18th December, 2018
The 29th Session of the Standing Committee on Patent Law (SCP) was held in Geneva on 2 to 6 December 2018. FICPI attended the meeting and made a statement on the “Confidentiality of communications between clients and their patent advisors” in order to promote international harmonisation on this issue.
The meeting was opened by Mr. Dámaso Pardo, Chair of the SCP. He referred to the G20 Leaders’ declaration, which in paragraph 9 notes the importance of intellectual property rights protection.
Mr. Francis Gurry, Director General, warmly welcomed the participants. He noted the importance of the work of the SCP. There are about 3,7 million patent applications filed/year and that quality is of adamant importance. Transfer of technology is increasing. Furthermore, the increased number of patents seems to lead to more frequent litigation.
The meeting agenda included discussion topics as well as many sharing sessions (quality of patents, including opposition systems; negotiating licensing agreements on patents and health) and two half-day conferences (publicly accessible databases on patent information status and data, on medicines and vaccines; cooperation between patent offices in search and examination, including sharing of information concerning the corresponding foreign applications and grants).
The topics on (i) exceptions and limitations to patent rights, (ii) inventive step, (iii) confidentiality of communications between clients and their patent advisors, and (iv) transfer of technology, including sufficiency of disclosure, were dealt with in more traditional discussion format.
The highly interesting “confidentiality of communications” raised a debate should this topic be on the agenda of the SCP or not. Most delegations, regional groups Group B, CEBS (Central European and Baltic States), GRULAC (Latin American and Caribbean Group), Asia-Pacific Group, African Group and CACEEC (Group of Central Asian, Caucasus, and Eastern European Countries) and NGO’s considered it a very relevant topic. The SCP Secretariat had prepared a very comprehensive study on this issue (link above).
There seems to be a general understanding at this point that a legally binding international instrument would not be the right approach. The issue should rather be tackled based on a soft-law approach, i.e. guidelines, recommendations, a resolution, etc. that could serve as a model for national legislation. The cross-border, international perspective of this issue was well understood. FICPI intervened with a short statement based on its previous resolution “Confidentiality in IP Advice” from 2013. AIPPI and JIPA also gave supportive interventions.
The topic on “Quality of patents, including opposition systems was intensively discussed over more than one day. This is clearly a topic of great interest for the delegations (IP Offices). A number of offices have recently introduced various quality programs, including ISO certifications, quality manuals, and related guidelines. Furthermore, opposition systems or other corresponding administrative procedures have also been introduced, even in very small offices. APAA informed that they are carrying out a study on opposition systems within their membership. Delegations also suggested to include AI and emerging technologies on the agenda of the SCP.
During the half-day conference on the cooperation between patent offices the UKIPO gave a presentation on a bilateral PPH agreement between the UK and Brazil officially launched on 1 August 2018. The EPO noted that in 2017 about 2,7 million patent applications were filed amongst the IP5 offices, of which about 300,000 were cross-filed between at least two offices. The IP5 offices will pursue a project on IP5 PPH metrics (comprising the number of PPH requests filed, pendency to first OA, pendency to final OA, number of OA, grant rate) in order to quantify the benefits of the PPH system.
These discussions seem to have resulted in cross-adoption of patent office practices, best practices, which in their own way pave the way towards harmonisation.
Considering the large group of member states, it is clear that questions relating to patents and health, exceptions and limitations to patent rights (research exemption), and transfer of technology are seen as very important. These topics are subject to intensive discussions.
On Wednesday, 5 December 2018, the NGO’s were invited to a lunch hosted by Michael Svantner, Director, Department for Transition and Developed Countries (TDC). This mainly amounted to a small get together without any particular agenda.
The SCP will keep the above topics on the agenda and prepare additional supporting documentation for the future work of the Committee.
The 30th Session of the SCP is scheduled for 24 to 27 June 2019.
Patent devoted NGO’s!