[Ip-health] TWN IP Info: WIPO – US seeks to limit work on patent flexibilities

Thiru Balasubramaniam thiru at keionline.org
Wed Oct 2 04:43:19 PDT 2013


*Title :* TWN IP Info: WIPO – US seeks to limit work on patent flexibilities
*Date :* 02 October 2013

*WIPO: US seeks to limit work on patent flexibilities*

Geneva, 2 Oct (Alexandra Bhattacharya) – The United States does not support
a focus by the World Intellectual Property Organization (WIPO) on patent
flexibilities, an issue that developing countries consider to be central to
their development concerns.

This divergence emerged at the current session of the WIPO General
Assemblies taking place in Geneva from 23 September to 2 October.

WIPO’s work on patent flexibilities, including on exceptions and
limitations to patent rights, has long been encouraged by developing
countries participating in WIPO’s Standing Committee on the Law of Patents
(SCP). In recent years proposals have been submitted by the Development
Agenda Group of several developing countries, the Africa Group and Brazil
to deepen analysis on patent flexibilities, which they consider to be
central to development concerns.  A work program had been agreed on at the
last session of the SCP in February 2013 after intense consultations on the
following topics: (i) Exceptions and Limitations to Patent Rights; (ii)
Quality of Patents, including Opposition Systems; (iii) Patents and Health;
(iv) Confidentiality of Communications between Clients and their Patent
Advisors; and (v) Transfer of Technology.

However, not all WIPO delegations were agreeable to enhancing of WIPO’s
work on patent flexibilities. In a lengthy intervention at the Assemblies
on 26 September on the agenda item on the SCP, the US expressed its
intention to limit WIPO’s work on patent flexibilities.

Its sentiment was not shared by developing countries that intervened on the
agenda item. Instead they called for more work to be undertaken on the
topics of exceptions and limitations to patent rights, the relationship
between patents and health, and the improvement of patent quality.

*The US* in its intervention said that it "did not support focusing on
exceptions and limitations to patents rights without also having a strong
component focused on substantive patent rights". It further welcomed a
further discussion on the quality of patents particularly on work sharing
programs amongst intellectual property (IP) offices, which result in
“greater quality and efficiency”.

[The US policy on IP is well known, striving for maximalist IP protection
in bilateral and regional trade agreements as well as bilateral investment
agreements, way beyond the requirements of the World Trade Organization’s
agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS).
It also asserts considerable unilateral pressure on developing countries
for the same end.]

On the topic of patents and health, the US said it did not believe that
flexibilities were the exclusive solution to the public health problems
facing developing countries and least developed countries, adding that a
combination of novel, voluntary licensing arrangements such as patent
pools, advanced market commitments in global funding and innovative
capacity building were a more effective solution. It also said that it did
not support any normative work in this area and opposed the production of
recommendations by Member States or the Secretariat. In stressing the
importance of a strong IP regime, the US instead supported an information
sharing session with regard to health related flexibilities.

[In 2011, the Development Agenda Group and Africa Group submitted a paper
containing a detailed work program on the topic of patents and health. See
SCP/16/7.]

The US also stressed that it opposed the development of a technical
assistance module on TRIPS flexibilities, stating that the World Trade
Organization had the appropriate mandate to undertake this work.

With regard to the work to be carried out by the Secretariat on the
identified exceptions and limitations for the next session of the SCP, the
US cautioned that it should not involve any evaluation or analysis by the
Secretariat. On the issue of transfer of technology, it said that, “any
work must address IPR incentives as well as any potential impediments”
adding that it is not acceptable to carry out work on "alleged impediments".

*Belgium speaking on behalf of Group B (composed of developed countries)* also
stressed on discussing work-sharing programs amongst patent offices and the
use of external information for search and examination as a means of
improving the quality of patents. It emphasized the issue of
Confidentiality of Communications between Clients and their Patent Advisors.

*Lithuania, on behalf of the European Union *signaled the Group's
commitment to all topics of the SCP work program but placed emphasis on the
quality of patents and opposition systems as well as client-patent attorney
privilege.

*India* in its intervention said that the quality of examination of patent
applications needed to improve substantially so as not to create great
social costs from granting patents to insignificant improvements which only
lead to litigation and create barriers for technology dissemination.

On Group B including the US’s focus on work sharing as a means to improve
quality of patents, India stressed that work sharing programs cannot be a
panacea to address backlog and improve the quality of patents. Work sharing
can adversely affect the capacity of offices in developing countries to
assess applications and this should not be an area for norm setting in the
future, India added.

India also called for a study on the various impediments in licensing
agreements relating to the transfer of technology so that appropriate steps
could be taken to address this.  It also voiced support for the information
sharing session on health related patent flexibilities during the next
session of the SCP.

*Brazil *at the outset said that it was satisfied with the development of
work in the SCP.  It pointed to studies, including by WIPO, that shows in
the last 50 years there has been a surge in patent filings in industrial
property offices all over the world, adding that such a surge poses a
challenge for industrial property offices such as Brazil’s National
Industrial Property Institute that undertake substantive patent
examinations, particularly with respect to human resources and
technological infrastructure in order to ensure a high quality of patents
and keeping the backlog at a tolerable level.

