[Ip-health] TWN INFO: South signals direction on patents, Development Agenda, enforcement

[Sangeeta]

TWN Info Service on Intellectual Property Issues
6 October 2009
Third World Network
www.twnside.org.sg

South signals direction on patents, Development Agenda, enforcement
Published in SUNS #6786 Tuesday 6 October 2009

Geneva, 5 Oct (Sangeeta Shashikant) -- Developing countries, at the annual
meetings of the Member States of the World Intellectual Property
Organization (WIPO), sent out clear signals on the direction that issues
pertaining to the reform of the Patent Cooperation Treaty, the Development
Agenda, the creation of a new committee on the global Intellectual Property
(IP) infrastructure and the Advisory Committee on Enforcement should or
should not take.

These issues were discussed during the annual WIPO Assemblies that began on
22 September and concluded on 1 October.

With regards to the Patent Cooperation Treaty Working Group (PCT-WG), it was
expressed clearly that the reform of the PCT should not be used as a
back-door attempt to introduce harmonization or procedures that would affect
flexibilities available nationally, and that any reform should be
evidence-based, member-driven, transparent and in accordance with the
principles of the Development Agenda (DA).

WIPO members also did not approve the setting up of a new Committee on
Global IP Infrastructure out of concerns over the lack of information and
consultations on the need for such a committee and certainty with regard to
its mandate. There also appeared to be concerns that such a committee could
be used for harmonization of IP systems in a manner detrimental to the
interests of developing countries.

In relation to the Development Agenda, developing countries stressed on the
need to agree on a mechanism for coordination, assessing, monitoring and
reporting on the implementation of the DA recommendations and to ensure
adequate budgetary resources for such implementation. On the issue of
enforcement, several countries upheld WIPO as the main forum for discussing
IP-related matters, adding that IP enforcement strategies should not be
repressive. They also emphasized the need to investigate the causes of IP
violations.

On the issue of the PCT-WG, the PCT Union Assembly took note of the report
prepared by the Secretariat (PCT/A/40/1) that contained inter alia the
Chair's summary of the last session of the WG held in May, as well as the
report of that session and approved the recommendation of the PCT-WG for
convening one session of the WG before the 2010 General Assembly.

At the last meeting of the WG in May, the WIPO Secretariat, developed
countries and the users of the patent system (largely based in these
countries) pressed for the adoption of the PCT road-map presented by the
Secretariat, while several others voiced concerns over harmonization of
patent application, search and examination procedures. This resulted in
deferment of the consideration of the road-map outlining actions to reform
the PCT.

It was also decided inter alia that work of the PCT should be informed by an
in-depth study factoring in among others the background on the need to
improve the functioning of the PCT system, the problems and challenges that
confront the PCT system, the causes underlying the problems, possible
options to address the problems, an impact assessment of the options and
defining and clarifying concepts like "duplication of work" and "unnecessary
action", etc. (For more details, see SUNS #6698 dated 12 May 2009.)

During discussions on the PCT, several countries stressed that PCT reform
should not involve "back-door" harmonization of substantive patent law or
search and examination procedures, nor affect Members' rights to apply their
patentability criteria, as well as for the DA recommendations to be taken
into account in discussions on the PCT's future.

Cuba said that it was necessary to undertake studies and impact assessment
before proceeding further with the reform, adding that the PCT's future work
should not in any way result in harmonization of the substantive patent law
and must take into account Development Agenda recommendations. The PCT's
reservations should be maintained, it added.

Egypt stressed the need for future work on the PCT to be done in a
transparent manner, adding that the lack of transparency seen in the May
meeting should be avoided in the future. It further added that the future
work programme should be guided by the principles of the DA and be a
member-driven process, as within the WIPO structure only Member States carry
out norm-setting functions.

Indonesia said that PCT reform should not compromise the WTO-TRIPS
Agreement's flexibilities.

Brazil stressed the importance of the multilateral system, adding that
non-binding effects of efforts to increase efficiency should be maintained,
and that PCT reform should not interfere with the national examination
phase.

