Few biotech patents have been as controversial as the three that Wisconsin Alumni Research Foundation (WARF), the intellectual property licensing and management arm for the University of Wisconsin?Madison, holds on a method for isolating and preserving human embryonic stem cells. Some scientists have claimed that WARF?s control of the IP has limited important research. Two years ago the New York?based Public Patent Foundation, persuaded the PTO to reexamine those patents, claiming they were obvious and should never have been awarded based on prior art. PubPat scored an early victory last year, when the patent office announced that it was rescinding all three patents.
But Carl Gulbrandsen, managing director of WARF, knew that the bad news for the foundation at that juncture was far from the end of the story, because WARF had not yet had its chance to respond to PubPat?s challenges. Gulbrandsen spent more than a dozen years at patent boutiques and as an in-house lawyer for two Madison-based start-up companies before joining WARF in 1996. When WARF launched its bid to have the three patents reinstated, Gulbrandsen was confident, though not without a few lingering doubts. ?You never know what?s going to happen? at the PTO, he says.
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