Wednesday, April 04, 2007

Baristas to Bioworld: More on WARF Ruling Impact

More coverage and commentary on the WARF patent ruling is filtering in today.

From Randall Osborne, west coast editor of Bioworld, comes this:
"'It's a big thing,' said Paul Lesko, patent attorney with SimmonsCooper in East Alton, Ill. 'Most times there will be at least an amendment, if the patent survives,' although the process could take years.

"'When it comes to a [final PTO action], I'd say a wholesale rejection is more common than anything else,' Lesko said, especially with patents that contain claims that are fewer in number, like WARF's.
From the Patent Baristas blog, Stephen Albainy-Jenei writes:
"I don’t think anyone should go out and throw a party just yet. The patent office grants over 90 percent of the requests for reexamination and many of those patents are issued with substantially the same claim(s) as before reexamination. WARF, a nonprofit group that acts as UW’s tech transfer office, will have a chance to prove the cells are novel. And, if the claims are ultimately rejected, it can still appeal or narrow the claims. This could take years to resolve."
Joff Wild, editor of Intellectual Asset Management magazine, says WARF is now on the "defensive" and adds:
"Although WARF changed its licensing policy earlier this year, 20 years worth of income from its stem cell portfolio still potentially represents a colossal amount of money."
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  1. A very important point, untouched in the above comments, is that a great portion of the rejections are based on (rebuttable) presumptions

    #1. that the cited prior art ENABLED the isolation and continuation of human stem cell lines. Given that NO ONE actually isolated or maintained human stem cell lines based on the cited prior art, it may be fairly easy to rebut the presumption of enablement.

    #2. that the USPTO used In re Best-type rejections merely placed the burden of proof on the patentee. That is, the USPTO is saying "this prior art looks the same, but we don't have labs to check it out. Prove it isn't the same."

    More details are given on

  2. Given that rebuttable presumptions are present, one should expect a vigorous response by WARF in attacking the presumptions. Keep in mind, WARF has not yet made a response to the initial Office Action, so that it would be premature to infer anything about the outcome of the case from the initial Office Action itself. While some of the comments above talk about years of appeals (which is possible), it is WARF's interest to win the case in the re-exam (consider how the Smucker re-exam played out, wherein the patent died for reasons unrelated to the prior art cited in the Office Actions).

    Thus, recall the strong stance taken by Eolas/Berkeley in the re-exam of their patent. They overcame TWO SETS of rejections, amended nothing, and came out of re-exam with the initial claim set intact.

    Also note the irony in the use by PubPat/FTCR of the Williams patent against the WARF patent(s), wherein one overreaching patent is used against another (allegedly) overreaching patent.

    First Office Action rejects claims of WARF's patents

  3. Of the "wholesale rejection" remark, one can cite californiastemcellreport itself for the fact that only 12% of re-exams lead to cancellation of all claims.


    Separately, for anyone interested in the nuances of "prophetic" discoveries made in the Hogan patent cited against Thomson / WARF, see

    You have to keep your eye on the tense of the verb.