Tuesday, June 27, 2006

Hwang Legacy to Get Patents

(Disclaimer: I am not a lawyer. Nothing in this post should be construed as legal advice or proper opinion. I am simply some idiot trying to make sense of things. Please consult proper legal counsel before making any decision.)

Interesting little story, Seoul National University is planning to obtain patents based on disgraced scientist Hwang Woo-suk's work.  Legally do-able, but they have ran out of money. So the valiant supporters of Dr. Hwang are giving the University around US$120,000 to get patents in 10 countries. It seems according to the article, the money is to cover entering the national phase in 10 countries under a previously flied PCT application.

This amount comes to US$12,000 per country. An amount that almost proves to me Hwang supporters are a few genes short of a nucleus. It is likely that this will all cost a tad more than that. Just filing in the national phase is pretty expensive, just look at the USPTO website for referrence. Then you have all sorts of legal fees, plus translational fees for certain countries (For example, while not a problem in this case, Korea requires a patent application in Korea to be in Korean. This can be a rather expensive proposition especially for patents as technical as these may be.) Then once you get all over that you have to pay various maintenance fees based on each country (which as you can see in the US alone are about US$7,000). And all this is only the bare minimum, I never did add on adverse actions by the various governmental examiners and other fun.

I also blew coffee through my nose laughing at the idea in the article of "individual countries will then conduct their own reviews, which reportedly takes a year." That is more akin to a patent attorney's wet dream than a "report". Even in Korea it takes around two years, and that is if everything is done right and there are no problems with the application (which alone happens about once every time pork chops sprout wings). 

2 Comments:

At July 13, 2006 5:46 AM, Anonymous NEWYORKER said...

I highly praise your in-depth knowledge regarding this patent issue. I found out today that Dr. Schatten's WIPO application recognizes July 6th as the international publication date.(WO 2006/071435 A2) I am not an expert in this field, but became quite curious about the impending patent clash between Hwang ang Schatten. In you opinion, who holds the edge in this battle?

 
At July 13, 2006 9:14 AM, Blogger Dram Man said...

The red glow from your computer is my embarassment at your warm complements.

Who has the edge? Lets see....I have a quarter here. Heads is Schatten, Tails is Hwang here we go...

All jokes aside, I have not read through either's application. So I cannont give my definitive opinion (and that and a few bucks will get you a cup of coffee at Starbucks). However, there are a couple thigns I want to bring up that seem to be glossed over by the media.

First the media has rushed to the conclusion that all the patent applications are clones. This is a rather big assumption to make given the complexity of the feild in question. Also even if the basic concept is the same, the construction of the claim (getting a bit technical here perhaps) plays a large role in determining simularlity. Bottom line, despite what the press says there could really be no race to a patent at all.

Second, why the international filing does establish a priority date, it does NOT give an automatic right to a patent in every country. An international PCT application is granted patent rights based in each country based on local law. These local laws can substatinaly differ from country to country.

For example some countries demand the invention must actualy work. This is perhaps the most applicable. For example, in Korea you cannot patent a drug (the reasoning being that a drug is a chemical, an element of nature). However you can patent the effect a drug has. The catch is you you have to submit proof that the drug as the effect. Since this is not a drug, the above may not specificaly come into question, but you get the idea.

Another example is how individual countries determine the priority of the application (ie who ask for a patent first). This is a partuicaly sticky case in the US versus other countries since the US is a "first to invent" system versus the more international used "first to file" system. This means in most countries the first to ask is seen as the inventor. In the US however the first to publicaly announce or publish their work is seen the inventor. (Yes, there is more detail than this, but i hope I gave the gist)

This last example causes someting I think is rather humorous. Korea is a "first to file" system. This means that Schatten could get Korean patent since he was the first to file, however the US patent for the same technology may end up awarded to Hwang since he published the process first. Funny world.

 

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