ITSSD 'Geneva Diary' of the Proceedings of the 16th Session of the WIPO Standing Committee on the Law of Patents Reflects Efforts to Move Development Agenda Forward at Expense of IP Rights

2011-06-12T23:54:00.014-04:00

[The ITSSD, an ad hoc observer to the WIPO Standing Committee on the Law of Patents (SCP), recently attended the 16th session meetings of the SCP that took place during May 16-20, 2011 in Geneva, Switzerland. As an ad hoc observer, the ITSSD heard, observed and contributed to the discussion during the SCP's Plenary sessions. The ITSSD has transcribed its notes of these Plenary sessions to the best of its ability in the interest of providing a reportage of the proceedings for the public interest. The ITSSD acknowledges that its 'Diary of the Proceedings' is incomplete and reflects in some cases a summary of the statements made by particular delegations; but it does provide an accurate assessment of those discussions the ITSSD was able to gather and report. To assist the reader in better understanding the context of those discussions the ITSSD has provided annotations containing SCP/WIPO document references and, in some instances, excerpts of those documents.

As noted above the ITSSD intervened in the discussions at various points. However, since those interventions were made in a contemporaneous and impromptu fashion, they are not fully reproduced in this Diary. The ITSSD has been assured that its interventions (or a summary thereof) have been recorded by the SCP and will be transcribed and incorporated within the Secretariat's Report for the SCP's 15th session.]

ITSSD Geneva Diary

16^th WIPO SCP Plenary Session

May 16-20, 2011

Geneva, Switzerland

Day 1 - Monday, May 16, 2011:

Introduction by Secretariat/Pooley - The purpose here is to secure the agreement that might otherwise not be.

There is growing interest in patent policies at the multilateral level

We must take advantage of opportunities to address issues which will contribute to a better patent environment internationally.

The Secretariat invites all to work in a politically positive way with goodwill and friendship.

Agenda Item #2 - Election of Chair and Two Vice Chairs:

The Secretariat seeks recommendations.

Poland – proposes Tramposh as Chair and representative from China – Ms. Dong Chang as vice chair.

Chile – seconds Poland’s proposal.

Switzerland – supports Poland’s proposal.

Hungary – supports Poland’s proposal.

Tramposh is new SCP Chair.

Agenda Item #3: Adoption of the Agenda of SCP 15:

France – wants to speak re: Agenda 12 – at SCP 15 agreed to specific item to be included in SCP 16 to allow member states to express views on Development Agenda recommendations. [See Summary by the Chair, Par. 10 (SCP/15/5) (10/15/10) available online at: http://www.wipo.int/edocs/mdocs/scp/en/scp_15/scp_15_5.pdf . (“Agenda Item 6: Future work - 10. Following the decision of the 2010 WIPO General Assembly on the coordination mechanisms and monitoring, assessing and reporting modalities of relevant bodies on the implementation of the Development Agenda recommendations, Member States will be given the opportunity to express their views on this issue under a specific item to be included in the agenda of the 16^th session of the Committee. These views will be considered in the context of the standardized procedure that WIPO will propose for relevant WIPO bodies.”].

France speaks for Group B – thanks for Item 12 – should adopt for this item a new label – contribution of committee to development agenda recommendations - “Contribution of this committee to implementation of respective development agenda recommendations”. The words in Agenda Item 12 currently are deleted.

Spain – expresses displeasure with non-translation of annexes of 15/3 which was not translated into Spanish. Item 13 of Chairman’s report noted this request but it was ignored.

Secretariat – translation work not finished but well under way.

Brazil – Re: suggestion of France with respect to Item 12 – supports France’s suggestion. More precise language approved, which should be used in other SCP committees.

Hungary – supports French proposal.

India – prefers different wording – “Contribution of committee to implementation of development agenda” but supports change – looks forward to having this wording serve as template in other WIPO committees.

Proposal from France adopted.

Agenda Item #4: Accreditation of Observers:

Medicines Patent Pool seeking ad hoc observer status. – contained in SCP 16/6. SCP invited to take position on request for ad hoc status.

Chile – supports Patents Pool ad hoc observer.

Agenda Item #5 - Adoption of the Draft Report of the Fifteenth Session:

Proposed Adoption of Draft Report of 15^th Session by SCP as Final.

Mexico

– reform of industrial law should be included in paragraph 1.5.7 of Draft Report.

Egypt – Delegation not properly represented in report for 15^th session. Will provide full list to be included in Draft Report.

Australia

– one word correction.

Chair - Proposed changes will be adopted as a Final Report.

Agenda Item #6 - Report on the International Patent System:

Revised Annex II – SCP/16/2 – “Certain Aspects of National/Regional Patents Laws” available online at: http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_2-main1.pdf and http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_2-annex1.pdf - document continues to be open and can be updated.

South Africa, representing the African Group – wants to discuss patents & health, quality, tech transfer, exceptions, limitations. Balance of patent holders and users necessary. The Public Interest is extremely important. Public health is one of key priorities of the African continent. The proposed studies on patents and public health and the prior study on compulsory licenses (CL)’s - ; database on communicable & noncommunicable diseases; technical assistance; and other studies eac need to address development needs.

The UK and Canadian proposal for patent quality is appreciated. Flexibilities for patents are emphasized and supported. Brazil’s proposal for a questionnaire on exceptions and limitations - SCP/16/3 - Draft Questionnaire on Exceptions and Limitations to Patent Rights - http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_3.pdf is appreciated and supported. Tech transfer is important to the African group – climate change, WHO, ITU, other groups. WIPO should actively participate in interaction between patents and technology transfer discussions. Capacity building, tech assistance, cooperation with academia for R&D discussions necessary to ensure tech transfer and that patent system contributes to innovation, tech dissemination and public interest.

Patent quality initiatives should take into account national patent systems.

SCP should focus on issues of common interest to membership. The Non-Exhaustive List ( http://www.wipo.int/edocs/mdocs/scp/en/scp_15/scp_15_inf_2.pdf )should be held open and any additions thereto should be approved by consensus. The same result should obtain for the Report on the Int’l System - http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=160949 .

France, representing Group B. 16^th session initiates new stage with adoption of new work program adopted last fall. There is a great opportunity for the SCP to implement its mandate. The SCP/16/3 - Draft Questionnaire on Exceptions and Limitations to Patent Rights - is very interesting. France has suggestions for its improvement. Regarding the UK and Canadian Proposal - SCP/16/5 -http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_5.pdf , a program on the quality of patents, Group B supports it. Tech infrastructure development, info exchange on quality of patents and process improvement are all important matters. This work program is complimentary to what is being done in the PCT system – processes. This program intends to improve quality at the national level. As concerns Item #9 – Patents & Health of the Agenda - SCP/16/1 -
http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_1.pdf , WIPO can contribute based on its technical expertise to work on this issue. But WIPO should NOT replicate the efforts of other fora. Agenda Item #10 - Client-Patent Advisor Privilege - SCP/16/4 Rev. - http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_4_rev.pdf (See also: SCP/14/ 2 - http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_ref_scp_14_2.pdf - is of interest to users. As concerns Agenda Item # 11 - on Transfer of Technology – SCP/14/4 Rev. - http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=165339 – i.e., - the revised version of study 14/4Rev. – France and Group B appreciate the revision. There is a need to focus on which projects on the same subject are being undertaken in the CDIP to avoid duplication of efforts.

India, representing the Development Agenda Group (DAG) makes the following statement. India joins other delegations in congratulating the new chairmanship. Since 2009, the SCP has provided a valuable forum for useful exchange of views on various issues. Patents have most direct impact on innovation, economic growth and national development – the SCP discussion has been very important.

India

has followed closely the discussions on exclusions, tech transfer, patents & standards and anticompetitive practices. India is interested in how patent systems can be calibrated to suit national needs and dismisses dogma that by not granting & enforcing patents strictly would cause problems. Countries face challenges in getting their patent system right – this has been exposed in the SCP.

It is important to have good provisions and to implement them wisely in sight of the broader goals of the patent system. India looks forward to safeguarding the fundamental balance in the patent system between the private rights of holders and the public interest. India also looks forward to continuing the consideration of the proposed work program on exclusions, limitations, tech transfer, client-attorney privileges and the opposition system, and patents/health and quality of patents. Discussions should lead to a work program that leads to balance and acceptance by all member states. There should be recognition of the linkages between patents and development. The SCP will report to the General Assembly to see how the WIPO Development Agenda will contribute to its work.

This SCP should remain abreast of new and emerging issues – the non-exhaustive list of issues should remain open. Background papers considered by the SCP and related discussions should be captured in a pragmatic manner on the WIPO website so they can be used by researchers, members, etc. Hyperlinks to relevant studies should be provided.

Hungary

, speaking for the EU and its Member States, appreciates the summary of the study on exceptions, attorney-client privilege, and patent quality. The Non-Exhaustive List ( http://www.wipo.int/edocs/mdocs/scp/en/scp_15/scp_15_inf_2.pdf ) SCP/15/INF/2 update is appreciated. Hungary also appreciates the SCP’s contribution to the harmonization of patent law. Hungary wishes to point out the growing overlap between the work of the SCP and that of other WIPO committees. Hungary seeks coordination with other committees before SCP work is undertaken. The EU will cooperate with the Chair during forthcoming discussions this week, including with respect to the draft questionnaire.

Poland

, speaking for central European and Baltic states, appreciates the attorney-client privilege document.

Poland

also appreciates questionnaire and study on exceptions & limitations. The UK/Canada proposal for opposition systems to ensure high quality patents will enhance better access to more patent information and a user-friendly int’l patent system. Poland was disappointed during the last meeting that members did not reach compromise/consensus on a Development Agenda implementation mechanism, and wishes to focus on substantive issues during this coming week.

U.S. – wishes to thank the secretariat for its hard work in preparing for this meeting, and supports the Group B statement of France. The U.S. looks forward to rich discussion on the issues: exceptions, patent quality, patent/health, attorney-client privilege & tech transfer. Technical discussions on patent policies should be discussed to engage in work that results in a productive efficient int’l patent system. The U.S. hopes that discussion of all issues will be undertaken to improve the functioning of the patent system. There should be robust dialogue on tech transfer issues to highlight the incentives & mechanisms in place within the int’l patent system.

Mexico – The SCP reports have increased the general understanding of the issues, particularly, the report of the experts group. The Brazilian draft questionnaire also assists members to better understand the issues, and to help the SCP prepare a program for immediate implementation. The UK & Canada proposal on patent quality is appreciated. Mexico would like to develop the issue on patents/health through the questionnaire and/or a study, and to refer to work on this issue undertaken in other fora.

Egypt – All documents must be prepared in the Arabic language. Egypt supports the statements of South Africa &

India

concerning the SCP’s important work dealing with the matters of development. The SCP must push the issues forward to reach the advanced and complete conviction that development is a protected area within the vision of WIPO. Many studies of this session – exceptions, patents/health, tech transfer & patent quality & opposition systems contain important issues. The SCP is obliged to implement the recommendations of the DAG, namely the central link between patents and development. Exceptions & limitations & tech transfer issues are quite important b/c they are linked to development efforts and the recommendations of the DAG. Patents/health – health is a basic question of national policy and requires the necessary flexibilities to deal with related patents. Egypt supports the African Group proposal - SCP/16/7 - Proposal Submitted by the Delegation of South Africa on Behalf of the African Group and the Development Agenda Group - http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_7.pdf ; SCP/16/7 CORR. - Corrigendum: Proposal Submitted by the Delegation of South Africa on Behalf of the African Group and the Development Agenda Group - http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_7_corr.pdf, and the UK/Canada (patent quality proposal - SCP/16/5, supra) as a contribution dealing with development issues. Studies and discussions are the best way to advance the work of the SCP.

KEI – James Love – SCP/16/2 Revised annex II of 12/3/Rev. – wants the opportunity to comment on its contents. Agenda items should also include within the area of public health – an exploration of the conflicts between patents and standards and ways to address anticompetitive practices in this area.

AIPPI – seeks coffee break.

SAIFI - Curchod – exceptions & limitations; attorney-client privilege wants to focus on this week.

AIPPI – Statement - attorney-client – constructive comments should not be taken as detracting from AIPPI’s support of this report. The report discusses how civil law applies professional secrecy and common law applies privilege from forcible disclosure to protect attorney-client privilege. Privilege has nothing to do with the ability to seek access to the courts. Privilege derives from the need for trust & confidentiality to secure correct legal advice. Both systems of law recognize open dialogue between client and counsel necessary for securing correct legal advice. This principle has been accepted and applied in both civil and common law nations for centuries. Confidentiality actually protects the broader public interest in the administration of justice – lawyers need to help governments to address the burden on the courts to prevent disputes from arising that reach the courts. The protection for communications of non-lawyer patent advisors – is not an extension of confidentiality of protection for patent lawyer advisers. Both perform the same service. This is a new profession that deserves the same protection. AIPPI is concerned with the loss of privilege from the non-lawyer side to the lawyer side. Third World Network (TWN) questioned the privilege applied in the Nobel Pharma case – involved fraud not privilege. Privilege is not catalyst of such fraud, dishonesty is. Frank and open discussions are at risk. An uncertain privilege is better than no privilege at all. How does privilege relate to development? AIPPI observes most IP owners are companies. To develop trade, countries need to develop conditions through their laws in a way that does not create barriers there. The onus is not to create laws that impair trade, such as where confidentiality of legal advice is placed at risk. Failure to fix this problem is more pronounced in developing countries. Nearly every country protects confidentiality to some extent from forcible disclosure. Cross-border confidentiality must be solved by international agreement. National laws can resolve this problem. Two major forms are privilege for common law and professional secrecy for civil law. Protection from forcible disclosure does not conflict with patent law and implicate exceptions and limitations.

Chair – must provide statement in writing if make it verbally.

Substantive Discussion

Agenda Item #7 – Exceptions and Limitations to the Right

Secretariat – The documents submitted during last session - SCP/13/3 - Exclusions from Patentable Subject Matter and Exceptions and Limitations to the Rights - http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_ref_scp_13_3.pdf; SCP/14/7 – Proposal from Brazil - http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_ref_scp_14_7.pdf - Brazil proposal on exceptions/limitations - ; SCP/15/3 – Experts' Study on Exclusions from Patentable Subject Matter and Exceptions and Limitations to the Rights - http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=154817. The main document is Draft Questionnaire on exceptions/limitations – prepared by secretariat for consideration by member states - SCP/16/3 - having 11 sections (supra). Member states should address in their response to the general questions: The source of law; rationale of law; scope or entitlement to limitation/exception; must explain particular legal framework for each that is adequate to secure the government objective sought; the practical problems of implementing exceptions/limitations. These are the most common exceptions/limitations, but others can be provided under Section XI.

