IP Australia has invalidated its acceptance of a patent
application listing controversial South Korean researcher Hwang
Woo-Suk as an inventor, in a move believed to be unprecedented and
outside the express provisions of the Patents Act
The patent application claims a human embryonic stem cell line
produced by somatic cell nuclear transfer, the cloning technique
used to produce Dolly the Sheep, and subsequent isolation of cloned
human embryonic stem cells from the resulting embryo. Such cloned
human embryonic stem cells have enormous therapeutic potential for
treating human diseases, as the cells have the ability to
differentiate into any cell type, and further, are an exact genetic
match of the human donor, meaning that the usual problems with
immune-mediated rejection of transplanted cells may be avoided.
Hwang's "ground breaking" research was included in
a patent application, in the name of Seoul National University
Industry Foundation, and then published in Science. The
Science articles were later retracted when, infamously,
the research was found to have been faked. The patent application
nonetheless proceeded in a number of jurisdictions, including
There is no express provision in the Patents Act that
permits the Commissioner of Patents to reject a patent application
during examination on the basis of falsification of data or lack of
usefulness; although lack of usefulness is a ground for opposition,
and both are grounds for revocation. Hwang's patent application
was found to comply with the usual requirements during examination,
such as novelty, inventiveness, full description, fair basis, etc.
Accordingly, following examination, IP Australia formally accepted
the patent application, advertising acceptance on 12 June 2008.
In a highly unusual move, the Commissioner of Patents later
deferred sealing of the patent beyond the prescribed period, that
is, six months from the date of advertisement of acceptance. In an
explanatory media release, the Acting Commissioner of Patents, Mr
David Johnson, asserted that "IP Australia considered that
information relating to the falsification of research results...
related to issues of utility and not matter that could be objected
to in examination".
IP Australia has since taken the unprecedented step of
advertising that acceptance of the patent application was invalid
and, consequently, is a nullity. Intriguingly, there is no express
provision that permits the Commissioner of Patents to invalidate or
withdraw acceptance of a patent application in the Patents
Act. IP Australia has therefore sought to rely on aspects of
Further, in apparent contradiction to IP Australia's media
release, the Commissioner of Patents has stated that "the
application would have been rejected had the Examiner known, at the
time, of the fabrication". IP Australia have now issued a
further adverse Examiner's report which includes objections
that the specification does not "fully describe the
invention", and that the claims are not "fairly
based" on the specification, due to the specification relying
on fabricated data.
Additionally, since the permitted period of time for gaining
acceptance of the application has now expired, the application is
presently in a state of lapse. It may, however, be possible for the
applicants to obtain an extension of time for meeting this normally
strict deadline, and thereby re-instate the application, given the
unusual circumstances involved in the case.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).