[Ip-health] Intellectual Property Watch: WIPO Members Search For A Negotiating Agenda On Patent Law

Thiru Balasubramaniam thiru at keionline.org
Thu Oct 14 10:27:25 PDT 2010


Intellectual Property Watch
14 October 2010

WIPO Members Search For A Negotiating Agenda On Patent Law
By Kaitlin Mara	 @ 4:16 pm
Patents aren’t what they used to be at the World Intellectual Property  
Organization. Discussions to come up with a work plan at the Standing  
Committee on the Law of Patents (SCP) this week and in recent meetings  
point to the possibility of a sea change in thinking over what matters  
about intellectual property policy and law.

The SCP is meeting this week from 11-15 October, and delegates are  
working toward a future work plan for the committee after failing to  
come to an agreement at its last meeting in January (IPW, WIPO, 1  
February 2010).

The committee has been meeting in informal discussions for most of the  
week, which exclude nongovernmental groups. The SCP is in a slow- 
restart process from a past stalemate primarily over harmonisation of  
national patent laws on the agenda.

The pressure is on the committee to come up with a plan of work as  
there is no other multilateral forum for discussing patent policy.  
Developed country members who were frustrated in efforts to advance  
multilateral enforcement interests just completed substantive  
negotiations on an Anti-Counterfeiting Trade Agreement (ACTA) but in  
the final stages of the talks, patents were excluded from key areas of  
the text (IPW, Enforcement, 12 October 2010).

The informal meetings between members with SCP Chair Maximiliano Santa  
Cruz, the head of the Chilean patent office, and between regional  
groups, were expected to last through tonight. Sources said a draft  
chair’s summary is expected to emerge, but likely not until tomorrow.  
It could reflect various proposals and positions put forward during  
the week on the way forward for the committee.

Meanwhile, a side event this week on patents and technical standards  
sparked a heated exchange between panellists and audience members over  
the issue of patents on standards.


In the SCP, the Group B of developed countries, now being coordinated  
by France, has proposed a future work plan that focusses on patent  
quality, including the exchange of information on laws and practices  
relating to patent quality and the “elaboration of recommendations” on  
good legislative and practical measures for patents worldwide. It is  
available here [pdf].

The Development Agenda Group (DAG), a collection of countries  
supporting the WIPO Development Agenda and now chaired by Brazil,  
emphasised in its opening statement that exclusions, exceptions and  
limitations to patent law, the transfer of technology, patents and  
standards, and anti-competitive practices are particularly important  
to developing countries. “Discussions at the SCP should never lose  
sight of the fundamental trade-off at the root of the patent system”  
between protecting innovators in return for dissemination of their  
knowledge, the DAG statement [pdf] said.

The DAG is supporting a proposal on future work made by Brazil [pdf]  
at the last SCP that focusses on exceptions and limitations to patent  

The African Group has proposed a study on patents and public health.  
Also the African Group proposed two new topics to be added to a “non- 
exhaustive list” of potential topics for the SCP to discuss. These are  
the impact of the patent system on least developing countries and  
developing countries, and patents and food security.

And Slovenia on behalf of the Group of Central European and Baltic  
States proposed the addition to the non-exhaustive list of strategic  
use of IP in business, particularly for small and medium-sized  

Technical transfer, client attorney privilege, and dissemination of  
patent information are remaining issues from the last meeting.

Also up for discussion this week is how the SCP will report on its  
development-related activities to the decision-making annual General  
Assemblies. At the latest Assemblies in September, a coordination  
mechanism [pdf] for the Committee on Development and Intellectual  
Property was adopted that required “the relevant WIPO bodies to  
include in their annual report to the Assemblies, a description of  
their contribution to the implementation of the respective Development  
Agenda Recommendations.” The SCP is the first WIPO committee to meet  
since the General Assemblies.

On this issue, the DAG has proposed in its opening statement this week  
a discussion on how to do that. The full DAG statement is available  
here. As the Assemblies directive applies to all WIPO committees, this  
is likely to be a recurring issue.

And a new secretariat-prepared study on exclusions from patentable  
subject matter and exceptions and limitations to patent rights,  
available here [pdf] was also cause of much discussion in informal  
meetings, according to participants. A statement on the issue from the  
DAGis available here [doc], and a statement from the nongvernmental  
group the Third World Network is available here [pdf].

