Wealthy Nations Move Ahead With Patent Harmonisation

Washington, D.C.–The nations responsible for the majority of the world’s patent filings have agreed to move ahead with private negotiations to iron out differences in their patent regimes. The talks will take place outside the Geneva-based World Intellectual Property Organisation, where negotiations by the full body on patent harmonisation are stalled.

The effort led by the United States to move the debate outside WIPO has raised alarm for some developing nations who fear the meetings are intended to pressure them and WIPO to trim development objectives from the negotiations.

But participants afterward sought to put a positive spin on the meeting, downplaying suggestions that it represented a threat to developing countries and WIPO, and arguing that it would ultimately contribute to the WIPO process. The U.S. Patent and Trademark Office (USPTO), which organised and hosted the meeting in Washington last Thursday and Friday, directly countered the suggestion of a threat.

“The allegation that the exploratory meeting is meant as a threat to WIPO and to developing counties is simply not true,” a USPTO spokeswoman said this week. “Other WIPO Groups, such as the Latin American group, Asian group, African group, meet regularly to coordinate positions. The exploratory meeting was just that – a meeting of Group B [developed] countries to discuss how to best make progress on issues in WIPO.”

But some developing country officials remain skeptical, and are now eyeing a Feb. 16-17 WIPO informal consultation in Casablanca, Morocco on a way forward on the substantive law treaty. Developed countries are thought to be disproportionately represented at the consultation, which was by invitation. Few sponsors of the Development Agenda are on the list, but WIPO Director-General Kamil Idris is expected to be there, a Geneva diplomat said.

The invite-only meeting in Washington was billed as an “exploratory” gathering of developed nations to see if consensus could be found to work alongside WIPO to harmonise patent regimes. The USPTO said its director Jon Dudas led a “successful” effort to establish an “effective work plan for achieving progress on the substantive patent law harmonisation.”

Consensus For A New Work Plan
The group agreed to consider a “trilateral” [United States, Japan, Europe] proposal put forward last fall to create a new work plan on the issue. That proposal said the subject has been debated mostly ineffectively for 20 years, and that the current approach is “not workable,” with the draft treaty bogged down by political issues that lead to “protracted debate.” The proposal called for beginning with issues on which consensus might be obtainable, focused on aspects of determining “prior art” in patent applications. It also stressed that gains in these areas would benefit all countries.

No substantive harmonisation issues were discussed at last week’s Washington gathering, which was “solely an initial organising meeting,” according to the USPTO spokeswoman. Differences in patent regimes to be addressed later include the United States’ system of patenting based on “first to invent” versus the rest of the world’s method of “first to file,” and the length of the grace period given to inventors before making inventions public, according to industry sources.

Unanimous support was given last week to the resulting statement of intent to hold future meetings with a view toward re-starting the WIPO talks. Twenty-two countries participated in the meeting, including Australia, Canada, Europe, Japan, and the United States, plus the European Patent Office and European Commission. No representatives from WIPO were at the meeting.

Participants agreed to hold meetings of two working groups, one on substantive patent law harmonisation – chaired by Australia — and the other on development issues, covering proposals at WIPO on development and on genetic resources – chaired jointly by the Netherlands and the United Kingdom. The chairs volunteered and were not opposed, one participant said.

The full group will meet again in June, presumably just prior to the next WIPO meetings on the subject. Subgroup meetings will be held between March and May, with anyone from the full group is invited to participate in the subgroup meetings, the chairs said.

The UK has won some trust from developing nations as showing interest in their concerns, although “how far their commitment actually extends … has yet to be seen,” a developing country official said. UK officials will attend WIPO meetings with developing countries to identify issues where progress can be made to the benefit of both developed and developing countries, sources said. The UK Patent Office will invite Washington meeting attendees to a meeting at the end of March at which “aims and parameters” of the subgroup will be set, an office spokeswoman said.

Nations also decided to discuss a proposal led by Argentina and Brazil for a WIPO Development Agenda which was adopted at WIPO’s General Assembly last fall, along with other proposals to be made by WIPO Member States in meetings between now and the September 2005 WIPO General Assembly meeting, the spokeswoman said. The final statement said the group would discuss development issues “with a view to seeking a common basis for further discussions in WIPO.”

