[Ip-health] Fwd: TWN IP Info: WIPO SCP future work wrecked by US proposal

K.M. Gopakumar kumargopakm at gmail.com
Mon Jan 4 02:25:43 PST 2016

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From: TWN News <news at twnnews.net>
Date: Mon, Jan 4, 2016 at 3:40 PM
Subject: TWN IP Info: WIPO SCP future work wrecked by US proposal
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*Title :* TWN IP Info: WIPO SCP future work wrecked by US proposal
*Date :* 04 January 2016


TWN Info Service on Intellectual Property Issues (Jan16/01)
4 January 2016
Third World Network

*WIPO: SCP future work wrecked by US proposal *

Geneva, 4 January (K M Gopakumar) – The Standing Committee on Patents (SCP)
of the World Intellectual Property Organization (WIPO) concluded its 23rd
session without the adoption of a future work programme.

The SCP23 took place on 30 November to 4 December 2015 at the WIPO
headquarters in Geneva.

One and a half days of negotiations failed to reach a consensus when the
work proposal was presented at the plenary meeting on 4 December around 9
pm. Consensus eluded the proposal on work sharing based on a proposal from
the United States (US) (

The proposal contained three activities.

First, “the Secretariat to conduct a study of whether, under what
circumstances and how the implementation of work sharing and international
cooperation programs between patent offices could assist the collaborating
offices in conducting more efficient searches and examinations, and in
granting high quality patents by leveraging the work carried out in other

Secondly, “a study/survey of the views of member states concerning sharing
search strategies”.

Third, “the Secretariat study the benefits and possible impediments to
making national collections of prior art available to all the offices, for
example through an IT portal”.

Based on the proposal and Group B’s insistence the Chair proposed the
following activity as future work on quality of patents, including
opposition systems.

“The Secretariat will circulate a questionnaire prior to SCP/24 for
comments from Member States and regional patent offices, which contains the
following elements: How each Member State understands the quality of and
implementation of work sharing and collaborative activities between patent
offices, including experiences, their impacts, exchanging search
strategies, tools to share information and capacity building needs in the
area of work sharing. Based on the responses to the questionnaire, a study
will be submitted to SCP /25”.

[‘Work sharing’ is a 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 patent
offices; accelerating the granting of a patent based on the decision of
another patent office; collaboration between/among patent offices to
jointly examine patent applications; various platforms and tools to share
information on search and examination. See

The WIPO Secretariat has also 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.  (

According to developed countries there is a huge backlog of patent
application waiting for examination in various patent offices and the best
way to resolve the issue is through work sharing as a solution. Developed
countries argue that it is an effective way to improve the quality of
patents. Developing countries view work sharing as a method of functionally
harmonizing the scope of patentability – an issue that falls within the
realm of substantive patent law.

Work sharing arrangement encourages reliance on foreign patent offices and,
as a result, undermine the current flexibility available to WIPO Member
States to determine the threshold for patentability as per their
development needs. In the long term, work sharing will also reduce the
capacity to examine patent applications at the national level, according to
national and development interests. Developing countries are concerned that
discussion on work sharing in SCP would lead to a norm setting on work
sharing arrangement which are purely bilateral or plurilateral
arrangements. Therefore developing countries objected the idea of work
sharing in SCP.

When the Chair presented the future work at the last plenary India, the
coordinator of the Asia Pacific Group stated that there are concerns among
the members of the group regarding theelements of future work. India
further stated that respective Member States of the Group would state their
concerns.  India also expressed the hope that if those concerns can be
addressed then a consensus can be reached on future work.

Following this Iran stated that it could not go along with the proposed
work program on work sharing. Iran stated that work sharing is a bilateral
or trilateral issue. Further there is no definition on quality of patents.
It said that work sharing is a matter of procedural issue and therefore
fall outside the mandate of the SCP. Therefore Iran demanded the removal of
the activities on work sharing from the future work.

Iran also proposed changes to the proposed activity on “Confidentiality of
Communications between Clients and Their Patent Advisors”.  The proposed
work program stated:

“*Based on the information received from members and observers of the SCP,
a compilation will be prepared by the Secretariat of court cases with
respect to cross–border aspects of client-patent advisor privilege
including limitations or difficulties encountered in cross-border issues*”.

Iran proposed deletion of words that come after the word “cases”.  Romania
on behalf of the Central European and Balkan States (CEBS) requested a
10-minute break to resolve the issue. This break went on for more than an
hour. Third World Network learned that during the informal consultations
Iran had proposed language changes which turned out to be unacceptable for
Group B (the group of developed countries). The Secretariat also tried to
come up with compromising language but could not succeed.

When the plenary reconvened the Chair did not propose any compromise
language but proposed the old text as it is. Iran once again repeated that
it could not join the consensus. It also stated that during the discussion
on the agenda item concerned many developing countries expressed concerns
on work sharing and confidentiality of communications between clients and
their patent advisors. Iran also stressed that it is important to respect
and accommodate concerns and interest of all Member States. It added that
its concerns were conveyed through the Asia Pacific Group. Iran called upon
the Secretariat to act in an impartial and neutral manner in accordance
with the rules (referring to the importance of considering concerns of
individual Member States).

After the intervention the Chair again asked the Committee whether there is
a consensus on future work. In response to the Chair, Group B, the CEBS
Group and the EU expressed their willingness to accept the text and
expressed regret that consensus was not achieved. Group B blamed Iran
without naming it, for not joining the consensus.

Pakistan called for a flexible approach and taking into account the
interest of all Member States in an equitable manner.

At this stage the Chair once again asked Iran whether it could join the
consensus.  India took the floor prior to Iran’s response and stated that
as coordinator of the Asia Pacific Group, India had conveyed since the
first draft that members in the Group will not go along on this. Therefore
isolating and naming one country does not set a positive precedent. Further
it stated that due respect should be given to the views of individual
Member States.

Pakistan supported the statement made by India and stated that every State
has the right to hold on their position and it is not cordial to isolate
them. Following Pakistan, Iran took the floor and expressed its inability
to join the consensus. Iran also stated that it is a common practice in
WIPO and other organisations that countries hold their position. It stated
that the Chair should be neutral and say there is no consensus and it is
not a good practice to isolate a single country in international
organisations especially in WIPO.

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