Sweden, on behalf of the EC, reiterated its strong support for the
Secretariat's initiative on the PCT's future. It added that it agreed that
the emphasis of the Working Group should be on improvements within the
existing legal framework without limiting the freedom of members to
prescribe, interpret and apply substantive conditions of patentability and
without seeking substantive patent law harmonization or harmonization of
national search and examination.

Australia and the US generally supported reform on the basis of the PCT
road-map.

China said that rather than altering the existing legislative framework of
the PCT, there should instead be improvements in the quality of work of the
International Authorities and provision of additional support to developing
countries. This work should not stand in the way of the independence of
national authorities.

The Philippines acknowledged the need to improve the PCT system, but
stressed the need for further studies and cost-benefit analysis. It also
added that the reform process should not compromise the DA recommendations.

Another agenda item considered by the WIPO General Assembly (GA) was the
report prepared by the Secretariat (WO/GA/38/10) on the Standing Committee
on Information Technology (SCIT). The report contains a proposal for the
SCIT to be replaced by two bodies - the Committee on WIPO Standards (CWS)
and the Committee on Global IP Infrastructure (CGI) - beginning the biennium
of 2010-2011. The proposal says that the Committee "should work
independently and where appropriate prepare proposals and/or activity report
for consideration of the WIPO GA or relevant Assemblies". The CWS would be
convened once a year and the CGI would meet whenever necessary.

The proposal further adds that the mandate of the CWS "would be to continue
work on the revision and development of WIPO standards relating to IP
information" and would in fact do the same work as the previous Working
Group on Standards (SDWG). The mandate of the CGI would be "to discuss
matters concerning global intellectual property infrastructure that do not
fall into the mandate of the CWS. Such matters include development of good
practices, common tools and coherent approaches to various projects for
strengthening international cooperation and interchange of data and
information of intellectual property".

During the GA, while there was some support for establishing these
committees, concerns were also raised over the lack of information and
consultations surrounding the establishment of the new committees and
further clarification was sought on the matter.

Venezuela expressed concern over the lack of consultations on the creation
of new committees, adding that any proposal for new bodies should be based
on the process of equality, be member-driven and must reflect the needs of
all Member States. It also expressed the need for a clearly-defined mandate
for the committees before proceeding further on the matter.

Pakistan asked from where did the recommendation to establish the committees
originate from, whether the proposal had been discussed by Member States,
and what would be the mandate and terms of reference of the committees. It
added that there should first be discussions on what the committees should
do, only then should the committees be set up. Bolivia shared the concerns
raised by Venezuela and Pakistan, adding that the initiative should take
into account DA, in particular, Recommendation 21 that speaks of informal,
open and balanced consultations prior to any new norm-setting activities.

Egypt also sought clarification on the origins of the proposals. It referred
to its Ambassador's opening statement at the WIPO Assemblies (see SUNS #6781
dated 29 September 2009), which called for institutional reform of WIPO. It
said that it would like to discuss reform of WIPO together, rather than
tackle different committees on a piecemeal basis.

Japan sought clarification on whether issues of international patent
classification would be part of the mandate. It also sought clarification of
the potential overlap of the CGI committee with the mandate of existing
committees.

Argentina said that the CWS's mandate should also include follow-up of the
implementation of WIPO Standards, the provision of technical advice and
assistance for capacity-building, the support of IP Offices in undertaking
projects regarding dissemination of IP information and the provision of IP
services to Small and Medium Enterprises (SMEs).

The Director-General of WIPO, Francis Gurry, explained that the SCIT plenary
has not met since 2004 because its mandate pertained to WIPONET and WIPONET
had ceased to exist. Gurry also explained that CWS is nothing new, as it is
the same as the Working Group on Standards and Documentation (SDWG) that
existed under SCIT. He added that "So, all we are doing is to clarify that
since the plenary body does not meet, so we don't call it a Working Group,
since it is not a Working Group. It is just a housekeeping matter".

Gurry said that he was not talking of "norms or legal instruments". The CWS
would deal with technical standards for matters such as the numbering of
industrial property applications, for data exchange or for computer
languages or formats.

