Will Wisconsin's Patents Block Embryonic Stem Cell Research?

The stem cell article by Jennifer Washburn in theNeither the Washburn nor Loring/Campbell articles
April 12, 2006 issue of the Los Angeles Timesdiscuss that patent infringement suits against
mentioned Jeanne Loring, an embryologist at thestates and state bodies (such as California's CIRM)
Burnham Institute in La Jolla: In 1999, Loring triedare likely to be heard in state court, not federal
to launch a company to work with stem cells, butcourt, according to the Supreme Court decision in
the firm quickly collapsed when it couldn't raise theFlorida Prepaid Postsecondary.Although there may
$100,000 in upfront fees the Wisconsin foundationbe a visceral reaction to lash out against patents
[WARF] charged.Washburn's article did notperceived to be overbroad, the cautionary tale of
mention an earlier article by Loring and co-authorNTP v. RIM suggests that sometimes negotiation
Cathryn Campbell, entitled "Intellectual Propertyis the better path for infringement defendants.
and Human Embryonic Stem Cell Research," whichFurther, Loring/Campbell mention the possibility of
appeared in 311 Science 1716 on March 24, 2006.an interference with Plurion, although this most
Therein, Loring and Campbell mentioned thelikely would change only the identity of the owner
changing royalty fees charged by WARF inof controlling patents. Separately, one recalls that
response to a "memo of understanding" (MOU)the Thomson patents are about creating stem
with the federal funding agency. Loring/Campbellcells from blastocysts; they are not about
mentioned the "SBIR paradox" as to funding of"cloning" [SCNT] technology. To date, traditional
small businesses, which may be a problem, butmethods for stem cell separation from
not one associated with patent law.Both theblastocysts have failed wherein SCNT is involved.
Washburn and Loring/Campbell articles suggestedThere may be a question of enablement as to
that the WARF/Thomson patents would pose athe Thomson patents for cases involving SCNT,
long-term threat to stem cell science. Washburnwhich is where the holy grail of patient-specific
noted the position of the Foundation forstem cell lines resides.As a general proposition, the
Taxpayer and Consumer Rights, based in Santastate taxpayers underwriting efforts such as
Monica, which urges California's stem cell agencyProposition 71 have the expectation that money
to challenge the Wisconsin patents. In greaterwill be used for research, not to litigate the patent
detail, the Santa Monica group stated: The stempositions of prior researchers. Extrapolating
cell institute faces a threat from a foundationfurther, state funding to achieve patent positions
associated with the University of Wisconsincould lead to a balkanization of research, in which
[WARF], which claims that it is owed licensing feesentities from individual states (such as California,
because it holds patents on all human embryonicNew Jersey, Maryland, Illinois, Connecticut) are
stem cells in the United States. John M. Simpsonfighting one another, rather than
stated: "This is an outrageous raid on the treasurycollaborating.Lawrence B. Ebert is a registered
of California based on over-reaching patents. Nopatent attorney located in central New Jersey. He
other nation in the world recognizes them. Theyholds a Ph.D. from Stanford, a J.D. from the
are blocking vital research in the United States. IUniversity of Chicago, maintains a blog at
call on the stem cell institute to challenge theIPBiz.blogspot.com, and is the author of LESSONS
patents' validity."Neither the Washburn nor LoringTO BE LEARNED FROM THE HWANG MATTER:
Campbell articles discuss the possible researchANALYZING INNOVATION THE RIGHT WAY,
safe harbor created in the Hatch-Waxman Actpublished in the Journal of the Patent &
and codified at 35 USC 271(e)(1). The breadth ofTrademark Office Society [88 JPTOS 239 (March
this safe harbor was recently affirmed in the2006)]. Ezine draft submitted April 13, 2006.
Supreme Court decision of Merck v. Integra.