Balance Achieved In Future Work For WIPO Patent Law Committee, Delegates Say

The last World Intellectual Property Organization committee before the summer break ended on a happy note this week. After some time spent tweaking the future work of the WIPO committee on the law of patents, delegates appeared satisfied with the balance achieved. The week saw plans for conferences, numerous new proposals and calls for reports, on subjects such as research exceptions, patents and medicines access, compulsory licensing, technology transfer, and patent quality.

WIPO Standing Committee on the Law of Patents (SCP

The 28th session of the WIPO Standing Committee on the Law of Patents (SCP) took place from 9-12 July.

The SCP has been working on five separate subjects for a number of years: Exceptions and limitations to patent rights; quality of patents, including opposition systems; patents and health; confidentiality of communications between patent advisors; and transfer of technology.

All delegations do not share the same appetite for the five topics. Traditionally, developed countries are more interested in the quality of patents, the sharing of work between patent offices, and the confidentiality of communications between patent advisors and their clients. Developing countries favour exceptions and limitations, patents in the health sector, and the transfer of technology.

The future work programme (included in the summary [pdf] by the SCP chair) answers to all five topics, with a number of planned activities.

Exceptions and Limitations to Patent Rights

According to the document on future work, the WIPO secretariat is expected to prepare several reference documents. One of them is a document on research exceptions, to be submitted to the next session of the SCP, tentatively scheduled for 3-6 December.

Another one is on compulsory licensing to be provided for the 30th session of the SCP, in about a year. The inclusion of compulsory licensing in the future work program of the draft reference document on item exceptions and limitations was considered a major achievement by developing countries, according to sources.

Knowledge Ecology International did a report, here, on the breakthrough on compulsory licensing in the committee this week.

Quality of Patents: Conference, Sharing Session

On the topic of patent quality, WIPO will prepare a further study on inventive step, with a particular focus on items which were put forward by Spain in a June 2016 proposal [pdf], such as the assessment of inventive step in the chemical sector.

A half-day conference on cooperation between patent offices in search and examination, including the sharing of information concerning the corresponding foreign applications and grants, is to be organised by WIPO during the 29th session of the SCP, later this year.

Cooperation between patent offices has been a controversial subject at the SCP. Cooperation is favoured by developed countries as a way to increase patent quality and reduce patent application backlog, but taken as a risk of forced harmonisation by some developing countries in the past.

A sharing session on approaches used to ensure the quality of the patent grant process within IP offices, including opposition systems is also planned for the next session of the SCP. This follows a suggestion in a proposal [pdf] (SCP/28/8) tabled this week by the Czech Republic, Kenya, Mexico, Singapore, and the United Kingdom.

Also at the next session, discussions are expected to continue on a proposal [pdf] (SCP/28/7) by Spain tabled this week to conduct studies on new technologies and patentability.

The SCP, the proposal says, cannot remain oblivious to new technological developments, such as artificial intelligence, blockchain, and big data.

The proposal suggests to explore challenges posed by artificial intelligence with regard to patent law and patentability, and raises a number of questions.

“What will happen to the people whose data are used for the development of patented artificial intelligence, will they be entitled to any financial compensation?” the document asks. “Will the current patent legal life span in this sector remain adequate?”

Patents and Health: Conference, Experience Sharing Licensing Agreements

A half-day conference is scheduled for the next session of the SCP on publicly accessible databases on patent information status, and data on medicines and vaccines.

The conference is expected to take into consideration items contained in a 2016 African Group proposal suggesting to develop an international patent register for essential medicines “to facilitate determination of the patent status of a medicine internationally, including those for communicable and non-communicable diseases.”

Also requested in the African Group proposal was “the development of an international licence registry for licenced medicines to facilitate access to a medicine internationally.”

On the same topic, delegates agreed to ask WIPO to invite practitioners to share their experience on negotiating licence agreements at the next session of the SCP, taking into account another request of the African Group proposal (paragraph 20.a). In the proposal, the African Group suggested the development of “targeted technical assistance programs.”

Those programs should include a series of workshops on negotiating and drafting license agreements for generic manufacturers, “taking due cognizance of flexibility in the international patent system,” according to the proposal.

Proposals “Break Ideological Barriers”

The SCP is also expected to continue discussing a proposal [pdf] (SCP/28/9) by Brazil, Canada and Switzerland, later joined by Argentina, proposing a review of existing research on patents and access to medical products and health technologies, tabled this week.

The proposal suggests a work programme to this effect. It recommends that the review be undertaken by the WIPO secretariat in consultation with the World Health Organization and World Trade Organization.

The review would consider “the relationship between patents and other related issues and the affordability and availability of medical products and health technologies,” and “the role of the intellectual property system in fostering knowledge spillovers and technology transfers in the medical products and health technologies sector.”

Also to be further discussed is a proposal [pdf] (SCP/28/10) by Argentina, Brazil and Switzerland, tabled this week, suggesting a regular update on publicly accessible databases of patent status information concerning medicines and vaccines.

In particular, the three cosponsors proposed that the WIPO secretariat invite representatives of the Medicines Patent Pool, and Pat-INFORMED, a joined initiative of the WIPO secretariat and the International Federation of Pharmaceutical Manufacturers and Associations for a regular yearly update during the winter sessions of the SCP.

“The proposals SCP/28/9 and SCP/28/10 represent a watershed in the committee, not only because [their] content has real and positive contribution to the topic of patents and health, but also because it contributes to change the ‘mindset’, breaking ideological barriers,” a developing country official told Intellectual Property Watch. That is because the proposal “represents a collective endeavour, from countries with different levels of development (Argentina, Brazil, Canada and Switzerland), to build consensus towards a balanced proposal that will generate effective contribution to policymakers.”

Confidentiality of Communications

On confidentiality, the WIPO secretariat is expected to update a 2014 WIPO document [pdf] on the confidentiality of communications between clients and their patent advisors for the next session of the SCP.

Technology Transfer, Sufficient Disclosure

The WIPO secretariat is tasked with compiling information on patent law provisions that contribute to effective tech transfer, including sufficiency of disclosure.

According to developing country sources, the session was very positive, with advances on topics satisfying different interests. They were particularly satisfied with the results on patent and health, and the outcome of the technology transfer topic, they told Intellectual Property Watch.

In its closing statement, China underlined its interest in the topic of open licensing systems, which the delegate said China would like to see among the items discussed at the SCP.

According to a source from a developed country (which are all clustered as a regional group in WIPO), developed countries were reluctant about the compulsory licensing study, and said it is premature in the discussions on limitations and exceptions. But they agreed in the end.

Image Credits: WIPO