Switzerland – Member states need more time to review this lengthy document to make substantive comments.

Hungary – on behalf of EU & Member States – strong IP system with enforcement system is consistent with exceptions/limitations. Int’l system governed by TRIPS and the Paris Convention. Considerable harmonization can be achieved by int’l law and EU patent cooperation. The TRIPS and Public Health Declaration governs public health.

Morocco – There is a public ordre exception to patentability. The Morocco-US FTA excludes from patentability and the protection of industrial property – scientific discoveries, aesthetic creations, software, animal breeds which could affect public morals or public order. As a matter of Moroccan IP law, computer software is excluded by proposing patentability of those inventions which require use of computer. There is also the considered possibility of patenting plant species. It is timely if WIPO would clarify these issues through the work of the SCP.

India

– DAG statement –

India

and the DAG have been following the discussion on exceptions and limitations, which is important to the work of the SCP and the WIPO as whole, specifically after Development Agenda discussions allowed for a constructive exchange of views. It is instructive for how developing countries should calibrate patent law according to development needs. These discussions are paramount for countries seeking to develop national IP systems – balance between IP rights holders and the ‘public interest’. The goal is to achieve the highest innovation with the lowest social cost. The WTO which produced TRIPS made these goals more important given the narrowing of policy space on patent limitations/restrictions. More is needed on the theory behind exceptions/limitations. DAG welcomes cooperative work to implement Brazil’s proposal for a questionnaire. The questionnaire compliments the first element of the Brazil Proposal – the exchange of detailed information about exceptions/limitations at the national level and countries’ implementation thereof. It should address why & how countries use or understand the possibility of using exceptions/limitations provided for in their national legislation. It serves as a good starting point for the exchange of information. The results of the survey should not serve as the basis for the exercise of finding common positions which has an independent source. There are other phases of inquiry. The survey can be used as a single basis in addition to a second phase to provide developing countries with the means to adopt useful patent systems. It is important to evaluate how national capacities affect the ability to use exceptions/limitations. The goal is to lead to a non-exhaustive manual for exceptions/limitations which can be used by developing countries to create policy space to adopt exceptions/limitations for development needs. U.S. needs are not suitable to developing countries. India seeks contributions from other developing country member states for input into this discussion.

Brazil is happy with the questionnaire – it is one step into the implementation of the first phase of

Brazil

’s Proposal (SCP/14/7 supra). India explained well the 2^nd and 3^rd phases which would lead to a manual on exceptions and limitations. One added element can be included but discussion will be delayed until later.

Japan – The questionnaire is very detailed and there is a long list of questions. Ample time is needed to review it before discussion.

Spain – supports

Hungary

’s statement. Regarding the questionnaire, it is better if it is responded to by all member states – this would provide a clearer picture around the world. The lack of resources available to many countries would limit the usefulness of questionnaire responses.

Chair – What is the burden on developing patent offices? What should the length of the optimal questionnaire be?

South Africa, representing the African Group - Supports the 3-phase Brazil Proposal on exceptions/limitations: Phase 1 – questionnaire; Phase 2 - what exceptions are effective; Phase 3 – a manual on exceptions. Supports practical activities based on the results of the questionnaire.

China – Exceptions/limitations are an important part of the patent system. The Brazil Proposal is important & useful. Compiling information from all countries will help the discussion of this issue and lay a good foundation for further work in this regard.

Russian Federation

(RF) – The Item 7 SCP/16/3 questionnaire is to cover all exceptions/limitations on patents. It is most important to use the national information to understand the international system. The SCP must study the experience on use of technical criteria and practice on the application of law to ensure the impact of provisions on ecology, freedom of trade. Special attention is attached to acts for obtaining regulatory approval and responses. Also the use of exceptions/limitations by some countries is important. The RF Seeks analysis of the experience of states on some of these subjects – there is interest for prompting scientific innovation. This document deserves full scrutiny.

Korea

– More interplay is needed between patents rules and applicable treaties – e.g., TRIPS, and bilateral FTAs place limits on limitations/exceptions to patents. Korea would like to examine government limitations on the use of limitations/exceptions nationally. Certain elements of the questionnaire are not clear to his delegation. For example, with respect to Section X – UPUV treaty – there are gray areas between trade agreements and UPOV agreements. There are gray areas between patent rights and breeder rights also, and farmer’s privilege and breeder’s rights.

Canada

– Exceptions and limitations to the patent right are not clear in certain jurisdictions. For example, in

Canada

the exception for experimental use is not clear; therefore member states cannot answer the questionnaire with the level of specificity requested. Believes there is a need for more sufficient time to respond due to many technical questions posed.

France – Supports the EU statement and

Spain

’s statement. The questionnaire is very detailed and difficult to fill in. Questions should be made briefer and should focus on essential points and existing frameworks.

Chile – This is a very detailed questionnaire which focuses on the very important issues concerning exceptions & limitations. The Brazil Proposal presents an interesting baseline for what must be undertaken.

SAIFI – Couchod – Recommends the book entitled IP Rights in Fair World Trade Systems – Proposals for Reforms for TRIPS – Max Planck Institute for Property Rights + Institute for IP Law – University of Stockholm. Amend TRIPS Article 30 to introduce mandatory limitations for patent rights. [Proposals to amend Articles 7 and 8, and add New Article 8a can be found online at: http://www.ip.mpg.de/shared/data/pdf/proposed_amendments_to_trips_20110504.pdf.

The paper describes but does not amend existing limitations and exceptions under TRIPS Article 31. The book is written by academics [authored by Annette Kur and Marianne Levin] and deals with what is desirable - http://ictsd.org/downloads/2011/04/agenda-may4.pdf;

[An abstract of this book can be found on Google and reflects academic efforts to reshape IP law so that it is more ‘in line’ with the enhance of ‘public goods’ and the ‘public interest’:

'This book is essential reading for anyone interested in intellectual property, global trade, international law, human rights, development, and competition. While many have lamented the impact of the TRIPS Agreement on the creative environment and social welfare, the heart of the volume is a deeply thoughtful, well-considered proposal for modifying the Agreement. The lead-up is equally compelling: essays by renowned experts describing the substantive, procedural, and institutional problems encountered post-TRIPS and an examination of socially responsible ways to promote innovation.' Rochelle Dreyfuss, New York University School of Law, US'. This book culminates Professor Annette Kur's longtime engagement in critique and reform of dominant IP patterns. Throughout several authoritative essays many by Professor Kur herself the book provides a comprehensive and in-depth overview of the ever growing academic efforts which, at an international level, struggle to reshape IP law paradigms in tune with the enhancement of public goods and interests even beyond the mere perspective of IP law's intersections with competition and consumer welfare in strict sense. This work constitutes a "must" for all those who, at any level of function and responsibility, engage in overcoming an historic unbalance that has so far basically precluded an adequate reconciliation of IP law with fundamental societal needs.' Gustavo Ghidini, University of Milano, and LUISS University, Rome, Italy. This important new book constitutes a serious examination of both the positive potential, as well as the deficiencies, of the TRIPS agreement. In the light of their analysis, the editors and their colleagues make a powerful case for wide ranging reforms. Intellectual Property (IP) law particularly in relation to international trade regimes is increasingly finding itself challenged by rapid developments in the technological and global economic landscapes. In its attempt to maintain a responsive legislative system that is interacting successfully with global trade rules, IP is having to respond to an increasing number of actors on an international level. This book examines the problems associated with this undertaking as well as suggesting possible revisions to the TRIPS agreement that would make it more relevant to the environment in which today's IP mechanisms are operating. The overall aim is to find an adequate response to the 'IP balance dilemma'. The theme is pursued throughout various topics, including a look at what this means in relation to the economy in a country like China, and also considering how IP is increasingly having to reconcile itself with human rights issues.This book will appeal to academics, policy makers and post-graduate students in IP and international trade law, as well as related fields, such as development and human rights.

http://books.google.com/books/about/Intellectual_Property_Rights_in_a_Fair_W.html?id=yKNXrdRp6nIC .

Another abstract can be found online on the Max Planck Institute website, at: http://www.ip.mpg.de/ww/en/pub/news/amendment_of_trips.cfm . An excerpt reads as follows:

“The project took its cue from the growing discontent with the development of Intellectual Property (IP) in the post-TRIPS era. Indeed, what appeared to be the ultimate breakthrough of IP-oriented law and policy-making on a global level also marked a culmination point in the sense that the broad public esteem previously commanded by IP gradually lost ground. Fuelled by frustration of expectations raised with regard to the impact of IP on economic welfare, and resenting the restrictions imposed on communication and exchange of technology, deep skepticism towards the functioning of the system nowadays governs the perception of IP by large parts of the public, in particular when it comes to sensitive issues such as public health, nutrition, and dissemination of knowledge. IP is often seen as a mere tool for securing economic dominance of a few over a world of many, and as impeding rather than promoting a sound and sustainable socio-economic development...The proposals are structured as follows: Given the paramount importance of the general provisions in Part I for the interpretation of the TRIPS Agreement, the current wording of Articles 7 and 8 – Principles and Objectives – is fleshed out and amended so as to reflect the entire spectrum of policy goals to be aspired in a sound and thriving IP system, and to ensure its full application. In addition, a new provision – Article 8a – has been added, as an instrument modulating the balancing of interests between right holders, competitors, and the public at large.”

François Curchod was involved in the project as temporary or permanent group project member.

KEI – 28 USC 1498 – is a limitation of remedy as well as right – the forfeiture of the right to seek an injunction. There is also a limitation on damages.

ITSSD - Intervention with respect to the Limitations and Exceptions Questionnaire concerning the lack of questions on adequate remuneration in Section II, IX. There is also a lack of questions on the protection of trade secret information and proprietary confidential data and clinical testing data. [ITSSD submits written comments to the SCP concerning these and other concerns about the questionnaire.]

India – Question 4, Section II. – should be rephrased by capturing the public policy objective of legislation – reference to legislative history and judicial interpretation – 4, 11, 23, 31, 51, 66, 84 questions should be amended. “What is the public policy objective for providing the exception”? Delete the reference to the term ‘rationale’ and replace it with the term ‘public policy objective’. Please explain with reference to the “legislative decision, parliamentary debates and judicial decisions, where possible.”

U.S. – The Questionnaire being discussed is too long and overwhelming. To encourage completion of the questionnaire, treat new language separate from question – 4a – public policy objective; 4b – give explanation.

India – does not object to the US suggestion.

South Africa – agrees with India.

Brazil – Scholars divide limitations into two classes = intrinsic limitations – within framework of system (research exception) – extrinsic limitation – outside IP framework (competition policy) with remedies including CLs. Include certain exceptions not intrinsic to the IP system (e.g., competition) within the questionnaire.

ITSSD – As concerns the India proposal, we recommended that the term ‘legitimate’ modify the recommended language change – “public policy objective” - to reflect that this language is contained in WTO agreements.

India – Responded by asking the Chair whether the meaning of ‘legitimate’ recommended by the ITSSD was a formal proposal?

Chair – Responded that an ad hoc NGO can only make non-binding ‘recommendations’ which members can take up if they so choose – they can’t make ‘proposals’.

Korea – Could there be provided references to WTO and other agreements along with questionnaire?

TWN – Would like to make a statement on exceptions & limitations. Patents are statutory monopoly affecting lives of people living in developing countries to enjoy the right of health, information, etc. The TRIPS Agreement has been used to hamper the use of exceptions and limitations.

Chair Section III - Items 9-14; 15-20 – No comments.

Section IV –

Switzerland – What does this exception mean? Seeks clarification of what this section is directed at.

Secretariat - Preparation of prescribed medicine – that appearing in a number of countries – Where “medicine is prescribed by medical practitioner” then a prescription for an individual patient preparation of medicine by a pharmacy would be considered a non-infringement of the patent right. See: Para. 115 within SCP/13/3.

U.S. – “Preparation of medicines” is the correct language for the exception irrespective of whether a medicine was prescribed by a doctor. Delete the word ‘prescribed’ from the title.

Chair – interprets this as a formal proposal for amendment.

Section V –

Russian Federation – Russian law – there are no patent licenses in this area b/c coverage under Civil Code. No right of post-usage of patents. Subsequent use and prior use would be split into two. There are exceptions for use after patent is issued. For right to use either prior use or after application of patent. This right pertains to the usage after the patent – a period which allows the right to be conserved after a first use has been completed.

Chair – is Russia referring to continuing use from before patent or only to use after patent grant?

Russian Federation – After the patent has been granted.

El Salvador

– Russia referring to ‘second-use’ patents which were patented once and then with new inventive step, another patent was issued with respect to.

Chair – There is a lack of full clarity on a complex issue. The Chair will seek clarification by the Secretariat for the next discussion of the text.

Section VI –

ITSSD – How to treat IP rights in the global commons – UNCLOS? For example, any IP developed by a member state national in the global commons will be considered ‘public goods’ under the ‘common heritage of mankind’ regime of the UNCLOS. How do WIPO member states address this issue in their national patent regimes? Is there a mechanism for such an eventuation? Is there agreement at the national level?

Brazil

– doesn’t understand.

Chair – recommends clarification of issue with ITSSD. [ITSSD submits written research and comments to the SCP on these issues.]

Section VII

Russian Federation – Nothing is found on the secrecy of manufacture and process protection. Law determines level of secrecy here. E.g, pharmaceutical, pesticide – Must receive authorization from relevant authorities governing the law of pharmaceuticals to secure security of usage of pharma/chemicals. There are prohibited uses of chemicals/pesticides that have not received regulatory authorization.

Section VIII – no comment.

Section IX – CLs

Russian Federation

– CL and gov’t noncommercial use are completely different issues under Russian law.

Chair – Would Russian propose dividing this section into two to reflect this difference?

ITSSD – Noncommercial use – Section II and Section IX – are they the same or different concepts?

Secretariat – they were referring to non-working and noncommercial use – different concepts. Section IX – refers to non-working, while Section II refers to noncommercial use.

