TWN Info Service on Intellectual Property Issues (Oct10/07)
20 October 2010
Third World Network  

Dear Friends,

Please find below a news report on the outcome of the recently concluded WIPO Patents Committee meeting.

Regards
Sangeeta Shashikant

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SUNS #7021 Tuesday 19 October 2010

WIPO: SCP Agrees on Future Work, New Issues on the Agenda

Geneva, 18 Oct (Heba Wanis) -- The fifteenth session of the Standing Committee on the Law of Patents (SCP) of the World Intellectual Property Organization (WIPO) concluded late Friday with an agreement on the future work of the Committee, which amongst others, will explore several new issues concerning patent law and practice.

The week-long SCP session (11-15 October) was spent mainly in informal consultations in an attempt to reach agreement on the SCP's future work, which eluded the previous session of the Committee earlier in the year.

According to a WIPO news release, in summarizing the work of the Committee, the Chair of the SCP, Maximiliano Santa Cruz from Chile, said that the Committee decided to include the following issues in its future work:

exceptions and limitations to patent rights; quality of patents, including opposition systems; patents and health; client-patent advisor privilege; and transfer of technology.

The news release further said that the Committee also agreed that the non-exhaustive list of issues that was first identified at its June 2008 meeting "will remain open for further elaboration and discussion" at its next session, and that four more issues will be included in the list, namely, "Impact of the patent system on developing countries and LDCs", "Patents and food security", "Strategic use of patents in business" and "Enhancing IT infrastructure for patent processing".

The SCP Chair released a text on Friday morning aimed at bridging the differing visions of the SCP's future work.

The final negotiations over the Chair's text were marked by some tensions when Group B (composed of developed countries) strongly objected to the inclusion of transfer of technology - a priority issue for developing countries - as part of the future work despite Group B's issues of "patent quality" and "client-attorney privilege" being included as part of the future work of the Committee.

The SCP concluded its session late Friday evening with a Chair's summary that outlined the agreement reached on the Committee's future work.

As regards the SCP's future work, it was agreed that the Committee would address the following issues: (i) Exceptions and limitations to patent rights -- the Secretariat will prepare a draft questionnaire for consideration by Member States at the 16th session of the Committee; (ii) Quality of patents, including opposition systems; (iii) Patents and health;

(iv) Client-patent advisor privilege -- the Secretariat will prepare a study, taking into account the comments made by Member States; and (v) Transfer of technology -- the Secretariat will update the existing preliminary study (document SCP/14/4), taking into account the comments made by Member States.

It was also agreed that four further issues will be included in the non-exhaustive list, namely, "Impact of the patent system on developing countries and LDCs", "Patents and food security" (both suggested by the African Group); "Strategic use of patents in business" (proposed by the Group of Eastern European and Baltic States); and "Enhancing IT infrastructure for patent processing" (proposed by Group B); and that the "non-exhaustive list of issues will remain open for further elaboration and discussion at its next session".

[A "non-exhaustive list" containing 18 items was initially agreed to by the SCP in 2008, in a bid to break the impasse in the work of the SCP following strong disagreements along broadly North-South lines on how, or whether, to proceed with negotiations on a substantive patent law treaty (SPLT) in WIPO].

It was further agreed that at the next SCP session, under a specific agenda item, Member States will be given the opportunity to express their views on the coordination mechanisms and monitoring, assessing and reporting modalities of relevant bodies on the implementation of the Development Agenda (DA) recommendations. "These views will be considered in the context of the standardized procedure that WIPO will propose for relevant WIPO bodies," the decision adds.

Item (i) (in the Chair's summary) is a reflection of the first phase of the Brazilian proposal on exceptions and limitations to patent rights, i. e. 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"

(SCP/14/7), while item (ii) is based on an initial proposal by Group B on "high quality patents", which is viewed as a backdoor attempt to begin discussions on the harmonization of substantive patent law and procedural aspects of granting patents.

Belgium, on behalf of the European Union (EU), explained quality of patents as an adequate application of patentability criteria, namely, novelty, inventive step and industrial application. It was also of the view that quality of applications, examination and enforcement were important so that the IP (intellectual property) system can serve the purpose for which it was designed.

The inclusion of the item was approved as "quality of patents including opposition systems".

Item (iii) on patents and health is a topic proposed by the African Group, although without an elaborated text. Item (iv) on client-patent advisor privilege is generally a Group B issue, while item (v) on transfer of technology is being pushed by developing countries.

With regards to the outcome in the SCP, Brazil, on behalf of the Development Agenda Group (DAG, comprising a number of like-minded developing countries), expressed the view that the debate in the SCP has left behind the dogma, which until recently, circulated as "conventional wisdom" -- that "granting patents and enforcing them would automatically generate innovation".

