The 19th session of the WIPO Standing Committee on the Law of Patents (SCP) meets in Geneva from 25 February 2013 to 28 February 2013. The 18th session of the SCP ended on a contentions note as WIPO member states could not agree upon the future work of the Committee. In fact, SCP 19 was initially scheduled for November 2012 but was delayed till February 2013 as WIPO’s membership thought informal discussions were required to produce a successful outcome for the future work of the patent committee.
As noted in KEI’s comments during the General Assembly’s discussion of the SCP’s work program,
The European Union and the United States both want to block further meetings of the Standing Committee on the Law of Patents, until they can agree on a new work program. In the areas of patents and health, the USA and the Africa Group have very different proposals. The Obama Administration’s proposal is considered shockingly bad by public health groups, among other things it wants the Committee to focus only on non-patent barriers to access to medicine, and to effectively promote tougher patent rights in developing countries. The Obama administration made a blunt statement that it opposed work on patent limitations and exceptions, or other things that would weaken patent rights.
The United States of America has submitted a new proposal on the Efficiencies of the Patent System which endeavors to facilitate work sharing between IP offices. The submission states:
1. Work sharing programs among patent offices have become a crucial element in improving the efficiency of patent systems in many countries around the world. The prevalence of crossnational filings of patent applications results in patent applications of the same family being examined in multiple countries. As a result, in many cases multiple offices conduct independent searches on the same or similar sets of patent claims, essentially repeating large portions of the work that another office has already performed. This duplication of efforts is not beneficial to the offices, the applicants or the general public because it exacerbates patent backlog and pendency problems that plague many offices.2. The proliferation of cross-national filings, however, provides a unique opportunity to improve the efficiency of the search and examination process by reusing the work carried out in one office to more efficiently and timely process a related application in another office. The quest for increased efficiency has taken different forms in different contexts. For example, a robust network of Patent Prosecution Highway (PPH) programs has developed between offices of both developed and developing countries. Several other programs have been carried out andare currently being tested between and among offices, in an effort to minimize the duplication of efforts currently taking place with respect to cross-national filings of patent families.
3. In all these programs, one overriding principle is that the sovereignty of the various offices must be maintained. No office does or is expected to “rubber stamp” the decisions made by another office with regards to any member of a family of patent applications. Rather, each office is expected to independently apply its respective national law in determining the patentability of applications. The efficiency improvement comes from reusing the work previously carried out by another office to give a better starting point to the examiner in conducting the search and examination of the application.
The US submission proposes that WIPO member states:
(a) Carry out an inventory of work sharing programs that are or have been taking place between offices, bilaterally, multilaterally and regionally, and evaluate their benefits for IP offices, for users of the IP system and for the general public.(b) Explore ways to further refine and increase the usefulness of these programs, such as by determining best practices that could be adopted by participating offices on a voluntary basis.
(c) Explore the tools that could facilitate effective work sharing programs between participating offices.
(d) Conduct workshops on how work sharing programs can be effectively implemented.
Spain has submitted a new proposal on the improvement of the understanding of the requirement of the inventive step for consideration under the agenda item on quality of patents, including opposition systems. The Spanish submission proposes the following:
20. In the view of the Spanish Patent and Trademark Office (OEPM), all Member States, regardless of their level of development, have an interest in improving knowledge concerning the requirement of inventive step, as do users and society in general.21. In order to be effective, patents must meet the patentability requirements and must only be granted for deserving inventions.
22. In order to improve knowledge concerning the requirement of inventive step among the Member States, the Spanish Patent and Trademark Office (OEPM) proposes that studies coordinated by the WIPO Secretariat should be carried out in cooperation with the Member States and/or experts on:
– the definition of the person skilled in the art as a key figure in the evaluation of inventive step;
– the methods employed to evaluate inventive step;
– differences in terms of the level of inventive step required.If deemed to be appropriate, a single study could be envisaged that would cover all the various aspects. As a part of said study, a questionnaire could be approved in which the representatives of the various Member States would respond to questions relating to the way in which these issues are dealt with in their respective countries.
