Patent Law Issues under Debate at the International Level

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  • June 17, 2016
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  • Patent

The World Intellectual Property Organization (WIPO) Standing Committee on the Law of Patents (SCP) was established in 1998 as a Member States’ committee (IGOs and NGOs participate as observers). SCP Sessions at WIPO are typically made up of about 90-100 Member States, 5-10 IGOs and 25-30 NGOs. SCP is a forum to discuss issues, facilitate coordination and provide guidance concerning the progressive international development of patent law, including the harmonization of national laws and procedures. It is an important forum that deals with a cluster of issues rather than each issue in isolation. This led to the conclusion of the Patent Law Treaty (PLT) in 2000 and between 2000-2006, it has facilitated negotiation of the draft Substantive Patent Law Treaty (SPLT).

Since May 2011, the SCP has had five agenda items for its work namely: Exceptions and limitations to patent rights; Quality of patents (including opposition systems); Confidentiality of communications between patent advisors and their clients; Patents and health; and Transfer of technology. The methodologies adopted at SCP include: studies; information gathering/compilation; sharing of experiences among Member States; and seminars inviting external speakers. At the recent sessions, the Committee agreed that, without prejudice to the mandate of the SCP, its work for the subsequent session be confined to fact-finding and not lead to harmonization at that stage.
On the issue of exceptions and limitations to patent rights, it is recognised that exercising the exclusive patent rights in all circumstances may not meet the ultimate goal of the patent system: promoting innovation and enhancing public welfare. Such negative externalities include inhibiting further research and innovation as well as conflicts with public policies and fundamental rights. As a result certain flexibility in deciding which actions shall constitute exceptions and limitations to the rights. Choices reflect different needs in different countries
Therefore the ultimate goal is to ensure a fair balance is struck between patentee’s interests and third parties interests.
On the issue of quality of patents, it is recognised that quality of patents is an essential aspect of the patent
system in order for the patent system to serve its purpose. In this connection, inefficiency and inaccuracy in patent grant and administration procedures lead to legal uncertainty and costs for all.
Some of the quality-related aspects of the patent system considered by SCP include: search and examination; third party observation and opposition mechanisms; practical guidelines for patent office employees and their training programs; codes of conduct for patent applicants; and quality control and quality management systems.
With the increased internationalization of patent filings, SCP is exploring ways to improve the quality of patents globally. As a result, SCP has already been involved in various studies including: Study on opposition systems and other administrative revocation and invalidation mechanisms (SCP/18/4); Study on inventive step (SCP/22/3); and Study on sufficiency of disclosure (enabling requirement, support requirement, written description requirement) (SCP/22/4).
On the issue of confidentiality of communications between a client and his patent advisor, the question arises: how to preserve confidentiality of advice from patent advisors? In this regard, it recognised that free and frank communication between client and advisor necessary for high quality advice in patent matters.
Sources: Tomoko Miyamoto, Presentation at WIPO-WTO Colloquium for Teachers of Intellectual Property, June 13-24, 2016

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