WIPO SPLT Forum Acknowledges Complexities Of Possible Harmonisation

An open forum at the World Intellectual Property Organization (WIPO) explored the complexities of a possible worldwide harmonisation of patent rules in a mostly amicable environment.

Work on harmonising the global patent system under a draft Substantive Patent Law Treaty (SPLT) started at WIPO in 2001 and the Standing Committee on the Law of Patents (SCP), which was set up in 1998, has had a number of meetings. An informal session of SCP is scheduled for 10-12 April. But after contentious debates in WIPO on the SPLT in 2005 and a strong division between developed and developing countries, some are pushing to unblock this in 2006.

Topics of discussion at the open forum included fields such as software and public health, the role of intellectual property in development, the impact of patenting of genes and life forms on upstream science meaning whether patents can get in the way of access to discoveries, disclosure of origin of traditional knowledge and genetic resources, exclusions from patentability and exceptions to patent rights. The open forum documents may be found on the WIPO website.

Technical legal terms were also discussed, such as grace period – which is the period before filing during which the inventor may publish his or her invention, and prior art – indicating material that was publicly available before the “relevant date” of a patent or application. A patent must be novel and involve an inventive step (and in the United States be “non-obvious”) when compared to the prior art.

At the 1-3 March meeting, the speakers and their topics had been suggested by the member countries and groups such as the Friends of Development countries seeking reform of WIPO toward development. The forum was well attended by government officials, national patent office attorneys, non-governmental organisations and others.

Francis Gurry, WIPO deputy director general, told Intellectual Property Watch that there had not been a clear divide between developed and developing countries in the discussions, which had rather reflected the complexity of the issues, adding that the forum had provided a broader perspective on the issues related to harmonisation.

WIPO Secretariat Denies Pressure for SPLT Agenda

Gurry also refuted the suggestion that there had been a trade-off between the countries supporting negotiation of a development agenda at WIPO (IPW, WIPO, 24 February 2006) and those wanting the SPLT to stay on the WIPO agenda (IPW, WIPO, 3 June 2005).

Gurry also said the WIPO secretariat does not favor a particular outcome on the patent treaty and has not tried to influence the decision of member states on keeping the SPLT issue on the table despite the opposition of an overwhelming majority to harmonisation. It would be “naïve to assume” that the secretariat has such influence, as it provides only a “forum,” he said. Gurry further denied that the secretariat has been under pressure from key developed countries to push the patent agenda.

Deadlock on SPLT Remains

Alain Gallochat of the French technology directorate and representative of the Paris-based International Association for the Protection of Intellectual Property said in an interview that he was much happier with the open forum than the SCP, which clearly is in deadlock. In fact, there is a double deadlock, he said, with the United States against the rest of the world in terms of what and how to harmonise, but also developing countries against developed countries.

Gallochat agreed with a suggestion made by Yin Xintian of the Chinese State Intellectual Property Office to reduce the number of issues to be discussed in the SPLT negotiations as a compromise must be found in order to harmonise the patent system. But some of the issues favoured by the developing countries, such as traditional knowledge, genetic resources and public health, should be included, he said. Which issues to include is a key sticking point in the talks.

A Belgian official said that the different speakers provided “real information” which was helpful, and welcomed the positive atmosphere at the meeting. It was also useful that the speakers provided their point of view without being bound by national positions, she said.

Developing countries also appeared to be satisfied with the forum. Sisule Musungu of the intergovernmental South Centre said the Friends of Development group sought this debate from the beginning, with all of the issues explored.

The European Union favours harmonisation but is trying to take the middle ground, an EU official said, adding that it wanted to meet some developing countries’ concern that developed countries are pushing an ill-functioning system on them.

Some EU sources said that they did not believe harmonisation would be realistic within the next 10 years but that it depends on the United States, and there were some signals from the US that could change the picture. They referred to a bill in the US Congress (HR 2795) that appears to have some congressional support as well as from industry to change the US system granting patents based on first-to-invent to first-to-file, as used by the rest of the world. This was the reason why the United States did not support harmonisation at WIPO when it was first proposed in 1991, sources said.

At the same time the United States may be hopeful in terms of Europe moving towards accepting the notion of a grace period, sources said. Grace period is not available in the European Union. The SPLT has suggested a grace period of six or 12 months.

Harmonisation Based on Which Standards?

During the forum the US patent system was criticised from time to time and it was debated which system or standards a possible harmonisation should be based upon, as the divide on harmonisation does not only go along North-South lines. The United States, Europe and Japan have been working for years to harmonise their systems with each other.

A US official, however, said that although it was fair to criticise the US system, the problem is not in its principle but rather in how the rules are applied. It would thus be better to tighten up the rules than to change the entire system, he said.

Jerome Reichman of the Duke University Law School (US) said that nobody knows what a 21st century patent system should look like, adding that the US one is for example bad and needed reform. He warned against “prematurely freezing the patent law” that is not working, referring to a tripling in litigation within the biotechnology field. Reichman said that different patent schemes in developed and developing countries should be studied and this work should be done at WIPO.

