundation and the California-based Foundation for Taxpayer and Consumer Rights. The groups contend that Thomson's discovery should not have been patented because it was obvious in light of prior art. The groups have asserted that the patents are overly broad and are stifling stem cell research in the United States, a charge that WARF denies.

Earlier this year, the patent office preliminarily rejected the stem cell patents in its first action of the re-examination, but now WARF has an opportunity to defend the validity of the patents.

Carl Gulbrandsen, managing director of WARF, said the organization remains confident that its stem cell patents will be upheld “when all the facts are known and the process runs it course.”

John Simpson, stem cell project director for the Foundation for Taxpayer and Consumer Rights, senses some backtracking by WARF. "I've not seen the filing, but my first impression is that it demonstrates that what they claimed originally was too broad, even in their own eyes," he said. "Interestingly, their last filing had already narrowed their claims somewhat.

"The best thing WARF could do for stem cell research and for itself would be to abandon all claims under these three patents."

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