Wednesday, February 25, 2015

Patent and Innovation - Interview with Dr Yahong Li

Can patents promote innovation?  This is a topic of heated debate. On 15-16 January 2015, the Faculty held the HKU-HKIPD IP Forum 2015 to discuss some of the major issues surrounding this debate. International and local patent law scholars and practitioners explored patent law reform around the world and Hong Kong's proposed change to introduce an "original grant patent" system.  Would these reforms be conducive to innovation?  Dr Yahong Li organised the event and in this interview shares with us some of her thoughts on the conception and significance of the forum.  
L-R: Dr Li, Judge Rader, Dr Chambers
1. What inspired the forum? What were you hoping to achieve?
The idea of organising the public lecture for Judge Rader and the IP Forum was conceived on 18 July 2014 when I met Dr. Jasemine Chambers who is a former law clerk to Judge Rader and a former official of the US Patent and Trademark Office (USPTO). During the meeting, we discussed the possibility of organising a public lecture for Judge Rader in Hong Kong as we believed that Judge Rader’s 24-year experience, both as a judge and a Chief Judge, in the US Court of Appeals for the Federal Circuit (CAFC) which is a specialised patent court, would benefit the on-going discussion of Hong Kong’s patent system reform. 
     By way of background, the current patent system in Hong Kong is a re-registration system under which applications for Hong Kong patents are substantively examined by one of three designated patent offices in China, the EU and the UK, and then the granted patents are registered in Hong Kong. In October 2011, the Hong Kong government initiated a public consultation on the feasibility of changing this system to an “original grant patent” (OGP) system allowing Hong Kong patent applications to be locally examined and granted. Currently, no decision has been made as to how this proposal is going forward.
     To maximise the benefit of Judge Rader’s visit, we decided to hold an IP Forum on Patent and Innovation, following Judge Rader’s public lecture, which would bring international and local patent officials, academics and practitioners together to explore the patent law reform around the world and Hong Kong’s proposed OGP system, and to discuss how theses changes may be conducive to innovation. 
     The idea of organising such an event was supported by the Dean of HKU Faculty of Law, Professor Michael Hor, HKU Associate Vice-President and Director of HKU Technology Transfer Office, Professor Paul Cheung, and the Director of the Hong Kong government's Intellectual Property Department (HKIPD), Ms. Ada Leung. As a result, the event was co-organized by the three institutions. I am very grateful that Professor Hor, Professor Cheung and Ms. Leung not only agreed to provide funding and other forms of support but also delivered opening remarks for the event.
Delivering the opening remarks
2. What were some of the highlights from the event?
There are a few things about the event that are worthy of mentioning. First of all, it was the first time that the Faculty had ever co-organised an IP event with the HKIPD. It brought a rare opportunity for government officials in charge of IP affairs and IP academics/practitioners to openly exchange views on local patent reform. 
     Secondly, the event started with Judge Rader’s inspiring overview of patent law and innovation, followed by the next day IP Forum consisting of two panels, one focusing on worldwide patent law reform, and the other on Hong Kong patent system. This setting provided audiences with a general appreciation of the relationship between patent and innovation, a broad picture of worldwide patent law reform in relation to innovation, and an in-depth understanding of the issues involved in Hong Kong’s proposed OGP system, and whether the reform will promote innovation in Hong Kong.
   Thirdly, the audiences’ participation and responses were unexpectedly enthusiastic and positive. The public lecture and the IP Forum together attracted over 200 people, which is phenomenal because patent law has never been a popular topic as fashion and finance in Hong Kong. Audiences showed great interest in both Judge Rader’s public lecture and the presentations of IP Forum, and actively engaged in discussion with many good questions and thoughtful comments. 
Prof Cheung presenting his pen
The four-hour forum proved to be too short, and many expressed their wish to see more of this kind of events being organised in Hong Kong. 
     Lastly but not the least, at the end of the event, Professor Paul Cheung surprised everyone with a presentation of a pen made by himself to Judge Rader, demonstrating not only his appreciation for Judge Rader’s speeches but also his personal commitment to technology innovation.
3. What were some of the major issues discussed and were any new insights gained from the discussion?
The following account is from my recollection of the event, therefore may contain some errors and inaccuracies, which are totally mine and not that of the speakers.
