[Ip-health] SUNS: Patent committee agrees on issues to re-start discussions

[Sangeeta]

WIPO: Patent committee agrees on issues to re-start discussions
Published in SUNS #6506 dated 30 June 2008

 Geneva, 27 Jun (Riaz K. Tayob and Sangeeta Shashikant) -- The meeting of
WIPO's Standing Committee on Patents (SCP) ended on Thursday 26 June with
Members identifying a "non-exhaustive list" of 18 items for further
elaboration and discussion and asking the Secretariat to prepare
"preliminary studies on four issues" for the next SCP session.

This was seen by observers and many delegates as a step forward in the
attempt to break an impasse in the work of the SCP following strong
disagreements (on North-South lines) on how or whether to proceed with
negotiations on a WIPO substantive patent law treaty (SPLT).

Developed countries want to use the SPLT to further harmonise national
patent laws. Developing countries are concerned about this and have also
proposed many development-oriented and public interest issues to be
incorporated in the negotiating agenda.

The list agreed to at this meeting is to be used for working towards a work
programme for the SCP. It will be open for further discussion (including
addition of topics) at the next SCP meeting. Four topics were selected for
studies, but it was understood that this did not imply a prioritisation of
issues.

This was agreed to by the members and contained in a document called
"Summary by the Chair", which was "established under the responsibility of
the Chair".

The SCP also suggested that WIPO organise a conference on the implications
of patents on public areas like health, the environment, climate change and
food security.

The Chair's Summary stated that the SCP "suggested that in the framework of
the SCP and, where relevant with other WIPO bodies, the WIPO Director
General consider including in the revised Program and Budget for 2009,
provision for a Conference on issues relating to the implications, including
public policy implications of patents and certain areas of public policy
such as health, the environment, climate change or food security".

The context within which the conference would take place became a sticking
point just before the close of the meeting, threatening to derail the
outcome.

The Africa Group, Brazil and some other developing countries wished to
reflect in the Summary that the Conference would be held in the context of
preparing a work-plan for the SCP.

The SCP Chair, Maximiliano Santa Cruz from Chile, proposed that the
conference be held "in the framework of the SCP and other relevant WIPO
bodies". However, this was not agreeable to several developing countries,
resulting in an appeal by Mr. Francis Gurry, Deputy Director-General of
WIPO, followed by a break for informal consultations.

Gurry, in persuading member states to agree to the Summary, said that the
purpose of the Conference was to engage in a dialogue with international
organisations and their spheres of competences in a way that will build good
cooperation.

He said that the second purpose is to understand the issues and to open
discussions on those issues, adding that he did not see members changing
positions and agreeing to whether discussion should be held in the SCP or in
the IGC.

Following informal consultations, the language agreed was "in the framework
of the SCP and, where relevant with other WIPO bodies".

The Chair concluded the debate by saying "having a conference on these
issues does not mean they are no longer dealt with by the Committee nor does
it mean they are being dealt with by the Committee".

Bolivia also stressed that it wanted the issue of non-patentability of life
added to the list of public policy issues. However, following intervention
by Gurry, it settled with reflecting its request in the report.

The method of work in the Chair's summary was seen by observers as an
attempt to bridge the deep divisions between developed and developing
countries on the issues which the SCP should work on in its future work.

Group B (composed of industrialised countries) wanted to discuss only four
issues (grace period, inventive step, novelty and prior art) and work
towards harmonising national laws on these issues; while developing
countries wanted to also include nine other issues which they considered to
be of importance from a developmental and public interest perspective.

These issues include disclosure of origin of genetic resources and
traditional knowledge, transfer of technology, anti-competitive practices,
and flexibilities in the IP system.

In the final Chair's summary, the developing countries' issues are included
in the list of 18 issues, so also the issue of harmonisation of
patentability criteria that was insisted on by developed countries.

Interventions by developing countries highlighting in some cases the issue
of harmonisation being against the interests of developing countries and in
other cases calling for a balance in discussions as well as in Reports
prepared by the Secretariat, indicate that many developing countries are
concerned that the proposed harmonisation of patent laws and criteria would
not be in their interests.

Developed countries, on the other hand, are keen to move towards
harmonisation of at least some aspects of national patent law in WIPO, and
have been attempting to do so through including provisions on these in a new
substantive patent law treaty (SPLT).