Section X -

Russian Federation – Russian law provides limitations to holder’s rights depending on usage of said rights. Whether commercial or experimental use? There are limitations on those who obtain breeder’s rights. There are no specific limitations on farmers.

Chile – The Questionnaire refers to exceptions & limitations on patents but there are no restrictions on rights not falling under the patent system. TRIPS Article 36.3 can apply. Section X, as it stands, is not entirely straightforward when dealing with vegetables which do not fall under patent law. Section X should specify that it deals only with patent law and not with non-patent rights. Section should not prejudice limitations and exceptions in other bodies of law.

Secretariat – The Questionnaire is only intended to deal with patents.

Chile – Not trying to include vegetable intentions under other legislation.

Chile

wanted to be clear that this section applies only to patent law.

Korea – The Korea delegation has similar problems understanding Section X. Based on common law, it is not described as a ‘privilege’. Breeder’s rights are protected under breeder’s rights law and not under patent law. ‘Privilege’ is a new concept/term. This delegation proposes to rephrase this section as ‘exceptions and limitations to farmers & breeders’.

Chair – Secretariat agrees in principle. Limitations on rights that were originally ‘extended’ look the same but are legally different than exceptions/limitations to ordinary patent rights.

Congo –

Chair – cannot extend questionnaire to IP rights other than patents given scope of SCP mandate. It would NOT apply to UPOV protections.

Section XI

Russian Federation

– Certain exceptions and limitations in Russian law are not considered. For example, there is the Civil Code provision for licensing patents for discoveries with municipal contracts.

El Salvador

- Spanish-speaking country = exceptions contained in case law – judicially created exceptions included.

Cambodia

– Section X – Breeder right contained in ‘other’ law, NOT patent law.

Syria – Different answers will result b/c developing countries looking forward to investment to ensure their development. Support

Egypt

statement, need translation of questionnaire into Arabic.

Chair – Arabic language will be included in translation as of 2012.

U.S. – Thanks

Brazil

for suggestions concerning questionnaire. The

U.S.

has reservations about the questionnaire. Since there are no questions concerning base line rights to which exceptions and limitations should apply, the usefulness of the questionnaire will be limited. For example, Development Agenda recommendations 37 and 38 make reference to such a baseline – “Upon request and as directed by Member States, WIPO may conduct studies on the protection of intellectual property, to identify the possible links and impacts between intellectual property and development” - http://www.wipo.int/export/sites/www/ip-development/en/agenda/recommendations.pdf . The U.S. looks forward to further revisions of this document.

Brazil – Responds to El Salvador – question already dealt with.

Panama

- Understands concern of El Salvador – case law is stronger than legislative law for many countries.

El Salvador

– Does not intend to change the statement and didn’t intend to “open up a can of worms.”

Switzerland – Agree with U.S. to revise questionnaire which would take into account their questions and problems.

Japan – We need ample time to respond to the questionnaire; need more time to discuss the questions. Japan invites the Secretariat to revise the questionnaire as suggested by U.S. When deal with exceptions & limitations it is useful to know where the starting point is.

Hungary

– Supports U.S. proposal.

Brazil – The U.S. referred to

Korea

’s recommendations. Korea wanted specific articles in treaties referred to so it can understand specific exceptions & limitations. Is this what the U.S. referred to? How much time will the Secretariat require to revise the document and then to distribute it to the members? How much time will members have to respond??

Chair – Secretariat would send out revised questionnaire by next SCP meeting. The U.S. should clarify its proposal.

U.S.

– Speaking of underlying patent law – conditions under which patent would be granted and rights associated with such patent right. Need a starting point.

Chair – The International Bureau should prepare questions in line with these comments with clarification from the

U.S.

Brazil

wants the questionnaire revised before the next meeting. Is it important for delegations to see questionnaire revisions before having it distributed?

[Pursuant to Article 9 of the WIPO Convention, the International Bureau was established “as the Secretariat of the WIPO organisation under the direction of the Director General as the chief executive assisted by two or more Deputy Directors General. The International Bureau is very active. It plays a significant role in determining the vision of the organisation, shaping the nature and final outcome of treaty and other negotiations and discussions, drafting the recommendations by various bodies on various matters, admitting observers to various WIPO bodies and in preparing the draft agenda for the General Assembly.” See Sisule F Musungu and Graham Dutfield, Multilateral agreements and a TRIPS-plus world: The World Intellectual Property Organisation (WIPO), TRIPS Issues Papers No. 3, Quaker United Nations Office (QUNO), Geneva (© 2003), at pp. 7-8, available online at: http://www.geneva.quno.info/pdf/WIPO(A4)final0304.pdf].

Secretariat – Feasible to do whatever SCP requires.

Switzerland – Wants to reexamine questionnaire based on modifications to be made in the next meeting.

Chile – It is possible for the Secretariat to circulate a revised draft before the next meeting. Also it may be possible to have responses by next meeting.

Denmark – Why not just distribute questions with revisions suggested?

Chair – Are all in favor of Brazil’s proposal?

Japan – prefers a second look at the questionnaire because they have questions of their own.

U.S.

– Supports an opportunity to have a second look at the questionnaire. In the Committee on trademarks there was confusion about some of the questions. If provide revision in 2012 can then put out in Arabic and receive more complete and robust responses to questions.

Chair – Secretariat will offer delegations a minimum of 6 months to answer the questionnaire given the need for interdepartmental coordination in many governments. A revised document will not likely be ready by the next SCP meeting. Would it be acceptable to revise questionnaire ‘as expeditiously as possible’?

Brazil – This would mean secretariat would need 1 year to revise the questionnaire. Could it have the questionnaire available within a shorter timeframe?

Switzerland – There is a problem with the timetable as proposed. We would need more time during the next meeting to evaluate questions revised in the questionnaire.

India

– There are not many questions to the questionnaire. There will always be questions that will require clarification. We don’t need a perfect document. Can a revised questionnaire be provided before week’s end so that could take stock on Friday?

Chair – Allow the Secretariat to consult amongst themselves. Secretariat will do what they can and get a fairly rough draft out within the next few days. Many delegations did not have time to review this document as reflected by the lack of questions being posed today.

Brazil

– There is no need to delay for a year.

Chair – does not see a consensus yet. Wishes to delay decision until tomorrow or Wednesday and consult with different groups to see if they are comfortable going forward.

India – Agrees with need to secure consensus. But also thinks Secretariat should be able to make revisions discussed today. Director General says he could have questionnaire back to delegations by late Wednesday. Only if consensus exists afterward will it be sent out to delegations. Translations will further delay delivery of revisions.

Hungary Group B meeting tomorrow morning at 8pm.

DAG meeting tomorrow morning.

Agenda Item #8 –

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Day 2 - Tuesday, May 17, 2011:

Agenda Item #8 – Quality of Patents, including Opposition Systems

Canada

– introduces proposal of patent quality – the UK and Canadian Proposal - SCP/16/5 -http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_5.pdf , a program on the quality of patents.

Past efforts to achieve consensus to move the work program along has been stymied.

This problem has since been overcome.

All member states despite their level of development have patent systems granting patent rights.

The question is how IP regimes including patent offices can enhance patent-based innovation.

Nat’l patent systems must seek to achieve appropriate balance between holders, users and the public to promote social, economic development.

This proposal was created to focus SCP expertise on work to produce tangible benefits by creating a framework for patent quality including technical assistance and infrastructure development – items #10 and 11.

It sets forth a broad framework with three foundational components:

1. Technical infrastructure development – leveraging existing ICT mechanisms to maximize information resources; IT development is not the most efficient use of SCP resources.

2. Information Exchange – intended to help offices gain a better understanding of the processes that patent offices employ within the patent system at large for the purpose of leading to an improved quality of granted patents.

3. Process Improvement – identifying elements that national patent offices have been implementing to improve the patent grant process. National search and opposition processes and techniques used to enhance quality of documentation of submitted applications – quality in, quality out.

Encourage member states to contribute elements towards this process.

The issue of quality of patents including opposition systems was determined to be important enough for this committee to consider in-depth.

The proposal is deemed consistent with the mandate and core expertise of the SCP.

Norway

– Supports the Canadian/UK proposal. In order for the patent system to deliver according to its purpose, patents granted must be robust and of high quality, subject to a wide set of tools and procedures and to constant improvement. Focusing on information exchanges between member states is very practical and useful approach to further common goals within the SCP. In the Norwegian IP office, the application process is covered by quality management system ISO 9001 – a web-based system entitling all employees capability of submitting comments to improve the system. It has dynamic and easy to use features and can be employed to review the compliance rate and to review measures taken to ensure high quality. The sharing of knowledge is essential to improving patent quality and to improving search and examination processes. Sharing of search strategies by examiners is essential and the SCP should look for ways to increase such sharing of strategies – which sources are used and how they are used. It is also necessary to find practical mechanisms to improve sharing search strategies between patent offices.

Korea

– Thanks UK/Canada for submitting a constructive proposal which it supports. The problem of patent quality is no longer a domestic issue – it is international. There is duplication of application of patents worldwide. The same inventions are being filed within different national patent offices around the world. Duplication of national workloads and lower quality patents result. The patent prosecution highway [See: Patent Prosecution Highway (PPH) - Fast Track Examination of Applications, USPTO website available online at: http://www.uspto.gov/patents/init_events/pph/index.jsp] and PCT reform reflect international efforts to cure the quality of patent problem. Korea recommends the introduction of another element for this work program –international work-sharing – PPH and other regional operations for sharing work between and among national patent offices. Korea wishes to make a proposal of its own to the UK/Canada.

Denmark

– Supports the UK/Canada proposal. Have an ISO 9001 certified patent process system. It is benchmarked to other patent offices on patent prior art searches to learn and gain experience from other offices to improve the quality of its own work. Exchange of information and experiences on three main elements is called for and constructive to improving the quality of patents.

India

– Wishes to make comments, representing the DAG, on the UK/Canada proposal and the SCP opposition study. On behalf of DAG, the question of patent quality is an important issue for developing countries. It is a complex offering. Patent quality means – linked to compliance with three criteria for patentability – novelty, inventive step and industrial applicability. It varies from country to country. Quality is finally determined by the domestic law of each country. The underlying issue is how far patent offices should apply the patent criteria and thresholds used. This depends on the ability of patent offices to apply domestic patent law effectively. Improvement cannot be achieved simply by the adopting of practices used by other offices. This would lead to harmonization only, not quality necessarily. Quality is much broader than that discussed in the UK/Canada proposal – SCP/16/5. India, on behalf of the DAG, seeks more clarity of the meaning and intent of the term ‘patent quality’ as used in proposal.

The first fundamental step should be focused on developing a commonly agreed upon definition of ‘patent quality’. We must look at the problem of ‘low quality patents’ first. Paragraph 3 of SCP/16/5 refers to the position that the SCP is in to make a meaningful contribution to the Development Agenda.

India

, however, cautions against the duplication of effort in the WIPO. A proposal is already underway within the DAG project, concerning the PCT process and capacity building and infrastructure development programs. How is the present proposal different from other activities already underway within WIPO, and how should this proposal links up to them? Paragraph of SCP/16/5 contains “appropriate balance of interest” language.

India

wishes to highlight that the goal of the patent system is to contribution to transfer and dissemination of technology. Paragraph 6 of SCP/16/5 places the patent quality issue solely on the shoulders of patent office. India believes that the judicial system also has an important role. Paragraph 7 of SCP/16/5 points to the link between patent quality and the DAG agenda. However, this issue goes beyond this narrow view to other issues – norm-setting, flexibilities, public policy/public domain/ technology transfer, ICT and access to knowledge.

The UK/Canada Proposal’s focus on technical infrastructure development to enhance existing sources of information can be considered similar to prior proposals. Developing countries without resources would need to rely on patent offices in developed countries which have networks with other offices and resources which would permit fast-track filing processes. Work-sharing could be problematic for developing countries could undermine the flexibilities existing in domestic patent law at the policy level. Providing access to the quantum of information available to patent offices to conduct high quality patent search and examination would be the better solution. A study should be conducted on the current state of affairs among patent offices of WIPO member states to access information and various databases. Also such a study should look at the cost of patent examination. To enhance the quality of search and examination, it is necessary to provide free access to databases to private and public domains in developed countries. Feedback from users should be part of prior art and examination processes. Users may be interested in securing faster and more secure grants of patent. This would lead to questions on reliability of other patent office processes rather than on patent quality. The function of the patent office is to scrutinize patent examination extensively before granting a patent right. Patent offices must institute rigorous examination processes with a view toward granting high quality patents and avoiding the grant of frivolous patents. Patent offices must seek the widest prior art search and examination possible. India supports improvement in patent office processes to improve patent quality, and to avoid mistaken grants of patents which are difficult to correct post-hoc.

The key problem with patent quality is how to prevent the ‘ever-greening’ of patents and the grant of ‘frivolous patents’ that do not make a significant contribution to society. The ‘test’ should be – what is the contribution of patented invention to society? The exchange of information between governments should deal with this issue. Patents are often used to prevent competition rather than contribute to innovation. In the pharma sector, in the EU, patents have been used to prevent introduction of competitive patents. The U.S. FTC has also called for improvement of the patent system given patent use based on competition rather than innovation objectives. Focus on patent quality should not result in national patent office use of policy space.

Hungary – The adequate application of patentability criteria is critical to patent quality. The quality of examination and enforcement functions also important.

South Africa – Is pleased that the UK/Canada Proposal makes reference to DAG recommendations. The patent quality definition is open to different meanings. Each country defines patentability requirements differently in accordance with its own domestic laws. The adoption of patent examination and prior art search processes of other countries will simply lead to harmonization of patent processes, and will not lead to achievement of DAG recommendations. South Africa agrees with SCP/16/5 Paragraph 5. But, the key function of the patent system is to contribute to the transfer and dissemination of technology to the public leading to the promotion of innovation. What is the meaning of the term ‘quality of patents’ set forth in the proposal? There is no universal definition. It is not clear how granting ‘quality patents’ delivers economic and social policy objective as quoted in paragraph 5. What is the meaning of the interplay between quality of patents and technology infrastructure? The reference to enhancing existing examination processes is akin to work-sharing between patent offices discussed in other work programs of the WIPO which is problematic for developing countries. Information exchange will focus narrowly on administrative processes rather than other stakeholders of patents – ‘users’ may have different interests than members of the public. What else in the patent system not well functioning? How will information sharing contribute to public policy interests? What is intended by Paragraph 12 of SCP/16/5 regarding process improvement intended to improve patent granting processes? What flexibilities are provided by international agreements to improve patent granting processes?

