PCT v. 2.0 on the anvil?

WIPO intends to impose a “Global Patenting Regime” on the developing world, on behalf of big pharma and developed countries, if this editorial by KG Narendranath in Economic Times and this note in Pharmabiz are anything to go by. Or does it?

A Madrid System for Patents

“The WIPO plan is to institute a system similar to the one that exists for international registration of Trade Marks under the Madrid System… With the approval of Global Patenting at the General Assembly, developed nations are seeking to dilute the sovereignty of developing nations in determining patentability of applications for inventions and do way with flexibilities granted under TRIPS Agreement”, Pharmabiz reports.

The proposal suggested by the USPTO, which, according to Pharmabiz, may likely be taken up in the September edition of the WIPO General Assembly, has a key feature of synthesising international and national patent application processes, leading to the “automatic grant of patents in all member states”.

So, what’s the problem?

At the outset this may seem as a great idea (no administrative hassles, taking “single window” application to a whole new level, etc.), there are several fundamental problems with this:
(1) it may undermine national patent laws as they exist in their nuanced variations across the world.
(2) Patent prosecution will be a whole new ball game – no scope for pre-grant opposition in the new system, and post-grant opposition would require domestic overhaul (more “assistance” from WIPO to “equip” domestic infrastructure?)

KG Narendranath reads murkier strategy into this proposal for institutional reform. In a strongly-worded edit that is full of seemingly attributed “quotations”, but no sign of a source entity or document, he alleges that (and I paraphrase)

  • WIPO has changed track from its core function of capacity-building of patent offices to “breach the rank of developing country groups”
  • WIPO is seeking to “alienate India, discredit its mission at Geneva and ‘use’ Indian bureaucrats at its secretariat.”
  • This is part of a larger tactic to create new barriers to the generic drugs trade (referring to the EU Customs issue) using the facade of counterfeiting.
  • Messy ACTA negotiations, and so on…

But, will WIPO really clear PCT v. 2.0?

On my part, I would hesitate to make blanket allegations against WIPO’s decision-making ability.

The USPTO and a few other jurisdictions may have chosen to push their agenda, and stealthily, so might have a section of the global industry. There’s no point whining: this is practical politics. However, I don’t discount the ability of Indian and other developing country negotiators to ensure that institutional reform of this nature does not go through. Towards my own case, I invite you to read the documents from the latest meeting of the PCT Working Group held in May this year, which acknowledges the US proposal, along with a few others, but categorically states that the PCT system does not seek to harmonize substantive patent law. For your convenience, I reproduce some relevant text below:

[Para 5 of the Summary] “The Meeting agreed that the relevant PCT bodies should continue their work to improve the PCT. The Meeting agreed that the PCT system can and should function more effectively, within the existing legal framework of the Treaty provisions,
– to deliver results which meet the needs of applicants, Offices and third parties in all Contracting States;
– without limiting the freedom of Contracting States to prescribe, interpret and apply substantive conditions of patentability and without seeking substantive patent law harmonization or harmonization of national search and examination procedures.”

A more detailed reference to this conclusion can be found in the Report of the Working Group, here:

[Para 87]
“Several delegations… raised concerns about the proposed system under which… an international application, having received a positive international report on patentability, would automatically issue as a national patent unless a national Office issued a notification of refusal within a specified period of time. Those delegations noted that such proposals would be ineffective in the absence of substantive patent law harmonization, and emphasized the sovereignty of Member States to prescribe substantive conditions of patentability.

[Para 25]:
The Director General emphasized that the PCT was a procedural Treaty which explicitly stated in Article 27(5) that it should not “be construed as prescribing anything that would limit the freedom of each Contracting State to prescribe such substantive conditions of patentability as it desires.” Articles 27(6), 33(1) and 35(2) reinforced this message, making it clear that any international report was non-binding and was not to contain any statement on the question whether the claimed invention was or seemed to be patentable or unpatentable according to any national law. This flexibility at the national level was an important factor in the success of the Treaty that had allowed it to be adhered to by, at present, 141 Contracting States. It was explicitly stated in document PCT/WG/2/3 that the process envisaged by the International Bureau was to improve the system within that existing framework and not to address matters of substantive patent law harmonization or of a unified “international patent”.

