WIPO Patent Committee Calls For Further Study, Consultations

Five new studies on select patent-related topics and informal, open-ended consultations on global issues are the key elements of future work for a World Intellectual Property Organization committee that wrapped up its meeting late Friday.

The new studies include three that will expand on reporting already done by the WIPO secretariat in preparation for last week’s meeting of the Standing Committee on the Law of Patents (SCP), which ran from 23 to 27 March (IPW, WIPO, 20 March 2009). They also include two new topics.

The committee is in a slow recommencement process after a breakdown in negotiations over global patent system harmonisation in 2006. Part of the recommencement process includes building a body of technical reporting on which to base discussion.

A growing non-exhaustive list of topics related to patents are slated to be discussed at some point in the committee’s future. The list includes areas such as patents and public health, harmonisation of basic notions of patentability requirements (such as prior art or inventive step), patents and the UN Convention on Biological Diversity, technology transfer, and alternative models of innovation, according to a summary by the meeting chair.

The topics slated for further exploration between now and the next SCP gathering (expected in November) are: exclusions, exceptions and limitations; client-attorney privilege; and dissemination of patent information, the summary said. The new report on exceptions and limitations will be prepared by experts external to WIPO, and will focus on issues selected by members with a view towards developmental issues.

The new concept paper on patent information sharing will focus on technical solutions for improving access and dissemination of patent information. And the expanded study on client-attorney privilege will focus on reflecting the “current state of play” in the area, taking into account the perspectives of various stakeholders.

A fourth report prepared for the meeting, on patents and standards, will remain open for member comments (as will all the others), but there is no specific further work planned on it at this point.

Future work will include initial studies on two new topics: transfer of technology and opposition systems (or ways to call into question patent applications or granted patents if there are reasons to suspect they are invalid or poor quality).

The next meeting of the SCP is tentatively scheduled for 9 to 13 November 2009.

Also in the chair’s summary is the decision that open-ended consultations will be held – at an unspecified date – on a conference in July on the connection between global issues and intellectual property issues. The consultations will give member states concerned about the conference’s mandate – which changed from the informal SCP gathering in June 2008 – a place to discuss those concerns.

Chair’s Summary

A copy of the chair’s summary, produced in informal consultations – involving regional coordinators plus up to four others from each region – on Friday afternoon, is available here [pdf]. The final version of the chair’s summary is available from the WIPO website here [pdf]. Changes to the chair’s text made in full plenary following the informal consultations are detailed below.

Most participants leaving the meeting felt the result was balanced, with each getting something they had wanted from the summary text. For example, further work on exceptions and limitations was said by sources to be important to developing countries; while attorney-client privilege was of particular concern to developed countries and industry groups.

SCP Chair Maximiliano Santa Cruz of Chile told Intellectual Property Watch afterward that “delegations really got engaged in the discussion,” and “showed a great deal of flexibility.” He added that the five studies to be prepared for the next meeting “will help us focus our discussion and understand which issues need to be solved or tackled collectively.”

Future Work To Delve Into Patentability, Attorney-Client Privilege

The final text of the chair’s summary detailing future work on exceptions and limitations reads:

(i) The Secretariat will commission external experts [sic] a study on exclusions, exceptions and limitations, focussed on, but not limited to, issues suggested by Members such as public health, education, research and experimentation and patentability of life forms, including from a public policy, socio-economic development perspective, bearing in mind the level of economic development.

The suggestion to add “public health, education, research and experimentation” to the text came from Brazil, and the suggestion to add “patentability of life forms” came from Bolivia. There was some discussion over whether or not to specify “higher life forms,” as an earlier WIPO treaty allows specifically for the patenting of microorganisms.

The Asian Group, represented by Sri Lanka, suggested that the experts detail issues such as bilateral and regional trade agreements and country-level studies, including on the way developed country patent systems used to look when those same countries were at a lower level of development, according to a statement on future work obtained by Intellectual Property Watch.

An informal document with suggestions for future work circulated by Brazil had suggested similar measures, basing its ideas on prior work done by the WIPO committee on copyright and related rights, a delegate explained to Intellectual Property Watch. The Brazilian suggestions for future work had included requests for further studies, an exchange of national and regional information, an identification of areas of convergence, and the development of a minimum standards approach to exceptions and limitations.

Also changed in plenary was a clarification that the new report on attorney-client privilege could consult outside experts if necessary, and would not be limited only to secretariat expertise.

The Group B developed countries said the group “attaches great importance” to this issue, in a statement prepared for the meeting. The lack of uniform legal framework “causes clients to risk loss of, and lose confidentiality in, advice they obtain from IP advisers,” the statement said, emphasising the need for “IP owners or third parties to be able to freely communicate with their IP adviser and to know confidentiality to be legally secured.

The International Chamber of Commerce along with the International Association for the Protection of Intellectual Property (AIPPI) submitted a letter to the meeting encouraging the member states of WIPO to form a working group on the issue of client-attorney privilege, and seeking to strengthen protection of shared confidential information as well as to allow non-attorneys to be included in the privilege.

Several NGOs – including Consumers International, the Free Software Foundation, Health Action International Global, Knowledge Ecology International and the Third World Network, also wrote a letter urging member states to form working groups on issues such as access to medicines, climate change, patents and standards, goods in transit, and exemptions for research.

Also changed in plenary was a request that the WIPO secretariat estimate the cost of translation of the five new studies. The request was expanded to include “the studies” generally. A note was added that the secretariat will present all new studies at the next SCP meeting. And a newly added item on the list of patent issues – quality of process and all related patent products – was changed to read “patent quality management systems” for greater clarity.

Open Consultations To Resolve Global Issues Agenda Questions

Some member states raised concern prior to the SCP meeting that the mandate was changed without consultation for a conference to be held in July on major public policy issues that might be affected by the patent system. The mandate was given at the previous SCP meeting in June 2008 (IPW, WIPO, 25 June 2008).

The crux of this change revolved around the addition of one extra issue to the four original issues, according to a WIPO official involved with some of the planning for the July conference, told Intellectual Property Watch. The four original issues were: climate change, environment, health, and food security. The fifth, late-addition issue was on disability, and in particular on access to reading material for the blind and visually impaired.

This issue, the official said also involves copyright law. As such, the name of the conference was changed to include “intellectual property” and global issues as opposed to just patents, and some member states felt that the broadened scope of this name change could potentially distract focus.

Others, explained the official, did not object to the new issue, but objected to not having been consulted before it was added. The open consultations should give member states concerned about the as-yet unreleased agenda of the conference a chance to voice their concerns. A date for these consultations does not appear to have been set yet.

The conference is important, said a delegate from Indonesia, as it is a first brainstorming session on important global issues from the perspective of the only intergovernmental agency focussed primarily on IP.

Santa Cruz said the meeting is an opportunity where “we will have the chance to see how WIPO can be part of the solution to problems in other areas of public policy, such as climate change, food security and public health.”