On the CGI, Gurry said that it was a committee intended to endeavour to
respond to items that were on the SCIT and that have evolved in the course
of time. He reiterated that it was "merely a housekeeping proposal" and that
the Secretariat was trying to clean up a situation in that there was a
plenary body that has not met. He added that the proposal did not concern
legal norms.

Venezuela pressed for more time to consider the proposals. Pakistan said it
appreciated the Director-General's explanation that the committees do not
have a norm-setting agenda but asked for further clarification as to what
were the recommendations of the Working Groups of the SCIT, when the WG was
scheduled to meet, how did the recommendation for the CGI emerge, and the
recommendation of the Programme and Budget Committee (PBC) on the matter,
since there was a request to remove it from the document at the last session
of the PBC meeting.

Gurry responded by stating that the CGI was being proposed by the
Secretariat (in the absence of a plenary body) to deal with matters that
"[have] slipped through the net", i. e., not dealt with by other committees.
These matters included questions of patent information, the policy of
offices with respect to the commercial or free availability of patent
information, machine assisted translation and software tools for
digitization of industrial property information.

Gurry further explained that there used to be a Permanent Committee on
Industrial Property Information (PCIPI), which was replaced by the SCIT. The
SCIT met a few times and had two WGs, one on standards (SDWG) and another on
IT (ITWG). The latter fell into destitution, although the SDWG met to
produce standards. Gurry further said that WIPO was responsible for
developing elements for the global IP infrastructure, wherein one of its
functions is to coordinate the various initiatives so that they are
compatible from a technical perspective.

In response, Pakistan proposed that while it could support the setting up of
the CWS, the proposal for setting up the CGI should be discussed further in
the next SDWG meeting in October and accordingly, recommendations should be
made to the 2010 GA. Venezuela supported this proposal.

As there was no opposition, Argentina and Pakistan's suggestion was duly
noted and it was decided that the proposal contained in WO/GA/38/10 would be
amended accordingly. The decision on the creation of the CGI was deferred to
the 2010 GA.

With regards to the Development Agenda (DA), the issue of ensuring adequate
resources for implementing the DA and agreeing to a mechanism for
coordination, assessing and monitoring the implementation of the DA
activities was repeatedly raised by developing countries. Yemen, on behalf
of the Asia Group, Ecuador, on behalf of GRULAC (group of Latin American and
Caribbean countries), and Senegal, on behalf of the African Group, stressed
on this point.

Ensuring adequate resources for the DA projects not-yet-agreed-to was a
sticking point during the last PBC meeting on 14-16 September for the
2010/2011 biennium. At issue was that the CDIP meets in November 2009 and
again in April 2010, but the next budgetary meeting is not until July, which
means that projects agreed to in the next two CDIP meetings cannot be
implemented since no budgetary resources will be allocated.

Thus, during the PBC meeting, several countries mentioned the need to ensure
budgetary resources for the DA projects yet to be agreed, which Group B
(composed of developed countries) objected to, claiming that such a practice
was out of order, and that until projects were decided on, funding could not
be decided.

However, on the insistence of developing countries, CHF 2.3 million have
been earmarked for the start-up costs and immediate implementation of DA
projects that will be discussed in upcoming meetings. This is in addition to
the CHF 2.24 million earmarked for implementation of three thematic projects
on DA recommendations 7,16, 19, 20, 23, 24, 27 and 32 agreed to by the CDIP
in April 2009. This is mentioned in the footnote of the Addendum to the PBC
document (A/47/3 Add).

On the coordination, assessing, monitoring and reporting mechanism, Senegal,
for the African Group, said that since implementation of the DA was a
"cross-cutting" issue, without coordination with other WIPO committees, it
was difficult for the CDIP to operate.

[Presently, there are two proposals on the mechanism that are expected to be
discussed at the CDIP meeting in November. The first proposal is by
Pakistan, Algeria and Brazil, while the second proposal is by Group B. For
the proposals, see http://www.wipo.int/meetings/en/details.jsp?
meeting_id=17460]

Sweden, on behalf of the EC, said that it was difficult to support the
creation of any new entity to monitor implementation of the DA. The UK said
that the coordination mechanism must remain resource neutral.

