WIPO Patent Committee Cautiously Opens Talks On New Work Programme

The member governments of the World Intellectual Property Organization (WIPO) cautiously opened discussion today on the future work programme of the committee responsible for harmonisation of patent laws.

The issue is contentious as many WIPO developing country members have previously opposed harmonisation, though the issue continues to appear on the WIPO agenda. Patent harmonisation, under negotiation at the Standing Committee on the Law of Patents (SCP), has become linked with efforts to strengthen the development agenda at WIPO.

This week at the 10-12 April informal SCP meeting, the main issue is a proposal at WIPO for a Substantive Patent Law Treaty (SPLT), and countries began by watching carefully for any change in the positions of others.

The developed countries at WIPO, who speak with one voice as Group B as well as on their own behalf, continue to support their unsuccessful approach of the past couple of years of moving ahead with harmonising a reduced list of four legal issues, what some term an “SPLT light.”

Key developing countries have sought to keep the discussion broader, including also disclosure of the origin of genetic resources and traditional knowledge in patent applications. They also have stated previously that they want the negotiations to include provisions on technology transfer, anticompetitive practices, and the safeguarding of flexibilities from international agreements for actions on behalf of the public interest.

Participants said that various groups made statements at the outset of the meeting today that showed no movement from their historic positions. The Asian Group, chaired by Thailand, signalled that the SPLT talks should be more broadly focused. “Harmonization should take into account the interests and concerns of all member states through appropriate approaches that are inclusive and comprehensive in nature,” it said.

“It is essential to ensure that improvements of the patent system shall contribute to the promotion of technological innovation, transfer and dissemination of technology and creation of social and economic welfare,” the Asian Group said. “It should preserve interest and flexibilities and safeguard policy space of the member states, especially the developing and least developed countries. We are supportive of a balanced and equitable international patent system….” The group does not include Japan, which is in Group B.

Others speaking in favour of developing country interests included Argentina, Brazil and Pakistan, sources said.

Japan and the United States called for talks to focus on the four areas of the proposed “reduced package.” The four areas are: prior art (public disclosures of the invention before patent filing); novelty (new characteristics which are not prior art); inventive step or non-obviousness (goes beyond what is obvious to a skilled person in the field); and grace period.

Austria, in the presidency of the European Union, said individual EU members might speak on their own behalf, but that the region as a whole is committed to continuing to develop an international patent system. It also stressed the importance of better integrating development-related issues into the work of WIPO.

Developed Countries Still Lack Internal Agreement

Group B countries themselves remain in disagreement over how to harmonise key aspects of patent examination. Group B plus some other European countries held a meeting of two working groups in Tokyo in late March at which they made some degree of progress, according to participants.

In their public statement from the Tokyo meeting posted to the Japan Patent Office website, the first working group claimed agreement on: “the definition of the prior art before the priority date; as well as novelty, the assessment of novelty and the items of prior art.” They also reported they were “largely in agreement on the inventive step/non-obviousness except when dealing with the secret prior art.”

The group agreed that everything in the public domain could qualify as prior art, considered before the priority date of its first filing, according to a participant. On novelty, they agreed that it would be assessed based on the subject matter of the claim or the invention, the participant said. A chief reason for not reaching agreement on inventive step is that countries are waiting for the results of a consultation by the United Kingdom on whether they have the right level of inventive step. Responses due at the end of May will feed into a larger review being conducted there.

Meanwhile, one key issue was labelled as “outstanding.” “The members understand that there are differences of views among the members on the grace period and the secret prior art,” they said.

They described future work, saying members would consult relevant stakeholders in their countries in order to reach agreement, and would “make every effort to reach an agreement” on provisions related to prior art, grace period, novelty and inventive step/non-obviousness “at the plenary session on September 2006.” Two participants said this refers to the WIPO General Assembly.

Grace period, the period before filing during which an inventor may publish his/her invention, is included in the US system but not in the European Union system. Resolving the difference is tied to resolving a basic difference between the US system and the rest of the world on who has the right to a patent. The United States recognises the first-to-invent for the patent, while others recognise the first-to-file.

On the second working group, which focused on development issues, discussion centred on a paper put forward by co-chairs the United Kingdom and the Netherlands that put all of the WIPO development agenda proposals into clusters by theme. The group tried to prioritise these proposals, the participant said.

The Group B-plus participants at the Tokyo meeting on 27-28 March included: Australia, Austria, Belgium, Canada, the Czech Republic, Denmark, the European Commission, the European Patent Office, Finland, France, Germany, Hungary, Ireland, Italy, Japan, Latvia, Lithuania, the Netherlands, New Zealand, Norway, Romania, Slovakia, Spain, Sweden, Switzerland, United Kingdom, and the United States.

SCP Expected To Carry Forward Open Forum Ideas

Last autumn, the WIPO General Assembly agreed to hold a five-day meeting of the SCP to report to the 2006 General Assembly. The SCP meeting was to be preceded by a three-day informal open forum on all issues related to the draft SPLT – which took place on 1-3 March – and then by this week’s three-day informal meeting of the SCP to agree on a work programme for the committee. This week’s meeting is expected to take into account the discussions of the open forum, which developing countries and non-governmental groups saw as positive (IPW, WIPO, March 8, 2006).

On the link with the development agenda, “there cannot be claims of a development dimension in WIPO if a major treaty is going forward with little real consideration of the impact on developing countries,” one NGO observer said. “Some more progressive developed countries are waiting to see what cards are on the table in the SCP before deciding whether to play their development card.”

The intergovernmental South Centre has outlined the key issues of the SCP meeting in an informal background note to developing countries, obtained by Intellectual Property Watch. The South Centre emphasises the importance of carrying forward the messages of the open forum to the SCP.

It also said the General Assembly decision was “a call to WIPO members to rethink their approach to the SPLT and to the work of the SCP more generally.” The process with the open forum is meant “to help build consensus and trust,” the South Centre said. Now the SCP must: capture the “positive spirit” of the open forum, including the willingness to discuss all issues; include the question of disclosure of genetic resources and traditional knowledge; and reach agreement on criteria for priority-setting.

South Centre: Alternative to a Harmonisation Treaty?

The South Centre raises the prospect that a treaty might not be the best way to address the concerns of the countries pushing for harmonisation. “Is it not conceivable that the final product could be a substantive treaty which could harmonise some aspects of patent law while addressing other issues in the same treaty without harmonisation as the aim?” it asks.

Given the long-standing deadlock in the SCP on harmonisation, the developing countries may not be the only ones entertaining that notion.