navigating the patent maze

The headline of a recent article in the Financial Times proclaims “Indonesia applies for palm oil patents.” Such a headline can be inflammatory, making it all the more important that it and the article be factually accurate. Unfortunately, the article contains erroneous facts and statements about patents and the patent process.

“Jakarta-listed Lonsum filed its patent application with the European Patent Office in March 2007 even though it has yet to produce an F1 hybrid seed. Patent lawyers say it would have then undergone robust examination before being published for public scrutiny a fortnight ago.”

The patent application was first filed at the European Patent Office and subsequently published 18 months later, a normal procedure. The “robust examination” referred to is actually only a search for relevant prior art. The search results were published along with the patent application. A search for prior art is not an examination, however; examinations are reasoned statements regarding the patentability of the claims. In turn, patentability is assessed for a number of aspects, not all of which are prior art.

In addition, the patent application was also filed at WIPO (World Intellectual Property Office) (two filings, one in March 2008 and another in April 2008) and at the Thailand patent office (March 2008). The international WIPO patent application must be converted to filings in national patent offices by mid-September 2009. Because Thailand is not party to the WIPO process, the application had to be filed in Thailand directly.

“Approval could take two years ….”

Approval, which is the granting of a patent, will very likely take more than two years in Europe, due to a huge backlog of pending patent applications and to . In other countries (other than Thailand), the examination process won’t even begin in other countries until late 2009. While statistics regarding the average length of patent examination aren’t readily available for every country, at least one estimate is 5.5 yrs from the priority date. Biotechnology patent applications may be longer than that.

“…. but no other company will be allowed to apply for a similar patent while this is pending.”

This statement has no basis in truth. A similar patent application can be applied for at anytime. It will be examined according to requirements for patentability, like every other patent application. If the “similar” patent application contains identical claims, priority will be accorded to the applicant with the first-filed patent application in nearly every country except in the United States, where patents are awarded to the first-to-invent.

The claims in the patent application are directed to methods for producing F1 oil palms. In particular, the method involves identifying haploid or homozygous diploid individual plants with an atypical phenotype, such as atypical growth morphology or atypical growth pattern. Homozygous diploid plants can also be obtained from haploid plants in which the chromosomes double spontaneously or are induced to double. The doubled haploid plants can then be crossed to produce F1 hybrid oil palms.

Patent family information:

EP 1972692 : filed 20070319, published 20080924

WO 2008/114000 : filed 20080319, published 20080925,
priority docs: EP 1972692 (application no. 07104386.3),
TH 081001325 (Thailand, filed 18 March 2008)

WO 2008/114145 : filed 20080416, published 20080925
priority docs: EP 1972692 (application no. 07104386.3),
TH 081001325 (Thailand, filed 18 March 2008),
WO 2008/114000 (application no. PCT/GB/2008/000943)