[A2k] WIPO: Exclusions, Exceptions and Limitations Dominate Patents Talks

Sangeeta ssangeeta at myjaring.net
Mon Oct 18 12:04:28 PDT 2010

Title : TWN IP Info: WIPO: Exclusions, Exceptions and Limitations Dominate
Patents Talks
 Date : 18 October 2010


TWN Info Service on Intellectual Property Issues (Oct10/06)
18 October 2010
Third World Network

Dear Friends,
Please find below a news report on discussions that took place that the
recent WIPO Committee on patents.
Sangeeta Shashikant
Third World Network
WIPO: Exclusions, Exceptions and Limitations Dominate Patents Talks
 (Heba Wanis, Geneva)
Geneva, 14 Oct (Heba Wanis) -- Discussions on exclusions from patentable
subject matter and exceptions and limitations to patent rights dominated the
start of the fifteenth session of the Standing Committee on the Law of
Patents (SCP) of the World Intellectual Property Organization (WIPO), which
is meeting here from 11-15 October.
The agenda of the fifteenth session follows the agenda of the last SCP
session, as no agreement could be reached at that meeting on the future work
programme of the Committee.
Thus, the fifteenth SCP session will consider issues that were discussed at
the fourteenth session such as patents and standards, client-attorney
privilege, dissemination of patent information, transfer of technology,
opposition systems, exclusions from patentable subject matter, and
exceptions and limitations (E&L) to patent rights.
The issue of exclusions from patentable subject matter and E&L to patent
rights has gained particular prominence as an agenda item due to a proposal
on E&L to patent rights tabled by Brazil at the last SCP session in January,
as well as six expert studies on the subject commissioned by the
Secretariat. The Brazilian proposal and the expert studies are the subject
of discussion at this SCP session.
Developing countries consider the topic of exclusions and E&L to patent
rights as having special importance from a development perspective, in
particular, in bringing more balance to the patent system, as well as to the
discussions in WIPO that are about increased IP (intellectual property)
protection for the right-holders.
Several developing countries also further underlined the need to discuss
modalities to implement the requirements of the "Coordination Mechanisms and
Monitoring, Assessing and Reporting Modalities" in respect of the
implementation of the Development Agenda (DA) recommendations, recently
approved by the WIPO General Assemblies. (WO/GA/39/14 Prov., para. 68).
As per the requirement of the mechanism, the SCP is "to include in their
annual report to the Assemblies a description of their contribution to the
implementation of the respective Development Agenda recommendations" and "to
identify the ways in which the DA Recommendations are being mainstreamed in
their work".
On the first day of the SCP session, several opening statements were
followed by a presentation by Professor Lionel Bently from the University of
Cambridge, who is the coordinator of the six "Expert studies on Exclusions
from Patentable Subject Matter and Exceptions and Limitations to the
[The expert studies were requested at the thirteenth SCP session (March
2009) wherein it was decided that the Secretariat would "commission external
experts [to conduct] a study on exclusions, exceptions and limitations
focussed on, but not limited to, issues suggested by members, such as public
health, education, research and experimentation and patentability of
life-forms, including from a public policy, socioeconomic development
perspective, bearing in mind the level of economic development." At the
fourteenth SCP session (January 2010), more elaborated terms of reference
were announced. (See SCP/14/INF/2)].
In their opening statements and various specific comments, developing
countries generally expressed concerns that the expert studies lacked
adequate analysis and did not take into account geographic representation of
jurisprudence and the different levels of development, as required in their
terms of reference.
Developing countries were also supportive of Brazil's proposal on E&L to
patent rights wherein Brazil had proposed a three-phase work programme.
According to the Brazilian proposal, the first phase is to "promote the
exchange of detailed information on all exceptions and limitations
provisions in national or regional legislations, as well as on the
experience of implementation of such provisions, including jurisprudence"
and would "also address why and how countries use - or how they understand
the possibility of using - the limitations and exceptions provided in their
The second phase, according to the paper, "shall investigate what exceptions
or limitations are effective to address development concerns and what are
the conditions for their implementation" including "evaluate how national
capacities affect the use of exceptions and limitations". In the third
phase, Brazil proposes "elaboration of an exceptions and limitations manual,
in a non-exhaustive manner, to serve as a reference to WIPO Members".
In the proposal, Brazil also outlines its motivations for a work-programme
on E&L to patent rights. It recalls that the focus of the current IP system
heavily lies on ensuring the rights of the IP holders, adding that while
their claims are legitimate, they are incomplete from the perspective of
public policy. It further says that there is palpable convergence among
Members as to the importance of exceptions and limitations and yet the
existence of different approaches to limitations and exceptions may cause
uncertainties on policy spaces used by Members regarding why and how they
are being used, if so, and how they are linked to innovation policies or
addressing public health, nutrition, or environmental concerns.
The proposal also relates to Brazil's experience on the difficulty in making
effective use of compulsory licenses. It said: "Our pharmaceutical industry
took almost two years to develop and produce the licensed patent, because,
unfortunately, the patent, as granted in Brazil and in other countries, was
not sufficiently revealed to allow its production as promptly as desired".
It further states that the systemic importance of having well-functioning
provisions of limitations and exceptions in national or regional
