An write-up by Jennifer Washburn in the April 12, 2006 situation of the Los Angeles Instances entitled “The legal lock on stem cells
Two patents that go over crucial exploration places are location back science,” discusses patent royalty troubles surrounding California’s Proposition 71/CIRM previously discussed in this ezine (“Long run Bumps In The Road For Point out-Funding Of Stem Cell Investigate,” http://ezinearticles.com/?id=171034.) Nonetheless, contrary to the theme in the ezine, which proposed that patent royalty difficulties were being bumps in the road which could be labored out, the Washburn write-up prompt that stem cell patents had been by themselves problematic.
Washburn wrote: “The foundation’s [WARF’s] patents are dependent on the operate of James Thompson, a College of Wisconsin professor who was the 1st scientist to isolate embryonic stem cells, in 1998. But the patents are so wide — unreasonably wide — that they go over all human embryonic stem mobile lines in the U.S., not just the particular strains formulated by Thompson.”
Obliquely, Washburn implies that California’s CIRM need to challenge the validity of WARF’s patents: “The Foundation
for Taxpayer and Buyer Legal rights, dependent in Santa Monica, has urged California’s stem mobile agency to challenge the Wisconsin patents.”
The fundamental WARF patent is US 5,843,780 (issued 1 Dec 1998 to James A. Thomson, based on application 591246 filed 18 Jan 1996 the application was a continuation-in-component of U.S. software Ser. No. 08/376,327 filed Jan. 20, 1995. This invention was created with United States government assist awarded by NIH NCRR Grant No. RR00167. Hence, if California’s CIRM were being to obstacle the ‘780 patent, 1 would have condition taxpayer revenue of California utilized to problem a patent held by a Wisconsin company (WARF), primarily based on investigation compensated by for by the federal Countrywide Institutes of Overall health (NIH). It is uncertain that condition taxpayers in California or in Wisconsin, or federal taxpayers, would obtain this a practical expenditutre of money.
The previous ezine article stated: An critical concept to value is that cash from state-funding of stem mobile study intended to generate new horizons in medical treatment method could be directed to having to pay off holders of presently-developed legal rights. It may well properly occur that there are valid patent legal rights in the stem mobile place, and states operating in the place will have to negotiate with the holders of those rights. Individually, the Hatch-Waxman Act produced in 35 USC 271(e)(1) a safe and sound harbor for investigation applied to furnish information to federal organizations (these as the Food and drug administration). The Supreme Courtroom gave this protected harbor wonderful breadth in the circumstance Merck v. Integra.
Independently, it is ironic for Washburn to complain that WARF is asserting its patent legal rights whilst, at the very same time, CIRM will be trying to get to acquire patent legal rights to implement in opposition to others. Despite the fact that the patent royalty distribution beneath Proposition 71 is muddied by federal tax problems linked with the planned use of tax exempt bonds, California voters ended up told that there would be money from patent royalties.
As a slight aside to the Washburn report, the two patents mentioned therein, U.S. 5,843,780 and 6,200,806, were respectively a continuation-in-element and a divisional since neither was a continuation, the remark about the applicant can file a “continuation” with another till it gets approved was inappropriate to these details. The USPTO is at present finding out changes to the “continuation” system, but even the adjustments, as currently proposed, would not have impacted these two applications. Conversations about the influence of recurring continuations on patent grant rate have been reviewed in 4 CHI.-KENT J. INTELL. PROP. 186 (available at http://jip.kentlaw.edu) ironically, misunderstanding of the patent grant level underlies some of the arguments about the lack of patent good quality relied upon in the Washburn article.