WIPO: Working on the balance

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1 WIPO: Working on the balance Use and Abuse of IP and Related Rights : Getting the Right Balance Second Session October 17, 2010 Matthew Bryan, Director, Patent Cooperation Treaty Legal Division

2 Trolls and bullies (1) Mentioned in many WIPO meetings, conferences, and publications WIPO Member States have expressed concern about Trolls potentially negatively impacting technology transfer (SCP) Certain business strategies, such as patent trolls,... are seen by many as contributing to unjustifiable increases in the transaction costs, and thus as obstacles to a functioning patent system and to further innovation and research. Report on the International Patent System (SCP/12/3 Rev.2, pg. 5, 2009)

3 Trolls and bullies (2) WIPO is not doing any direct work on the issue of patent trolls /NPEs/ trademark bullies per se But it is doing a number of things which have an indirect impact on these issues

4 WIPO s mandate Develop: a balanced and accessible international intellectual property system, which rewards creativity, stimulates innovation, and contributes to economic development while safeguarding the public interest Help WIPO Member States develop likewise balanced national and regional intellectual property systems

5 International Cooperation on Building Respect for Intellectual Property (1) This is the new politically correct term for what we used to refer to as Enforcement WIPO Advisory Committee on Enforcement Substantive studies on counterfeiting and piracy to be considered at Sixth Session (December 1-2, 2010) Assisting member States at their request in building capacity in the judiciary, customs, police, etc. recent extensive regional and subregional training for judges WIPO will co-host (with INPI France) 6 th Global Congress on Combating Counterfeiting and Piracy (Feb 2011)

6 International Cooperation on Building Respect for Intellectual Property (2) 45 th recommendation of the WIPO Development Agenda: To approach intellectual property enforcement in the context of broader societal interests and especially development-oriented concerns, with a view that the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations, in accordance with Article 7 of the TRIPS Agreement. The underlined language is a direct quote from TRIPS Art. 7 Discussed at 2009 ACE and on the agenda again for 2010 Session (December 1-2, 2010)

7 International Cooperation on Building Respect for Intellectual Property (3) WIPO does not presume to speak for or on behalf of those States which proposed the Development Agenda or which are making further proposals with reference to its implementation Recommendation 45 was conceptually part of the original Development Agenda proposal made by Argentina and Brazil in 2004 Understandably, Development Agenda proponents do not want enforcement efforts to make it impossible for them to use flexibilities made available under TRIPs, frustrate public policy goals, become barriers to legitimate trade or negatively impact efforts to promote human development

8 International Cooperation on Building Respect for Intellectual Property (4) Certain developing countries and LDCs are requesting: Debate within the WIPO ACE with all stakeholders (including NGOs) on building respect for IP, taking into account social and economic background of different countries Ultimately, enforcement efforts and actions should take into account differing backgrounds, situations and capacities of DCs and LDCs Strategies should be developed for prioritization of enforcement efforts on the basis of a diagnosis of welfare impact (Brazil Future Work Proposal, WIPO/ACE/5/11, Annex II)

9 International Cooperation on Building Respect for Intellectual Property (5) Certain developing countries and LDCs are requesting (continued): Creation of an Enabling Environment to Build Respect for IP (Pakistan Future Work Proposal, WIPO/ACE/5/11, Annex I) including, for example: Address socio-economic welfare needs in countries particularly for access to medicines and educational materials through TRIPs flexibilities and alternative business models for price reductions Promote effective GRTKF protection Promote and facilitate technology transfer and exceptions to IPRs for research purposes Support commercialization of domestic innovations from developing countries Develop binding international guidelines for levels of IPR protection in bilateral and regional FTAs

10 International Cooperation on Building Respect for Intellectual Property (6) Existing enforcement efforts constitute a one size fits all repressive approach (Brazil Future Work Proposal, WIPO/ACE/5/11, Annex II) Some interesting NGO submissions: see ACE/5 and ACE/6 documents Building respect in consonance with Recommendation 45 a shared challenge (WIPO DG Francis Gurry)

