[Ip-health] Fwd: TWN IP Info: WIPO - Developing Countries Oppose Proposals on Work-sharing in Patents Committee

K.M. Gopakumar kumargopakm at gmail.com
Wed Jan 29 23:23:45 PST 2014


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From: TWN News <news at twnnews.net>
Date: Wed, 29 Jan 2014 20:07:20 -0500
Subject: TWN IP Info: WIPO - Developing Countries Oppose Proposals on
Work-sharing in Patents Committee
To: TWN Mailing List <news at twnnews.net>

Title : TWN IP Info: WIPO - Developing Countries Oppose Proposals on
Work-sharing in Patents Committee \r\n\r\n
								Date : 30 January 2014\r\n
								Contents: \r\n<p>
	TWN Info Service on Intellectual Property Issues (Jan14/08)<br />
	30 January 2014<br />
	Third World Network<br />
	<a href="http://www.twn.my">www.twn.my</a></p>
<p>
	Dear colleagues,</p>
<p>
	Please find below a news report on discussions in the WIPO Patents
Committee on Quality of Patents & Work-Sharing</p>
<p>
	Regards<br />
	Sangeeta Shashikant<br />
	Third World Network</p>
<hr />
<p>
	<strong>WIPO: Developing Countries Oppose Proposals on Work-sharing
in Patents Committee</strong></p>
<p>
	Alexandra Bhattacharya and K M Gopakumar (Geneva): Developing
countries, during a discussion in WIPO on quality of patents,
questioned the value of work-sharing arrangements among
national/regional patent offices as a method of improving the quality
of patents, and opposed efforts by developed countries to mainstream
"work-sharing" in WIPO. </p>
<p>
	The 20th session of the Standing Committee on the Law of Patents is
meeting in Geneva from January 27-31, 2014</p>
<p>
	Since the 16th SCP session in 2011 developed countries have made
several submissions with the explicit objective of setting a work
program in SCP onwork-sharing. Under the pretext of wanting to improve
"quality of patents" these submissions seek to use WIPO, an
intergovernmental forum to promote as a norm work-sharing among patent
offices and consequently reliance on other patent offices with the
objective of expediting patent examination and accelerating the
granting of patents.</p>
<p>
	Work sharing is broad term used to describe various bilateral and
plurilateral arrangements between/among patent offices to assist
countries to expedite the examination of applications and granting of
patents. These arrangements include: use of search and examination
results of other patentoffice; accelerating the granting of a patent
based on the decision of another patent office; collaboration
between/among patent offices to jointly exam patent applications;
various platforms and tools to share information on search and
examination.</p>
<p>
	Developing countries have in the past resisted the efforts of
developed countries. Their main concern has been that the developed
countryproposals fail to address the real factors that affect "quality
of patents" (that is the problem of low standards of patentability
criteria applied) and would only facilitate the granting of more
patents (most of which originatefrom developed countries).</p>
<p>
	Developing countries are also concerned that the proposals areabout
creating a norm in WIPO that encourages reliance on foreign patent
offices, and as a result undermining the current flexibility available
to WIPO Member States to determine the threshold for patentability as
per their development needs. Effectively such arrangements are
de-facto harmonization of substantive patent law. In the long term,
work-sharing will also reduce capacity to examine patent applications
at the national level, according tonational interests. </p>
<p>
	At the on-going SCP session, developing countries objected to the
setting up a work-program on work sharing, maintaining that efforts on
work sharing should be voluntary in nature. They also opposed any
deliberations on voluntary work-sharing efforts in a multilateral
forum like SCP.  They further expressed concern with regard to the
lack of a shared understanding"quality of patents", stressing that
deliberations on quality of patents should not have any bearing on the
harmonisation of substantive patent law including on patentability
criteria.</p>
<p>
	<em>Proposals on quality of patents including work-sharing</em></p>
<p>
	Developed country proposals on the topic of quality of
patentsincluding work-sharing that have been submitted to the previous
SCP sessions are: proposal from Denmark (SCP/17/7); proposal from USA
(SCP/17/10);  joint proposal from Canada and UK ( SCP/18/9); proposal
from USA (SCP/19/4) and Spain (SCP/19/5). The most recent proposal is
a joint proposal by the Republic of Korea, the United Kingdom and the
United States of America (SCP/20/11Rev.).</p>
<p>
	The origin of a series of proposals to set a work program on work
