A U.S. Supreme Court decision in favor of KSR International Corp. on Monday strengthens challenges against overreaching human embryonic stem cell patents held by an affiliate of the University of Wisconsin, the Foundation for Taxpayer and Consumer Rights (FTCR) and the Public Patent Foundation (PUBPAT) said.
The patents, held by the Wisconsin Alumni Research Foundation (WARF), were challenged by FTCR and PUBPAT on the grounds that they were "obvious" in light of previous scientific work. In March the Patent Office agreed with the challengers and rejected all of the patents' claims. WARF has two months to respond.
In Monday's unanimous decision the justices ruled that the U.S. Court of Appeals for the Federal circuit, which oversees patent law, had been too generous to patent holders. It said it had allowed patent holders to claim patents for incremental advances that were in fact obvious.
The justices ruled that the circuit court was too narrow in its definition of "obvious." Justice Anthony Kennedy wrote, "Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress."
"We believed that what James Thomson did to develop stem cell lines was obvious in the light of prior scientific work when we first filed our complaint," said John M. Simpson, FTCR Stem Cell Project Director. "Now, the Supreme Court decision only strengthens our position."
"The decision eliminates some of the formal requirements imposed by the lower courts for proving patents are obvious," said Dan Ravicher, PUBPAT executive director. "It says that combining previously known things will generally be obvious and thus no patent is deserved."
The WARF stem cell patents do nothing but combine previously isolated stem cells and known techniques to cultivate animal cells, Ravicher noted, and thus the Supreme Court decision will have direct applicability to the FTCR and PUBPAT patent challenges.
Thomson's work was an important contribution to science, Simpson said, just not patentable. Simpson said the best thing for WARF would be to accept the PTO's initial findings and move on. "It would save them some money and gain them respect in the scientific community," he said.