[A2k] WIPO: Procedural wrangles on designing work program on patents

[Sangeeta]

SUNS #6006 Wednesday 12 April 2006

WIPO: Procedural wrangles on designing work program on patents

Geneva, 11 Apr (Sangeeta Shashikant) -- The World Intellectual Property
Organization's Standing Committee on the Law of Patents (SCP) spent most of
the
first day of a three-day informal session in disputes on how to agree on a
work
program for the ordinary SCP session and how to "take into account the
discussions (of the recently held) Open Forum on the draft Substantive
Patent Law
Treaty (SPLT)."

The WIPO General Assembly in 2005, in an effort to break the deadlock among
members over the future work program of the SCP, had set up a four-step
process
to break the impasse, beginning with a three-day Open Forum on the draft
SPLT,
and then a three-day informal SCP session to agree on a work programme,
taking
into account the discussions at the Open Forum. Thereafter, the WIPO
Assembly
had decided, there should be an ordinary session of the SCP to begin work on
an
agreed work programme, and the progress made on this is to be considered by
the
WIPO General Assembly in September 2006, and the work plan itself is to be
decided in the following year.

Most of the first day of the 3-day informal session of the SCP was caught up
in
conflict and differences emerged over how to view the General Assembly
decision,
how to proceed and on what basis the work programme for the ordinary session
of
the SCP could be designed.

After some discussions in the morning, the Chairman, Usman Sarki from
Nigeria
(a Vice-Chair of the 2005 GA), suspended the informal session at noon and
continued with an open-ended informal session in the afternoon. But at the
end of
the first day, there was no concrete agreement on the work programme or how
to
proceed to formulate a work programme.

The Chairman asked delegations to submit their proposals on how to move
forward, and indicated that if no concrete suggestions are received, he may
draft
his own proposal.

At the informal SCP on Monday, several developed countries, in particular
the US
and Japan, found discussions at the open forum very useful, but persisted in
their
previous positions that discussions in the SCP should be based on a limited
package of issues relating to the proposed draft SPLT. The discussions at
the open
forum could be treated as informative, but could not be the basis for
designing the
work plan of the ordinary session of the SCP.

The limited package promoted by them consists of four issues: definition of
prior
art, grace period, novelty and non-obviousness/inventive step.

On several occasions in the past, developing countries have rejected
negotiations
of the SPLT on the basis of such an initial package. At the last SCP meeting
(1-2
June 2005), a set of 6 issues was presented, following a controversial
meeting at
Casablanca of some delegates, convened by the WIPO head. It was then
proposed
that the limited package of 4 issues would be discussed at the SCP while the
other
two issues on sufficiency of disclosure and genetic resources be discussed
at the
Intergovernmental Committee on Intellectual Property and Genetic Resources,
Traditional Knowledge and Folklore (IGC).

However, such a package of 6 issues was rejected at the June 2005 SCP
meeting,
with many developing countries criticizing the non-transparent and
non-participatory procedures and processes surrounding the Casablanca
meeting.

At the informal SCP Monday, developing countries such as Brazil, Argentina,
Iran
and South Africa took the position that the work programme for the ordinary
SCP
session should be based on the rich discussions that took place in the open
forum.
Iran said that the GA decision has set a new process going and the process
is yet to
be finished. The developing countries insisted that the Open Forum
discussion
could not be ignored. Brazil wanted a process to peruse the materials
presented at
the Open Forum.

Thailand, on behalf of the Asian group, said that while they were cognizant
of the
benefits of harmonization, they were also concerned over its "possible
adverse
consequences". It said that the Asian group perceived harmonization to take
into
account the interests and concerns of all member states. It was essential to
ensure
that improvements of the patent system contributes to the promotion of
technological innovation, transfer and dissemination of technology and
creation of
social and economic welfare and preserve the flexibilities and policy space
especially of developing and least developed countries. The statement
expressed
support for a "balanced and equitable" international patent system.

Singapore, on behalf of the Association of the South East Asian Nations
(ASEAN), while supporting the need for a "balanced and equitable patent
system",
said that protraction over draft SPLT is detrimental to WIPO. Singapore said
that
the work in the SCP in relation to SPLT is important in relation to the 4
issues but
added that similar efforts should be made on sufficiency of disclosure and
disclosure of origin relating to genetic resources.

