[Ip-health] Bridges Weekly: WIPO Patent Committee Agrees on Issues for Future Work

Thiru Balasubramaniam thiru at keionline.org
Wed Oct 20 22:25:08 PDT 2010


Bridges Weekly Trade News Digest • Volume 14 • Number 36 • 20th  
October 2010

WIPO Patent Committee Agrees on Issues for Future Work

The World Intellectual Property Organization’s main patent committee  
last week reached an agreement on issues to be addressed in its future  
work. The future work agenda for the Standing Committee on the Law of  
Patents (SCP) will cover a number of issues, such as exceptions and  
limitations to patent rights; quality of patents, including opposition  
systems; patents and health; client-patent advisor privilege and  
transfer of technology.

The accord, which was reached late Friday evening after a week of  
discussions and informal consultations, was hailed as a balanced  
outcome as it included issues of interest to both developed and  
developing countries.

The accord marked the first time that the issue of ‘patents and  
health’, which was brought forward by the African group,  was formally  
made an independent item on the work programme of WIPO’s principal  
patent body.

The quality of patents was a topic proposed by developed countries.  
They suggested in their proposal that the SCP 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”.  Their proposal also  
noted “the objectives of the patent system are to promote innovation  
and foster technological and economic development” and stressed “the  
importance of a well functioning patent system for countries at all  
levels of development.”

Developing countries belonging to the Development Agenda Group  
(Algeria, Brazil, Cuba, Djibouti, Ecuador, Egypt, Guatemala, India,  
Indonesia, Iran, Malaysia, Pakistan, the Philippines, South Africa,  
Sri Lanka, Sudan, Uruguay, and Yemen) were keen to establish a work  
programme on ‘limitations and exceptions’ to patent rights. Brazil  
called for the creation of such a  work programme in the SCP in  
January 2010, arguing that limitations and exceptions to patent law  
were essential to strike an appropriate balance between patent- 
holders’ rights and public welfare.  They also pressed for the  
inclusion of technology transfer in issues to be addressed in future  
work, a demand that developed countries accepted reluctantly.

The SCP agreed to include four more issues in a ‘non-exhaustive list  
of issues’ it had established in 2008 and which will remain open for  
further discussion at its next session, scheduled for May 2011. The  
four issues are: the impact of the patent system on developing  
countries and LDCs; patents and food security; the strategic use of  
patents in business; and enhancing the IT infrastructure for patent  

During its week long deliberations, the SCP also discussed the issue  
of patents and standards as well as a study on “exclusions from  
patentable subject matter and exceptions and limitations to patent  
rights” coordinated by Lionel Bently, a Cambridge University  
professor, and authored by a group of academics from Australia, India,  
Brazil, South Africa and Canada. The SCP had decided at its March 2009  
session that the Secretariat would commission such a study.

Discussions on the study led to a vivid exchange among participants.  
The representative of the International Chamber of Commerce (ICC)  
cautioned “against any activity at the national or international level  
to broaden exclusions from patentability - such that the exception  
swallows the general rule.” The ICC thinks that broadening limitations  
and exceptions would undermine the functioning of patent systems as a  
whole. He argued that instead of limitations and exceptions to patent  
rights, “negotiations with rights holders on licensing are usually a  
better tool to obtaining policy objectives like improved healthcare,  
food security and tackle climate change.”

Thiru Balasubramaniam, the representative of Knowledge Ecology  
International (KEI), recommended that the SCP request the WIPO  
secretariat to “produce a comprehensive report documenting the use of  
compulsory licensing by Member States including providing empirical  
data on the royalty rates set in each case, as policy makers have long  
expressed interest in state practices in setting royalty rates.”

One matter of open disagreement was the interpretation of relevant  
provisions of the WTO Agreement on Trade-related Aspects of  
Intellectual Property Rights (TRIPS) in relation to exclusions from  
patentable subject matter and exceptions and limitations to patent  
rights. The ICC representative said that studies in this area lacked  
rigour. The ICC feels that patents in all fields of technology play a  
critical role in encouraging research and development and technology  
transfer, he argued, and suggestions that there is uncertainty about  
what deserves patent protection “run counter to this role.”

Development Agenda Group countries, for their part, recalled that  
discussions at the SCP should never lose sight of the “fundamental  
trade-off at the root of the patent system”: the temporary waiver  
granting of exclusive rights to inventors for their inventions, in  
return for the public dissemination of the technology contained in  
that innovation.

Developing countries also pointed to the margin of interpretation of a  
number of TRIPS provisions that can be invoked in determining the  
scope of patentability, exclusions and the application of  
patentability criteria. One developing country solicited the views of  
the WTO secretariat on the issue. However, the WTO official present  
indicated that the secretariat had no mandate to provide  
interpretations of the TRIPS agreement, a matter left to WTO member  

In a press release, WIPO Director General Francis Gurry expressed  
“satisfaction about the progress achieved and highlighted the  
importance for WIPO to be able to offer a consensus-based and a  
multilateral forum to all member states for patent-related matters. ”

Although the accord on future work represents a positive development,  
it remains unclear whether the upcoming discussions in the SCP will be  
able to set it on a path towards the committee’s original function of  

ICTSD reporting.


Thiru Balasubramaniam
Geneva Representative
Knowledge Ecology International (KEI)
thiru at keionline.org

Tel: +41 22 791 6727
Mobile: +41 76 508 0997

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