WIPO Patent Committee Agrees Future Work Programme
The World Intellectual Property Organization’s (WIPO) Standing Committee on the Law of Patents (SCP) continued its discussion last week on a broad range of issues in international patent law, along with agreeing on the course of future work.
Previous efforts to reach consensus on this work programme had struggled to bear fruit. Even with the agreement reached last week, “the Committee agreed that its work for the next session be confined to fact-finding and not lead to harmonisation at this stage.”
The SCP, which met for its 24th session from 27-30 June, is WIPO’s dedicated forum for discussing issues relating to patent law. The committee’s agenda included several subjects of interest to member states, including exceptions and limitations to patent rights; quality of patents, including opposition systems; patents and health; confidentiality of communications between clients and their patent advisors; and the transfer of technology.
“With the advancement of collection of legal information under some of the above five agenda items, the SCP previous sessions witnessed an increasing difficulty in the identification of priorities – among a long list of options – for the future work of the SCP, making even more relevant the role of delegates in finding out solutions that allows the SCP to continue its work,” said Marco M. Aleman, Secretary of the committee, in e-mailed comments to Bridges. “This session showed this key role of delegates.”
Exceptions and limitations
Last week, Brazil expanded upon previous proposals for a study on exceptions and limitations to patent rights, including analysis of which of those implemented by members have proven most effective in addressing developing and least developed country needs.
This proposal was supported by many member states, including Iran, Pakistan, India, the African Group, and the Group of Latin American and Caribbean Countries (GRULAC). However, other members such as China and the EU instead called for sharing sessions where member states could present national case studies involving exceptions and limitations.
The US said that there was already substantial information available from earlier studies, and questioned how the effectiveness of exceptions and limitations would be defined in any WIPO secretariat analysis. The US added that such an analysis would be outside the SCP’s mandate, among other reasons, given the varied needs and goals of member states.
Discussion on the topic of quality of patents, including opposition systems, was divided into two main subjects: work sharing, which refers to programmes wherein national patent offices agree to share details of their work in examining patent applications with other offices examining similar applications, and patentability requirements.
Along with presentations by the secretariat and the Mexican delegation on examples of work sharing, many member states shared their own experiences and voiced their support for such programmes, with contributions from Japan, the US, Argentina, Romania, the EU, South Korea, Ireland, the Group of Central European and Baltic States (CEBS), and Australia. The US and Australia also shared details of recently implemented programmes to improve patent quality management in their national patent offices.
However, support for work sharing was not unanimous, as India argued that patent quality is not measured by processing efficiency, but rather by the standards of patentability. In addition, Iran suggested that work sharing would in practice lead to the harmonisation of patentability requirements, which many member states do not support.
To facilitate future work, many members called for clarifying how different national patent offices define patent quality. Canada suggested this could be done through a questionnaire it had proposed previously with the UK, which received support from Australia and Japan.
On the subject of patentability requirements, Spain presented its proposal for a study on the assessment of the inventive step criteria, which is widely regarded as the most difficult requirement to evaluate. While this proposal received widespread support, Brazil asked for further explanation of the need for such a study, given the discussion on inventive step at the 22nd SCP session, and for clarification of the topics which the study would address.
Patents and health
The topic of patents and health was a contentious one, with some member states including Brazil, Pakistan, Iran, and India supporting a proposal made by the African Group to the 16th session of the SCP. This proposal called for a work programme “to enhance the capacities of member states, and particularly developing countries and least developed countries (LDCs), to adapt their patent regimes to make full use of the flexibilities available in the international patent system to promote public policy priorities related to public health.”
The African Group also presented an updated version of the proposal, which outlined the growing threat of antimicrobial resistance and the recent global outbreaks of Ebola and Zika as justifications for re-evaluating the patent system’s impact on access to medicine. This proposal received support from Brazil, South Africa, Algeria, Nigeria, and India, although many countries reserved their opinion until they could examine it in more detail.
