[Ip-health] TWN Info: SCP agrees on future work, new issues on the agenda

Sangeeta ssangeeta at myjaring.net
Tue Oct 19 17:01:59 PDT 2010

Title : TWN IP Info: WIPO: SCP agrees on future work, new issues on the
 Date : 20 October 2010


TWN Info Service on Intellectual Property Issues (Oct10/06)
20 October 2010
Third World Network
Dear Friends,
Please find below a news report on the outcome of the SCP. This report has
been published by SUNS and is reproduced here with permission.
Sangeeta Shashikant
Third World Network

SUNS #7021 Tuesday 19 October 2010
WIPO: SCP agrees on future work, new issues on the agenda
Geneva, 18 Oct (Heba Wanis) -- The fifteenth session of the Standing
Committee on the Law of Patents (SCP) of the World Intellectual Property
Organization (WIPO) concluded late Friday with an agreement on the future
work of the Committee, which amongst others, will explore several new issues
concerning patent law and practice.
The week-long SCP session (11-15 October) was spent mainly in informal
consultations in an attempt to reach agreement on the SCP's future work,
which eluded the previous session of the Committee earlier in the year.
According to a WIPO news release, in summarizing the work of the Committee,
the Chair of the SCP, Maximiliano Santa Cruz from Chile, said that the
Committee decided to include the following issues in its future work:
exceptions and limitations to patent rights; quality of patents, including
opposition systems; patents and health; client-patent advisor privilege; and
transfer of technology.
The news release further said that the Committee also agreed that the
non-exhaustive list of issues that was first identified at its June 2008
meeting "will remain open for further elaboration and discussion" at its
next session, and that four more issues will be included in the list,
namely, "Impact of the patent system on developing countries and LDCs",
"Patents and food security", "Strategic use of patents in business" and
"Enhancing IT infrastructure for patent processing".
The SCP Chair released a text on Friday morning aimed at bridging the
differing visions of the SCP's future work.
The final negotiations over the Chair's text were marked by some tensions
when Group B (composed of developed countries) strongly objected to the
inclusion of transfer of technology - a priority issue for developing
countries - as part of the future work despite Group B's issues of "patent
quality" and "client-attorney privilege" being included as part of the
future work of the Committee.
The SCP concluded its session late Friday evening with a Chair's summary
that outlined the agreement reached on the Committee's future work.
As regards the SCP's future work, it was agreed that the Committee would
address the following issues: (i) Exceptions and limitations to patent
rights -- the Secretariat will prepare a draft questionnaire for
consideration by Member States at the 16th session of the Committee; (ii)
Quality of patents, including opposition systems; (iii) Patents and health;
(iv) Client-patent advisor privilege -- the Secretariat will prepare a
study, taking into account the comments made by Member States; and (v)
Transfer of technology -- the Secretariat will update the existing
preliminary study (document SCP/14/4), taking into account the comments made
by Member States.
It was also agreed that four further issues will be included in the
non-exhaustive list, namely, "Impact of the patent system on developing
countries and LDCs", "Patents and food security" (both suggested by the
African Group); "Strategic use of patents in business" (proposed by the
Group of Eastern European and Baltic States); and "Enhancing IT
infrastructure for patent processing" (proposed by Group B); and that the
"non-exhaustive list of issues will remain open for further elaboration and
discussion at its next session".
[A "non-exhaustive list" containing 18 items was initially agreed to by the
SCP in 2008, in a bid to break the impasse in the work of the SCP following
strong disagreements along broadly North-South lines on how, or whether, to
proceed with negotiations on a substantive patent law treaty (SPLT) in
It was further agreed that at the next SCP session, under a specific agenda
item, Member States will be given the opportunity to express their views on
the coordination mechanisms and monitoring, assessing and reporting
modalities of relevant bodies on the implementation of the Development
Agenda (DA) recommendations. "These views will be considered in the context
of the standardized procedure that WIPO will propose for relevant WIPO
bodies," the decision adds.
Item (i) (in the Chair's summary) is a reflection of the first phase of the
Brazilian proposal on exceptions and limitations to patent rights, i. e. the
"exchange of detailed information on all exceptions and limitations
provisions in national or regional legislations, as well as on the
experience of implementation of such provisions, including jurisprudence"
(SCP/14/7), while item (ii) is based on an initial proposal by Group B on
"high quality patents", which is viewed as a backdoor attempt to begin
discussions on the harmonization of substantive patent law and procedural
aspects of granting patents.
Belgium, on behalf of the European Union (EU), explained quality of patents
as an adequate application of patentability criteria, namely, novelty,
inventive step and industrial application. It was also of the view that
quality of applications, examination and enforcement were important so that
the IP (intellectual property) system can serve the purpose for which it was
The inclusion of the item was approved as "quality of patents including
opposition systems".
Item (iii) on patents and health is a topic proposed by the African Group,
although without an elaborated text. Item (iv) on client-patent advisor
privilege is generally a Group B issue, while item (v) on transfer of
technology is being pushed by developing countries.
With regards to the outcome in the SCP, Brazil, on behalf of the Development
Agenda Group (DAG, comprising a number of like-minded developing countries),
expressed the view that the debate in the SCP has left behind the dogma,
which until recently, circulated as "conventional wisdom" -- that "granting
patents and enforcing them would automatically generate innovation".
It hailed the "dawning of the new agenda at the SCP ... in which the
exclusive focus on patent rights is replaced by a broader assessment of the
