Fwd: IP-Watch on Feb 3-4 USPTO meeting on patent harmonization

[Seth Johnson <seth.johnson@RealMeasures.dyndns.org>]

-------- Original Message --------
Subject: [Random-bits] IP-Watch on Feb 3-4 USPTO meeting on
patent harmonization
Date: Sat, 12 Feb 2005 10:34:46 -0500
From: James Love <james.love@cptech.org>
To: Random-Bits <random-bits@lists.essential.org>

*  U.S. industry leaders also were positive about the outcome.
Herb Wamsley, executive director of the Washington-based
Intellectual Property Organization, said in an interview the
results were "encouraging" since countries have agreed to begin
discussing the "trilateral first package" proposal. His group
strongly supports patent harmonisation, and sponsored a reception
for delegates on the first night of meeting.

*  Mike Kirk, executive director of the American Intellectual
Property Law Association (AIPLA), said in an interview, "If WIPO
does not find some way to move forward, they're going to be
marginalised." A former U.S. official and "long-time supporter of
WIPO," he added, "The WIPO process has been stalemated and has
come to a screeching halt because of developing countries
throwing sand in the gears. . . We are coming to a situation – in
the coming years – where WIPO is going to have to confront
whether it can continue to be an effective institution," Kirk
said. "If not, I expect we will see an effort to work in parallel
or totally outside" the organisation.

*  The Pending Storm At WIPO - Things may come to a head sooner
than later if the two sides remain so far apart. In response to
the suggestion that the developed countries might be trying to
expand support for their effort, the developing country official
said it is likely to "backfire" because: "If developing countries
get the sense that an attempt is being made to ‘gang up' on them,
they will be tempted to revive the G-77 (a group of more than 100
developing countries that coordinates on positions) in WIPO.
Today, WIPO is the only UN forum in Geneva where the G-77 is not
active – it has been dormant since the late 1980s."

*  The official said the patent law treaty as proposed by the
United States, Japan and other countries, would undermine that
flexibility, which, as it is referred to in the Doha Declaration,
is understood to cover both "pre-grant" (the application of
novelty and inventive step criteria in the examination of patent
applications), and "post-grant" flexibility (which involves
compulsory licensing).


http://www.ip-watch.org/weblog/index.php?p=18&res=1024_ff

2  Feb 2005
Wealthy Nations Move Ahead With Patent Harmonisation

by William New  - 4:03 am

Washington, D.C.- The nations responsible for the majority of the
world's patent filings have agreed to move ahead with private
negotiations to iron out differences in their patent regimes. The
talks will take place outside the Geneva-based World Intellectual
Property Organisation, where negotiations by the full body on
patent harmonisation are stalled.

The effort led by the United States to move the debate outside
WIPO has raised alarm for some developing nations who fear the
meetings are intended to pressure them and WIPO to trim
development objectives from the negotiations.

But participants afterward sought to put a positive spin on the
meeting, downplaying suggestions that it represented a threat to
developing countries and WIPO, and arguing that it would
ultimately contribute to the WIPO process. The U.S. Patent and
Trademark Office (USPTO), which organised and hosted the meeting
in Washington last Thursday and Friday, directly countered the
suggestion of a threat.

"The allegation that the exploratory meeting is meant as a threat
to WIPO and to developing counties is simply not true," a USPTO
spokeswoman said this week. "Other WIPO Groups, such as the Latin
American group, Asian group, African group, meet regularly to
coordinate positions. The exploratory meeting was just that - a
meeting of Group B [developed] countries to discuss how to best
make progress on issues in WIPO."

But some developing country officials remain skeptical, and are
now eyeing a Feb. 16-17 WIPO informal consultation in Casablanca,
Morocco on a way forward on the substantive law treaty. Developed
countries are thought to be disproportionately represented at the
consultation, which was by invitation. Few sponsors of the
Development Agenda are on the list, but WIPO Director-General
Kamil Idris is expected to be there, a Geneva diplomat said.

The invite-only meeting in Washington was billed as an
"exploratory" gathering of developed nations to see if consensus
could be found to work alongside WIPO to harmonise patent
regimes. The USPTO said its director Jon Dudas led a "successful"
effort to establish an "effective work plan for achieving
progress on the substantive patent law harmonisation."

Consensus For A New Work Plan
The group agreed to consider a "trilateral" [United States,
Japan, Europe] proposal put forward last fall to create a new
work plan on the issue. That proposal said the subject has been
debated mostly ineffectively for 20 years, and that the current
approach is "not workable," with the draft treaty bogged down by
political issues that lead to "protracted debate." The proposal
called for beginning with issues on which consensus might be
obtainable, focused on aspects of determining "prior art" in
patent applications. It also stressed that gains in these areas
would benefit all countries.

No substantive harmonisation issues were discussed at last week's
Washington gathering, which was "solely an initial organising
meeting," according to the USPTO spokeswoman. Differences in
patent regimes to be addressed later include the United States'
system of patenting based on "first to invent" versus the rest of
the world's method of "first to file," and the length of the
grace period given to inventors before making inventions public,
according to industry sources.

Unanimous support was given last week to the resulting statement
of intent to hold future meetings with a view toward re-starting
the WIPO talks. Twenty-two countries participated in the meeting,
including Australia, Canada, Europe, Japan, and the United
States, plus the European Patent Office and European Commission.
No representatives from WIPO were at the meeting.

Participants agreed to hold meetings of two working groups, one
on substantive patent law harmonisation – chaired by Australia –
and the other on development issues, covering proposals at WIPO
on development and on genetic resources – chaired jointly by the
Netherlands and the United Kingdom. The chairs volunteered and
were not opposed, one participant said.

