TWN Info Service on Intellectual Property Issues (Feb14/02)
3 February 2014
Third World Network  

WIPO:  Member States Reluctantly Agree on The Future Work of the Patents Committee

Geneva, 3 February (Alexandra Bhattacharya and K. M. Gopakumar) – The WIPO Standing Committee on the Law of Patents (SCP) reluctantly agreed to the “Future Work” of the Committee after two full days of hectic informal negotiations

The 20^th Session of SCP met in Geneva on 27-31 January 2014.

The “Future Work” agreed by the SCP will form the basis of the work-program for the 21^st session of the SCP which is expected to take place on 3-7 November 2014.

The following are elements of theagreed outcome on “Future Work”.

“The non-exhaustive list of issues will remain open for further elaboration and discussion at the next session of the SCP.”

“Without prejudice to the mandate of the SCP, the committee agreed that its work for the next session be confined to fact-finding and not lead to harmonization at this stage and would be carried out as follows:”

(1)     Exceptions and Limitations to Patent rights

(i)  The Secretariat will prepare a document, based on input received from Member States, on how the following exceptions and limitations are implemented in Member States, without evaluating the effectiveness of those exceptions and limitations: (i) acts for obtaining regulatory approval from authorities; (ii) exhaustion of patent rights; (iii) compulsory licensing and/or government use; and (iv) exceptions and limitations relating to farmers’ and/or breeders’ use of patented inventions. The document should also cover practical challenges encountered by Member States in implementing them.

(ii) A ฝ day seminar as proposed in document SCP/19/6 will be organized during SCP/21 on the above exceptions or limitations.

(2)     Quality of patents including opposition systems

(i) The following two studies will be prepared by the Secretariat and submitted to SCP/22. They will be based on the information provided by Member States, and will be a collection of factual information without analysis or recommendation:

(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; and

(b) a study on sufficiency of disclosure that contains the following elements: the    enabling disclosure requirement, support requirement and written description requirement.

(ii) The Committee will have information sharing, during SCP/21, among Member States’ regarding experiences on international work sharing and collaboration. The Committee shared the understanding that discussions on work sharing and collaboration do not imply any automatic acceptance of work sharing products and do not prejudice the sovereign rights of Member States in processing patent applications and patents in accordance with the applicable law.

(iii) Document SCP/20/11 Rev. will be added to the working documents listed in the agenda of the next session of the SCP.

(iv)  The Secretariat will improve the WIPO webpage (PCT-PPH) on work sharing incentives.

 3.        Patents and health

(i) The Secretariat, in collaboration, to the extent possible, with the WHO and WTO, will carry out for SCP/21, a feasibility study on the disclosure of International 
Non-Propriety Names (INNs) in patent applications and/or patents.

(ii) The Secretariat will prepare for the next session of the SCP, a study on the role of patent systems in promoting innovative medicines, and in fostering the technology transfer necessary to make generic and patented medicines available in developing countries/least developed countries.

(iii) At SCP 21, the potential of a study on the implementation of flexibilities concerning different types of exhaustion of rights in Member States and its contents will be discussed.

4.              Confidentiality of communication between clients and their patent advisors

(i)      The Secretariat will publish the information contained in document

SCP/20/9 on the SCP electronic forum website in more accessible and user-friendly format, and update regularly.

(ii) The Committee will conduct, at the next session, a half-day seminar on experiences of Member States in implementing legislation on the confidentiality of advice from patent advisors and practical experiences of clients as well as patent advisors.

(iii) Member States are invited to submit proposals on this topic.

5.              Transfer of technology.

(i) The Secretariat will collect further practical examples and experiences on 
patent-related incentives and impediments to transfer of technology from members and observers of the SCP, in particular from least developed countries, taking into account the dimension of absorptive capacity in technology transfer.

(ii) Member States are invited to submit proposals on this topic.

Two days intense informal consultation resulted in a facilitator’s text on “Future Work”. This text was brought to the plenary on the evening (6:30 pm) on the last day of SCP. According to diplomatic sources, there was no consensus in the informal negotiating room on the facilitator’s text.  

While presenting the text to the plenary the facilitator, Victor Portelli, a capital based delegate from Australia, said that the text was the result of “honest and frank discussion” but there was “no consensus in that room of a package we could bring to the plenary”.

Brazil, referring to the facilitator’s text said that the work-program on patents and health was not balanced. It raised the point that the proposed text only states that the 21^st session will discuss the “potential”of a study on the implementation of flexibilities concerning different types of exhaustion of rights in Member States and its contents.

Brazil said that “it could not join the consensus” and that the balance of the text had significantly changed since the first draft on the “Future Work” was circulated, adding that it had shown extreme flexibility and could not accept the “downgraded” work in the area of patents and health.

[The first draft of the text on future work had stated that a study would be prepared for SCP 22 but the facilitator's draft brought to the plenary states that “At SCP 21, the potential of a study on the implementation of flexibilities concerning different types of exhaustion of rights in Member States and its contents will be discussed.”]

The Africa Group, the Asian Group and the Central European and Baltic States (CEBs) and China agreed to the facilitator's text. The Africa Group said that it was not happy with the text but were joining the consensus to take forward the work of SCP.

Group B did not directly support or reject the facilitator's text.

The plenary broke off for another round of informal consultation.

According to a diplomatic source although Group B did not oppose the text in the plenary, they were not agreeable to the text and during the informal consultation, which was convened at the insistence of Spain, asked to reopen the language on study on INN (International 
Non-Propriety Names).

Group B demanded to convert the feasibility study on the disclosure of INNs in patent applications and/or patents into a fact-finding study on the disclosure of INNs.  This demand was dropped after reaching an agreement that the study would not make any recommendation with regard to the disclosure of INN.

When the plenary was reconvened after around 9:10 pm a consensus had been reached not to make any changes to the facilitator’s text. 

At the reconvened plenary Brazil said that it did not consider “the future work balanced” nor in the interest of developing countries. However, in order to keep a friendly environment for sharing of experiences in the SCP, Brazil could go along with the emerging consensus. It underlined that future sessions should take its statement into account.

Japan, on behalf of Group B, said that “ we didn't present our position” previously because another delegation (Brazil) had objected. It said “our position is that there is some imbalance between the work program on patents and health and quality of patents.  It referred to the first element under Patents and Health which states that “The Secretariat, in collaboration, to the extent possible, with the WHO and WTO, will carry out for SCP/21, a feasibility study on the disclosure of International 
Non-Propriety Names (INNs) in patent applications and/or patents.”

It asked the Secretariat to clarify the understanding, which was reached during the informal on the word “feasibility”.

The Secretariat informed the SCP that “feasibility” should be read in consistency with the phrase “confined to fact finding” and that the Secretariat would only provide explanation and context.

The US in its closing statement said that in agreeing to the Future Work it did not mean that the future the agenda was  “balanced or productive”.  It said that balance in SCP simply meant “score keeping” adding that there was no common ground in the Committee.  The US said that the committee was fractured to the point of dysfunction and was not providing a forum for discussion.

The African Group said that study on exhaustion of rights will be carried out in the 22^nd session and hoped that the work would be more “ambitious”. It further added “we are still concerned that any work will lead to harmonization and cannot agree to it.”