TWN Info Service on Intellectual Property Issues (Oct10/06)
18 October 2010
Third World Network

Dear Friends,

Please find below a news report on discussions that took place that the recent WIPO Committee on patents.

Regards

Sangeeta Shashikant
Third World Network

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WIPO: Exclusions, Exceptions and Limitations Dominate Patents Talks
 (Heba Wanis, Geneva)

Geneva, 14 Oct (Heba Wanis) -- Discussions on exclusions from patentable subject matter and exceptions and limitations to patent rights dominated the start of the fifteenth session of the Standing Committee on the Law of Patents (SCP) of the World Intellectual Property Organization (WIPO), which is meeting here from 11-15 October.

The agenda of the fifteenth session follows the agenda of the last SCP session, as no agreement could be reached at that meeting on the future work programme of the Committee.

Thus, the fifteenth SCP session will consider issues that were discussed at the fourteenth session such as patents and standards, client-attorney privilege, dissemination of patent information, transfer of technology, opposition systems, exclusions from patentable subject matter, and exceptions and limitations (E&L) to patent rights.

The issue of exclusions from patentable subject matter and E&L to patent rights has gained particular prominence as an agenda item due to a proposal on E&L to patent rights tabled by Brazil at the last SCP session in January, as well as six expert studies on the subject commissioned by the Secretariat. The Brazilian proposal and the expert studies are the subject of discussion at this SCP session.

Developing countries consider the topic of exclusions and E&L to patent rights as having special importance from a development perspective, in particular, in bringing more balance to the patent system, as well as to the discussions in WIPO that are about increased IP (intellectual property) protection for the right-holders.

Several developing countries also further underlined the need to discuss modalities to implement the requirements of the "Coordination Mechanisms and Monitoring, Assessing and Reporting Modalities" in respect of the implementation of the Development Agenda (DA) recommendations, recently approved by the WIPO General Assemblies. (WO/GA/39/14 Prov., para. 68).

As per the requirement of the mechanism, the SCP is "to include in their annual report to the Assemblies a description of their contribution to the implementation of the respective Development Agenda recommendations" and "to identify the ways in which the DA Recommendations are being mainstreamed in their work".

On the first day of the SCP session, several opening statements were followed by a presentation by Professor Lionel Bently from the University of Cambridge, who is the coordinator of the six "Expert studies on Exclusions from Patentable Subject Matter and Exceptions and Limitations to the Rights".

[The expert studies were requested at the thirteenth SCP session (March 2009) wherein it was decided that the Secretariat would "commission external experts [to conduct] a study on exclusions, exceptions and limitations focussed on, but not limited to, issues suggested by members, such as public health, education, research and experimentation and patentability of life-forms, including from a public policy, socioeconomic development perspective, bearing in mind the level of economic development." At the fourteenth SCP session (January 2010), more elaborated terms of reference were announced. (See SCP/14/INF/2)].

In their opening statements and various specific comments, developing countries generally expressed concerns that the expert studies lacked adequate analysis and did not take into account geographic representation of jurisprudence and the different levels of development, as required in their terms of reference.

Developing countries were also supportive of Brazil's proposal on E&L to patent rights wherein Brazil had proposed a three-phase work programme.

According to the Brazilian proposal, the first phase is to "promote the exchange of detailed information on all exceptions and limitations provisions in national or regional legislations, as well as on the experience of implementation of such provisions, including jurisprudence"

and would "also address why and how countries use - or how they understand the possibility of using - the limitations and exceptions provided in their legislations".

The second phase, according to the paper, "shall investigate what exceptions or limitations are effective to address development concerns and what are the conditions for their implementation" including "evaluate how national capacities affect the use of exceptions and limitations". In the third phase, Brazil proposes "elaboration of an exceptions and limitations manual, in a non-exhaustive manner, to serve as a reference to WIPO Members".

In the proposal, Brazil also outlines its motivations for a work-programme on E&L to patent rights. It recalls that the focus of the current IP system heavily lies on ensuring the rights of the IP holders, adding that while their claims are legitimate, they are incomplete from the perspective of public policy. It further says that there is palpable convergence among Members as to the importance of exceptions and limitations and yet the existence of different approaches to limitations and exceptions may cause uncertainties on policy spaces used by Members regarding why and how they are being used, if so, and how they are linked to innovation policies or addressing public health, nutrition, or environmental concerns.

The proposal also relates to Brazil's experience on the difficulty in making effective use of compulsory licenses. It said: "Our pharmaceutical industry took almost two years to develop and produce the licensed patent, because, unfortunately, the patent, as granted in Brazil and in other countries, was not sufficiently revealed to allow its production as promptly as desired".