Pakistan associated itself with the Asian group statement, and said that the
deliberations of the SCP have proceeded in the context of a proposed SPLT
which
have not been successful due to process and substance. There is a widespread
perception that the efficiency of the patent system needs to be enhanced and
that
the system should yield broad societal benefits.

Pakistan added that while there are differences on the exact list of issues
to be
tackled, these can be successfully addressed by the SCP, if certain
prerequisites are
followed. The issues proposed for deliberations may be appropriately
clarified, in
particular with regard to their implications for enhancing efficiency of the
system
and yielding societal benefits. A manageable set of issues important to both
sides
should be introduced in tandem. By adopting such an approach an agreement on
the future agenda and work of the SCP that benefits all member states could
be
reached.

The US said that the proposal to limit the scope of work of the SCP to 4
issues
provided the best opportunity for a near term agreement. These issues, it
added,
are fundamental to improving patent examination and patent quality as
harmonized
standards will facilitate work sharing and avoid duplication of work and
will assist
creators to benefit from their own innovations in a cost effective manner.
This
view, the US claimed, was echoed by the representative of the small and
medium
enterprises at the open forum. Japan took the same position.

South Africa favoured a balanced work programme and a single undertaking of
all
issues, i.e. that all issues are dealt with in the context of the SCP and
not divided
and discussed in other WIPO committees. In South Africa's view, discussions
that
took place in the open forum should assist in moving forward with the issue
and
requested a summary of all presentations in bullet format.

The Ambassador of Argentina said that the open forum showed that the subject
of
discussion is sufficiently complex and involves a great number of interests.
If the
SCP agenda is simplified, the desired results would not be achieved.
Argentina
would like the SPLT discussion to include all the flexibilities in the TRIPS
Agreement.

Brazil said the open forum had brought out a whole range of issues and the
materials presented at the forum should be the basis to formulate a work
programme. A process should be set up to go through all the materials. It
added
that at the Open Forum delegations heard from academics and others, a wide
range
of analyses and how the issues are interlinked and integrated. Hence, Brazil
could
not see how any discussion on harmonization could be conducted by picking
and
choosing a few of the technical requirements, but not considering the other
elements. Balance will not occur if a reduced package is chosen, it said. A
package
has to be balanced between the technical details and the flexibilities and
these
aspects should be part of whatever delegations choose to do. It said that it
favoured
discussions on disclosure of origin, consideration of anti-competitive
practices,
measures that enhance transfer of technology.

Speaking on behalf of the Friends of Development (a group of about 14
developing countries), Argentina  said that it was clear that there were a
significant
number of subjects that warrant further clarification. The work program to
be
established for the SCP should not prejudge the outcome that could be
reached and
should be broad enough to cover all the interests. It said that the open
forum
provided a wealth of information that should not be overlooked.

On the proposal for a limited package, Argentina said that if delegations
wished to
prepare something that will lay the foundations for future work, the limited
package proposal should be set aside and the discussions should focus on
subjects
that were discussed at the open forum. The program of the open forum was a
result
of negotiations, and thus it should underpin the future work of the SCP
without
prejudging any outcome.

No outcome would be possible if discussions were based on a limited package,
which had not been acceptable in the past.

Iran said that the limited package idea has been rejected thrice in the past
and the
WIPO GA had mandated a 4 step process to arrive to a new work-plan.

The US supported by Japan agreed that the open forum was useful and
informative, but did not agree that each and every issue raised at the forum
had to
be vetted, before a work-plan is designed. It was important to prioritize
the work
of SCP to issues that tend to be more mature and where there is commonality.
The
four issues - definition of prior art, grace period, novelty and
non-obviousness/inventive step - in the US view are core issues for patent
applications filed worldwide and it made more sense to prioritise work on
those
issues. The limited package was an attempt of a good faith compromise and
the
US was concerned that vetting all issues in the open forum will result in an
unmanageable process.

Brazil took a position similar to Argentina and said that it was neither
productive
nor useful to consider a limited package of issues. The mandate given by the
GA
had to be considered. A new process had been set by the GA and delegations
should try to design a new work program based on the open forum. The open
forum, had enabled the participation of all stakeholders and so the best way
to
continue the work of the SCP would be for members to undertake this task of
building a balanced set of issues taking into full consideration the outcome
of the
open forum.

