Deadlock in Informal WIPO patent committee

14 April 2006
Thiru Balasubramaniam

An informal session (meaning there is no official written record of this meeting) of the WIPO Standing Committee on the Law of Patents (SCP) met from 10-12 April 2006 in Geneva at WIPO headquarters. The mandate of this informal meeting, set by the WIPO General Assembly in 2005 was,

to agree on a work program for the SCP, taking into account the discussions of the open forum.

At the end of the three days on intense, informal consultations, WIPO Member States could not agree on a work plan for the WIPO SCP in July. Consequently, the Decision was forwarded to the General Assemblies in September 2006. As a result, there will be no formal meeting of the Standing Committee on the Law of Patents this July.

The backdrop to this process has been the assiduous efforts by the United States, Japan and the European Union to conclude a Substantive Patent Law Treaty (SPLT) in WIPO. The elements of such a treaty include: definition of prior art, grace period, novelty, and inventive step ("prior art package". The demandeurs of patent harmonization assert that these four issues are "mature" and ready for "harvesting" into a Treaty process. The Friends of Development (FOD) and other Member States including Pakistan have opposed the attempts to fast-track the prior art package at the expense of broader cross-cutting development issues of concern to developing countries. One of the reasons developing countries have opposed fast-track patent harmonization is the fear that this process would erode their policy space and erode flexibilities afforded to them under the TRIPS Agreement, the Doha Declaration and other international instruments.

On Tuesday, 11 April 2006, the Friends of Development submitted a "List of issues for the work program of the SCP, taking into account the discussions of the open forum" which included 9 issues: (1) development and policy space for flexibilities, (2) exclusions from patentability, (3) exceptions to patent rights, (4) anti-competitive practices, (5) disclosure of origin, prior informed consent and benefit-sharing, (6) effective mechanisms to challenge the validity of patents, (7) sufficiency of disclosure; (8) transfer of technology; and (9) alternative models to promote innovation.

During the informal meeting of the SCP, the United States and Japan insisted on the prior art package's inclusion in the work plan of the SCP but were generally averse to the inclusion of all the Friends of Development's package citing concerns that the SCP program would then become "unmanageable". Much of the informal SCP was devoted to debating over how many issues the SCP work plan should take on board.

Argentina, speaking on behalf of the Friends of Development, insisted that all issues be considered on an equal footing without prejudging the outcome. Argentina asserted that the purpose of the meeting was clearly outlined in the General Assembly's mandate which instructed the informal SCP "to agree on a work program for the SCP, taking into account the discussions of the open forum". The WIPO Open Forum on the draft Substantive Patent Law Treaty (SPLT) played an important role in the informal SCP discussions as many developing countries noted its import within the General Assembly mandate while other delegations downplayed its significance. With respect to the FOD's package of 9 issues, the United States and Portugal objected to the inclusion of "alternative models to promote innovation" in the SCP on the ground that it was outside its remit. Austria, speaking on behalf of the European Communities and its Member States emphasized its support for the US/Japan package and its willingness to include three of the FOD issues, exclusions from patentability, exceptions to patent rights, and sufficiency of disclosure in the SCP work plan.

Algeria noted that the informal SCP should limit its discussion to the mandate and draw up a work plan that covered all the issues without prejudging the issues rather than debating what constituted the "ideal" number of issues for the SCP work plan.

Pakistan reminded the body that previous attempts were made in restricted conclaves to decide on this process in a non-inclusive matter (Casablanca). The delegate stressed that this should not be repeated. He noted

We are NOT in a normative phase. The mandate is to give a form to this discussion. We arrived here with baggage (our past positions on this). It is encouraging to note, that at least the number of issues present in the form has been reduced to 13. There has been discussion about fast track versus a single undertaking approach. It's a menu of issues, nothing has been served. The batting order has yet to be decided. Let us be inclusive. My formal proposal is to have a closed list of 13 issues that can be taken forward to the SCP so they can be treated on an equal footing.

Kenya supported Pakistan's intervention and challenged Portugal's assertion that some issues were not relevant to this SCP posing the question as to why only the prior art package issues were considered "mature".

In the afternoon session of the final day of the informal SCP, consensus could not be reached on a work plan for the SCP. Although the EU indicated its willingness to address three of the FOD package, this was not sufficient for the Friends of Development. Switzerland, speaking on behalf of the Group B countries (industrialized countries), noted that without a clear fast-tracking of the prior art package (prior art, grace period, novelty, and inventive step), it could not accept the Friends of Development's demands for the inclusion of its 9 issues along with the prior art package.

The Chair of the third day's session, Mr. Ron Marchant (Chief Executive and Comptroller General, The Patent Office, United Kingdom), concluded,

Unfortunately it is not close enough to fulfil one leg of the requirement. So my understanding is that it is premature to move ahead with SCP program. We need to rethink our paradigms in relation to that. We need to prepare for the General Assembly and be clear as to whether we think it is better to suspend the process for a period as not yet mature enough, in that circumstance.

WIPO Deputy-Director General Francis Gurry stated that communication from this meeting would be that "the meeting was unable to agree on a work plan for July SCP and consequently the Decision was forwarded to the General Assemblies in September".

Certain developing country delegates and other experts close to the negotiations expressed concern that the deadlock in the informal session of the WIPO SCP could have untoward consequences on other WIPO processes such as the WIPO Development Agenda and the WIPO Intergovermental Committee on Genetic Resources, Traditional Knowledge and Folklore.