Wednesday, December 07, 2005

Pfizer, a case of IP protection impotence or growing pains?

China's Patent law has come a long way. It was build from scratch and modernised very rapidly. It was for example only last year that the State Intellectual Property Office (SIPO) started accepting electronic patent applications.

In 1994 Pfizer applied for a patent for Viagra and after a seven-year review period the patent was issued. During that period no questions were raised about if Pfizer had provided all necessary particualars in its patent description to meet Chinese regulation.

According to the Hong Kong Standard the Pfizer case is "a litmus test of China's commitment to international standards of intellectual property rights."In June 2004 the Patent Re-examination Board (PRB) invalidated Pfizer's Viagra patent.

Invalidity was found on the basis that the patent did not conform with article 26 (3) of the 2001 Patent Law, which provides:

The specification shall describe the invention or utility model in a manner sufficiently clear and complete that a person skilled in the relevant field of technology can accurately produce it; where necessary, drawings shall be appended. The abstract shall describe briefly the technical essentials of the invention or utility model. The patent claim shall, on the basis of the specification, state the scope of the patent protection requested.

The Hong Kong Standard said: "the ruling followed a September 2001 challenge by 13 firms, including Hongtaomao Pharmaceutical and Lianxiang Pharmaceutical, arguing the patent should be nullified because it failed to fulfil the novelty requirement under the patent law." The Beijing No. 1 Intermediate People's Court heard the case in March 2005 and everybody is waiting for the result. Read more here

"Pfizer has appealed on the grounds that SIPO applied higher standards in evaluating its specifications than those it complied with to receive the original patent." Read the Hong Kong Standard article here. Or, as George Evans, a Pfizer lawyer, put it on PBS's Newshour: "They have moved the goal posts.

"Lawfirm Freshfields Bruckhaus Deringer is using the Pfizer case as an illustration that IP litigation in China can yield unpredictable results on page 11 of an interesting article about pratical tips how to improve your chances of succes in protecting your patents in China, read more here.

In PBS Newshour online you can see a reportage on the Pfizer case. This pharmaceutical giant has hired tough talking John Theriault, an ex-CIA agent: "We look at China the same way the DEA might look at Colombia, as a source country for illicit drugs." Watch PBS Newshour's program 'Intellectual Piracy in China' as streaming video here.

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