26th July, 2018
FICPI participated in the 28th session of the SCP in Geneva, 9 to 12 July 2018.
The session covered five main topics: (i) exceptions and limitations to patent rights; (ii) quality of patents, including opposition systems; (iii) patents and health; (iv) confidentiality of communications between clients and their patent advisors; and (v) transfer of technology.
Exceptions and limitations to patent rights
For this agenda point the secretariat had prepared a “Reference document on exception regarding acts for obtaining regulatory approval from authorities (SCP/28/3)”. This document mainly considers pharmaceutical products, which cannot be marketed without obtaining a marketing approval from a competent regulatory authority. The public policy objectives and the goals of the regulatory review exception in many countries are aimed at avoiding a de facto extension of the patent term due to the time taken for a regulatory approval process, and thus facilitating the marketing of competitive products, such as generic medicines, immediately after the expiration of the patent term.
- The Delegations found that SCP/28/3 indeed covers the legal and practical framework, but lacks any information on the practical implications.
- The Russian Delegation provided information about a recent first instance court decision (pending appeal), which awarded a compulsory license for a drug.
- The secretariat will prepare draft documents on the research exception (SCP/29) and compulsory licensing (SCP/30).
Quality of patents, including opposition systems
This topic is considered very important for the Delegations and the various Regional Groups and it will be retained in the future work. There were numerous interventions on this topic, e.g. how different jurisdictions interpret the various terms used, what should be subject to harmonization, and the balance of achievable quality and available resources.
- The secretariat had prepared a document summarizing the results of a study (SCP/28/4) covering issues such as common general knowledge, person skilled in the art, combination/juxtaposition vs synergic effects, and the danger of hindsight analysis.
- The Delegations of Spain, France and Ireland provided information on measures they had taken to introduce substantive examination and observation/opposition procedures. Other Delegations joined in and contributed with information on their local arrangements in this respect.
- FICPI is pleased to note that the measures taken are consistent with FICPI's resolution on “Administrative Measures before Patent Offices for Ensuring High Quality Patents” of March 2017.
- The quality discussion continued with a sharing session on office collaboration in search and examination, the PPH, the Global Dossier, other mechanisms for the sharing of information concerning foreign applications and grants, the grant process, and examiner training.
- The Spanish Delegation had prepared a proposal (SCP/28/7) on the question of artificial intelligence (AI) and blockchains in view of the quality issue.
Confidentiality of communications between clients and their patent advisors (CAP)
CAP generated a lively series of interventions during a sharing session, both from the Delegations and the Regional Groups [Group B, CEBS (Central European and Baltic States), GRULAC (Latin American and Caribbean Group), Asia-Pacific Group, African Group and CACEEC (Group of Central Asian, Caucasus, and Eastern European Countries)].
- Some interventions strongly supported that this topic remain within the SCP, while some were against it considering that CAP only was relevant for national legislation.
- There were suggestions to work towards a so-called non-binding soft law, including definitions of a patent advisor, the quality of such a patent advisor, the extent of privilege, and on the like. Such a non-binding soft law could then be adapted on a national level.
- At the end of the discussion, AIPPI made a statement emphasizing that CAP plays a role in the quality of patents, i.e. parties not seeking and/or obtaining overly broad or vague patent rights. JPAA emphasized the cross-border importance.
Patents and health
- Intensive discussions continued in relation to this topic– please see FICPI’s newsletter of 18 July 2018.
FICPI will study the above topics in view of preparing relevant contributions to the process.
The next session of the SCP, the 29th (SCP/29) is scheduled on 3 to 6 December 2018.