Chair – requests written versions of their interventions.

Russian Federation – Patent quality involves not only offices but also inventors who seek to protect their work against 3^rd party infringement. Offices wish to reduce costs as much as possible while delivering quality patents. Russian studies in 2006 resulted in the department’s examination of patent applications with a view towards patent quality and in its monitoring of administrative procedure implementation when rights are transferred and/or are registered by rights holders. Quality of patents is closely linked to international bodies dealing with issues with which national patent offices cooperate. There is a need for an internal monitoring process undertaken by experts as well as an external audit to monitor patent services provided by patent offices focusing on the quality of patents at different levels of the patent application and enforcement review processes. There is a need for programs to train inspectors and to standardize criteria for consideration of patent applications – concerning innovations for which patents are applied for. There is a need to reduce the duration of the procedure and the highest possible quality of patents. There is a need to standardize the establishment of the date on which patents are applied for. The RF supports UK/Canada Proposal focusing on sources of information, technology transfer elements. There is a need for national patent office cooperation to improve the quality of examinations. There is a need to seek the harmonization of patent practices/processes in this area. The RF supports the proposal of Korea containing additional elements.

Australia – The UK/Canada Proposal is a good starting point. It provides a good source of information and reference for developing countries. Australia recently introduced a rigorous quality system nationally and is willing to share it with the SCP. Australia suggests with respect to the issue of technical infrastructure that the SCP could request information on current activities in this area – patent scope and access to research and development resources and patent office sharing of experiences.

Brazil – Associates with statement of India on behalf of DAG, and welcomes discussion on the quality of patents. Brazil places priority on high quality patents. There is a need to agree on a clear definition of ‘quality of patents’. Brazil cannot otherwise accept what is being proposed on info exchange and process improvement. What is meant by ‘technical patent law’ in Paragraph 6 of SCP/16/5, or by ‘Quality of applications file’ in Paragraph 12? Brazil cannot understand the proposal of Korea that this should include some harmonization of law. Brazil wants to know ‘where’ we are going with the UK/Canada Proposal.

Japan

– The patent granting procedure includes an examination and review procedure. There is a need to look at these issues practically. 3 pillars are necessary to achieve high quality patents. IT infrastructure contributes to the patent search process. Info exchange is useful through the sharing of experiences. The EU delegation considered the issue of technology which is important.

Germany

– supports the UK/Canada proposal. The establishment of a fair balance between quantity and quality is key. An overview of quality management is needed which differentiates between public and internal work. Externally, a specialty department for information services to the public is needed to improve quality of patent applications. It should offer public brochures and solicit individual feedback. Internally, an office established working group is needed to promote quality management.

Germany

has drafted a basic concept promoting continuous further development of quality management. It is essential that patent examiners have a profound scientific and technology knowledge. The ongoing training of patent examination staff is key. Patent examiners should also have a high degree of independence and autonomy. There must be an awareness of the need for high quality work among all staff of the patent office. The German patent office has liaison with other national patent offices on quality issues.

New Zealand. – The UK/Canada Proposal forms good basis for discussion.

Spain

– supports Hungary’s statement on behalf of the EU & the Member States. Quality can be defined as fulfillment of patentability requirements by national patent offices. There is a need not only to look at the technical infrastructure and exchange of information, but also to focus on the improvement of the patent grant process of exclusive rights. The provision of documents on prior art must be but is not being detected by examiners. The substantive issue of patentability must be considered. In evaluating innovation, patent offices must eliminate doctrine and must proceed with defining various definitions. There must be innovative activity and it must be publicly divulged. Consistent with Chap. 21 of the Patent Cooperation Treaty (PCT) international search guidelines- the SCP should consider its substantive elements. [See: PCT International Search and Preliminary Examination Guidelines (Guidelines for the Processing by International Searching and Preliminary Examining Authorities of International Applications Under the Patent Cooperation Treaty) as in force from March 25, 2004 (PCT/GL/ISPE/1) (March 11, 2004), accessible online at: http://www.wipo.int/pct/en/texts/pdf/ispe.pdf ].

India –SCP/16/5 does not define the term ‘patent quality’. What does it mean? Paragraph 9 of SCP/16/5 – its main competence does not speak to exclusions and exceptions followed by each country. India has seen divergent opinions from established authorities. Whose quality is better? How is it possible to ascertain ‘quality’ when patents are granted on different grounds in different countries? How does one look into the quality of a patent? In

India

, the patent examiner examines the case and gives an opinion to the authority which can be agreed or disagreed with. One must look at disclosure given – not just at the quality of the drafting. One must look at key words and then, when one gets a hit of certain documents one must examine the quality of the documents and the citations. The analysis of ‘patent quality’ comes down to the interpretation of the individual examiner. India is struggling how to assess the ‘quality’ of a patent application. There are simple and complex applications which have a bearing on the search process and therefore patent quality. For example, under Article 8.2 of the Patent Cooperation Treaty [which deals with claiming priority for prior patent applications – See: Patent Cooperation Treaty, Article 8, available online at: http://www.wipo.int/pct/en/texts/articles/a8.htm#_8 and Regulation 4.10 of Regulations under the PCT (as in force from July 1, 2010), available online at: http://www.wipo.int/pct/en/texts/pdf/pct_regs.pdf ], when the controller has doubt he can ask the patent holder which country (countries) the patent was granted in, and the patent holder must explain why the application was allowed or refused in that country. International search reports and preliminary examination reports are not binding on the India patent office.

China – There is a need to improve patent quality. Different offices should improve their own capabilities. There is also a need for different countries to exchange information.

Venezuela

– The quality of patents issue is an issue of public interest versus the rights of property holders. It focuses on the effects of patents on development. There is a need for flexibility for patents – access to drugs, food and other areas of life and human development. In line with the MDGs [Millennium Development Goals], it is important to assess the issue of patent quality b/c patents cannot be taken in isolation of society and the process pursuant to which patents are granted.

France – Supports the UK/Canada Proposal and the intervention of Japan seeking additional studies on the state of technology and inventive techniques.

Mexico – Supports the UK/Canada and Korean Proposals.

U.S.

– Strongly supports the UK/Canada proposal. High quality patents provide certainty to the rights secured and promotes innovation and contributes to capacity building. As we implement the Canadian/UK proposal we can better understand the meaning of ‘quality patent’. Harmonization of quality management practices should not be goal, but rather, learning from others should be the goal. The proposed program is consistent with DAG recommendations. This proposal would help SCP return to technical discussions of the three foundations rather than to addressing political issues which are better handled in other fora. The term ‘Technical’ in Paragraph 6 of SCP/16/5 reflects that we are at SCP as technical experts. U.S. experience could be referred to as an example. The Office of Patent Assurance – Patent Quality Office is comprised of highly technical experts focusing on patent prosecution. It provides timely, reliable and meaningful quality, trends in examination quality, developing data driven improvement processes, etc. The measure of ‘quality’ has changed at USPTO over time. There are new procedures to develop patent quality as of 2012 and expanded quality metrics. There is a new composite metric composed of seven different factors - factors designed to provide an overall picture of patent quality.

Hungary – The proposed work program can meet the needs of national patent offices around the world. Our national office obtained quality certification within the framework of its management system - prior art search and examination has been the focal point. We would be willing to share our own experience and to learn the experiences of other national patent offices.

Singapore – SCP can tailor work to compliment and enhance the work of other fora. Patent Quality should be defined as the ‘Proper examination of patent applications based on criteria set up by respective patent offices – quality of patent examinations would reflect focus on the work of patent offices and on the need to properly examine patent applications based on national law.’ Information exchange should be changed to ‘information access and exchange’ - access to reports, opinions of current applications, necessary training for use of databases and tools, then supported by technical infrastructure. India’s proposal for a study of current national patent office access to information is complimentary to UK/Canada proposal. Member states should be able to choose what is best for them. Members of the public must have certainty about whether they can clearly ‘work the invention’. Patent offices would not simply adopt practices and procedures of other offices. They must only adopt useful practices/processes that are suitable to them.

Poland – Development of commonly recognized high quality patents would significantly contribute to backlog reduction, and would ensure the issuance of high quality patents. Central European and Baltic States represented.

European Patent Office - supports the statement of

Hungary

. The EPO would be willing to share with the SCP information about the European Quality Management System experience - management of resources, quality assurance, two-way communications between examiners and users, etc. – i.e., the ‘end-to-end processing of patent applications. There is a continuous dialogue between the EPO and users of the patent system under the Partnership for Patent Quality.

[See: About Us - The European Patent Network - Cooperation (2011), at: https://www.epn-cooperation.org/about-the-epn ; Patent Offices of United States, Europe, and Japan Reaffirm their Commitments to Cooperation, at 28th Annual Trilateral Conference, European Patent Office Press Release (Dec. 6, 2010), at: http://www.epo.org/news-issues/press/releases/archive/2010/20101206a.html; Quality through Partnership, European Patent Office website (Nov. 11, 2009), at: http://www.epo.org/news-issues/news/2009/20091111.html .]

CIPA-EPI – fully support UK/Canada proposal – external and internal quality management.

FICI- Fully supports the UK/Canada work program. Quality patents require good search and supplementary searches made by other offices before criteria are adjudged by the national patent offices. There is growing consensus of the basic criteria of ‘novelty’ and ‘inventive step’. Increased transparency should enable examiners in one office to see how a previous search was made in another office to avoid wasted efforts. Final determination should be made in view of local law. The PCT system is an ideal vehicle to improve prior art search practices. Details will be shared of data bases searched, classes searched in various national offices, key word combinations and key word class combinations used with national applications and PCT applications. We should seek to examine based on relevant prior art found by other national offices. Ongoing feedback mechanisms would be helpful as being discussed by PCT authorities.

KEI – More information on the cost of litigating patent disputes in different countries is necessary. The cost element of challenging poor quality patents has an impact on the quality of patents. There are better ways to share information on patents – in particular, information about those patents that have been challenged in litigation in different member countries. A database of proceedings in different countries where patents have been challenged would be very useful. The PCT propagates patents around the world with the presumption of validity. Countries should be permitted to reverse the presumption of validity if a patent is challenged in other countries. The ability to undo bad patents more efficiently is important. Historical references to patent quality show that today’s discussion on patent quality is the same. We can’t eliminate all bad patents, so must manage a system to address the management of bad patents.

KEI – side-bar – patent & health – Carlos Correa 1-3:30pm this afternoon.

Panama -

ALIFAR – The patent quality issue is at the cornerstone of discussion. Tech transfer and infrastructure development will not solve the problem. National patentability criteria are the key issue dependent on the national policies of each country. The current system is being undermined – patents are being filed reflecting very little innovation in certain sectors. In the pharma sector, for example, many patents have little innovation – these minor patents are filed aggressively to prevent competition from other enterprises and trigger creation of trade barriers. Enormous multinational monopolies impair access to medicines. Industrial patents do not create such concerns in other industries. Examination criteria should reflect health and industrial policy. Each country should be able to decide on patentability based on their respective national examination criteria. They should also be able to identify the criteria for selection of material of shared information.

TWN – Poor quality patents lead to backlogs and unnecessary litigation, and increase levels of monopoly in markets and prevent competition. The highest criteria and thresholds are necessary. In developing countries, granting patents based on the highest level of criteria should not be based on incremental innovations. Only real inventions on which patents are based should be granted. Patent offices should be able to apply exclusions directly without accommodating through the ‘back door’. Patent quality cooperation should not result in the virtual harmonization of patent law around the globe. Rather, it should lead to substantive harmonization of patent law. TRIPS Article 27 reflects a trend to lower the threshold for patentability criteria. Some countries don’t use all prior art available. Traditional knowledge is not being considered adequately. The disclosure element is important in a patent application. Patent offices should have a mechanism to review decisions to grant patents throughout life of patent.

EAPO – Patents granted under national and regional systems is possible. Support governments seeking to impose standards as a condition to granting patents. Patents granting stemming from domestic and regional legislature can result in conflicts.

ICC – The ICC would like to refer delegates to a report issued by the ICC Commission on IP dealing with the coordination of patent office efforts to undertake prior art searches, dated 6/28/10. In particular, the ICC would like to draw delegates’ attention to Section IV. Searching – What ICC Would Like to See: An “Early Comprehensive, Coordinated Search”. [See: Cooperation Between Patent Offices: Prior Art Searching of Patent Applications, ICC Commission on Intellectual Property (6/28/10) at pp. 5-7, available online at: http://www.iccwbo.org/uploadedFiles/ICC/policy/intellectual_property/pages/ICC%20Statement_Patent%20Work%20Sharing_28%2006%2010.pdf .]

UK - Numerous delegations have raised questions about the UK/Canada Proposal. The

seeks to preliminarily respond. We will follow up bilaterally with such parties. The aim of the proposal is to suggest a general framework which will guide discussions on this topic. Three areas were chosen to generate a broad interest irrespective of the level of development. We never intended to be prescriptive. Sharing information and what to do with information is subject to the decision of particular national patent offices. Exchanges of information on quality can be very useful and contribute to national office improvements. We did not intend to be prescriptive concerning the definition of the term ‘Quality of Patents’. There is no single definition that would be helpful since we all come from different national systems and have different notions of quality. The duplication of work effort is a very important issue. The proposal is intended to compliment the work being done elsewhere. As a contracting state of the PCT, UK has a strong interest in improving the PCT system. But, it is also constantly striving to improve its national patent system. The SCP should seek to complement the work of other bodies since it is a useful forum to discuss issues including this one.

Canada

– suggestion about responding to questions and next steps to take.

Opposition Systems -

India, representing the DAG, wishes to address the subject of ‘Opposition Systems’ within Secretariat study SCP/14/5 at: http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_ref_scp_14_5.pdf. The DAG attaches much importance to the role that opposition systems can play in addressing invalid patents. In addition to pre-grant opposition and post-grant opposition, there are also grounds that can be pursued in favor of development. Not only should opposition systems enhance patent quality, but they should also support the broader public policy objectives of developing countries. In the

U.S.

