The Assemblies of the Member States of the World Intellectual Property Organization (WIPO) convenes its Fifty-Fourth Series of meetings in Geneva from 22 September 2014 to 30 September 2014. These Assemblies include, inter alia, meetings of the WIPO General Assembly, the WIPO Coordination Committee, the Paris Union Assembly, the Berne Union Assembly, the Madrid Union Assembly, the Lisbon Union Assembly, the Patent Cooperation Treaty Assembly, the WIPO Copyright Treaty (WCT) Assembly and the WIPO Performances and Phonograms Treaty (WPPT) Assembly. The Assembly is expected to make key decisions related to the Design Law Treaty and an instrument for the protection of genetic resources, traditional knowledge and folklore. With respect to the work on the WIPO Standing Committee on Copyright and Related Rights (SCCR), the picture is a bit more unclear as the last meeting of the SCCR (30 June 2014 to 4 July 2014) concluded without reaching agreement on recommendations to the WIPO General Assembly on the following two topics: 1) Protection of Broadcasting Organizations and 2) Limitations and exceptions: libraries and archives.
In terms of the General Assembly’s schedule, the WIPO timetable indicates that the Report of the Program and Budget Committee, the Report of the Committee on Development and Intellectual Property (CDIP) and Review of the Implementation of the Development Agenda Recommendations and the Assembly’s Consideration of the Convening of a Diplomatic Conference for the Adoption of a Design Law Treaty (DLT) will be discussed on Wednesday, 24 September 2014. Matters related to the Treaty for the Protection of Broadcasting Organizations and the SCCR’s treatment of limitations and exceptions are slated for Thursday, 25 September 2014. WIPO will also treat on matters concerning the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore , the Standing Committee on the Law of Patents, Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT), the Committee on WIPO Standards (CWS), the Advisory Committee on Enforcement (ACE) and the PCT System on Thursday, 25 September 2014. Discussions on the Madrid System, the Hague System, the Lisbon System and WIPO Arbitration and Mediation Center, including Domain Names are scheduled for Friday, 26 September 2014. According to the timetable provided by WIPO, it is expected that WIPO Director-General will unveil his senior management team on Wednesday, 24 September 2014.
Design Law Treaty
As noted in KEI’s piece, WIPO fails to reach agreement to convene a Diplomatic Conference for adoption of the Design Law Treaty, in May 2014, the Assemblies of WIPO member states “could not reach consensus on convening a Diplomatic Conference on concluding the Design Law Treaty.”
The main issue of contention is technical assistance and capacity building for developing countries and LDCs in the implementation of a possible Design Law Treaty. Many developing countries insisted that a specific article of the Design Law Treaty be crafted to address technical assistance and capacity building whereas the United States preferred that language on technical assistance should be framed as a resolution. The following decision point on the Design Law Treaty awaits the 2014 General Assembly:
23. The WIPO General Assembly is invited to decide on whether to convene a diplomatic conference for the adoption of a Design Law Treaty as soon as practicable at a venue to be decided.
It is unclear at this juncture whether member states can resolve their differences on the technical assistance provisions of the Design Law Treaty. An interesting insight on why the US may be so resistant to the African Group’s demands on technical assistance was voiced by Professor Justin Hughes (Loyola Law School and former Senior Advisor to the Under Secretary of Commerce for IP) at a a lecture at Harvard Law School on “CopyrightX: Special Event – Negotiating Copyright Treaties”. In his lecture, Professor Hughes noted,
of all the international organizations in Geneva, or the UN based organizations, the WIPO is a little different. And the WIPO is different in the following sense. If you are talking about the ITU, or the World Health Organization or the World Labor Organization [sic], in each of those organizations, Member States pay dues. But the main source of revenue at WIPO are from the PCT and Madrid payments that are made by trademark and patent holders. And that means with the exception of the rise of China, most of the inflow comes from developed countries. And there is a perception, right or wrong, that that is is used as a kind of slush fund by developing countries who to want siphon off as much of this money as possible by developing countries to use for their own projects. And I think that’s why it becomes especially contentious because it’s not a question of we all pay our membership dues and we divvy up the expenses. It’s that most of the money coming in is coming from developed economies and China into the patent system and the Madrid system. And large excess of that is getting paid out to hold conferences, bring people from countries to Geneva, and hold diplomatic conferences and that’s why it’s a particular bone of contention…My guess is that the US position reflects the patent owners position, “where is our money going?”
