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Wisconsin Alumni Research Foundation Defends Patents in Response to Initial US PTO Action

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The Wisconsin Alumni Research Foundation (WARF) has filed a response refuting the U.S. Patent and Trademark Office (PTO) first office action in the ongoing reexamination of the foundation's patents on human embryonic stem cells.

As the patenting and licensing organization for the University of Wisconsin–Madison, WARF holds the patents on the breakthrough discoveries of Dr. James S. Thomson, a UW–Madison professor and researcher in developmental biology, who was the first person in the world to successfully isolate and culture human embryonic stem cells. The patents were challenged late last year and WARF responded to a first office action from the PTO.

Pointing out that the PTO's initial rejection of the claims was based upon an analysis of several prior patents and scientific publications, Carl Gulbrandsen, managing director of WARF, said that the patents and publications the PTO relied upon were not relevant to the isolation and proliferation of human embryonic stem cells.

Gulbrandsen's comments were echoed by Dr. Colin Stewart, a leading stem cell researcher at the Institute of Medical Biology in Singapore, who submitted a declaration in support of the Thomson patents that emphasized the differences between mouse stem cells, which were prominent in the PTO's rejections, and the human embryonic stem cells that were isolated and characterized by Thomson.

WARF also provided the PTO with a long list of accolades bestowed upon Thomson including honors from the American Association for the Advancement of Science, the Biotech Hall of Fame, the World Technology Network and the American College of Veterinary Pathologists.

Time Magazine called Thomson one of the doctors "who are changing the world" and the AAAS' journal, Science, called his invention one of the most significant milestones in the history of science.

"Clearly, at the time of the discoveries" Gulbrandsen said, "leading scientists and scholars from around the world saw Thomson as the first scientist to isolate and proliferate human embryonic stem cells." Gulbrandsen reiterated his firm belief that the patents are valid, saying "When the process has run its course the patented inventions will remain intact."