No Deal For Now On WIPO Design Treaty, Patent Law Work PlanPublished on 8 October 2012 @ 11:10 pm
By William New, Intellectual Property Watch
Members of the World Intellectual Property Organization this week could not agree on a work plan for the WIPO Standing Committee on the Law of Patents (SCP), leading to a likely postponement of the next committee meeting. In addition, the annual WIPO General Assemblies failed to agree to hold a diplomatic conference on a Design Law Treaty, but did agree on an expedited way forward. And the Assemblies took note of the work of the committees on standards and enforcement.
The 1-9 October 50th annual WIPO Assemblies will conclude tomorrow at 4:00 pm. Assemblies documents are available here.
There appeared to be a sense of disappointment, or perhaps just exhaustion, in the room tonight after daylong informal negotiations could not bring a decision to hold a diplomatic conference (high-level final negotiations) on a Design Law Treaty intended to simplify procedures for use.
The negotiations did bring a detailed agreement [pdf] on the way forward, however. The four paragraph agreement says the General Assembly “urges the SCT to expedite in a committed manner work with a view to advance substantially the basic proposals for a Design Law Treaty.” The SCT is the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications.
The agreement carefully states that “consideration will be given to include appropriate provisions” on technical assistance for developing countries.
And it says that the 2013 Assembly will “take stock of and consider the text, progress made, and decide on convening a diplomatic conference.”
The agreement also said the Assembly takes note of chair’s summary from the last meeting of the SCT, which took place last month (IPW, WIPO, 21 September 2012).
The European Union, which holds a high number of industrial designs, was a key proponent of the treaty, according to sources. But developing countries were concerned about advancing too quickly toward a treaty in an area in which they are still learning to participate.
A developing country delegate said afterward that the EU made a proposal late in the weeklong meeting for the Assemblies to agree to hold a diplomatic conference next year, which was met with suspicion and blocked.
“This is the punch line,” the developing country delegate said about the delay of a decision on the high-level conference. “They were trying to sneak in a treaty on industrial design on Friday at five pm.”
The concern, the delegate said, is that some countries file thousands of design applications while others have as little as one. “There is a need for capacity building,” the delegate said.
A delegate from an Asian country in which designs are popular said afterward the outcome was disappointing, and that the treaty would actually benefit developing countries and least developed countries most. It is a tool to mobilise human resources, he said. It might also be used with traditional knowledge and traditional cultural expressions, and small and medium-sized enterprises can use them because they are easier to file.
A study on the potential impact of the work of the SCT (SCT/27/4) was published in July and provides support for developing countries gaining significant benefit from advances in design procedures.
After the General Assembly chair read out the decision, no floor statements were allowed as it was already well into the evening. But written statements can be submitted for up to two months from now and will be included in the official report of the meeting, he said.
Non-Substantive Patent Law
Meanwhile, the Standing Committee on the Law of Patents (SCP) appears to be heading for a delay of its late November meeting while members hold consultations on future work.
The Assembly took note of the report of the committee, which met twice over the past year. The WIPO director general will make the ultimate decision on whether to postpone the next SCP, according to WIPO sources. Dates in early spring, around February or March, are being looked at. There could be one or two consultations in the interim. A format has not yet been discussed.
Developed countries, which hold the majority of patents – and whose industries and lawyers pay the majority of WIPO’s budget through fees for services – expressed disappointment and regret at the inability to discuss substantive patent law issues.
Developing countries, meanwhile, continued to insist that the committee must pursue development-oriented issues such as public health, technology transfer, and limitations and exceptions.
The SCP became contentious several years ago when developing countries rose up to fight efforts to harmonise national patent laws, which they viewed as disadvantageous to them. Member states were gingerly coaxed back into the committee in 2010, but it has had a difficult time moving forward on a work plan.
The latest meeting, held in May of this year, ended without agreement on future work (IPW, WIPO, 26 May 2012).
The United States on behalf of the Group B developed countries said in the plenary this week that the mandate of the SCP is to serve as the forum for discussions of substantive patent law, toward substantive patent harmonisation.
