WIPO Returns To Substantive Patent Law Talks After 5 Years, With Balance 16/10/2010 by William New and Kaitlin Mara for Intellectual Property Watch 3 Comments Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window)Member governments of the World Intellectual Property Organization today agreed on the first work programme for the committee on patent law in nearly five years. The delicate accord, reached after a long week of mostly closed negotiations, was quickly hailed by some as reflecting a new reality for the international patent system with stronger recognition of emerging economies’ interests. “We’re very happy,” said a developing country official, as the work plan is “not just about rights and patents. It’s absolutely balanced.” Now, the official said, any discussion on patents will have to take into account the concerns of developing countries. “This is a new world,” the official added. “This is not TRIPS [referring to the 1994 World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights]. TRIPS was rammed down our throats.” The Standing Committee on the Law of Patents (SCP) agreed on 15 October to now begin work on exceptions and limitations to patent rights; quality of patents, including opposition systems; patents and health; client-advisor privilege, and transfer of technology. The chair’s summary of the meeting is available here. The report of the meeting is available here. An analysis of final changes to the chair’s text is below. Developed countries appeared pleased to get meaningful work back on track at the multilateral level. “It’s a real patent programme to work with, and not just a study,” said an official from the Group B developed countries. “So we enter back into substantive work. It’s a major step.” WIPO also recognised the importance to the organisation of a positive step on patents in Director General Francis Gurry’s second year. Gurry said in a press release that it is important WIPO “offer a consensus-based and a multilateral forum to all member states for patent-related matters.” James Pooley, WIPO deputy director general responsible for patents since late 2009, told Intellectual Property Watch he was “very pleased that further progress was made on the development of the international patent system with a very good, constructive atmosphere among member states.” Since the SCP began its slow restart in 2008, the group has been unable to commit to a common purpose for the committee due to underlying differences in the perception of what is needed on patent law. This agreement represents a major breakthrough for the committee, which met from 11 to 15 October. The Development Agenda Group in the closing plenary hailed the “dawning of the new agenda at the SCP … in which the exclusive focus on patent rights is replaced by a broader assessment of the particular needs of the countries and the benefits accruing from the patent system,” they said in a statement. Studies included in the SCP will aid understanding and help “to avoid assumptions which ignore the systemic implications and the diversities of concrete realities.” Belgium, speaking on behalf of the European Union, said at the closing plenary session that the SCP is a forum for the progressive international development of patent law and that the EU “still wishes to stress that the harmonisation of patent law lies at the very foundation of the mission of the SCP,” according to participants. They added that such measures do not impair the implementation at national levels on areas of public health and food security. A chair’s text released on Friday morning (IPW, WIPO, 15 October 2010) helped pull together differing visions of where the SCP’s future work should focus. These visions included: a proposal from Brazil [pdf] on exceptions and limitations, a proposal from Group B [pdf] focussing on patent quality, a proposal from the African Group on patents and health, client-patent advisor privilege (expands protection of confidential information beyond attorneys, generally supported by developed countries), and transfer of technology (a critical issue for developing countries). Though there were disagreements on the chair’s text during the day, delegates were able to resolve issues through informal negotiating sessions that went late into the evening. Future work issue areas will begin to be discussed at the next SCP, tentatively scheduled for 16-20 May 2011. In the interim, countries can submit proposals and interpretations of various issue areas. In particular, “patent quality” and “patents and health” do not contain much detail in the text released on 15 October. The African Group plans to prepare a proposal on patents and health by the next meeting, one participant said. Patent Quality Patent quality may be a way to get the harmonisation longed for by developed countries back into the SCP, as well as more perfunctory measures to improve patent processing. An official from the Group B developed countries said the patent quality issue could include a focus on substantive patent law, such as inventive step, or something more procedural, like a better database or research tool. A developing country official said “everything applies to harmonisation” at the SCP, the developed countries want movement on the issue and are going to