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Info Service on Intellectual Property Issues (Nov24/01) WIPO: Patent law committee finalises future work program Geneva, 14 November (Sreenath Namboodiri*) – The Standing Committee on the Law of Patents (SCP) has outlined a comprehensive agenda for its upcoming 37th session in November 2025, focusing on emerging issues such as artificial intelligence (AI) in patenting, access to medicine, and technology transfer. The future work was finalised on the last day of the 36th session of the SCP, which was held from 14 to 18 October 2024 at the headquarters of the World Intellectual Property Organization (WIPO) in Geneva. Quality of Patents; AI as an “inventor”? Reflecting the increased intersection of artificial intelligence (AI) and intellectual property, the SCP’s future work will examine AI’s role both as a potential inventor and as a tool in patent examination. The SCP Secretariat will prepare a report on AI’s application in patent examination procedures, based on information shared during the SCP’s 35th and 36th sessions. Additionally, the SCP will organize a session on the legal implications of AI inventorship and criteria for patentability. This initiative will involve expert exchanges to explore policy options for AI-driven patent systems, referencing WIPO’s Intellectual Property Policy Toolkit on preparing innovation ecosystems for AI. This agenda is uniquely important not only from the angle of patentability standards, such as inventive step and the standard of person skilled in the art, and how it will be harmonized with the question of need for (legal) personality to fulfil the ‘inventor’ standard. While these may be the concerns on one side, the other side is the concern of deep harmonization of substantive standards through AI platforms and the obvious discrepancy this may cause to a country’s development agendas. Based on the available text, the Secretariat will also undertake the following activities for SCP 37: During the SCP 38 session, the Secretariat will conduct a session on the utilization of various tools, including AI, to enhance patent examination processes and address challenges faced by IP offices in implementing and using these tools. Following the Committee’s decision at SCP 35, the Secretariat will update document SCP/35/7, specifically Sections V (on National/Regional Legal Frameworks related to Inventorship) and VI (the “DABUS” case). This update, based on input from WIPO Member States and regional patent offices, will be presented at SCP 37. For Section VI, the Secretariat will also include information on new cases and decisions regarding AI as an inventor, based on data from Member States and regional patent offices. Additionally, the Secretariat will produce a report on the substantive and procedural requirements for the voluntary division of patent applications, including the prohibition of double patenting, which will be submitted at SCP 37. [DABUS (Device for the Autonomous Bootstrapping of Unified Sentience) is an AI system. The issue of whether DABUS is an “inventor” under the United Kingdom’s Patents Act went up to the Supreme Court that decided DABUS cannot be named as an inventor because the Act includes specific definitions which an AI machine cannot legally fit because it does not have legal personality.] Patents and Health SCP 36 discussed an updated report on constraints faced by developing countries in employing the flexibilities in the Trade-related Aspects of Intellectual Property Rights Agreement (TRIPS) administered by the World Trade Organization. During the discussion many developing countries highlighted the systemic barriers and external country influence in the use of TRIPS flexibilities. The following action plan for SCP 37 has been agreed: · During SCP 37, the Committee will receive updates on publicly accessible databases that track patent status for critical health products. · The WIPO Secretariat will come out with “a draft reference document on the exception regarding private and/or non-commercial use to be submitted to SCP/38.” Exception and Limitation The action plan for SCP 37 also agreed that: · The Secretariat will prepare a draft reference document on the exception regarding farmers’ and/or breeders’ use of patented inventions, to be submitted to SCP 37. · The Secretariat will prepare a draft reference document on the exception regarding private and/or non-commercial use to be submitted to SCP 38. In parallel, the Secretariat will provide an update on implementing WIPO’s Development Agenda Recommendation 14, which is aimed at strengthening technical assistance to developing countries and least developed countries (LDCs). These initiatives are geared towards supporting equitable access to health innovations worldwide. Confidentiality in Client-Advisor Communications SCP 37 will also address confidentiality protection for communications between patent advisors and their clients. Member States have been invited to submit national legislation details, which will be showcased on a dedicated WIPO webpage. Additionally, a study on the categories of professionals who benefit from confidentiality protection in legal proceedings will be conducted, with findings expected at SCP 38. Technology Transfer The following actions have been planned under this agenda: · Following the roundtable during the SCP 36, the Secretariat will submit a report at SCP 37 on technology transfer and patent issues involving universities. · The Secretariat will be preparing a report of the sharing sessions on Standard Essential Patents (SEPs), and FRAND licensing-related issues held during SCP 35 and SCP 36. · The Secretariat will compile a collection of legislative and policy measures related to SEPs adopted by Member States. This compilation may also include references to significant case law where relevant and will be made available on a dedicated page on the SCP website. · A subsequent study will be done to analyse inventorship challenges in cross-border collaborations, particularly focusing on foreign filing conditions for collaborative projects. Furthermore, a study on best practices in technology transfer within the health and green technology sectors will be prepared. This study will include licensing models, contract structures, and intellectual property management strategies, supported by case studies illustrating successful industry-academia collaborations. · The Secretariat will also conduct a study on best practices and challenges in technology transfer within the health and green technology sectors, with a focus on collaborations between industry and academia. This study, which will consider both national and international regulatory frameworks, is scheduled for submission at SCP 38. It will explore licensing models and contract structures, including effective clauses for remuneration schemes and IP management, and will feature case studies and practical examples to illustrate successful strategies. In preparation for this study, an expert exchange session will be organized at SCP 37. [FRAND refers to fair, reasonable, and nondiscriminatory licensing in relation to technical standards that are developed through an open, consensus-based, and industry-led standardization process.] Procedural Enhancements and Future Sessions The SCP aims to streamline procedural aspects of its meetings by replacing verbatim reports with automated speech-to-text transcripts, as per WIPO’s directive. Delegations will have an opportunity to review these transcripts for accuracy before the following session. The SCP’s 37th session is scheduled for 3 to 7 November 2025. The agenda underscores the Committee’s approach to addressing evolving challenges in patent law, with an obvious lukewarm approach to advancing public health, fostering innovation, and supporting fair technology transfer practices. (*Sreenath Namboodiri is pursuing an LLM in International Law at the Geneva Graduate School)
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