TWN Info Service on WTO and Trade Issues (Oct09/03)
7 October 2009
Third World Network

Please find below the final update on the WIPO Assemblies.

Sangeeta Shashikant
Third World Network

South signals direction on patents, Development Agenda, enforcement
Published in SUNS #6786 Tuesday 6 October 2009

Geneva, 5 Oct (Sangeeta Shashikant) -- Developing countries, at the annual meetings of the Member States of the World Intellectual Property Organization (WIPO), sent out clear signals on the direction that issues pertaining to the reform of the Patent Cooperation Treaty, the Development Agenda, the creation of a new committee on the global Intellectual Property (IP) infrastructure and the Advisory Committee on Enforcement should or should not take.

These issues were discussed during the annual WIPO Assemblies that began on 22 September and concluded on 1 October.

With regards to the Patent Cooperation Treaty Working Group (PCT-WG), it was expressed clearly that the reform of the PCT should not be used as a back-door attempt to introduce harmonization or procedures that would affect flexibilities available nationally, and that any reform should be evidence-based, member-driven, transparent and in accordance with the principles of the Development Agenda (DA).

WIPO members also did not approve the setting up of a new Committee on Global IP Infrastructure out of concerns over the lack of information and consultations on the need for such a committee and certainty with regard to its mandate. There also appeared to be concerns that such a committee could be used for harmonization of IP systems in a manner detrimental to the interests of developing countries.

In relation to the Development Agenda, developing countries stressed on the need to agree on a mechanism for coordination, assessing, monitoring and reporting on the implementation of the DA recommendations and to ensure adequate budgetary resources for such implementation. On the issue of enforcement, several countries upheld WIPO as the main forum for discussing IP-related matters, adding that IP enforcement strategies should not be repressive. They also emphasized the need to investigate the causes of IP violations.

On the issue of the PCT-WG, the PCT Union Assembly took note of the report prepared by the Secretariat (PCT/A/40/1) that contained inter alia the Chair's summary of the last session of the WG held in May, as well as the report of that session and approved the recommendation of the PCT-WG for convening one session of the WG before the 2010 General Assembly.

At the last meeting of the WG in May, the WIPO Secretariat, developed countries and the users of the patent system (largely based in these countries) pressed for the adoption of the PCT road-map presented by the Secretariat, while several others voiced concerns over harmonization of patent application, search and examination procedures. This resulted in deferment of the consideration of the road-map outlining actions to reform the PCT.

It was also decided inter alia that work of the PCT should be informed by an in-depth study factoring in among others the background on the need to improve the functioning of the PCT system, the problems and challenges that confront the PCT system, the causes underlying the problems, possible options to address the problems, an impact assessment of the options and defining and clarifying concepts like "duplication of work" and "unnecessary action", etc. (For more details, see SUNS #6698 dated 12 May 2009.)

During discussions on the PCT, several countries stressed that PCT reform should not involve "back-door" harmonization of substantive patent law or search and examination procedures, nor affect Members' rights to apply their patentability criteria, as well as for the DA recommendations to be taken into account in discussions on the PCT's future.

Cuba said that it was necessary to undertake studies and impact assessment before proceeding further with the reform, adding that the PCT's future work should not in any way result in harmonization of the substantive patent law and must take into account Development Agenda recommendations. The PCT's reservations should be maintained, it added.

Egypt stressed the need for future work on the PCT to be done in a transparent manner, adding that the lack of transparency seen in the May meeting should be avoided in the future. It further added that the future work programme should be guided by the principles of the DA and be a member-driven process, as within the WIPO structure only Member States carry out norm-setting functions.

Indonesia said that PCT reform should not compromise the WTO-TRIPS Agreement's flexibilities.

Brazil stressed the importance of the multilateral system, adding that non-binding effects of efforts to increase efficiency should be maintained, and that PCT reform should not interfere with the national examination phase.