push for it. But while there is fear that the topic will lead to harmonisation, that outcome “is not set in stone.” “We also can use patent quality for our own benefits,” the official said, such as asking for higher-level criteria for patentability, which can be addressed at national levels. Technology Transfer Technology transfer is a matter of critical importance for developing countries, but some developed countries were concerned that having an updated study on the list of future work items would be overloading the agenda. There was also the concern that updating the study, taking into account the comments by member states, would be a waste of resources. There was a brief proposal for a seminar on technology transfer in lieu of the study as, developed countries said. But while seminars may be useful for the exchange of ideas, but what policymakers need is not an exchange of ideas or a networking session but empirical evidence and expert analysis and advice about what to do to encourage technology transfer, developing country sources told Intellectual Property Watch. Expert analysis ensures also that there is not a one-sided view presented by people who have a high stake in the patent system – such as WIPO, which gets much if its revenue from the Patent Cooperation Treaty, or members of the five jurisdictions that own 93 percent of the world’s patents. Coordination At issue over the chair’s text early in the day was whether to include a specific item on the SCP Agenda to discuss the SCP’s work in relation to the Development Agenda. The General Assemblies in September decided that all relevant WIPO committees would report on their development-related activities, via the Assemblies, to the Committee on Development and Intellectual Property (CDIP). The SCP is the first meeting since this decision. Developed countries did not want to have a standing agenda item, participants in the meeting reported. But in the end it was agreed to have it in there. SCP Chair Santa Cruz was reluctant to refer to the outcome as a work plan or programme, possibly because it puts additional weight on the work. He preferred to call it a “package” for the next SCP meeting. “I’m really happy,” said committee Chair Maximiliano Santa Cruz of Chile. “We saw good spirit. Everybody gave up many things, and gained many things as well. It’s very comprehensive.” The next meeting of the SCP is tentatively scheduled for 16-20 May 2011. Background Negotiations in the WIPO patent committee for a Substantive Patent Law Treaty collapsed in 2005 due to developing country resistance (IPW, WIPO, 3 June 2005). The next year, a proposal to revive the talks on patent harmonisation failed (IPW, WIPO, 10 April 2006). In 2007, work in the committee was suspended (IPW, WIPO, 30 September 2006). In 2008, the committee restarted gingerly with early discussion of a work programme (IPW, WIPO, 19 June 2008). But efforts to agree on a work programme appeared to collapse again by early 2010 (IPW, WIPO, 1 February 2010). Summary of Text Changes The chair’s draft summary changed slightly during the final plenary on Friday night. The changes included: To agenda item 5, on preliminary studies on selected issues, paragraph 8: “preliminary studies submitted” became “preliminary and other studies submitted.” Under paragraph 9, the text reading that studies “will be compiled in separate information documents containing references to each study” became “will be compiled in separate documents and placed next to the relevant studies on the WIPO website.” A new paragraph 10 reads “a hyperlink to the documents containing comments” will be appended to each study. On future work, during the final plenary the secretariat clarified that the new paragraph 11 (paragraph 10 in the text linked above) refers to the coordination mechanism with the CDIP. This mechanism will be discussed at the next SCP and there will be a specific agenda item on it. “Nevertheless, the form of reporting will be decided” by governments attending the next SCP. On “client-advisor” privilege (sub-paragraph iv under agenda item 12), the secretariat “will take into account comments made by member states, including on cross-border recognition issues, among others,” they said. Changes between the future work section contained in the chair’s summary of Friday night and the future work section contained in the draft chair’s text released Friday morning are: “quality of patents” became “quality of patents, including opposition systems” and “patents and public health” became “patents and health.” Also, additions to the non-exhaustive list of possible future discussion topics for the SCP had one addition from the Group B in order that the list be balanced, delegates from the region said. The four new additions to the list are now: “impact of the patent system on developing countries and LDCs” and “patents and food security,” both suggested by the African Group; “strategic use of patents in business,” suggested by the Group of Eastern European and Baltic States (and modified from the original suggestion in the Friday morning chair’s text, which said “strategic use of IP in business”); and “enhancing IT infrastructure for patent processing,” suggested by Group B. 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