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

Thiru Balasubramaniam thiru at keionline.org
Thu Nov 6 10:30:07 PST 2014


http://keionline.org/node/2121
WIPO patent committee engaged in heated talks on work sharing, limitations
& exceptions, client confidentiality

Submitted by thiru <http://keionline.org/user/6> on 6. November 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."

On limitations and exceptions, some of the asks include:

   - Exceptions and limitations manual
   - Detailed description of compulsory licensing cases and the elaboration
   of “fair and reasonable” remuneration

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)
include:

   - 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

Among the thirty-odd proposals tabled by Member States, the Chair (Mokhtar
Warida, Egypt) will harvest these proposals (separating the wheat from the
chaff) into a shorter list based on the priorities expressed by the
regional groups and Group B. The plenary is expected to resume on Friday, 7
November 2014 at 10 AM. Stay tuned to see how this all ends.

SCP/21 Future Work: Proposals by Member States
(Non-exhaustive list)

05/11/2014 21h00

Exceptions and limitations

- Analysis of the effectiveness of exceptions and limitations to address
development concerns

- Exceptions and limitations manual

- Detailed description of compulsory licensing cases and the elaboration of
“fair and reasonable” remuneration

- Further case studies on implementation of exceptions and limitations in
Member States

Quality of patents

- Dedicated webpage relating to work sharing

- Annual conference on international work sharing and collaboration to
share national/regional experiences

- Study on impediments to carry out work sharing and potential measures at
the international level to overcome the challenges

- 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

- 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

- Define “quality of patents” before conducting any work

- Questionnaire on quality of patents

- Technical assistance/capacity building with respect to patent search and
examination

- Study on inventive step – AGREED at SCP/20

- Study on sufficiency of disclosure – AGREED at SCP/20

Patents and Health

- Activities consisting of studies, information exchange and technical
assistance in order to make full use of flexibilities

- Study on the positive impact of patent systems in providing lifesaving
medicines to developing countries

- Study on the availability of lifesaving medicines that are not protected
by patents, and the reasons for their lack of availability

- Study on the relationship between patent systems and availability of
medicines in developing countries and LDCs

- 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

- In-depth study/analysis/discussions on disclosure of INN

- Study on Markush claims

- Study on the impact of exhaustion of rights on accessibility, quality and
price of medicines

Confidentiality of communications between clients and their patent advisors

- 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

- Invite proposals from Member States and continue discussions

- Questionnaire by the Secretariat asking: (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

- No discussions at the SCP

Transfer of technology

- Compilation of information on national/regional regulations, guidelines,
practices and jurisprudence regarding voluntary licenses

- Further study on the failure in technology transfer arising from the
patent system

The impact of the patent system in developing countries and LDCs

- Preparation by the Secretariat of draft modalities and terms of reference
for the revision of the Patent Model Law for Developing Countries and LDCs



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