Sweden, on behalf of the EC, reiterated its strong support for the Secretariat's initiative on the PCT's future. It added that it agreed that the emphasis of the Working Group should be on improvements within the existing legal framework without limiting the freedom of members to prescribe, interpret and apply substantive conditions of patentability and without seeking substantive patent law harmonization or harmonization of national search and examination.

Australia and the US generally supported reform on the basis of the PCT road-map.

China said that rather than altering the existing legislative framework of the PCT, there should instead be improvements in the quality of work of the International Authorities and provision of additional support to developing countries. This work should not stand in the way of the independence of national authorities.

The Philippines acknowledged the need to improve the PCT system, but stressed the need for further studies and cost-benefit analysis. It also added that the reform process should not compromise the DA recommendations.

Another agenda item considered by the WIPO General Assembly (GA) was the report prepared by the Secretariat (WO/GA/38/10) on the Standing Committee on Information Technology (SCIT). The report contains a proposal for the SCIT to be replaced by two bodies - the Committee on WIPO Standards (CWS) and the Committee on Global IP Infrastructure (CGI) - beginning the biennium of 2010-2011. The proposal says that the Committee "should work independently and where appropriate prepare proposals and/or activity report for consideration of the WIPO GA or relevant Assemblies". The CWS would be convened once a year and the CGI would meet whenever necessary.

The proposal further adds that the mandate of the CWS "would be to continue work on the revision and development of WIPO standards relating to IP information" and would in fact do the same work as the previous Working Group on Standards (SDWG). The mandate of the CGI would be "to discuss matters concerning global intellectual property infrastructure that do not fall into the mandate of the CWS. Such matters include development of good practices, common tools and coherent approaches to various projects for strengthening international cooperation and interchange of data and information of intellectual property".

During the GA, while there was some support for establishing these committees, concerns were also raised over the lack of information and consultations surrounding the establishment of the new committees and further clarification was sought on the matter.

Venezuela expressed concern over the lack of consultations on the creation of new committees, adding that any proposal for new bodies should be based on the process of equality, be member-driven and must reflect the needs of all Member States. It also expressed the need for a clearly-defined mandate for the committees before proceeding further on the matter.

Pakistan asked from where did the recommendation to establish the committees originate from, whether the proposal had been discussed by Member States, and what would be the mandate and terms of reference of the committees. It added that there should first be discussions on what the committees should do, only then should the committees be set up. Bolivia shared the concerns raised by Venezuela and Pakistan, adding that the initiative should take into account DA, in particular, Recommendation 21 that speaks of informal, open and balanced consultations prior to any new norm-setting activities.

Egypt also sought clarification on the origins of the proposals. It referred to its Ambassador's opening statement at the WIPO Assemblies (see SUNS #6781 dated 29 September 2009), which called for institutional reform of WIPO. It said that it would like to discuss reform of WIPO together, rather than tackle different committees on a piecemeal basis.

Japan sought clarification on whether issues of international patent classification would be part of the mandate. It also sought clarification of the potential overlap of the CGI committee with the mandate of existing committees.

Argentina said that the CWS's mandate should also include follow-up of the implementation of WIPO Standards, the provision of technical advice and assistance for capacity-building, the support of IP Offices in undertaking projects regarding dissemination of IP information and the provision of IP services to Small and Medium Enterprises (SMEs).

The Director-General of WIPO, Francis Gurry, explained that the SCIT plenary has not met since 2004 because its mandate pertained to WIPONET and WIPONET had ceased to exist. Gurry also explained that CWS is nothing new, as it is the same as the Working Group on Standards and Documentation (SDWG) that existed under SCIT. He added that "So, all we are doing is to clarify that since the plenary body does not meet, so we don't call it a Working Group, since it is not a Working Group. It is just a housekeeping matter".

Gurry said that he was not talking of "norms or legal instruments". The CWS would deal with technical standards for matters such as the numbering of industrial property applications, for data exchange or for computer languages or formats.