Developing countries like Brazil and India have insisted that disclosure on
genetic resources and other developmental and public interest issues be also
negotiated in the SPLT process, but the developed countries have insisted
that only their issues be dealt with, at least in the first stage of a SPLT.
Developing countries, on the other hand, insist that all issues be dealt
with together, even at any "first stage."

With this impasse paralysing the SPLT negotiations, the SCP meeting this
week was an attempt to re-create the atmosphere and methodology for a future
work programme. What this meeting achieved was a list of issues on which
future discussions would be based.

According to the Chair's summary, "working towards a work programme, the SCP
identified a non-exhaustive list of issues for further elaboration and
discussions in the future".

This non-exhaustive list that is annexed to the Chair's summary contains 18
issues, and according to the summary, it "would remain open for further
elaboration and discussion at the next session of the SCP".

>From this list, four issues were chosen (through informal consultations) for
which preliminary studies are to be conducted: "Dissemination of patent
information inter alia the issue of a database on search and examination
reports; Exceptions from patentable subject matter and limitation to the
rights, inter alia research exemption and compulsory licenses; Patents and
standards; and client-attorney privilege."

According to the Summary, the four issues "are not to be considered
prioritised over the other issues contained" in the non-exhaustive list.

The Summary also mentions that the WIPO Report prepared for discussion
during the SCP week (SCP 12/3) "would remain open for further discussion at
the next session of the SCP and be open for written comments to the WIPO
Secretariat which would reflect those comments in footnotes or annexes to
the document SCP/12/3 by the end of October."

The Summary also states that SCP Members "could submit suggestions on the
future work programme of the SCP to the Secretariat".

The Summary was agreed to following informal consultations and interventions
of Member States.

Algeria, on behalf of the Africa Group, stressed that the Secretariat's
report should be kept on the table, adding that in preparing further
documents, the Secretariat should pay special attention to public policy
objectives and development concerns.

Pakistan said that the issue of patents and standards as well as
anti-competitive practices in this regard have to be studied together.

Brazil said that the SCP should "stick to a gradual progressive and
incremental approach", adding that it planned to develop the non-exhaustive
list at the next SCP session. Its understanding is that the WIPO Report and
all the elements in it remained on the table.

Brazil said that it saw merit in having a conference but added that it
should feed into the SCP work plan. It did not wish to see a "stand alone
conference".

Brazil also made several comments on the four issues selected. On patent
information, Brazil said that SMEs should be able to access patent
information for developing their own products and the issue should be
explored in that context. It added that the patent status in national
jurisdictions should also be a part of patent information.

On limitations and exceptions, Brazil said that Members would have an
opportunity to discuss a full range of topics. On standards, it stressed the
need to bear in mind open and non-proprietary standards and enhancing of
access to knowledge.

Slovenia, on behalf of EU members, expressed agreement with the
non-exhaustive list of issues, adding that it could "advance common
understanding". It also expressed its understanding that the list of issues
is not "a definitive work programme" and the four issues do not imply
prioritisation. The US agreed with the EU statement.

Switzerland said that the status of the conference has to be decided when
discussing the longer non-exhaustive list.

Several delegations raised questions on what was the objective of
identifying the four issues. To this, the Chair responded that the aim was
to achieve a work programme. However, he said that if members wanted to
state in the Summary that the objective is "harmonisation", he was not going
to do that, adding that it would be a mistake to talk about harmonisation
and that it is not something done in other WIPO committees.

In other committees, the Secretariat prepares reports, surveys, invites
experts to make presentations in the meeting and nobody speaks as to whether
it will lead to harmonisation, he added. The Chair called on those seeking
harmonisation to be "patient".

The 18 issues on the non-exhaustive list are: (1) Economic impact of the
patent system; (2) Transfer of technology; (3) Competition policy and
anti-competitive practices; (4) dissemination of patent information
(including registration of licences); (5) Standards and patents; (6)
Alternative models for innovation; (7) Harmonisation of basic notions of
substantive patentability requirements (prior art, novelty, inventive step,
industrial applicability, disclosure); (8) disclosure of inventions; (9)
database on search and examination reports; (10) Opposition system; (11)
Exception from patentable subject matter; (12) Limitations to rights; (13)
Research exemption; (14) Compulsory licenses; (15) Client-attorney
privilege; (16) Patents and health (exhaustion [of rights], WTO instruments,
patent landscaping); (17) Relationship between patent system and the CBD
[Convention on Biological Diversity] (Genetic resources/Traditional
knowledge, disclosure of origin); and (18) relation of patents with other
public policy issues. +