sharing in SCP began with a joint proposal by Canada and the United
Kingdom for a Work Program on Quality of Patents (SCP/16/5) and a
revised proposal (SCP/17/8) on the same. The documents proposed a work
plan with three main components: technical infrastructure development,
information exchange on quality of patents and a process improvement
to identify ways in which offices can improve patent granting
processes.</p>
<p>
	At the 17th SCP session Denmark submitted a complementary proposal
(SCP/17/7) on how toimprove the quality of search and examination of
national patent applications by using foreign search and examination
work performed by other patent offices.</p>
<p>
	US also made a proposal at the same session. It proposed that the SCP
focus on: (i) a survey of thepatent offices of Member States inviting
them to reflect upon and share thehigh level goals that they consider
crucial to a patenting system that produces high quality patents; and
(ii) a questionnaire survey for national offices which seeks to
enquire what various national offices consider to be high quality
patents and how the process of patent examination and grant is
evaluated against this understanding of high quality patents
(SCP/17/10).</p>
<p>
	For the eighteenth SCP, Canada and the UK further submitted a
proposal for a questionnaire survey (SCP/18/9). No agreement was
reached on any of the proposals.</p>
<p>
	At the 19th session US made a new proposal regarding efficiencies of
the patent system (SCP/19/4), which contained thefollowing four
elements: (a) carry out an inventory of work sharing programs that are
or have been taking place between offices, bilaterally, multilaterally
and regionally, and evaluate their benefits for IP offices, for users
of the IPsystem and for the general public. (b) explore ways to
further refine and increase the usefulness of these programs, such as
by determining best practices that could be adopted by participating
offices on a voluntary basis. (c) explore the tools that could
facilitate effective work sharing programsbetween participating
offices. (d) conduct workshops on how work-sharing programs can be
effectively implemented.</p>
<p>
	Although no agreement could be reached on taking US proposals
forward, the 19th session directed the Secretariat to prepare for the
20th Session of SCP a compilation of information received from Member
sates on the work sharing programs. </p>
<p>
	Spain also made a proposal to the 19th session (SCP/19/5) suggesting
that WIPO should coordinate studies on the definition of a person
skilled in the art with the objective to provide information on how
different thresholds of inventive stepapplied in different Member
States has led to different outcomes.</p>
<p>
	The delegations of the Republic of Korea, the United Kingdom and the
United States of America have submitted yet another joint proposal
(SCP/20/11 Rev) regarding Work Sharing between Offices in order to
Improve Efficiencies of the PatentSystem, for the consideration of the
current SCP session.  The proposal specifically calls for: (1)
dedication of a page on the WIPO website on work sharing and
collaborative activities between patent offices: (ii) the organization
of  annual conferences, on the margins of the SCP sessions, on
international work sharing and collaboration to share national and
regional experiences and best practices and to find ways to improve
the usefulness of these programs to IP offices, to users of the IP
system and to the general public.</p>
<p>
	As requested by the previous SCP session, WIPO Secretariat hasalso
compiled in document SCP/20/8, a document on work sharing programs
among patent offices and use of external information for search and
examination based on information received from member states. Some of
key arrangements that are of importance to developed countries
include:</p>
<p>
	<em>Vancouver Group:  </em>an arrangement among patent offices of
Australia, Canada and UK to rely on wherever possible on the granted
patent of a participating office or on the search and examination
report of any of the participating office in coming up with their own
report on the same application.</p>
<p>
	<em>Patent Prosecution Highway (PPH):</em> Under this arrangement if
the Office of First Filing (OFF) makes a decision to grant a patent to
an application then the same application is eligible to go through an
accelerated examination in the Office of Second Filing (OSF) at the
request of the patent applicant. Initially PPH was an arrangement
between USPTO and Japan Patent office (JPO) set up in 2006. However, a
pilot project known as Global PPH has been launched on 6th January
2014. PPH operates on the basis of bilateral agreements among the PPH
