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

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.Copyright © 2002, Caroline J. Yun. All rights reserved.

THE DEVELOPMENT OF THE INTERNATIONAL

PATENT SYSTEM

HIGH TECHNOLOGY PATENTING AND INTERNATIONAL FILING STRATEGIES

C. J. YUN 2

Agenda

WHAT IS PATENTABLE?

EXTENDING PROTECTION

UNIVERSAL PATENTS

C. J. YUN 3

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

C. J. YUN 4

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

C. J. YUN 5

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

C. J. YUN 6

COMPOSITIONS

PROCESS

MACHINE

ARTICLES OF MANUFACTURE

* * * PRODUCTS OF NATURE?

STATUTORY SUBJECT MATTER

C. J. YUN 7

MICROBES

PLANTS

ANIMALS

COMPOUNDS

PRODUCTS OF NATURE

C. J. YUN 8

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)

C. J. YUN 9

COMPOSITIONS OF MATTER GENES PROTEINS PHARMA BASED

METHODS OF TREATING PATIENTS/DISEASE USE OF

GENE/PROTEIN

BIOTECH INVENTIONS

C. J. YUN 10

REQUIREMENTS

NOVELTY

UNOBVIOUSNESS

UTILITY

DISCLOSURE

C. J. YUN 11

POLICY/GUIDELINES

NIHHISTORIC JOINT STATEMENTHUMAN GENE SEQUENCE DATAUTILITY EXAMINATION GUIDELINES

ESTsSNPs

INTERNATIONAL COOPERATION

C. J. YUN 12

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

FILING OF APPLICATIONS

C. J. YUN 13

TOP 10 ORGANIZATIONS RECEIVING U.S. PATENTS IN 2000

1. IBM – 28862. NEC – 20203. CANON – 18904. SAMSUNG – 14415. LUCENT – 14116. SONY – 13857. MICRON TECHNOLOGY – 13048. TOSHIBA – 12329. MOTOROLA – 119610. FUJITSU - 1147

C. J. YUN 14

1999 – U.S. Gene-Based Patents

U.S. Government - 388 Incyte Pharma - 356 Univ. of California- 265SmithKline Beecham - 197 Genentech - 175Eli Lilly - 145 Novo Nordisk - 142

Chiron - 129 AHP - 117 Isis Pharma - 108MGH - 108 Human Genome Sciences - 104 Univ. of Texas - 103Institut Pasteur - 101

C. J. YUN 15

PATENTS IN FORCE IN 2000

0

5

10

15

20

25

30

35

USA EPC JAPAN OTHERS

%

TYPES OF PATENTS APPLICATIONS

PROVISIONAL

UTILITY (non-provisional)

DESIGN

OTHERS (e.g., plant)

C. J. YUN 17

REFORM

Patent Cooperation Treaty

Patent Law Treaty

International Patent System

C. J. YUN 18

GLOBAL FRAMEWORK

Mutual Recognition

PCT Platform for Global Patent System

C. J. YUN 19

CONCLUSION

ANYTHING UNDER THE SUN MADE BY MAN

THE PATENT SYSTEM ADDED THE FUEL OF INTEREST TO THE FIRE OF GENIUS

Abraham Lincoln

Diamond v. Chakrabarty