[A2k] WIPO patent committee engaged in heated talks on work sharing, limitations & exceptions, client confidentiality

Thiru Balasubramaniam thiru at keionline.org
Thu Nov 6 22:46:36 PST 2014


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."


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)

   - 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


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