legislations and the concerns raised by the limited use of limitations and
exceptions by developing countries have led to the proposal for a work
programme on E&L (to patent rights) in the SCP to enable a wide and
sustained debate on this issue.
In its opening statement at the SCP session, Brazil, on behalf of the
Development Agenda Group (DAG, comprising a number of like-minded developing
countries), said that "reaching an agreed work programme continues to be a
desirable goal", and that Member States must "move towards identifying broad
areas of common interest and start focussing on those areas" to reach this
 It highlighted two elements that are of "vital importance" in reaching
agreement on a work programme in the SCP.
The first element, according to Brazil, is based on the fact that patents
are a "temporary waiver of competition rules by which government authorities
grant inventors exclusive rights for the economic exploitation of their
technical innovation in return for the public dissemination of the
technology contained in that innovation". In the interests of "balancing the
interests of the inventor and those of society at large", said Brazil, "one
of the major tasks of the SCP is precisely to make sure that the two
elements of the trade-off are not off-balance".
The second element that Brazil mentioned is that the "thematic approach to
studies and discussions should not be seen as an end in itself. It is a
first and necessary step to better understanding the specifics of all the
issues involved. However, discussions on different aspects of patent law
will have to progressively cover and eventually become integrated into
clusters of elements of a common work programme".
"We are not proposing, to be sure, any degree of harmonisation of
substantive patent law, but rather simply restating the fact [that] there
are clearly established interconnectedness among different clusters of
topics in patent law", Brazil said.
With regard to the studies presented at this session of the SCP, Brazil
stressed that "all studies submitted to the SCP, be they prepared by the
Secretariat or commissioned to external experts, must be of high quality and
balanced", and that one "major concern" to the DAG is that "all studies must
adequately reflect development considerations".
Brazil also recalled that the SCP is the "first intergovernmental body at
WIPO that meets after the recently-concluded General Assemblies, during
which Member countries approved coordination mechanisms and monitoring,
assessing and reporting modalities, for the implementation of the
Development Agenda. The mainstreaming of the Development Agenda
recommendations into the substantive work, debates and studies in the SCP is
an indispensable ingredient for progress to be made".
Referring to the agreed mechanisms, Brazil said that Member States "must as
soon as possible start discussing how this Committee will report to the
General Assembly on the implementation of the Development Agenda".
On the issue of E&L to patent rights and the expert studies, Brazil, on
behalf of the DAG, said that a correct understanding of the issue of
exceptions and limitations "shall surely help WIPO Members to calibrate
their national IP systems in order to achieve the fundamental trade-off of
patents, that is, guarantee the monopoly of a given product or process in
order to stimulate, not stifle, innovation". Brazil pointed out that the
"seeming favouring of exceptions over exclusions is not coherently
explained" in the studies. "There is no conflict between exclusions and
exceptions; they are complementary tools necessary to assure the systemic
equilibrium and the policy space that countries need to achieve their
development", it added.
Brazil proposed that Member States' comments be collated as an Addendum
document to the studies, adding that such cross-referencing would provide
"fuller understanding of Member States' perspectives" on these issues.
[This proposal however faced resistance from Group B (composed of developed
countries), which argued that it is not an SCP practice, and that it is not
compliant with WIPO's policy on languages, particularly in terms of the size
of documents requiring translation. India and Bolivia, on the other hand,
provided evidence of precedence in the Committee on Development and
Intellectual Property (CDIP) and the SCP of having Addendum documents with
Member States' comments. Egypt stressed that WIPO's policy on languages
should not affect the substantive work of the organisation, while Brazil
noted that WIPO's policy on languages is not yet in effect, since it will
start only in 2011, and that there is no limitation to the size of documents
submitted by Member States.]
With regard to the Brazilian proposal, the DAG expressed hope that the
"Proposal shall be promptly implemented, for the establishment of such
working programme would be an important step in the implementation of the
Development Agenda".
Angola, on behalf of the African Group, pointed out that the expert studies
must take into account social and economic realities, the different levels
of development and differences between the national legal systems of
countries. It further said that the patent system should facilitate
technology transfer and access to knowledge, adding that transfer of
technology should be "user-friendly and development-oriented", being an
important element of the cooperation between WIPO and developing countries,
in particular LDCs (least developed countries).
It suggested that the preliminary study on transfer of technology (SCP/14/4)
be updated to include information on how developing countries can overcome
impediments to transfer of technology, adding that capacity-building was an
important element for the transfer of technology. It should also be "revised
in a manner to establish a link between transfer of technology, development
and intellectual property, and to define the role of the patent system in
transfer of technology", Angola said, stressing that the role of
multilateral and bilateral agreements on transfer of technology as well as
how the patent system could affect and support transfer of technology,
should also be added.
It also requested a study on the transfer of technology to LDCs in Africa in
the context of implementation of Article 66.2 of the TRIPS Agreement, which