Brazil has submitted a proposal concerning limitations and exceptions. The Brazilian submission notes that at the 14th session of the SCP, Brazil tabled a proposal for a work program on limitations and exceptions divided into three phases:
(i) an exchange of detailed information on all provisions of exceptions and limitations in national or regional legislation, as well as on the experience of implementation of such provisions, including jurisprudence. The first phase should also address why and how countries use – or how they understand the possibility of using – the limitations and exceptions provided in their legislation;(ii) an investigation of 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 institutional capacities affect the use of exceptions and limitations; and
(iii) the elaboration of an exceptions and limitations manual, in a non-exhaustive manner, to serve as a reference for WIPO Members.
The first phase of the study, in which the Secretariat compiled the national experiences and state practices of no less than 72 Member States in using exceptions and limitations to patent rights, has been completed.
For the second phase, Brazil notes that according to document SCP/14/7 (the original Brazilian proposal on limitations and exceptions):
the second phase shall investigate what exceptions and limitations are effective to address development concerns and what are the conditions for their implementation. It is also important to evaluate how national institutional capacities affect the use of exceptions and limitations.
In its new submission, Brazil has proposed the following elaboration of the second phase:
10. The first element is to ask the Secretariat to prepare an analysis of Exceptions and Limitations which are most commonly used by Member States in each of the 10 clusters of the questionnaire. This document should take into account public policy objectives and society needs as a whole, including, inter alia, development needs, public health goals and competition. It should also consider the obstacles Member States found when implementing such E&Ls.11. The second element is a one-day seminar to be held at the next session of the SCP. The
seminar would have three segments, as follows:(a) A presentation, by the Secretariat, of the findings of the above-mentioned analysis;
(b) A presentation by the Chief Economist plus two experts from different backgrounds on, inter alia, the effectiveness of exceptions and limitations when addressing developing concerns and how national capacities affect the use of exceptions and limitations; and
(c) Presentations by Member States of case studies on implementation of E&L. This segment would be an opportunity for Member States to share their experience, focusing on the conditions for the implementation of E&L, the actual difficulties they have faced, and the solutions to overcome those difficulties. Brazil volunteers to make a presentation and share its experience in this field.
12. The outcome of the analysis by the Secretariat and of the discussions of the Seminar would become additional material for the continuation of the work program included in document SCP/14/7.
The agenda for SCP 19 is reproduced below:
SCP/19/1 PROV.ORIGINAL: ENGLISH
DATE: DECEMBER 19, 2012Standing Committee on the Law of Patents
Nineteenth Session
Geneva, February 25 to 28, 2013DRAFT AGENDA
prepared by the Secretariat
1. Opening of the session
2. Adoption of the agenda
See the present document.3. Adoption of the draft report of the eighteenth session
See document SCP/18/12 Prov.2.4. Report on the international patent system
See documents SCP/12/3 Rev.2, SCP/12/3 Rev.2 Add., SCP/19/2 and 3.5. Exceptions and limitations to patent rights
See documents SCP/14/7 and SCP/18/3.6. Quality of patents, including opposition systems
(i) Quality of patents
See documents SCP/17/7, 8, 10, SCP/18/INF/2, SCP/18/INF/2 Add.,
and SCP/18/9.(ii) Opposition systems and other administrative revocation and invalidation mechanisms
See document SCP/18/4. SCP/19/1 PROV.7. Patents and health
See documents SCP/16/7, SCP/16/7 Corr., SCP/17/11, SCP/18/5,
SCP/18/INF/3 and SCP/18/INF/3 Add.8. Confidentiality of communications between clients and their patent advisors:
cross-border issues
See document SCP/18/6.9. Transfer of technology: patent-related impediments
See documents SCP/18/7 and 8.10. Future work
11. Summary by the Chair
12. Closing of the session
[End of document]