[Para 26]:
Furthermore, the Director General noted that the “reservations” which the International Bureau considered important to address related to incompatibilities which States or Offices had notified in respect of certain procedural matters introduced during the process of PCT Reform, rather than the reservations provided for in Article 64. Nevertheless, there was room to clarify and emphasize these matters within the draft roadmap itself to make the proposed scope of the exercise fully clear.

PCTv, please

‘What did India say at the meeting’, is of course my next question. I suspect that may remain a mystery for the time being, unless someone can conjure up notes from the gathering! Watching the Indian Parliament on TV is terribly entertaining. Surely a TV channel for international negotiations would out-do that on the entertainment factor by several degrees? WIPO TV, anyone?

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4 thoughts on “PCT v. 2.0 on the anvil?”

  1. First of all, this proposed amendment by WIPO on having global patenting system especially for developing countries will delineate from TRIPS agreement, as this agreement clearly spells out flexibilities in implementing patent laws in each of the member countries. each country will have its own right to decide patentability issue as long as it is within the scope of TRIPS agreement. By automatic granting of patents, the very purpose of deciding patentability based on country’s laws would be diluted significantly and thereby lead to erraneous grant of fruvious patents ineligible for patent.

  2. Thanks for your comment, Manish. It is true that the proposal appears to suggest that there be substantive changes in national patent laws. This is precisely why I believe the proposal will not clear the test. Surely, WIPO is not as malleable as we suspect it may be, especially with emerging economics collectively bargaining against such proposals.

  3. The editorial in the Economic Times and the note in Pharmabiz are nothing but indecent conspiracy theories. They do not serve India Inc. in any way, on the contrary.

    It is worth recalling that WIPO is an organisation of States which are in the driving seat when it comes to make policy decisions (and at times this goes down right to micromanagement).

    Furthermore, the international instruments (e.g. treaties and their amendments) that are adopted – usually with a relatively high majority of member States (e.g. three quarters of the members) – are only applicable to those members who subsequently to their adoption accept to be bound by them through, e.g. ratification; and where options are granted and reservations are permitted, to the extent set by them.

    As regards the Patent Cooperation Treaty, it is good to see a professionally working and inspired Spicy IP quoting the WIPO Director General on Article 27(5) of the PCT. It begs repeating: “Nothing in this Treaty and the Regulations is intended to be construed as prescribing anything that would limit the freedom of each Contracting State to prescribe such substantive conditions of patentability as it desires.”

    As regards the Madrid system, which the “informed sources” said would be the model for the “Global Patenting” plan, that system too leaves its members free to design their substantive trade mark law to accommodate national circumstances.

    The IP community knows – but others conspicuously do not (or perhaps pretend not to) – that the “Trilateral” has not been able so far to achieve patent law harmonisation as between themselves(just consider that the US needs to switch to the first-to-file system…). The challenge is even greater if one seeks to include emerging and developing countries; and one can rest assured that those countries will skilfully defend their interests.

  4. Thank you for your comment and observations, wackes seppi. Thank you also for pointing out the nuances of ratifying an international treaty, and the high degree of control possessed by member states in organisations like WIPO.

    A recent letter to the editor by a Director at WIPO has come to our attention in this regard, which I refer to in a more recent post, dated August 10, 2009. It’s satisfying to know that the WIPO representative has clearly stated there are no plans for a Global patenting system, or its variants.

    On the conspirators that pull media strings, surely that’s nothing new. The question lies in how the story is reported, and which sources it cites, I guess. In this case, both publications in question lost out on all counts, raising valid concerns about their authenticity and true intent.

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