WIPO PATENT HARMONISATION TALKS ADRIFT AFTER MEETING COLLAPSES

World Intellectual Property Organisation (WIPO) talks on whether countries should harmonise their distinct national patent systems are adrift, after a key negotiating committee was unable to agree on how to proceed with future discussions on the issue. Negotiators were so divided -- broadly along North-South lines -- that the committee's next gathering was cancelled altogether.

The 10-12 April informal session of the Standing Committee on the Law of Patents (SCP) had been charged with outlining a work programme for the body's upcoming formal meeting, which had been tentatively scheduled for June. The question of what to do with the process will now be posed to WIPO's General Assembly, the organisation's senior decision-making body, which will meet in September.

At stake in these negotiations are the rules that govern what is eligible to receive patent protection. Patentability criteria are not specifically defined in the WTO Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS), leaving most countries considerable freedom to define them as strongly or weakly as they would like. These criteria include novelty, 'inventive step' and 'industrial application.' A relaxed interpretation of them could controversially require countries to accord patent protection for innovations such as business methods and gene sequences, as well as to relatively minor modifications to existing inventions.

Developing and developed countries split blocks SCP

Broadly speaking, developed countries have been seeking a wider definition of patentability criteria in the SPLT. This would be to their benefit, as the bulk of patent-holders worldwide are from developed countries (particularly the US, the EU and Japan). Developing countries fear that lowering the threshold for the sort of "inventive step" necessary for patentability could require them to extend patent protection to inventions currently deemed insufficient for it because of their relatively low level of 'inventiveness' or lack of clear industrial applicability. Arguing that this would be detrimental to future innovation and the public interest, they have pushed for any SPLT to include a series of rules pertaining to development concerns including exemptions to patentability, as well as issues such as technology transfer and compulsory disclosure and benefit-sharing for any genetic material or traditional knowledge used in an invention.

Divisions on the subject of future discussions -- not to mention the content of a future SPLT -- prevented the recent meeting of the SCP from reaching an agreement. During the gathering, the US and Japan indicated that they wanted to undertake focused work toward substantive patent harmonisation on four specific issues: the definition of 'prior art,' novelty, grace period and inventive step. Each is central to determining the extent of patent protection. A 14-member group of developing countries known as the 'Friends of Development (FoD), on the other hand, wanted the next meeting of the SCP to focus on an additional nine issues. These included development and policy space, exclusions to patentability, exceptions to patent holders' rights, anticompetitive practices related to patents, requirements to disclose the origin of genetic material or traditional knowledge used in an invention along with proof of prior informed consent and benefit sharing, effective mechanisms to challenge the validity of patents, technology transfer, and alternative models for promoting innovation.

One delegate said that of these, work on disclosure requirements, prior informed consent and benefit sharing was of the highest political importance to many developing countries. Many developing countries feel that they stand to gain from mandatory disclosure requirements in patent applications, since it would reduce the risk of 'biopiracy,' that is, the uncompensated and undisclosed use of genetic materials.

India and China proposed clustering the FoD's nine additional issues into a package of six for inclusion in the work programme for the SCP's next meeting. However, the US, Japan and various other members of WIPO's 'Group B' of developed countries refused to accept any new issues. In light of the deadlock, the chair of the SCP, UK Patent Office head Ron Marchant, said that it was "not yet the time" for an agreement. He urged members to rethink their current positions, and called for a political solution in order to define the committee's future work programme.

In an attempt to broker a compromise, the Indian delegation suggested that the SCP's work could be considered in parallel to the discussions of WIPO's Intergovernmental Committee On Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC). The IGC's work focuses on many of the genetic resources-related issues that several developing countries are trying to promote in the SPLT discussions. However, the potential compromise found few takers. Some sources attributed this to a perception shared by some developing countries that they have far less to gain from anything the IGC is likely to produce than developed countries stand to gain from patent harmonisation.

Potential threat to development agenda?

Impressions on the outcome of the SCP meeting are mixed. While some governmental observers suggest that the simple fact that members clearly identified their interests was in itself a good sign, auguring eventual solutions to the lack of consensus, others expressed frustration that they did not even have any options for "give and take." One developing country source said "it can not be expected that we can just accept a list of issues that do not reflect our interests. It is time they [developed countries] understand we have also interests to be addressed and incorporated in the future of the patent system."

Intellectual Property Watch reports that some officials wondered aloud that an eventual collapse of the SPLT process might affect the progress of negotiations elsewhere in WIPO -- specifically, those on the 'development agenda.' The 'development agenda' negotiations spring from a September 2004 proposal from the FoD group calling for wide-ranging changes to integrate UN development objectives into the mandate and functioning of WIPO. Sources suggest that many countries, developed and developing, view the SPLT and development agenda talks as bargaining chips to be traded off against each other.

Nevertheless, the potential impact of the SCP on other discussions in WIPO and in the WTO remains to be seen. During the IGC's week-long meeting that started on 24 April, several developing countries repeated their call for a binding international instrument to protect genetic resources and traditional knowledge.

In WTO negotiations on intellectual property rights, the issue of disclosure requirements in patent applications is still on the table, and has been reiterated in recent months by several Members. The reluctance to address disclosure requirements in the SPLT process could potentially bolster arguments by India and other developing countries that the WTO is the appropriate forum for addressing them.

ICTSD reporting; "WIPO Patent Harmonisation Effort Stalls until September Assembly," INTELLECTUAL PROPERTY WATCH, 12 April 2006; "Nations Urge Legally Binding Biodiversity Outcome at WIPO," INTELLECTUAL PROPERTY WATCH, 25 April 2006.