Patent office concludes re-exam of two WARF stem cell patents

Madison, Wis. - In a step that official concludes the re-examination of two important embryonic stem cell patents, the United States Patent and Trademark Office has issued reexamination certificates for the two patents, which are held by the Wisconsin Alumni Research Foundation.

According to WARF, the issuing of the certificates officially concludes a re-examination process for the patents that began in October 2006, and was decided in WARF's favor in March of 2008.

The patent office issued certificates for patents “780” and “806,” which date back to the 1995 and 1998 discoveries of the isolation and culture of primate and human embryonic stem cells made at the University of Wisconsin-Madison. Those discoveries were made by Dr. James Thomson, professor of anatomy at UW-Madison and director of regenerative biology at the Morgridge Institute for Research, which is part of the now developing Wisconsin Institutes for Discovery.

The March ruling cannot be appealed, meaning the modified claims of the two patents are enforceable.

Carl Gulbrandsen, managing director of WARF managing director, said the detailed re-examinations make the patents stronger than ever and “affirm that Dr. James Thomson's groundbreaking discoveries are patentable inventions.”

During the re-examination, all three patents were modified in ways that narrowed their scope, and WARF lost its eligibility to claim certain damages. However, most of the patent claims in 780 and 806 have been upheld.

The patent examiner ruled that Thomson's discovery was not “obvious” in light of prior art, or scientific discovery. The patent challengers, the New York-based Public Patent Foundation and the California-based Consumer Watchdog (formerly the Foundation for Taxpayer and Consumer Rights), had asserted that Thomson's work was obvious in view of prior art and therefore not patentable.

A third patent, “913,” also was included in the challenge. It also was upheld earlier this year but it status is subject to appeal.

Since the March announcement that its patents were upheld, WARF said it has seen increased interest in licensing its stem cell technologies. It has completed 30 license agreements with 25 companies, including a recent agreement with Invitrogen Corp.

WARF said its affiliate, the WiCell Research Institute, now has fulfilled more than 900 free academic licenses for patent rights to stem cells and has shipped cells to more than 500 researchers in 25 countries.

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