The European Union also said it was disappointed with the results of the SCP. The group worked actively to move the agenda forward it said, but announced “with considerable regret” that it would propose the postponement of the next meeting. Japan also said it was “greatly regrettable.”
The United States said it “deeply regrets” that the SCP failed to agree on a work programme, and questioned the model of the committee itself, that is “heavily tilted toward the erosion of patents” through limitations and exceptions and other measures.
As the committee will not have a substantive patent programme, the US supported the postponement.
Hungary on behalf of the Central European and Baltic States echoed the point that the group was disappointed, as the goal of the committee is the strengthening and functioning of the international patent system.
Meanwhile, Egypt on behalf the African Group reiterated the need for a balanced agenda in the committee.
Brazil on behalf of the Development Agenda Group said that the expansion to a more balanced agenda has contributed to a more complete understanding of the patent system. India made a similar statement.
Iran said WIPO could help countries understand how to put limitations and exceptions in place.
Non-governmental organisation Médicins Sans Frontières (MSF) expressed disappointment too, as it hopes for progress on IP rights and public health. It called a US proposal from the 17th session (December 2011) “a step backward” that would “undermine” access to medicines and public health. Among other things, MSF suggested that WIPO consider a database of all medicines and systems for procurers to identify all active patents in countries.
NGO Knowledge Ecology International also attacked the US proposal on public health, calling it “appalling,” and urging support for an alternative African Group proposal. KEI also said it would be useful to have a better understanding of the costs of litigating weak patent claims, and that the SCP could have a model law or other approach for revoking patents.
Standards Committee: Technical or Political?
Two areas of top-shelf importance to developed nations – standards and enforcement – are at WIPO relegated to a small role.
The WIPO Committee on Standards was slow getting out of the starting blocks, and still has issues to work out, but seems to be starting to make some progress. For instance, it approved a “roadmap” for the development of WIPO Standards dealing with XML (eXtensible Markup Language) and adopted a new WIPO Standard ST.96 for the use of XML. It also has been working on other standards related to issues such as trademark digital image formats and colour management, and nucleotide and amino acid sequence listings.
One issue slowing progress of the CWS is a debate over whether it is answerable to the coordination mechanism of the WIPO Development Agenda.
Developed countries say the committee is highly technical and therefore cannot be easily held up to scrutiny in relation to development. One official told Intellectual Property Watch that developed countries also feel that not every single committee in WIPO must be subjected to the Development Agenda, as the wording in the original is “relevant” committees, suggesting that some may not be.
Group B developed countries said this week that they remain “unconvinced” that the CWS should be under the Development Agenda, and suggested consultations to address those issues so that the technical experts of the committee could focus on their work.
But the report of the CWS contains discussion of technical assistance, which automatically opens it up to developing country interest.
It reported on its work in “narrowing the technology knowledge gap and improving access to technical knowledge.”
Mentioned frequently during the Assemblies were the signing by developing countries of Technology and Innovation Support Centers (TISCs), as well as other programmes. TISCs “provide innovators with access to locally based, high quality technology information services and other related services,” the CWS report from its 30 April to 4 May meeting said.
As an example, Uganda today signed a TISC, and joined the Beijing Treaty on the Protection of Audiovisual Performances.
Committee on Enforcement
Lastly among the “other committees” is the Advisory Committee on Enforcement (ACE). It was in the past agreed that WIPO does not have norm-setting authority on IP enforcement, but it can discuss the issue, which is of major importance to countries with lots of IP rights.
The next meeting of the ACE, to be held on 19-20 December, is expected to discuss future work of the committee.
Group B developed countries in their plenary statement called the committee “a valuable forum for exchanging information,” and said it should be remembered that global IP rights infringement is “a global problem.”
A superficial approach to stopping infringement risks abuse of IP rights and interference with commerce, and effective solutions favour social benefits, including the promotion of innovation and development, the group said.
The European Union said IP rights are key assets for companies so it is important that effective measures are in place to protect them. The EU said it is “widely recognised” that organised infringement and counterfeiting are a threat to businesses and is a global phenomenon.
The group urged the ACE to expand it the understanding of the impact of infringement so that a strategy can be developed.
William New may be reached at email@example.com.
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