TWN Info Service on Intellectual Property Issues (May11/05)
24 May 2011
Third World Network

WIPO: SCP agrees on future work; patents and health on the agenda
Published in SUNS #7156 dated 24 May 2011

Geneva, 23 May (Heba Wanis) -- A week-long meeting of the Standing Committee on the Law of Patents (SCP) of the World Intellectual Property Organization (WIPO) finally reached an agreement on 20 May on its future work programme.

The agreement on the SCP's future work programme came following some tense discussions during the sixteenth session of the committee that took place from 16-20 May.

During its week-long meeting, the SCP discussed a number of patent-related topics and reached agreement on the future work plan on the respective topics on the agenda.

The topics discussed at the sixteenth SCP session were: Quality of Patents, including Opposition Systems; Patents and Health; Client-Patent Advisor Privilege; Transfer of Technology exceptions; and Exceptions and Limitations to patent rights.

During the week-long meeting, discussions on these topics were often divisive.

Developed countries showed hesitance in moving forward with development-related topics of interest to the developing countries, such as patents and health, and transfer of technology.

On the other hand, developing countries were cautious of topics that were aimed at reducing policy space at the national level.

QUALITY OF PATENTS, INCLUDING OPPOSITION SYSTEMS

Under this agenda item, several developing countries were of the view that there is no common understanding of the term "quality of patents".

Discussions also focussed on a proposal by Canada and the United Kingdom (UK) (SCP/16/5) on a work programme on quality of patents that contains the following components: (a) technical infrastructure development; (b) information exchange on quality of patents; and ( c) process improvement.

According to the Canadian and UK proposal, technical infrastructure development is intended to focus on information technology solutions to improve access to information relevant to patentability.

On information exchange, according to the proposal, the intention is to help patent offices gain a greater understanding of the role of quality in patent office processes and towards this end, it is intended that patent offices of interested Member States will collect views and experiences from their users relating to quality in patent office processes and operations and share them with the Committee for further consideration.

With regard to the third component in the proposal, namely, process improvement, the aim is to identify ways in which offices can improve their patent granting processes to ensure an appropriate degree of quality, taking into account resource and other constraints, as well as flexibilities provided for under international agreements.

India, speaking on behalf of the Development Agenda Group (DAG, a group of like-minded developing countries), said it was important to define "patent quality". India believed that this meant compliance with the patentability criteria under Article 27.1 of the TRIPS Agreement, that is, novelty, inventive step and industrial applicability.

South Africa, on behalf of the African Group, noted that patent quality varies from country to country and called for the highest threshold of patentability criteria, while cautioning against adopting practices and processes of other patent offices.

Brazil also sought a definition of the term (patent) "quality", adding: "We need to know where we are going".

On the question of Opposition Systems, discussion centred over a preliminary study by WIPO on this issue (SCP/14/5).

South Africa, on behalf of the African Group, critiqued the study, as it showed pre- and post-grant opposition as being an impediment to the fast grant of patents.

India, on behalf of the DAG, requested a revision of the study and that a dedicated page on studies and experiences related to opposition systems be created online and be open for discussion.

As part of the future work, the SCP agreed to retain the topic on the agenda of the next session. It was also agreed that discussions will be based on the proposal submitted by Canada and the United Kingdom (SCP/16/5), which is to be further revised by those delegations, and other components/proposals submitted by Member States.

It was further agreed that observers be invited to submit their comments on the issues and that the Secretariat will revise the preliminary study on opposition systems (SCP/14/5), taking into account the comments made, and any additional information to be submitted by Member States.

PATENTS AND HEALTH

South Africa, on behalf of the African Group and the DAG, mid-week presented a detailed work programme on Patents and Health (SCP/16/7), which received wide support from developing-country delegations as well as civil society. (See SUNS #7154 dated 20 May 2011.)

Developed countries were however less enthusiastic about establishing a work programme on patents and health in WIPO.

Hungary, on behalf of the European Union (EU), requested more information on WIPO's contribution to the issue of patents and health. "Such a document is essential for discussion," it noted.

