Info Service on Intellectual Property Issues (Jul15/05)
WIPO: Patent law committee to discuss studies on inventive step and disclosure
Geneva, 27 July (TWN) – The Standing Committee on the Law of Patents (SCP) is set to discuss studies on what constitutes an “inventive step” and on sufficiency of disclosure in patent applications.
The discussion is under the agenda item on quality of patents including opposition systems, at the 22nd session of the SCP that is taking place 27-31 July in Geneva.
[The SCP was established in 1998 as a forum to discuss issues, facilitate coordination and provide guidance concerning the progressive international development of patent law including the harmonization of national laws and procedures. However, the overt attempt to harmonise patent law is on backburner due to resistance from developing countries.]
Apart from the quality of patents including opposition system the SCP is expected to discuss the following issues: Exceptions and limitations to patent rights; Patents and health; Confidentiality of communications between clients and their patent advisors and Transfer of technology. Except for the agenda item on the confidentiality of communications, the other three issues have critical public policy implications. (For a report of the 21st session of the SCP on these issues see: TWN Info Service of 3 November 2014: WIPO Patent Committee to discuss critical issues on patents and public policy.)
The meeting documentation also shows that the SCP is to consider a proposal from the Group of Latin American and Caribbean Countries (GRULAC) on the Revision of the 1979 WIPO Model Law for Developing Countries on Inventions.
As a result of the lack of consensus on the future work programme at SCP 21, it was decided to consider only two studies at SCP 22. These are:
“(a) a study on inventive step that contains the following elements: the definition of the person skilled in the art, methodologies employed for evaluating an inventive step and the level of the inventive step;
“(b) a study on sufficiency of disclosure that contains the following elements: the enabling disclosure requirement, support requirement and written description requirement”.
The decision on these studies was taken at SCP 20 in 2013. According to the Chair’s Summary of the 20th session these studies are to “be based on the information provided by Member States, and will be a collection of factual information without analysis or recommendation”.
There was some confusion with regard to the agenda of SCP 22. In the past when there was no consensus on the future work there was an explicit decision to continue with the existing agenda at the next session of SCP. For instance, when SCP 18 failed to reach a consensus the SCP decided as follows: “Failing agreement otherwise, following a proposal by the Chair, the Committee agreed to carry on discussions at its next session on the basis of the agenda of its eighteenth session, except agenda items 2 and 12 in document SCP/18/1”.
However, there was no such decision contained in the Chair’s Summary of SCP 21. In this regard South Africa sought clarification from the Secretariat on whether the next session is going to spend the whole five days of discussion on the abovementioned two studies. The Secretariat replied that the two studies and discussion on future work would consume all the time. The SCP 22 draft agenda shows that apart form the two studies the SCP will discuss other existing issues under the agenda item “Other issues”.
As mentioned above the two studies contain only factual information without analysis or recommendation. Therefore these studies do not even analyse the implications of various existing practices of various WIPO Member States on the quality of patents.
The first study on the inventive step requirements provides a general description and the history of the concept, definition of ‘person skilled in the art’ (PSIA), methodologies employed for evaluating inventive steps and the level of inventiveness. (http://www.wipo.int/edocs/mdocs/scp/en/scp_22/scp_22_3.pdf)
After looking at the definitions of PSIA the study concludes: “From the above, it could be deduced that the PSIA’s average or ordinary skill is not the average of a layperson’s and a top specialist’s skills, but rather the skill expected to be possessed by an ordinary practitioner in the relevant field. Therefore, the level of the PSIA’s ordinary skill depends on the technical field and nature of the invention”.
Under the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS) there is no definition of PSIA and there is flexibility to define the person skilled in the art, and countries can even replace the criterion of PSIA from ordinary skilled in the art to highly skilled in the art. This can put a high threshold level of patentability criteria.
Even though the study lists practices of various methodologies employed for evaluating the inventive steps and the level of obviousness it does not provide any analyse from a development perspective to identity the most important methods to ensure that trivial inventions are not granted patents. The study reveals that technological advancement is not the sole criterion for evaluating the inventive step. Some of the criteria on evaluating the level of inventiveness set a low level of inventiveness threshold. For instance, some patent offices recognise a particular commercial success as a criterion to satisfy the inventive step.
The second study focuses on the disclosure requirements and compiles various practices of disclosure requirementsviz. the enabling disclosure requirement, support requirement and written description requirement. (http://www.wipo.int/edocs/mdocs/scp/en/scp_22/scp_22_4.pdf)
This study was requested by developing countries. There is a normal trend that often a patent applicant tries to not disclose the invention fully in order to obtain broad patents. This strategy of non-disclosure goes against the objectives of patent protection and constitutes a ground for pre-and post grant opposition.
However, the study fails to mention the disclosure requirements of biological material as contained in several national laws such as that in India and China. Strict disclosure requirements can improve the threshold level of patentability criteria.
Even though the study deals with disclosure of biological material through the depository method under the Budapest treaty that deals with patents on microorganisms, it is silent with regard to the disclosure of the geographical origin, prior informed consent and benefit sharing arrangements with regard to inventions involving bio-materials.
This study also provides a factual collection of law and practices but does not make any analyse with regard to the implications of such practices on the threshold level of patentability and the potential to prevent patenting of trivial inventions.
As mentioned above, the studies will be discussed under the agenda item “quality of patents including opposition system” along with other proposals submitted in the previous session of the SCP. These proposals are: a proposal by Denmark on use of foreign search and examination work by other patent offices (SCP/17/8); a proposal by the United States (SCP/17/10) to survey what is the standard of high quality patents followed by patent offices and how patent examination and granted patents are evaluated against this standard; a joint proposal by Canada and the United Kingdom (SCP/18/9) for a survey on how quality of patents is defined, implemented and evaluated; a separate proposal by the United States (SCP/19/4) on exploring how existing work sharing programs can be made more effective and useful; and a joint proposal by Republic of Korea, the US and the UK (SCP/20/11 Rev.) on exchange of information on work sharing programmes between patent offices through the WIPO website and by org anizing annual conferences on work sharing on the margins of the SCP.
The SCP is also to consider a proposal from GRULAC that proposes a decision with regard to the WIPO Model Law. The proposed decisions reads: “The SCP requested WIPO Secretariat to allocate the funds necessary to carry on the ‘Revision of the 1979 WIPO Model Law for Developing Countries on Inventions’ in the 2016 -2017 Program and Budget and to prepare for SCP 23 a proposal for consideration of Member States on the terms of reference and modalities that such a revision could follow”.
The existing model law of 1970 is a pre-TRIPS document and lacks the public interest flexibilities. As a result the WIPO Secretariat often provides technical assistance through another confidential model law template, which does not incorporate the TRIPS flexibilities to the optimum level. For instance, the WIPO confidential intellectual property model law template does not contain all the grounds for compulsory licence or for pre-grant patent opposition.
GRULAC made the proposal during the 20th and 21st sessions of the SCP. The Group suggested that the Secretariat prepare draft modalities and terms of reference for the revision of the 1979 WIPO Model Law for Developing Countries on Inventions. Some delegations stated that the current five substantive agenda items that reflected a balance of different priorities should be maintained. The Chair noted that the proposal by GRULAC could be presented and discussed at the next session (SCP 22).+