participating offices. Under Global PPH a patent applicant can make a
request for the accelerated examination if the claims have been found
to be acceptable by any of the Global PPH  participating offices. </p>
<p>
	[According to Global PPH website there are 17 patent offices
participating in the pilot project. These Offices are : IP Australia
(IP Australia), Canadian Intellectual Property Office (CIPO), Danish
Patent and Trademark Office (DKPTO), National Board of Patents and
Registration of Finland (NBPR), Hungarian Intellectual Property Office
(HIPO), Icelandic Patent Office (IPO), Israel Patent Office (ILPO),
Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO),
Nordic Patent Institute (NPI), Norwegian Industrial Property Office
(NIPO), Portuguese Institute of Industrial Property (INPI), Russian
Federal Service for Intellectual Property (ROSPATENT), Spanish Patent
and Trademark Office (SPTO), Swedish Patent and Registration Office
(PRV), United Kingdom Intellectual Property Office (IPO), United
States Patent and Trademark Office (USPTO)]</p>
<p>
	<em>IP5 :</em> Similar to PPH, this arrangement is among the world's
largest five patent offices i.e. the European Patent Office (EPO), the
Japanese Patent Office(JPO), the Korean Patent Office (KIPO), the
State Intellectual Property Office of China (SIPO) and the US Patent
and Trademark Office (USPTO). </p>
<p>
	Secretariat's document 20/8 also identifies certain challenges with
regard to work sharing arrangements.  One notable challenge
highlighted is the absence of substantive harmonization of  patent
law. According to the document "different substantive standards
employed by offices and understandingthose differences were considered
as one of the hindrances in effective use of foreign search and
examination work.  In particular, divergence of office practices and
different claiminterpretation practices, including the assessment of
amended claims, as well as different classification schemes employed
by offices were said to complicate the reutilization of other offices'
search and examination results".</p>
<p>
	<em>Discussion on quality of patents including work-sharing.</em></p>
<p>
	<strong>India </strong>in a detailed intervention said that the
quality of patents was important for both national development and for
the smooth transfer of technology. It noted that "quality" was not
equal to all countries, which had different levels of development, and
work sharing should not be the ultimate solution for the improving the
quality of patents. </p>
<p>
	It referred to the statement of the Development Agenda Group (DAG)
during the 3rd session of the Patent Cooperation Treaty (PCT) Working
Group, which noted that some Members of the PCT were International
Searching Authorities (ISA) and while others were not. In this
context, it opposed any attempt at harmonization in the name of
quality. As a way forward it preferred, the enhancement of IP offices,
India said.</p>
<p>
	[The WIPO Patent Cooperation Treaty (PCT) allows a right holder to
simultaneously seek protection for an invention in 148 countries by
filing one international patent application under the PCT.  An ISA is
an authority (usually a national patent office) authorized under the
PCTSystem , to find the most relevant prior art documents regarding
the claimed subject matter. There are currently 17 ISAs (including
India) within the PCT framework.]</p>
<p>
	<strong>Brazil </strong>underlined the importance of having an
inclusive debate, which "encompassed all the users of the system". It
said that there was no one-size-fits all approach to the debate and
each country had the right to calibrate its laws according to national
priorities. Before launching a work plan, there was a prerequisite for
a deeper debate on the quality of patents. On the proposal by UK, US
and Korea (SCP/20/11 Rev) it noted that due to the late submission of
the document it did not have time to consult its capital.</p>
<p>
	<strong>Algeria </strong>on behalf of the Africa Group reiterated its
concern about the lack of a precise definition of the concept of
"quality of patent" adding that quality of patents is largely based on
the criteria of patentability, which essentially depends on the
development objectives of each country.</p>
<p>
	It expressed concern that the proposed initiativeswill result in
harmonization of practices in the field of patent law, prejudicing
flexibility in patent law at the national level. It stressed that
quality of patents refers to the ability of the patent office to apply
the domesticpatent law effectively, as the criteria for patentability
is defined and applied differently among national patent legislations.