On the CGI, Gurry said that it was a committee intended to endeavour to respond to items that were on the SCIT and that have evolved in the course of time. He reiterated that it was "merely a housekeeping proposal" and that the Secretariat was trying to clean up a situation in that there was a plenary body that has not met. He added that the proposal did not concern legal norms.

Venezuela pressed for more time to consider the proposals. Pakistan said it appreciated the Director-General's explanation that the committees do not have a norm-setting agenda but asked for further clarification as to what were the recommendations of the Working Groups of the SCIT, when the WG was scheduled to meet, how did the recommendation for the CGI emerge, and the recommendation of the Programme and Budget Committee (PBC) on the matter, since there was a request to remove it from the document at the last session of the PBC meeting.

Gurry responded by stating that the CGI was being proposed by the Secretariat (in the absence of a plenary body) to deal with matters that "[have] slipped through the net", i. e., not dealt with by other committees. These matters included questions of patent information, the policy of offices with respect to the commercial or free availability of patent information, machine assisted translation and software tools for digitization of industrial property information.

Gurry further explained that there used to be a Permanent Committee on Industrial Property Information (PCIPI), which was replaced by the SCIT. The SCIT met a few times and had two WGs, one on standards (SDWG) and another on IT (ITWG). The latter fell into destitution, although the SDWG met to produce standards. Gurry further said that WIPO was responsible for developing elements for the global IP infrastructure, wherein one of its functions is to coordinate the various initiatives so that they are compatible from a technical perspective.

In response, Pakistan proposed that while it could support the setting up of the CWS, the proposal for setting up the CGI should be discussed further in the next SDWG meeting in October and accordingly, recommendations should be made to the 2010 GA. Venezuela supported this proposal.

As there was no opposition, Argentina and Pakistan's suggestion was duly noted and it was decided that the proposal contained in WO/GA/38/10 would be amended accordingly. The decision on the creation of the CGI was deferred to the 2010 GA.

With regards to the Development Agenda (DA), the issue of ensuring adequate resources for implementing the DA and agreeing to a mechanism for coordination, assessing and monitoring the implementation of the DA activities was repeatedly raised by developing countries. Yemen, on behalf of the Asia Group, Ecuador, on behalf of GRULAC (group of Latin American and Caribbean countries), and Senegal, on behalf of the African Group, stressed on this point.

Ensuring adequate resources for the DA projects not-yet-agreed-to was a sticking point during the last PBC meeting on 14-16 September for the 2010/2011 biennium. At issue was that the CDIP meets in November 2009 and again in April 2010, but the next budgetary meeting is not until July, which means that projects agreed to in the next two CDIP meetings cannot be implemented since no budgetary resources will be allocated.

Thus, during the PBC meeting, several countries mentioned the need to ensure budgetary resources for the DA projects yet to be agreed, which Group B (composed of developed countries) objected to, claiming that such a practice was out of order, and that until projects were decided on, funding could not be decided.

However, on the insistence of developing countries, CHF 2.3 million have been earmarked for the start-up costs and immediate implementation of DA projects that will be discussed in upcoming meetings. This is in addition to the CHF 2.24 million earmarked for implementation of three thematic projects on DA recommendations 7,16, 19, 20, 23, 24, 27 and 32 agreed to by the CDIP in April 2009. This is mentioned in the footnote of the Addendum to the PBC document (A/47/3 Add).

On the coordination, assessing, monitoring and reporting mechanism, Senegal, for the African Group, said that since implementation of the DA was a "cross-cutting" issue, without coordination with other WIPO committees, it was difficult for the CDIP to operate.

[Presently, there are two proposals on the mechanism that are expected to be discussed at the CDIP meeting in November. The first proposal is by Pakistan, Algeria and Brazil, while the second proposal is by Group B. For the proposals, see meeting_id=17460]

Sweden, on behalf of the EC, said that it was difficult to support the creation of any new entity to monitor implementation of the DA. The UK said that the coordination mechanism must remain resource neutral.