Some also pointed out that there are different standards even within some countries applying to different sectors, so international harmonisation would be very difficult.

But although the atmosphere was friendly for most of the three days, this did not mean that the speakers moved toward agreement. Some sources also indicated that while the forum was welcome it essentially only provided for more talk.

The issues that have been discussed fall under three main categories; Harmonisation of substantive patent law – purpose, approaches and limits; subjects of patent law proposed for harmonisation; and patents as a source of information and innovation, transfer of technology and licensing practices.

A number of speakers looked at harmonisation from the developing countries’ points of view. For instance, Sir John Sulston of the Human Genetics Commission in London and a Nobel Prize winner pointed out that at the moment people were at different thresholds and thus certain things should be harmonised without harmonising everything.

He also argued that the public domain has to be protected as well, saying that WIPO should not be entirely focused on policing IP law, it should also focus on all aspects of the sector.

A Brazilian official wondered why, if harmonisation is so desirable, have the United States, Europe and Japan not harmonised their patent laws already.

Anne Rejnhold Jørgensen, director of international affairs at the Danish patent and trademark office, said that as a small country Denmark was “fully looking forward to harmonisation” which may be seen as lessening the work load on patents.

Daeshik Jeh, director of the patent examination policy team of the Korean Intellectual Property Office, echoed this enthusiasm for harmonisation. He talked about Korea’s economic development and how its gross domestic product has grown in parallel with an increasing number of patents. At the same time, however, Korea introduced a patent system relatively late (it joined WIPO in 1979).

Japan also highlighted the potential advantages of harmonisation including better quality of patents, timeliness and reduced costs.

Systemic Problems with the Patent System?

Much of the debate focused on whether the current patent system is actually working and whether it thus makes sense to take it to a “higher level” through harmonisation.

David Martin, chief executive officer of the US-based company M CAM, for example, argues that it does not make sense to talk about harmonisation as the legal systems do not even work at national levels. He pointed out the inherited systematic fault in that patent offices make their living from fees they charge for patent applications.

What if there were a private reserve that one year was told that it would be paid on the basis of how many bills it issued, he asked rhetorically in an interview.

Jeffrey Hawley, immediate past president of the Intellectual Property Owners Association (US) agreed, said that in order to improve patent quality, the examiner incentive system should be changed as the offices today earn money when they allow the case.

M CAM has developed a software programme that allows the listing of all patents issued in a certain field, and patent offices and others can use it to check for duplicates. The problem is that patent offices, such as the Danish one that at one stage was using it for the patent-granting process, have stopped using or are avoiding as they are afraid it will limit the number of patents they issue and thus give them a reputation that it is possible to obtain approvals from them, according to Martin.

The programme is used, however, in India and China, and Martin noted that countries such as China which are currently developing their patent schemes are taking advantage of the opportunity to avoid the mistakes of the west. China thus has a good patent system but problems with its copyright enforcement, Martin said.

Carlos Correa, director of the Faculty of Law and Social Sciences at the University of Buenos Aires, said that the definition of what constituted an “inventive step” should be used to reduce work overload and increase the quality of patents. He said that patent offices should not only be there “for users and clients but also for our society,” adding that the users should be consumers as well as businesses.

Correa also pointed out that WIPO’s agenda does not address crucial problems of abusive use of the patent scheme, and that harmonisation would provide less room for the design of innovation policy and adoption to levels of development. He suggested an “alternative patent agenda” which would improve patent quality, protect the public domain and promote development.

An economist said that it was a misconception that the users’ interests were taken into consideration when debating harmonisation as “one does not think of the mouse when one designs a mouse trip,” and there were no rights of the patentee.

Jørgensen told Intellectual Property Watch that it was naïve to think that there would not be an international harmonisation of patent laws as it has happened in other areas (which she did not specify). She asserted that if it did not happen at WIPO, the harmonisation would take place elsewhere which could be unfavourable especially for developing countries as it would not be very transparent.

Developing countries have responded to this argument by challenging developed countries to resolve their own differences in or outside of WIPO as they wish, according to sources. Some argue that nothing the developed countries do has to apply to the developing countries unless it is agreed in a multilateral context or through bilateral agreements.

Sulston argued (noting that he was speaking on his own behalf) that patenting had had a small negative impact on upstream research and development and that this was likely to increase, countering the arguments made earlier by Joseph Straus, director and professor of law at the Max Planck Institute for Intellectual Property, Competition and Tax Law, who said that that patents had not had a negative impact on upstream science.

Sulston further argued that it is not necessary to change the patent system, but said some issues should be addressed, such as a problem with the United States Patent and Trademark Office in having a huge increase in the number of DNA-based patents granted opposed to the much more strict approach of the European Patent Office.

He said it was wrong for many countries to move down the road of more exclusivity and he said reason should be kept above ideology when debating harmonisation.

For further reporting on the open forum, please see the related article to come on www.ip-watch.org.