Three University of Wisconsin Stem Cell Patents Rejected

eldavojohn writes "A non-profit alumni group from the University of Wisconsin (WARF) has suffered a preliminary ruling against three of their recent patents regarding stem cells. Given that these patents have been upheld in prior rulings, there is a lot of speculation that they will be upheld in a future court case. From the PhysOrg article: 'The patents, which cover virtually all stem cell research in the country, have brought in at least $3.2 million and could net much more money before they expire in 2015, the newspaper said. Companies wanting to study the cells must buy licenses costing $75,000 to $400,000. The newspaper said WARF recently started waiving the fees if the research is conducted at universities or by non-profit groups.' Should universities (or groups within universities) be allowed to hold patents and intellectual property while at the same time gaining donations and grants as an educational institution — or for that matter government funds?"

Comments

Research Exemption?

[jakosc]

It's not clear to me that they ever had a case for charging Universities or Non-profit groups, so it's odd that they mention that they have "started waiving the fees"

IANAL, but doesn't the Patent Research Exemption specifically mean that research does *not* require a license. Even companies can work on research and clinical trials and they don't need a licence as long as they don't begin commercial manufacture of the product within the patent term?

Re:Research Exemption?

[rhombic]

IANAL, but doesn't the Patent Research Exemption specifically mean that research does *not* require a license. Even companies can work on research and clinical trials and they don't need a licence as long as they don't begin commercial manufacture of the product within the patent term?

There is no such thing as non-profit research at a university today, at least not in the life sciences. The reasons that non-profits are licensing these things is because THEY want to patent their inventions, and sell them to industry. If they don't have a license for the original research they did, they won't be able to sell it in turn. When the federal government started to encourage universities to patent the results of research off of NIH and NSF grants, and charge licensing fees, the whole idea of non-profit basic research died a sad death. Uni's are just for-profit research entities today, teaching is nearly irrelevant (most faculty consider it a burden & waste of their time), the junior faculty don't get paid much, & the post-docs and grad students are essentially slave labor, but the Profs that bring in big grants & patents are paid as much if not more than an industry.

Why not?

[E IS mC(Square)]

"Should universities (or groups within universities) be allowed to hold patents and intellectual property while at the same time gaining donations and grants as an educational institution -- or for that matter government funds?"

Why not? I would prefer a university to hold a pattern any day than any corporate - at least, they are letting other NPOs and universities use it without charging.

In fact, give them more funding to do more research. Let them grab patterns before corporates get there first.

Re:Why not?

[oni]

I would prefer a university to hold a pattern any day than any corporate

I think we will all agree on this point. The real issue is the university charging license fees. I actually work at a university and we recently had a big seminar on intellectual property. You can really tell that the administration is salivating at the thought of an extra revenue stream.

And I really can't blame them - everybody is strapped for cash these days. I'm just concerned that it's a slippery slope. I would hate to see the day that universities pass up on research because they don't see the ability to make money from it. "oh sorry professor Jones, we aren't going to allow you to research that. We really need you to focus on things that we can license. Thanks."

So the point of this seminar they made us attend was that everything we do belongs to the university (and I agree) and that we can't release anything without their permission. They want first stab at it so that they can decide if it's a money-maker. Now in the past, I have come up with a neat little algorithm or something and I've just posted it on usenet, or I've answered a technical question on usenet. Theoretically, I'm no longer allowed to do that. My expertise has value and theoretically the university has the right to charge for it.

So the concern is that there is a chilling effect.

Look at what has happened to college sports teams. They are no longer about having fun or enriching students' educations by giving them experience with a team dynamic. College sports teams are about making money for the university - which is kind of strange because every part of a university should be dedicated to education. Sports could be an important component, but it's like they have been spun off into something else.

Re:Why not?

[john82]

GP: I would prefer a university to hold a pattern any day than any corporate

P: You are operating under the assumption that a university will act differently (better) than the average corporation.

Both of you hold the assumption that a university is not a corporation. Whether or not it has such a status in the legal sense is immaterial. In every other respect, universities are corporations. There are for-profit and not-for-profit examples. Some are good "corporate" citizens, and others are not. They produce product(s) and attempt to generate value for their stakeholders. But to think of universities (as a class) to be a less corruptible entity than corporations is delusional.

