Joff Wild

Wisconsin Alumni Research Foundation (WARF) has been put on the defensive following a preliminary USPTO decision to revoke three of its patents covering stem cells. The decision follows a complaint filed last July by the California-based Foundation for Taxpayer and Consumer Rights, which was supported by the Public Patent Foundation in New York. The two groups complained that the patents were so broadly written that they give WARF potential to reap royalties from a broad range of stem cell-related treatments and that the University of Wisconsin employee James Thomson was not the first to isolate human embryonic stem cells.

Although both WARF and its principle licensee Geron have been quick to emphasise that this is not a definitive decision from the USPTO and that there will be plenty of opportunities to reverse it, the ruling will still come as a blow to the two organisations. According to the last AUTM survey, the Univeristy of Wisconsin generated close to $50 million worth of licensing revenue in 2005 and much of that will have come from its stem cell patents. 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. I am not sure when the USPTO made its decision public but in after hours trading on the NASDAQ yesterday, Geron stock fell over 4%, that after having risen by 6% during normal hours. It will be interesting to see how it fares today.

This blog first covered the story back in October 2006. There is further analysis of the latest developments at the Patent Baristas blog.