WIPO Patent Law Committee Seeks To Overcome North-South Divide On Priorities

The World Intellectual Property Organization patent law committee meets this week with a work programme reflecting strong interests that are not equally shared by member states. Developed countries in the past have focused on ways to share work between patent offices, while developing countries would favour more time being spent on limitations and exceptions to patent rights, in particular in the area of health.

The 22^nd session of the Standing Committee on the Law of Patents (SCP) is meeting from 27-31 July. The SCP looks into international development of patent law.

At the last session, from 3-7 November, divergent views on the use of the patent system prevented WIPO delegates from agreeing on a work programme for the 22^nd session of the committee (IPW, WIPO, 10 November 2014).

[Update: a revised agenda has been adopted, moving items from the “Other Issues” category into the main body of the agenda. See IP-Watch story here.]

The preliminary draft agenda [pdf] for this week’s session lists the same topics as last meeting.

The draft work programme for the last meeting included the five current issues dealt with by the SCP: exceptions and limitations to patent rights; quality of patents, including opposition systems; patents and health; confidentiality of communications between clients and their patent advisors; and transfer of technology.

At that last meeting in November, one of the concerns of developing countries was that the SCP was delving into work-sharing discussions, which they see as an attempt to harmonise the global patent system. Also they deemed that too much time was devoted to work-sharing and not enough on exceptions and limitations to patent rights.

Quality of Patents

Two studies are expected to be considered by member states during the week.

The first is a study [pdf] on inventive step prepared by the WIPO secretariat containing three elements: the definition of the person skilled in the art; methodologies employed for evaluating an inventive step; and the level of the inventive step.

According to the meeting document, the SCP at its last session agreed that the study would be based on the information provided by member states and would be a collection of factual information without analysis or recommendation.

The study details the notion of novelty through history, the definition of the “person skilled in the art” (PSIA), which is the person tasked with assessing the determination of an inventive step, and describes methodologies employed for evaluating an inventive step in different legislations.

The second is a study [pdf] on the “sufficiency of disclosure”, which is also tabled for this session of the SCP. The study addresses the enabling disclosure requirement, the support requirement, and the written description requirement. It was expected to be based on information provided by member states and would be a collection of factual information without analysis or recommendation.

Some 58 member states and three regional patent offices provided their applicable laws in relation to the requirement of sufficiency of disclosure, according to the meeting document.

Still on the agenda are documents from earlier sessions of the SCP on the issue.

These include: SCP/17/7 [pdf]: Proposal by the Delegation of Denmark (Improving the quality of the search and examination of national patent applications by using foreign search and examination work), SCP/17/8 [pdf]: Revised Proposal from the Delegations of Canada and the United Kingdom (in respect of a work program on quality of patents), SCP/17/10 [pdf]; Proposal by the Delegation of the United States of America (concerning the quality of patents), SCP/18/9 [pdf]: Questionnaire on Quality of Patents: Proposal by the Delegations of Canada and the United Kingdom, SCP/19/4 [pdf]: Proposal by the Delegation of the United States of America regarding Efficiencies of the Patent System, and SCP 20/11rev. [pdf]: Proposal by the Delegations of the Republic of Korea, the United Kingdom and the United States of America regarding Worksharing between Offices in order to Improve Efficiencies of the Patent System.

Revised Model Law for Developing Countries

Also on the agenda is a proposal [pdf] submitted by the Group of Latin American and Caribbean Countries (GRULAC) on a Revision of 1979 WIPO Model Law for Developing Countries on Inventions. This proposal was submitted in the two 2014 meetings of the SCP, according to the meeting document.

The proposed revision aims to address the need to respond to the increasing demand of member states for legislative and policy assistance, in line with the WIPO Development Agenda.

The proposal also says the revision would be an “opportunity to update a document from the 70s to reflect changes occurred after that period in the patent law area, in particular the entry into force of the TRIPS Agreement [World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights] in 1995 and the implementation of its provisions in national legislations.“

Exceptions and Limitations to Patent Rights

Under Other Issues, the draft agenda includes exceptions and limitations to patent rights, with related documents from last sessions: SCP/14/7 [pdf] and SCP/19/6 [pdf]: Proposals from Brazil (in respect of exceptions and limitations to patent rights.)

Also under other issues are documents on patent and health from previous sessions of the SCP: SCP/16/7 [pdf]: Proposal submitted by the Delegation of South Africa on behalf of the African Group and the Development Agenda Group (work program on patents and health), SCP/16/7 Corr, [pdf], and SCP/17/11 [pdf]: Patents and Health: Proposal by the Delegation of the United States of America.

The “Other Issues” item on the agenda also includes the confidentiality of communications between clients and their patent advisors, and transfer of technology.