6 November 2014
WIPO’s Standing Committee on the Law of Patents (SCP) is currently engaged in informal discussions on the future work program of the Committee which includes: 1) exceptions and limitations, 2) quality of patents (including opposition systems), 3) patents and health, 4) confidentiality of communications between clients and their patent advisors, 5) transfer of technology and 6) the impact of the patent system in developing countries and LDCs. On Wednesday evening, 5 November 2014, the Secretariat prepared an informal non-paper containing a non-exhaustive list of proposals by Member States on the six themes. According to informed sources, talks have bogged down on the issue of confidentiality of communication between clients and patent advisers. Group B has requested the Secretariat to prepare a study on determining:
(i) obstacles to expand the types of professionals covered by client-attorney privilege; (ii) any differences with respect to the treatment between national and foreign patent advisors, and if so, obstacles to eliminate such differences.
The ultimate goal of proponents is to “develop a non-binding soft law instrument (ex. WIPO Recommendation, non-binding model law, non-binding guidelines) to address cross-border aspects of the confidentiality of advice by patent advisors.”
On limitations and exceptions, some of the asks include:
- Exceptions and limitations manual
- Detailed description of compulsory licensing cases and the elaboration of “fair and reasonable” remuneration
In terms of quality of patents, WIPO will prepare a study on inventive step and another study on sufficiency of disclosure.
Some developing countries have asserted that the Committee must define “quality of patents” prior to conducting any further work on quality of patents (including work sharing).
Two of the asks on work sharing (heavily supported by Group B countries) include:
- Study on impediments to carry out work sharing and potential measures at the international level to overcome the challenges
- Study on whether, under which circumstances and how international work sharing (various work sharing initiatives, tools (ex. WIPO CASE), work products) could assist the cooperating offices in carrying out search and examination more efficiently and in granting high quality patents
In terms of opposition systems, Pakistan called upon the WIPO Secretariat to prepare a “compilation of models of opposition systems and other administrative review mechanisms in an exhaustive manner, including the proceedings where parallel cases are brought before the competent administrative body and court.”
In the discussions of patents and health, as a counterweight to India’s call for an in-depth study/analysis/discussions on disclosure of INN, the United States of America submitted the following proposals:
- Evaluate how best to develop and implement a tool for the automatic identification, extraction and indexing of data from patent documents for chemical compound search.”
- Study on how work sharing and international collaboration may facilitate search and examination of pharmaceutical patents
Among the thirty-odd proposals tabled by Member States, the Chair (Mokhtar Warida, Egypt) will harvest these proposals (separating the wheat from the chaff) into a shorter list based on the priorities expressed by the regional groups and Group B. The plenary is expected to resume on Friday, 7 November 2014 at 10 AM. Stay tuned to see how this all ends.
SCP/21 Future Work: Proposals by Member States
(Non-exhaustive list)05/11/2014 21h00
Exceptions and limitations
– Analysis of the effectiveness of exceptions and limitations to address development concerns
– Exceptions and limitations manual
– Detailed description of compulsory licensing cases and the elaboration of “fair and reasonable” remuneration
– Further case studies on implementation of exceptions and limitations in Member States
Quality of patents
– Dedicated webpage relating to work sharing
– Annual conference on international work sharing and collaboration to share national/regional experiences
– Study on impediments to carry out work sharing and potential measures at the international level to overcome the challenges
– Compilation of models of opposition systems and other administrative review mechanisms in an exhaustive manner, including the proceedings where parallel cases are brought before the competent administrative body and court
– Study on whether, under which circumstances and how international work sharing (various work sharing initiatives, tools (ex. WIPO CASE), work products) could assist the cooperating offices in carrying out search and examination more efficiently and in granting high quality patents
– Define “quality of patents” before conducting any work
– Questionnaire on quality of patents
– Technical assistance/capacity building with respect to patent search and examination
– Study on inventive step – AGREED at SCP/20
– Study on sufficiency of disclosure – AGREED at SCP/20
Patents and Health
– Activities consisting of studies, information exchange and technical assistance in order to make full use of flexibilities
– Study on the positive impact of patent systems in providing lifesaving medicines to developing countries
– Study on the availability of lifesaving medicines that are not protected by patents, and the reasons for their lack of availability
– Study on the relationship between patent systems and availability of medicines in developing countries and LDCs
– Evaluate how best to develop and implement a tool for the automatic identification, extraction and indexing of data from patent documents for chemical compound search
– Study on how work sharing and international collaboration may facilitate search and examination of pharmaceutical patents
– In-depth study/analysis/discussions on disclosure of INN
– Study on Markush claims
– Study on the impact of exhaustion of rights on accessibility, quality and price of medicines
Confidentiality of communications between clients and their patent advisors
– To develop a non-binding soft law instrument (ex. WIPO Recommendation, non-binding model law, non-binding guidelines) to address cross-border aspects of the confidentiality of advice by patent advisors
– Invite proposals from Member States and continue discussions
– Questionnaire by the Secretariat asking: (i) obstacles to expand the types of professionals covered by client-attorney privilege; (ii) any differences with respect to the treatment between national and foreign patent advisors, and if so, obstacles to eliminate such differences
– No discussions at the SCP
Transfer of technology
– Compilation of information on national/regional regulations, guidelines, practices and jurisprudence regarding voluntary licenses
– Further study on the failure in technology transfer arising from the patent system
The impact of the patent system in developing countries and LDCs
– Preparation by the Secretariat of draft modalities and terms of reference for the revision of the Patent Model Law for Developing Countries and LDCs