[Ip-health] Fwd: TWN IP Info: WIPO Member States failed to reach consensus on future work of SCP

K.M. Gopakumar kumargopakm at gmail.com
Tue Nov 11 06:44:46 PST 2014

*Title :* TWN IP Info: WIPO Member States failed to reach consensus on
future work of SCP
*Date :* 10 November 2014


TWN Info Service on Intellectual Property Issues (Nov14/04)
10 November 2014
Third World Network


*WIPO: Member States failed to reach consensus on future work of SCP *

Geneva, 10 November (K M Gopakumar*) – Member States failed to reach a
consensus to finalise the future work of the Standing Committee on the Law
of Patents (SCP) of the World Intellectual Property Organization (WIPO).

The 21st session of the SCP, which was concluded on 7 November, could not
agree on future work on various work programs currently under the SCP, for
inclusion in the agenda of the 22nd session of the Committee. As a result,
the 22nd session will discuss only two studies as per the decision of the 20
th session of SCP, which was held on 27-31 January 2014.

The breakdown in the negotiation was primarily due to the stand taken by
Group B (a developed country grouping within WIPO) to not accept the
proposal of two studies from developing countries under the work program on
patents and health.

According to practice, the final agenda item of the SCP is to negotiate and
finalise the agenda for the next session under the agenda item of “future
work”.  The two days of informal negotiations among the Member States
failed to reach a consensus with regard to the future work and this
resulted in sticking to the decision of the 20th session.

The 20th session already decided that the WIPO Secretariat would prepare
two studies under the agenda item on quality of patent for discussion at
the 22nd session of the SCP.

The Chair’s Summary of the 21st session states that:

“The Committee decided the future work as follows:

The following studies would be prepared by the Secretariat and submitted to
SCP/22 as agreed at SCP 20

(a) a study on inventive step that contains the following elements: the
definition of the person skilled in the art, methodologies employed for
evaluating an inventive step and the level of the inventive step;

(b) a study on sufficiency of disclosure that contains the following
elements: the enabling disclosure requirement, support requirement and
written description requirement”.

According to the 20th session the studies are to “be based on the
information provided by Member States, and will be a collection of factual
information without analysis or recommendation”.

However, it is clear that other issues discussed at the 21st session would
remain on the agenda of the 22nd session of the SCP.  The 21st session
deliberated on the following issues: Exceptions and limitations to patent
rights, quality of patents including opposition systems, patents and
health, confidentiality of communication between client and patent
advisors, and transfer of technology.

In the past if there were disagreement on the future work the SCP, it would
then be decided to hold the next session of the SCP based on the agenda of
the last session. For instance, when the 18th session failed to reach a
consensus the SCP decided as follows:

“Failing agreement otherwise, following a proposal by the Chair, the
Committee agreed to carry on discussions at its next session on the basis
of the agenda of its eighteenth session, except agenda items 2 and 12 in
document SCP/18/1”.

However, this time there is no such decision. In this regard South Africa
sought the clarification from the Secretariat on whether the next session
is going to spend the whole five days on discussion of the abovementioned
two studies. The Secretariat replied that the two studies and discussion on
future work would consume all the time. In other words, the next SCP
session will not discuss any other agenda item other than the two studies.

At least three drafts were circulated at different stages of the informal
negotiations. The first draft was circulated on the third day of the SCP
i.e. 5 November, the second draft was circulated on 6 November, and the
last draft text is dated 7 November.

The last draft was rejected by developing countries citing the lack of
balance in the text due to absence of any studies proposed by developing

The draft text dated 7 November states as follows:

“ 1. The non-exhaustive list of issues will remain open for further
elaboration and discussion at the next session of the SCP

2. Without prejudice to the mandate of the SCP, the Committee agreed that
its work for the next session (SCP/22) be confined to fact-finding and not
lead to harmonize at this stage, and would be carried out as follows:

(1) Exceptions and Limitations to Patent Rights

- Compilation of Member States’ experiences and case studies on the
effectiveness of exceptions and limitations, in particular, in addressing
development issues

(2) Quality of Patents, including Opposition Systems

- Seminar on quality of patents to address perspectives on what quality
means, and to identify needs and requirements for developing capacity for
patent search and examination

- Seminar on work sharing and collaboration to share experiences

- Studies on inventive step and sufficiency of disclosure as agreed at

(3) Patents and Health

- Seminar on the relationship between patent systems and availability of
medicines, in particular, in developing countries and LDCs

- Continue discussions on the disclosure of INN(International
Non-Proprietary Names)(document SCP/21/9)

(4) Confidentiality of communications between clients and their patent

- Compilation of information from Member States concerning applying
confidentiality protection to non-lawyers and equal treatment to national
and foreign patent advisors

(5) Transfer of Technology

- Compilation of information from Member States on national/regional
regulations, guidelines, and practices and jurisprudence regarding
voluntary licenses.”

During the last plenary Paraguay on behalf of GRULAC (Group of Latin
American and Caribbean countries) again proposed to amend the WIPO Model
Law for Developing Countries on Inventions of 1979.  Paraguay proposed this
to achieve a balance because the draft text contained several activities
including two studies under the quality of patents. Further, Paraguay also
proposed an amendment to a proposal in the draft text on exceptions and
limitations to patents.

This proposal received support from Belarus, Pakistan on behalf of the Asia
Pacific Group, Czech Republic, Kenya on behalf of the African Group and

However, the real breakdown was due to the adamant stand of Group B to not
agree to have two studies under the work program on Patents and Health. The
Africa Group asked for the two studies viz. the study on INN and the study
on Markus claims (broad patent claims that may apply to a broad range of
compounds). The deliberations failed due the position of Group B, with
Japan on behalf of Group B stating that it is “take it or leave it” with
regard to the draft text.

In response to Group B’s comment on the draft text on future work as a
package and there is a need to show flexibility, Kenya on behalf of the
African Group responded that with all the disasters that are happening in
Africa including Ebola, the patent system cannot help people in Africa to
live a normal life.  Kenya stressed that the Africa Group cannot show
flexibility when people are dying.

The Chair text took note of the proposal of GRULAC to amend the WIPO Model
Law for Developing Countries on Inventions of 1979. The Summary states:
“The Chair noted that the proposal by GRULAC could be presented and
discussed at the next session”.

Regarding the next session of the SCP the Chair’s summary states that “the
Secretariat informed the SCP that the dates of its twenty second session to
be held in Geneva, would be announced later”.+

(With inputs from Daniela Guaras.)

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