An posting by Jennifer Washburn in the April 12, 2006 challenge of the Los Angeles Instances entitled “The authorized lock on stem cells
Two patents that include vital study regions are placing again science,” discusses patent royalty challenges bordering California’s Proposition 71/CIRM earlier reviewed in this ezine (“Long term Bumps In The Road For Condition-Funding Of Stem Cell Exploration,” http://ezinearticles.com/?id=171034.) Nonetheless, compared with the concept in the ezine, which prompt that patent royalty troubles have been bumps in the street which could be labored out, the Washburn write-up prompt that stem cell patents were being themselves problematic.
Washburn wrote: “The foundation’s [WARF’s] patents are primarily based on the perform of James Thompson, a University of Wisconsin professor who was the initially scientist to isolate embryonic stem cells, in 1998. But the patents are so broad — unreasonably wide — that they address all human embryonic stem cell lines in the U.S., not just the specific traces made by Thompson.”
Obliquely, Washburn indicates that California’s CIRM should challenge the validity of WARF’s patents: “The Basis
for Taxpayer and Purchaser Rights, based in Santa Monica, has urged California’s stem mobile agency to challenge the Wisconsin patents.”
The primary WARF patent is US 5,843,780 (issued 1 Dec 1998 to James A. Thomson, based mostly on software 591246 submitted 18 Jan 1996 the application was a continuation-in-portion of U.S. application Ser. No. 08/376,327 submitted Jan. 20, 1995. This creation was built with United States govt aid awarded by NIH NCRR Grant No. RR00167. Therefore, if California’s CIRM were being to problem the ‘780 patent, one particular would have state taxpayer funds of California used to problem a patent held by a Wisconsin company (WARF), primarily based on investigation compensated by for by the federal Nationwide Institutes of Health (NIH). It is uncertain that state taxpayers in California or in Wisconsin, or federal taxpayers, would find this a useful expenditutre of money.
The prior ezine short article stated: An important concept to take pleasure in is that cash from point out-funding of stem cell analysis supposed to develop new horizons in healthcare therapy may well be directed to having to pay off holders of now-made legal rights. It might nicely materialize that there are valid patent rights in the stem cell region, and states doing the job in the spot will have to negotiate with the holders of individuals legal rights. Individually, the Hatch-Waxman Act created in 35 USC 271(e)(1) a risk-free harbor for study utilized to furnish information and facts to federal businesses (such as the Fda). The Supreme Courtroom gave this harmless harbor excellent breadth in the situation Merck v. Integra.
Independently, it is ironic for Washburn to complain that WARF is asserting its patent legal rights though, at the very same time, CIRM will be seeking to attain patent rights to implement in opposition to many others. Despite the fact that the patent royalty distribution underneath Proposition 71 is muddied by federal tax difficulties associated with the prepared use of tax exempt bonds, California voters were told that there would be revenue from patent royalties.
As a minimal apart to the Washburn article, the two patents talked over therein, U.S. 5,843,780 and 6,200,806, were being respectively a continuation-in-section and a divisional mainly because neither was a continuation, the remark about the applicant can file a “continuation” with another until finally it receives accredited was inappropriate to these specifics. The USPTO is currently studying modifications to the “continuation” method, but even the improvements, as at this time proposed, would not have impacted these two programs. Conversations about the impact of repeated continuations on patent grant amount have been discussed in 4 CHI.-KENT J. INTELL. PROP. 186 (obtainable at http://jip.kentlaw.edu) ironically, misunderstanding of the patent grant charge underlies some of the arguments about the absence of patent high-quality relied on in the Washburn short article.