Standing Committee On The Law Of Patents To Reconvene After Two Year Hiatus

By Kaitlin Mara
The World Intellectual Property Organization committee charged with coordinating relationships between national patent regimes will meet next week for the first time since an informal session in April 2006. It is the first formal convening since June 2005.

The bulk of the meeting will be spent discussing future work for the committee, said sources. Also on the agenda is a review of a recent report by the WIPO secretariat [pdf] that provides an overview of the state of the international patent system and is intended to factually inform talks on future work.

Discussions in the committee stalled in 2006 (IPW, WIPO, 30 September 2006) following disagreements between WIPO member states over efforts to further harmonise national patent laws. The year 2007 was spent in “informal consultations.” The 2007 WIPO General Assemblies charged the secretariat with preparing the report, which it completed in April.

The 23 – 27 June meeting of the Standing Committee on the Law of Patents (SCP) is expected to use the report in discussions that hopefully will result in a work plan, said Philippe Baechtold, head of the patent law section of WIPO’s Sector of PCT and Patents, Arbitration and Mediation Center and Global Intellectual Property Issues, who is in charge of the SCP meeting for the WIPO secretariat.

An official from one of the WIPO Group B developed countries, which had been calling for stronger integration of several patent rules, said that the group would still “like to see work” on the harmonisation issues. The areas Group B is interested in harmonising are prior art (previously available information), novelty and inventive steps (tests for patentability that require the idea to be original), and grace periods for patent filing after an invention has been publicised (thereby allowing a recently published inventor to still ask for a patent),

But, the source added, it was unrealistic to expect significant work on harmonisation in the committee at this point, and instead the assembly would have “to decide on something else practical to work on.”

Developing countries historically have been wary of increased harmonisation, and have instead pushed for exclusions of certain items from patenting, exceptions and flexibilities in patent rights, and disclosure of origin and equitable benefit sharing when traditional knowledge is included in patent application.

Baechtold said that the “big word” at the meeting would be “balance,” and whether member states could strike one between differing goals and opinions regarding the use of the international patent system.

Selection of Chair

The meeting will open with the choosing of a chair, which, sources report, could be cause for discussion. As of press time, it was too early to say who likely names are or what nations have put forth candidates.

The process for selecting a chair starts before the meeting, when coordinators for regional groups such as the Africa Group or Group B meet and discuss proposals put forth by member states, Baechtold explained. A member state can nominate an individual, and if a second member state supports the nomination he or she becomes a candidate. Candidates are then elected by the committee in question. The WIPO secretariat has no role in the chair decision-making process, said Baechtold.

The area likely to take up the most meeting space is the agenda item on future work, said several sources. It is hoped that countries will reach consensus on issues that need work at an international level, though it is unclear what those issues would be. It is likely that any resolution will happen on technical matters – perhaps on a clarification of terms, such as the definition of prior art or an inventive step, said a source – rather than on more complex or controversial matters. It is, however, hard to say what issues will be of strong interest to member states, added the source. It could happen, for example, that matters seeming technical going into the meeting will end up being hot-button issues.

International Patent System Report

Intended as a “working document” for the upcoming SCP session, this report by the committee secretariat “contextualises the existing situation” of international patenting and seeks to characterise the variant roles of patents in economic prosperity, technology disclosure, and technology diffusion.

It is intended as a factual report, and thus covers a wide range of viewpoints, from the ways in which patents are essential to protect innovation to the ways in which too much litigation, the emergence of “patent thickets”(numerous patents covering aspects of the same product) and the patenting of ‘limited’ subject matter – such as a DNA strand – can act as innovation inhibitors.

On technology transfer, the report notes that there is little hard evidence but that anecdotally it seems a functioning patent system can “rather encourage technology transfer and foreign investment” but “too strong a protection of patent rights, in particular in the early state of industrialisation when learning takes place through reverse engineering and duplicative imitation” can hinder technology transfer. The report also acknowledges alternative methods of intellectual property management, such as open source, as interesting enough an idea that use has expanded to areas outside of its original use in software.

Technical interoperability is also important for “wide adoption” of new technologies, the report says. Open standards – or standards in which the technical specifications are publicly available and licensing on intellectual property is either free or affordable. The report notes that there is disagreement as to whether an open standard must be simply available or available royalty-free.

A concluding chapter is dedicated specifically to the concerns of developing countries, who tend to be net importers of technology and are therefore often more hesitant about the utility of a stronger and more harmonised international patent system.

Calling development “one of the most urgent challenges” facing the world and citing the new Development Agenda at WIPO – in particular its statements on the need for norm-setting, technology transfer, information technology and access to knowledge, and evaluation and impact studies – the report discusses the emerging knowledge economy and the need to bring development in line.

Particular concerns for developing countries are that the information-diffusion function of patents is made difficult with low infrastructure, that a harmonised patent system might not allow adequate flexibilities for development initiatives, the potentially negative impact of a strong patent system on public health, education, and biodiversity. For developing countries who want access to the benefits of the international patent system, there are concerns about methods for its implementation nationally, especially given the high cost of creating, maintaining and enforcing an intellectual property system.

Kaitlin Mara may be reached at kmara@ip-watch.ch.