<nettime> BIO-IPR: WIPO moves toward "world" patent system

[Soenke Zehle <soenke.zehle@web.de>]

The WIPO "strategic blueprint" for an international patent system is the
latest in what is beginning to look like an almost unstoppable
development. Soenke

----------
From: GRAIN Los Banos <grain@baylink.mozcom.com>

WIPO MOVES TOWARD "WORLD" PATENT SYSTEM

GRAIN
July 2002

For quite some time, people have wondered about the possibility of having
one patent system for the whole world. In other words, one bureau issuing
"world patents" which are automatically valid in all countries. Such a
system would replace the current situation where each country has its own
laws, own patent office and own courts -- all of which have to be dealt
with separately if you want your patent to have effect in more than one
country. A unified world patent system has always seemed a very far off
idea, an Orwellian mixture of dream (e.g. for global corporations, which
get a "one-stop shop" to deal with) and nightmare (e.g. for local patent
lawyers, who lose their jobs). In reality, the frame of such a system is
starting to emerge.

Around the turn of this century, the World Intellectual Property
Organisation (WIPO), a United Nations body mandated to promote
intellectual property rights, started putting the pieces into place. The
new system would take some time to complete, if indeed it pushes through,
but it would totally revolutionise intellectual property systems as we
know them today.


1.  THE BUILDING BLOCKS

WIPO is currently working on three primary building blocks for a new world
patent system.

1.1 A uniform set of procedures

The first component was actually put into place in June 2000, when the
WIPO member states adopted the Patent Law Treaty (PLT). This treaty
harmonises the formalities that patent offices undertake to administer
patent applications. It defines one set of rules on how to prepare, file
and manage patents in all the countries that sign on. The PLT is not in
force yet, because 40 governments have not yet ratified it.

One of the controversies in the negotiation of the PLT was whether or not
disclosure of the country of origin of genetic material or traditional
knowledge, and proof of prior informed consent in their acquisition, would
be required. These issues were brought into the discussion by developing
countries, which are searching for means to implement the Convention on
Biological Diversity (CBD) in the context of patent law.[1] Developed
countries and industry defy most attempts to see this happen. They say
that the CBD provisions should not be construed as criteria for
patentability and would be an administrative burden. In the context of the
PLT negotiations, the industrialised countries rejected such proposals,
arguing that they pertain to the substance of patent law, not procedure.

1.2 A single international search tool

The second building block is being pursued at present through the reform
of the Patent Cooperation Treaty (PCT). The PCT was originally adopted in
1970. It provides a common facility to conduct international searches of
prior art for patent applications. Today, all patents in the world are
national documents granted under national rules and procedures.[2] The PCT
allows patentees to shortcut some of that process, if they wish to seek
protection internationally, by allowing for preliminary examination of the
application.[3] (An invention must fulfill three criteria to be
patentable: novelty, inventive step/non-obviousness and utility/industrial
application. These are tested against a review of already existing
inventions.) If the application holds up as valid, the inventor proceeds
with national filing. The countries in which the application is filed may
evaluate the patent independently or accept the findings of WIPO's
examiners -- it's up to them.

This process gives great advantage to patentees because it establishes the
priority of an application at the international level. It means that a
patent application becomes "claimed territory" before filing at the
national level. It also gives applicants a generous amount of time to
assess the market potential of their patent in the different countries,
and to rethink their strategy before proceeding with national filing.
Significantly, the PCT is an important source of revenue for WIPO, which
conducts the search and examination work on a user-fee basis.

The PCT is being reformed at the moment, ostensibly to streamline the
process and make it a lot simpler. However, the reform process is an
opening for the PCT to adjust to new policy objectives and needs of WIPO's
overall harmonisation agenda. One of those is likely to be the
incorporation of a database of traditional knowledge for international
searches.[4] A more speculative question is whether a revised PCT would
extend WIPO's powers to the full examination and grant of "world" patents.

1.3 A uniform patent law

Once the PLT was adopted in 2000, the WIPO member states agreed to move on
to harmonisation of the basic rules of patenting. This will be achieved
through the Substantive Patent Law Treaty (SPLT). A first attempt to
harmonise substantive patent law floundered ten years ago because the US
refused to give up the "first-to-invent" principle in determining who has
the right to a patent. (Most of the rest of the world uses a
"first-to-file" rule.) But the US has now indicated that it is ready to
give up its cherished principle if the rest of the harmonisation
negotiations are promising.