     In his public lecture entitled, “Patent and Innovation: A US Judges’ Perspective”, on January 15, which was moderated by Professor Paul Cheung, Judge Rader focused on the importance of patents in pharmaceutical innovation. He believed that a patent system not only encourages innovation but also makes the invention into useful products because getting the tools and products in peoples’ hands is a complicated and costly process. He pointed out that, according to WHO’s statistics, among 130 essential drugs for public health related diseases only 13 of them are under patent protection right now, demonstrating that patent is not a major factor for inaccessibility of essential drugs in developing countries and the least developed countries. But on the other hand, almost all of the 130 drugs were once under patent, showing a strong correlation between patent and drug innovation. He used the discovery of Penicillin as an example to show that, without a patent protection for the new invention, the commercialisation of a drug may be delayed and many patients may die due to the lack of the drug capable of curing their diseases. He pointed out that relying on government funding for research and commercialisation is not realistic because, for example, US government’s funding for research is less than 10 per cent. Lastly he called for international efforts in IP protection and criticised the increasing use of compulsory licensing to lower drug price by some of the developing countries such as Brazil. He said that AIDS is a human disease, thus every country is in the battle against it. He asked, “If Brazil quits from the battle and withdraws the resources in finding the cure, should all other countries quit and withdraw as well?” 
     Many interesting questions were raised and discussed in the Q&A session, for example, how to assess the US Supreme Court’s decision on the patentability of genes in the Myriad case, non-practicing entities versus patent troll, the impact of judicial uncertainty in patent rulings on innovation, whether patents impede pure research, how should drug prices be decided, etc. 
     In the second-day IP forum entitled, “Patent and Innovation: Worldwide Patent Law Reform and Hong Kong’s Response”, Judge Rader gave a keynote speech on “US Patent System and the Lessons to Hong Kong”. He highlighted the importance of patent quality and urged Hong Kong government to adopt an outward-looking approach to cooperate with other patent offices in the world in examining patent applications if the OGP system is established. He also emphasised the role of patent litigation and arbitration in patent system, and believed that these, rather than patent law reform, would bring the patent system into life.
Panel One speakers
  The first panel of the IP forum, chaired by Dr. Marcelo Thompson, who is Deputy Director of HKU Law and Technology Centre, focused on worldwide patent law reform. Dr. Jasemine Chambers, of Counsel in Wilson Sonsini Goodrich & Rosati, P.C. and a former USPTO official, started with a comprehensive introduction to the America Invents Act (AIA). She reviewed AIA’s long process of adaptation (through five Congresses and 10 years 2003-2013), and summarised some of its goals such as encouraging innovation, creating new jobs, reducing patent backlog and improving patent quality, more certainty for patent rights, and reducing the litigation cost and offering administrative measures as an alternative to litigation which is cheaper and faster. Dr. Chambers’ presentation was followed by mine focusing on China’s patent law reform. My major argument was that the previous patent law reforms in China had markedly promoted patents in numbers but not so much in true innovation. The pending and future patent law reform should focus on the aspects that can truly promote innovation such as having wider scope of patent subject matter and higher patentability criteria, adopting Bayh-Dole style legislation to encourage commercialisation of public-funded inventions, limiting the use of compulsory licensing, and establishing a centralised patent appellate court, among others. The strategy of becoming a top-filler of patents in the world but ignoring patent quality is wrong and would be counterproductive to innovation. The last speaker in this panel, Professor Bryan Mercurio, Associate Dean of the Faculty of Law of Chinese University of Hong Kong, discussed how to amend TRIPS to promote innovation. He argued that innovation should be the core of TRIPS agreement, but currently the word “innovation” only appears once in TRIPS (e.g., in Article 7). He proposed to re-evaluate the issue whether TRIPS promotes innovation. More specifically, he proposed to (1) add more details to Article 27.1 so to promote rather than hamper innovation, (2) review current patent scope and duration, (3) strengthen enforcement, and (4) encourage more debate on the relationship between patent and innovation. 
