WIPO Patent Law Committee Agrees On Future Work: Exceptions, Quality, Health, Confidentiality, Tech Transfer

General satisfaction was expressed today at the World Intellectual Property Organization as members of the patent law committee agreed on a future work programme. That is an exercise that they could not complete in December 2016. Included in the work programme is a half-day information exchange on cooperation between patent offices on search and examination, a half-day information exchange on publicly accessible databases on medicines and patent information, and a reference document on exceptions and limitations to patent rights.

The 26th session of the WIPO Standing Committee on the Law of Patents took place from 3-6 July. The summary by the chair [pdf] was adopted without changes.

After a day of informal consultations during which delegates sought to aggregate a number of different propositions reflecting diverse positions and interests (IPW, WIPO, 6 July 2017), a future work [pdf] programme was agreed upon today.

The future work programme keeps the frame of the five formerly agreed topics: 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 the transfer of technology.

On exceptions and limitations to patent rights, and following a proposal [pdf] by Brazil, the WIPO secretariat is tasked with the elaboration of a draft reference document on the exception regarding acts for obtaining regulatory approval from authorities. This document is expected to include the description of the exception, its objectives and goals, the challenges faced by member states in its implementation, and the result of the implementation.

On the quality of patents, following a proposal [pdf] by Spain, a study on inventive step is expected to be presented at the 28th session of the SCP, and a sharing session will be organised at the same session to provide examples and cases relating to assessment of inventive step.

A half-day information exchange session on cooperation between patent offices in search and examination is also expected to be held to address in particular the effects of such cooperation on the patent granting process and capacity building. Cooperation between patent offices is considered as primordial by countries such as the United States, Japan, and the European Union.

On patent and health, a half-day information exchange session on publicly accessible databases on patent information status and data on medicines and vaccines is foreseen.

Following a proposal by Brazil, the Medicines Patent Pool will be invited to make a presentation on its Medicines Patents & Licenses Database (MedsPaL). The session is expected to address practical utilisation of those databases and some issues detailed in a proposal by the African Group. In particular, the 2016 African Group proposal [pdf] underlined the absence of an efficient or accurate way to determine the patent status of medicines, including those on the World Health Organization Model List of Essential Medicines.

The WIPO secretariat is also tasked with updating the feasibility study [pdf] on the disclosure of International Nonproprietary Names (INN) in patent applications and patents, first presented in 2014.

A sharing session among member states on patents and other related issues on access to medicines is foreseen, with the presence of experts from the WHO and the World Trade Organization to present the issues regarding the availability of generic medicines in developing countries and LDCs. This reflects a request contained in a 2011 US proposal [pdf].

On the confidentiality of communications between clients and their patent advisors, a sharing session on the experiences of member states in implementing the confidentiality of communication between clients and their patent advisors through national legislation, including cross-border issues, is expected to be organised.

Some countries such as Group B in the past and this week have called for a “soft law” on the issue of the confidentiality of communications between clients and their patent advisors, in particular to address cross-border issues. Other countries, such as the African Group, have found that this issue should be dealt with at the national level and is a matter of private law.

On transfer of technology, a sharing session is foreseen on patent law provisions that have contributed to effective transfer of technology.

Revision of 1979 WIPO Model Law

The Group of Latin American and Caribbean Countries has requested [pdf] since 2015 [corrected] that the 1979 WIPO Model Law for Developing Countries on Inventions be revised, to reflect changes which occurred since the 1970s in the patent law area, and in particular the entry into force of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the implementation of its provisions in national legislations.

The resistance to this revision by some countries since 2005 continued this week. Some such as Group B said that revising the model law would merely establish a one-size-fits-all framework, which is not applicable today.

Delegates agreed today [pdf] that at the next session the WIPO secretariat would organise an “informative” session on legislative assistance in the field of patents and related capacity building.

Positive Clamour for Agreement, Some Reservations

The future work was hailed as a balanced agenda and an example of constructive by all parties, even if some countries underlined issues for which they have a stronger interest than others.

For example the European Union said one of their that their main interests lays in the quality of patents, and in the long term they said they would like to see more discussions on the harmonisation of substantive patent law.

Indonesia and India said they would like to bring a discussion in the SCP about the recommendations of the United Nations Secretary-General’s High-Level Panel on Access to Medicines, and several countries underlined the importance of the topic of technology transfer.

Japan for Group B said the group accepted the informative session on legislative assistance on the condition that no further discussion would take place in the SCP on the revision of the 1979 WIPO model law.

 

Image Credits: WIPO