Brazil emphasized that patents of high quality were key to reaching the
objectives of patent protection, that is, the contribution to technological
innovation and transfer and dissemination of technology to the mutual
advantage of producers and users of technological knowledge and in a manner
conducive to social and economic welfare and a balance of rights and
obligations. In this context, the first step in the discussion could be the
exchange of information regarding access to patent databases in line with
the shared objective of continuously raising patent quality.  Brazil added
that the access to search information was helpful in enabling examiners to
carry out search and examination with adequate quality as long as the
flexibility in access and use of the databases is maintained. It pointed
out that some countries face obstacles in accessing these databases and it
would be useful to explore the reasons behind this.

Brazil also underscored the importance of exceptions and limitations for an
adequate and balanced patent system. It added that flexible policy space
was necessary in order to allow Member States to develop and adapt a set of
exceptions and limitations adequate for their realities, emphasizing on the
need to investigate which exceptions and limitations were more effective to
address development concerns. It further highlighted that the use of
exceptions and limitations in IP systems was a core value of the
Development Agenda.

[During the 19th session of the SCP Brazil submitted a proposal on
exceptions and limitations in which it suggested that the WIPO secretariat
“prepare an analysis of Exceptions and Limitations which are most commonly
used by Member States” and “a one-day seminar to be held at the next
session of the SCP.” The seminar would include a presentation by the
secretariat on the analysis, a presentation by the chief economist on the
effectiveness of these flexibilities, and presentations from member states
on their experiences using exceptions and limitations. Brazil is also a
member of the Development Agenda Group.]

It also expressed support for the DAG and African Group proposal on Patents
and Health.  It stressed that providing access to essential medicines at
affordable prices was a goal for all countries and a necessary step for the
achievement of the UN Millennium Development Goals.  It referred to the
(WTO) Doha Declaration on TRIPS Agreement and Public Health, stressing the
understanding that health technologies were different from other products
and should not be treated as a commodity.

*El Salvador and Guatemala *also reiterated their interest in the
discussion on exceptions and limitations and the improvement of the quality
of patents.

*General Assembly notes SCP decisions*

The WIPO General Assembly was invited to note the contents of document
WO/GA/43/16, which contains the decisions taken by the last SCP session
(19th session held on 25-28 February 2013). It also describes the
contribution of the SCP to the implementation of the Development Agenda
Recommendations. (The Development Agenda was adopted by the Assembly in
2007 to ensure that development considerations form an integral part of the
organisation's work.)

At the 19th session after intensive consultations, a work program was
agreed for the following topics: (i) Exceptions and Limitations to Patent
Rights; (ii) Quality of Patents, including Opposition Systems; (iii)
Patents and Health; (iv) Confidentiality of Communications between Clients
and their Patent Advisors; and (v) Transfer of Technology on the
understanding that 20th SCP session would be confined to “fact-finding and
not lead to harmonization at this stage”. Details of the work program are
below.

-- On “exceptions and limitations to patent rights”, the SCP agreed on the
following:

(i) The Secretariat will prepare a document, based on input received from
Member States, on how the following five exceptions and limitations are
implemented in Member States, without evaluating the effectiveness of those
exceptions and limitations: private and/or non-commercial use; experimental
use and/or scientific research; preparation of medicines; prior use; use of
articles on foreign vessels, aircrafts and land vehicles. The document
should also cover practical challenges encountered by Member States in
implementing them.

(ii) A 1/2 day seminar as proposed in document SCP/19/6 will be organized
during SCP/20 on the above five exceptions or limitations.

(iii) The Secretariat will prepare, for SCP/21, a document, based on input
received from Member States, on how the remaining exceptions and
limitations contained in document SCP/18/3 are implemented in Member
States, without evaluating the effectiveness of those exceptions and
limitations: acts for obtaining regulatory approval from authorities;
exhaustion of patent rights; compulsory licensing and/or government use;
exceptions and limitations relating to farmers’ and/or breeders’ use of
patented inventions. A 1/2 day seminar as proposed in document SCP/19/6
will be organized during SCP/21 on the remaining exceptions and limitations
as referred to above.

-- On “quality of patents, including opposition systems”, the SCP agreed
that, based on information received from Member States, the Secretariat
would prepare a compilation of work sharing programs among patent offices
and use of external information for search and examination.

-- On “patents and health”, it was decided that a sharing session on
countries’ use of health-related patent flexibilities would be organized
during SCP/21. It was generally agreed that the Secretariat would prepare a
summary document of that event during that same session of the SCP.

-- With regard to “confidentiality of communications between clients and
their patent advisors”, the SCP agreed that the Secretariat would prepare a
document compiling laws and practices on, and summarizing information on
experiences relating to, the issue of confidentiality of communications
between clients and their patent advisors received from Member States. In
addition, the Secretariat would make a presentation on that topic at SCP/20.

-- Concerning “transfer of technology”, the Secretariat will revise
document SCP/18/8 by adding further practical examples and experiences on
patent-related incentives and impediments to transfer of technology on the
basis of inputs received from members and observers of the SCP, taking into
account the dimension of absorptive capacity in technology transfer.

It was also agreed that the information concerning certain aspects of
national/regional patent laws would be updated, based on the comments
received from Member States.

The 20th session of the SCP will be held in Geneva on 9-13 December 2013.+



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