requires developed countries to provide incentives to their enterprises for
the purpose of promoting transfer of technologies to LDCs that are WTO
members. On patent opposition systems, Angola said it was important to leave
the right to national authorities to define the criteria for opposition
systems based on national legal systems and domestic laws.
It also proposed adding two new issues to the agreed non-exhaustive list of
issues, i. e. the "Impact of the Patent System on Developing Countries and
LDCs" and "Patent and Food Security".
On the issue of client-attorney privilege, Angola stressed the importance of
"clarifying concepts and definitions of the practices relating to the
client-attorney privilege in different countries and their implications",
and also supported the idea for more analysis of the issue. It added that
the issue should be addressed at the national level due to the territorial
nature of patents. It supported the idea that the Secretariat engage in
further studies for more analysis of this issue. Angola also voiced support
for the three-phase work programme proposed by Brazil in its proposal on
exceptions and limitations to patent rights.
Mexico, on behalf of the Group of Latin American and Caribbean Countries
(GRULAC), supported the Brazilian proposal as a good basis for a
constructive discussion.
India said that "exceptions and limitations to IP rights are very important
issues for India, since these have a direct relevance on promotion of public
policies, access to knowledge, access to educational resources, public
health goals, transfer of technology and participation in the global
knowledge economy". It supported the proposal by Brazil on exceptions and
limitations to patent rights, saying that it "would contribute to
meaningfully advancing the deliberations on this issue" in the SCP.
Egypt said that it attached importance to E&L (to patent rights) and the
transfer-of-technology studies, which it viewed as directly related to
developing countries and to the DA recommendations. It also recalled the
importance of exploring the means of preparing reports on the SCP's
implementation of the Development Agenda for the next WIPO General Assembly.
South Africa reiterated the "importance of a balanced approach between
intellectual property rights and public use". It said that the key to
success in dealing with exceptions and limitations (to patent rights) is to
"take into account the different levels of development of Member States and
on how these countries could utilise and/or exploit exceptions and
limitations in their respective countries". It supported the Brazilian
proposal on exceptions and limitations to patent rights, saying that it
"resonates with our position on approaching the issue of exceptions and
limitations on intellectual property rights in a holistic manner".
On the issue of transfer of technology and dissemination of patent
information, South Africa said that they were of high priority in the
context of building capacity at the national level, and hoped that the SCP
will "continue intensifying its work in these areas with the view of
bringing out the socioeconomic and development dimensions".
Referring to the expert study concerning biotechnology, Bolivia pointed out
that the study did not follow the terms of reference agreed to by the SCP.
It added that the study could have provided more information on exclusions
from patentability being considered in some countries. It was disappointed
that the study did not include a reference to Bolivia's official
communication to the WTO TRIPS Council on the Review of Article 27.3(b)
wherein it had proposed a prohibition on the patenting of life forms.
Iran pointed out that norm-setting activities in the SCP should be
"balanced, dynamic, holistic and all embracing, and more importantly,
development-friendly". Iran said that Member States should "determine an
effective methodology for reporting on the SCP contribution to the
mainstreaming of the Development Agenda", and welcomed the Secretariat's
initiative to "develop a cross-cutting unified methodology for reporting
mechanism for all Committees", which it said should "reflect the
contribution of different Committees to development, as well as the views
and concerns of Member States regarding their expectations on mainstreaming
the Development Agenda in all areas of WIPO's work".
With regard to the expert studies, Iran was of the view that there were
"dangers" in shifting from exclusions to exceptions, adding that "exclusions
and exceptions are complementary tools, necessary to assure the systemic
balance and preserve the policy space for countries to achieve development"
and thus, could not substitute each other.
Belgium, on behalf of the European Union (EU), found the expert studies to
be excellent and comprehensive, and stressed that E&L (to patent rights)
should not be discussed to the detriment of other issues on which the SCP
focuses, adding that a more balanced approach is desired in this Committee.
It also expressed its "strong commitment to the global harmonisation of
patent law" through the SCP.
Much of the second and third days of the SCP session were spent in informal
consultations over the future work of the SCP.
As regards the future work of the SCP, Group B (composed of developed
countries) has put forward informally a proposal to "establish a work
program elaborating options, measures and conditions, both legal and
practical, that would be required to ensure and, where necessary improve,
the issuance of high-quality patents".
It further proposes several steps to achieve the objective of "high quality
patents", namely: (a) Exchange of information on laws and practices applied
in member countries relating to the quality of patent application and
patents (such as database on search and examination reports, dissemination
of patent information, substantive patent law/inventive step); (b)
identification of those measures that are particularly suitable to guarantee
and improve the quality of patents worldwide; and ( c) elaboration of
recommendations in respect of such legislative and practical measures for
the benefit of WIPO members.
Determining a future work programme for the SCP is likely to consume the
remaining time of the SCP session. +

More information about the A2k mailing list