After a hiatus of three years, the WIPO Standing Committee on the Law of Patents (SCP) met for its 12th session on June 23, 2008 to June 27, 2008. Given the collapse of the talks to initiate a Substantive Patent Law Treaty (SPLT) to harmonize patent law with respect to prior art, novelty, inventive step and grace period, even the most prescient of WIPO watchers were at a loss in prognosticating the outcome of the WIPO SCP. In 2007, informal consultations of the WIPO SCP were not able come to consensus on deciding upon a work program for the WIPO patent committee.
As a result the the WIPO General Assembly (2007) instructed the International Bureau to
establish a report on issues relating to the international patent system covering the different needs and interests of all Member States, which would constitute a working document for the next session of the SCP. The Report would contextualize the existing situation of the international patent system, including reference to the WIPO Development Agenda process, and would contain no conclusions.
Under the stewardship of the Chair (Maximiliano Santa Cruz, Chile), and his two Vice-Chairs (Mr. Yin Xintian, China) and (Bucura Ionescu, Romania) working in concert with the International Bureau, this meeting bore witness to the flexibilities displayed by Member States including Bolivia, Brazil, Chile, China, the European Union, Egypt, India, Pakistan, Singapore and Switzerland to ensure that the WIPO patent committee embrace a positive agenda. This positive agenda is evidenced in the Summary by the Chair(SCP/12/4 Rev) posted by WIPO on June 27, 2008. It should also not be forgotten that during the patent committee interregnum, the International Bureau launched a series of patent symposiums that covered a range of issues including the research exemption and patents and standards.
Despite strong signals sent by Group B countries (rich countries) early on in the Committee that left no doubts that patent harmonization was foremost on their agenda, the conclusion of the meeting took a different turn, a balanced outcome that gave something to developed countries and developing countries, users and right holders alike.
The Summary By Chair (SCP/12/4 Rev) noted:
7. Many delegations recognized that that document was covering a wide range of issues relating to the patent system and constituted a good basis for discussion. Mindful of the mandate given to it by the WIPO General Assembly in 2007, and thus working towards a work program, the SCP identified a non-exhaustive list of issues for further elaboration and discussion in the future, which appears in the Annex to this document.
8. Following a proposal by the Chair, the Committee
(a) agreed that document 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 until the end of October 2008, which would reflect those comments in footnotes or annexes to document SCP/12/3;
(b) decided that the list of issues referred to in paragraph 7 would remain open for further elaboration and discussion at the next session of the SCP;
(c) asked the WIPO Secretariat to establish, for the next session of the SCP, preliminary studies on four issues. These four issues, which are not to be considered prioritized over the other issues contained on the list referred to in paragraph 7, are the following:
– Dissemination of patent information (inter alia the issue of a database on search and examination reports);
– Exceptions from patentable subject matter and limitations to the rights, inter alia research exemption and compulsory licenses;
– Patents and standards;
– Client-attorney privilege;(d) suggested that, in the framework of the SCP and, where relevant, also with other WIPO bodies, the 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 on certain areas of public policy, such as health, the environment, climate change or food security;
(e) decided that the members of the SCP could submit suggestions on the future work program of the SCP to the Secretariat.
The fact that the WIPO patent committee has decided to request the International Bureau studies on “exceptions from patentable subject matter and limitations to the rights, inter alia research exemption and compulsory licenses” and “patents and standards” is testament that the WIPO of 2008 is not the WIPO that invoked “Intellectual Property as a Power tool for Development”.
Here below is the Annex to the Summary by the Chair which lists the eighteen non-exhaustive list of issues for further elaboration and discussion in the future. This list includes such topics as “Economic impact of the patent system, Alternative models for innovation, Patents and health (including exhaustion, the Doha Declaration and other WTO instruments, patent landscaping) and Relation of patents with other public policy issues.”
Please be mindful that the deadline for written submissions on the WIPO Report on the International Patent System is at the end of October 2008. Member States and accredited observers may make written submissions. The date of the next WIPO committee meeting is set for the first quarter of 2009, most likely in February.
LIST OF ISSUES
(in the order of their appearance in document SCP/12/3)
Economic impact of the patent system
Transfer of technology
Competition policy and anti-competitive practices
Dissemination of patent information (including the registration of licenses)
Standards and patents
Alternative models for innovation
Harmonization of basic notions of substantive patentability requirements (e.g. prior art, novelty, inventive step, industrial applicability, disclosure)
Disclosure of inventions
Database on search and examination reports
Opposition system
Exceptions from patentable subject matter
Limitations to the rights
Research exemption
Compulsory licenses
Client-attorney privilege
Patents and health (including exhaustion, the Doha Declaration and other WTO instruments, patent landscaping)
Relationship between the patent system and the CBD (Genetic resources/Traditional knowledge/disclosure of origin)
Relation of patents with other public policy issues
[End of Annex and of document]