Friday, January 26, 2007

Ebert on WARF and the Patent Challenge

Lawrence Ebert, a patent attorney in New Jersey, has a different take on WARF and the stem cell patent matter. Among other things, he faults The Sacramento Bee and challenges the challenge to the patents:
"Patent claims are not invalidated because earlier researchers paved the way for later researchers. PubPat's anticipation argument for human embryonic stem cells is based on a prior reference which is not enabled as to human embryonic stem cells. To look in a different area, the work of Galileo (and others) may have paved the way for the Wright Brothers, but no one achieved three dimensional flight control before the Wright Brothers, or taught how three dimensional flight control could be achieved. PubPat's obviousness argument is based on the assertion: recipe for mouse embryonic stem cells renders obvious recipe for human embryonic stem cells. If this were true, it probably would not have taken 15 years between mouse and human."
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  1. Thanks for the mention of my Oct. 2006 post analyzing the obviousness challenge to the WARF patents. With a decision on obviousness pending at the Supreme Court in KSR v. Teleflex, the hurdle for invalidity through obviousness may be relaxed, although perhaps not enough for the argument "recipe for mice renders recipe for humans obvious."

    Californiastemcellreport has a link to a Jan. 07 post on IPBiz about the SacBee not crediting PubPat's role in the re-exam AND perceiving a cause/effect relationship that probably isn't there.

    An August 26, 06 post on IPBiz identified a more serious error by the SacBee in suggesting that the recent work by ACT would impact the validity of the earlier WARF patents. They call it PRIOR art for a reason. See
    Sacramento Bee article on ACT stem cell work seriously flawed.
    Errors happen. Corrections should also happen. See 88 JPTOS 743.

    It's good to see californiastemcellreport discuss the Gilbert work on the likely magnitude of patent royalties from stem cell patents in the next ten years. That of Noll is also relevant, as is 88 JPTOS 239 (March 06). This clarification, and a recognition of the impact of 35 USC 271(e)(1) in this area of research, will allow taxpayers to get a clearer picture of what they will, and will not, receive for their tax dollars.

    Lawrence B. Ebert

  2. As a follow-up, the remarks of FTCR to the effect that WARF's patents will impede research and innovation sound in deja vu. The same arguments were made about the patent of the Wright Brothers. At that time, the arguments resonated because of World War I, and, (as in the tv commercial) the Wrights got hosed, in that a patent pool was created. Curiously, the pool deterred small inventors, didn't produce a single American fighter plane used in WWI, but did create a huge surplus of planes after the war. [See, for example, Patent Thickets and the Wright Brothers.]

    As noted, it is encouraging that californiastemcellreport did discuss the work of Gilbert. However, Gilbert did not get into many of the more scientific issues in embryonic stem cells, such as how the impact of the Hwang fraud is going to impact the therapeutic stem cell time line. Putting aside the "bad apple" issue, one notes 1) that none of Hwang's international scientific peers recognized the bad work (Korean co-workers led the way) and 2) a year has passed but no one has reproduced the work in the first paper, much less the second paper. There are no human SCNT-derived stem cell lines at this time.

    The Baker study may well become a poster child for long existent arguments about economists and intellectual property. "George Priest went so far in 1986 as to say that economists could tell lawyers virtually nothing about the appropriate scope of intellectual property rights...." See What have non-technically trained lawyers contributed to IP law?

    Both FTCR and californiastemcellreport have linked patent invalidity arguments and licensing policy. A patent is not invalid because of licensing policy of the patentee. FTCR has stated that the WARF patents are somehow bad patents because they are broad. There is currently much discussion about the impact of bad patents on innovation. See
    Bad Patents, or Bad Copyists?