The SPLT is a serious concern, and could make the World Trade
Organisation's Trade-Related Intellectual Property Rights (TRIPS)
Agreement obsolete. TRIPS "only" spells out the minimum required elements
of national patent laws. SPLT, by contrast, will spell out the top and the
bottom line. It is a fixed set of rules on what can be patented and under
what conditions: the political substance of a potential world patent
system. A first draft of the treaty was tabled by WIPO in November 2001
and a revised one in May 2002. It is important to be aware that there are
vested interests at play here: the bulk of WIPO's finances comes from
corporations using the PCT system. Building up a central role for WIPO in
administering intellectual property rights could be a key to the
institution's future financial sustainability.

A few other elements are also at play in the current patent harmonisation
process. For example, there is talk of revising the Budapest Treaty on the
Deposit of Microorganisms for the purpose of patent protection. According
to WIPO, there is a need to expand this treaty to the registration of DNA
sequences in a central database. This would surely boost gene patenting
worldwide. TRIPS makes no reference to the Budapest Treaty, but the United
States and Europe both push accession to this registration system through
their bilateral trade agreements with developing countries.

What is shaping up, slowly, is a single patent law (SPLT) relying on
agreed procedures (PLT, Budapest) which could be administered by WIPO
(PCT). An important unknown in this configuration is which court or courts
would handle disputes (e.g. infringement) and other post-grant formalities
(e.g. nullification or revocation of patents).


2.  CORE CONTROVERSIES IN THE SPLT

The SPLT is in the first stages of drafting and negotiation. The committee
drafting it is presently focusing on criteria for patentability and other
issues that lead to the grant of a patent. The most contentious matters at
this stage include the following.

2.1 The "technology" factor

The TRIPS Agreement, like the European Patent Convention, states that
patents shall be available for inventions "in all fields of technology".
Will the SPLT retain this condition or not? This question hits an
important point of discord between the US and Europe. In the US, business
methods[5] are patentable. But in Europe they are not, because they are
not considered to represent "technical progress". None of this prevents
the US from issuing patents on business methods. But the Americans want
recognition of such patents beyond their own territory, in order to expand
their commercial opportunities. What was not achieved in TRIPS, the US
would like to secure through WIPO's SPLT by avoiding reference to "all
fields of technology." The US has even stated that it will leave the
negotiations if this matter is not settled in its favour. The EU, along
with the European Patent Office and Brazil, are holding out against this.

2.2 Exclusions from patentability

Patent laws usually indicate what is considered an invention and what is
considered patentable. They also usually state what is excluded from
patentability as a matter of policy. TRIPS, for example, says that members
may stop patents from being granted if commercialisation of the invention
would offend morality or public order. TRIPS also allows countries to
exclude plants and animals from patentability as a matter of principle.

The SPLT was drafted with no real proposal on this matter. All WIPO did
was suggest, in a footnote somewhere, that countries may wish to
incorporate the provisions of TRIPS Articles 27.3 and 3 or make some kind
of reference to them (without saying what that reference might be). The US
position is that there should be no exclusions to patentability in the
SPLT. They are supported on this by the corporate representatives in the
back of the room, such as the Biotechnology Industry Organisation. Europe
and the developing countries, on the other hand, are arguing to at least
retain the exclusions offered in TRIPS.

2.3 No further conditions allowed

As presently drafted, countries which sign the treaty will not be allowed
to make any further demands on patent applicants than those found in the
treaty. This has become a major battlefield between the industrialised and
developing countries around the table. Brazil, the Dominican Republic and
Peru, among others, are adamant that disclosure of country of origin of
genetic materials, and proof of prior informed consent in their
acquisition, must be enforced. As mentioned earlier, the whole question is
whether or not international patent law -- including such a "world" patent
law -- will allow developing countries to secure financial benefits from
access to genetic resources as prescribed by the CBD. The developed
countries vainly insist that implementing the CBD should be dealt with
under the CBD, not under the SPLT.


3.  WHAT IS AT STAKE?

The setting up of a world patent system has huge implications. It means
the end of patent policy as a tool for national development strategies. It
is also likely to overtake TRIPS, both in form and in substance. Any
deviation from its rules would be subject to some kind of sanction: it
would be the final word.

The negotiation of the SPLT is largely a debate between the US and Europe.
The first draft of the treaty singularly reflected US patent law and the
US has made it clear that it is willing to go as far as it can to secure
the adoption of this new law. The Americans' big negotiable is the
first-to-invent principle, and the related matter of grace period. Their
big non-negotiables appear to be business methods and biotechnology.
Europe is so far defending the status quo of TRIPS, with Japan following
its line. The developing countries are hardly in the discussion at all,
with a few exceptions led by Brazil. In the words of one developing
country negotiator:

"The ones harmonising are the US and Europe. We developing countries would
be fine if things stayed the way they presently are. But if they make a
harmonised patent law, there is no way that they can avoid the need to be
coherent and respect the sovereign rights of states over biodiversity.
This means that they must include provisions to require proof that genetic
resources were not acquired illicitly. And this must be accomplished
through disclosure of country of origin of genetic resources and proof of
prior informed consent as conditions for patent grant."

