[Ip-health] WIPO CDIP approves certain components of Project on Intellectual Property and the Public Domain

Fri Nov 20 13:36:02 2009

http://keionline.org/node/694

WIPO CDIP approves certain components of Project on Intellectual
Property and the Public Domain
By thiru
Created 20 Nov 2009 - 10:10am

The Fourth Session of WIPO's Committee on Development and Intellectual
Property (CDIP) i [1]s taking place from 16 November 2009 to 20
November 2009.

Among the projects under consideration this week is is the project on
Intellectual Property and the Public Domain based on recommendations
16 and 20 of the Development Agenda.

Recommendation 16 states:

     Consider the preservation of the public domain within WIPO=92s
normative processes and deepen the analysis of the implications and
benefits of a rich and accessible public domain.

Recommendation 20 states:

     To promote norm-setting activities related to IP that support a
robust public domain in WIPO=92s Member States, including the
possibility of preparing guidelines which could assist interested
Member States in identifying subject matters that have fallen into the
public domain within their respective jurisdictions.

For this week's meeting, the WIPO Secretariat prepared a project
proposal (CDIP/4/3) [2] on intellectual property and the public domain
with four components 1) copyright, 2) trademarks, 3) patents and 4)
traditional Knowledge (TK) and traditional cultural expressions
(TCEs). However, after extensive discussions on this project, a
revised project proposal has been presented to WIPO Member States
Friday afternoon (20 November 2009) for their consideration. One major
change has been the deletion of the component on traditional knowledge
and traditional cultural expressions. This web log endeavors to chart
the evolution of the original Secretariat proposal to the revised
proposal based on Member State inputs. However, at the time of
writing, the WIPO proposal on intellectual property and the public
domain has not been finalized.

The original copyright component description read as follows:

     Uncertainty over copyright ownership and status of works may
result in works not being made available to the public, even where no
living person or legal entity asserts claims to ownership of
copyright, or where the owner has no objection to such use. With
respect to works of unknown authorship or in respect of which the
owner cannot be identified (=93orphan works=94), uncertainty can undermine
the economic incentive to create, imposing additional costs on
subsequent users/creators wishing to incorporate material taken from
existing works into new creations. In recent years, commentators have
highlighted the importance of registration/deposit of copyright and
related rights in the evolving digital environment, beyond the
traditional functions of facilitating the exercise of rights, for
example, as a means to prove the existence and/or ownership of a work,
and to identify works that have fallen into the public domain. In
relation to copyright registration systems, the role of Rights
Management Information (RMI) has tremendous potential for identifying
and locating content. RMI is increasingly used in the networked
environment, which helps users to customize their searches, find the
content they are seeking, and where appropriate, enter into licensing
agreements with right owners. Understanding how different registration
and deposit systems function (both those established in the public
sector, as well as the emerging private ones) will thus prove useful
in order to identify works that have fallen into the public domain. It
is important to understand how different jurisdictions define the
public domain, directly or indirectly, and to identify the existing
initiatives and tools, technical and legal, which can facilitate
access to, use, identification and location of public domain material.
In addition, there is a need to clarify the relationship between
copyright limitations and exceptions and the public domain, including
legal, conceptual and functional aspects.

     Surveys and studies proposed for the Development Agenda should be
able to take advantage of work which has already been undertaken by
WIPO for different purposes in the area of registration of copyright
works, such as a Survey of National Legislation on Voluntary
Registration Systems for Copyright and Related Rights (SCCR 13/2)
undertaken at the request of Member States, in November 2005, and the
WIPO Seminar on Rights Management Information which took place in 2007.

The WIPO Secretariat proposed a work program on copyright and related
rights with respect to the public domain. In his presentation on
WIPO's project , Richard Owens (WIPO Secretariat) noted Egypt's
request that the studies make it clear that there is a "relationship
between limitations and exceptions to copyright and the public domain.
Mr. Owens emphasized that the proposed scoping study had two parts: 1)
an illustrative comparison of national legislation that directly, or
indirectly, defines the public domain (as far as copyright is
concerned), and 2) a survey of initiatives and tools, technical and
legal, which facilitate access, use, identification and location of
public domain material.

