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Amendment of patent examination criteria in the field of biotechnology (News Letter No. 187)



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1. Amendment of patent examination criteria in the field of biotechnology

- Recent examination dispute points and diverse cases are reflected

The Korean Intellectual Property Office (KIPO, Commissioner: Jung-sik KOH) announced that the patent examination criteria for biotechnology were amended in January this year and the amended examination criteria have been effective since February. The patent examination criteria for biotechnology were amended by specifically reflecting the recent technologically developed matters in the field of biotechnology, to improve the examination quality by maintaining the examination consistency.

□ The patent examination criteria for biotechnology were established in 1998 and amended four times (2000, 2003, 2005 and 2006). The present amendment has included a number of cases and examination criteria relating to the latest technology, such as the patent applications relating to the chip-based biotechnology, and a number of concrete cases such that applicants or others can easily understand and utilize the examination criteria.

□ For the present amendment to the examination criteria, KIPO conducted an in-depth study project over two years, by drawing the examination dispute points being issued in the biotechnology field at home and abroad. KIPO also searched the examination operation status of major countries, for reference. The major matters of the amendment to the examination criteria are as follows:

① Determination of novelty with respect to a publicly known gene or protein which is functionally defined: Even though an invention is made for a new use, when the subject matter of the invention as finally claimed is the publicly known gene or protein itself, the invention has no novelty according to the present amendment. In addition, the present amendment provides an example of the standards for describing the specification for the new use.

② Determination of an inventive step with respect to a poly nucleotide fragment or antisense: When general primer or probe relating to the publicly known gene, or antisense is proved to have very significant effects, it can be considered as having the inventive step.

③ Determination of unity when a number of publicly known genes or proteins are claimed as a marker: The present amendment clearly provides that the determination of unity is made by considering the structural contribution to the same or corresponding technical characteristic(s) by an addition of specific examples.

④ Determination of an inventive step with respect to a microorganism belonging to a publicly known species and to the same genus as another microorganism having known utility: When it is obscure to distinguish a microorganism, which is defined as a name given by an applicant or a deposit number, from a publicly known microorganism, a description and examples are to be added, so that the novelty and inventive step are determined by a clear comparison therebetween.

This amended examination criteria will be widely published in the relevant industries, by distributing books thereon, publishing on the KIPO website, and sending policy-PR mails.

2. Five country patent offices (IP5) will unify patent searches

Five country patent offices (IP5: the Republic of Korea, USA, Japan, China and Europe) holding 80% of the total of patent applications in the world have been promoting the unification of patent search environments.

The commissioners from the five Patent Offices had a meeting in Jeju in October, 2008. In the meeting, they agreed with the unification of the patent search environments and thereafter, a working-level meeting was held. Recently, a plan to input people by project processes has been decided.

Specifically, the five countries agreed with the plan to unify subjects of patent searches (patent data), methods (search strategies) and tools (search systems). The patent data held by the five countries are to be shared and converted into an IP5 common format. Examiners of each country share the examination know-how. The examination procedures are to be standardized. Ultimately, the patent search systems will be integrated.

As a first step, to decide the standards of patent data, KIPO officials in charge of this project attended a meeting for patent data standardization, held in Japan for four days beginning on February 8, 2010. Staring with this meeting, the five countries will operate a diverse pilot test until 2011 and will start the real system construction from 2012.

A spokesperson of KIPO said, “[W]hen the patent search environments of the five advanced countries in the intellectual property are unified, there will be significant changes, such as shortening of an examination period, improvement of examination quality, and so on… KIPO will play a leading role in the project to unify the patent search systems in the five countries, based on the experience and confidence as the leader in the patent administrative information area.”

3. The trio of Korea-China-Japan is strong in the number of patent applications filed during last year

Economic downturn affected…the number of patent applications filed by USA and Germany decreased…LG Electronics was included in the top ten companies.

Last year, the number of patent applications filed by USA and the European major countries decreased in view of the worldwide economic crisis. However, the number of patent applications filed by the three countries (the Republic of Korea, China and Japan) increased.

According to the World Intellectual Property Organization (WIPO) which is headquartered in Geneva, Switzerland, the number of patent applications filed in the world in 2009 was about 155,900, with a decrease of 4.5% compared with about 164,000 patent applications filed in 2008.

For the first time, the number of the patent applications decreased after the Patent Cooperation Treaty (PCT) was concluded in 1978.

In the ranking of countries in the number of patent applications, USA was 1st, followed by Japan, Germany, the Republic of Korea, China, France, England, the Netherlands, Switzerland and Sweden, among others.

Among these countries, USA had a big decrease with -11% and the European countries also had a big decrease, Germany with -11.2%, England with -3.5%, Switzerland with -1.6% and Sweden with -11.3%.

However, the three northeast Asia countries increased the number of patent applications.

Japan, which was 2nd in the ranking, filed 29,827 patent applications, with an increase 3.6% compared with the number of the patent applications filed in 2008. The Republic of Korea, 4th in the ranking, filed 8,066 applications, with an increase of 2.1%. Specifically, China filed 7,946 applications, with a surprising increase of 29.7%.

4. China rapidly increased the number of patent rights by 41% in 2009

Foreign companies are unhappy about the changed patent law.

According to the Wall Street Journal on February 4, 2010, China distributed the most patent rights last year but the worry about the revised patent law has been also increased. The State Intellectual Property Office of the People’s Republic of China announced that more than 580,000 patent rights were distributed, with an increase of 41% compared with the number of patent rights distributed in 2008.

However, in the IT field, multinational companies including pharmaceutical companies have complained that a protectionist policy has resulted because of the Chinese government desire to grow a domestic high-level technical field.

In October, last year, the Chinese government amended the patent law to simplify the patent procedures and put into force the guideline in January of this year. However, the Chinese government has faced the criticism that the patent law was amended to be advantageous to Chinese companies.

The Chinese government strongly defended the newly amended patent law urging that it does not discriminate agai  


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