Transcript what is patentable?

WIPO/INV/BEI/02/18
SECOND INTERNATIONAL FORUM ON CREATIVITY AND
INVENTION –
A BETTER FUTURE FOR HUMANITY IN THE 21ST CENTURY
Beijing (China), May 23-25, 2002
THE DEVELOPMENT OF THE INTERNATIONAL
PATENT SYSTEM
HIGH TECHNOLOGY PATENTING AND
INTERNATIONAL FILING STRATEGIES
Document prepared by Ms. Caroline J. Yun,
US Registered Patent Attorney and Foreign Lawyer,
Baker & McKenzie, Hong Kong, SAR
Copyright © 2002, Caroline J. Yun. All rights reserved.
Agenda
 WHAT IS PATENTABLE?
 EXTENDING PROTECTION
 UNIVERSAL PATENTS
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U.S. FOUNDATION
CONSTITUTIONALLY BASED
CONGRESS SHALL HAVE THE
POWER…TO PROMOTE PROGRESS OF
SCIENCE BY SECURING LIMITED
TIMES TO INVENTORS THE
EXCLUSIVE RIGHT TO THEIR
DISCOVERIES
ART. 1, §8, CLAUSE 8
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PATENTS
GOVERNMENT GRANTED LEGAL RIGHT
FOR LIMITED TIME (6 to 20 YEARS)
TO EXCLUDE OTHERS FROM USING
YOUR PATENTED INVENTION
AS DEFINED BY THE PATENT CLAIMS
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WHY?
PROTECT INVESTMENT IN TECHNOLOGY
DEVELOPMENT
KEEP COMPETITORS OUT OF YOUR NEW
MARKET
OPEN A MARKET WHEN COMPETITOR HAS
DOMINANT PATENT
PREVENT 3RD PARTY PATENT COVERING
YOUR COMMERCIAL PRODUCT/PROCESS
GAIN REVENUES BY LICENSING
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STATUTORY SUBJECT MATTER
COMPOSITIONS
PROCESS
MACHINE
ARTICLES OF MANUFACTURE
* * *
PRODUCTS OF NATURE?
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PRODUCTS OF NATURE
MICROBES
PLANTS
ANIMALS
COMPOUNDS
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WHAT IS PATENTABLE?
UNITED STATES SUPREME COURT
HELD ANYTHING UNDER THE SUN
MADE BY MAN IS PROTECTABLE
BY PATENT
Diamond v. Chakrabarty, 447 U.S. 303 (1980)
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BIOTECH INVENTIONS
COMPOSITIONS OF MATTER
GENES
PROTEINS
PHARMA BASED
METHODS OF TREATING
PATIENTS/DISEASE USE
OF GENE/PROTEIN
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REQUIREMENTS
NOVELTY
UNOBVIOUSNESS
UTILITY
DISCLOSURE
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POLICY/GUIDELINES
NIH
HISTORIC JOINT STATEMENT
HUMAN GENE SEQUENCE DATA
UTILITY EXAMINATION
GUIDELINES
ESTs
SNPs
INTERNATIONAL COOPERATION
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FILING OF APPLICATIONS
A U.S. patent for an invention is
the grant of a property right to
the inventor(s), issued by the
U.S. Patent and Trademark
Office. To get a U.S. patent, an
application must be filed in the
U.S. Patent and Trademark
Office
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TOP 10 ORGANIZATIONS RECEIVING
U.S. PATENTS IN 2000
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
IBM – 2886
NEC – 2020
CANON – 1890
SAMSUNG – 1441
LUCENT – 1411
SONY – 1385
MICRON TECHNOLOGY – 1304
TOSHIBA – 1232
MOTOROLA – 1196
FUJITSU - 1147
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1999 – U.S. Gene-Based Patents
U.S. Government - 388
Incyte Pharma - 356
Univ. of California- 265
SmithKline Beecham - 197
Genentech - 175
Eli Lilly - 145
Novo Nordisk - 142
Chiron - 129
AHP - 117
Isis Pharma - 108
MGH - 108
Human Genome
Sciences - 104
Univ. of Texas - 103
Institut Pasteur - 101
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PATENTS IN FORCE IN 2000
35
30
25
20
%
15
10
5
0
USA
EPC
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JAPAN
OTHERS
15
TYPES OF PATENTS APPLICATIONS
PROVISIONAL
UTILITY (non-provisional)
DESIGN
OTHERS (e.g., plant)
REFORM
Patent Cooperation Treaty
Patent Law Treaty
International Patent System
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GLOBAL FRAMEWORK
Mutual Recognition
PCT Platform for Global Patent
System
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CONCLUSION
ANYTHING UNDER THE
SUN MADE BY MAN
Diamond v. Chakrabarty
THE PATENT SYSTEM ADDED THE FUEL
OF INTEREST TO THE FIRE OF
GENIUS
Abraham Lincoln
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