WIPO Patent Law Committee Sets Sights On “Balance” Among Member Interests
By William New, Intellectual Property Watch on 06/12/2011 @ 10:59 am
The World Intellectual Property Organization patent law committee this week is discussing a range of issues with a UN-style sensitivity to all levels of development and patent ownership. Issues on the agenda range from patent quality, public health, exceptions and limitations, client-attorney confidentiality, and technology transfer.
A goal of this meeting is “to carry forward a balanced approach” to the next meeting, meeting chair Albert Tramposch of the United States Patent and Trademark Office told Intellectual Property Watch.
The 17th session of the WIPO Standing Committee on the Law of Patents (SCP) is meeting from 5-9 December . All meeting documents are posted to the event website.
This week’s meeting began with a seminar on technology transfer led by WIPO Chief Economist Carsten Fink. The seminar followed after tensions arose at the last SCP meeting earlier this year (IPW, WIPO, 19 May 2011 ). At the last meeting, concern was raised by developing countries that a committee technology transfer study did not consider that patents might be a hindrance to tech transfer. It was agreed at last meeting to hold the seminar, rather than set up a separate commission on the issue as proposed.
The technology transfer issue will come up again in the committee later this week, Tramposch said.
The committee yesterday moved through the issue of exceptions and limitations to patent rights, based on a past proposal from Brazil. Members were asked to complete a substantive questionnaire for this meeting and approximately 50 have done so. The chair said there may be more exploration of the views provided plus seeking to get additional countries’ responses as the committee looks for the “right way to move forward.”
In general, WIPO members tend to have different views on the global patent system, and though the committee has the capability to engage in policymaking, it has been moving carefully to keep all parties engaged.
Developed countries with large numbers of patent holders would like to see work at the international level to improve their patent filing and processing worldwide.
An official from India told Intellectual Property Watch yesterday that they prefer a “holistic approach” in the committee, and that WIPO is a “must-see, must-attend” venue when it comes to global patent policy. But, he said, India considers patent law to be best made at the national level. “Patent is a matter to be decided by national law,” he said.
Patents and Health
A key issue on the agenda for some developing countries is a proposal, SCP/16/7, on patents and public health put forward at the last SCP by the African Group and the Development Agenda Group. The 20-point proposal aims ensuring the patent system is not interfering with public health efforts of governments, and that flexibilities developing countries negotiated in existing international trade law can be used when deemed necessary.
The proposed work programme contains three related elements. These include outside expert studies commissioned by the WIPO secretariat, under consultation with members; information exchange among member states and with experts; and technical assistance.
The secretariat had invited members and observers to submit comments on the public health topic, but only four governments appear to have done so, in cursory fashion. Observers Knowledge Ecology International and the Third World Network made more substantive submissions, offering support for the developing country proposal and explaining their views.
WIPO also provided a report on its activities in the area of patents and public health, mainly conferences, meetings, advice to governments and international bodies, and technical assistance. It mentioned its counselling on the use of flexibilities to patent rules, including use of compulsory licences.
Separately, on client-attorney privilege, the committee previously decided that it would not engage in norm-setting on the issue, so it will likely exchange information and work to define the problem of keeping knowledge shared by a client with the attorney from being disclosed in legal cases abroad. A document was provided on “cross-border aspects of confidentiality of communications between clients and patent advisors.”
Today, the committee is addressing patent quality, with discussions of a proposal by Canada and the United Kingdom, and a new proposal by Denmark.
There is also a document prepared by the WIPO secretariat containing comments on patent quality by members and observers. Comments include support for the Canada-UK proposed work plan, descriptions of national practices, and some concerns.
The proposal from Canada and the UK, SCP/17/8, was revised for this meeting. It offers a work plan for patent quality, including opposition systems (which allow objections to patents either before or after they are granted). The revised version includes responses to concerns about a lack of definition of quality, which it suggests is a measure of how well patent offices and judicial systems meet national requirements.
The Canada/UK proposed work plan has three parts: technical infrastructure development, information access and exchange on quality of patents, and process improvement.
The Canada/UK proposal argues that patent quality is important for the patent system to deliver economic and social policy objectives. It also would further the aims of the WIPO Development Agenda, through capacity building and technical assistance, it says.
“’Quality of patents’ therefore encompasses the quality of the totality of features and characteristics of the work national and regional patent offices and judicial systems pursue in satisfying their legal, social and economic requirements,” it says.
The Danish proposal, SCP/17/7, is entitled, “improving the quality of the search and examination of national patent applications by using foreign search and examination work.”
The proposal seeks to dispel fears or misunderstanding from the outset, stating, “The intention of this document is not to explore the use of foreign work in search and examination as a means for reducing patent backlogs or to suggest a common practice or patent law harmonization.” Rather, it explains the benefits of the Danish Patent and Trademark Office’s use of foreign work, which is used “to the extent possible,” up to the discretion of the examiner. An example of a benefit is to identify prior art that might have been missed due to language barriers or lack of access to specific documentation.
Therefore, the DKPTO proposed that the SCP gather information on questions of how national patent offices use foreign search and examination work, what are the benefits, challenges and how could potential obstacles be overcome.
In their comments on patent quality, Costa Rica, Denmark, Germany, Finland, Indonesia, Mexico, Portugal and Spain offered support for the Canada/UK proposal. The non-governmental Third World Network (TWN) called for adherence to the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), and its flexibilities for developing countries.
“Any work-plan on patent quality should be on the premise that different countries have different development objectives and that patentability standards and patenting processes need to be formulated to achieve these objectives,” TWN said. “Thus activities on ‘patent quality’ should work to enhance the ability of patent offices to work in the developmental interests of its country and to serve the general population of its country.”
TWN was sceptical about work-sharing and outsourcing arrangements, and argued that “the patent examination process is not a mere technical activity but must be guided by national developmental and public policy objectives,” such as public health and nutrition.
Specifically on the Canada/UK proposal, TWN said patent quality cannot be improved simply by adopting the practices of other patent offices, especially as some developed country practices are not appropriate for developing countries, such as generally favouring the patent applicant. The group called for a “web-based and public hearing” on patent quality.
Germany, a major patent-holding nation, stressed the importance of patent quality but acknowledged that “there is probably no single helpful definition of a concept with such a wide scope, applying to procedures and products alike, and to formalities as well as to content.” On a general note, it said, patent quality may be defined as “the extent to which patent systems comply with their patentability conditions in a transparent way.”
Article printed from Intellectual Property Watch: http://www.ip-watch.org
URL to article: http://www.ip-watch.org/2011/12/06/wipo-patent-law-committee-sets-sights-on-%e2%80%9cbalance%e2%80%9d-among-member-interests/
URLs in this post:
 (SCP) is meeting from 5-9 December: http://www.wipo.int/meetings/en/details.jsp?meeting_id=22209
 IPW, WIPO, 19 May 2011: http://www.ip-watch.org/weblog/2011/05/19/wipo-patent-law-committee-new-health-proposal-tech-transfer-tensions/
 No Deal For Now On WIPO Design Treaty, Patent Law Work Plan: http://www.ip-watch.org/2012/10/08/no-deal-for-now-on-wipo-design-treaty-patent-law-work-plan/