The World Intellectual Property Organization (WIPO) has convened the 16th session of the WIPO Standing Committee on the Law of Patents (SCP). The SCP elected Albert Tramposch, Administrator for Policy and External Affairs, USPTO as Chair.
Right now, the SCP is considering the agenda item on “Exceptions and Limitations to Patent Rights”. Of relevance to these discussions are: 1) a Brazilian proposal on Exceptions and Limitations to Patent Rights (14/7), 2) a Summary of the Experts’ Study on Exclusions, Exceptions and Limitations (Document SCP/15/3) and 3) a Draft Questionnaire on Exceptions and Limitations to Patent Rights.
Concerning the draft questionnaire on exceptions and limitations to patent rights, Switzerland and Japan have requested more time to examine the survey with Japan noting the “voluminous nature” of the document consisting of 93 questions.
In its intervention, KEI asked that the questionnaire make it clear that the survey would include those limitations and exceptions that are implemented as limitations on remedies to rights, such as restrictions on the availability of injunctions or damages. KEI illustrated its point with references to provisions in U.S. law that limit injunctions for use by or for the federal government (28 USC 1498), the limits on remedies for uses of patents “with respect to a medical practitioner’s performance of a medical activity” (35 USC 287) and limits on injunctions and damages as regards infringements on patents on biological medicines, when those patents are not timely disclosed to biosimiliar competitors. (35 USC 271(e)(6)(B-C).
In Section IX of the questionnaire dealing with “Compulsory licensing and/government use”, the Russian Federation requested the Secretariat to deal with compulsory licensing and government use separately. In KEI’s intervention on Section IX, KEI noted that question 64 stated, “If the exception is provided through case law, please cite the relevant decision(s) and provide its (their) brief summary”.
The KEI representative stated his assumption that question 64 would cover the precedent established in the US by its Supreme Court in eBay v. MercExchange, where the Supreme Court ruled that in an infringement case, a judge must consider the possibility that an injunction will not be granted, and the remedy to the infringement may be limited to the payment of a a court ordered royalty. KEI noted that since 2006, many such compulsory licenses have been granted by U.S. courts.
The three phase Brazilian proposal was first tabled at SCP 14 calling for the following:
- The first phase shall promote 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. The first phase shall also address why and how countries use – or how they understand the possibility of using – the limitations and exceptions provided in their legislations.
- The second phase shall investigate what exceptions or limitations are effective to address development concerns and what are the conditions for their implementation. It is also important to evaluate how national capacities affect the use of exceptions and limitations.
- The third phase shall consider the elaboration of an exceptions and limitations manual, in a non-exhaustive manner, to serve as a reference to WIPO Members.