While the disclosure issue is clearly an important fight for developing
countries, this position suggests a defeatist attitude towards patents on
life. For it presumes that the SPLT -- and developing countries
participating in the negotiations -- will cede to the "no exclusions to
what is patentable" approach of the United States. TRIPS leaves it to each
country to decide, as far as plants and animals are concerned.

If the SPLT moves forward on its present course, it is bound to run into
the waters of the WTO and its TRIPS Agreement. Whether the two can
co-exist or will conflict is a huge question mark. We may even see critics
turn around and defend TRIPS, as it may suddenly appear a lesser threat
compared to what WIPO comes up with. The SPLT will also run into the
waters of another corner of WIPO itself: the Intergovernmental Committee
on Genetic Resources, Traditional Knowledge and Folklore. It is not known
if SPLT will act upon this Committee's considerations and eventual
agreements or not.[6] Further still, it is unknown whether WIPO's overall
trajectory toward patent harmonisation will cross paths with the potential
outcome of the Hague Convention negotiations on jurisdiction of court
decisions.[7]

All of these issues -- and many more -- make the road to a uniform world
patent system fraught with dangers and unknowns. The conflicting interests
of the parties involved will make it a torturous process. But there is no
doubt that what appeared until recently as something of a pipe dream is
starting to take on real proportions. Unfortunately, not many people may
be aware of what is going on.


NOTES:

[1] The CBD is a legally binding international treaty which came into
force in 1993. It says that genetic resources are national sovereignty,
making access to them subject to several conditions. One is that countries
should grant access to biological material through prior informed consent.
(CBD parties have the liberty to decide whose consent -- that of
communities where the material is collected, or that of the government.)
Another is that access must give rise to benefit-sharing. Given these
rules, patents on genetic material can only be consistent with the CBD if
the resources were acquired with national approval. That is why developing
countries demand that country of origin and proof of prior informed
consent -- which together are known as "disclosure" issues -- be indicated
in patent applications related to genetic resources. This extends to
traditional knowledge in so far as genetic resources incorporate such
knowledge and/or such knowledge is collected along with the genetic
material and forms part of the background to a patentable invention.

[2] Sometimes countries form cooperative arrangements to issue patents
among themselves (African Regional Industrial Property Office, etc.).

[3] A PCT application is published as a "WO" (for WIPO) document. They are
not actual patents, but they do establish some level of "patentability" of
inventions, facilitating the overall process of applying for a patent. See
http://www.wipo.org/pct/en/.

[4] This is being further facilitated through a revision of the
International Patent Classification (IPC) system underway in another
division of WIPO. The IPC is an international set of codes for
categorising patents, e.g. mechanical, chemical, and so on.

[5] There is no one definition of "business methods" in the patent world.
But it generally refers to activities such as buying and selling,
marketing techniques, financial schemes and strategies. Business method
patents relate predominantly to the Internet and its applications, such as
electronic commerce.

[6] At the Committee's meeting last month, Venezuela, the Dominican
Republic and Egypt demanded an "objective report" from the WIPO
Secretariat on the negotiations of the SPLT and their implications for the
Committee's work.

[7] This treaty aims to de-territorialise court decisions among its
signatories, so that judgments reached in one country will automatically
be valid in the others. Up to now, the draft explicitly covered
intellectual property rights. After extended controversy, the treaty has
been sent back to the drafting table, so it is currently unknown whether
the new proposal, due next year, will apply to patents. For further
information, see http://www.hcch.net/e/workprog/jdgm.html and
http://www.cptech.org/ecom/jurisdiction/hague.html.

___________________________

GOING FURTHER:

WIPO, "Progress on Discussions to Harmonize Patent Law", Update 164/2002,
Geneva, 14 May 2002:
http://www.wipo.int/pressroom/en/updates/2002/upd164.htm

Working documents of WIPO's Standing Committee on the Law of Patents, the
body negotiating the SPLT: http://www.wipo.int/ipl/en/ipl-01.htm#P33_4559

WIPO's Patent Agenda, a consultation process to define a "strategic
blueprint" for the international patent system:
http://patentagenda.wipo.int/




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