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SIPO Examiner Workshop: Biotech Patent Practices in the U.S., China and Japan

November 1, 2012
The biotechnology industry is an invention-intensive industry that relies heavily on the protection of intellectual property, especially patent rights. Patent protection is territorial, and patent practice varies in different jurisdictions.

Many foreign biotech companies continue to look at China as an important emerging market, and they increasingly file patent applications in China to develop their global patent portfolios. At the same time, China has made biotechnology one of the eight strategic new technology focuses in its most recent National long-term Scientific and Technological Development Plan for 2006-2020. Domestic patent application filings are noticeably on the rise.

In this context, the United States Patent and Trademark Office (USPTO) and State Intellectual Property Office of the P.R.C. (SIPO), in cooperation with the Biotechnology Industry Organization (BIO), hosted a Biotechnology Patenting Workshop in Beijing on October 23, 2012, to discuss current issues in biotechnology patenting. The Japan Patent Office (JPO) was invited and joined the workshop. Jasemine Chambers, Deputy Administrator for Policy and External Affairs at USPTO, Yuguang Li, Deputy Commissioner at SIPO, Yan Zhou, Deputy Director of the Beijing Intellectual Property Office, other SIPO officials, together with Mark Cohen, former Intellectual Property Attache at US Embassy Beijing and Attorney-Advisor at USPTO, and Tada Tatsuya, Deputy Director of JPO, participated in the discussions.

Hongying Qian, Deputy Director General, the International Cooperation Department of SIPO, and Joseph Damond, Senior Vice President, International Affairs Department of BIO, moderated the morning sessions including introductions, patent law developments at SIPO and USPTO, patent term restoration, Bolar exemptions, as well as the Nogoya protocol and its effect on patent. In the afternoon, Nathan Machin, Senior Counsel at Amgen, Michelle Deng, Senior Counsel at Pearl Cohen Zedek Latzer, and John Winski, Assistant General Counsel, Asia Pacific, Monsanto, chaired three separate panel discussions on patent scope and enablement disclosures, experimental support requirements for new claimed uses, and plant variety protection, respectively.

During the one-day workshop, the panelists shared with patent examiners and practitioners in the audience their knowledge about patent practice in each jurisdiction, and they discussed existing differences among the three countries. Participants agreed that the workshop provided a professional and effective dialogue platform, and that it greatly facilitated the understanding about the differences in biotechnology patent practice in various jurisdictions. This understanding will benefit patent practitioners and applicants in the future.  Hongying Qian and Jasemine Chambers concluded the workshop with positive and forward-looking remarks.

Michelle Deng, Ph.D., J.D., is a senior counsel at Pearl Cohen Zedek Latzer LLP, an international law firm focusing on intellectual property and corporate practice.