11 Patent Quality: what is WIPO doing to improve it? (1) PCT PCT was intended to assist national Offices in improving quality of granted patents Most notably by ensuring that the Office has a search report (and more recently, a patentability opinion) of the highest possible standard available to it PCT Roadmap (2009): central thrust was improved quality of PCT reports, and a number of its recommendations are aimed at increasing quality: Third party observations Designated Office quality feedback to ISAs/IPEAs Collaborative search and examination» USPTO/KIPO/EPO pilot just completed, finding it realistic, feasible and helped increase quality of ISR and WO

12 Patent Quality: what is WIPO doing to improve it? (2) PCT (continued) Sharing of national, regional and international search and examination results and status information Sharing search strategies Quality Annual reports on Quality Management Systems used by ISAs and IPEAs are submitted and available online ( MIA quality subgroup established and tasked with reporting to next MIA session on:» effective processes and solutions for quality assurance, and» effective quality improvement measures Chapter 21 PCT Search and Examination Guidelines

13 Patent Quality: what is WIPO doing to improve it? (3) PCT (continued) International authorities should:» seek ways of effectively searching documentation in languages other than office s official language(s)» improve quality/consistency of ISR/IPRP» cite documents from wide range of sources» encourage examiners to explain relevance of cited documents Supplementary search system Encouraging offices to create incentives for applicants to more completely and effectively use the international phase Participating in the meetings of the Trilateral and IP5

14 Patent Quality: what is WIPO doing to improve it? (4) PCT (continued) PCT-PPH USPTO has PCT-PPH agreements with Austria, Russia, Spain, EPO, Japan and Korea» USPTO sent letters to all operating PCT ISAs/IPEAs informing them that USPTO will include positive PCT results from all Authorities in PPH, and encouraging them to do the same Other PCT-PPH agreements: United Kingdom (unilateral), PCT-PPH users chronicling how PCT-PPH is helping them in some cases get faster grants WIPO will be publishing some of these experiences

15 Patent Quality: what is WIPO doing to improve it? (5) Non-PCT Helping national patent offices improve their capacities technical and human through training, automation, access to relevant databases, etc. Capturing, digitizing and hosting more patent documents to make them easily searchable Accessing technological information: PatentScope PCT applications National patent collections (11 countries) New features: CLIR Google Translate integration (On-the-fly translations of PCT descriptions and drawings (and patents in national collections) in 53 languages) ASPI ARDI PCT/SCP/Development Agenda efforts on access to national/regional/international search and examination reports

16 Technology transfer (1) Demand continues to rise from developing countries for assistance in building: their national innovation infrastructure reinforcing the capacity of their research institutions in the area of IP licensing and technology transfer WIPO: establishing Technology Innovation Support Centers (TISCs) in a number of developing countries providing developing country innovators with access to locally-based, high quality technology information services underway in Algeria, Ecuador, Morocco and Tunisia 6 more proposed for Bangladesh, Cuba, Egypt, Guatemala, Senegal and Viet Nam requests for 10 more being discussed

17 Technology transfer (2) WIPO: organized workshops focusing on practical skills relating to technology transfer, patent drafting and technology licensing which were attended by over 2,000 researchers and technology managers in the past 12 months will release late 2010 an IP and technology transfer guide for universities and research institutions five technology transfer offices will also be launched in the Arab region beginning November 2010

18 Patent Harmonization? Francis Gurry (AIPPI World IP Congress October 2010): "We are living a paradox. Never have there been so many questions that are international in nature and are beyond the power of one country to solve. But never have we experienced so much difficulty in getting international agreement. There is a serious challenge to multilateralism but also a "growing consensus that solutions to patent workloads should be built on the PCT. We are seeing the fusion of the PPH and PCT. Patents remain the area where progress on harmonization is slowest

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