It referred to paragraph 49 of the study by the Secretariat (SCP/20/8)
which cites differences in substantive laws as the first challenge to
work sharing processes.</p>
<p>
	It further stressed that quality cannot be improved by simply
adopting the practice of other patent offices, adding that it is
important for national offices to retain discretion in determining the
patentability criteria. </p>
<p>
	On the questionnaire proposed by Canada and the UK in document
SCP/18/7, Algeria said that it  focused only on issues of how national
Offices define patent quality, how they measure the quality of granted
patents, and the how they utilize or may utilize better foreign search
and examination work. In this regard, it stressed that the issue of
patent quality is not just limited to the quality of patent
examination,adding that strong and effective patent oppositions too
play a significant role in ensuring a high quality patent.</p>
<p>
	On Spain's proposal, Algeria recalled that "inventive step" is not
the only criteria that is determinative of the quality of a patent as
it also involves issues of novelty, industrial applicability, and
sufficiency of disclosure. It noted the importance of addressing these
factors in order to understand howthese elements are evaluated in
different countries and their impact on patent quality.</p>
<p>
	Algeria also cautioned that discussion on patentability criteria
should not be about substantive harmonization. It also added the need
to consider different thresholds in national patent legislations for
"sufficiency of disclosure" as a problem linked to patent quality,
adding that it would lead to identification of practical means for
addressing issues related to insufficient disclosure.   </p>
<p>
	<strong>Iran </strong>said that the SCP still had no common ground
with respect to quality of patents and there was a need for a
definition of the "quality" before any discussion of work plan. It
reiterated that any future work on quality of patents should not lead
to harmonization. It also emphasized the different roles of patents
and the different levels of development amongst member states; the
need for capacity building for IP offices and the need to take into
account all relevant DA Recommendations. It also stressed on the need
for adequate disclosure in patent applications.</p>
<p>
	<strong>Kenya</strong> said that it appreciated the availability of
external patent information and regularly usedthem. However such
information including examination reports were not binding on the
Kenyan patent examiner or Kenya as such and merely served the purpose
of facilitating the evaluation of novelty claimed in the application
filed in Kenya or in the patent granted on the basis of that
application. This ensured that Kenya had the opportunity to ensure the
quality of patents granted within her territory as well as the
safeguarding of public national interest including availing herself
the flexibilities accorded by the patent system.</p>
<p>
	It further said that while it supported continued availability of
such information, any further development of the same including work
sharing initiatives should not obligate Kenya towards automatic
acceptance of the reports of the work shared, and thus any
international efforts should not lead to harmonization of substantive
patent law.</p>
<p>
	<strong>Japan,</strong> on behalf of Group B, emphasized the
importance of quality of patents in the context of significant
difficulties of IP offices in reducing backlog. In this context, it
stated that work sharing allowed offices to make use of existing
resources. It was also useful for the users of the patent system in
acquiring patent protection. It also reiterated its support for the
new joint proposal of UK, Korea and US (SCP/20/11 REV.) and for all
the other proposals currently on the table. It noted that the SCP
should bear in mind the objectives of the patent system and work on
the Quality of Patents should form fundamental basis for further
work.</p>
<p>
	<strong>Czech Republic,</strong> on behalf of CEBS also welcomed the
new proposal and called for the launching of a comparative study on
the inventive step concept based on the Spanish proposal.</p>
<p>
	<strong>Greece, </strong>on behalf of EU expressed support for all
Group B proposals, noting that 6 EU members had submitted proposals on
Quality of Patents. It was strongly in favor of a work program in this
area and particularly called for the launching of a questionnaire
based on all the proposals on the table. It also called for further
exploration in the form of a study of how laws limit potential work
sharing and for the Spanish proposal on the "inventive step" concept
to become a new standing agenda item.</p>
<p>
	With regard to opposition systems, the EU noted that they were a
simple, rapid and in expensive alternative to litigation and also
called for a compilation by the secretariat of different models of
opposition systems and revocation procedures. It reiterated the
freedom of all WIPO member states to incorporate these procedures into
their national legislation</p>
<p>
	<strong>Spain </strong>in explaining its previous proposal (SCP/19/5)
said that the focus on the inventive step concept could lead to better
examination and better quality of patents and avoid the granting of
undeserving patents.  It also asked that the issue of "inventive step"
be dealt separately within the discussion on quality of patents or as
a separate agenda item. </p>
<p>
	Spain, Denmark, Russia, CEBs and the US also expressed support for
further work on quality of patents thorough work sharing programs.
