The Fourth Session of WIPO’s Committee on Development and Intellectual Property (CDIP) is 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’s 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’s 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) 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 (“orphan works”), 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; “Exclusions from Patentable Subject Matter and Exceptions and Limitations to the Rights” and “Dissemination of Patent Information” (SCP 13/3 and 13/5).” 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®, 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.