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Dr. Felix Addor Deputy Director General, Swiss Federal Institute of Intellectual Property

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WIPO Life Science Symposium on IP and Bioethics Geneva, September 4, 2007. Adressing bioethics issues : A Swiss – EC Perspective. Dr. Felix Addor Deputy Director General, Swiss Federal Institute of Intellectual Property

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WIPO Life Science Symposium on IP and Bioethics

Geneva, September 4, 2007

Adressing bioethics issues :A Swiss – EC Perspective

Dr. Felix Addor

Deputy Director General, Swiss Federal Institute of Intellectual Property

Lecturer on International Intellectual Property Law, World Trade Institute and University of St.Gallen

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

slide2
„Considering the exclusive right to invention as given for the benefit of society, I know well the difficulty of drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not.“

(Thomas Jefferson, 1813)

“As the value that society places

on intellectual property has increased,

that line has become murkier.”

(The Economist, 2004)

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

slide3
Patenting of life forms:

Patent examiners playing God?

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

misconceptions about patents
Misconceptions about patents
  • A patent is not a permission to use an invention (not a marketing authorization).
  • A patent is not an approval of an inventionor of the possible exploitation of an invention.

 The patent system is not a tool to guide the research and technical development or to prevent abuses of new technologies!

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

what can be protected by a patent
What can be protected by a patent?

1. Inventionproduct or process that offers a new technical solution to a problem

2. No exclusion

3. Noveltynot comprised in the state of the art = unavailable to the public

4. Inventive stepnot obvious for the person skilled in the art

5. Industrial applicationcommercially exploitable

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

what is an invention in the biotech field
What is an invention in the biotech field?

Discovery

= Description of something existing= Extension of human knowledge

Invention

= Instruction how to solve a problem with technical means

= Extension of human abilities

Penicillin

Penicillium notatum

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

the human body patentable subject matter
The human body = patentable subject matter?

“The human body, at the various stages of its formation and development, and the simple discovery of one of its elements, […], cannot constitute patentable inventions.”

(Article 5(1) EU-Directive)

“The human body as such, at all phases of his formation and development, including the embryo, is not patentable.”

(Article 1a(1) new Swiss Patent Law)

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

elements of the human body patentable subject matter
Elements of the human body: patentable subject matter?

“An element isolated from the human body or otherwise produced by means of a technical process, […], may constitute a patentable invention, even if the structure of that element is identical to that of a natural element.”

(Article 5(2) EU-Directive)

“Elements of the human body in their natural surrounding are not patentable.

Such elements are patentable as invention if they are produced by means of a technical process, if a technical utility is indicatedandif the other criteria of article 1(novelty, inventive step, industrial applicability)are fulfilled.”

(Article 1a(2) new Swiss Patent Law)

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

gene sequences patentable subject matter
Gene sequences = patentable subject matter?

“… a mere DNA sequence without indication of function does not contain any technical information [teaching] and is therefore not a patentable invention.”

(Recital 23 EU-Directive)

“A naturally occurring sequence or partial sequence of a gene as such is not patentable.”

(Article 1b(1) new Swiss Patent Law)

Isolated genes

=

as a tiger in a cage!

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

gene sequences patentable subject matter1
Gene sequences = patentable subject matter?

“An element isolated from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene, may constitute a patentable invention, even if the structure of that element is identical to that of a natural element.”

(Article 5(2) EU-Directive)

“Sequences deriving from a naturally occurring sequence or partial sequence of a gene are patentable as inventions, if they are produced by means of a technical process, if their function is concretely disclosed and if the other criteria of article 1 (novelty, inventive step, industrial applicability) are fulfilled.”

(Article 1b(2) new Swiss Patent Law)

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

main problems with gene patents acc to participants of ch empirical survey
Main problems with gene patents(acc. to participants of CH empirical survey)

CH Survey: 8.2 Extent of Experience of Problems with DNA Patents, Fig. 34 (1=never, 5=very often) (http://www.ige.ch/E/jurinfo/documents/j10005e.pdf)

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

possible remedies
Possible remedies

CH Survey: 8.2 Remedies, Fig. 35 (named as many times as effectively to ...) (http://www.ige.ch/E/jurinfo/documents/j10005e.pdf)

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

assessment of a protection limited to the concrete disclosed functions of dna
Assessment of a protection limited to the concrete disclosed functions of DNA?

CH Survey: 8.2 Extent of Experience of Problems with DNA Patents, Fig. 39 (1=no agreement, 5=total agreement) (http://www.ige.ch/E/jurinfo/documents/j10005e.pdf)

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

reasoning is the absolute protection a too generous reward for the patent owner
Gene

Derived

Sequences

Proteins

Uses

A

B

C

D

E

F

Reasoning: Is the absolute protection a too generous reward for the patent owner ?

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

alternative purpose limited product claims
Gene

DerivedSequences

Proteins

Uses

A

B

C

D

E

F

Alternative: Purpose-limited product claims ?

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

the approach of the new swiss patent law
Gene

DerivedSequences

Proteins

Uses

A

B

C

D

E

F

The approach of the new Swiss Patent Law

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

the approach of the new swiss patent law 2 absolute product claims on restricted sequences
The approach of the new Swiss Patent Law (2): Absolute product claims on restricted sequences

Article 8c new Swiss Patent Law :

(DNA sequences: Scope of protection)

The protection of a claim, containing a nucleotide sequence, which is derived from a naturally occurring sequence or partial sequence of a gene, is restricted to those parts of the sequence, which is performing the concretely described function.

