Madison, Wisconsin . . . The Wisconsin Alumni Research Foundation (WARF) yesterday filed an Information Disclosure Statement with the U.S. Patent and Trademark Office in the inter partes reexamination proceeding concerning WARF’s U.S. Patent No. 7,029,913, which covers primate embryonic stem cells, including human cells. Federal law imposes a duty of candor on patent owners to bring to the attention of the patent examiner information that is material to the patentability of the invention.
The Foundation for Taxpayer and Consumer Rights (FTCR) and the Public Patent Foundation (PUBPAT) requested the reexamination challenging the validity of WARF’s human embryonic stem cell patent. In support of their challenge, FTCR and PUBPAT filed declarations. Certain material information was not included in those declarations. WARF’s filing today seeks to provide that material information to the examiner.
WARF Managing Director Carl Gulbrandsen states, “There is an affirmative duty to provide material information to the examiner during a proceeding such as the reexamination. The information provided to the patent office yesterday seeks to comply with that duty.”
Information that FTCR and PUBPAT did not include in the declarations includes the following facts:
* Dr. Jeanne Loring, who in her declaration contends that Dr. James Thomson’s invention was obvious at the time of discovery, applied for a patent herself, after the filing of the Thomson patent, covering the invention relating to isolating human embryonic stem cells and signed an oath claiming she was an original first inventor.
* Dr. Loring stated in her declaration that she had derived nine stem cell lines that were listed on the National Institutes of Health Stem Cell Registry in 2001. She failed to state that the NIH subsequently posted the listing under the category “cells lines not currently available for shipping,” noting that these lines failed to expand into undifferentiated cell cultures.
* Dr. Alan Trounson stated in his declaration that the isolation of human embryonic stem cells was obvious at the time of the 7,029, 913 patent, yet after the filing of this patent, he declared in 2000 to the U.S. Patent and Trademark Office that he was a joint inventor in three human embryonic stem cell patents.
In its response to the U.S. Patent and Trademark Office’s initial action on the reexamination of its stem cell patents, WARF cited stem cell expert Dr. Colin Stewart, whose declaration affirms the validity of the Thomson patents.
“We stand firmly behind the credibility, expertise and declaration of leading stem cell researcher Dr. Colin Stewart, cited in our May 31, 2007, response to the U.S. Patent Office,” states Gulbrandsen. “Dr. Stewart was deeply involved in stem cell research at the National Institutes of Health during the time of Dr. Thomson’s discovery and understands the breakthrough nature of his discovery.” Stewart currently is a stem cell researcher at the prestigious Institute of Medical Biology in Singapore.
WARF serves the University of Wisconsin-Madison scientific community and society at-large by patenting the discoveries of UW-Madison researchers and licensing these technologies to companies in Wisconsin, the United States and around the world. WARF, a non-profit foundation, was established in 1925 and is the world’s first university-based technology transfer office.
WARF, through its affiliated non-profit WiCell Research Institute, has provided human embryonic stem cells to more than 400 research groups in 40 states and 24 countries. The scientists who receive the cells are free to patent and publish their findings. WARF also has 18 commercial licensees for human embryonic stem cell technologies-companies that are developing research products, diagnostics and therapies, which eventually will fulfill the potential of this technology to change the course of human health.
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