Patent Law Harmonization: What Happened?

"It is not yet the time." So concluded Ron Marchant, head of the United Kingdom Patent Office, who chaired the close of the informal meeting of the Standing Committee on the Law of Patents (SCP) in Geneva on April 12. Agreeing that they could not yet agree on a work plan, Member States put on hold the discussions on a draft Substantive Patent Law Treaty (SPLT) which had started in 2001. This report recalls the background, and explains how differences in approach have made agreement on the way forward hard to find.

The SCP’s work on a draft SPLT text initially focused on harmonizing certain operational concepts relating to the examination of patent applications. Over the next couple of years the proposed contents of the text were progressively broadened. In the course of that process, some provisions, regarding, for example, patentable subject matter or the exceptions to patentability, raised concerns that flexibilities in national policies, recognized under current international treaties, could be eroded. Delegations also differed over proposals to include requirements to disclose in patent applications the origin of any genetic resources and traditional knowledge on which an inventions is based.

Attempts to move the discussions forward included proposals in 2004 from members of the so-called trilateral cooperation (Japan, the United States of America and the European Patent Office); a WIPO-led consultation meeting with delegations from 20 Member States and regional offices in Casablanca in February 2005; and proposals submitted by the "Friends of Development." But delegations were by now divided, broadly speaking, into two camps: those pressing to fast-track a limited number of technical issues; and those advocating an inclusive approach.

Limiting the scope…

Delegations in the former camp held that it was necessary to harmonize patent examination standards among WIPO Members in order to improve patent quality, simplify procedures, reduce costs for users, and reduce duplication of work by patent offices. This was in the common interest of both developed and developing countries. To this end, they urged approval of a limited workplan for the SCP, in which the scope of the SPLT discussions would be confined to the definition of:

• prior art,
• grace period,
• novelty, and
• inventive step.

Agreement on these issues, the delegations reasoned, would promote higher patent quality, facilitate work-sharing, and reduce existing differences in national laws which currently impeded innovators, particularly individuals and small and medium sized enterprises, from benefiting from their own innovation. Delegates held that, while these four items were neither the only nor the last items that should be harmonized, continuing with discussions of the entire draft treaty documents, as well as additional issues, was not a viable manner in which to proceed.

…versus the broad sweep

Other delegations opposed this approach as failing to take adequate account of the concerns of all Member States, particularly those of developing countries. These concerns included the cross-cutting nature of the patent law harmonization process, its impact on public policy objectives for developing countries, and the importance of such subjects as:

• safeguarding public interest flexibility,
• transfer of technology,
• curbing anti-competitive practices, and
• disclosure of the origin of genetic resources in patent applications.

The "Friends of Development" and other like-minded delegations could not accept a fragmented approach to negotiations, as suggested in the Casablanca statement and the proposal of the Delegations of Japan and the United States of America, whereby such issues would be left aside or transferred to other fora, such as the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC).

They considered that negotiations needed to keep on board issues of concern to all Members as a single undertaking, so as to keep a balance between, on the one hand, demands for upward harmonization of national patent laws, and, on the other, the safeguarding of existing flexibilities and national policy space.

Three step procedure

Seeking a way through the impasse, the WIPO General Assembly in September-October 2005 adopted a three-step procedure consisting of the following: (i) A three-day informal open forum to debate all issues in the draft SPLT text, or that Member States wish to include; followed by (ii) a three-day informal session of the SCP to agree a work program, taking into account the discussions of the open forum; leading to (iii) a formal meeting of the SCP to commence work on the agreed work program.

Many participants in the Open Forum (March 1 to 3, 2006) appreciated the constructive and wide-ranging discussions, and expressed the wish to broaden the debate on the patent system in WIPO. The Open Forum was followed as planned by the informal session of the SCP from April 10 to 12. Delegations acknowledged the importance of all the issues raised, and several contributions sought to bridge the differences in approach. But while many delegations indicated some flexibility, the frank discussions revealed that some key differences could not be resolved in the near term. Member States emphasized support for the continuation of the work of the SCP, but concluded that it was premature to establish a work program, and decided to refer the matter back to the WIPO General Assembly in September 2006.

What now?

It is, for the moment, an open question as to whether this outcome is to be considered final or whether it is more of a stopover on a longer journey. In any event, it reflects the various interests and positions among Member States, and suggests that further reflection is needed on a number of important issues relating to the international patent system. Further consideration of such issues would have to take account of certain existing parameters, such as the fact that the international patent system is not functioning at its best, in terms either of handling increasing numbers of patent applications, nor of the quality of granted patents. In addition, policy-related issues, such as the space for flexibilities or exclusions from patentability, are complex matters, which may require some time for resolution. Moreover, patents have an inherent international dimension, while national interests are multiple and various. Consideration could also be given to the question of whether some of the issues on the table could be addressed by means of practical measures rather than through a legislative process.

Member States and stakeholders involved in the process to date have expressed the continuing hope that the key issues will be addressed in a satisfactory manner for all parties.