, reexamination procedures are rarely used and the common practice is litigation. Modeling national post-grant review processes after those of the European system would improve the review of prior art and would reduce the cost of litigation. Paragraph 21 of SCP/14/5 refers to the lack of resources at patent offices [“On the other hand, the opposition system also incurs costs, and is not always free from criticism. First, in order to set up an opposition procedure, the administration (the patent office) needs to have relevant resources, such as technically qualified examiners who are capable of reviewing the initial decision”]. And, in footnote #3 of SCP/14/5, patent offices which lack adequate resources can enter into cooperative mechanisms with other patent offices. [“As an alternative, a patent Office which does not have resources to conduct substantive review may conclude cooperation agreement with other offices.”] How could examiners in one office be sufficiently qualified to contribute to patent examination in other offices subject to other standards of patentability and other issues of national patent law? The lack of sufficient patent examiners makes a stronger case for a robust patent opposition system. How do opposition procedures can impose significant systemic delays in patent examination? Delays in granting patents b/c of opposition systems delay can impair innovation. We should evaluate the contributing factors of an enabling environment for a strong opposition system. Sufficient information in published patent applications, fees for proceedings and availability of qualified patent examiners contribute to good functioning of patent opposition system.

India

calls for dedicated page on the WIPO website where studies about patent opposition systems can be posted and questions posed.

Chair – will leave issue open for further discussion.

Switzerland – supports topic of patent quality. Patent opposition is closely linked to patent quality. Switzerland wants a new document from the Secretariat on Patent Quality for the next meeting referring to available mechanisms.

Hungary

– EU + Member States – Opposition procedures must be cost-effective and an efficient system is needed to allow for challenges of patents. There should be a third party observation system under the PCT. The SCP should keep opposition systems on its work program.

Russian Federation

– Opposition systems SCP/14/5 requires further study. Use questionnaire to evaluate different patent opposition systems. The RF requests from the Secretariat the preparation of a draft questionnaire on ‘opposition systems’ deliverable possibly during the next session.

South Africa

is concerned about the study on opposition systems. The study interprets pre-grant and post-grant opposition as an impediment to the grant of patents. A strong opposition system helped local innovation in Japan. South Africa agrees with India. The SCP should focus on how opposition systems can be strengthened and the experiences of countries can be shared in using opposition systems.

Chair – There is sufficient consensus to keep this item on the agenda and for the international bureau to revise the work it has done.

Secretariat/ Pooley – Appreciates member state interventions and comments on SCP/14/5, and promises that the Secretariat will revisit the study and provide an update to it during the next meeting. Member states are invited to provide information and experiences they have that would help the Secretariat to revise their document.

KEI – would be helpful to get costs of those using the opposition system.

ALIFAR – The opposition system study should go into more detail about pre-and post-grant opposition and review the obstacles to greater use of opposition systems.

Agenda Item # 10 - Client-Advisor Privilege -

Secretariat - SCP/16/4/REV [http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_4_rev.pdf ] must be read together with two prior documents [SCP/16/4 - http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_4.pdf; SCP/14/2 - http://www.wipo.int/edocs/mdocs/scp/en/scp_14/scp_14_2.pdf ]. It covers common law AND civil law countries, the preservation of confidentiality between clients and patent advisors, the feasibility of applying the same protections between lawyer and non-lawyer patent advisors, the mutual recognition of confidentiality cross-border, how confidentiality relates to the disclosure of proprietary information, the contribution of confidentiality to development and the ‘public interest’. There are five main issues. There is a diversity of national laws on this topic. Chap. 4 provides examples. [See SCP/16/4Rev. and SCP/16/4, at Chapter IV – “Sharing a Common Understanding”, at pp. 17-18; See also Chapter IV – “Rationale for Client-Patent Advisor Privilege”, in SCP/14/2 at pp. 52-56.]

Switzerland – Switzerland has a patent advisor law coming into force in June 2011. The SCP could consider it a possible guide for representatives.

Hungary – Freedom of communication requires confidentiality between clients and advisors and other third parties. Also there must be confidentiality between EU advisors and clients in third countries.

Australia – A key issue concerns how to maintain confidentiality in third countries. Principle 1 [of the non-exhaustive list of principles identified by the WIPO International Bureau for consideration by the SCP] pertains to the cross-border aspects of confidentiality. [See: SCP/16/4 and SCP16/4Rev. at par. 64(i), at p.18]. Principle 2 [of the non-exhaustive list of principles identified by the WIPO International Bureau for consideration by the SCP] reflects that the flexibility of countries to employ their own measures concerning confidentiality should not be reduced [See: SCP/16/4 and SCP/16/4Rev. at par. 64(ii) at p. 18]. There should be consideration of extending attorney-client privilege to clients in third countries without requiring the practitioner to have additional qualifications under that country’s laws.

Russian Federation

– The RF supports the proposal for a list of principles considered by the SCP – looks further to SCP drafting recommendations in this area. The form of information required – written and/or verbal; the volume of information (e.g., what is contained in an application or subject matter for which protection is sought); time limits; provisions to require advisor to inform client; interactions between client patent advisor and lawyer – how far should the attorney disclose information received from client or patent advisor? 16/4 – par. 32 – maintaining patents in force in foreign countries requires consultations with patent attorneys in each such country. Certain countries, including Russia, require that foreign applicants should be represented by national patent attorneys. In some cases there are bilateral agreements between Russia and CIS countries based on a mutuality principle. Consequently, there is no need for a foreign attorney patent advisor. Russian particularities can be included in SCP/16/4REV.

India, representing the DAG, comments as follows. The purpose of the study is to further discuss issues noted first in SCP/4/2 dealing with attorney-client privilege not acknowledged in all countries and in countries with privilege but employing different practices. The current study is not presently consistent with international norms. The DAG does not share the understanding of the Secretariat regarding this document. In many countries the law of privilege falls within the province of the law of evidence and thus not a substantive patent law issue and should not be discussed in SCP. WTO GATS could be a better forum to discuss this matter, more so than the WIPO. SCP/14/2 goes beyond patent protection and patent system of each country. Concerning par. 261 of SCP/14/2, it is not practical to seek a uniform rule on confidentiality which would abrogate national differences. Patent advisors render technical as well as legal advice. There is a significant difference in judicial opinion within countries concerning the existence of such privilege. Studies assume a broad stroke of privilege even though attorney-client privilege is not based on the legal work of a lawyer per se, but rather on the fiduciary relationship between attorneys and the courts. Extending this privilege to non-lawyers that do not have fiduciary relationship with courts can lead to abuses. Q.163 – Attorney-Client Privilege – Report AIPPI Q-163.

[See: Report of AIPPI Special Committee Q163 - Attorney-Client Privilege and the Patent and/or Trademark Attorney Profession, International Association for the Protection of Intellectual Property (March 2002), available online at: https://www.aippi.org/download/commitees/163/Report_Lisbon_2002English.pdf. “The following general results obtained from the study and informal survey. a. Countries which seem to recognize that the attorney client privilege extends to patent and trademark attorneys: United Kingdom, United States, Germany [others] b. Countries which seem to recognize that no such privilege exists as between patent and trademark attorneys and their clients: France, Italy, Korea, [Others] c. Countries in which the question is unclear, and which are proposing internal legislation/rule changes to clarify the situation to make it clear that such a privilege exists: Japan, [others] d. Countries with laws making it a crime or violation of professional obligation rule for a patent or trademark attorney to disclose his clients confidences: Japan, United States, [others].” Id.]

Some members wanted to leave control over implementation of an international rule to individual countries. While they make recommendations to countries, they nevertheless respect the authority of the country to apply its own national law. The extent to which privilege is needed depends on the extent of discovery permitted in each legal system. If there is no broad power of discovery worldwide, there is no need to adopt a broad privilege worldwide. What is the implication of having a broad attorney-client privilege applicable to non-lawyer patent advisors?

Morocco – Legislation should be amended with a view toward regulating the profession relating to IP. Professional secrecy should be reformed in cooperation with patent officials to develop a fixed professional code which should be enshrined in the code of national patent offices. IP offices have particular constraints relating to professional secrecy, including with respect to information from WIPO.

France – We should focus on the trans-border aspects of this issue.

Japan – Confidentiality of communication between attorneys and clients in common law countries is quite an important issue. Civil law countries should also cover this issue.

Denmark

– There is no regulation in laws on this issue. But Denmark has the view that this is needed and is exploring various approaches. Changing national patent law is one option like the EPC [European Patent Convention]. Changing civil procedure law is another option. The broader approach the better as concerns countries covered by the regulation. A Solution within the WIPO framework would present the best outcome and what Denmark would prefer.

Philippines – Constitutional prescription Article 12, Section 14 – limits practice of professions to local citizens. The Supreme Court promulgates the sole rules to practice law and integration into law. Law is more than a profession, but also a public trust. Attorney-client communication is privileged but not confidential. The non-lawyer client-patent advisor privilege is not recognized in this country and is not possible in the Philippines. [See 1987 Constitution of the Republic of the Philippines, available online at: http://www.lawphil.net/consti/cons1987.html].

U.S.

–Differences in international application of procedures especially concerning the handling of non-lawyer patent advisors can create uncertainties to innovators and affect the quality of patents. The question of how best to evaluate non-legal patent advisors and their clients is warranted. The U.S. fully supports the suggestion that experiences of countries that provide privilege to patent advisors including non-lawyer advisors can be shared with the SCP. The AIPPI study for such a mechanism can be helpful.

Venezuela

– Supports Indian comments from the DAG. The privilege of professionals has a very specific legal context and moral criteria and so does the need to safeguard important information. This is different from protecting confidentiality.

Norway – There are some very important challenges to finding uniform solutions to this issue. Confidentiality – horizontal procedural law.

Norway

supports exploratory work on exchanging national practices and protection of confidential information between client and attorney patent advisor, and in seeking ways in which to extend attorney-client privilege to non-lawyer patent advisors.

South Africa – on behalf of the African Group, believes that attorney-client privilege once recognized should be extended to confidential communications and to foreign attorneys and patent advisors on the basis of reciprocity or even if not privileged in their own country. Privilege falls within the law of evidence and national jurisprudence. The Secretariat should invite member states to share their experience in extending privilege to non-lawyer patent advisors mindful of the differences in national laws on this matter.

China

– Attorney-client privilege is a value in protecting public order, however due to differences in different countries, this should be taken into account. The SCP can conduct a study but there should be agreement not to rush to a conclusion on this subject.

Chile

– In our country this area goes beyond patents and IP and so any discussion should cover all other elements in legal traditions enforced in other countries.

New Zealand

affords a generous attorney-client privilege for lawyers and non-lawyer patent advisors. Third country lawyers and non-lawyer patent advisors are also entitled to privilege. Cross-border recognition of privilege and the extent to which non-lawyer patent advisors’ communications are deserving of privilege are among the few issues that should be considered.

El Salvador – Collegiate attorneys discussed. Don’t have that system in our country. In El Salvador you can be a lawyer without belonging to any particular college. Under civil and common law there should be confidentiality for information an attorney obtains from its client. But what happens if client authorizes disclosure?

India – Section 10.4 of the Indian Patents Act dealing with patent disclosure, requires that every complete specification disclose the ‘best method of performance’ of invention. The applicant cannot have a confidential matter. Harmonization of attorney-client privilege would lead to de facto grant of patent.

[“(4) Every complete specification shall... (b) disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection;” - See: THE PATENTS ACT, 1970, (39 of 1970, dt. 19-9-1970) (As amended by Patents (Amdt.) Act, 2005 (15 of 2005), dt. 4-4-2005) at p. 13, available online at: http://www.spicyip.com/docs/statute-combined%20patents%20act%202005.pdf].

AIPPI – By the introduction AIPPI made on Monday it wished to mark progress made by the SCP on the protection against forcible disclosure of IP legal advice. Common & civil law public interest is the foundation of protection - to limit disputes brought before the courts and to allow advice to resolve disputes before they get to court. This protection is centuries old. There is no SCP proposal that it be abrogated. WIPO has nailed to the wall the non-recognition by one country of protected legal advice protected under the laws of another country. AIPPI supports member states in mandating WIPO to do whatever information gathering they require to obtain information about how to maintain confidentiality of legal advice cross-border. AIPPI accepts w/re to SCP/16/4/REV – par. 64 non-exhaustive resources - #4 (iv) that there is no conflict between disclosure in patent law and maintenance of client confidentiality. Disclosure under patent law is statutory requirement and cannot be influenced by existence or nonexistence of attorney-client privilege. AIPPI will assist the WIPO and the SCP with respect to the questionnaire process if it goes ahead, as it had done with respect to AIPPI Resolution Q163. The Indian delegate referred to process in reaching resolution. Some members of AIPPI expressed reservations concerning matters reserved to national law. The Indian delegate’s comments leave the impression that within AIPPI there have been doubts. Actually, this was not so. The Indian delegate also raised the issue of GATS. We recommend that the Indian delegate review the AIPPI’s submission to WIPO concerning this issue – dated August 2009, which is available on the WIPO website. GATS Mode IV, concerning the provision of services of an employee of one country in another country requires national treatment. GATS does not affect the national ability of country to regulate legal services.

[See: Paragraphs 6.9 and 6.10 of the AIPPI Submission to WIPO on WIPO Report (Preliminary Study) SCP/13/4 – Client-Attorney Privilege (CAP): Protection against forcible disclosure of communications relating to intellectual property professional advice (August 2009), at p. 27, available online at: https://www.aippi.org/download/onlinePublications/AIPPI_Submission_SCP13-4_280809.pdf . (“GATS 6.9 GATS Mode 4 relates to the provision of the services of employees from one country to another. The agreement gives individual governments the ability to choose which services are included, and as to those services selected, to ‘set limitations specifying the level of market access and the degree of national treatment they are prepared to guarantee’.75 GATS does not affect the national ability of a country to regulate services. Legal services are normally governed by national laws requiring citizenship and/or residency in that country plus locally obtained qualifications. 6.10 Accordingly, GATS Mode 4 does not affect or in any way embargo the potential for making an agreement between countries to harmonise their laws relating to privilege, professional secrecy or any form of protection against forcible disclosure of IP professional advice... 75 See at 10 July 2009.)]

