Seize the stem cell IP right

(Source: 2005-5-24 Maekyung Section A5)

Professor Hwang’s result not easy to patent
May not be eligible for core technology
Need cooperation for IP rights

Securing IP rights to create national wealth from the research result of professor Hwang, Woo-Seok has became the imminent task. Experts agree that the result is a triumphant achievement but it is unclear whether it will be acknowledged as a core technology for future products utilizing the result and receive a license fee.

At the same time, another urgent matter pointed out is a lack of methods to secure IP rights in the process of joint research with foreign research institutes.


◆ Securing IP rights is not easy
Kim, Sun-Yeong, a professor at the School of Biological Sciences, Seoul National University, said, “Professor Hwang’s result is very much methodological. Therefore, securing and defending IP right will not be easy.”
Jang, Kyeong-seon, a patent attorney, also said, “Inventions for human body or its treatment and diagnosis are not subject to patent registration. Professor Hwang’s research result is not a method that excels in a patentable way but is the result of minuteness and diligence.” He added that it will be difficult to be protected by the IP or patent right.

That is, for example, when other researchers utilize the result and develop cell proliferation technology or a new drug, it will be complicated to demand royalty for the core technology behind it.
Even when the specific follow-up result is accomplished from the joint research, how much royalty Hwang can receive will rely on the negotiation capability.
Hwang mentioned, “Because IP related systems in other countries are so complex, it is becoming an issue to obtain the most for the payment of utilizing our technology in the joint research contract.”


◆ Controversy on patentability
Hwang’s research is an outstanding academic accomplishment that shocked the biotech world. Nevertheless, experts explain that it is unknown whether the result will be accepted as a patent technology that can be extended into industrial outcomes. That is because research of embryo and stem cell cloning could be considered to be a technology against life ethics.
Current Korean Patent Act dictates that granting an IP right for Hwang’s invention is not necessarily easy. Article 32 of Patent Act prescribes that inventions liable to contravene public order or morality or to injure public health shall not be patentable. Namely, technology against life ethics such as human cloning is not to be patented.
Moreover, Article 29(1) of the Act stipulates that only inventions industrially usable are patentable. Although novel, if Hwang’s invention is interpreted to have no concrete evidence for industrial application, the research result may not be accepted for patent registration.
Stem cell related technology applied for patent by Hwang’s team are: technology for obtaining stem cells through embryo cloning, technology for creating environment required before ensuring stem cells, and technology of directly utilizing human cells to obtain a cell line.

A patent attorney explained anonymously that legal decision is up to KIPO and the conclusion will vary depending on how the research result is interpreted. He also mentioned that patent application has not been easy in the biotechnology sector in Korea, which is a cause for concern.
For that, a staff at the Chemistry & Biotechnology Examination Bureau in KIPO responded that Hwang had applied for patent before publishing his result on international journals such as Science and that his personal opinion is that his works are patentable since they are for the purpose of treatment.

◆ Lack of staff for IP management
IP right of Hwang’s team is managed by his university. The team members, however, point out that foreign IP systems are so harsh and complex that the task of securing IP right is an overwhelming one.
Hwang has proposed several times the need for an expert that will specialize in the management of IP rights. The government, in response to that, has set a policy to organize a support team that will manage and secure IP rights.
Park, Ki-yeong, a Presidential Advisory Council for Science & Technology, said, “Professor Hwang should focus on basic research. We are planning to support him by organizing a group to manage IP rights.”