Patent Office Upholds Remaining WARF Stem Cell Patents

Final decisions by the U.S. Patent and Trademark Office reinforce the patentability of Thomson’s human embryonic stem cell discoveries


MADISON, Wis. –The United States Patent and Trademark Office again has upheld the claims of the Wisconsin Alumni Research Foundation (WARF) by making determinations on the non-profit foundation’s two most important base human embryonic stem cell patents. These decisions are final and cannot be appealed.


These actions mark the second time in two weeks that the patent office has supported the claims of key stem cell patents held by WARF, a private supporting organization of the University of Wisconsin-Madison. On February 25, the office affirmed the claims of a third patent also relating to Dr. James Thomson’s discovery and culture of human embryonic stem cells. Thomson, the renowned stem cell researcher and pioneer, is a professor of anatomy at the UW-Madison and recently joined the Morgridge Institute for Research, part of the new Wisconsin Institutes for Discovery, as director of regenerative biology.


Carl Gulbrandsen, managing director of WARF, praised the series of patent office rulings, noting that appropriate intellectual property protections are critical to stimulating private sector investment in technology development and bringing the benefits of research to the public in the form of new therapies and treatments.


“The patent office has conducted a thoughtful and thorough review of all three patents and we applaud this final decision on our two most important base stem cell patents,’’ Gulbrandsen said. “Dr. Thomson’s groundbreaking work already has led to additional scientific breakthroughs and this latest ruling affirms that his pioneering discoveries are patentable inventions.’’


The decision affects two patents for primate and human embryonic stem cells known as  “780” and “806” (U.S. Pats. 5,843,780 and 6,200,806). The review and affirmation of patent “913” (U.S. Pat. 7,029,913), which was upheld Feb. 25, followed a slightly different review process that allows for public comment and appeal.


The decision to uphold the patents concludes a review process for “780” and “806” that began in October 2006, when the patent office agreed to reexamine the patents following challenges brought by the New York-based Public Patent Foundation and the California-based Foundation for Taxpayer and Consumer Rights.


WARF continues to support the distribution of cell lines and methodologies for isolating and culturing human embryonic stem cells to academic researchers through its affiliate, the non-profit WiCell Research Institute, which hosts the National Stem Cell Bank. Since 1999, WiCell has fulfilled 914 free academic licenses for patent rights to stem cells and   has shipped cells to more than 563 researchers in 25 countries and 40 states. In addition, WARF has completed agreements for 25 commercial licenses with industry partners.


Academic scientists using these cell lines and methodologies face no restrictions on patenting or publishing their own novel work. Currently, two vials containing approximately 6 million stem cells capable of establishing multiple new colonies are priced for academic researchers at $500.


WARF was established as the world’s first university-based technology transfer office in 1925. It supports world-class research at the University of Wisconsin-Madison by funding research, protecting the intellectual property of university faculty, staff and students and by licensing inventions resulting from their work to benefit the world.