It further states that the systemic importance of having well-functioning provisions of limitations and exceptions in national or regional legislations and the concerns raised by the limited use of limitations and exceptions by developing countries have led to the proposal for a work programme on E&L (to patent rights) in the SCP to enable a wide and sustained debate on this issue.

In its opening statement at the SCP session, Brazil, on behalf of the Development Agenda Group (DAG, comprising a number of like-minded developing countries), said that "reaching an agreed work programme continues to be a desirable goal", and that Member States must "move towards identifying broad areas of common interest and start focussing on those areas" to reach this goal.

 It highlighted two elements that are of "vital importance" in reaching agreement on a work programme in the SCP.

The first element, according to Brazil, is based on the fact that patents are a "temporary waiver of competition rules by which government authorities grant inventors exclusive rights for the economic exploitation of their technical innovation in return for the public dissemination of the technology contained in that innovation". In the interests of "balancing the interests of the inventor and those of society at large", said Brazil, "one of the major tasks of the SCP is precisely to make sure that the two elements of the trade-off are not off-balance".

The second element that Brazil mentioned is that the "thematic approach to studies and discussions should not be seen as an end in itself. It is a first and necessary step to better understanding the specifics of all the issues involved. However, discussions on different aspects of patent law will have to progressively cover and eventually become integrated into clusters of elements of a common work programme".

"We are not proposing, to be sure, any degree of harmonisation of substantive patent law, but rather simply restating the fact [that] there are clearly established interconnectedness among different clusters of topics in patent law", Brazil said.

With regard to the studies presented at this session of the SCP, Brazil stressed that "all studies submitted to the SCP, be they prepared by the Secretariat or commissioned to external experts, must be of high quality and balanced", and that one "major concern" to the DAG is that "all studies must adequately reflect development considerations".

Brazil also recalled that the SCP is the "first intergovernmental body at WIPO that meets after the recently-concluded General Assemblies, during which Member countries approved coordination mechanisms and monitoring, assessing and reporting modalities, for the implementation of the Development Agenda. The mainstreaming of the Development Agenda recommendations into the substantive work, debates and studies in the SCP is an indispensable ingredient for progress to be made".

Referring to the agreed mechanisms, Brazil said that Member States "must as soon as possible start discussing how this Committee will report to the General Assembly on the implementation of the Development Agenda".

On the issue of E&L to patent rights and the expert studies, Brazil, on behalf of the DAG, said that a correct understanding of the issue of exceptions and limitations "shall surely help WIPO Members to calibrate their national IP systems in order to achieve the fundamental trade-off of patents, that is, guarantee the monopoly of a given product or process in order to stimulate, not stifle, innovation". Brazil pointed out that the "seeming favouring of exceptions over exclusions is not coherently explained" in the studies. "There is no conflict between exclusions and exceptions; they are complementary tools necessary to assure the systemic equilibrium and the policy space that countries need to achieve their development", it added.

Brazil proposed that Member States' comments be collated as an Addendum document to the studies, adding that such cross-referencing would provide "fuller understanding of Member States' perspectives" on these issues.

[This proposal however faced resistance from Group B (composed of developed countries), which argued that it is not an SCP practice, and that it is not compliant with WIPO's policy on languages, particularly in terms of the size of documents requiring translation. India and Bolivia, on the other hand, provided evidence of precedence in the Committee on Development and Intellectual Property (CDIP) and the SCP of having Addendum documents with Member States' comments. Egypt stressed that WIPO's policy on languages should not affect the substantive work of the organisation, while Brazil noted that WIPO's policy on languages is not yet in effect, since it will start only in 2011, and that there is no limitation to the size of documents submitted by Member States.]

With regard to the Brazilian proposal, the DAG expressed hope that the "Proposal shall be promptly implemented, for the establishment of such working programme would be an important step in the implementation of the Development Agenda".

Angola, on behalf of the African Group, pointed out that the expert studies must take into account social and economic realities, the different levels of development and differences between the national legal systems of countries. It further said that the patent system should facilitate technology transfer and access to knowledge, adding that transfer of technology should be "user-friendly and development-oriented", being an important element of the cooperation between WIPO and developing countries, in particular LDCs (least developed countries).

It suggested that the preliminary study on transfer of technology (SCP/14/4) be updated to include information on how developing countries can overcome impediments to transfer of technology, adding that capacity-building was an important element for the transfer of technology. It should also be "revised in a manner to establish a link between transfer of technology, development and intellectual property, and to define the role of the patent system in transfer of technology", Angola said, stressing that the role of multilateral and bilateral agreements on transfer of technology as well as how the patent system could affect and support transfer of technology, should also be added.