Panel Two speakers
     The second panel of the IP Forum, chaired by Mr. Thomas Tsang who is HKIPD Assistant Director (Patents), was completely devoted to the Hong Kong patent system, with particular attention on the proposed OGP system. Mr. Tim Hancock, President of Asian Patent Attorneys Association Hong Kong Group, talked about how Hong Kong’s industrial and IP environment have changed from the 1970s when 50 per cent of UK designs were registered by Hong Kong designers, and practitioners in Hong Kong would not deal with IP cases, to current situation under which IP matters are generally more on the practitioners’ agenda. He believed that there was a need to regulate patent attorneys in Hong Kong. Ms. Charmaine Koo, Partner and Co-Head of Deacons' IP Department, presented pros and cons of an OGP system in Hong Kong. She argued that, without OGP the current Hong Kong patent system does not match its status as a financial centre; OGP may encourage innovation and promote the economy in Hong Kong; OGP can help local patent practitioners in their career and provide more opportunities for university graduates with science backgrounds; and local people can access local experts. On the other hand, she pointed out that OGP may not be so beneficial because Hong Kong is a small place and the Hong Kong market is not always on the list of the companies due to budget constraint, and that with OGP costs of filing in Hong Kong will increase and there will be a need for outsourcing the patent examination. Ms. Alice Lee, Associate Professor and Associate Dean at HKU Faculty of Law, questioned whether the discussion of patent reform should focus more on fostering a liberal education and incubating an environment for innovation, rather than on building the local patent profession and creating career for graduates. Mr. Kenneth Yip, Vice President of International Intellectual Property Commercialisation Council (IIPCC) raised some doubts on having an OGP system in Hong Kong because he believed that Hong Kong does not need a separate patent review system as it is just another city in China, that the purposes of people filing patents in Hong Kong are just to prevent competition, to raise fund, to satisfy their ego and to do marketing, not for innovation, and that having the OGP would shift the burden from the Hong Kong government to local inventors and increase the costs for patenting. Lastly, another VP from IIPCC and part-time teacher at HKU, Mr. Ronald Yu, discussed the issue involving patent troll and the lessons Hong Kong should learn from the experiences in other jurisdictions. 
4. How do you see the Faculty research/scholarship in this area going forwards?
The Faculty has a relatively strong team on IP law, patent law in particular, as we have three full time faculty members, Miss Alice Lee, Dr. Sun Haochen and myself, specialising in Hong Kong IP law, PRC IP law and international IP law respectively, and several visiting and adjunct faculty members such as Professor David Llewellyn, Mr. Kenny Wong and Ms. Pancy Fung teaching other IP law courses, which more or less include patent component. In addition, the course of “patent law” taught by part-time teacher Mr. Ronald Yu, and the course of “IP, Innovation and Development” taught by myself focuses primarily on patent law and the interplay between patent and innovation.
     As to research and scholarship in this area, I had received grants from the Hong Kong government and HKU to conduct research on patent protection for software, biotechnology and pharmaceuticals, which resulted in a number of publications including a book, Imitation to Innovation in China, the Role of Patents in Biotechnology and Pharmaceutical Industries (Edward Elgar, 2010). In addition to PhD research on other IP law areas such as trademark and copyright, several PhD and MPhil students under my supervision have also successfully completed their dissertations on difficult patent issues such as compatibility between patent and traditional Chinese medicines, patent as an instrument for green technology, patent protection for telecommunications, and inventiveness criteria in patent law. 
    These teaching and research activities have laid a strong foundation for the Faculty to move forward to establish itself as an IP research centre, and further to incorporate our research and scholarship with the development need of local IP community to help Hong Kong become a regional IP centre. The January forum, which I intentionally titled as “HKU-HKIPD IP Forum 2015”, is a very good start and could be organised annually to cover any IP issues confronting Hong Kong SAR, as Judge Rader wished in his email after he returned to the US, 
"I wished to send a heart-felt THANK YOU for all of your kindness to me during my stay in Hong Kong. From my perspective, your event at HKU was a rousing success. Several people conveyed to me that they hope to enjoy many similar conferences in the future. Indeed I am one of those who think that you achieved a great deal with this conference and I hope that it is the first of what could become an annual Hong Kong IP Conference. I would love to participate again."

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