Report on 12 th Session of WIPO SCP Casey An APAA Patents Committee meeting, Oct. 19, 2008, Singapore

2 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 creation of Committee of Experts on the Harmonization of Certain Provisions in Patent Laws 1990 SG submits The Basic Proposal for the Treaty and Regulations 1991 Diplomatic Conference at the Hague – fail 1995 Committee of Experts meeting resumes 1998 creation of SCP, discussions continue at SCP 1 SCP 2 (1999) SCP 3 agreed on PLT (Jun. 2000) SCP 4 discussed issues for SPLT (Nov. 2000) SCP 5 discussed on draft SPLT prepared by IB (May 2001)

3 SCP 6 (Nov. 2001) SCP 7 GR, TK issues emerged on the table of issues – lack of consensus between developed and developing countries (May 2002) SCP 8 (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

4 “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

5 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 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

6 18 Issues identified in SCP 12 I. Economic impact of the patent system II. Transfer of technology III. Competition policy and anti-competitive practices IV. Dissemination of patent information (including the registration of licenses)  issue 1-1 V. Standards and patents  issue 3 VI. Alternative models for innovation VII. Harmonization of basic notions of substantive patentability requirements (e.g. prior art, novelty, inventive step, industrial applicability, disclosure) VIII. Disclosure of inventions IX. Database on search and examination reports  issue 1-2 X. Opposition system XI. Exceptions from patentable subject matter  issue 2-1 XII. Limitations to the rights  issue 2-2 XIII. Research exemption XIV. Compulsory licenses XV. Client-attorney privilege  issue 4 XVI. 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

7 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

8 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.

9 Casey Kook-Chan An Kim & Chang,Seoul, Korea Telephone: Thank you!