In terms of WIPO’s work on negotiating instruments on the protection of genetic resources, traditional knowledge and folklore, the GA will “take stock of, and consider the texts, progress made and decide on convening a diplomatic conference.” Substantive issues that still need to be resolved include 1) mandatory disclosure of origin (something that the United States objects to, 2) prior-informed consent and 3) fair-and-equitable benefit sharing. It is anticipated that prior to the convening of a Diplomatic Conference, the following issues need to be resolved in relation to TK and folklore: “objectives and principles, definitions, subject matter of protection, beneficiaries, scope of protection, exceptions and limitations, databases, disclosure, sanctions and remedies, and technical assistance and capacity building .” With genetic resources, the following issues need to be ironed out: “definitions, policy objectives, options to achieve the objectives, including disclosure requirements, databases and other defensive measures, trans-boundary issues, technical assistance and capacity.”
Currently, the membership is divided on the way forward. At the last committee meeting (IGC28), The United States submitted a proposal on a work plan for the IGC which would push back the decision for convening a diplomatic conference on instruments for the protection of genetic resources, traditional knowledge and folklore till the WIPO General Assembly in 2015. The US proposal posits making full use of prior art to prevent the grant of erroneous patents for “inventions or creations that are not novel or inventive with regard to genetic resources and traditional knowledge associated with genetic resources.” In the US proposal, the IGC would submit the text(s) on genetic resources, traditional knowledge and folklore to the 2015 General Assembly along with a recommendation as to “whether or not the objectives, principles and text are sufficiently defined so as to schedule a Diplomatic Conference.” If the IGC failed to make a recommendation, the IGC would continue to meet in the next biennium. In terms of timing, the US proposal reads:
The IGC is requested to submit to the 2015 General Assembly the text(s) related to the protection of GRs, TK and TCEs resulting from such further work, as well as a recommendation as whether or not the objectives, principles and text are sufficiently defined so as to schedule a Diplomatic conference and the need for further work. The 2015 General Assembly will, based upon such recommendation of the IGC, decide whether or not to convene any Diplomatic conference, and make any appropriate recommendations, taking account of the budgetary process. If IGC 31 fails to make a recommendation, the IGC will continue to meet in the next biennium, with the same frequency as other WIPO committees, with an agenda to be decided on a meeting by meeting basis.
For the African Group, the three texts on genetic resources, traditional knowledge and folklore are sufficiently mature in order for the General Assembly in 2014 to convene a Diplomatic Conference in 2015. As they noted in their statement at IGC 28, the current mandate of the IGC instructs the committee to submit texts on GR, TK and folklore to the GA in 2014 “take stock of and consider the text(s), progress made and decide on convening a Diplomatic Conference and will consider the need for additional meetings, taking account of the budgetary process” noting that the mandate called upon WIPO to finalize the texts within the 2014/2015 biennium. In terms of a work program, the African Group called for the convening of three sessions of the IGC in 2015. The first IGC meeting of 2015 would take place in February would devote five days to text based negotiations on folklore followed by 5 days of text based negotiations on traditional knowledge. The second session of the IGC would take place in April 2015 and would devote 5 days to text based negotiations on genetic resources. The African Group proposed that the third session of the IGC in 2015 take place in May 2015 with 5 days devoted to cross-cutting issues and a stock-taking session on genetic resources, traditional knowledge and folklore. The African Group’s hope is that WIPO convene a diplomatic conference for the protection of genetic resources, traditional knowledge and folklore in November 2015.
