Report from 33rd Session of the Standing Committee of Patent Law, WIPO

FICPI attends focused and intensive 33^rd session of the Standing Committee of Patent Law (SCP/33) in hybrid format in Geneva on 6 to 9 December 2021. Hot topics are prior use, AI and IP Offices as well as Client-Patent Attorney Privilege. New pertinent topics are in the pipeline (exhaustion of patent rights, expedited examination). The next session (34^th) is scheduled for 26 to 30 September 2022.

The meeting was opened on behalf of the Director General by Ms Lisa Jorgensen (US), Deputy Director General, Patents and Technology Sector (WIPO), who was present throughout the meeting.

She briefly reviewed the comprehensive work undertaken by the SCP, also raising the Client-Patent Attorney Privilege as a very pertinent topic.

Mr Leopoldo Belda Soriano (ES) was elected Chair and Ms Berta Dávalos (PY) and Ms Lucrécia Marĉoková (SK) were elected Vice-Chairs.

The Chair gave clear instructions on how the meeting would be held, noting the speaker order: (i) regional coordinators[1]; (ii) member states; (iii) intergovernmental organisations; and (iv) NGOs. Further, he stated that interventions should be as short as possible, statements which were too long would be interrupted. This paved the ground for a very efficient session.

Meeting topics 

The main topics of the meeting were (1) aspects of national/regional patent laws; (2) exceptions and limitations to patent rights/prior use; (3) quality of patents including opposition systems/AI at IP offices; (4) patents and health; (5) confidentiality of communications between clients and patent advisors; and (6) technology transfer.

A new observer, FORPIQ (Intellectual Property International Forum-Québec) was admitted.

(1)   Aspects of national/regional patent laws

Member states gave short updates on the developments on their IP Offices and new PPH-agreements.

(2)   Exceptions and limitations to patent rights

The Secretariat of SCP had prepared a draft reference document SCP/32/3 on the prior use exception, worthwhile to study. A short discussion followed, generally noting that there should be a balance between IP holders and third parties.

• FICPI/Kim Finnilä intervened, emphasising the relationship between prior use and a grace period and referring to our previous position papers and resolution[2], which also have been posted by the Secretariat on the SCP electronic forum[3].

(3) Quality of patents, including opposition systems

All delegations that took the floor found this topic very important.

Some were concerned that lack of capacity would affect quality. RU is setting up an electronic opposition system with video conferencing. The PPH agreements are expanding, which requires trust amongst the various offices. After a general discussion, it was time for a sharing session on the use of AI by IP offices. Many offices are developing the use of AI for various purposes.

Ms Remi Tanimoto (JPO/JP) gave a presentation on how AI is presently used at the JPO. Many projects are still under development, but AI has already tested in image searches in relation to trade marks, designs and patents. Ms Houda Mouzoun (INPI/FR) informed us that they are using AI tools for classification. The accuracy rate is found to be quite high, at about 80%, fully comparable to human work. The benefit is huge time savings. Further projects are on the way including a chatbot for client service.

The US delegation informed that they are advancing on AI, e.g. for image searching and classification. This will be enhanced as they have a senior level position for emerging technologies and AI.

The CZ Office plans to launch AI tools for internal examination support, file distribution, classification and prior art search in 2024. This will be expanded to customer service later on.

RU already uses machine translations and is developing AI tools for classification, as well as document and image searching.

The SCP Secretariat, Ms Tomoko Miyamoto, Head of Patent Law Section, noted that currently there are no specific figures on how many IP Offices use AI nor any information about any specific problems.

The use of AI and use of other intelligent tools is still mostly at a development stage with the IP Offices.

The AI-related discussion opened up an avenue for a proposal to have studies on sufficiency of disclosure, also covering other areas, such as health-related patents.

• FICPI made a brief intervention noting e.g. the importance of incoming quality of patent applications based on our previous resolutions[4], which also are posted on the SCP electronic forum.

The Chair then gave the floor to the US delegation which had submitted a proposal to this SCP session.

The US explained their recent proposal SCP/33/4 on studying and having a sharing session on the question of expedited examination. They noted that patent offices around the globe recognise the importance of timing in the grant of a patent. They further noted that on a larger scale, that delay in granting patent rights can affect the flow of foreign investments into states or regions. Delays can also affect associated domestic innovation that may rely on this venture capital for research and development. It would also be important to have first-hand experiences and views from users/observers at the SCP.

(4) Patents and health

This session started with a comprehensive presentation of the development of Pat-INFORMED and MedsPal (2016). Particularly MedsPal has expanded, now covering about 13,700 national applications/patents, about 140 priority medicines, information on about 60 licenses and data exclusivity information from 15 countries. Further, a new database: VacsPal, which is a COVID-19 vaccines patent database, was introduced on 8 June 2021.

The EAPO has also introduced a pharmaceutical register on 1 March 2021 based on INN (International Nonproprietary Names). This is connected to Pat-INFORMED and MedsPal. Kindly see our recent news item for more detail.

The delegations then engaged in a positive discussion largely supporting the patent system in this area.

(5) Confidentiality of communications between clients and patent advisors

The FR delegation, representing Group B, noted that patent activity has increased which may again lead to increased litigation, emphasising the importance of not facing breach of confidentiality cross-border. It was further suggested that this should be taken to an international level by WIPO.

This generated support. The CH delegation also referred to the ongoing work on a multilateral agreement focused on cross-border privilege. A final document, including explanatory documents may be published early next year, perhaps towards February-March 2022.

• FICPI made a brief intervention based on FICPI’s recent discussions at the Group B+ Virtual Plenary Meeting on 5 October 2021. The focus was on the cross-border aspects and consequences, if privilege is not available.

JPAA also intervened in support of the privilege issue.

(6) Transfer of technology

There was a general discussion on the importance of this topic, however, with a referral to CDIP (Committee on Development and IP) and that this committee is more suitable for this topic. Voluntary licensing platforms were suggested as appropriate tools for this purpose.

(7) Future work

The SCP will continue with the above discussed topics. At the (next) 34^th session of SCP:

• There will be a discussion on exhaustion of patent rights based on a draft reference document prepared by the Secretariat;
• The Secretariat will organise an information sharing session on patentability of inventions using AI and by AI;
• The Secretariat will organise an information sharing session on expedited patent examination mechanisms at IP offices;
• The Representatives of WHO, WIPO and WTO will present their patent-related activities with respect to the Covid-19 pandemic in the context of the trilateral cooperation; and
• The Secretariat will organise an information-sharing session focusing on cross-border aspects of confidentiality of communications between clients and their patent advisors.

The next 34^th session of the SCP is preliminarily scheduled for 26-30 September 2022.