It also requested a study on the transfer of technology to LDCs in Africa in the context of implementation of Article 66.2 of the TRIPS Agreement, which requires developed countries to provide incentives to their enterprises for the purpose of promoting transfer of technologies to LDCs that are WTO members. On patent opposition systems, Angola said it was important to leave the right to national authorities to define the criteria for opposition systems based on national legal systems and domestic laws.

It also proposed adding two new issues to the agreed non-exhaustive list of issues, i. e. the "Impact of the Patent System on Developing Countries and LDCs" and "Patent and Food Security".

On the issue of client-attorney privilege, Angola stressed the importance of "clarifying concepts and definitions of the practices relating to the client-attorney privilege in different countries and their implications", and also supported the idea for more analysis of the issue. It added that the issue should be addressed at the national level due to the territorial nature of patents. It supported the idea that the Secretariat engage in further studies for more analysis of this issue. Angola also voiced support for the three-phase work programme proposed by Brazil in its proposal on exceptions and limitations to patent rights.

Mexico, on behalf of the Group of Latin American and Caribbean Countries (GRULAC), supported the Brazilian proposal as a good basis for a constructive discussion.

India said that "exceptions and limitations to IP rights are very important issues for India, since these have a direct relevance on promotion of public policies, access to knowledge, access to educational resources, public health goals, transfer of technology and participation in the global knowledge economy". It supported the proposal by Brazil on exceptions and limitations to patent rights, saying that it "would contribute to meaningfully advancing the deliberations on this issue" in the SCP.

Egypt said that it attached importance to E&L (to patent rights) and the transfer-of-technology studies, which it viewed as directly related to developing countries and to the DA recommendations. It also recalled the importance of exploring the means of preparing reports on the SCP's implementation of the Development Agenda for the next WIPO General Assembly.

South Africa reiterated the "importance of a balanced approach between intellectual property rights and public use". It said that the key to success in dealing with exceptions and limitations (to patent rights) is to "take into account the different levels of development of Member States and on how these countries could utilise and/or exploit exceptions and limitations in their respective countries". It supported the Brazilian proposal on exceptions and limitations to patent rights, saying that it "resonates with our position on approaching the issue of exceptions and limitations on intellectual property rights in a holistic manner".

On the issue of transfer of technology and dissemination of patent information, South Africa said that they were of high priority in the context of building capacity at the national level, and hoped that the SCP will "continue intensifying its work in these areas with the view of bringing out the socioeconomic and development dimensions".

Referring to the expert study concerning biotechnology, Bolivia pointed out that the study did not follow the terms of reference agreed to by the SCP.

It added that the study could have provided more information on exclusions from patentability being considered in some countries. It was disappointed that the study did not include a reference to Bolivia's official communication to the WTO TRIPS Council on the Review of Article 27.3(b) wherein it had proposed a prohibition on the patenting of life forms.

Iran pointed out that norm-setting activities in the SCP should be "balanced, dynamic, holistic and all embracing, and more importantly, development-friendly". Iran said that Member States should "determine an effective methodology for reporting on the SCP contribution to the mainstreaming of the Development Agenda", and welcomed the Secretariat's initiative to "develop a cross-cutting unified methodology for reporting mechanism for all Committees", which it said should "reflect the contribution of different Committees to development, as well as the views and concerns of Member States regarding their expectations on mainstreaming the Development Agenda in all areas of WIPO's work".

With regard to the expert studies, Iran was of the view that there were "dangers" in shifting from exclusions to exceptions, adding that "exclusions and exceptions are complementary tools, necessary to assure the systemic balance and preserve the policy space for countries to achieve development" and thus, could not substitute each other.

Belgium, on behalf of the European Union (EU), found the expert studies to be excellent and comprehensive, and stressed that E&L (to patent rights) should not be discussed to the detriment of other issues on which the SCP focuses, adding that a more balanced approach is desired in this Committee. It also expressed its "strong commitment to the global harmonisation of patent law" through the SCP.

Much of the second and third days of the SCP session were spent in informal consultations over the future work of the SCP.

As regards the future work of the SCP, Group B (composed of developed countries) has put forward informally a proposal to "establish a work program elaborating options, measures and conditions, both legal and practical, that would be required to ensure and, where necessary improve, the issuance of high-quality patents".

It further proposes several steps to achieve the objective of "high quality patents", namely: (a) Exchange of information on laws and practices applied in member countries relating to the quality of patent application and patents (such as database on search and examination reports, dissemination of patent information, substantive patent law/inventive step); (b) identification of those measures that are particularly suitable to guarantee and improve the quality of patents worldwide; and ( c) elaboration of recommendations in respect of such legislative and practical measures for the benefit of WIPO members.

Determining a future work programme for the SCP is likely to consume the remaining time of the SCP session. +