WIPO Committee On Law Of Patents Walks A Fine LinePublished on 22 May 2012 @ 3:54 pm
By Catherine Saez, Intellectual Property Watch
The law of patents is being discussed this week at the World Intellectual Property Organization with a focus on the potentially difficult issues of limitations and exceptions, high quality patents, and patents related to public health.
The 18th session of the Standing Committee on the Law of Patents (SCP) is taking place from 21-25 May will address several patent-related issues: the quality of patents including opposition systems, patents and health, exceptions and limitations to patent rights, confidentiality of communications between clients and their patent advisors, and transfer of technology, according to the agenda [pdf].
During the last session, which met from 5-9 December, all issues were pushed to the 18th session for further discussions (IPW, WIPO, 10 December 2011).
In particular, the issue of the quality of patents, brought three proposals on the table: one from Canada and the United Kingdom [pdf], one from Denmark [pdf], and one submitted at the last session by the United States [pdf].
Canada and the United Kingdom proposed a work plan for the SCP with three main components: technical infrastructure development, information exchange on quality of patents, and process improvement.
The Denmark proposal builds on the Canada-UK proposal and focuses on the process improvement component and in particular on foreign search and examination work. Denmark suggested that the SCP gather information on the use of foreign search and examination work, its benefits, and how to overcome challenges that national patent offices are encountering in the process.
The US proposes a two-element work program on the quality of patents. The US Patent and Trademark Office (USPTO) proposed to conduct a survey of the IP offices of member states. It also proposed a questionnaire for national offices so that they can describe specific metrics they use in evaluating granted patents and describe the quality assurance mechanisms they use.
Clarity Sought on Quality
A major dividing line during the 17th session of the SCP was the quality of patents. On the first day of the SCP this week, the divide still held. A number of developing countries requested clarification on the definition of the quality of patents. One of the concerns of those countries is that the issue of quality may be another approach to harmonise the patent system, which for developing countries can represent pressure to adopt northern patent practices.
Algeria, on behalf of the Development Agenda Group, said that for three meetings of the SCP it has said it could consider the issue if provided with a clear definition of what is meant by quality of patents. “This has been impossible to achieve in three sessions,” she said.
The Algerian delegate thanked Canada and the United Kingdom for having provided a questionnaire which could assist countries in drafting a definition, but according to the DAG, the questionnaire is based on the premise that a definition exists. The delegate said the questionnaire excludes member states that do not yet have a definition.
“I do not believe that the committee will be in a position to adopt a document that is not inclusive, that excludes some member states and prevents them from exercising their most basic right, which is to respond to this questionnaire,” she added.
The Canada-UK questionnaire [pdf], attempts to steer around the definition of quality. “Rather than attempting to draft a common definition of quality of patents to which all Member States could agree, we believe it would be more beneficial to explore the various definitions Member States use within their national offices,” the document says.
In response to comments on the objective of the questionnaire, Canada said it is not seeking a harmonised definition of quality “but rather to gain an understanding of how different member states define patents and the steps they take to ensure that their domestic objectives for the patent system are met.”
“We believe that this will allow the work on this subject to proceed and provide benefit to all members,” he said, inviting members “who are requesting a definition to provide how they define quality in their domestic regime.”
Spain said “the lack of a definition of patent quality is not a sufficient excuse to justify such delays in work on the topic.”
Good quality patents increase legal certainty for both patent holders and third parties, and contribute to scientific and technical progress, Denmark said on behalf of the European Union, adding that it supports advancing work in the SCP of the quality of patents as suggested in the three proposals.
South Africa said it is not opposed to any proposal but seeks clarity because there are different understandings of what the quality of a patent is. The South African delegate asked what the proponents of the three proposals were trying to address, what inspired their proposals and what benefits they were projecting, “not just for themselves, but for everyone.”
The South African delegate also asked how the three proposals relate to the discussions of the WIPO Patent Cooperation Treaty (PCT) working group, and in particular its subgroup on quality in which, she said, member states recognised the need for improving the quality of patents granted.
SCP Chair Vittorio Ragonesi, legal adviser for the Italian Ministry of Foreign Affairs, said he did not consider discussions on the matter exhausted. He suggested delegations and regional groups consult among themselves, “because it seems to me that if we clarify our ideas it will not be difficult to find a way out of this problem.”
Exception and Limitations to Patents
In December, the secretariat was asked to prepare a document for this meeting that presents answers from member states to a questionnaire on exceptions and limitations to patent rights in a revised format for easier understanding, according to WIPO [pdf]. The questionnaire was adopted at the 16th session.
The issue was addressed yesterday and a developing country participant said that after some discussion, the chair suggested delegates reflect on whether to prioritise some limitations and exceptions for further analysis, as he saw “some kind of consensus.” Some delegates asked what would be involved in the second phase of the Brazilian proposal [pdf]. The issue is likely to be addressed again later in the week, sources said.
The Brazilian proposal suggests the establishment of a three-phase work programme. The first phase promoted the exchange of information on all exceptions and limitations provisions in national or regional legislations, and how countries make use of the limitations and exception provided in their legislation. The second phase would investigate what exceptions or limitations are effective to address development concerns, and the third phase should consider the elaboration of an exceptions and limitations manual, to be used as reference by WIPO member states.
William New contributed to this report.
Catherine Saez may be reached at email@example.com.