Will Wisconsin's Patents Block Embryonic Stem Cell Research?

The stem cell article by Jennifer Washburn in the AprilMerck v. Integra. Neither the Washburn nor Loring
12, 2006 issue of the Los Angeles Times mentionedCampbell articles discuss that patent infringement suits
Jeanne Loring, an embryologist at the Burnham Instituteagainst states and state bodies (such as California's
in La Jolla: In 1999, Loring tried to launch a company toCIRM) are likely to be heard in state court, not federal
work with stem cells, but the firm quickly collapsedcourt, according to the Supreme Court decision in
when it couldn't raise the $100,000 in upfront fees theFlorida Prepaid Postsecondary.Although there may be
Wisconsin foundation [WARF] charged.Washburn'sa visceral reaction to lash out against patents
article did not mention an earlier article by Loring andperceived to be overbroad, the cautionary tale of NTP
co-author Cathryn Campbell, entitled "Intellectualv. RIM suggests that sometimes negotiation is the
Property and Human Embryonic Stem Cell Research,"better path for infringement defendants. Further, Loring
which appeared in 311 Science 1716 on March 24, 2006.Campbell mention the possibility of an interference with
Therein, Loring and Campbell mentioned the changingPlurion, although this most likely would change only the
royalty fees charged by WARF in response to aidentity of the owner of controlling patents. Separately,
"memo of understanding" (MOU) with the federalone recalls that the Thomson patents are about
funding agency. Loring/Campbell mentioned the "SBIRcreating stem cells from blastocysts; they are not
paradox" as to funding of small businesses, which mayabout "cloning" [SCNT] technology. To date, traditional
be a problem, but not one associated with patentmethods for stem cell separation from blastocysts
law.Both the Washburn and Loring/Campbell articleshave failed wherein SCNT is involved. There may be a
suggested that the WARF/Thomson patents wouldquestion of enablement as to the Thomson patents
pose a long-term threat to stem cell science.for cases involving SCNT, which is where the holy grail
Washburn noted the position of the Foundation forof patient-specific stem cell lines resides.As a general
Taxpayer and Consumer Rights, based in Santaproposition, the state taxpayers underwriting efforts
Monica, which urges California's stem cell agency tosuch as Proposition 71 have the expectation that
challenge the Wisconsin patents. In greater detail, themoney will be used for research, not to litigate the
Santa Monica group stated: The stem cell institutepatent positions of prior researchers. Extrapolating
faces a threat from a foundation associated with thefurther, state funding to achieve patent positions could
University of Wisconsin [WARF], which claims that it islead to a balkanization of research, in which entities
owed licensing fees because it holds patents on allfrom individual states (such as California, New Jersey,
human embryonic stem cells in the United States. JohnMaryland, Illinois, Connecticut) are fighting one another,
M. Simpson stated: "This is an outrageous raid on therather than collaborating.Lawrence B. Ebert is a
treasury of California based on over-reaching patents.registered patent attorney located in central New
No other nation in the world recognizes them. TheyJersey. He holds a Ph.D. from Stanford, a J.D. from the
are blocking vital research in the United States. I call onUniversity of Chicago, maintains a blog at
the stem cell institute to challenge the patents'IPBiz.blogspot.com, and is the author of LESSONS TO
validity."Neither the Washburn nor Loring/CampbellBE LEARNED FROM THE HWANG MATTER:
articles discuss the possible research safe harborANALYZING INNOVATION THE RIGHT WAY,
created in the Hatch-Waxman Act and codified at 35published in the Journal of the Patent & Trademark
USC 271(e)(1). The breadth of this safe harbor wasOffice Society [88 JPTOS 239 (March 2006)]. Ezine
recently affirmed in the Supreme Court decision ofdraft submitted April 13, 2006.