Bridges Trade BioRes • Volume 4 • Number 10 • 28th May 2004
DISCLOSURE REQUIREMENTS REMAIN DIVISIVE IN WIPO PATENT REFORM
DISCLOSURE REQUIREMENTS REMAIN DIVISIVE IN WIPO PATENT REFORM
Efforts to reform the international patent system continued at the World Intellectual Property Organization (WIPO) where member countries met for the Working Group on the Reform of the Patent Cooperation Treaty (PCT) from 3-7 May and the Standing Committee on the Law of Patents from 10-14 May. In both meetings no substantive progress was made in the discussions and disagreements persisted over issues related to disclosure of origin, genetic resources and traditional knowledge (TK).
Forum discussions continue at PCT…
During the PCT meeting, Switzerland submitted additional comments to its earlier proposal for an amendment to WIPO’s Patent Cooperation Treaty to enable countries to require patent applicants to declare the source of the genetic resources and TK in patent applications (see BRIDGES Trade BioRes, 13 June 2003). The EC welcomed the proposal, while many developing countries, among them India, Egypt and Brazil, acknowledged its potential to serve as a basis for further discussion on specific wording. Japan and the US, on the other hand, opposed the proposal.
The Swiss proposal was not discussed in detail at the meeting. In what one observer described as a "mostly political" debate, countries mainly focused on the appropriate forum for discussions, thus mirroring similar debates at the Council for Trade-related Aspects of Intellectual Property Rights (TRIPs), the WIPO Intergovernmental Committee on Intellectual Property Rights and Genetic Resources, Traditional Knowledge and Folklore (IGC), and the Convention on Biological Diversity (see BRIDGES Trade BioRes, 2 April 2004). The US and Japan continued to oppose discussions in the PCT context, preferring issues related to genetic resources and TK to be dealt with by the IGC. Others, however, such as Switzerland, indicated that without doubt DoO would remain a formal requirement in some countries in the future, and thus needed to be included in the PCT system.
US, Japan, EC suggest to fast-track discussions on SPLT
The Standing Committee on the Law of Patents continued its discussions on the Substantive Patent Law Treaty (SPLT; see BRIDGES Trade BioRes, 11 December 2002). During the meeting the ‘trilateral group’, composed of the US, Japan and the EU, proposed to split up the discussion on individual subject matters in the SPLT into primary and secondary issues. It was argued that this would reduce the sheer volume and complexity of the debate and as a result substantially speed up the process of agreeing on a working draft of the SPLT. To do so the Committee would give first priority to a ‘reduced package of issues’, focusing on matters related to definitions of prior art, grace period, novelty and inventive step (non-obviousness). In a later stage it would then cover the current draft SPLT as a whole and consider issues such as DoO of genetic resources and TK, public health and exceptions to patentability criteria. However, some developing countries, in particular Brazil and the Dominican Republic, opposed this suggestion. They noted that a large number of the issues being discussed in the SPLT were related to each other and should therefore not be separated in the negotiating process. Their demand to include TK and genetic resources in the first round of discussions, however, was rejected by the trilateral group.
Background
In 2001, the Director-General of WIPO announced a new initiative — the WIPO Patent Agenda — aimed at launching worldwide discussions for the purpose of preparing a strategic blueprint for the future evolution of the international patent system (IPS). Currently, WIPO’s efforts to harmonize the IPS focuses on three elements. First, the Patent Law Treaty (PLT) — concluded in June 2000 — harmonises patent procedures relating to national and regional patent applications and maintenance of patents.Second, the Patent Cooperation Treaty (PCT), an international filing system for patents that enables inventors to apply for patent protection in up to 112 countries by submitting a single "international application", is currently being streamlined and simplified to improve efficiency of the system and facilitate obtaining patents worldwide. Third, a Substantive Patent Law Treaty (SPLT) is being developed which would cover a number of basic legal principles that underpin the granting of patents in different countries.
Additional Resources
The WIPO Draft Substantive Patent Law Treaty: A Review of Selected Provisions, by Carlos M. Correa / South Centre, March 2004.
IUCN/ICTSD reporting; "Member states discuss ways to further harmonise patent law," WIPO PRESS RELEASE, 18 May 2004.