I doubt the USPTO is embarrassed. At least it has had the courage to follow the law as it stands, and let the cards fall as they may, which is (as I will explain) more than can be said for IP Australia. The reasons for which the Hwang patent was granted (or, perhaps more to the point, could not be rejected) are worthy of discussion.
In 2011, the Canadian Patent Office granted a patent to Dr Hwang and his team. Yet earlier, in 2008, the Australian Patent Office initially accepted a corresponding application before subsequently nullifying that decision in circumstances that, to my mind, were themselves highly controversial.
Background – The Stem-Cell Cloning Fraud ScandalDr Hwang was at the centre of a scandal that erupted in late 2005 over fraudulent research results published in the journal Science by his team from Seoul National University, claiming to have successfully obtained stem cells from cloned human embryos. A subsequent Korean investigation affirmed that fraud had occurred, resulting in Dr Hwang being convicted of embezzling government research funds.
Dr Hwang, however, continues to maintain that the stem cell line known as ‘NT-1’ was in fact the result of cloning, and has appealed his conviction, which is still under review by the Korean Supreme Court. Furthermore, there is no question that his team was indeed the first to create a cloned dog in 2005. Dr Hwang is continuing his non-human-based research at the Sooam Biotech Research Foundation outside Seoul. He wants the Korean Government to restore his licence to conduct human-based cloning research, and is arguing that the grant of a US patent supports the validity of his work.
Australia’s Response to the ScandalWhen the Australian Patent Office faced the same potential ‘embarrassment’ as the USPTO back in 2008, having accepted a related Hwang patent application, it initially issued a statement defending its actions [PDF, 37kB]. IP Australia had perhaps been hoping that the application would be opposed, but it was not. The apparent intention to grant a patent resulted in some criticism of IP Australia, including from the respected journal Nature.
No further steps were taken towards actually granting a patent, and on 16 March 2009 the Office issued a further statement [PDF, 35kB] advising: ‘[t]he Commissioner of Patents considers that acceptance of the application was invalid. Accordingly the Commissioner has reopened examination of the application and an adverse examination report has been issued.’ By that stage, the application had lapsed.
In a subsequent appeal to the Federal Court (H Bion Inc v Commissioner of Patents  FCA 539), the Commissioner did not even attempt to argue that her action in declaring acceptance of the patent invalid was authorised by any provision of the Patents Act 1990. On the contrary, it was argued on behalf of the Commissioner that ‘her action “in recognising that the acceptance decision was invalid and a nullity did not constitute a decision, let alone a decision under the Act”’, and therefore was not subject to appeal on the specific grounds permitted by section 51 of the Act.
Of course, this kind of caprice on the part of an administrative authority is generally subject to review under the Administrative Decisions (Judicial Review) Act 1997, although it does not appear that H Bion Inc (by then, the official owner of the rights) followed through with this option.
Grant of the US PatentThe USPTO has stood by its decision to grant the patent, with a spokesman reported stating that this is ‘definitely not an assertion by the US government that everything [Dr Hwang] is claiming is accurate’, and confirming that Office was aware of the history and took steps to make sure the claimed invention complied with the patent laws.
There are essentially two possible grounds on which the Hwang patent may be invalid, neither of which the USPTO – or IP Australia, for that matter – is really in a position to assess. These grounds are that the claimed invention is not ‘useful’, and/or that the patent was obtained fraudulently.
UsefulnessThe US statute, in 35 USC § 101, requires an invention to be ‘new and useful’ in order to be patentable. Similarly, paragraphs 18(1)(c) and 18(1A)(c) of the Australian Patents act require patentable inventions to be ‘useful’. Clearly, an invention will not be ‘useful’ if it simply does not work, and in theory this is a basis to reject a patent application. In fairness to IP Australia, this ground has only been available to Australian examiners since commencement of the Rarsing the Bar reforms on 15 April 2013, but was a ground of possible opposition in 2008, and has always been a ground for revocation of a patent.
The thing about ‘usefulness’ (or utility) is firstly that an examiner may not have much to go on in order to assess the practicality of the invention, and secondly that there is a sense in which it really does not matter if ‘useless’ patents are granted.
Consider, for example, another patent that many people would argue should never have been granted – US 6,025,810, entitled ‘Hyper-light-speed antenna’. The specification asserts that the invention ‘changes the medium of transmission and reception of electromagnetic waves such that information is transmitted at greater than the speed of light.’
There are two possibilities for this ‘invention’: either the inventor has stumbled across a new, and hitherto unsuspected, physical principle that proves Einstein’s theories wrong; or (more likely, in my view) it is just crackpottery and simply does not work. The question is whether any examiner is competent to make a call on this. On the face of the specification, there is a detailed technical description and an assertion that the apparatus does ‘what it says on the tin’. The inventor is no doubt completely sincere in his belief in the effectiveness of the apparatus, and would therefore gladly (and in completely good faith) swear an affidavit that the claimed invention works.
There is no question that the claims define something new – whether crackpottery or unprecedented physical insight, there is little chance that anyone has done the same thing before. And defying the known laws of the universe is, pretty much by definition, non-obvious! So what choice did the USPTO have in this case other than to grant the patent?
Arguably, however, none of this matters because a patent on something that cannot be made to work equally cannot be infringed!
FraudFraud, false suggestion, misrepresentation or (in US terminology) inequitable conduct present similar problems to usefulness. An examiner will generally have no way to confirm, with the limited time and resources available for examination, whether or not an applicant is trying to ‘trick’ the Office into granting a patent.
If (as in Hwang’s case) an inventor agrees to swear an affidavit to the effect that any data on which the patent claims rely is genuine, the examiner is not really in a position to refute that claim. Instead, the onus is on the applicant to be truthful in his or her dealings with the Patent Office, otherwise the patent will be invalid or unenforceable in a court of law.
It is also important to bear in mind that there is no fraud merely in being wrong about something, so long as one’s belief in the incorrect information was genuinely held at the time.
Conclusion – Issues Raised by the Hwang CaseThe USPTO was right to grant the Hwang patent. Indeed, in the circumstance that there is no statutory ground for rejection it was obliged to do so. This does not mean that the patent is valid and enforceable.
Similarly, IP Australia should have granted the corresponding Australian patent. All applicants should be at least a little concerned that the Australian authority believes that there are at least some cases in which it can, it is own discretion, block the grant of a patent on extra-statutory grounds. Admittedly, the Hwang case is a rare example of a public relations disaster waiting to happen, but I am not sure that this is a good enough reason for the Commissioner to exceed her authority. Sometimes it is better to face the music, and use the opportunity to engage and have the difficult conversations.
So this should not be the end of the discussion. The Hwang case raises various questions that may be worthy of consideration, such as:
- whether examiners can or should look to external scientific consensus in assessing usefulness;
- how an examiner, who is not a world-leading researcher in the field, should go about assessing matters such as the relationship between Hwang’s patent claims, and the specific results that were separately found to be fraudulent is unclear;
- whether, in exceptional circumstances, a patent office should be able to require an applicant to provide independent, objective proof of utility; and
- whether it is sufficient to argue that people have ‘nothing to fear’ from patents that are useless, or unenforceable, when the only way to establish this for sure is through an expensive process of litigation.
As always, please feel free to share your thoughts on these questions in the comments.
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