The Group B developed countries, the US, Japan, and the EU emphasised the importance of the patent system to incentivise the research and development of new medicines, and said that many other factors limit access to medicine besides intellectual property rights.
Transfer of technology
Many countries also emphasised the importance of sufficient disclosure of the invention in patent applications in order to ensure the transfer of technology, which is one of the underlying principles of the patent system. The African Group proposed a study on the effect of the sufficiency of disclosure requirement and the use of flexibilities in the WTO’s Agreement on Trade-Related Aspects of Intellectual Property (TRIPS) on technology transfer, which received support from some member states.
Many countries, including Group B, CEBS, the US, and the EU argued that such a study would be a duplication of related work done by the WIPO Committee on Development and Intellectual Property (CDIP). However, the African Group said that the CDIP takes a different approach to the topic, and thus there is no duplication.
Revision of 1979 Model Law
Also on the agenda was the continued discussion of a proposal by GRULAC for a revision of the 1979 WIPO Model Law for Developing Countries on Inventions. This project, which was supported by Iran, Paraguay, Indonesia, Brazil, India, China, the Asia-Pacific Group, and South Africa, would modernise the Model Law so it can provide legislative and policy assistance to developing countries and LDCs, and serve as “the basis for consideration of member states when updating or reviewing their patent legislations.”
Many supporters suggested such a revision was long overdue, as the Model Law has not been updated to reflect developments in patent law, including the TRIPS Agreement’s entry into force. South Africa said that the work should be development-oriented, demand-driven, and take into account the needs of developing countries.
Nevertheless, the topic was controversial, with Group B, CEBS, the EU, and the US among those opposing the revision and its continued SCP discussion. There were concerns that keeping the GRULAC proposal on the agenda, even in its current heading of “other issues,” would upset the delicate balance of the five main topics which were so carefully negotiated.
They also suggested that the revision of the Model Law is not necessary, since WIPO already provides technical assistance to member states looking to update or revise their patent legislation, and that this assistance has the advantage of being much more individualised. It was also suggested by some developed countries that the proposal would lead to harmonisation of national patent laws, and that if the Model Law revision advances, it would be appropriate to also reopen debate on the need for further harmonisation of all other areas of substantive patent law, which has been on hold at the SCP since 2006.
Members ultimately agreed to continue talks at the next session on the GRULAC proposal.
Despite differing views on several topics, the SCP was able to agree on a future work programme, in contrast to its 23rd session. This programme includes a number of the studies proposed by member states last week and in earlier sessions, and was hailed by many member states as a well-balanced agenda.
On the topic of exceptions and limitations, members agreed that the secretariat would prepare a compilation of information submitted by SCP members and observers on their practical experiences in implementing exceptions and limitations, particularly relating to development issues. Members will also conduct a sharing session on case studies in this area.
The work on the issue of quality of patents will include a questionnaire to be circulated prior to the SCP’s next session, for member states to explain how they understand quality as well as their experiences with work sharing programmes. The secretariat was also instructed to update and publish information on opposition systems, and a sharing session on topics relating to the assessment of inventive step was accepted.
Regarding the area of patents and health, a sharing session will be held on the use of health-related patent flexibilities, and a study will be prepared on the constraints faced by developing countries and LDCs in making full use of patent flexibilities and their impacts on access to medicines. Discussion will also continue on the feasibility of disclosing International Non-proprietary Names (INN) in patent applications.
On the topic of confidentiality of communications between clients and their patent advisors, which was also a source of debate last week, the secretariat was instructed to prepare a compilation of court cases involving aspects of client-patent advisor privilege, “including limitations or difficulties encountered.”
Regarding the transfer of technology, a sharing session will be held so members can discuss the relationship with patent systems. Experts will be invited to present examples and cases, with the aim of “deepening the understanding of the impact of sufficiency of disclosure on transfer of technology.” The secretariat will also update WIPO’s webpage on the topic.