ICC – Client privilege is IP advice administered in the general interests of justice. Frank opinions should be able to be provided in writing without fear of disclosure. Client privilege in IP advice is truly a global issue going beyond national borders. The ICC proposal for an international instrument is referred to in secretariat’s report. The ICC looks forward to having the SCP go forward with this project. [See: Client Privilege in Intellectual Property Advice, ICC Commission on Intellectual Property (ICC Position Paper 450/1040 (Oct. 9, 2008)), available online at: http://www.wipo.int/scp/en/meetings/session_13/pdf/icc.pdf].

India

– Appreciates the Chair’s call for mutual respect, and seeks to clarify our GATS Mode IV statement. Insofar as this involves cross-border recognition of foreign patent attorneys the issue is one of international recognition of cross-border services and has nothing to do with what AIPPI stated. GATS proposals in 2006 and 2007 were raised similarly in WTO.

TWN - Extension of attorney-client privilege to non-lawyer patent advisors is problematic. Any information that is part of a patent application process is public information and falls within transparency for the benefit of the public interest. The extension of privilege would compromise governments’ ability to protect the public interest. The SCP is not the proper forum to discuss attorney-client privilege.

FICPI – Patent advisor-client privilege are no longer related to one country but are of an international character. IP advisors and their clients must be able to have frank, honest and open consultations so that the highest level advice can be provided. Attorney-client privilege is an award to the client, not to the attorney. Sufficiency of disclosure in patent applications and issue of privilege are distinct issues. There is a presumption here that the grant of privilege will adversely impact disclosure in patent application. A client cannot hide behind privilege with respect to his own knowledge, as the example in Paragraph 53 of SCP/16/4REV relates.

[This statement refers to the case of Nobelpharma Ab Usa v. Implant Innovations Inc (141 F.3d 1059 1998-1 Trade Cases P 72100, 46 U.S.P.Q.2d 1097), which was cited as an example of “where a patent agent, who had received from an inventor a draft patent specification containing a reference to a book that could become critical prior art for the determination of the patentability of an invention, had deleted the reference to that book from the patent application as filed, and the patent was granted.” The paragraph continues as follows: “As this example suggests, although the deletion of the reference to the prior art book from the patent application does not remove the existence of that book as prior art, the privilege or the professional secrecy obligation for patent advisors might be misused and could result in keeping critical information for the determination of the case away from public inspection. However, it

could be argued that the patent advisor’s advice to delete a relevant reference from the patent application was not in conformity with his professional ethics and code of conduct.”]

CIPA – EPI – IP Federation supports FICPI and AIPPI.

CIEPI – Let’s move forward not backward.

Chair – There is no clear consensus about whether to go forward on this issue. The Chair will prepare a summary of the discussion. A number of delegations agree that attorney-client privilege is a matter of national jurisprudence. No delegation advocated in favor of setting international norms concerning this issue. The SCP would need to recognize international differences in laws and rules regarding attorney-client privilege. There is no readiness to adopt common principles. There is a great deal of support for having the International Bureau collect more information about national practices and experiences regarding cross-border activities. There is also interest in hearing about countries’ bilateral agreements such as between Russia and the CIS. There is also interest in looking at particular country remedies for addressing cross-border reciprocity.

Hungary – supports Chair summary and direction.

Philippines -

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Day 3 – Wednesday, May 18, 2011:

Agenda Item #9 – Patents and Health:

South Africa – Submits the African Group Proposal [See Proposal Submitted by the Delegation of South Africa on Behalf of the African Group and the Development Agenda Group, (SCP/16/7) (May 18, 2011), available online at: http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_7.pdf]. WTO TRIPS does not prevent member states from taking measures to protect public health. See also: WHO Global Strategy on Public Health, Innovation and Intellectual Property (GSPOA) [WHA61.21, Agenda item 11.6 (May 24, 2008) accessible online at: http://apps.who.int/gb/ebwha/pdf_files/A61/A61_R21-en.pdf]. IPRs should not prevent member states from taking measures to protect public health. Safeguards provided by TRIPS should be incorporated into national legislation. Bilateral and regional agreements should not undermine these safeguards.

Promotion of web program – Seeks to enhance capacities of developing countries and LDCs to adopt patent regimes to fully make use of flexibilities to promote public policy priorities related to public health. 3 elements: 1) elaboration of studies to be commissioned by SCP from renowned experts; 2) information exchange among member states experts; and 3) technical assistance to member states particularly LDCs.

1) The SCP was requested to commission a framework study to examine constraints and challenges faced by developing countries in pre-grant and post-grant stages. There is to be a component on the use of CLs (compulsory licenses) and government non-commercial uses of patented inventions/medicines and study of practices. The study was to identify the challenges faced and their impact on public health and the empirical data on royalty-rates imposed. The extent to which countries use exhaustion of patent remedies, a review of the use of generic names, and a cost-benefit analysis of the admissibility of Markush claims – criteria for patentability - would also be covered. [See: SCP/16/7 Para. # 8].

2) SCP should invite UN human rights liaison to present his study on human rights and medicines. Experience-sharing exercises of member state practices to promote public health. SCP should organize a technical workshop on the application of TRIPS articles dealing with flexibilities. SCP should create database on communicable and non-communicable diseases identified in consultation of member states and the patent status of medicines for these diseases to show how greater access to medicines can be had through use of TRIPS flexibilities. [See: SCP/16/7 Para. #s 9-12].

3) To enhance the outcomes of studies and information exchanges, the Proposal invites SCP and member states to develop targeted technical assistance examples – to create a new module relating to the grant of CLs pursuant to Parts 2 and 3 of TRIPS. TRIPS Article 44 [relating to Injunctions] is not subject to the restrictions limiting Articles 30 and Articles 31. The web program should have links to the DAG Agenda. [See: SCP/16/7 Para. #s 13-14].

Wants this proposal to be a working document of the SCP.

Panama – Seeks copy of South Africa proposal.

Hungary

– EU & Member States – Need time to evaluate WIPO’s added value on this issue. The Secretariat should provide preliminary oral remarks on current works and projects with other international organizations concerning patents and health.

France – Group B needs more time to first review a copy in writing of South Africa’s proposal. Under Agenda Item #9 we should concentrate on the added value that WIPO can bring to this issue based on its expertise and should not attempt to import discussions from other fora. SCP should present its current works and programs on patents and health including projects carried out with other international organizations.

Secretariat – The Secretariat would be pleased to create a WIPO document with respect to that proposal by today, but without all translations. With respect to Hungary and France’s request, the SCP is willing to bring colleagues in to discuss international/global challenges addressed by this committee.

Chair – It is useful to have only an informal copy of the South Africa proposal available to all delegations during the coffee break.

Agenda Item #11 Technology Transfer –

India

– Many gaps in the initial study continue to remain [See: Transfer of Technology, SCP/14/4/REV, available at: http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_14_4_rev.pdf; SCP/14/4, available at: http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_ref_scp_14_4.pdf]. The study focuses narrowly on the availability of patent information, on publicly funded institutions for technology transfer and on how patents contribute to technology transfer. This addresses only situations where the system actually operates the way it is intended to operate. In most cases, the system doesn’t operate the way it was intended to. India wishes for the SCP to consider points made during the 15^th session. It is therefore important to highlight the following paragraphs in SCP/14/4REV: Paragraph 24 –impairing innovation – points to the need of absorptive capacity of the transferee to facilitate reverse engineering. The SCP should focus on helping to create absorptive capacities in LDCs. The more patents on existing technologies the less able national firms are to experiment and innovate. Paragraph 26 – tech transfer thru licensing – the problems of obtaining licenses for technology are inadequately addressed. Contracts tend to be secret and the negotiation of terms tends to be between unequal entities. The holder of the patent knows more about the patented invention and the contract is too stringent on users – users don’t know how many patents cover a given technology and how many licensees are necessary. The SCP should develop model contracts based on competition law and an international mechanism explaining the status of expired patents on given technologies. Paragraph 35 – international tech transfer - while middle income countries collected royalty income of $12.7 billion from OECD countries in 2001 the amount collected by low income countries was $2billion. This fact is misleading because it doesn’t discuss the growing royalties being paid by developing countries, which has increased due to the growing number of developed country patents. Paragraph 55 – designing patent rights under national law - much depends on whether patents rights are designed based on national patent laws and how they are used by the transferor and transferee. This paragraph highlights the point why it is necessary for countries to maintain their autonomy to control transfer of technology.

The patent applicant’s disclosure of a patented invention is of key importance to technology transfer. There is presently an incentive to disclose as little as possible to freeze competition after the patent expiry. WIPO should help build capacity to examine patent applications with the objective of preventing the grant of applications where there is not full disclosure. Paragraph 59 – measuring the impact of patent protection on technology transfer – There is no conclusive evidence of any impact of patent protection on technology transfer. This should be looked at again. There is no evidence of a positive relationship between FDI and technology transfer. The study does not reflect studies indicating a negative impact of patent protection on technology transfer. EU biotechnology – strengthened the patentability standard b/c it found that broad patentability was impairing innovation. India wants further revision of this study, and wants the former proposals of DAG incorporated within it. India values the technology transfer created by patents. India wants the international commission or experts group nominated by member states to address issues relating to technology transfer particularly on use of patent flexibilities. SCP should organize a forum to exchange countries’ national experiences on technology transfer during the upcoming SCP meeting.

Hungary

, on behalf of the EU & the Member States – It is not possible to draft a one-size-fits-all solution with equal impact on every country. The study includes many issues, strategies that could be used locally to achieve tech transfer. This committee should take stock of other WIPO projects without duplicating efforts.

Russian Federation -

South Africa, on behalf of the African Group – SCP/14/4/REV provides useful insight into these complexities. It points to accessibility of information and the capacity of recipients to absorb technology. There is a need for access to information and skilled lawyers involved in technology licensing and public funds/universities. The studies are confined to these areas only, however. There remains concern that the patent system falls short regarding how patents can serve as a barrier to technology transfer. Patents allow holders not to exploit the technology. Patent trolls and patent thickets impair innovation. The study limits its analysis to improving the availability of patent information. It does not analyze how the patent system impedes technology transfer or how to preserve the public domain for the development goals of developing countries. Future work by SCP should consider studies to identify measures available in TRIPS on tech transfer and to alert experts about their availability. These include the R&D efforts of developing countries and mechanisms to facilitate tech transfer pursuant to TRIPS Art. 66.2. Developed countries must meet their requirements /obligations under this provision. What are they doing?

Chair – This agenda item is fairly advanced. Requests for further revisions of this document the SCP could undertake for availability during the next SCP meeting may be possible. At that point, the study would be fully cooked and member states should then decide whether there are other activities the SCP could undertake as reflected by consensus.

ITSSD – If we are speaking of changes, perhaps there should be more mention of the impact of national legislation/restrictions on the exercise of patents and contractual licensing rights on trade to restore some balance to the report. Obviously tech transfer is a complex multi-step process most of which deals with issues other than patents and related IP rights that goes beyond the expertise of the SCP.

ALIFAR – The SCP should examine how the quality of patents and patentability criteria could be obstacles to technology transfer. Businesses are not willing to share knowledge. TRIPS Article 66 has not had effects on technology transfer. TRIPS Articles 7 and 8 are also not effective. IP itself should not be allowed to create a barrier to knowledge transfer.

KEI – Tech transfer goes to the problem of development itself. It is useful to have the WIPO Economics Bureau – Carston Fink - to begin to identify what kind of statistics are needed to look empirically at the effectiveness of various technology transfer initiatives and the respective capacities in various developing countries. We need to look at the performance of various mechanisms where different countries have different legal regimes.

Singapore – Patents with incomplete disclosure should not be granted. There is a need for technical capacity building to help develop patent examination capabilities to train examiners to identify ‘incomplete’ disclosures’.

Venezuela –

India – Tech transfer relates directly to socio-economic development in developing countries. Trained economists should be available to contribute to this subject matter. Internal WIPO economists would be helpful based on the KEI proposal.

France

– Tech transfer is also being studied in CDIP. We should consider linking with the work on CDIP projects.

Secretariat Expert from WIPO on Patents & Health – Global Challenges Division – WIPO is a specialized UN agency focusing on IP and endeavors to lead the IP dialogue at the intersection of IP and global security issues. Problems are borne most by developing countries and LDCs. The global life science program includes coverage of public health issues. WIPO has established a strong relationship between the WHO and the WTO to look at the international program on global health. WIPO looks at UN agencies such as UNCTAD, UNDP and others as well as the private sector. WIPO has organized seminars, and has been engaged in public ‘IP landscaping’ and public IP management.

[‘IP Landscaping’ – is essentially an analysis of a particular technology area or set of companies in the context of patents or other IP. This includes identifying the areas that are public domain, proprietary, or unclaimed. IP Landscaping allows for educated decision-making about patent strategy, product development plans, R&D initiatives, licensing programs, or acquisition targets.]

With respect to biotechnology and the evolution of the regulatory framework on clinical test data, WIPO works to help with th\e Implementation of WHO global strategy and plan of action. With respect to access to medicines and medicines pricing the joint WIPO-WHO-WTO seminar 2010 brought forward good information. The Feb. 18, 2011 symposium looked into available patent information resources and looked at their use for public health purposes. This symposium was preceded by a workshop on patent searches and the ‘freedom to operate’ – basic patent searches and freedom to operate analysis.

[A ‘Freedom to Operate’ analysis entails a determination of whether a particular action, such as testing or commercializing a product can be done without infringing valid IPRs of others. Since IPRs are specific to different national jurisdictions, such an analysis should focus on particular countries or regions where operations may take place.]

A Dec. 2010 WIPO patent search report was prepared and submitted to a meeting of an open-ended working group. It was published on the WHO Avian Influenza website and on the WIPO website. There is a special program for research and training on tropical diseases. The African Union pharmaceutical manufacturing plant Unit 8 expert working group illuminated pertinent issues relating to licensing. Medicines patent pools were examined in connection with retroviral medicines. Trilateral cooperation between WIPO-WTO-WHO provides input into training activities and national and regional seminars on implementation of the TRIPS Agreement.

India / Brazil – There is a need for greater consideration of the activities of intergovernmental organizations on these issues which member states often do not consider.

U.S. – The report on pandemic influenza is valuable.

Switzerland – Can WHO/WTO representatives discuss in more detail what is being done on this subject in their respective organizations?

Secretariat Expert – We must be cautious to deal with expectations. We appreciate the feedback.