France, on behalf of Group B (composed of developed countries), called the joint African Group/DAG proposal "detailed and ambitious", and shared Hungary's view on the need to do a stocktaking of the work done by WIPO and other international organisations in the area of patents and health.

In response, India, on behalf of the DAG, noted that the proposal is neither "ambitious" nor "far reaching".

"It is simply an effort aimed at helping WIPO catch up with work being done in other UN and international organizations in this area, while focusing on WIPO's core competence in the area of intellectual property," it explained.

India found it "surprising" and "regrettable", that the issue of patents and health had "never been addressed inter-governmentally in WIPO, the only specialized UN agency dealing with Intellectual Property".

"Indeed, WIPO has been conspicuous by its absence in this global debate on a key issue of public concern," India added.

WIPO's Global Challenges Division, as well as representatives from the World Health Organization (WHO) and World Trade Organization (WTO), also shared information on their activities in the area of patents and health.

The SCP agreed to retain the topic on the agenda of its next session. Discussions will be based on the proposal submitted by South Africa, on behalf of the African Group and the DAG (document SCP/16/7), and other comments/proposals submitted by Member States. Observers are also invited to submit their comments.

The Secretariat has also been tasked with preparing a document describing WIPO's activities on patents and health, including the relevant cooperation activities with other international organisations, for the next SCP session.

CLIENT-PATENT ADVISOR PRIVILEGE

This agenda item was rather divisive in terms of positions expressed by Member States. Several delegations were of the view that it was a matter of national law, and that it was difficult to reach consensus on its substance at the international level, particularly in relation to cross-border aspects of confidentiality of communication between clients and patent advisors.

India, on behalf of the DAG, noted that this was not a substantive patent law issue. It cautioned against the abuse of extending this privilege to non-lawyer actors. In its national capacity, India stressed that client-attorney privilege exists neither in the Paris Convention nor in the TRIPS Agreement and that protection could be achieved via a non-disclosure agreement.

The wide differences on the topic were noted in the Chairman's summary, which concluded: "The discussions were based on documents SCP/16/4 Rev. Some delegations requested further exploration of this topic. However, a number of delegations expressed concerns and difficulties in pursuing this topic at the international level".

The Chairman's summary further notes that "Some delegations stated that this issue was a matter of national law. Recognising the differences in national law and procedure, the Chair stated that the Committee felt that there was no consensus on international norm setting or a set of common principles at this stage".

For the next SCP session, the Secretariat has been requested to gather information about national and regional practices and present it, without any recommendations or conclusions, for an exchange of views among Member States.

This should include, inter alia, information on: national laws and rules dealing with cross-border aspects of confidentiality of communications between clients and patent advisors; problems in relation to cross-border aspects of confidentiality of communications between clients and patent advisors; and remedies that are available in countries and regions to solve the problems that remain at the national, bilateral, plurilateral and regional levels.

TRANSFER OF TECHNOLOGY

Discussions on technology transfer focussed around the Preliminary Study on Technology Transfer (document SCP/14/4 Rev.)

Several developing countries, led by India on behalf of the DAG, suggested that WIPO's Chief Economist Mr Carsten Fink hold a seminar on technology transfer and report back to the SCP.

An expert from Bulgaria suggested looking at obstacles impeding the transfer of technology. This suggestion was supported by South Africa.

India also endorsed the suggestion, adding that the WIPO Chief Economist, as part of the seminar that he would be invited to hold, could also examine this issue.

The Chair of the SCP, Mr. Albert Tramsposch from the United States, in a rather long intervention, explained the importance of "absorptive capacity" and other regulatory aspects needed at the national level for technology transfer to take place.

In response, India, noting that while all aspects of technology transfer needed to be covered as an introduction, stressed that the issue of patent-related constraints should be elaborated on.

Developed countries strongly resisted inviting the WIPO Chief Economist to the SCP session, or his reporting to the Committee.