Here is the original WIPO project proposal for implementation of
recommendations 16 and 20 on the public domain with respect to
copyright.

     1.1. Second Survey on Voluntary Registration and Deposit Systems:
The new survey would expand on the 2005 Survey in at least four
different respects, namely, (i) enable scrutiny of the operational
requirements for voluntary registration/deposit systems in the digital
environment and available search tools; (ii) include information on
how Member States with voluntary registrationsystems address the issue
of orphan works in those systems; (iii) solicit information on
recorded/registered public domain subject matter; and (iv) attempt to
include all Member States. The Survey would include conclusions based
on the data received by Member States.

     1.2. Survey of Private Copyright Documentation Systems and
Practices: This would cover the use of copyright documentation,
including in the form of RMI, by entities such as collective
management organizations or the Creative Commons System, and would
examine how these systems identify, or might contribute to
identifying, content that is protected or in the public domain.

     1.3. Scoping Study on Copyright and Related Rights and the Public
Domain: The scoping study would include an illustrative comparison of
national legislation that directly, or indirectly, defines the public
domain (as far as copyright is concerned), a survey of initiatives and
tools, technical and legal, which facilitate access, use,
identification and location of public domain material, and,
     finally, recommendations for further work to be undertaken by
WIPO in regard to the public domain as far as copyright is concerned.
The study would also include a preliminary analysis of the possible
implications of a rich and accessible public domain.

     1.4. A Conference on Copyright Documentation and Infrastructure:
will be organized following completion of the two Surveys and Scoping
Study under 1.1, 1.2 and 1.3, above. The participation of some
representatives of LDCs and developing countries would be financed
under the project.

In response to the concerns of Member States, WIPO revised the
copyright component of the public domain project to include the
following additions.

In section 2.3 on the delivery strategy, the following text was
inserted following the options available to Member States upon
conclusion of WIPO's studies: "They should also form a basis to
promote norm-setting activities related to IP that support a robust
public domain in WIPO's Member States."

With respect to the language on the scoping study, the following
language was inserted (new language in caps)

     Scoping Study on Copyright and Related Rights and the Public
Domain: The scoping study would include an illustrative comparison of
national legislation that directly, or indirectly, defines the public
domain (as far as copyright is concerned), a survey of initiatives and
tools, technical and legal, PARTICULARLY IN THE DIGITAL
ENVIRONMENT,which AFFECT access, use, identification and location of
public domain material, and, finally, recommendations for further work
to be undertaken by WIPO in regard to the public domain as far as
copyright is concerned. The study would also include a preliminary
analysis of the possible implications of a rich and accessible public
domain. THE STUDY SHOULD ALSO TAKE INTO ACCOUNT THE ONGOING WORK IN
THE STANDING COMMITTEE ON COPYRIGHT AND RELATED RIGHTS ON LIMITATIONS
AND EXCEPTIONS TO COPYRIGHT.

In the aforementioned paragraph, Bolivia insisted on replacing the
word inserting the word "affect" in place of the original word
"facilitate". Originally, Bolivia wanted to insert the phrase "or
impede" after the word "facilitate" and before "access". After a long
negotiation with the United States, the result was "affect" replacing
"facilitate". Bolivia's premise was that technical and legals tools
could "affect" access, use identification and location of public
domain material" whereas using the word "facilitate" would prejudge
the scoping study.

The original patent component description reads as follows:

     One of the essential elements of the patent system is the public
disclosure of patent information, which includes both technical and
legal information relating to patents. Information dissemination
policies, the legal framework and technical infrastructures all play
an important role in supporting access to and use of publicly
available patent-related information and in facilitating the
identification of technology that is in the public domain. In the
context of the Standing Committee on Patents (SCP), discussions were
held on two studies prepared by the Secretariat; =93Exclusions from
Patentable Subject Matter and Exceptions and Limitations to the
Rights=94 and =93Dissemination of Patent Information=94 (SCP 13/3 and
13/5).=94 These studies include useful information about the role of the
patent system in the identification, access and use of technology that
is in the public domain. As explained in the study on dissemination of
patent information, the public domain in relation to patent law
consists of knowledge, ideas and innovations, over which no person or
organization has any proprietary rights. Subject matter in the public
domain with respect to patents, could be identified by confirming the
absence of legal restrictions on use (i.e., exclusion from patent
protection under applicable laws), the rejection of a patent
application, the expiration of patent protection, non-renewal, and
revocation or invalidation of a patent. However, in practice, it is
often hard for the public to identify the validity of relevant patents
due to the lack of effective tools in many jurisdictions such as
patent legal status databases accessible to the public.