Brazil said that due to the unprecedented nature and multi-faceted proposals
on the DA, the implementation should be the subject of "intensive care",
adding that Members had the challenge of learning by doing, making it
essential that the methodology of implementation and monitoring always
remains open to corrections in a spirit of "path-finding. It added that at
the April session of the CDIP, there was consensus to change the methodology
for implementation of the DA (referring to the "Thematic Projects" approach
adopted).

It further added that the new methodology was initially met with concern by
developing countries for fear that the reorganization of the recommendations
on projects could jeopardize the integrity of the Agenda and that the new
methodology did not allow full discussion on the individual contents of each
recommendation.

It recalled that the new methodology was adopted on the understanding of
"three golden rules": (I) that each recommendation will be discussed
separately at a time prior to the discussions on projects and implementation
activities; (ii) only recommendations that correspond to identical or
similar activities will be under the same thematic group; and (iii) the
implementation is structured in the form of projects and other activities,
on the understanding that additional activities may be proposed.

[The thematic project approach breaks down the 45 recommendations of the
Development Agenda adopted at the 2007 WIPO General Assembly into principles
and actions. The recommendations identified as actions are further divided
into several projects. See SUNS #6692 dated 4 May 2009.]

Brazil further added that it was also necessary to develop, as soon as
possible, mechanisms for quantitative and qualitative assessment of actions
already implemented, especially with regard to cultural change in WIPO. "We
therefore believe that the States should deepen the discussion on ways to
give greater transparency and accountability to the process of hiring
consultants and technical assistance," Brazil said, stressing also the
importance of realigning WIPO with the UN objectives. Brazil also asked that
the budget for the DA presently reflected in the footnote of the PBC
document, be reflected in the main body of the PBC document.

Pakistan initially proposed a decision paragraph (objected to by Germany for
Group B) stating that "The Assembly urges CDIP to finalize its discussions
on mechanism for coordination, monitoring, assessment and reporting of the
Development Agenda recommendations and to report to General Assembly at its
session in September 2010". It said that the rationale for the decision was
that it did not want the discussion to go on forever.

The GA took note of the Secretariat's report contained in WO/GA/38/3 and
agreed that the "General Assembly took note of the report and urged the CDIP
to endeavour to reach agreement on coordination mechanism for monitoring,
assessing and reporting on the implementation of recommendations and report
to the General Assembly at its 2010 session". This decision paragraph was
agreed after consultations between Germany, on behalf of Group B, and
Pakistan.

[Ambassador Trevor Clarke of Barbados, who has been the Chair of the CDIP
since its establishment in 2007, informed the Assembly that he is
withdrawing as the Chair since he is taking up an appointment with WIPO.]

On the agenda item on the Advisory Committee on Enforcement (ACE), Ecuador,
on behalf of GRULAC, stressed the importance of WIPO as the forum for
discussing and developing standards, principles and procedures relating to
IP. It added that combating IPR infringements can only be considered
effective if it is sustainable in the long term, and thus it was necessary
to take into account all dimensions, which is complex and involves
consideration of the economic and social order.

It added that to promote respect for IP, the strategies employed should go
beyond repressive strategies. It further said that in future, the ACE should
seek to identify elements that give rise to violations of the rights in this
area and deliver experiences on the ways in which these elements can be
addressed in practice in a balanced way, in order to promote sustainable
respect for IP. It also stressed that future discussions on enforcement
should be based on Recommendation 45 of the DA.

Sweden, on behalf of the EC, requested WIPO to step up its activities, in
particular, technical assistance in the area of IP enforcement. The US
stressed on contributions of and costs to right-holders/private sector in
enforcement.

Egypt recalled that at the last session of the PBC, there was agreement that
an item on the Global Congress on Combating Counterfeiting and Piracy would
be included in the agenda of the ACE, which will be meeting in November. It
asked for that agreement to be reflected in the GA report.

The General Assembly took note of the Secretariat's report WO/GA/38/4 and
approved Egypt's suggestion. +