The full group will meet again in June, presumably just prior to
the next WIPO meetings on the subject. Subgroup meetings will be
held between March and May, with anyone from the full group is
invited to participate in the subgroup meetings, the chairs said.

The UK has won some trust from developing nations as showing
interest in their concerns, although "how far their commitment
actually extends … has yet to be seen," a developing country
official said. UK officials will attend WIPO meetings with
developing countries to identify issues where progress can be
made to the benefit of both developed and developing countries,
sources said. The UK Patent Office will invite Washington meeting
attendees to a meeting at the end of March at which "aims and
parameters" of the subgroup will be set, an office spokeswoman
said.

Nations also decided to discuss a proposal led by Argentina and
Brazil for a WIPO Development Agenda which was adopted at WIPO's
General Assembly last fall, along with other proposals to be made
by WIPO Member States in meetings between now and the September
2005 WIPO General Assembly meeting, the spokeswoman said. The
final statement said the group would discuss development issues
"with a view to seeking a common basis for further discussions in
WIPO."

Suspicions About Process Remain
Developing countries have received news cautiously that
development issues are to be addressed in subgroups by the
wealthy nations. "By referring to the issues in the statement of
intent, they are probably merely acknowledging that development
and biodiversity concerns have become issues that have to be
"handled" somehow, because they are now seen (by the developed
countries) as disruptive to the negotiations on the SPLT and,
more generally, work under the so-called Patent Agenda (which was
never endorsed by the entire membership of WIPO)," one uninvited
official said. "'Handling', in this case, does not mean genuinely
engaging in the debate and trying to find common ground."

But a Canadian participant insisted the decision to discuss the
development agenda was a positive gesture of inclusion for
developing countries. "The message we want to send is that we are
willing to be engaged and discuss development issues," the
Canadian official said. "The intent is to keep the process
transparent, and keep all countries [including those not invited
to the meetings] engaged." He called the meetings "the opposite"
of threatening, adding, "It's all intended to feed into the WIPO
process."

U.S. industry leaders also were positive about the outcome. Herb
Wamsley, executive director of the Washington-based Intellectual
Property Organization, said in an interview the results were
"encouraging" since countries have agreed to begin discussing the
"trilateral first package" proposal. His group strongly supports
patent harmonisation, and sponsored a reception for delegates on
the first night of meeting.

"This is a breath of fresh air in the harmonisation talks," as
developed countries will be able to discuss issues "in a forum
where they will not be distracted by developing countries."
Substantive patent law treaty meetings in recent years have been
dominated by the number of countries involved and the length of
their statements, he added. Wamsley insisted that developing
countries have "nothing to lose" by this process moving forward
outside WIPO.

Suspicion remains high among developing countries that the
wealthy nations may be moving toward their own patent law treaty.
Wamsley said the three largest patent offices – the United
States, Japan and Europe – have held annual technical meetings
but that last fall moved them into a harmonisation discussion
that would require a treaty to change statutes. He also said last
week's meeting was the first time in many years that a large
group of developed countries have met outside WIPO. But that can
be good, he said, noting, "This new approach has reduced the
number of cooks in the kitchen."

In addition, while officials denied any threat to WIPO's
secretariat from the extra-curricular negotiations, some industry
sources signalled pressure for WIPO to dislodge the patent treaty
talks by reining in developing countries.

Mike Kirk, executive director of the American Intellectual
Property Law Association (AIPLA), said in an interview, "If WIPO
does not find some way to move forward, they're going to be
marginalised." A former U.S. official and "long-time supporter of
WIPO," he added, "The WIPO process has been stalemated and has
come to a screeching halt because of developing countries
throwing sand in the gears."

"We are coming to a situation – in the coming years – where WIPO
is going to have to confront whether it can continue to be an
effective institution," Kirk said. "If not, I expect we will see
an effort to work in parallel or totally outside" the
organisation.

Kirk also said the Washington meeting was not unusual, and that
developing countries have held numerous meetings at which
developed countries are not welcome.

The Pending Storm At WIPO
Things may come to a head sooner than later if the two sides
remain so far apart. In response to the suggestion that the
developed countries might be trying to expand support for their
effort, the developing country official said it is likely to
"backfire" because: "If developing countries get the sense that
an attempt is being made to ‘gang up' on them, they will be
tempted to revive the G-77 (a group of more than 100 developing
countries that coordinates on positions) in WIPO. Today, WIPO is
the only UN forum in Geneva where the G-77 is not active – it has
been dormant since the late 1980s."

Perhaps at the center of the debate are the larger developing
countries, such as China and India, with lucrative markets
vigorously sought after by developed countries.

Many developing countries view efforts to negotiate a substantive
patent law treaty as an attempt by developed countries to "export
their patent systems to other parts of the world," one developing
country official said. They also fear it would undermine the
flexibility countries have under the World Trade Organisation
Agreement on Trade-Related Aspects of Intellectual Property
Rights to pursue their own policy goals, the official said,
adding that that flexibility is reaffirmed by the Doha
Declaration on TRIPs and public health.

The official said the patent law treaty as proposed by the United
States, Japan and other countries, would undermine that
flexibility, which, as it is referred to in the Doha Declaration,
is understood to cover both "pre-grant" (the application of
novelty and inventive step criteria in the examination of patent
applications), and "post-grant" flexibility (which involves
compulsory licensing).

The full list of participants at the Washington meeting included:
Australia, Belgium, Canada, Czech Republic, Denmark, European
Commission, European Patent Office, France, Germany, Hungary,
Ireland, Italy, Japan, Lithuania, Luxembourg, Netherlands,
Portugal, Romania, Slovak Republic, Spain, Sweden, Switzerland,
United Kingdom, and the United States.

——
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