08th July, 2019
The 30th Session of the Standing Committee on Patent Law (SCP) was held in Geneva on 24 to 27 June 2019. FICPI attended the meeting and made a statement on the “Confidentiality of communications between clients and their patent advisors” supporting a sharing session on this topic suggested for the 31st Session of the SCP scheduled for 2 to 5 December 2019. Kim Finnilä attended the whole meeting supported in part by Jerome Collin.
The session was opened by Mr. Francis Gurry, Director General, who welcomed the participants. He emphasized that SCP is an important instrument paving the way towards harmonization. A large number of exceptions and limitations have been dealt with, experiences relating to access to medicines have been shared, and transfer of technology is being studied in depth. He closed by stating that confidentiality of communications between clients and their patent advisors is extremely important due e.g. to the internationalization of patents and increased litigation. He hoped that those who are opposed in developing this matter would carefully review it and join the others in supporting future work on the issue.
Ms. Sarah Whitehead (UK) was elected Chair and Mr. Alfred Yip (SG) and Ms. Grace Issahaque (GH) were elected Vice Chairs of the committee for one year.
The agenda covered the five main topics discussed by the committee: (i) exceptions and limitations to patent rights; (Ii) quality of patents, including opposition systems; (iii) patents and health; (iv) transfer of technology; and (v) confidentiality of communications between clients and their patent advisors.
Topic (i) included discussions particularly on compulsory licenses based on SCP/30/3. Both the Paris Convention and the TRIPS Agreement include provisions on compulsory licensing. The debate focused on the role of compulsory licenses as a tool to access patented inventions and the importance of considering a balanced approach between right holders and third parties, also in view of public policy objectives, which are often influenced by factors outside the patent regime. A draft reference document will be prepared for SCP/31. The Secretariat will also prepare a reference document on prior use for SCP/32 to be held in June 2020.
During the second topic (ii), it was a pleasure to note the increased interventions and presentations relating to the introducing or improving opposition procedures. FICPI has promoted this during previous sessions. A second theme growing in importance, discussed in SCP/30/5, is AI as deployed in office procedures and in AI related inventions. The SCP Secretariat will organize a sharing session on AI at SCP/31 and SCP/32. The Secretariat had also prepared a document SCP/30/4 on inventive step in the chemical sector for this session.
In patents and health the committee engaged in a half-day sharing session on capacity building activities relating to negotiating license agreements SCP/30/6. This also included a number of very interesting presentations given by e.g. AUTM, LESI, FORTEC, IEEPI, WIPO Academy, WHO, WTO and UNCTAD, all available on the meeting site 30th Session, under “other related documentation”.
Transfer of technology mainly focused on patent law provisions contributing to the transfer of technology. The Secretariat will continue to compile additional information on this topic and hold a sharing session at SCP/32, also including sufficiency of disclosure.
On Wednesday afternoon there was a lively discussion on confidentiality of communications between clients and their patent advisors. A fresh compilation can be found in SCP/30/7. We discussed this issue and its importance in great detail, as also emphasized by Mr. Francis Gurry, with a number of delegations. This resulted in very concrete proposals on future work, e.g. a sharing session including practitioners at SCP/31, from many delegations. As an NGO, we (FICPI) made an intervention promoting this topic, joined by e.g. AIPPI, epi, ICC, JPAA.
The topic now seems firmly anchored on the agenda of the SCP promising continued in-depth work on the subject.
On Wednesday, 26 June 2019, FICPI enjoyed an evening with colleagues from AIPPI, APAA, ASIPI, BusinessEurope, epi, ICC, JIPA and JPAA in a relaxed atmosphere. The future in-depth work of the SCP on the topic of confidentiality of communications was welcome for all of us.
On Thursday, after negotiations between the delegations, the committee decided its future work, delegations made general comments and the Chair thanked the committee and closed the session.
The 31st Session of the SCP is scheduled for 2 to 5 December 2019.
 Madame Chair, dear Secretariat, dear Delegations,
FICPI, the International Federation of Intellectual Property Attorneys founded in 1906, is representative of IP attorneys in private practice in over 80 countries and regions on six continents. Our experience is that the privileged communication of IP advice between a client and its Intellectual Property Advisors is of utmost importance in order to provide honest and open communication regarding such advice.
Persons need to be able to obtain comprehensive and frank advice in confidence on the acquisition and enforcement of IPRs from IP advisors nationally and transnationally. Therefor communications to and from such advisors need to be confidential to those advised AND protected from forcible disclosure to third parties (privileged). The economy of today is increasingly globalized whereby cross-border recognition of privileged advice is crucial.
This would also improve the equality of access to IP systems and to IP advice on an international level.
This is certainly also very important e.g. for e.g. SME’s which may have a lesser in-depth understanding of the IP system and who may be dependent on only a very limited number of IPRs in their business, which often is conducted on an international level.
FICPI would certainly be pleased to provide expertise and to share practices and examples for any sharing sessions in order to clarify the context and importance of the client-attorney privilege issue and thus fully supports the proposals presented particularly by Canada and Switzerland, as well as Group B and the EU.