WIPO Patent Law Committee Undertakes Many Issues This Week

A World Intellectual Property Organization Committee on the Law of Patents (SCP) meeting this week is underway. Among the possible agenda items: updates to the international patent system, exceptions and limitations to patents, quality of patents, patents and health, confidentiality of client-patent advisor communications, and technology transfer. A recent developed country proposal relates to increased work-sharing among patent offices. Also on the table this week is a new proposal to study the assessment of inventive step by patent practitioners.

WIPO SCP Chair Bucura Ionescu

The 24th session of the SCP is meeting from 27-30 June. All documents are available here. The SCP Chair is Bucura Ionescu of Romania.

The last meeting of the SCP, in December 2015, ended with no agreement on future work so it was assumed the basic agenda items would be carried forward (IPW, WIPO, 6 December 2015).

This committee is potentially one of the most important of all WIPO committees because of the importance of the global patent system and the dominance of patents in the UN agency’s bottom line. But divisions seem to appear between those who benefit strongly from the current patent system seeking to further advance the system, and those seeking to have the ladder lowered down to them to climb on board and to protect the public interest. This can be illustrated by developing countries’ efforts to focus the committee on exceptions to patents, and the desire to focus on the restrictions patents can place on access to health, and developed countries’ entrenched pushback against any measures that might be seen as weakening the existing system. It will be seen this week how differences play out, as even a small breakthrough could have significant effect.

Inventive Step

A new proposal this week from Spain under the topic of quality of patents calls for additional studies on the assessment of inventive step, one of the criteria for granting a patent.

“It would be desirable to study in greater depth the concept of inventive step and its evaluation, since patent professionals agree that this is the patentability requirement of most difficult assessment,” Spain says in its proposal, available here [pdf].

“This delegation considers that it would be highly useful for Member States if the Secretariat carried out a study or a series of studies on the most difficult aspects of ‘assessment of inventive step’,” it continues. “The study or studies would tackle their definition, and the way they are addressed in the different regions and/or the most relevant patent offices, including examples and case law if possible.”

After the studies are completed, Spain said, “there could be an exchange session where experts from the different regional groups would provide presentations on some of those issues with examples illustrating their examination practices.”

“In the opinion of the Spanish Patent and Trademark Office (OEPM), improving the knowledge about the requisite of inventive step is a question of interest to all Member States, no matter their level of development,” the proposal states. “Likewise, it would be of interest to users and society in general. A correct assessment of inventive step will help granting patents to inventions that really deserve them.”

Other Issues

Among the opening statements made at the start of the meeting today, India has shared its statement, available here.

“The Delegation of India would like to reiterate that patent systems had been created in the interest of national economy and that, consequently, patent offices have to act as a steward of the public interest so as to protect the public against issuance of frivolous patents that added unnecessary costs and confer unwarranted market distortions,” it stated, capturing the different perspective developing countries often bring to the global patent system.

“We reaffirm that harmonizing patent laws across countries with asymmetric distribution of IP assets served the interests of rent seekers rather than that of the public in developing and least developed countries. We believe that the policy flexibility is a sine qua non if enlightened societies are to ensure that intended beneficiaries, the public in each country, would not be worse off as a result of such protection.”

On the report on the international patent system, the WIPO secretariat said in document SCP 24/2 that no submissions have been made since the call was made at the last December meeting.

On exceptions and limitations, the related documents are a longstanding proposal from Brazil (updated in 2013) to among other things conduct an analysis of exceptions and limitations most commonly used by member states.

Brazil today said the issue could bring a better understanding of the user experience, and that it would be useful to have a compilation of different mechanisms, such as the Bolar exception. South Africa stated support for Brazil’s proposal.

The nongovernmental Third World Network intervened to highlight the importance of countries’ sovereign right to use the flexibilities to IP rights embedded in the 1994 World Trade Organization Agreement on Trade-Related Intellectual Property Rights (TRIPS). The group charged that the United States and Switzerland have violated international law by pressuring Colombia not to exercise its right to use the TRIPS flexibilities in order to lower the price of drugs in that country.

Russia repeated a call for the secretariat to compile a list of exceptions and limitations in use, and called on members to share their experiences, particularly with compulsory licences.

At press time, the committee was moving into the agenda item on quality of patents, including opposition systems, with many related previous documents. It remains to be seen how the discussion will proceed.