Suspicions About Process Remain
Developing countries have received news cautiously that development issues are to be addressed in subgroups by the wealthy nations. “By referring to the issues in the statement of intent, they are probably merely acknowledging that development and biodiversity concerns have become issues that have to be “handled” somehow, because they are now seen (by the developed countries) as disruptive to the negotiations on the SPLT and, more generally, work under the so-called Patent Agenda (which was never endorsed by the entire membership of WIPO),” one uninvited official said. “’Handling’, in this case, does not mean genuinely engaging in the debate and trying to find common ground.”

But a Canadian participant insisted the decision to discuss the development agenda was a positive gesture of inclusion for developing countries. “The message we want to send is that we are willing to be engaged and discuss development issues,” the Canadian official said. “The intent is to keep the process transparent, and keep all countries [including those not invited to the meetings] engaged.” He called the meetings “the opposite” of threatening, adding, “It’s all intended to feed into the WIPO process.”

U.S. industry leaders also were positive about the outcome. Herb Wamsley, executive director of the Washington-based Intellectual Property Organization, said in an interview the results were “encouraging” since countries have agreed to begin discussing the “trilateral first package” proposal. His group strongly supports patent harmonisation, and sponsored a reception for delegates on the first night of meeting.

“This is a breath of fresh air in the harmonisation talks,” as developed countries will be able to discuss issues “in a forum where they will not be distracted by developing countries.” Substantive patent law treaty meetings in recent years have been dominated by the number of countries involved and the length of their statements, he added. Wamsley insisted that developing countries have “nothing to lose” by this process moving forward outside WIPO.

Suspicion remains high among developing countries that the wealthy nations may be moving toward their own patent law treaty. Wamsley said the three largest patent offices – the United States, Japan and Europe – have held annual technical meetings but that last fall moved them into a harmonisation discussion that would require a treaty to change statutes. He also said last week’s meeting was the first time in many years that a large group of developed countries have met outside WIPO. But that can be good, he said, noting, “This new approach has reduced the number of cooks in the kitchen.”

In addition, while officials denied any threat to WIPO’s secretariat from the extra-curricular negotiations, some industry sources signalled pressure for WIPO to dislodge the patent treaty talks by reining in developing countries.

Mike Kirk, executive director of the American Intellectual Property Law Association (AIPLA), said in an interview, “If WIPO does not find some way to move forward, they’re going to be marginalised.” A former U.S. official and “long-time supporter of WIPO,” he added, “The WIPO process has been stalemated and has come to a screeching halt because of developing countries throwing sand in the gears.”

“We are coming to a situation — in the coming years — where WIPO is going to have to confront whether it can continue to be an effective institution,” Kirk said. “If not, I expect we will see an effort to work in parallel or totally outside” the organisation.

Kirk also said the Washington meeting was not unusual, and that developing countries have held numerous meetings at which developed countries are not welcome.

The Pending Storm At WIPO
Things may come to a head sooner than later if the two sides remain so far apart. In response to the suggestion that the developed countries might be trying to expand support for their effort, the developing country official said it is likely to “backfire” because: “If developing countries get the sense that an attempt is being made to ‘gang up’ on them, they will be tempted to revive the G-77 (a group of more than 100 developing countries that coordinates on positions) in WIPO. Today, WIPO is the only UN forum in Geneva where the G-77 is not active — it has been dormant since the late 1980s.”

Perhaps at the center of the debate are the larger developing countries, such as China and India, with lucrative markets vigorously sought after by developed countries.

Many developing countries view efforts to negotiate a substantive patent law treaty as an attempt by developed countries to “export their patent systems to other parts of the world,” one developing country official said. They also fear it would undermine the flexibility countries have under the World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights to pursue their own policy goals, the official said, adding that that flexibility is reaffirmed by the Doha Declaration on TRIPs and public health.

The official said the patent law treaty as proposed by the United States, Japan and other countries, would undermine that flexibility, which, as it is referred to in the Doha Declaration, is understood to cover both “pre-grant” (the application of novelty and inventive step criteria in the examination of patent applications), and “post-grant” flexibility (which involves compulsory licensing).

The full list of participants at the Washington meeting included: Australia, Belgium, Canada, Czech Republic, Denmark, European Commission, European Patent Office, France, Germany, Hungary, Ireland, Italy, Japan, Lithuania, Luxembourg, Netherlands, Portugal, Romania, Slovak Republic, Spain, Sweden, Switzerland, United Kingdom, and the United States.