Broadly speaking, there has been a massive cultural change at WIPO,  
said one participant. WIPO “was basically an industry-based  
organisation” when it began, and discussions were one-sided: mainly  
aimed at protection of IP rights, he added. Even nongovernmental  
observers largely represented industry groups. But in recent years,  
the fundamentals of the patent system have been questioned. This puts  
the organisation at a critical juncture, but it is hard to see if any  
agenda is advancing, he said.

Patents And Standards

A spirited discussion was had between at a side event to the SCP [pdf]  
organised by the Institute for Trade, Standards and Sustainable  
Development (ITSSD) on 12 October.

Interoperability frameworks or government procurement preferences for  
nonproprietary technologies create legal and economic uncertainties  
that are “basically unfair and unnecessary,” argued the event’s  
organiser, Lawrence Kogan, president and director of the ITSSD. The  
ITSSD is a nonprofit organisation that promotes a “positive paradigm  
of sustainable development” which it says includes strong intellectual  
property rights and free markets. A testimonial posted on their  
website called the group “deeply supportive of traditional American  
imperial ideology.”

“Freedom of contract and exclusive IP rights” are needed for legal and  
economic certainty, which will cause increased knowledge dissemination  
and technology transfer, whereas compulsory licences and “royalty-free  
mandates” would dampen the movement of technology, Kogan said.  
Government procurement standards preferencing open standards  
constituted a potential trade barrier, he added.

This did not sit well with several audience members. No government has  
required procurement of IP-free standards, said Thomas Vinje, an  
audience member and an attorney who advises clients on software  
patents. The European interoperability framework “does not by any  
honest – and I repeat honest – measure mandate anything on patents.”  
What it does say is that when governments procure software, they  
procure software that is open, defined as having less IP or limits to  
royalties that can be requested to licence the IP. “That is not IP- 
free. Anyone who says that is not being honest.”

“Seeing as royalty-free standards can be implemented by anyone, where  
exactly do you see a barrier to trade in that?” added Karsten Gerloff,  
president of the Free Software Foundation Europe. The FSFE position on  
patents and standards is here.

“Expressed preference is a nuanced way of saying ‘if you wish a  
government contract, you must satisfy our demands’ [which is] de facto  
mandatory,” said Kogan, who added that trade barriers were a “possible  
but not necessarily probable” outcome of such preferences.

Many innovations that later become standards are created by small  
businesses, said Jonathan Zuck, president of the Association of  
Competitive Technology. Small business innovators are particular in  
that the up-front money is often supplied externally, from venture  
capital investors who require intellectual property protection as a  
condition of investment. Small businesses are also particularly  
vulnerable if “subject to decommercialisation” of their technology  
because its inclusion in a standard means it must licence for free or  
low prices. Small businesses often have only one technology, he said,  
and if it fails, the business disappears.

Innovation is not a top-down process and by and large what is needed  
is to create an environment in which some return on investment is  
likely, said Zuck. This requires the ability to protect them. The role  
of government in this environment “is predominantly to stay out of the  

Standardisation is a private undertaking in which commercial companies  
get together “to cooperate in an area where they usually compete,”  
said Benoît Müller, a Geneva-based attorney who previously worked for  
the Business Software Alliance, speaking on his own behalf.   
Governments became interested mainly out of concern for the anti- 
competitive effects of such cooperation. He said governments should  
stay away from “mandating no-IP standards. Because then you won’t be  
able to buy anything for your government,” as most standards have some  
IP in them.

A recently published Berkeley Patent Survey at the University of  
California (Berkeley) interviewed 700 software entrepreneurs, said  
Vinje, and found that patents were the least important incentive  
mechanism among seven options. Zuck said a study conducted by the  
European Commission Enterprise & Industry Directorate General,  
available here, talked about the importance of IP to businesses,  
including small and medium-sized enterprises in the information and  
communication technology sector.

The “field of standardisation does not strike me as one in which  
patent issues arise any differently from any other field,” Muller  
said. “Companies need to obtain patents, but should not abuse rights.”

Martin Hinoul of the Leuven High Technology Region, Brussels, also  
spoke at the event.

William New contributed to this story.


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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