Draft Substantive Patent Law Treaty

After the adoption by a Diplomatic Conference on June 1, 2000, of the Patent Law Treaty (PLT), which harmonizes and streamlines formal procedures in respect of national and regional patent applications and patents, the need for patent law harmonization going beyond formalities led WIPO's Standing Committee on the Law of Patents (SCP) to decide to initiate work on harmonization of substantive patent law.

 

In November 2000, the SCP, at its fourth session, agreed that first draft provisions for a future legal instrument should focus initially on a number of issues of direct relevance to the grant of patents, in particular, the definition of prior art, novelty, inventive step/non-obviousness, industrial applicability/utility, the drafting and interpretation of claims and the requirement of sufficient disclosure of the invention. The SCP further agreed that other issues related to substantive patent law harmonization, such as first-to-file versus first-to-invent systems, 18-month publication of applications and a post-grant opposition system, would be considered at a later stage.

In May 2001, the SCP, at its fifth session, considered a first draft of the Substantive Patent Law Treaty (SPLT), with Regulations and Practice Guidelines. The draft covered the six issues mentioned above, and the SCP also discussed the interface between the draft SPLT and the PLT and the PCT, and whether the scope of the draft SPLT should be limited to patentability and validity requirements, excluding issues related to the infringement of patents.

 

At its sixth session, in November 2001, the SCP discussed revised draft provisions and agreed on an approach to establishing a seamless interface between the SPLT, the PLT and the Patent Cooperation Treaty (PCT). It also agreed, based on a proposal by the Delegation of the United States of America, to create a Working Group on Multiple Invention Disclosures and Complex Applications. The Working Group received the mandate to address, in particular, the following issues: (i) unity of invention; (ii) the linking of claims; (iii) the number of claims; (iv) the requirement of "clear and concise" claims and (v) special procedures to treat complex applications, such as mega-applications or large sequence listings.

 

The SCP also decided that the Working Group would report the results of its discussions and make suggestions to the SCP. During the seventh and eighth sessions, the Working Group on Multiple Invention Disclosures and Complex Applications continued its discussions on the above mentioned issues.

 

During the seventh, eighth and ninth sessions of the SCP, held from May 6 to 10 and November 25 to 29, 2002, and May 12 to 16, 2003, further revised drafts of the SPLT were discussed. Following proposals by a number of delegations, the contents of the draft SPLT was progressively broadened. While the SCP agreed in principle on a number of issues, such as the scope of the SPLT, the right to a patent, novelty, inventive step/non-obviousness or the requirement of sufficient disclosure, some provisions, such as patentable subject matter or the exceptions to patentability, raised concerns about the available flexibility in respect of national policies, recognized under current international treaties. Further, delegations expressed different views with respect to disclosure of the origin of genetic resources and associates traditional knowledge in patent applications where the claimed invention was derived from, or based on, such genetic resources or traditional knowledge.

 

Following these developments, at the tenth session of the SCP, held from May 10 to 14, 2004, the United States of America, Japan and the European Patent Office submitted a joint proposal designed to focus on an initial package of priority items including the definition of prior art, grace period, novelty and inventive step. According to the proposal, once international agreement was reached on those prior art related issues, discussions in the SCP could then focus on other issues. While this proposal obtained the support of a number of delegations, a number of other delegations opposed it, and emphasized the need to examine all the provisions of the current draft as a whole.

 

A proposal corresponding, in essence, to the one submitted to the tenth session of the SCP was submitted to the WIPO General Assemblies in September-October 2004 by the United States of America and Japan. In conclusion, the WIPO General Assembly adopted a statement which read as follows:

 

"(i) The General assembly considered the proposal submitted by the Delegations of Japan and the United States of America (document WO/GA/31/10). No consensus has been reached thereon.

 

"(ii) It was decided that the date of the next Standing Committee on the Law of Patents (SCP) should be determined by the Director General following informal consultations that he may undertake."

 

Consequently, the Director General convened informal consultations concerning future sessions of the SCP in Casablanca, Morocco, on February 16, 2005. The consultations were attended by delegates from Brazil, Chile, China, France, Germany, India, Italy, Japan, Malaysia, Mexico, Morocco, Russian Federation, Switzerland, United Kingdom, United States of America, the African Regional Industrial Property Organization (ARIPO), the Eurasian Patent Office (EAPO), the European Patent Office (EPO), the African Intellectual Property Organization (OAPI) and the European Union (EU). At the end of the meeting, the participants, except the delegate from Brazil, adopted a statement recommending the Director General to address the following six issues in an accelerated manner within WIPO: prior art, grace period, novelty, inventive step, sufficiency of disclosure and genetic resources. These issues should be addressed in parallel, accelerated processes, the first four issues (prior art, grace period, novelty and inventive-step) in the SCP and the other two issues (sufficiency of disclosure and genetic resources) in the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC). The meeting also underlined the importance of the continued active pursuit of discussions and work within WIPO on issues related to development and intellectual property so that a robust, effective and actionable WIPO Development Agenda could emerge.

 

The Director General submitted this recommendation to the SCP at its eleventh session, held on June 1 and 2, 2005. The Delegation of Brazil, on behalf of the "Friends of Development," submitted a statement proposing the continuation of negotiations of the draft SPLT on the basis of the draft treaty as a whole and of other issues, such as provisions on the transfer of technology, anti-competitive practices, safeguarding of public interest flexibility as well as specific clauses on principles and objectives. While delegations recognized the importance of the work of the SCP and emphasized that the work on patent law harmonization should progress taking into account the interests of all parties, they did not reach agreement as to the modalities and scope of the future work of the Committee. 

 

As a result, the SPLT negotiations were put on hold in 2006, as the Committee decided that it was premature to establish a work program for the SCP. 

 

The work of the SCP was resumed in June 2008.  However, the discussions of the SCP are no longer focused on the draft SPLT.  The main focus of the SCP today is on building a technical and legal resource base from which to hold informed discussions in order to develop a work program for the Committee.  At the fifteenth session of the SCP, which was held from October 11 to 15, 2010, Member States agreed to include a number of substantive issues relating to patent law and practice in the future work of the Committee.

 

Further developments within the SCP can be consulted here.