particular needs of the countries and the benefits accruing from the patent
system". Studies included in the SCP will aid understanding and help "to
avoid assumptions which ignore the systemic implications and the diversities
of concrete realities," it added.
On the issue of patents and their quality, Brazil said that any discussion
on this subject must contain items such as availability of sufficient
information, the relation between low-quality patents and the increase in
backlogs, access to high-quality patent information, and technical
assistance and capacity-building for developing countries and LDCs (least
developed countries).
In its closing remarks, Belgium, on behalf of the EU, was of the view that
the SCP is the forum to work on the progress of the international
development of patent law, and that harmonisation of patent laws lies at the
very foundation of the Committee. It added that such measures do not impair
the implementation, at national levels, in areas of public health and food
The week-long SCP session also discussed other issues on the agenda, namely:
client-attorney privilege (referred to as client-patent advisor privilege in
the Chair's summary); the dissemination of patent information; transfer of
technology; and opposition systems.
The Secretariat had prepared preliminary studies on these items, which were
discussed at the previous 14th session of the SCP and continued to be
discussed at this session as well, since the last session failed to reach
agreement on the future work of the SCP.
On these studies, the SCP agreed that "the preliminary, and other, studies
submitted at the 13th, 14th and 15th sessions of the SCP would remain open
for future discussion at the SCP", and that the "Comments made by members
and observers of the Committee on the studies submitted at the 13th, 14th
and 15th sessions of the SCP will be compiled in separate documents and
placed next to the relevant studies on the WIPO website. A hyperlink to the
document containing the comments will be provided in each study".
Interventions at the SCP session revealed Group B as having a special
interest on the issue of client-attorney privilege, with a particular focus
on cross-border protection of confidential communication between clients and
legal/non-lawyer professionals.
Several developing countries voiced the view that differences exist between
jurisdictions, particularly between civil law and common law countries and
that this should remain as a national matter.
India pointed out that no such provision on the matter exists in the Paris
Convention or the TRIPS Agreement, adding that confidentiality could be
protected through a non-disclosure agreement.
Iran said that there was no definition of client-attorney privilege in the
preliminary study prepared by the Secretariat (SCP/13/4 and SCP/14/2). It
added that there was a need to assess the developmental implications of such
privilege. It further said that such a provision would hinder access of the
public to information, stressing that the preliminary studies by the
Secretariat needed to be improved.
On the issue of transfer of technology, Brazil, on behalf of the DAG, said
that the study (by the Secretariat) does not discuss how patents can be a
barrier to transfer of technology, nor the importance of preserving the
public domain for effective technological development of developing and
least-developed countries.
"It is the Group's view that the discussion on transfer of technology ought
to be broader and systematic, including issues such as the need for correct
disclosure of patents, the use of exceptions and limitations, and the threat
of anti-competitive behaviour," added Brazil.
Referring to the 14 Development Agenda recommendations on technology
transfer, Brazil said that these recommendations provide a guiding framework
for development-oriented transfer of technology, which "should be
demand-driven, transparent, neutral, accountable, and taking into account
the special needs of developing countries, in particular LDCs".
Brazil also reminded the SCP that Articles 66.2 and 67 of the TRIPS
Agreement require developed countries to implement obligations related to
technical cooperation and transfer of technology.
Suggestions by Brazil to the SCP on the issue of technology transfer
include: carrying out a further study to analyse barriers to technology
transfer arising from patents; convening an international commission or
expert group nominated by Member States to address issues pertaining to
technology transfer, particularly on the use of flexibilities in patent law
for promoting technology transfer; and organising a forum to exchange
country experiences on technology transfer in an upcoming SCP session.
On the issue of opposition systems, India commented that the Secretariat's
study (SCP14/5) "fails to provide information and examine the usefulness of
opposition systems, particularly pre-grant opposition systems". It noted
that it is "not only cumbersome, but also very expensive" for developing
countries to fight against the misappropriation of intellectual property in
jurisdictions that do not have pre-grant opposition systems.
In relation to the dissemination of patent information (SCP/13/5 and
SCP/14/3), Brazil, on behalf of the DAG, stressed that a "global
one-stop-shop" mechanism to access patent information in order to improve
the processing of patent applications in a timely manner would not be
suitable unless the quality of the information provided is useful and of a
high standard.
It also noted that the creation of any multilateral database on patent
information must be preceded by a study on the sufficiency of disclosure,
adding that the exchange of search and examination reports will not, by
itself, reduce the problem of backlogs.
India said that the dissemination of patent information is important and
relevant to developing countries for improving the quality of patent
examination, and for research and development.
However, according to India, the limited resources of developing countries
make them unable to have access to paid databases.
It suggested that WIPO's search database PATENTSCOPE, which is currently
limited to information relating to PCT (Patent Cooperation Treaty)
applications, be expanded to include non-PCT-published applications for
patents granted in other jurisdictions.
The next SCP session is tentatively scheduled for 16-20 May 2011. +

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