Report on 12th Session of WIPO
SCP
APAA Patents Committee meeting, Oct. 19, 2008, Singapore
Casey An
1. SCP
► Standing Committee on the Law of Patents
► Created in 1998
► Forum to discuss issues, facilitate coordination, and provide guidance
concerning the progressive international development of patent laws
2. Discussions on int’l harmonization of patent laws at WIPO
1983
1990
1991
1995
1998
SCP 2
SCP 3
SCP 4
SCP 5
creation of Committee of Experts on the Harmonization of Certain
Provisions in Patent Laws
SG submits The Basic Proposal for the Treaty and Regulations
Diplomatic Conference at the Hague – fail
Committee of Experts meeting resumes
creation of SCP, discussions continue at SCP 1
(1999)
agreed on PLT (Jun. 2000)
discussed issues for SPLT (Nov. 2000)
discussed on draft SPLT prepared by IB (May 2001)
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SCP 6
(Nov. 2001)
SCP 7
SCP 8
GR, TK issues emerged on the table of issues – lack of consensus
between developed and developing countries (May 2002)
(Nov. 2002)
SCP 9
(2003)
SCP 10 Reduced package - Developed countries suggested to discuss
four issues in priority, i.e. prior art, grace period, novelty, and
inventive step.
Developing countries suggested that all issues should be
discussed in its entirety because they are interdependent and
equally important (2004)
SCP 11 Failed to reach a consensus concerning future work program (2005)
... (deadlock)
2006
Open Forum, Informal Meeting
2007
GA decided to convene SCP meeting in 2008 and ordered
Secretariat to prepare a report to SCP for the meeting
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“Report on the International Patent System”
Prepared by Secretariat as a working document for SCP 12
“It contextualizes existing situations of the international patent system, and
attempts to cover the different needs and interests of all Member States.”
I. Introduction: Scope of the Document and Sources of Data
II. Economic Rationale for Patents and Different Interests and Needs
in the International Patent System
III. Technology Disclosure through the Patent System
IV. Technology Diffusion and the Patent System
V. The Current Multilateral Framework
VI. Patent System and Existing Forms of Cooperation
VII. Support Structures for the Patent System
VIII. Perceived Threats to the Effectiveness of Patents as Incentives to
Innovation
IX. The Innovation in the Context of Public Policy Objectives
X. Development Related Concerns
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SCP 12
•
•
June 23 – 26, 2008, Geneva (WIPO)
APAA was represented by Kay Konish (Japan) and Casey An (Korea)
Summary
•
“Report on the International Patent System” prepared by Secretariat
was on table. See http://www.wipo.int/edocs/mdocs/scp/en/scp_12/scp_12_3.pdf
•
SCP indentified a non-exhaustive list of 18 issues for further elaboration
and discussions in the future
•
Secretariat will establish preliminary studies on the following four issues for
next SCP meeting:
1. Dissemination of patent information (including, inter alia, the
establishment of a database on search and examination reports)
2. Exception from patentable subject matter and limitations to the
rights, inter alia, research exemption and compulsory licenses
3. Patents and standards
4. Client-attorney privilege
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18 Issues identified in SCP 12
I.
II.
III.
IV.
V.
VI.
VII.
VIII.
IX.
X.
XI.
XII.
XIII.
XIV.
XV.
XVI.
Economic impact of the patent system
Transfer of technology
Competition policy and anti-competitive practices
Dissemination of patent information (including the registration of licenses)  issue 1-1
Standards and patents  issue 3
Alternative models for innovation
Harmonization of basic notions of substantive patentability requirements
(e.g. prior art, novelty, inventive step, industrial applicability, disclosure)
Disclosure of inventions
Database on search and examination reports  issue 1-2
Opposition system
Exceptions from patentable subject matter  issue 2-1
Limitations to the rights  issue 2-2
Research exemption
Compulsory licenses
Client-attorney privilege  issue 4
Patents and health (including exhaustion, the Doha Declaration and other WTO
instruments, patent landscaping)
XVII. Relationship between the patent system and the CBD (Genetic resources/Traditional
knowledge/disclosure of origin)
XVIII. Relation of patents with other public policy issues
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Global harmonization?

developed countries ≈ proponents for harmonization
Harmonization
• will reduce costs for obtaining patents
• will reduce workloads of Patent Offices
• will improve quality of patents
 developing countries ≈ opponents for harmonization
Harmonization
• may deprive governments of policy flexibilities for developments
• would establish more stringent international standards that may
have a serious impact in fields of public interests such as public
health
• should include issues such as technology transfer, anticompetitive
measures, genetic resources, and the like
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Observations
1. Consensus on global harmonization was hardly seen at SCP 12
Brazil: … the Delegation favored an open and inclusive approach,
which did not attempt upfront to produce specific negotiating com
mitments with respect to any kind of treaties…
2. Next SCP meetings would identify the differences among the
Member countries in the positions toward the patent system
3. After that, Members may reach a consensus as to whether/why
/how they should move forward on harmonization
4. In 2009, a conference on issues relating to the implications of pat
ents on certain areas of public policy such as health, the environ
ment, climate change or food security will be held.
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Thank you!
Casey Kook-Chan An
Kim & Chang ,Seoul, Korea
Telephone: + 82-2-3703-1207
E-Mail: [email protected]
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