Corporations vs universities strikes me as a "distinction without a difference".

Re:Why not?

[sdjc]

I think there might have been a confusion here. In most cases, you are right, the university owns the intellectual property. That is, once it has become codified IP (i.e., embodied in a patent, copyright, etc.). The researchers (i.e., inventors) are all named on the patent and usually obtain a share of potential revenues once initial costs are cleared. However, part of academic freedom stipulates that the university researcher has the right to bring his findings in the public domain without seeking to protect it - unlike typical employers where the employee must disclose any findings and cannot usually 'give away' advice or product of their work away independantly. The cooling effect is usually do to misinterpretations and the perceived threat that university will force researchers to seek patents (something that is, to this date, against most universities' mission statements). I recommend Benkler's The Wealth of Networks (freely available) and Krimsky's 'Science in the Private Interest' for a good analysis of the current situation.

Reasons

[Stooshie]

The reasons given were that the patents were:

... obvious to one of ordinary skill ...

It seems to me that some business model patents and computer patents that were accepted should have been rejected for the same reasons.

Gov't Funded Research Should Be Non-Patentable

[Skjellifetti]

I'm not too interested in the ethics or legality of obtaining patents from research funded by grants from non-governmental funding sources. That should be a contract item between the granter and grantee. But research results funded by government sources should be open and non-patentable. I've paid for the research once through my taxes. I should not have to pay for it again. Software developed using government funds should be open sourced using a BSD style license so that anyone can include it in either closed source or open source apps.

Re:Gov't Funded Research Should Be Non-Patentable

[Cheapy]

These patents bring money in to the university so they can continue to do research. This supports the research, and lets more research get done. The government doesn't give nearly enough money for all this research to happen without the help of money from patents.

Warf has had patents since the 1930's I believe

[markk]

WARF is independent legally from U. Wisconsin, and it has held patents for at least 60 years. Warfarin (Coumadin) was originally patented by Warf long ago. A lot of vitamin technology (producing them, etc.) was also. They are basically the research trust fund of the University. That is, they get a piece of the patents from researchers at Un. of Wisconsin and then distribute the money as grants to UW researchers. I think virtually all big Universities have similar structures.

Whether these patents were good is another thing, I'm kind of hoping they go on obviousness or previous technology, because if they go the only software patent that would even match them might have been RSA. If I had any trust in the patent system to be consistent I would be for this rejection (speaking as a Wisc graduate) and as a principle I guess I still am.

Why not?

[Jonny do good]

Should universities (or groups within universities) be allowed to hold patents and intellectual property while at the same time gaining donations and grants as an educational institution -- or for that matter government funds?

If non-profits (particularly universities) hold patents that are funded by donantions and grants they can, in theory, reduce their need for these sources of funds. The Bayh-Dole Act provided an avenue for this and actually encourages universities to license their technologies.

I am currently a research assitant for the Technology Commercialization Lab (a group that works closely with the Office of Technology Commercialization which governs patent rights for research conducted at the university) at my university and this is part of what we are supposed to do. We try to help professors in either starting a new company based on their research in order to develop a commercial product or to license it to a third party. The university gets 33% of the proceeds, the department gets 33%, and the professor gets 33% of any licensing fees paid to the university. In a research orinted university these proceeds have the ability to add up to a lot of cash to help fund further research, new facilities, and pay salaries. At my university we haven't produced many "killer techs" that have turned into large sums of money, but it can happen. Stanford and MIT (along with others) have both recieved significant sums of money from licensing patents.

This isn't just about Stem Cells

[Puls4r]

Several years ago, a particular big 3 company *accidently* donated a patent regarding a certain coating to a university.

That university then, 1 year later, turned around and sued the company that had donated the patent for violating it. I'm not kidding. To the order of $300,000 a month. I happen to be involved in the change getting rid of the old coating and moving to the new - just to get away from the litigation.

Don't fool yourself. Universities are not about being institutions of higher learning. They are businesses, out to advertise and make money just like any other business. Their sports programs, their research programs, even the ranking in the grad and undergrad programs is ALL about attracting talent so they can attract more money.