UPDATED- SCP20: Current state of play as countries clash on patents and health (WIPO Standing Committee on the Law of Patents)

On Friday, 31 January 2014 (6:30 PM Geneva time) the WIPO Standing Committee on the Law of Patents (SCP) resumed in plenary mode to discuss the facilitator’s text (Mr. Victor Portelli, Australia) on the future work of this committee including activities on 1) Exceptions and Limitations to Patent Rights, 2) Quality of Patents, including Opposition Systems, 3) Patents and Health, 4 Confidentiality of communications between clients and their patent advisors and 5) Transfer of Technology.

With respect to the agenda item on patents and health, Brazil indicated that his delegation could not join consensus because of paragraph (3)(iii) which stated, “At SCP/21, the potential of a study on the implementation of flexibilities concerning different types of exhaustion of rights in Member States and its contents will be discussed.” The facilitator’s text states, “the potential of a study” (weakened language on exhaustion) which Brazil notes has upset the delicate balance in the WIPO patent committee.

Algeria, on behalf of the African Group and Bangladesh, on behalf of the Asia Pacific Group, accepted the facilitator’s text.

At 7:12 PM, Mr. James Pooley (WIPO Deputy Director General, Innovation and Technology Sector) took the floor.

“In anticipation with the possibility of getting to this point, I have consulted with the Legal Counsel. If there is no agreement on future work, the consequence would be that future work would be limited to work specified in SCP19 which was the five studies on limitations and exceptions.”

After a recess which lasted over 90 minutes, the plenary resumed at 9:08 PM.

The Chair (Dr. Mokhtar Warida, Egypt) asked:

Are all delegations in the room? There was a request for the facilitator to convene an informal meeting to discuss future work.

The facilitator (Australia) noted the following,

We went away with a view to seek conciliation. This future work has now gained consensus.

Brazil took the floor:

At the outset, we don’t consider this future work as a balanced, especially with regards to the interests of developing countries. Nevertheless, since we want to contribute to a facilitate consensus, we will go along with the emerging consensus.

Chair: Balance is in the eye of the beholder.

Japan (Group B) noted:

We did not oppose the text. We did not present our position at that time. We still think that there is an imbalance in patents and health and quality of patents. The study on exhaustion of rights came back into patents and health. In order to redress the balance, we should be accorded the same treatment in quality of patents or confidentiality of communications between clients and their patent advisors. We can join consensus.

There is an inconsistency between “feasibility study” and “fact finding study” and I would like to ask Secretariat to explain for the record, their understanding of a feasibility study and fact-finding study.

Deputy Director General Pooley clarified in the following manner:

The issue is the relationship between “feasibility study” and “fact-finding study”. Feasibility, “somewhat ambiguous” can be read with the phrase, “confined to fact-finding. This will be implied in the conduct of feasibility can be read consistent with phrase “ confined with fact finding”.

At 9:24 PM, the Chair gaveled the text and the work program was approved.

The document below is the facilitator’s text circulated at 6:30PM.


January 31, 2014

1. The non-exhaustive list of issues will remain open for further elaboration and discussion at the next session of the SCP.

2. Without prejudice to the mandate of the SCP, the Committee agreed that its work for the next session (SCP/21) be confined to fact-finding and not lead to harmonization at this stage, and would be carried out as follows:

(1) Exceptions and Limitations to Patent Rights

(i) The Secretariat will prepare a document, based on input received from Member States, on how the following exceptions and limitations are implemented in Member States, without evaluating the effectiveness of those exceptions and limitations: acts for obtaining regulatory approval from authorities; exhaustion of patent rights; compulsory licensing and/or government use; and exceptions and limitations relating to farmers’ and/or breeders’ use of patented inventions. The document should also cover practical challenges encountered by Member States in implementing them.

(ii) A 1/2 day seminar as proposed in document SCP/19/6 will be organized during SCP/21 on the above exceptions or limitations.

(2) Quality of Patents, including Opposition Systems

(i) The following two studies will be prepared by the Secretariat and submitted to SCP/22. They will be based on the information provided by Member States, and will be a collection of factual information without analysis or recommendation:

(a) a study on inventive step that contains the following elements: the definition of the person skilled in the art, methodologies employed for evaluating an inventive step and the level of the inventive step; and

(b) a study on sufficiency of disclosure that contains the following elements: the enabling disclosure requirement, support requirement and written description requirement.

(ii) The Committee will have information sharing during SCP/21, among Member States’ regarding experiences on international work sharing and collaboration. The Committee shared the understanding that discussions on work sharing and collaboration do not imply any automatic acceptance of work sharing products and do not prejudice the sovereign rights of Member States in processing patent applications and patents in accordance with the applicable law.

(iii) Document SCP/20/11 Rev. will be added to the working documents listed in the agenda of the next session of the SCP.

(iv) The Secretariat will improve the WIPO webpage (PCT-PPH) on work sharing incentives.

(3) Patents and Health

(i) The Secretariat, in collaboration, to the extent possible, with the WHO and WTO, will carry out, for SCP/21, a feasibility study on the disclosure of International Non-Propriety Names (INNs) in patent applications and/or patents.

(ii) The Secretariat will prepare, for the next session of the SCP, a study on the role of patent systems in promoting innovative medicines, and in fostering the technology transfer necessary to make generic and patented medicines available in developing countries/least developed countries.

(iii) At SCP/21, the potential of a study on the implementation of flexibilities concerning different types of exhaustion of rights in Member States and its contents will be discussed.

(4) Confidentiality of communications between clients and their patent advisors

(i) The Secretariat will publish the information contained in document SCP/20/9 on the SCP electronic forum website in more accessible and user-friendly format, and update regularly.

(ii) The Committee will conduct, at the next session, a half-day seminar [experiences of Member States in implementing legislation] on the confidentiality of advice from patent advisors and practical experiences of clients as well as patent advisors.

(iii) Member States are invited to submit proposals on this topic.

(5) Transfer of Technology

(i) The Secretariat will collect further practical examples and experiences on patent-related incentives and impediments to transfer of technology from members and observers of the SCP, in particular from least developed countries, taking into account the dimension of absorptive capacity in technology transfer.

(ii) Member States are invited to submit proposals on this topic.

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