WIPO PCT Reform Ends As Swiss Disclosure Proposal Suspended

By William New
Switzerland is known for its neutrality in many international forums, but when it comes to intellectual property rights, it generally has an opinion in favour, unsurprising given its high number of rights holders. Last week at the World Intellectual Property Organization, the government showed how it can make a move to favour IP rights in an international forum while retaining that special art of Swiss diplomacy.

The Working Group on Reform of the WIPO Patent Cooperation Treaty (PCT) held its ninth session from 23 to 26 April. The PCT, which allows recognition of a patent filed in one nation to be recognised in all PCT members, is an important contributor to WIPO’s finances through fees it charges.

At the meeting, Switzerland again prepared to put forward a proposal to amend the PCT regulations to “explicitly enable the national patent legislation” to require the declaration of the source of genetic resources and traditional knowledge in patent applications. This would leave it up to the national level to decide whether to make disclosure part of national law. It would allow that disclosure could take place at the national level or later during the international phase, said the proposal, PCT/R/WG/9/5.

Switzerland has been raising the disclosure issue at WIPO for several years, including through the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC), out of support for the international debate and interest in “balanced” patent protection for biotechnological inventions, sources said.

But a group of biodiverse developing countries is pursuing a mandatory disclosure requirement through the World Trade Organization, where they are seeking an amendment to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The issue also being addressed in work at the Convention on Biological Diversity toward an international access and benefit sharing regime by the year 2010.

The Swiss proposal at WIPO would be a compromise version of the more far-reaching proposed TRIPS amendment, according to sources. A main difference appears to be that the WTO amendment would make disclosure mandatory, while the Swiss proposal would be voluntary. It also appears to apply only to countries with an access and benefit-sharing regime, and does not appear to mention “prior informed consent” or compliance with access and benefit sharing agreements. In addition, provisions at the WTO are enforceable through the body’s dispute settlement procedure, not the case at WIPO.

One developing country participant suggested that Switzerland, while working in a constructive fashion, might be “forum-shopping” for the body where an agreement could hurt them least. In Geneva policymaking, if one body (such as WIPO) is making progress on an issue, it can be seen as grounds to avoid it in another body (such as the WTO).

The Swiss government suggested in the proposal that it could contribute to better patent quality, including helping to identify prior art with regard to inventions. It also said the voluntary nature of the disclosure would save developing countries from an additional burden of complicated paperwork. “Switzerland, not a demandeur with regard to such measures, submitted its proposals on the disclosure of source to be supportive of the process and because it is interested in a balanced patent protection for biotechnological inventions,” the proposal said. “The proposed disclosure requirement is intended as a measure under patent law which will increase transparency in access and benefit sharing.”

Switzerland stated at the PCT meeting that in order not to delay the conclusion of the meeting and the reform process, it would suspend its proposal until a later opportunity such as the next meeting of the IGC, where disclosure requirements were mentioned in future work. Brazil, a proponent of the WTO amendment proposal, supported Switzerland’s decision to suspend. But Switzerland considers the proposal to still be on the table, sources said.

PCT Reform Phase Finished

The working group completed consideration of several proposals for reform after several years of work, and will now send its report to the autumn WIPO General Assembly. Proposals addressed at this session were generally oriented around increasing the usability and linguistic compatibility of the PCT system, though several met with continued “divergence” of opinion, according to a draft report of the meeting.

A proposal to create a supplementary international search system to the one conducted under the PCT was defeated, primarily by opposition from Japan and Spain, the draft report said. The proposal had support from the United States and many others. The proposal would have given patent applicants an option to have a secondary search for similar existing patents beyond the international search provided under the PCT. This might allow linguistically based searches to reflect the increase in patent filings in languages other than those typically used in PCT searches, which mainly derive from Europe.

“This is a closing of this phase of PCT reform as the agenda has been fulfilled,” WIPO Deputy Director General Francis Gurry told Intellectual Property Watch. “A lot has been achieved.” Continued review of the treaty is likely in the future, he said.

William New may be reached at wnew@ip-watch.ch.