WIPO Patent Committee Agrees To Continue Discussions On All Issues

The World Intellectual Property Organization patent law committee ended its meeting this week with status quo on all issues, after lively deliberations and new proposals but with all discussions left for further debate in 2012.

The 17th session of the WIPO Standing Committee on the Law of Patents (SCP) met from 5-9 December. It was characterised as a satisfying meeting by committee Chair Albert Tramposch of the United States Patent and Trademark Office, who told Intellectual Property Watch, “I am happy to be moving forward with a balanced agenda,” but appeared disappointing to some. Consensus eluded delegates on all issues, which were pushed to the next meeting for further discussions.

“No substantive headway was made at this session” said a developing country delegate while a Group B country (developed countries) delegate summarised the session with a good-humoured “we agree not to agree”.

A swift conclusion escaped the SCP as delegates struggled to agree on the informal suggestions by the chair on future work on Friday and they had to retreat to small groups to find agreeable language. A first version [pdf] of the informal suggestions was distributed on 8 December, discussed in plenary on that day and again in the morning of 9 December, according to a source. An edited version was issued in the early afternoon of 9 December.

A summary by the chair [pdf] was released at the end of the afternoon and delegates, after several informal meetings with coordinators of the regional groups finally approved it in plenary after minor changes were proposed by delegates. For example, the meeting approved the suggestion of the United States to add a sentence to ask in the context of patent and health, that in the event the secretariat decides to invite the World Trade Organization and the World Health Organization, the member states will be informed well in advance. A new item reflecting this sentence was added to paragraph 25(c) of the chair’s report, according to sources.

Discussions this week covered the quality of patents, patents and health, exceptions and limitations to patent rights, client-attorney confidentiality, and technology transfer.

Exceptions and Limitations, Patents and Health

On a proposal for exceptions and limitations to patents, members had been asked before the meeting to complete a substantive questionnaire and the deadline for further submissions was pushed back to 9 March 2012. According to the chair’s summary, the WIPO secretariat will prepare a new document presenting the answers already received with the addition of those received by March.

At the beginning of the week, one proposal on patents and health was on the table, submitted by the delegation of South Africa on behalf of the African Group and the Development Agenda Group (DAG). By the end of the week there were two proposals.

The developing country proposal calls for a work programme to assist countries to adapt their patent regimes and make full use of the patent flexibilities. The work programme would include a study on challenges and constraints faced by developing countries and least developed countries to fully benefit from the public health patent flexibilities, information exchange, and technical assistance.

According to a copy of the statement posted by Knowledge Ecology International, the United States speaking on behalf of Group B countries (including western European Union countries, Norway, the US, Switzerland, Japan, Canada, New Zealand, Australia, Turkey, Israel and the Holy See) said that Group B countries took note of the proposal put forward by the African Group and the Development Agenda Group, but did not support it. Reasons for this were that incentives provided by patents are would be hampered by a weaker patent system, and that the SCP should focus on its core mandate and avoid duplication of work carried out in other committees.

On 7 December, the United States put forward a new proposal on patents and health [pdf]. In that proposal, the US said that the issue of availability of medicines to treat diseases affecting developing and least developed countries could not be solved by IP rights flexibilities alone and “in particular cannot be solved by the wholesale use of compulsory licensing.” To the contrary, the lack of effective patent protection, it said, prevents medicines from reaching patients.

Only four percent of the medicines on the WHO’s list of essential medicines are currently protected by patents, but their availability is limited by other factors than patent protection, the proposal said. The proposal suggested alternative approaches, such as voluntary licensing and funding schemes, such as the Medicines Patent Pool, global funding, and advanced market commitments (in which medical products producers are guaranteed a market).

According to a source, the proposal was made in part “to put the compulsory licence in context.” A compulsory licence is not enough to guarantee access to medicines, the source said, and some external factors hindering that access could be, for example, difficulties linked to the approval of the medicines by national regulatory authorities.

A DAG country source said they “were a bit surprised to see some resistance to the issue on public health” this week.

The issue, as well as the discussion on limitations and exceptions, will remain on the agenda for the 18th session of the SCP. Since no consensus was reached on the South African proposal, it should be further discussed at the next session. The proposal submitted by the US will be discussed at the next session too, the chair’s report said. Member states are invited to submit written comments on the two proposals for the next session.

Patent Quality: Now Three Proposals on the Table

At the beginning of the week, two proposals were on the table on the quality of patents. They were a joint proposal from the United Kingdom and Canada [pdf], and a new proposal from Denmark on using foreign search and examination. Yet another proposal was put forward by the US, [pdf] in which the US proposes to conduct a survey of the offices of member states “inviting them to reflect upon and to share the high-level goals that they consider crucial to a patenting system that produces high quality patents.” They also suggested that a questionnaire be filled by the national offices “in which they would describe the specific metrics they use in evaluating granted patents and the work of the examiners, measured against the office-specific targets described above, and describe the quality assurance mechanisms they employ.”

Several developing country sources told Intellectual Property Watch that they found those steps premature and would like the proposal to be discussed at length first. In question also is the lack of definition of the quality of patents, a Group B source said. Some countries cannot really have a definition because such a definition depends on national laws, the source said. A DAG country source said there was no agreement on the definition of the quality of patents and this issue needed to be discussed in the committee before any further steps are taken.

According to a developing country source, the DAG countries would like to establish a work programme on patent and health, and, as indicated in the proposal, invite the United Nations Special Rapporteur on the Right to Health, Anand Grover, to a next session of the SCP to present his report to the Human Rights Council on intellectual property rights and access to medicines.

On the patent attorney privilege, no consensus was reached. One of the reasons is that this privilege is a national matter and touches upon national laws, a developing country source told Intellectual Property Watch.

Both the health and privilege issues will remain on the agenda of the next meeting, which should take place in Geneva in May or June 2012.

Technology Transfer

Transfer of technology will also return to the agenda in the 18th session. The secretariat is to prepare a document listing the various activities of WIPO in the area of technology transfer and expand its study on incentives and impediments to the transfer of technology through practical examples and experiences, according to the chair’s summary.

According to sources, the Egyptian delegation asked that the word “incentives” be preceded by the words “patent related” in the chair’s report.

The secretariat is also expected to “assist Member States in facilitating the complementary and non-duplicative nature of the work undertaken by the SCP and the CDIP [Committee on Development and Intellectual Property] on the issue of transfer of technology.”

According to sources, South Africa on behalf of the African Group asked that a sentence be added to paragraph 25(e) of the chair’s summary that would read “the SCP may consider the possibility to organise a seminar to complement the study in the near future”. The delegate of the US, on behalf of Group B asked that any reference to the future be erased, which was accepted by South Africa, according to sources.