WIPO Patent Law Committee Agrees On Studies, Seminars, Website Updates

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Members of the World Intellectual Property Organization patent law committee this week bridged significant differences and agreed on a range of activities for future work, each with their own goals for the international patent system in mind.

The 20th sesstion of the WIPO Standing Committee on the Law of Patents (SCP) met from 27-31 January. Official meeting documents are here.

The weeklong meeting was a mix of visionary statements, technical drafting, presentations on patent resources, academic seminars, and secret closed-door negotiations. A brief chair’s summary document [pdf] on the week’s activities was approved yesterday evening. However, it did not reflect agreement on future work.

Late last night, governments agreed on a future work plan, sketched by an external facilitator, of the committee’s work going forward.

The final version of the future work plan, available here [pdf], includes:

Exceptions and limitations to patent rights – the WIPO secretariat will prepare a document on how five types of exceptions are applied in member states, without evaluation, but covering implementation challenges. The types are: obtaining regulatory approval; exhaustion of rights; compulsory licensing and government use; and farmers’ and breeders’ use.

Quality of patents, including opposition systems – two studies without analysis or recommendation will be prepared by the secretariat for the 22nd SCP (after the next one). The first is a study on inventive step (one of the aspects of determining patentability). The second is on “sufficiency of disclosure,” which relates to what information must be provided in a patent application.

Work-sharing – within the Quality of Patents section, an information-sharing session will be held at the next SCP on experiences in international work-sharing and collaboration among patent offices. A line was added to clarify that such a session does not imply acceptance of work-sharing by member states.

It is stated that a proposal, SCP/20/11 Rev., on work-sharing, sponsored by South Korea, the United Kingdom and United States, will be added to the working documents at the next meeting. The proposal suggests a dedicated page on the WIPO website on work-sharing among offices, and annual conferences on work-sharing within the SCP meetings.

Separately, this week’s future work document states that the secretariat “will improve” the WIPO webpage on the Patent Cooperation Treaty and Patent Prosecution Highway, which are in effect work-sharing agreements.

Patents and health – for next SCP, the secretariat will do a “feasibility study” along with the World Health Organization and World Trade Organization on the disclosure of International Nonproprietary Names (INNs) in patent applications and patents. During the week, it was suggested that without including INNs in applications, patent examiners may not be able to recognise that already existing patented products are being included in the application.

The secretariat also will prepare a study on “the role of patent systems in promoting innovative medicines, and in fostering the technology transfer necessary to make generic and patented medicines available in developing countries/least developed countries.”

And it was agreed that the next SCP will include a discussion of a potential study on the “implementation of flexibilities concerning different types of exhaustion rights in Member States.”

Patent advisor-client confidentiality – the committee agreed the secretariat will publish on the website a more accessible version of a document, SCP/20/9, that is a compilation of information on the confidentiality of communications between patent advisors (which extends beyond attorneys) and their clients. At the next SCP, there will be a half-day seminar with advice and “practical experiences.”

Transfer of technology – the secretariat will collect more practical examples and experiences on “patent-related incentives and impediments” to tech transfer from members and SCP observers, particularly least-developed countries. Countries were invited to make proposals on tech transfer.

Generally speaking, developing countries are proponents of the issues of exceptions and limitations; patents and health; and technology transfer. Developed countries have generally pushed on patent quality, work-sharing, advisor-client confidentiality.

Confidential Negotiations, Non-Harmonisation Clause

After the first three days of open and webcast discussion about the issues, the committee moved to conduct its work all day Thursday and most of Friday in unprecedented complete secrecy upstairs in WIPO. The meeting was limited to the coordinator country for each WIPO region, plus five other countries from each region. The draft texts under discussion in the room were extremely closely held, with even the remaining delegations barred from having them. This was done due to the sensitivity and difficulty of the subject matter, sources said.

Separately, the future work plan mentions that the work of the next SCP session, being eyed for the week of 3 November 2013, will be “confined to fact-finding and not lead to harmonization at this stage.” Developing countries continually raise fear of global harmonisation of the northern-driven patent system, and insist that patent laws be left up to the national level.

At the outset of the week, countries spelled out their wishes for the patent system and committee, and revealed broad differences in expectations (IPW, WIPO, 27 January 2014). At the closing, governments from all sides noted their relative dissatisfaction with the outcome, but acknowledged that acceptance of the compromise was better than a return to stalling.

There was a flare-up at the end, when Brazil said it would not be able to support this final version of future work because it contained earlier, highly unfavourable language stating only that there is “potential” for a study on implementation of flexibilities on exhaustion of rights. The members had to return to informal closed discussion for more hours before they could come back at and agree on this version from 18:00. It turned out that the Group B developed countries also were going to object and block this final version as well, but as group chair Japan said, they did not have to because another member had already objected.

Other Issues

On the final day, a secretariat document [pdf] was circulated providing a summary of a 28 January “sharing session” on countries’ use of health-related patent flexibilities. The document states that the full statements of the sharing session will be recorded in the report of this SCP meeting.

Also during the week, a presentation was given by the WIPO Global Challenges division, which works on the IP aspect of public policy issues such as public health, climate change, and food security. The presentation was aimed at informing members about the work of the division. In part, the presentation arose from concern by some developing countries that the growing division is not under the jurisdiction of any committee so member states have little say in its activities.

In addition, on the final morning there was an economic seminar on “the effectiveness of exceptions and limitations when addressing developing concerns and how national capacities affect the use of exceptions and limitations.” It appeared to be the common view of the speakers that there are cases in which exceptions and limitations to patent rights may be useful from an economic standpoint.

 

William New may be reached at wnew@ip-watch.ch.

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