The Like-Minded Group of countries, a diverse coalition of countries that includes Algeria, Angola, Bangladesh, Colombia, Egypt, India, Indonesia, Malaysia, Myanmar, Namibia, Pakistan, Peru, South Africa, Tanzania, Thailand, and Zimbabwe supported the African Group’s proposal for the General Assembly in 2014 to decide on convening a diplomatic in 2015.
The Group of Latin American and Caribbean States (GRULAC) proposed a work plan which placed the decision to convene a Diplomatic Conference with the General Assembly of 2015. GRULAC proposed four sessions of the IGC in 2015: 1) February 2015-5 days devoted to text-based negotiations on GR with a focus on considering options for a draft legal text, 2) April 2016- 1 day devoted to the cross cutting issues related to traditional knowledge and folklore and 4 days devoted to focused text-based discussions on TK including Subject Matter of Protection, Beneficiaries, Scope of Protection and Limitations and Exceptions – Duration, 3) May 2015- 1 day devoted to the cross cutting issues related to traditional knowledge and folklore and 4 days devoted to focused text-based discussions on folklore including Subject Matter of Protection, Beneficiaries, Scope of Protection and Limitations and Exceptions and 4) July 2015 a three day meeting devoted to cross-cutting issues on GR, TK and folklore and a Ambassadors/Senior Capital-Based Officials meeting to share views on key policy issues relating to the negotiations to further inform/guide the process.
Take home message: In terms of convening a diplomatic conference on a treaty for the protection of genetic resources, traditional knowledge and folklore, WIPO is divided. The African Group and the Like-Minded Group hold the view that the texts for the protection of genetic resources, traditional knowledge and folklore are sufficiently mature and are ready for prime time; they want WIPO’s 2014 General Assembly to make its decision to convene a Diplomatic Conference in 2015. For Group B, the texts are not sufficiently mature. In the medium to long term, perhaps it’s not a question of “If” but “when”. In contrast to WIPO SCCR discussions on limitations and exceptions for libraries and archives, with respect to genetic resources, traditional knowledge and folklore, even the US is willing to concede the possibility of convening a diplomatic conference undergirded by text based negotiations.
In recent years, the Lisbon Union has convened 9 sessions of the Working Group on the Development of the Lisbon System (Appellations of Origin) to revise the Lisbon System to include geographical indications (in addition to appellations of origin) and to create an international register for geographical indications and appellations of origin. This group has been chaired by, Mihály Zoltan Ficsor. Vice President of the Hungarian IP Office, and son of Mihály Ficsor, the well-known copyright expert and former WIPO DDG).
According to document LI/WG/DEV/8/2 (Draft Revised Lisbon Agreement on Appellations of Origin and Geographical Indications), the Lisbon Working Group is
reviewing the international system of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (hereinafter referred to as “the Lisbon Agreement”) with a view to improving the Lisbon system so that it might attract a wider membership, while preserving the principles and objectives of the Lisbon Agreement. On this basis, the Working Group is working towards a revision of the Lisbon Agreement that would involve: (i) the refinement of its current legal framework; (ii) the inclusion of provisions ensuring that the Lisbon system also applies in respect of geographical indications; and (iii) the inclusion of the possibility of accession by intergovernmental organizations.
Given that the question of creating a multilateral system for the registration of geographical indications for wines and spirits has dogged the WTO since 1997, the Lisbon Union’s gambit in creating an international register for geographical indications under the auspices of WIPO represents a cunning strategy of norm-setting and forum shifting by a coalition of the willing. In a meeting with NGOs on 25 March 2014, WIPO Director-General Francis Gurry specifically identified the creation of the Lisbon Union’s international register for geographical indications as one of four key normative processes undertaken at WIPO (along with the Design Law Treaty, the Broadcasting Treaty and the IGC process to negotiate international legally binding instrument/instruments to protect traditional cultural expressions (folklore), traditional knowledge and genetic resources).
