USPTO Rightly Grants Patent to Disgraced Korean Researcher

In the last couple of weeks the US Patent and Trademark Office (USPTO) has been subject to some harsh criticism after granting a patent naming Korean researcher Hwang Woo-suk and 13 co-workers as inventors.  Managing Intellectual Property provides a brief summary of the ‘controversy’, noting that the grant of the patent (no. 8,647,872) has been described as representing ‘staggering incompetence’ on the part of the USPTO, which has supposedly been ‘embarrassed’ by its actions.

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.

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Tags: Australia, Canada, Cloning, False suggestion, Fraud, Genetic technology, Korea, Patent Office, US, Utility/usefulness

Australia and Korea Conclude Free Trade Agreement

On 17 February 2014 the legally verified text of the Australia-Korea Free Trade Agreement (KAFTA) was released to the public.

Negotiations on the Agreement were concluded in early December 2013, and the legally verified text was initialled by Chief Negotiators on 10 February 2014.  It is anticipated that the agreement will be formally signed in the coming months.

The full Agreement consists of 23 chapters with various annexes and schedules, plus four side letters.  Chapter 11 covers intellectual property aspects of the Agreement, which is the only part of the document I have read in any detail.  It is important to bear in mind, however, that no part of the Agreement exists in isolation.  Picking just one chapter and weighing up the potential gains and losses to either party is therefore not an entirely meaningful exercise.  Other parts of the Agreement reportedly deliver some major trade benefits to Australia, for example the immediate lifting of 300% tariffs on chipping potatoes, a phase-out over three years of a 500% tariff on bluefin tuna (though this may not be such good news for the tuna), and a phase-out over 15 years of beef tarriffs currently set at 40% to 72%.

The IP aspects of the KAFTA are, for the most part, not particularly unexpected and, with the notable exception of certain copyright provisions, unlikely to require legislative changes in Australia.  Unfortunately, it appears that the Agreement will oblige Australia to introduce the kind of ‘graduated response scheme’ to curtail repeated instances of online copyright infringement that I described just last week as ‘stupid’. 

Additionally, the copyright provisions may limit Australia’s ability to introduce ‘technology neutral’ legislation that does not distinguish, for example, between products and cloud-based services for recording and/or time-shifting broadcast programs.  These provisions might also prevent the introduction of a ‘broadcast-to-internet conversion’ service, such as that controversially provided by Aereo in a number of US markets.

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Tags: Australia, Copyright, International treaties, Korea

Korea Adopts ‘European-Style’ Background Art Disclosure Rules

Revisions to the (South) Korean Patent Act, effective from 1 July 2011, now require an applicant for a patent to disclose information on prior art related to the invention in the specification.

As we understand it, this is a requirement similar to that which exists in Europe, whereby the description should ‘indicate the background art which, as far as is known to the applicant, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art’ (Implementing Regulations to the Convention on the Grant of European Patents, Rule 42(1)(b)).

As reported here by YOU ME Patent & Law Firm, revised Article 42, paragraph 3 of the Korean Patent Act requires, for any application filed on or after 1 July 2011, that ‘the specification must describe background technology of the invention.’

While failure to describe background art will provide a ground for rejection during examination, it is not a ground for invalidation of a granted patent.

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Tags: Korea, Legislation, News