An article by Jennifer Washburn within the April 12, 2006 concern of the Los Angeles Occasions entitled “The authorized lock on stem cells;
Two patents that cowl key analysis areas are setting again science,” discusses patent royalty points surrounding California’s Proposition 71/CIRM beforehand mentioned on this ezine (“Future Bumps In The Street For State-Funding Of Stem Cell Analysis,” http://ezinearticles.com/?id=171034.) Nevertheless, in contrast to the theme within the ezine, which urged that patent royalty points had been bumps within the street which could possibly be labored out, the Washburn article urged that stem cell patents had been themselves problematic.
Washburn wrote: “The muse’s [WARF’s] patents are primarily based on the work of James Thompson, a College of Wisconsin professor who was the primary scientist to isolate embryonic stem cells, in 1998. However the patents are so broad — unreasonably broad — that they cowl all human embryonic stem cell strains within the U.S., not simply the precise strains developed by Thompson.”
Obliquely, Washburn means that California’s CIRM ought to problem the validity of WARF’s patents: “The Basis
for Taxpayer and Shopper Rights, primarily based in Santa Monica, has urged California’s stem cell company to problem the Wisconsin patents.”
The fundamental WARF patent is US 5,843,780 (issued 1 Dec 1998 to James A. Thomson, primarily based on software 591246 filed 18 Jan 1996; the applying was a continuation-in-part of U.S. software Ser. No. 08/376,327 filed Jan. 20, 1995. This invention was made with United States authorities assist awarded by NIH NCRR Grant No. RR00167. Thus, if California’s CIRM had been to problem the ‘780 patent, one would have state taxpayer cash of California used to problem a patent held by a Wisconsin company (WARF), primarily based on analysis paid by for by the federal Nationwide Institutes of Well being (NIH). It’s uncertain that state taxpayers in California or in Wisconsin, or federal taxpayers, would discover this a helpful expenditutre of cash.
The earlier ezine article said: An necessary message to understand is that cash from state-funding of stem cell analysis supposed to create new horizons in medical therapy could also be directed to paying off holders of already-created rights. It could nicely occur that there are legitimate patent rights within the stem cell space, and states working within the space should negotiate with the holders of these rights. Individually, the Hatch-Waxman Act created in 35 USC 271(e)(1) a protected harbor for analysis used to furnish info to federal companies (such because the FDA). The Supreme Court docket gave this protected harbor nice breadth within the case Merck v. Integra.
Individually, it’s ironic for Washburn to complain that WARF is asserting its patent rights whereas, on the identical time, CIRM will probably be searching for to acquire patent rights to implement in opposition to others. Though the patent royalty distribution underneath Proposition 71 is muddied by federal tax points related to the deliberate use of tax exempt bonds, California voters had been instructed that there could be revenue from patent royalties.
As a minor apart to the Washburn article, the 2 patents mentioned therein, U.S. 5,843,780 and 6,200,806, had been respectively a continuation-in-part and a divisional; as a result of neither was a continuation, the comment about the applicant can file a “continuation” with one other till it will get accepted was inappropriate to those information. The USPTO is at the moment learning adjustments to the “continuation” course of, however even the adjustments, as at the moment proposed, wouldn’t have impacted these two functions. Discussions concerning the impact of repeated continuations on patent grant charge have been mentioned in 4 CHI.-KENT J. INTELL. PROP. 186 (accessible at http://jip.kentlaw.edu); paradoxically, misunderstanding of the patent grant charge underlies a number of the arguments concerning the lack of patent high quality relied upon within the Washburn article.