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

ethical limits to patentability inventions contrary to ordre public or morality
Ethical limits to patentability:Inventions contrary to ordre public or morality

Some subject matter is excluded from patentability even if it constitutes an invention:

Inventions shall be considered unpatentable where their commercial exploitation would be contrary to ordre public or morality; however, exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation.

(Article 6(1) EU-Directive / Article 2(1) new Swiss Patent Law)

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

slide19
The issue of human stem-cells

How to deal with the human embryo?

Ethical controversy

Source: University of Wisconsin-Madison

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

ethical limits to patentability human embryonic stem cells
Ethical limits to patentability:Human embryonic stem-cells
  • Adult, foetaland embryonic human stem-cells are elements of the human body
  • Adult and foetal human stem-cells are patentable in principle  no specific ethical issues
  • But: Embryonic human stem-cells are obtained from an human embryo that has to be destroyed  controversial situation in Europe
  • Decisions by EPO:
    • Edinburgh patent (EP 0 695 351)  partly revoked
    • Thomson patent (EP 0 770 125)  refused
    • (appeals are pending in both cases)

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

ethical limits to human embryonic stem cells
Ethical limits to human embryonic stem-cells

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

ethical limits to patentability
Ethical limits to patentability

Invention concerns

human body/human genome

(reproductive and therapeutic) cloning of human beings

processes for producing chimeras or hybrids

Assessment

Art. 5(1) EU-Directive

Art. 1a(1) new Swiss Patent Law

Art. 6(2)(a) EU-DirectiveArt. 2(1)(a) new Swiss Patent Law(incl. the clones thus obtained)Recital 38 EU-Directive (transgenic animals?)

Art. 2(1)(b) new Swiss Patent Law (transgenic animals not excluded)

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

slide23
Invention concerns

processes for human parthenogenesisgerm line therapy

human embryonic stem- cells

use of human embryos

Assessment

EU-Directive unclearArt. 2(1)(c) new Swiss Patent LawArt. 6(2)(b) EU-DirectiveArt. 2(1)(d) new Swiss Patent Law (incl. germ line cells thus obtained. Somatic gene therapy not excluded)

EU-Directive unclearArt. 2(1)(d) new Swiss Patent Law (only non modified ESC)

Art. 6(2)(c) EU-Directive(for industrial or commercial uses)Art. 2(1)(f) new Swiss Patent Law(for non medical uses)

?

?

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

slide24
Invention concerns

diagnostic processes involving genes

organs

somatic cells

genes

processes for genetic modification of animals likely to cause unjustified suffering

Assessment

not contrary to ordre public/morality

not contrary to ordre public/morality

not contrary to ordre public/morality

not contrary to ordre public/morality

Art. 6(2)(d) EU-DirectiveArt. 2(1)(g) new Swiss Patent Law

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

assessing the morality of claimed inventions
Assessing the ‚morality‘ of claimed inventions

Post grant opposition procedure

(Art. 59c new Swiss Patent Law)

Any person may file an opposition against a granted patent if the ethical limits

seem not to be respected, in particular with regard to patents:

  • of the human body
  • of elements of the human body in their natural surrounding
  • of naturally occurring sequence / partial sequence of a gene as such
  • of inventions where their exploitation would violate human dignity, or would disregard the dignity of plants and animals
  • of inventions where their commercial exploitation would be contrary to ordre public or morality

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

biotechnology patents access and benefit sharing
Biotechnology Patents – Access and Benefit Sharing
  • What role can patent system play?
  • Focus of international discussions: New disclosure requirements

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

approach of the new swiss patent law
Approach of the new Swiss Patent Law
  • Requirement to declare the sourceof genetic resources and traditional knowledge in the patent application(Art. 49a)
  • Sanctions for wrongful declaration(Art. 81a):
    • fines up to CHF 100,000
    • publication of ruling

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

research experimental use exemption art 9 1b new swiss patent law
Research/experimental use exemption(Art. 9.1b new Swiss Patent Law)

When do you need a license to use patented inventions for research purposes?

  • All research (commercial or not) = free – if aimed at gaining new knowledge about subject matter of the invention
  • Introduction of “bolar exemption”:Use of the invention to obtain the authorisation of a pharmaceutical product = free  use of invention e.g. through
    • Clinical trials = possible
    • Even production of specimens = possible

BUT

    • Production of the new drug only after expiration of the patent (= no stockpiling)

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

limits of research exemption the issue of research tools
Limits of research exemption: The issue of research tools

Research exemption: the used invention must be theobject and not the instrument of research:

Problem: no free use of „research tools“, (such as polymerase chain reaction)

  • if instrument = license needed

Solution: Access guaranteed through legal licence(Art. 40b new Swiss Patent Law):

  • = right to use the research tool for everybody
  • + obligation to pay licence fee
  • no agreement = fee fixed by a court
  • no “reach through” licence fees

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

compulsory licence for diagnostic testing
Compulsory licence for diagnostic testing

Access to reliable diagnostic methods may be hampered if

  • disease caused by specific gene sequence or single nucleotide polymorphisms (SNPs), and
  • diagnostic method based on the relevant nucleotide sequence patented

Art. 40c new Swiss Patent Law provides for a compulsory licence

in case of

  • Anticompetitive behaviour = breach of antitrust law/abuse of dominant position/agreement restricting competition/abusive behaviour (e.g. BRCA1- breast cancer gene)

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

goal balancing of interests
Innovation

Knowledge

Incentive

Transparency

Exclusive Right

Research & Private Use Exemption

Protection of Investments

Public

Patent Owner

Goal = Balancing of Interests

WIPO Life Science Symposium on IP and Bioethics - Felix Addor

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