Public Policy Considerations Prominent in WIPO Patent Discussions

1 April 2009

After a week of intense deliberations, the Standing Committee on the Law of Patents (SCP) at the World Intellectual Property Organization decided to pursue further work on four critical issues. The delegates, who met at WIPO headquarters in Geneva from 23 to 27 March, also reviewed preparations for the July 2009 WIPO Conference on global challenges in the field of intellectual property.
 
The SCP is still getting back on its feet after a three-year hiatus in negotiations. Talks broke down in 2006 when developed and developing countries reached a standoff over a potential treaty that would expand the minimum standards agreed in the WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
 
But a meeting in June 2008 revived the SCP talks, and since then the committee has been working slowly to establish a work programme and develop a body of technical knowledge to inform the group’s negotiations.  
 
At its meeting last week, the committee added two topics to the list of issues for further consideration by the SCP: patent quality management systems and patents and the environment, with a particular attention to climate change and alternative resources of energy.
 
Discussions at the meeting centred on four preliminary studies prepared by the WIPO Secretariat: exclusions from patentable subject matter and exceptions and limitations to patent rights; dissemination of patent Information; standards and patents’ and the client-attorney privilege. The development and public policy dimensions of each of these issues, but particularly the first three, were central in the committee’s discussions. Many developing countries emphasised that the work of the SCP should be guided by the relevant recommendations laid out in WIPO’s Development Agenda. 
 
WIPO member states will have a chance to re-visit all of these issues at the SCP’s next meeting, which is set for November 2009.
 
Exclusions from Patentable Subject Matter and Exceptions and Limitations to the Rights
 
Discussions on exclusions from patentable subject matter and exceptions and limitations were based on a preliminary study prepared by the WIPO Secretariat which provided a brief overview of the main issues involved. 
 
Developing countries such as Egypt, Chile and the Asian Group claimed that the WIPO study only related to multilateral considerations and that bilateral and plurilateral agreements should be discussed as well. India added that exclusions to patents depends on the economic status of the country and indicated that the secretariat should have studied the legal nature of each country in order to focus on development issues and to assess countries priorities. In addition, Indonesia stressed that, from a developing country perspective, compulsory licensing deserved further consideration.
 
Developed countries, in general, thought that the preliminary study by the secretariat was clear and concise on policy and presented a balanced view.

“The preliminary study is excellent,” a Swiss delegate commented.
 
Ultimately, the SCP decided to ask the secretariat to commission external experts to prepare a study on exclusions, exceptions and limitations. Delegates agreed that the report should focus on, but not be limited to, issues suggested by members, such as public health, education, research and experimentation and patentability of life forms, including from a public policy, socio-economic developmental perspective bearing in mind the level of economic development.
 
Dissemination of Patent Information
 
Over the course of the meeting, several delegations stressed the importance of following through on the recommendations laid out in the WIPO Development Agenda on the availability of patent information. Progress on this front would be critical for the dissemination of the kind of technological know-how that can inform decisions on IP policy, competition, and economic strategies. In this context, the secretariat referred to WIPO’s initiative for a global technology information center, which member states commended. The Asian Group suggested that WIPO set up a free and open-source global database where countries could share patent information.
 
The SCP requested that the WIPO secretariat prepare a concept paper on “technical solutions to improve greater access to, and dissemination of, patent information.”
 
Standards and Patents
 
On this issue, the standing committee focused its discussion on the document prepared for this occasion by the secretariat.
 
The issue between patents and standards has only risen recently with the boom in information and communication technologies in the 1990s and the subsequent proliferation of patent filings and standards. A conflict between a patent and a standard can occur when the implementation of a technical standard calls for the use of technology covered by one or more patents. The main problem arises when compliance with a particular standard requires access to technologies that may be protected by intellectual property rules. In such situations there is an increased risk of anti-competitive practices, the exclusion of competitors and high licensing costs.

The committee’s debate stressed the cross-cutting nature of the issues under consideration and the role that governments and standards-setting organisations, such as the ISO, might have in this area. Delegates said that, in general, the preliminary study by the secretariat would be very useful for further discussions on the topic.
 
Client-Attorney Privilege
 
Most countries have a client-attorney privilege stipulation for lawyers and their clients, but not for advisors on intellectual property (IP) matters. In the view of a number of developed countries, this issue has some international implications that need to be addressed within WIPO. Since there is no international framework governing client-attorney privilege, there is no harmonised approach on these questions among countries.
 
Developed countries expressed their eagerness to address the issue of client-attorney privilege. Their statements emphasised that the absence of harmonisation in legal frameworks “causes clients to risk loss of, and lose confidentiality in, advice they obtain from IP advisers.” Thus, they said, the owners of intellectual property rights should be able “to freely communicate with their IP adviser and to know confidentiality to be legally secured.”
 
But Egypt, China, Brazil and Argentina voiced concerns about harmonisation in this area, arguing that client-attorney privilege is a private matter that should not be dealt with in international law. Brazil referenced Article 1 of the TRIPS Agreement, stressing that all countries are free to determine an appropriate method of implementation “within their own legal system and practice.”
 
The International Chamber of Commerce, joined by the International Association for the Protection of Intellectual Property (AIPPI), also weighed in on the matter. The groups submitted a letter to the SCP encouraging member states to form a working group on the issue of client-attorney privilege and to include non-lawyer IP professions in the client-attorney privilege statute.
 
Following from these discussions, the SCP agreed to expand the preliminary study on the client-attorney privilege so as to reflect the current state of play. The expanded study should take into account the perspectives of various stakeholders and draw on external experts if necessary, the committee said.
 
Other issues
 
The upcoming WIPO conference on IP and Global Challenges preliminarily set for mid-July was a heated topic at the committee meeting. The official call for such a conference was one of the notable outcomes of the SCP’s meeting last June. Member states, in general, were dissatisfied with the lack of consultations with governments on the specific issues to be addressed at the conference.
 
But after WIPO’s Director-General, Francis Gurry, intervened specifically on the subject, the committee finally agreed to go ahead with the conference. Delegates entrusted the chair of the committee, jointly with the secretariat, to conduct open-ended consultations with member states on the specific programme for the conference, which will address health, the environment, climate change and food security.
 
Dalindyebo Shabalala of the Centre for International Environmental Law (CIEL) highlighted to Bridges the importance of keeping climate change on the agenda. “In any discussion at WIPO it should be acknowledged that climate change is an emergency,” Shabalala said. “One of the basic working assumptions of the negotiations is that business as usual will not get us where we need to go.”
 
The chairman of the SCP, Maximiliano Santa Cruz from Chile told Bridges that he was grateful to member states “for engaging in such rich discussions over the week-long meeting.
 
“I think members understand that we have to take care of the Committee and that concrete and balanced results will be driven by substantive discussions. The studies that will be prepared will help to that end. This is only the second meeting after almost three years of paralysis. In my opinion we have already come very far in terms of building trust and agreeing to discuss issues which are technically difficult as well as politically sensitive,” Santa Cruz said.
 
For more information, please see two ICTSD publications on these subjects: Exceptions to Patent Rights in Developing Countries (http://www.ictsd.org/sites/default/files/news/2008/06/garrison20-20patent20exceptions20dc20-20blue2017.pdf), and Addressing the Interface between Patents and Technical Standards in International Trade Discussions (http://ictsd.net/downloads/2009/03/policy-brief-3.pdf). 
 
ICTSD reporting; ”WIPO patent committee class for further study, consultations,” IP WATCH, 30 March 2009.

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