The Committee agreed to begin examining compulsory licensing & prior use as regards patent rights, & quality of grant process.
The 31st Session of the Standing Committee on the Law of Patents (SCP/31) was held on 2 to 5 December 2019, I represented FICPI at this World Intellectual Property Organization (WIPO) meeting held in Geneva.
WIPO’s Director General, Francis Gurry, welcomed the participants. He raised two main issues:
  1. Quality is related to a timely delivery of IP products. This is a challenge for the Offices.
  2. There has been an extraordinarily rich exchange of information, but the Committee should think about outcomes. So-called soft law is an alternative, but normative action has escaped the committee for decades.
The SCP deals with five main topics: (i) exceptions and limitations to patent rights (ii) quality of patents, including opposition systems (iii) patents and health (iv) confidentiality of communications between clients and their patent advisors (v) transfer of technology. On exceptions and limitations to patent rights, two new issues are to be studied in the Committee: compulsory licensing and prior use. For quality of patents, including opposition procedures, the Committee will focus on the quality of the grant process, SCP/31/3, which as noted above also concerns timely delivery of IP products. Under this topic, it was a great pleasure to see how energetic the delegates were during a sharing session on the use of artificial intelligence for the examination of patent applications. Some delegations gave thorough presentations on already implemented and planned measures to tackle AI issues. At the next Session, SCP/32, there will be a one-day information sharing session on AI covering issues such as patentability of AI-assisted and -generated inventions, inventorship, person skilled in the art, deployment of AI in administration, search and examination. This is something to look forward to. The question - what does a peacock have to do with IP? Finally, the meeting included a sharing session on confidentiality of communications between clients and their patent advisors, i.e. Protection of Confidential Communications (PCOC … peacock…). This discussion session started with three presentations given by the delegations of Canada, AIPPI and FICPI (by myself). Are patent advisors bound by the same obligations as lawyers? There were some interesting questions from the floor. The so-called client-attorney privilege is well known. But, are patent advisors bound by the same obligations as lawyers, e.g. ethical rules? This provided a good opportunity to discuss the qualification, [public] registers, codes of conduct, and so on, of patent advisors. The atmosphere in general was very positive. Further studies on this issue will be continued. There was also strong support from other NGOs, including ICC and APAA. We will report back again from the committee’s next session, SCP/32, which is scheduled for 2-5 June 2020 – stay tuned. FICPI’s view and involvement  In order to help FICPI’s members to build and protect value in their IP assets, FICPI representatives invest valuable time in attending national and international standards meetings. They provide inputs during the meetings and report back to allow FICPI’s independent IP attorneys members to benefit. This is in accordance with FICPI’s Statutes (Article 2, paras. 4 and 5): 4.      To study all administrative or legislative reforms and all improvements to international treaties and conventions, with the object of facilitating the exercise by inventors and industrialists of their rights, of increasing their security, and of simplifying procedure or formalities; 5.      To intervene in international proceedings for the purpose of pursuing the achievement of the abovementioned reforms and improvements. Article 2 (3) of the Statutes is also an important tenet:  To collect all information of professional interest in the various countries and to distribute the same for the use of its members. The FICPI community is built on trusted, global relationships and strong shared interest. Through FICPI attendance at meetings with national Offices and international standards organisations, we can advocate improving the system. FICPI members - independent IP attorneys - are important sounding boards and stakeholders in that process as they use the systems day to day, and have great experience of multiple different national and regional IP systems, giving our members and FICPI wide perspective when looking at reforms to the system. Through FICPI’s focus on legal and professional excellence, we want to improve protection for our clients and work on making the system safer to use through eliminating complexity to reduce unintentional errors and increasing opportunities for applicants to recover from mistakes when made inadvertently or in spite of all due care having been taken. Next steps 
  • Attend SCP/32 in June 2020 where there will be a one-day information sharing session on AI, or read FICPI’s subsequent report
  • Find out how to get involved with FICPI’s Study & Work Commissions (CET), such as CET 3 - International Patent Matters
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