[Nettime-bold] 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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