</p>
<p>
	<strong>Cuba </strong>expressed support with respect to Spain's
proposal for furtheranalysis of the inventive step. However, it added
that the there was a need to ensure that this analysis does not affect
a country's sovereignty. </p>
<p>
	<strong>Third World Network,</strong> an observer in SCP reiterated
that there was no shared understanding of the meaning "quality" and
there was a need to arrive on the meaning of term "quality" before
discussing the work program. It added that efficiency should not be
seen as being synonymous with "quality". TWN added that there was a
need for greater effort on improving the quality and not the quantity
of patents. In this respect, patent offices should be judged by the
quality of patents they grant rather than the number of patents they
issue. </p>
<p>
	It stressed that work sharing was not the solution to improve the
quality of patents as the effect of work-sharing (which promotes
reliance on search and examination results of another (usually
developed country) patent office is the same as harmonization of
substantive patent law. </p>
<p>
	With regards to the proposal of UK, US and Korea to set up a webpage
on the WIPO webpage, TWN stated that this proposal lacked legitimacy
of the multilateral system  and the SCP should not be used to
legitimize plurilateral initiatives (such as those found in the Patent
Prosecution Highway (PPH).</p>
<p>
	The Chair of the SCP, Mokhtar Warida noted that all statements of
member stateswould be taken into account, adding that further
information was required on specific activities put forward including
the: (i) development of a questionnaire based on all the proposals on
the table (based on UK/Canada  proposal for a questionnaire survey
(SCP/18/9);   (ii) a study on the inventive step based on the Spanish
proposal (SCP/19/5) looking at the definition of "a person skilled in
the art" (iii) study on the disclosure requirement (supported by
Brazil and India)  (iv)  the components (webpage and seminar on
theexisting system for work sharing) of the recently circulated
UK/US/Korea proposal (SCP/20/11Rev) and (v) EU proposal on a study on
how laws could potentially limit work-sharing amongst offices. </p>
<p>
	These proposals are expected to feed into the discussion on the
"Future Work" which is expected to be held at the end of the session.
The preliminary round of discussion on ascertaining a work program
showed that there was no agreement on taking any of the proposals on
quality of patents forward.</p>
<p>
	[Note: Developed countries are also pushing for a work sharing agenda
in the Patent Cooperation Treaty (PCT) Working Group. During the 6th
session of the PCT Working Group in May 2013, UK and US made a joint
proposal for the formal integration of PPH with the PCT. This proposal
will be further discussed during the 7th Session of PCT working Group,
which will be held in Geneva around June 2014.</p>
<p>
	Work sharing initiatives have also obtained the political blessings
of G8. Report of the G8 Intellectual Property Experts Group Meeting
and G8 Leaders Declaration in 2009 stressed the importance of PPH.</p>
<p>
	The Declaration states: "We also reaffirm the importance of Patent
Cooperation Treaty and global patent harmonisation such as Substantive
Patent Law Treaty (SPLT) and acknowledge the expansion of
international patent collaboration including work-sharing initiatives
such as the Patent Prosecution Highway".</p>
<p>
	The Expert Group Meeting Reports states "we also acknowledge the
expansion of patent collaboration, including work-sharing initiatives
such as the Patent Prosecution Highway (PPH) to contribute to
technological innovation and economic development by ensuring a
high-quality, expeditious, and cost-effective examination process".
]</p>
\r\n\r\n




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