WHO Expert – The strategy points out how WHO shall place the strategic relationship between IP and public health and trade. Requests Directorate General of the WHO to coordinate with WIPO, WTO and UNCTAD to implement global strategy and plan action. There is an agreed effort to coordinate collaboration more effectively. Regular joint coordination meetings are organized where training programs, work programs etc. have been or are being scheduled with each entity’s respective expertise being contributed. There are a series of joint technical symposia to provide more facts of overlap between IP, public health and trade (procurement and access to medicines and freedom to operate). Work together on patent information, CDIP – WIPO to mandate patent landscaping to identify which diseases researchers are focusing on and where innovation is taking place. The WHO is doing research and is doing patenting. WIPO has provided patent search reports on endemic avian influenza preparedness. The WHO is considering the notion of ‘virus-sharing’ this week at the WHO Assembly.

WTO Expert – The WTO ensures that existing medical technologies get to patients needing them and that further progress is made by future innovation in the pharma sector. The WTO can offer effective tools to achieve this objective. IP and trade issues deserve full coverage as they intersect with public health. The WTO can consolidate available data and valuable experiences for the benefit of policymakers, and can provide access to technical capacity building initiatives. The basis of the WTO and the starting point for its engagement is the Doha Declaration on TRIPS and Public Health. There is increased focus in technical cooperation activities on IP. There is mutual participation from the WHO and the WIPO. Activities include: workshops to provide information and share experiences (on IP & Public Health last year); an advanced course for government officials taking place this week – on IP & Public Health; a colloquium for teachers with a module on IP & Public Health to spread knowledge within academic community; and national workshops. To provide factual and technical information, and to address flexibilities extensively, there is an annual review of the Doha Declaration on TRIPS and Public Health “Paragraph 6” system every year in October. During 2010, this moved beyond analysis of the operation of the system into broader aspects of public health, including IP rights. Look into the minutes of the report for this annual review.

WTO solves disputes also. There was the regulatory review exception case almost 10 years old (Canadian case). A recent WTO report contains a section on the activities relating to public health. Comprehensive oral reports by WTO secretariat are included as part of the review of the “Paragraph 6 system”. The October 2010 TRIPS Council meeting and March 2011 meeting addressed how to accept the protocol amending the TRIPS Agreement and national implementing legislation. In-training manual and handbook on TRIPS matters. There is a stand-alone module on TRIPS & public health.

[See: Little-used ‘Par.6’ system will have its day, WHO tells intellectual property and health review, (WTO: 2010 News Items (Oct. 26-27, 2010), available online at: http://www.wto.org/english/news_e/news10_e/trip_26oct10_e.htm; See also Members’ laws implementing the ‘Paragraph 6’ system, Intellectual Property: TRIPS and Health, WTO website at: http://www.wto.org/english/tratop_e/trips_e/par6laws_e.htm ; TRIPS Council: Members Debate Biodiversity, Access to Medicine, International Center for Trade and Sustainable Development (ICTSD) - Bridges Weekly Trade News Digest, Vol.15, No. 8 (March 9, 2011), available online at: http://ictsd.org/i/news/bridgesweekly/102136/].

KEI - Element 5.3a WHO Strategy cited. What has WHO done to implement this recommendation? What data does WHO have on cancer drugs?

[See: Global strategy and plan of action on public health, innovation and intellectual property, WHA61.21 Agenda item 11.6 (May 24, 2008), at: http://apps.who.int/gb/ebwha/pdf_files/A61/A61_R21-en.pdf . See Element 5.3a – “The actions to be taken in relation to this element are as follows... (5.3) exploring and, where appropriate, promoting possible incentive schemes for research and development on Type II and Type III diseases and on developing countries’ specific research and development needs in relation to Type I diseases (a) explore and, where appropriate, promote a range of incentive schemes for research and development including addressing, where appropriate, the de-linkage of the costs of research and development and the price of health products, for example through the award of prizes, with the objective of addressing diseases which disproportionately affect developing countries.”]

WHO Expert – The WHO is exploring alternative mechanisms to finance innovation (e.g., including prize awards). The IP system is not sufficient to deal with ‘neglected’ diseases b/c the market is not there. It is also exploring why investment in innovation is lacking as well as other mechanisms to finance such innovation – this is the matter addressed by such paragraph. The WHO has installed a new expert working group to look into this and the results of their research will be submitted to the WHO General Assembly next year. There is no data in the WHO’s possession relating to cancer drugs.

[Lunch Recess]

Hungary

– EU & Member states will have coordination meeting at 2pm.

U.S. – Group B coordination meeting at 2:30.

Medicine Patent Pool side-bar

Secretariat – There is no budget for establishing a separate committee of experts as proposed. The WIPO Office of Chief Economist has established a series of discussions and presentations on economic related activities and issues.

ITSSD – Relating back to the discussion on technology transfer, there is a need for that study to highlight how patents can be positively used to realize the benefits from the triple helix relationship between the government, academic and private sectors to undertake joint R&D and technology commercialization efforts.

=Msu�ml�sPWHO Expert – The strategy points out how WHO shall place the strategic relationship between IP and public health and trade. Requests Directorate General of the WHO to coordinate with WIPO, WTO and UNCTAD to implement global strategy and plan action. There is an agreed effort to coordinate collaboration more effectively. Regular joint coordination meetings are organized where training programs, work programs etc. have been or are being scheduled with each entity’s respective expertise being contributed. There are a series of joint technical symposia to provide more facts of overlap between IP, public health and trade (procurement and access to medicines and freedom to operate). Work together on patent information, CDIP – WIPO to mandate patent landscaping to identify which diseases researchers are focusing on and where innovation is taking place. The WHO is doing research and is doing patenting. WIPO has provided patent search reports on endemic avian influenza preparedness. The WHO is considering the notion of ‘virus-sharing’ this week at the WHO Assembly.

TWN –

KEI – As concerns the role of the WIPO economist – reporting data obtained regarding how patent system is working out with respect to technology transfer. Would the economist report to the SCP?

Secretariat – if members of the SCP agreed, we can invite a representative of the Office of the Chief Economist to attend an SCP meeting and to address issues concerning where the data is available and how to obtain it, subject to that office’s schedule.

India – The meetings thus far to be convened to discuss issues surrounding technology transfer must be scheduled at a time when SCP member state delegates could attend. Often time delegates are unable to attend. Would like to schedule meetings more conveniently.

Bulgaria – This was an excellent paper on technology transfer. The factual information is good but not enough. I have worked on technology transfer 30-40 years. LES and AUTM university technology transfer officials should be consulted for their experience. Tech transfer should be promoted nationally between universities and commercial enterprises. There is a need to know how these officials achieve technology transfer, and a need to see if there are practical impediments in the patent system that have been found to impair technology transfer.

[This statement inadvertently opened up a discussion which follows that led to South Africa, India and Brazil distorting the emphasis of the Bulgarian delegation’s comments. It led to a debate and to an improperly refocused inquiry. The ITSSD spoke with the Bulgarian representative and he admitted this was not his intent. The focus of the inquiry should be on what has been ‘successful’ with the technology transfer system, and NOT, as the DAG has sought, to focus on what is ‘wrong’ with the technology transfer system.]

South Africa

– Speaking in national capacity. Focus must be placed on the impediments to technology transfer. Endorses what Bulgaria said.

India – Speaking in its national capacity, endorses Bulgaria, focusing on practical impediments/constraints to technology transfer and possible solutions to overcome them.

Chair – interesting area of IP/trade aspects of technology transfer. Problems of absorptive capacity and funding/capital, import and regulatory restrictions and other obstacles can stand in the way of effective technology transfer.

India

– there is much literature on this subject. Should have brief section listing the impediments/challenges and identify those relating to patents and the work of the SCP, elaborating them in detail. Patent-based impediments to technology transfer.

El Salvador – Case studies would help developing countries LDCs. Concur with what Bulgaria and India said. The SCP can invite other international organizations which have competence in these areas – e.g., UNCTAD and WTO.

Brazil

– Supports Bulgaria proposal.

Australia – Summarize proposal please.

Chair – Draw on associations with particular expertise on technology transfer – LES and AUTM, to seek a symposium on this.

Bulgaria

– India clearly identified first that if there are impediments and seek solutions to such impediments. It is not within province of committee to discuss technical standards.

Australia – Seeks more clarification. Will Bulgaria proposal conclude this interim study? Will this preliminary study launch a future work program?

Norway – Aligns with France and Group B – There is a project launched in CDIP and if we wish to secure progress there we must avoid duplication of work. Agrees with Bulgaria. First identify whether there are obstacles and what they are to technology transfer. A previous study looked at possible impediments to technology transfer.

Switzerland – Fully supports Norway statement. Avoid duplication of work undertaken elsewhere.

Germany – Fully supports what Norway and Switzerland have said. We should fully await the results of CDIP activities.

Japan – Supports Norway, Switzerland and Germany statement – avoid duplication of work.

Syria – Importance of tech transfer. Syria supports Hungary, India & Japan.

Hungary – Fully supports what Norway, Switzerland, Germany and Japan.

Ecuador – What is the duplication of work that has been mentioned? Ecuador supports

India

’s proposal to go into greater detail about such hurdles.

Secretariat – CDIP project referred to in this discussion CDIP/6/4REV was adopted at the penultimate session. [See Project on Intellectual Property and Technology Transfer: Common Challenges – Building Solutions (Recommendations 19, 25, 26 AND 28) [of the Development Agenda], CDIP/6/4 REV. (Nov. 26, 2010), at: http://www.wipo.int/edocs/mdocs/mdocs/en/cdip_6/cdip_6_4_rev.pdf.] CDIP/6/4REV has 5 components: 5 regional consultation meetings; elaboration of several peer-reviewed studies; high-level int’l expert forum on tech transfer & IP; web form created on tech transfer; see how outcome of all phases can be streamlined into WIPO. The document speaks of a series of studies on IP and tech transfer focusing on areas receiving less attention in the literature and on possible obstacles to tech transfer and how obstacles can be overcome; studies on IP policies and initiatives that would promote tech transfers; favorable incentive policies; all well focusing on economic aspects of tech transfer.

India – The SCP study should focus on possible obstacles to tech transfer and possible ways to overcome them. Some delegations asked for the CDIP project to be completed before SCP undertakes work on this subject. The CDIP project is a two-year project; does this mean that the SCP will do nothing for two years?

Uruguay

– We should avoid the tendency to limit the work of this SCP to draw up legal norms – if we did then we would be making the mistake that patent laws could be drawn up independent of how the patent law works. TRIPS said the purpose of the patent system is to promote innovation and technology transfer. We must identify how the working of the patent system achieves technology transfer. How a certain system governed by certain roles achieves its stated aims – this requires a practical focus not abstract ideas. We can’t avoid dealing with these issues. SCP will end up dealing with issues that do not fall within their expertise. Tech transfer study should look at the impacts of the present system.

Dominican Republic – Supports India proposal together with

Bulgaria

delegation.

South Africa

, speaking on behalf of African Group, believes the India proposal is a positive way forward. CDIP and SCP have different mandates; hence we must avoid duplication. But SCP work on this issue can compliment CDIP work on this issue.

Chair – There is no consensus yet to go forward. It is clear that there is information which needs to be obtained especially concerning the work of the CDIP. Were patents excluded from CDIP and relegated to SCP? If not, there would be duplication of effort were SCP to undertake to fulfill these proposals. The WIPO Chief economist should become involved. A tech transfer study may possibly be revised to take into account these proposals and consideration of the CDIP’s work.

Switzerland – India asks whether patents have anything to do with tech transfer. Does CDIP deal with this?

India

– goes along with Chair recommendation. The study should be revised, focusing on intersection of patents and technology transfer. The WIPO Chief Economist should focus on how the international patent system affects tech transfer and the manner in which it impedes tech transfer and the possible solutions to such impediments.

Spain

– Supports the Chair’s statement. And it should avoid duplication of work. But subjects not being dealt with in the CDIP and falling within expertise of SCP should be addressed by SCP.

Bulgaria

– Supports statement by Spain.

Iran – Supports

India

proposal.

Chair – The Secretariat will modify the summary to reflect if members are at a consensus. It will ask the International Bureau to look at possible impediments to technology transfer in the revised study. Member states should not prejudge that patents are impediments to tech transfer b/c the absence of patent can serve as an impediment to tech transfer. The revised study will include all types of impediments. The Secretariat must evaluate whether there is an overlap with work of CDIP.

Norway –

Norway

asks the Secretariat to provide more guidance regarding overlap between CDIP and SCP work on these issues. We must have an in-depth consultation with CDIP to determine the focus of their initiative.

Korea – Supports the Chair’s proposal. SCP/14/4REV – Pars. 50-59 reflect that patents are not a barrier itself to tech transfer but patents may serve as impediment. Par. 169 provides an example of activity undertaken in CDIP. The Secretariat should direct the WIPO Chief Economist and researchers to conduct a study on how and whether patent system acts as impediment to tech transfer. The study should also focus on how patent information and patent disclosure can act to promote tech transfer.

U.S.

France –

Chair – No study will be conducted by the Office of Chief Economist. That office would only undertake work that would gather expertise for a forum or seminar. Such a forum would gather and discuss evidence of many possible impediments to tech transfer to ascertain whether a study should be commissioned.

Chile – Chair proposal well balanced.

The CDIP project is a two-year project; does this mean that the SCP will do nothing for two years?

Uruguay

Angola – CDIP program put forward has a section on patents. The present discussion has focused on adopting a holistic approach. There is no duplication of CDIP work. If there are no patent system impediments to tech transfer there will be no need to go forward on a study of impediments.

France - Group B – can go along with a revision of the study proposed by the Chair. However, it is more logical to lead with in-depth consultations within CDIP to see if there is adequate coverage before proceeding forward.

Algeria

– CDIP/6/4/REV – the five elements do not refer to patents and the implications of the patent system for transfer of technology. Thus, SCP is the most appropriate forum in which to discuss these matters; thus there will be no duplication of work of CDIP at SCP. SCP is a rulemaking committee. Algeria is in favor of India’s suggestion, as chair of the DAG, to invite the WIPO Chief Economist.

Chair – The revised study will reflect the interventions of this meeting. The Secretariat will look into the overlap between CDIP and SCP. CDIP does mention IP which includes patents. Ambiguity will be clarified.