Here is the WIPO project proposal for implementation of
recommendations 16 and 20 on the public domain with respect to
copyright. The United States requested the words "and claiming" (in
brackets below) be struck from the project proposal. The text proposed
by Bolivia is in caps. The United States objected to the Bolivian
text; the US noted that the Bolivian "ask"was already being handled by
WIPO's Standing Committee on the Law of Patents (SCP) and thus would
duplicate work already undertaken in the SCP.

     3.1. Study on Patents and the Public Domain: It is proposed to
undertake a study that would focus on patents and the role of patent
information in the identification, access and use of public domain
material. As mentioned above, a preliminary study on the dissemination
of patent information (which has, inter alia, addressed the public
domain issue) and another study on exclusions from patentable subject
matter and exceptions and limitations to those rights, were prepared
for the SCP, and would be a useful basis for preparing a specific
study focusing on patents and the public domain. THE STUDY SHOULD ALSO
DISCUSS THE IMPLICATION OF THE FOLLOWING ACTIVITIES ON THE PUBLIC
DOMAIN; SO-CALLED "PATENT THICKETING", "EVER GREENING PATENTS", THE
EXTENSION OF THE PATENT TERM, PRE-GRANT OR POST-GRANT OPPOSITION TO
PATENTS, AND THE DISCLOSURE REQUIREMENTS. The specific study would be
useful to further explore the analysis of patent information and
certain provisions of the patent system as a tool and basis for
identifying [and claiming] subject matter that has fallen into the
public domain. The study would focus particularly on legal status
information to identify off-patent technology. The study would also
analyze the implications and benefits of a rich and accessible public
domain.

     3.2. Feasibility Study: The Study would analyze the feasibility
of WIPO supporting IP Offices that wish to establish a national
database containing the legal status of national patents so that the
register may enhance public access to the information necessary for
identifying inventions in the public domain. The study also includes
the possibility of creating a global portal in PATENTSCOPE=AE, which
would link to those patent registers.

The Chair of CDIP 4 (Mohamed Bdioui, Tunisia) requested the Bolivia
and the United States to resolve their differences on the WIPO public
domain project. For around 15 minutes, Bolivia and the United States
huddled with the WIPO Secretariat and the Chair to break the impasse.
At the end of the bilateral, Bolivia agreed to drop its request for
the patent study to discuss the impact of patent thickets, ever
greening, pre-grant and post-grant opposition, disclosure
requirements, and extension of the patent term on the public domain.
The agreement reached was that these additional elements would be
discussed at CDIP 5, and it would be decided then on whether to
include these additional elements in the study.

Due to objections by Zimbabwe, Indonesia, Egypt, Indonesia and South
Africa among others, component four (traditional knowledge/traditional
cultural expressions) of WIPO's project proposal on the public domain
was deleted. Angola requested that in the report of CDIP 4, that the
Committee would reserve the right to return to TK, TCEs and the public
domain. On the trademark component, the text of trademarks will be
discussed at CDIP 5.

The conclusion of WIPO CDIP 4 saw the approval of "some components of
the Project on Intellectual Property and the Public Domain". These
components include the copyright component and the patents component.

Source URL: http://keionline.org/node/694

Links:
[1] http://www.wipo.int/meetings/en/details.jsp?meeting_id=3D17460
[2] http://www.wipo.int/edocs/mdocs/mdocs/en/cdip_4/cdip_4_3.pdf

------------------------------------------------------------

Thiru Balasubramaniam
Geneva Representative
Knowledge Ecology International (KEI)
thiru@keionline.org

Tel: +41 22 791 6727
Mobile: +41 76 508 0997