WIPO Patent Law Committee Agrees On Future Work, Stays On Safe Path

The mood was conciliatory this week at the World Intellectual Property Organization patent law committee as delegates mainly shared experiences and heard presentations. The five topics composing the work of the committee, which had been carefully negotiated in the summer and reflecting a “delicate balance” of interest between countries, will be pursued at the next session. Among them are the topics of patents and health, technology transfer, and the quality of patents.

The 27^th session of the Standing Committee on the Law of Patents (SCP) took place from 11-15 December.

After some informal consultations, a work programme was adopted for the next session of the SCP, tentatively scheduled to take place from 9-12 July 2018, duplicating the five topics of the session this week. Those are: exceptions and limitations to patent rights; patents and health; quality of patents including opposition systems; confidentiality of communications between clients and their patent advisors; and transfer of technology.

The agreed work programme is included in the summary by the chair [pdf], adopted without change uncommonly early on the last day of the SCP meeting.

A series of informative sessions and the sharing of experiences were what constituted most of the agenda this week, with little debate on the different issues, according to sources.

Traditionally, developed countries’ interests lie in patent quality and in cooperation between patent offices to help examination procedures. They also find very important the confidentiality of communications between clients and their patent advisors, particularly in cross-border situations.

Developing countries in general are more interested in exceptions and limitations to patent rights, patents and health, and transfer of technology.

Confidentiality of Communications

On 14 December, Switzerland on behalf of Group B developed countries explained that the protection of the confidentiality of communications between clients and their patent advisors does not affect the disclosure of an invention, and patentability requirements are not compromised by this confidentiality. Steps should be taken to address this issue at the international level, he said, with enough flexibility to accommodate different legal systems.

The European Union concurred and suggested that work start at the SCP on a non-legally binding instrument providing the same protection to communications between clients and their patent advisors as under national law, without prejudice to existing legislation. Switzerland in its national capacity also said it would support international soft law on the matter.

China remarked on the different national legal systems, the need to respect legal traditions, and to let national law decide on the issue. The time is not mature to solve this problem, the delegate said.

Senegal for the African Group, as well as Iran, remarked that confidentiality of communications between clients and their patent advisors is a matter of national legislation. This issue should be regulated by private law, said the Senegal delegate, adding it is a substantive issue of patent law and is up to each member state to deal with it as they see fit under their national legislation.

According to the agreed work programme, member states will continue sharing their experiences and court cases in implementing the confidentiality of communications between clients and their patent advisors through national legislation, including cross-border issues.

Patents and Health

The work plan includes an exchange of information on publicly accessible databases on patent information status and data on medicines and vaccines. An informative session was held this week, with presentations from the Medicines Patent Pool, the World Health Organization, and the World Trade Organization (IPW, WIPO, 14 December 2017).

Under this topic two paragraphs of a June 2016 proposal [pdf] by the African Group for a work programme on patents and health are to be considered. Paragraph 18 is about the development of an international patent register for essential medicines to facilitate the patent status of a medicine internationally. Paragraph 19 is about the development of an international licence registry for licensed medicines to facilitate access to a medicine internationally.

The WIPO secretariat is expected to update a feasibility study on the disclosure of International Nonproprietary Names (INN) in patent applications and patents, for the next session. INNs facilitate the identification of pharmaceutical substances or active pharmaceutical ingredients, according to the WHO. “Each INN is a unique name that is globally recognized and is public property. A non-proprietary name is also known as a generic name,” it explains.

This disclosure of INN in patent applications and patents is a longstanding request of some developing countries.

Also under this topic, member states will share their experience with respect to enhancing examiners’ capacity, according to the work programme, in particular in small and medium-sized offices, and the secretariat is expected to report on its technical assistance activities in this area.

Canada tabled a revised version [pdf] of its proposal for a review of existing research on patents and access to medical products and health technologies for this session of the SCP. It is expected to be discussed again at the next session. Switzerland sponsored Canada’s proposal.

Exceptions and Limitations to Patent Rights

According to the work plan, the WIPO secretariat is expected to produce a second draft reference document on exceptions regarding acts for obtaining regulatory approval from authorities for next session. The secretariat is also tasked with providing a first draft reference document on the research exception to be submitted to the 29^th session of the SCP.

Quality of Patents, Including Oppositions Systems

On the quality of patents, the WIPO secretariat is expected to produce a further study on inventive step, taking into account paragraph 8 of a 2016 proposal [pdf] by Spain. Paragraph 8 lists potential topics which could be included in such study.

A sharing session is also included in the future work for the 28^th session on patent opposition and administrative revocation mechanisms.

Experiences are also expected to continue to be shared on member state cooperation with patent offices in search and examination, including the sharing of information concerning the corresponding foreign applications and grants.

Technology Transfer

The future work foresees that member states will continue sharing information on patent law provisions that contributed to effective transfer of technology.

During discussions this week, Switzerland, on behalf of Group B, said IP helps promote technology transfer on voluntary and mutually agreed terms, and supports the dissemination of new technology. Concrete issues and activities relating to the role of WIPO in technology transfer should be discussed at the WIPO Committee on Development and Intellectual Property (CDIP), the delegate said. The European Union concurred that said the SCP should avoid duplicating the efforts of the CDIP.

Brazil underlined the role of the SCP to bridge gaps between developed and developing countries. Developing countries and least-developed countries have made “great strides” in the development of their innovation systems, but high-income countries still represent some 65 percent of the world total research and development investments, the delegate said.

Article 7 (objectives) and 66.2 (least-developed countries members) of the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), as well as the WIPO Development Agenda, should serve as a basis for discussions in the SCP, Brazil said.

China said the SCP gathers more patent law experts than the CDIP and thus the SCP can have a discussion on technology transfer.

 

Image Credits: Emmanuel Berrod, WIPO