Info Service on Intellectual Property Issues (Jan16/01)
WIPO: SCP future work wrecked by US proposal
Geneva, 4 January (K M Gopakumar) – The Standing Committee on Patents (SCP) of the World Intellectual Property Organization (WIPO) concluded its 23rd session without the adoption of a future work programme.
The SCP23 took place on 30 November to 4 December 2015 at the WIPO headquarters in Geneva.
One and a half days of negotiations failed to reach a consensus when the work proposal was presented at the plenary meeting on 4 December around 9 pm. Consensus eluded the proposal on work sharing based on a proposal from the United States (US) (http://www.wipo.int/edocs/mdocs/scp/en/scp_23/scp_23_4.pdf).
The proposal contained three activities.
First, “the Secretariat to conduct a study of whether, under what circumstances and how the implementation of work sharing and international cooperation programs between patent offices could assist the collaborating offices in conducting more efficient searches and examinations, and in granting high quality patents by leveraging the work carried out in other offices”.
Secondly, “a study/survey of the views of member states concerning sharing search strategies”.
Third, “the Secretariat study the benefits and possible impediments to making national collections of prior art available to all the offices, for example through an IT portal”.
Based on the proposal and Group B’s insistence the Chair proposed the following activity as future work on quality of patents, including opposition systems.
“The Secretariat will circulate a questionnaire prior to SCP/24 for comments from Member States and regional patent offices, which contains the following elements: How each Member State understands the quality of and implementation of work sharing and collaborative activities between patent offices, including experiences, their impacts, exchanging search strategies, tools to share information and capacity building needs in the area of work sharing. Based on the responses to the questionnaire, a study will be submitted to SCP /25”.
[‘Work sharing’ is a broad term used to describe various bilateral and plurilateral arrangements between/among patent offices to assist countries to expedite the examination of applications and granting of patents. These arrangements include: use of search and examination results of other patent offices; accelerating the granting of a patent based on the decision of another patent office; collaboration between/among patent offices to jointly examine patent applications; various platforms and tools to share information on search and examination. See http://www.twn.my/title2/intellectual_property/info.service/2014/ip140108.htm]
The WIPO Secretariat has also compiled in document SCP/20/8, a document on work sharing programs among patent offices and use of external information for search and examination based on information received from Member States. (http://www.wipo.int/edocs/mdocs/patent_policy/en/scp_20/scp_20_8.pdf)
According to developed countries there is a huge backlog of patent application waiting for examination in various patent offices and the best way to resolve the issue is through work sharing as a solution. Developed countries argue that it is an effective way to improve the quality of patents. Developing countries view work sharing as a method of functionally harmonizing the scope of patentability – an issue that falls within the realm of substantive patent law.
Work sharing arrangement encourages reliance on foreign patent offices and, as a result, undermine the current flexibility available to WIPO Member States to determine the threshold for patentability as per their development needs. In the long term, work sharing will also reduce the capacity to examine patent applications at the national level, according to national and development interests. Developing countries are concerned that discussion on work sharing in SCP would lead to a norm setting on work sharing arrangement which are purely bilateral or plurilateral arrangements. Therefore developing countries objected the idea of work sharing in SCP.
When the Chair presented the future work at the last plenary India, the coordinator of the Asia Pacific Group stated that there are concerns among the members of the group regarding theelements of future work. India further stated that respective Member States of the Group would state their concerns. India also expressed the hope that if those concerns can be addressed then a consensus can be reached on future work.
Following this Iran stated that it could not go along with the proposed work program on work sharing. Iran stated that work sharing is a bilateral or trilateral issue. Further there is no definition on quality of patents. It said that work sharing is a matter of procedural issue and therefore fall outside the mandate of the SCP. Therefore Iran demanded the removal of the activities on work sharing from the future work.
Iran also proposed changes to the proposed activity on “Confidentiality of Communications between Clients and Their Patent Advisors”. The proposed work program stated:
“Based on the information received from members and observers of the SCP, a compilation will be prepared by the Secretariat of court cases with respect to cross–border aspects of client-patent advisor privilege including limitations or difficulties encountered in cross-border issues”.
Iran proposed deletion of words that come after the word “cases”. Romania on behalf of the Central European and Balkan States (CEBS) requested a 10-minute break to resolve the issue. This break went on for more than an hour. Third World Network learned that during the informal consultations Iran had proposed language changes which turned out to be unacceptable for Group B (the group of developed countries). The Secretariat also tried to come up with compromising language but could not succeed.
When the plenary reconvened the Chair did not propose any compromise language but proposed the old text as it is. Iran once again repeated that it could not join the consensus. It also stated that during the discussion on the agenda item concerned many developing countries expressed concerns on work sharing and confidentiality of communications between clients and their patent advisors. Iran also stressed that it is important to respect and accommodate concerns and interest of all Member States. It added that its concerns were conveyed through the Asia Pacific Group. Iran called upon the Secretariat to act in an impartial and neutral manner in accordance with the rules (referring to the importance of considering concerns of individual Member States).
After the intervention the Chair again asked the Committee whether there is a consensus on future work. In response to the Chair, Group B, the CEBS Group and the EU expressed their willingness to accept the text and expressed regret that consensus was not achieved. Group B blamed Iran without naming it, for not joining the consensus.
Pakistan called for a flexible approach and taking into account the interest of all Member States in an equitable manner.
At this stage the Chair once again asked Iran whether it could join the consensus. India took the floor prior to Iran’s response and stated that as coordinator of the Asia Pacific Group, India had conveyed since the first draft that members in the Group will not go along on this. Therefore isolating and naming one country does not set a positive precedent. Further it stated that due respect should be given to the views of individual Member States.
Pakistan supported the statement made by India and stated that every State has the right to hold on their position and it is not cordial to isolate them. Following Pakistan, Iran took the floor and expressed its inability to join the consensus. Iran also stated that it is a common practice in WIPO and other organisations that countries hold their position. It stated that the Chair should be neutral and say there is no consensus and it is not a good practice to isolate a single country in international organisations especially in WIPO.