Given the firestorm GIs have generated in the context of the Transatlantic Trade and Investment Partnership (TTIP) negotiations, WIPO will be an interest place to watch. Come 2015, the Lisbon Union may create an international register for appellations of origin and geographical indication-something that has eluded the WTO for years-not without a long, drawn-out procedural fight at the WIPO General Assembly with Australia, Canada, New Zealand and the United States.
The Secretariat report on the review of the Lisbon Union (LI/A/31/1) notes that the “preparatory committee meeting for the diplomatic conference will be held in October 2014 in conjunction with the tenth session of the Working Group. At that session, the Working Group will focus on technically preparing the texts of the draft Revised Lisbon Agreement and the draft Regulations for the diplomatic conference and on reducing the number of pending issues, where possible.” The decision point prepared for the Lisbon Union anticipates the convening of a Diplomatic Conference for the Adoption of a Revised Lisbon Agreement on Appellations of Origin and Geographical Indications in 2015. There is a strong possibility under the agenda item for the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, opponents of this revision including Australia, the United States, Canada and others may raise objections to this process. As these aforementioned countries are not members of the Lisbon Union, the SCT agenda item may provide the only recourse for opponents of the Lisbon revision to voice their objections.
Due to the impasse of SCCR28, the WIPO General Assembly of 2014 is not currently in the position to decide upon the convening of a Diplomatic Conference in 2016 for adoption of a Treaty for the Protection of Broadcasting Organizations. Similarly, there is no recommendation for the General Assembly’s adoption regarding limitations and exceptions for libraries and archives. However, the mandate of WIPO’s General Assembly 2012 still applies:
“The Committee was reminded that the terms of the work program adopted by the 2012 General Assembly recommended that the SCCR continue discussion to work towards an appropriate international legal instrument or instruments (whether model law, joint recommendation, treaty and/or other forms), with the target to submit recommendations on limitations and exceptions for libraries and archives to the General Assembly by the 28th session of the SCCR.”
Despite the impasse on broadcasting, It is unclear at this stage whether the 2014 General Assembly will witness high-level political maneuvering force the GA’s hand in taking a decision to convene a Diplomatic Conference in 2016 for adoption of a Treaty for the Protection of Broadcasting Organizations. Perhaps even more so than with WIPO’s work on genetic resources, traditional knowledge and folklore, it’s not a question of “If” but “when” WIPO convenes a Diplomatic Conference to conclude a Treaty for the Protection of Broadcasting Organizations.
As the Standing Committee on the Law of Patents (SCP) is not currently engaging in norm-setting activities, the WIPO General Assembly is only invited to take note of the report prepared by the Secretariat (WO/GA/46/7). The Secretariat reports does describe the future work the Committee will address at its 21st session in November 2014.
In terms of patents and health, the Committee instructed the WIPO secretariat, to carry out a feasibility study (in collaboration with WHO and WTO to the extent possible) on the disclosure of International Nonproprietary Names (INNs) in patent applications and/or patents. The Committee also instructed the Secretariat to “prepare 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.”
In terms of exceptions and limitations to patent rights, the Committee requested the WIPO secretariat to prepare a document (based on Member State input) on how the following 4 E&Ls were implemented in different countries including: (i) acts for obtaining regulatory approval from authorities, (ii) exhaustion of patent rights, (iii) compulsory licensing and/or government use and (iv) farmers’ and/or breeders’ use of patented inventions. The study is expected to provide examples of practical challenges “without evaluating the effectiveness of those exceptions and limitations.”
On the topic of “quality of patents, including opposition systems,” the Committee agreed that the upcoming SCP would convene an information sharing session regarding Member States’ experiences on international work sharing and collaboration. Although this is framed as just an information sharing session, this session on worksharing could serve as a potential first step in for WIPO to re-engage in patent harmonization via the patent prosecution highway (PPH) initiative.