Jordanian Patent Office

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1 Jordanian Patent Office Industrial Property Protection Directorate Ministry of Industry and Trade UNDP/WHO - Examination of pharmaceutical patents from a public health perspective Cairo, April 2009 Pharmacist Lina Haddad Head of Jordanian Patent Office

2 Table of Contents When a Patent Shall Not Be Granted Main Procedures Statistics. Office Human Resources Patent Examination / Pharmaceuticals

3 A patent shall not be granted in the following cases (Article 4 of the Jordanian Patent Law) The inventions whose exploitation is detrimental to public order or public morality. The inventions whose non-exploitation is necessary to protect the life and health of humans, animals and plants or to avoid severe damage to the environment. Discoveries, scientific theories and mathematical methods.

4 A patent shall not be granted in the following cases (Article 4 of the Jordanian Patent Law) Diagnostic, therapeutic and surgical methods necessary for the treatment of humans or animals. Plants and animals other than microorganisms. Biological methods for the reproduction of plants and animals other than non-biological and microbiological methods.

5 Main procedures executed by the Jordanian Patent Office. Formal Examination. Preliminary Substantive Examination. Substantive Examination.

6 Formal Examination Through the formal examination, the Formal Examiner validate the following points: The application was submitted by the rightful person. All the needed documents was filed. All the submitted documents are correct from a legal point of view. The formal examination might yield one of two results: either the application is complete formally and in this case it will be diverted to the next step (preliminary examination), or the application is not complete formally. In this case an official letter will be sent to the applicant asking him to correct the formal defects, this letter will establish a limited time period. If the applicant doesn t correct the defects within this time period he will loose his right in the application.

7 Preliminary substantive examination Through the preliminary substantive examination, the substantive Examiner validate the following points: The application satisfies the condition of unity based on article (9/A) of the Jordanian patent law. No mistakes has been made in the technical documents regarding language, numbering or other formalities related to the script of the technical documents. The claims have been drafted in a proper way that defines the exact scope of protection. The disclosure of the invention doesn t contradict with any verified scientific rules. The examiner will also conduct a preliminary search in the prior art databases in order to asses the novelty of the invention.

8 Preliminary Substantive Examination The preliminary substantive examination might yield in one of two results: either the application is complete regarding the defects tested in the preliminary substantive examination and in this case it will be diverted to the substantive examination or the application is not complete regarding the defects tested in the preliminary substantive examination. In this case the examiner will take two parallel actions: He will call the inventor/applicant to ask him to attend an official hearing to explain the examination details to him and how he shall amend his application based on those details. He will also send an official letter to the inventor/applicant including the details of the examination, this letter asks the applicant to amend his application within a limited time period. Regardless of the fact that the inventor did or did not attend the official hearing, he is obliged to amend his application in the time period determined in the official letter or he will loose his right in the application.

9 Substantive Examination The examiner study the technical document and conduct a search in the prior art databases in order to mark the documents considered to be the closest prior art. After that, the examiner must compare the disclosure in the technical document to the closest prior art in order to asses how much does it satisfy the conditions stipulated in articles (3) and (4) of the Jordanian law. Article (21) of the Jordanian patent regulations stipulates that The Registrar may, for the purpose of examination, get assistance from the technical expertise available at any authority if he deemed that necessary. Therefore, the registrar can send the technical document to any academic local entity or to the World Intellectual Property Organization to help him in assessing the condition mentioned above.

10 Substantive Examination Article (8) of the Jordanian patent law stipulates that The patent owner shall file complete particulars on the applications on the same patent subject matter which he filed in other countries including the results of such applications". This article combined with article (21) of the regulations allows the examiner to use the internet and the documents submitted to him by the applicant to extract the examination results of other patent offices in order to use them as a strong base for his decision.

11 Office Human Resources No. of employees Available resources

12 Statistics Year National Applications International Applications National Patent International Patent Total Granted Patent Total

13 Patent Examination / Pharmaceuticals

14 Pharmaceutical patent applications Applications that claim priorities or Applications that are submitted by local applicants

15 Applications that claim priorities follow-up using free databases then making a decision at the office.

16 Applications that are submitted by local applicants Preliminary Substantive Examination then Sent to WIPO for examination then making a decision at the office. or substantive examination at the office:

17 Pharmaceutical patent applications deal with Compounds Method(s) of preparation of compounds Formulation(s) comprising compounds Method of formulating Pharmaceutical composition First medical indication Second or further medical indications

18 Local Pharmaceutical Patent Applications Most of the local pharmaceutical patent applications deal with Herbal Compositions. 1- Novelty: The composition as a whole should be new. 2- Inventive step: The composition should give a surprising effect and it should not be pure addition (aggregation of features) 3- Industrial applicability: The composition could be made and used.

19 Thank you