An short article by Jennifer Washburn in the April 12, 2006 concern of the Los Angeles Situations entitled “The legal lock on stem cells
Two patents that go over important investigate spots are setting again science,” discusses patent royalty difficulties surrounding California’s Proposition 71/CIRM beforehand talked over in this ezine (“Foreseeable future Bumps In The Street For Condition-Funding Of Stem Mobile Study,” Nonetheless, unlike the topic in the ezine, which instructed that patent royalty concerns were bumps in the street which could be labored out, the Washburn posting recommended that stem mobile patents had been by themselves problematic.

Washburn wrote: “The foundation’s [WARF’s] patents are primarily based on the operate of James Thompson, a College of Wisconsin professor who was the very first scientist to isolate embryonic stem cells, in 1998. But the patents are so broad — unreasonably broad — that they cover all human embryonic stem cell strains in the U.S., not just the certain traces formulated by Thompson.”

Obliquely, Washburn suggests that California’s CIRM should problem the validity of WARF’s patents: “The Foundation
for Taxpayer and Buyer Legal rights, based mostly in Santa Monica, has urged California’s stem mobile agency to obstacle the Wisconsin patents.”

The basic WARF patent is US 5,843,780 (issued 1 Dec 1998 to James A. Thomson, based mostly on application 591246 filed 18 Jan 1996 the software was a continuation-in-element of U.S. software Ser. No. 08/376,327 filed Jan. 20, 1995. This invention was created with United States governing administration assistance awarded by NIH NCRR Grant No. RR00167. Hence, if California’s CIRM were being to problem the ‘780 patent, a person would have point out taxpayer dollars of California employed to challenge a patent held by a Wisconsin agency (WARF), centered on research compensated by for by the federal Countrywide Institutes of Wellness (NIH). It is doubtful that point out taxpayers in California or in Wisconsin, or federal taxpayers, would find this a handy expenditutre of money.

The prior ezine article stated: An crucial information to value is that income from point out-funding of stem mobile investigation intended to create new horizons in healthcare procedure might be directed to paying off holders of already-produced legal rights. It may perhaps nicely occur that there are valid patent legal rights in the stem mobile location, and states performing in the space need to negotiate with the holders of people legal rights. Separately, the Hatch-Waxman Act designed in 35 USC 271(e)(1) a safe and sound harbor for investigate employed to furnish info to federal organizations (these kinds of as the Fda). The Supreme Courtroom gave this safe and sound harbor excellent breadth in the circumstance Merck v. Integra.

Independently, it is ironic for Washburn to complain that WARF is asserting its patent legal rights while, at the same time, CIRM will be in search of to receive patent legal rights to enforce towards other folks. Whilst the patent royalty distribution under Proposition 71 is muddied by federal tax challenges connected with the planned use of tax exempt bonds, California voters have been instructed that there would be income from patent royalties.

As a small aside to the Washburn post, the two patents talked about therein, U.S. 5,843,780 and 6,200,806, have been respectively a continuation-in-aspect and a divisional simply because neither was a continuation, the remark about the applicant can file a “continuation” with a further till it receives permitted was inappropriate to these facts. The USPTO is at the moment learning improvements to the “continuation” approach, but even the improvements, as presently proposed, would not have impacted these two apps. Discussions about the influence of recurring continuations on patent grant fee have been discussed in 4 CHI.-KENT J. INTELL. PROP. 186 (obtainable at ironically, misunderstanding of the patent grant rate underlies some of the arguments about the deficiency of patent top quality relied on in the Washburn short article.