It hailed the "dawning of the new agenda at the SCP ... in which the exclusive focus on patent rights is replaced by a broader assessment of the particular needs of the countries and the benefits accruing from the patent system". Studies included in the SCP will aid understanding and help "to avoid assumptions which ignore the systemic implications and the diversities of concrete realities," it added.

On the issue of patents and their quality, Brazil said that any discussion on this subject must contain items such as availability of sufficient information, the relation between low-quality patents and the increase in backlogs, access to high-quality patent information, and technical assistance and capacity-building for developing countries and LDCs (least developed countries).

In its closing remarks, Belgium, on behalf of the EU, was of the view that the SCP is the forum to work on the progress of the international development of patent law, and that harmonisation of patent laws lies at the very foundation of the Committee. It added that such measures do not impair the implementation, at national levels, in areas of public health and food security.

The week-long SCP session also discussed other issues on the agenda, namely:

client-attorney privilege (referred to as client-patent advisor privilege in the Chair's summary); the dissemination of patent information; transfer of technology; and opposition systems.

The Secretariat had prepared preliminary studies on these items, which were discussed at the previous 14th session of the SCP and continued to be discussed at this session as well, since the last session failed to reach agreement on the future work of the SCP.

On these studies, the SCP agreed that "the preliminary, and other, studies submitted at the 13th, 14th and 15th sessions of the SCP would remain open for future discussion at the SCP", and that the "Comments made by members and observers of the Committee on the studies submitted at the 13th, 14th and 15th sessions of the SCP will be compiled in separate documents and placed next to the relevant studies on the WIPO website. A hyperlink to the document containing the comments will be provided in each study".

Interventions at the SCP session revealed Group B as having a special interest on the issue of client-attorney privilege, with a particular focus on cross-border protection of confidential communication between clients and legal/non-lawyer professionals.

Several developing countries voiced the view that differences exist between jurisdictions, particularly between civil law and common law countries and that this should remain as a national matter.

India pointed out that no such provision on the matter exists in the Paris Convention or the TRIPS Agreement, adding that confidentiality could be protected through a non-disclosure agreement.

Iran said that there was no definition of client-attorney privilege in the preliminary study prepared by the Secretariat (SCP/13/4 and SCP/14/2). It added that there was a need to assess the developmental implications of such privilege. It further said that such a provision would hinder access of the public to information, stressing that the preliminary studies by the Secretariat needed to be improved.

On the issue of transfer of technology, Brazil, on behalf of the DAG, said that the study (by the Secretariat) does not discuss how patents can be a barrier to transfer of technology, nor the importance of preserving the public domain for effective technological development of developing and least-developed countries.

"It is the Group's view that the discussion on transfer of technology ought to be broader and systematic, including issues such as the need for correct disclosure of patents, the use of exceptions and limitations, and the threat of anti-competitive behaviour," added Brazil.

Referring to the 14 Development Agenda recommendations on technology transfer, Brazil said that these recommendations provide a guiding framework for development-oriented transfer of technology, which "should be demand-driven, transparent, neutral, accountable, and taking into account the special needs of developing countries, in particular LDCs".

Brazil also reminded the SCP that Articles 66.2 and 67 of the TRIPS Agreement require developed countries to implement obligations related to technical cooperation and transfer of technology.

Suggestions by Brazil to the SCP on the issue of technology transfer

include: carrying out a further study to analyse barriers to technology transfer arising from patents; convening an international commission or expert group nominated by Member States to address issues pertaining to technology transfer, particularly on the use of flexibilities in patent law for promoting technology transfer; and organising a forum to exchange country experiences on technology transfer in an upcoming SCP session.

On the issue of opposition systems, India commented that the Secretariat's study (SCP14/5) "fails to provide information and examine the usefulness of opposition systems, particularly pre-grant opposition systems". It noted that it is "not only cumbersome, but also very expensive" for developing countries to fight against the misappropriation of intellectual property in jurisdictions that do not have pre-grant opposition systems.

In relation to the dissemination of patent information (SCP/13/5 and SCP/14/3), Brazil, on behalf of the DAG, stressed that a "global one-stop-shop" mechanism to access patent information in order to improve the processing of patent applications in a timely manner would not be suitable unless the quality of the information provided is useful and of a high standard.

It also noted that the creation of any multilateral database on patent information must be preceded by a study on the sufficiency of disclosure, adding that the exchange of search and examination reports will not, by itself, reduce the problem of backlogs.

India said that the dissemination of patent information is important and relevant to developing countries for improving the quality of patent examination, and for research and development.

However, according to India, the limited resources of developing countries make them unable to have access to paid databases.

It suggested that WIPO's search database PATENTSCOPE, which is currently limited to information relating to PCT (Patent Cooperation Treaty) applications, be expanded to include non-PCT-published applications for patents granted in other jurisdictions.

The next SCP session is tentatively scheduled for 16-20 May 2011. +