Brazil said that due to the unprecedented nature and multi-faceted proposals on the DA, the implementation should be the subject of "intensive care", adding that Members had the challenge of learning by doing, making it essential that the methodology of implementation and monitoring always remains open to corrections in a spirit of "path-finding. It added that at the April session of the CDIP, there was consensus to change the methodology for implementation of the DA (referring to the "Thematic Projects" approach adopted).

It further added that the new methodology was initially met with concern by developing countries for fear that the reorganization of the recommendations on projects could jeopardize the integrity of the Agenda and that the new methodology did not allow full discussion on the individual contents of each recommendation.

It recalled that the new methodology was adopted on the understanding of "three golden rules": (i) that each recommendation will be discussed separately at a time prior to the discussions on projects and implementation activities; (ii) only recommendations that correspond to identical or similar activities will be under the same thematic group; and (iii) the implementation is structured in the form of projects and other activities, on the understanding that additional activities may be proposed.

[The thematic project approach breaks down the 45 recommendations of the Development Agenda adopted at the 2007 WIPO General Assembly into principles and actions. The recommendations identified as actions are further divided into several projects. See SUNS #6692 dated 4 May 2009.]

Brazil further added that it was also necessary to develop, as soon as possible, mechanisms for quantitative and qualitative assessment of actions already implemented, especially with regard to cultural change in WIPO. "We therefore believe that the States should deepen the discussion on ways to give greater transparency and accountability to the process of hiring consultants and technical assistance," Brazil said, stressing also the importance of realigning WIPO with the UN objectives. Brazil also asked that the budget for the DA presently reflected in the footnote of the PBC document, be reflected in the main body of the PBC document.

Pakistan initially proposed a decision paragraph (objected to by Germany for Group B) stating that "The Assembly urges CDIP to finalize its discussions on mechanism for coordination, monitoring, assessment and reporting of the Development Agenda recommendations and to report to General Assembly at its session in September 2010". It said that the rationale for the decision was that it did not want the discussion to go on forever.

The GA took note of the Secretariat's report contained in WO/GA/38/3 and agreed that the "General Assembly took note of the report and urged the CDIP to endeavour to reach agreement on coordination mechanism for monitoring, assessing and reporting on the implementation of recommendations and report to the General Assembly at its 2010 session". This decision paragraph was agreed after consultations between Germany, on behalf of Group B, and Pakistan.

[Ambassador Trevor Clarke of Barbados, who has been the Chair of the CDIP since its establishment in 2007, informed the Assembly that he is withdrawing as the Chair since he is taking up an appointment with WIPO.]

On the agenda item on the Advisory Committee on Enforcement (ACE), Ecuador, on behalf of GRULAC, stressed the importance of WIPO as the forum for discussing and developing standards, principles and procedures relating to IP. It added that combating IPR infringements can only be considered effective if it is sustainable in the long term, and thus it was necessary to take into account all dimensions, which is complex and involves consideration of the economic and social order.

It added that to promote respect for IP, the strategies employed should go beyond repressive strategies. It further said that in future, the ACE should seek to identify elements that give rise to violations of the rights in this area and deliver experiences on the ways in which these elements can be addressed in practice in a balanced way, in order to promote sustainable respect for IP. It also stressed that future discussions on enforcement should be based on Recommendation 45 of the DA.

Sweden, on behalf of the EC, requested WIPO to step up its activities, in particular, technical assistance in the area of IP enforcement. The US stressed on contributions of and costs to right-holders/private sector in enforcement.

Egypt recalled that at the last session of the PBC, there was agreement that an item on the Global Congress on Combating Counterfeiting and Piracy would be included in the agenda of the ACE, which will be meeting in November. It asked for that agreement to be reflected in the GA report.

The General Assembly took note of the Secretariat's report WO/GA/38/4 and approved Egypt's suggestion. +