WIPO Patent Committee Searching For Common Ground For Future Discussions

After a slow start this week due to late approval of the agenda, the World Intellectual Property Organization patent law committee is now sailing through the proposed schedule. However, previous positions remain unchanged and the core issue of the session is to find common ground on the future work of the committee.

At the end of the session yesterday, Committee Chair Bucura Ionescu of Romania issued a non-paper [pdf] summarising proposals and activities that had been carried out in the committee in the last four years on the five topics under discussion in the committee.

The five topics are: Exceptions and limitations to patent rights; quality of patents including opposition systems; patents and health; confidentiality of communications between patent advisors and their clients; and transfer of technology.

The 22^nd session of the WIPO Standing Committee on the Laws of Patents (SCP) is taking place from 27-31 July.

The non-paper lists different proposals made from the 16th meeting of the SCP in May 2011 until the 21st meeting in November 2014. It also lists studies carried out on several subjects. This includes one on confidentiality of communications between clients and patent advisors. It also includes a study on the role of the patent systems in promoting innovative medicines and in fostering the technology transfer necessary to make generic and patented medicines available in developing countries and least-developed countries.

Most delegations taking the floor to express their views on the five topics of the committee reiterated their previous positions (IPW, WIPO, 10 November 2014). At the outset of the meeting on 27 July, WIPO Director General Francis Gurry underlined the difficulty the committee has had in recent time to agree on a work programme. He encouraged delegates to find ways to identify issues with sufficient common ground, and said the SCP is supposed to be a normative committee, meaning a rule-making committee.

Exceptions and Limitations to Patent Rights

On 28 July, delegates expressed their views on exceptions and limitations to patent rights.

Brazil, on behalf of the Latin American and Caribbean Group (GRULAC), suggested that the third phase of a proposal tabled by Brazil [pdf] in January 2010 be carried out. The proposal put forward a three-step working programme for debate on exceptions and limitations at the SCP. The third phase of the proposal concerns the elaboration of an exceptions and limitations manual, to serve as a reference to WIPO members.

This was supported by the African Group which said the role of exceptions and limitations is a fundamental enabler for achieving development priorities. It also was supported by India, Pakistan on behalf of the Asia and Pacific Group, and Iran.

In his opening statement, Indian Ambassador Ajit Kumar said, “exceptions and limitations like Compulsory licensing, Parallel imports, Government uses, BOLAR exceptions…” are “extremely important from the point of view of accessibility and affordability of medicines in developing countries and least developed countries.” The Bolar exemption in the United States allows generic producers an exception to patent rights in order to do research and development on pharmaceuticals prior to the patent expiration.

The Group B developed countries said substantial work has been carried out on the topic by WIPO and it is now time to reflect on this work rather than adding new material. This was supported by the Group of Central European and Baltic States.

Patents and Health

Nigeria on behalf of the African Group said its proposal from 2011 [pdf] (proposing a work programme on patent and health) remains relevant to help developing countries use flexibilities in the patent system in alignment with their national health challenges. The Nigerian delegate said the group would update its proposal to be submitted at the next session of the SCP. The proposal was supported by Iran and India.

The European Union proposed that work be built upon the United States proposal [pdf] on a work programme on the subject, including a study on “the positive impact of patent systems in providing lifesaving medicines to developing countries,” and a study “to examine the availability of lifesaving medicines that are not protected by patents, and the reasons for their lack of availability.”

Brazil on behalf of GRULAC indicated that the subject should remain on the agenda of the SCP as it is one of the priority areas for the group.

Patent Attorney/Client Confidentiality

The confidentiality of communications between clients and their patent advisors is deemed very important for Group B countries. According to Japan, speaking on behalf of the group, the issue has an international dimension and the SCP should take substantive steps to a soft law approach.

Some developing countries taking the floor said the issue concerns private law and not international law. Iran said the topic lays outside of the SCP mandate and working toward a soft law in the matter would be premature until the mandate of the SCP is extended to cover the issue.

India suggested that discussions at the SCP be suspended on the subject, and warned against attempts at harmonisation. Nigeria on behalf of the African Group said the issue is a procedural matter which should be addressed by individual countries at domestic level. China said differences between legal systems should be recognised and the SCP is not the appropriate platform to discuss the issue.

Technology Transfer

On technology transfer, Group B developed countries said the SCP should not duplicate work carried out by other WIPO committees, such as the Committee on Development and Intellectual Property (CDIP).

Luxembourg, on behalf of the European Union, remarked that the CDIP project “Project on Intellectual Property and Technology Transfer: Common Challenges – Building Solutions,” is being implemented and until completed, the group was not in favour of other initiatives.

Developing countries which took the floor indicated their wish to pursue work at the SCP on the matter, such as Nigeria on behalf of the African Group, China, Ecuador, and India. The Indian delegate said technology transfer is a central piece of public health policy.

South Africa said it supported a statement delivered by the Third World Network. In its statement, the non-government organisation advocated the importance of technology transfer in the United Nations Sustainable Development Goals (SDGs) as the basis for the Post-2015 Development Agenda.

Quality of Patents including Opposition Systems

Yesterday, delegates heard the presentation of two studies prepared by the WIPO secretariat.

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

And the second was a study [pdf] on the “sufficiency of disclosure”, which addresses the enabling disclosure requirement, the support requirement, and the written description requirement (IPW, WIPO, 27 July 2015).

Further discussions were invited this morning, as part of the five topics to be discussed.

Spain said patent quality is important for all member states, independent of their level of development, and said it would table a proposal later today on state of the art.

Most developed countries taking the floor insisted on the importance of work-sharing between IP offices to improve the quality of patents. Japan on behalf of Group B suggested that WIPO dedicate a webpage to work-sharing programmes and initiatives. The group also proposed a study on how the implementation of work-sharing programmes can assist with a higher quality of patents. The group further suggested that WIPO dedicate a webpage on quality management.

The United States said descriptions of quality management provided by member states on this webpage could be valuable in terms of lessons learned about quality management systems.

Iran remarked that there are no agreed definitions of what constitutes the quality of a patent, and warned against any attempt at harmonising patent laws.

India presented its pre-grant and post-grant opposition system and how this system has allowed India to refuse the grant of patents deemed to show no novelty or inventive step, but rather were attempts to extend the life of a previous patent or patents. For a better quality of patents, opposition systems should be established, the delegate said.

A number of countries and groups have suggested proposals on those five topics, which are expected to be tabled during the week.