India suggested that since the mandates of the SCP and the IGC were the same
the
meetings could be held at the same time. Rather than spending effort and
time in
deciding what should be discussed in each fora, and until there was
substantial
progress, meetings should be held jointly. It made this suggestion, as there
were
suggestions that some issues be discussed at the SCP and the other issues at
the
IGC.

The UK and Austria supported this suggestion. But the UK rejected outright
proceeding on the basis of the outcome of the open forum. It supported the
idea of
moving forward based on the limited package of 4 issues, while the other
issues of
disclosure and genetic resources be discussed in the IGC.

These interventions and that of Brazil and Argentina that discussions in the
open
forum should be considered led India to clarify that it did not have in mind
to
ignore what was discussed in the open forum. The forum was useful and should
be
considered when discussing specific issues. It also added that its
suggestion (for
joint SCP and IGC meetings) was made in the context of proposals by a set of
countries that the proposed four issues to be important and be discussed in
one
committee while some issues of relevance to developing countries be
discussed in
the IGC. In India's view, the discussion need not be limited to those
issues.

The US was not agreeable to this suggestion, and said it did not support
linkages
between items that are not similarly situated. It cautioned against having
joint
sessions as it said that broad subjects are being discussed in the IGC and
that the
experts that attended each Committee meeting were different.

After listening to the debate, the Chairman of the informal session drew
some
preliminary conclusions.

In his view, there were common threads. The first was the importance of the
open
forum and the need for the informal session to take note of the outcomes or
the
issues that were discussed at the forum. The second was that the SCP should
continue with its work, and there was some commitment that there should be
an
outcome. He appealed to delegations to show flexibility on the key issue of
whether it should be a limited or an expanded package. He added that both
positions could be ameliorated.

Argentina clarified that for its group of delegations it was not a matter of
mathematics. Unless the idea of a package is dropped, it would be difficult
to
agree on a work-plan for the SCP. The negotiations should take into account
all
the concerns of the developing countries and this should include discussions
on
principles, exceptions, limitations, anti competitive measures, and public
interest
flexibilities.

Towards the end of the meeting, Argentina again said that it was difficult
to know
what was meant by unmanageable issues and what was manageable. In
international negotiations all countries should be able to include issues
that
concerned them.

Brazil expressed a similar view, and said that the outcomes of the Open
Forum
could be set aside. It was necessary to stick to the process set by the GA
and not
set aside that process and go back to a deadlock. Frustration became
apparent as it
said that "if we don't want to take into account the open forum then we
should not
have spent so much time on it".

Many developed country representatives, Brazil noted, had said that the
patent
system is undergoing a crisis; and hence to address this crisis adequate
consideration has to be given to all of the issues. The outcome should not
be
prejudged, and Brazil could not understand that the only outcome has to be a
treaty. There were many other issues raised at the open forum that did not
include
harmonization of the substantive patent law.

Iran added that the GA decision was a compromise and so the open forum
cannot
be ignored.  The GA decision started a process that is unfinished, and any
agreement on the work program should be based on the material of the open
forum.

South Africa also agreed that the issues raised in the open forum were
important
and should not be forgotten and added to the list of suggestions another
suggestion
on how to proceed. It proposed that delegations come up with a basket of
issues
and these issues could also be categorized accordingly and this should be
accompanied with an agreement that nothing is agreed until everything is
agreed
to.

China was in favour of having a package for discussion; in that way more
progress
would be made. The first package of discussion should cover items of
importance
to developing countries, the most important being the disclosure of origin
of
genetic resources and TK and these discussions should take place in the same
committee. "If we want to conclude a treaty...these two should be finished
at the
same time and we should have only one treaty."

The US could not agree with Argentina, Brazil and South Africa on the GA
decision, and said that while the open forum was important, delegations need
to
take the information and agree to a work programme with some sort of
prioritisation of the issues. In the US view, delegations were taking steps
backward
instead of forward. The view that the discussion be structured based on the
issues
raised in the open forum, and that it was a new process, was a
misinterpretation of
the mandate.

The meeting ended with an appeal by the Chairman of the informal session for
delegations to submit their proposals on how to proceed and reach agreement
on
the work plan of the ordinary session of the SCP.
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