WIPO Committee Continues Work On Whether and When To Develop “New International Norms” On Patent Protection

by Brian Fletcher on April 2, 2009

Today, BNA’s Patent, Trademark & Copyright Journal (subscription required) reports that members of the World Intellectual Property Organization (WIPO) have agreed to step up their analytical work on various patent issues, work which may pave the way toward a future decision on whether and when to develop new international norms on patent protection.

Meeting in Geneva March 23-27, WIPO’s Standing Committee on the Law of Patents (SCP) agreed to ask the WIPO secretariat to prepare new studies on five patent-related issues as members had requested.

The issues are exclusions, exceptions and limitations to patent protection, with a focus on issues such as public health, education, research and experimentation and patentability of life forms (to be carried out by external experts); technical solutions for improving access to, and dissemination of, patent information; and expanding on an existing preliminary study covering client-attorney privilege.

In addition, the WIPO secretariat will prepare preliminary studies on transfer of technology and opposition systems. The SCP also endorsed the idea of holding a conference next July at WIPO headquarters in Geneva on intellectual property and global challenges. The conference, scheduled for July 13-14, will examine the relationship between intellectual property and topics of particular interest to developing countries, including issues of health, the environment, climate change, and food security.

The SCP reviewed four preliminary reports the secretariat prepared for the meeting, covering client-attorney privilege, standards and patents, exclusions from patentable subject matter and exceptions and limitations to the right, and dissemination of patent information.

Discussions on these reports took place at the March 23-27 meeting, with the SCP agreeing to keep the reports open for further comment at its next meeting in November. A WIPO official said the reports, which provide an oversight of developments on the issues in question, were generally well received, although some developing countries said the reports should have focused more on concerns of poorer members.

For example, some developing countries complained that the report on exceptions and limitations should have examined what they claimed has been the erosion of patent flexibilities through bilateral and regional free trade agreements.

The SCP also agreed to a further study on issues related to client-attorney privilege after some countries called for more examination of practices in common law systems, where the idea of client-attorney privilege originates, and how civil law courts deal with the issue in detail. The committee, however, did not accept a proposal put forward by a handful of countries calling for a new WIPO working group to study the matter in greater detail.

The issues were drawn from an earlier, nonexhaustive list of 20 patent-related topics, which members had proposed for further study. Two new issues were added to the list at the March 23-27 meeting: patents and the environment (with a focus on climate change and alternative sources of energy); and patent quality management systems.

The studies are intended to ease members back into substantive discussions on patent issues following WIPO’s failed efforts to secure a new international treaty on patent harmonization. The negotiations stalled in May 2003 because of sharp differences between developed and developing countries over the scope of the proposed treaty.

Industrialized countries wanted WIPO to focus first on four technical issues related to the granting of a patent: prior art, grace period, novelty, and inventive step. But a group of developing countries led by Brazil and Argentina insisted that other issues of interest to them be treated on an equal basis, such as the sufficiency of disclosure requirements in patent applications, the protection of genetic resources, effective mechanisms to challenge previous patents, and technology-transfer provisions.

Comment:  anyone else seeing an agenda developing that appears to call for reducing IP protection in certain areas in the belief that such reduced protection will actually help foster innovation in current politically popular areas, e.g., climate change and alternative sources of energy?

Does anyone know the current positions of individual countries with respect to lowering IP protection for certain technologies in this WIPO process?  Please post if known.

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