France, on behalf of Group B, raised the issue of "duplication" with discussions on a project on technology transfer in the Committee on Development and IP (CDIP/6/4 Rev). It called for consultations with the Secretariat on this matter.

South Africa, on behalf of the African Group, emphasised the fact that the CDIP (Committee on Development and IP) and SCP had different mandates, which complement each other. Egypt also said that there were clear mandates for both Committees.

India pointed out that the CDIP project on technology transfer did not have an element relating to the international patent system. It further pointed out that arguments over duplication were also raised in the CDIP when the technology transfer project was discussed.

The SCP agreed to retain the topic for its next session. The Secretariat will also revise the preliminary study (document SCP/14/4 Rev.), based on Member States' inputs, reflecting comments of delegations at the sessions of the SCP and addressing in greater detail, the discussion on impediments as well as elaborating further on incentives to technology transfer, for submission to the next session of the SCP.

It was also agreed that the Secretariat will invite the WIPO Chief Economist to organise a seminar on patents and transfer of technology on the margins of the next session of the SCP, along the lines discussed at the sixteenth session of the SCP, and to publish the presentations and summary of the discussions on WIPO's website under "Economics of IP" by the end of the second day of the next session of the SCP.

It was further agreed that the Secretariat will assist Member States in facilitating the "complementary and non-duplicative nature of the work undertaken by the SCP and CDIP on the issue of transfer of technology".

EXCEPTIONS AND LIMITATIONS TO PATENT RIGHTS

Several developing countries, namely, India and South Africa, on behalf of the DAG and the African Group respectively, expressed the need for a non-exhaustive manual on exceptions and limitations.

This manual is the third phase of the proposal submitted by Brazil to the fourteenth session of the SCP on exceptions and limitations to patent rights (document SCP/14/7).

A follow-up to the Brazilian proposal was a questionnaire on exceptions and limitations developed by the Secretariat. Much of the SCP's discussion focussed on this draft questionnaire prepared by the Secretariat and amended based on comments and suggestions received from Member States (SCP/16/3 and SCP/16/3 Rev.).

The SCP agreed that the topic will remain on the agenda of the seventeenth session of the SCP.

The SCP also agreed that the Secretariat will invite Member States to submit written answers to the questionnaire (SCP/16/3 Rev.) by 30 September 2011. The Secretariat will post the answers received on the SCP electronic forum, and will compile them in a document to be submitted to the next session of the SCP.

It was also agreed that the Committee will discuss, at the next session, possible future steps, such as requesting the Secretariat to prepare an analysis of the answers. Some Member States expressed the wish to also discuss the preparation of another questionnaire specifically addressing exclusions.

CONTRIBUTION OF THE SCP TO THE IMPLEMENTATION OF THE RESPECTIVE DEVELOPMENT AGENDA RECOMMENDATIONS

On the issue of the SCP's contribution to the implementation of the Development Agenda, India, on behalf of the DAG, said that the Group attaches great importance to this agenda item and called for "open and frank discussion" and a revision of "old incorrect presumptions" about the patent system in relation to development.

India welcomed the discussion on patents and health, noting that WIPO had been "conspicuously silent" before on this issue.

[The topic of the SCP's contribution to the Development Agenda was added following the last WIPO Assemblies that agreed to the parameters of the "Coordination Mechanisms and Monitoring, Assessing and Reporting Modalities" (See SUNS #6917 dated 4 May 2010).]

Brazil noted that the Committee had agreed to a work programme that is "quite balanced", and requested the elaboration of a manual on exceptions and limitations, which is the third phase of its proposal on exceptions and limitations.

South Africa, on behalf of the African Group, shared similar views as the DAG. It noted the importance of maintaining the list of issues of the SCP's future work to be non-exhaustive.

Group B and the EU spoke on the need to avoid duplication of work.

On this agenda item, the Chairman noted that "all statements would be recorded in the report for the sixteenth session of the SCP and that they would be transmitted to the WIPO General Assembly relating to the Development Agenda Coordination Mechanism."

The next SCP session will take place from 5-9 December 2011. +