India

– The study should be revised to include how patents could be used as an impediment to technology transfer. For example it could point out how patents are an issue in the current climate change negotiations. There are no collations of general references to how the patent system can impede tech transfer. We want more elaboration in detail of the role of patents as impediments so it is balanced. What type of data is important to evaluate the usefulness of the patent system, whether it is actually performing vis-à-vis technology transfer? The seminar should be a side event scheduled before the SCP convenes.

Brazil – There may very well be an overlapping/duplication of work. The CDIP commissioned the project at the beginning of the year and it is now on its way. The study we are discussing today may already have been done. The SCP Secretariat can determine if such study has been done even by tomorrow. If not, the SCP can deal with these questions.

Chair – The understanding is that such project has not yet been done. Does it fall within terms of reference that CDIP has decided? Would it fall within the CDIP’s term / scope of work?

Egypt

– Regarding SCP/6/4REV., the project was supposed to start with a document drafting project paper 3-1. It was slated to be completed by the first quarter of this year. If it is not yet complete, the vast bulk of work would already have been done. The Secretariat should request that the office responsible for this elaboration guide/inform SCP regarding what was done to avoid duplication. CDIP and SCP have clear mandates but we believe in this case that the SCP will be guided by the CDIP project guideline. The focus of the project was the Development Agenda recommendations. The focus of the SCP’s work should be of different perspective of perhaps the same issue of tech transfer.

Chair seeks to clarify these relative scopes of activity on the same issue.

Switzerland supports

France

’s statement on behalf of Group B. Consistent with Algeria’s statement, the work here should be focused on patents and not on the industrial designs focused on at CDIP.

Angola – Mandate of SCP is very clear. CDIP/16/4/REV p. 4 - 2.3

Chair – I have lost track of who has done what study on tech transfer and patents.

Brazil – If there is no study done at CDIP that was commissioned why not then do the study here?

Chair – We have a tech transfer study here.

India

– The Bulgaria proposal is to have exchange of best practices of how to overcome patent impediments to tech transfer. That study would be possible if there is no duplication with what CDIP is/was doing.

Norway

is concerned that there be no duplication of work. When the project on tech transfer was discussed and adopted in CDIP it was understood that the study would be launched in the 3^rd quarter of this year [2011]. The mandate of the study was to cover the IP related issues of tech transfer and to discover possible IP impediments. The SCP decision to conduct a study would take into account what CDIP has already done and is commissioned to do.

Egypt supports India’s understanding. The SCP should run in good harmony with CDIP and other committees. Whatever study is agreed upon in SCP should be coordinated with study undertaken by CDIP.

Chair – A study focusing on best practices and experiences is good. A study focusing on patents as impediments is not good. We cannot look at patents and tech transfer in isolation. Tech transfer is much more than a license to use a patent. Tech transfer entails the adaptation of technology to the local environment and to local regulations, to a level of funding, etc. We must look at the issue broadly and see what is necessary to undertake technology transfer. We can’t just separate out one aspect of patents on this issue.

France would need to discuss with Group B to agree to ‘best practices and experiences’.

India

– focusing on challenges that patents pose to technology transfer.

Chair – We won’t find a consensus in the SCP that focuses on how patents serve as barriers to tech transfer.

Egypt

doesn’t feel that the SCP tech transfer study already done is neutral b/c it didn’t address ‘impediments’.

Chair – It is intended that the revised study will include a section on impediments to tech transfer.

Switzerland – not prejudging the outcome of study was also raised in Group B discussions – studies should remain neutral and discover positive and negative points.

South Africa – The study does not focus on impediments, but should include that element.

Denmark – Inserting something / chapter into a study done in another forum?

Chair – actually talking about study SCP/16/4.

Secretariat – The DDG – i.e., the International Bureau understands the request for additional elaboration, more citation, and more clarity whether the international patent system acts as a barrier to technology transfer.

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Day 4 - Thursday, 5/19/11:

ITSSD travels to Brussels for the day.

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Day 5 – Friday, 5/20/11:

Chair – As concerns the informal summary on 5 informal agenda items, we will gavel down and close out these items when we have full consensus.

Later there will be a formal presentation of the Summary by the Chair which reflects the sense of what has been agreed to at the meeting.

Agenda Item #7 – Questionnaire on Exceptions & Limitations to the Right –

Korea requested clarification of farmers’ and breeders’ rights.

Chair summary of Denmark proposal – Denmark proposes that the Chair provide as much time as possible for Member States to respond to the exceptions and limitations questionnaire. Only answers without analysis would be presented to the SCP. Only after the SCP has answers, they will determine if further analysis of the answers is necessary. September 30 would be a reasonable deadline.

Spain – agrees with Chair proposal.

India – agrees, whether or not there will be a follow-up questionnaire later?

Chair – Chair’s summary reflected this.

Norway – agrees with Chair proposal.

Agenda Item# 11 – Tech Transfer –

Chair – We will consult with the Office of WIPO Chief Economist on the margins of the next SCP. It remains uncertain whether following the conclusion of the proposed seminar the Chief Economist will be invited to sit alongside the SCP and to give a report to the SCP on the seminar.

India – Tech transfer is complicated issue, which was why the Chief Economist should be invited to give oral presentation given his academic rigor and knowledge. India wants to bring back the results of the seminar and make them useful in the SCP. It needn’t be a formal report to the SCP.

France – doesn’t want the seminar conducted in connection with the SCP. There is no need to have a report to the SCP. This would be duplicative of SCP work.

Egypt – This is first time the SCP is ‘mandating’ the WIPO Chief economist to undertake a seminar; therefore the results of the seminar would be essential to contribute to progress of SCP.

Secretariat/Pooley – The word ‘mandate’ was never used by the SCP in discussing this possibility. The proper term that was used was to ‘invite’ - it was only an ‘invitation’.

France – The WIPO chief economist is an expert but it is not necessary to have him produce an independent report. Therefore it should not be a ‘mandate’.

Brazil – We would like a short summary of the seminar.

Chair – A summary of the meeting should be available on the website for all member delegations of SCP.

“Suggestions by the Chair”

Canada – made suggested to changes to paragraph 2.

South Africa – We are concerned that our proposal is not being treated similarly to the UK/Canada proposal on quality of patents discussed previously.

Chair – The UK/Canada proposal is of a different status than S. Africa patent/health proposal. It was submitted prior to this meeting.

India – We endorse the interpretation of South Africa on its interpretation of the UK/Canada proposal on quality of patents. We need a common definition of ‘patent quality’ before undertaking discussions substantively on that document. Par. 2(a) addition – ‘and other comments/proposals presented by member states’. Par. 2(b) deadline to Sept. 15.

Brazil – What does ‘patent quality’ mean? We agree with India that the UK/Canada proposal in the Chair Suggestion sheet (Item 2) is not a ‘formal proposal’, which the Chair subsequently confirmed.

Canada

– Extra time is okay if it is amenable to the Secretariat. The language India added for 2(a) is fine. The Canadian proposal for a change of 2(b) recognizes the different status between Member States and observers, the latter of which can make only ‘recommendations’ and not ‘proposals’.

Chair – We have presented consensus-based changes to Par. 2(a) and (b) of the Chair Suggestion Sheet – a/k/a – “Suggestions by the Chair”.

South Africa – We want the same new language used for Par.2(a) to be used in Par. 3(a). “Discussions will be based on the proposal submitted by the Delegation of South Africa...”

Chamber of Commerce of Russian Federation – What is deadline for revised Par. 2?

Philippines – Given significant diversification of laws and practices of Member State delegations concerning Client-Patent Advisor Privilege, there is no need to bring up this topic again at the current meeting or at the next meeting of the SCP. Any exchange of information by member delegations about their laws and practices would not be used at all for norm creation/setting purposes.

Chair – The Chair confirms the

Philippines

’ understanding of Chair Suggestion Sheet Par. 4 [relating to Agenda Item 10 - Client-Patent Advisor Privilege – set forth as Paragraphs 16 and 17 in the Summary by the Chair].

India – makes proposal for changes at Par. 4(b).

Hungary – The EU and its Member States must discuss this proposal before it can agree.

Brazil –

France – On behalf of Group B,

France

wishes to replace (d) 2^nd statement of Par. 5 of the Chair Suggestion Sheet [relating to Technology Transfer] as follows: “The secretariat will review the work under the CDIP to make sure there is no duplication of efforts concerning transfer of technology.” [ultimately not adopted, but replaced with the language found at Par. 18(d) of the Summary by the Chair].

India

– DAG – Par. 5(b) – Member states inputs reflecting comments at sessions of SCP ... addressing (not expanding) the gaps in the discussion on impediments and elaborating further on incentives to technology transfer...

Egypt – wants a REV of Chair summary to review upon return from coffee break.

Secretariat – will prepare in English only.

Secretariat – changes to Par. (c)

France – Group B does not approve of India’s proposed changes. Satisfied with Chair’s suggestion on Par. 4. India proposed language prejudges outcome.

Poland – supports original Chair text.

India – not willing to accept text of Para. 4 as proposed.

Philippines – supports India position.

U.S. – US not a demander on this issue and believe discussion should continue. India’s proposed text presupposes that we won’t do any further work on this matter. Chair’s text is balanced and is supported by U.S.

Philippines

– does not favor current Chair text.

Phillippines - Supports Chair’s text on Par. 5.

India –

Agenda Item #12 – Contribution of SCP to Implementation of Development Agenda Recommendations:

Secretariat – Member states will be given the opportunity to express their reviews on this topic through a special mechanism at the 16^th SCP. The Secretariat has agreed to revised language on Agenda Item #12 [as noted earlier: “Contribution of this committee to implementation of respective development agenda recommendations”, supra at “Day 1”].

Brazil – There is as of yet an agreed mechanism to do so. In CDIP, delegations expressed their views which were reflected in the Secretariat report which was to be sent to the WIPO General Assembly.

India – India is comfortable with the process outlined by Brazil. The DAG attaches great importance to this item and is pleased to see that it is consistent with the Development Agenda and that there are efforts to bring this issue forward. India is concerned that the current IP system ensures rights to IP holders without adequately considering how such rights contribute to the public as part of the quid pro quo for a patent right grant. The patent system’s shortcomings must be addressed before social and economic conditions of developing countries can improve. We must recover the essential balance inherent in the patent system which can happen only by revising old incorrect presumptions of the patent system for the benefit of Member States and the future viability of the patent system. India is pleased with the intellectual discussions about the patent system. There is a need to go beyond theoretical discussions and we must address post-grant realities. We must better understand how patents are actually used in the markets today and how they are impeding tech transfer and economic growth. The actual inventor is separate from the patent. This allows developed countries to grow richer at the expense of developing countries. The issue of patent quality is an essential issue to address – high quality and credible patents are of importance to all nations. What is meant by ‘patent quality’? This must be universally understood in order to move it forward in a work program.

Patent/health issues have been addressed constructively in the WHO and the UN, but not in the WIPO. Hopefully constructive WIPO engagement in this issue will accelerate. More discussions in the SCP are necessary about how patents can affect societal welfare. There is an ongoing naïve presumption that ensuring stronger IP rights will ensure economic growth and development. This has been rejected in global experiences. Using exceptions and limitations and flexibilities has so far been an academic discussion in this committee. Formulation of the questionnaire is hopefully a first step to creating a working program to assist developing countries to adopt. Tech transfer is quite important as a manifestation of the impediments of the patent system. The SCP must show how tech transfer can be effectively accomplished. Identifying how patents can be impediments to tech transfer is at the heart of this committee’s work program. This is necessary for a ‘balanced’ SCP work program.

Brazil – The SCP has agreed to a work program which is quite balanced in line with the recommendations of the Development Agenda. The SCP is making a positive contribution to the implementation of the Development Agenda. Our approval of the questionnaire is consistent with Brazilian Proposal [SCP/14/7, supra] Par. #70 – i.e., to eventually elaborate upon a manual of exceptions and limitations to the patent right. The SCP should develop a work program to enhance the capacities of developing countries to enable their patent systems to exploit the limitations and exceptions, in line with the Brazil Proposal Par. #22 and the Development Agenda Recommendations.

South Africa

– There is an assymetrical dynamic between IP rights holders and the public interest. The list of issues for exploration by the SCP should remain non-exhaustive. A mechanism to facilitate coordination between the SCP and CDIP is quite important as reflected by the extensive discussion on technology transfer.

France

– SCP adopted a new work program subject to later comments. The SCP, by the very nature of its mandate, contributes to the implementation of the Development Agenda in a variety of ways. SCP work is dedicated to the improvement of the patent system which promotes innovation and technology transfer. We should be careful not to duplicate the efforts of the CDIP.

Egypt – supports South Africa’s statement.

Hungary - Supports French statement and additional elaboration. The EU’s Member States will contribute with detailed comments after the SCP’s work program has been implemented to a greater extent. SCP/15/INF2 [See Status of Work Relating to the Non-Exhaustive List of Issues Agreed By the Standing Committee on the Law of Patents (SCP) SCP/15/INF/2 (July 20, 2010), available online at: http://www.wipo.int/edocs/mdocs/scp/en/scp_15/scp_15_inf_2.pdf].

Spain

– There is no doubt that the SCP has already integrated development activities into the work of the SCP. The work of the Development Agenda is widespread in the SCP. For example, there are two projects on the relationship between patents and the public domain – e.g, #16 and #20. 19, 25, 28. #7, #8, 30, 31, 1, 7, 9, 40, 41, 22, 23, 28, 29, 31, 39.

[See The 45 Adopted Recommendations under the WIPO Development Agenda, WIPO website, available online at: http://www.wipo.int/ip-development/en/agenda/recommendations.html].

The aspects reflect social reality. We must avoid duplication. The inclusion of development agenda items should not preclude discussion of other business in the SCP. The resulting lack of balance would convert this committee into a duplication of other committees.

U.S. – supports France, Hungary and Spain statements concerning how the SCP has been supportive of Development Agenda 12.

Australia – supports France statement. Most discussions in SCP currently implement Development Agenda recommendations.

Chair - Meeting suspended. The Chair seeks advice concerning how to reach consensus.

[The Chair subsequently published its summary of this week of meetings. See: Summary by the Chair, SCP/16/8 (May 20, 2011), available online at: http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_8.pdf].

ITSSD Journal on Intellectual Property Rights

ITSSD 'Geneva Diary' of the Proceedings of the 16th Session of the WIPO Standing Committee on the Law of Patents Reflects Efforts to Move Development Agenda Forward at Expense of IP Rights