PATENTS: THIRD WORLD ALTERNATIVES TOO FOR HARMONISATION CONFERENCE.

Nov 20, 1990

PATENTS: THIRD WORLD ALTERNATIVES TOO FOR HARMONISATION CONFERENCE.

GENEVA, NOVEMBER 15 (BY CHAKRAVARTHI RAGHAVAN)— The 1991 Diplomatic Conference, under the auspices of the World Intellectual Property Organisation (WIPO), for a Patent Harmonisation Treaty will be seized of some clear alternatives from Third World countries.

The Conference is set for 3-28 June 1991 at The Hague.

The alternatives will bring on the international agenda for negotiations some of the Third World concerns on technology transfer issues and the industrial property system - issues which have been on the agenda since the 70’s but have been relegated to the background after the US and leading ICs deadlocked the negotiations for revision of the Paris Conventions and took their own agendas for change in the systems to the GATT and the Uruguay Round.

Since then the issue of harmonisation of patent laws in various countries has also moved forward in the WIPO. Over, the last two years, as the WIPO sought to go ahead with its own agenda on these matters, there was at first resistance from the ICs, who did not want any distraction or undercutting of their own efforts in the Uruguay Round against the South.

Also, while they have a common position against the South on some substantive questions, aimed at increasing the power and rentier incomes of their TNCs who control patents, the ICs have considerable differences among themselves on "procedures" - with several of them like US and Japan using procedures to protect their own domestic markets and enterprises.

Third World countries too were on the defensive, lest they be caught in a pincer movement by these two moves to force them to change their industrial property systems and provide greater protection for the TNCs.

But over the last year or so, as the Uruguay Round outcome appeared to be less clear, the U.S. and other ICE began showing interest in the WIPO patent harmonisation process, not only to secure harmonisation of procedures but also use it to secure changes in substantive provisions, without going through the exercise of revising the Paris Conventions at the diplomatic conference - where Third World issues too are on the agenda.

In the proposals they have now formulated and which will now be before the 1991 Hague meeting, Third World countries have sought their own substantive changes too, if the process is to be used for not only for harmonisation of procedures but of substance too.

However, this strategy and its outcome would very much depend on the stands they are able to take in the Uruguay Round talks and how far they are able to prevent the US and ICs having their way in bringing about uniform and enhanced international standards in industrial (intellectual) property and its enforcement via GATT.

The Report of the second part of the eighth session (29 October to 9 November) of the Committee of Experts preparing for the Conference for harmonisation of patent legislation, which has now become available, shows that the Conference will have clear alternative proposals from Third World countries on some substantive questions.

The alternatives have been put forward by a group of Third World countries - Algeria, Argentina, Brazil, Cameroon, China Cuba, North Korea, Egypt, Ghana, Indonesia, Kenya, Libya, Madagascar, Morocco, Mexico, Nigeria, Rumania, Syria, Trinidad and Tobago, Tunisia, Tanzania, Uruguay and Zaire (all members of the Paris Union) and supported by Bangladesh, Chile, Colombia, Ecuador, Guatemala, India, Pakistan, Panama, Peru, Swaziland, Venezuela and Yemen (members of WIPO, but not of the Paris Union).

The leading ICs tried-to resist these, arguing that Third World proposals and formulations dealt with substantive issues and that some of them have been brought forward too late.

However Third World countries said that they themselves would favour the Conference considering harmonisation of only procedural issues, but since the proposals of the ICs and the draft texts formulated by the WIPO bureau on the basis of these, have dealt with both issues of substance and procedure, clear alternative formulations favoured by the Third World as well as other substantive issues too would have to be placed before the Conference.

As for the question whether they had been received later, Third World countries pointed out that even when the deadlines were sought to be set, they had made clear that their formulations would be tabled after the consultative meeting of Third World countries (which had since been held in June 1990).

The alternatives put forward by the Third World relate to fields of technology to which Patents would apply, nature of rights conferred by patents, obligations of Rights holders, remedial measures under national legislation, term of patents, reversal of burden of proof, and reservations.

Without these formulations, the only option for the Diplomatic Conference would have been to accept or reject the draft texts formulated by the WIPO bureau on basis of suggestions and discussions at earlier meetings.

The proposed Patent Harmonisation Treaty in effect would bring some substantive changes in the scheme of the Paris Union Conventions which confers considerable autonomy on member-countries about deciding the areas of patentability, term of patent, etc. A draft article 10 seeks to oblige Parties to provide patent protection "for inventions, whether they concern products or processes, in all fields of technology".

The Third World alternative would have patent protection available for inventions in all fields of technology which are new which involve an inventive step and which are industrially applicable.

Exceptions to these are inventions which would be contrary to public order, law or morality or injurious to public health; plant or animal varieties or essentially biological processes for production of plants or animals; discoveries and materials or substances already existing in nature; methods of medical treatment for humans and animals; and nuclear and fissionable materials.

Also by national law, Parties could exclude from patent protection certain fields of technology, either in respect of products or processes for manufacture of these products. Such exclusion could be on grounds of "public interest, national security, public health, nutrition, national development and social security".

As regards rights conferred by a patent, left under the Paris Union to national laws, the draft proposed by the WIPO bureau would have countries provide protection for processes and products, and for their manufacture and sale inside a country as also imports.

Brazil in introducing the alternative proposals said that Third World countries preferred the harmonisation treaty dealing only with procedures and not substance. But if substance was to be covered, then the rights to covered should be limited to basic rights, namely rights in connection with industrial exploitation of the patented invention and commercialisation of relevant products. For a product patent the basic right would be for the making, selling and using of the patented product.

Acts of importation and stocking of a product should not covered by exclusive rights conferred by a patent since patents were granted by a State with a view to the invention being worked in the country and not for purposes of imparting or stocking of patented products. Parties would however be free to provide such protection if they so chose.

In respect of process patents, the rights holder would have the right to prevent third parties from using the process without authorisation. But there could be no extension of the process patent rights to products not protected by the patent or not protectable at all by patents.

As regards the term of a patent, the draft prepared by the WIPO bureau call for a minimum period of 20 years.

The alternative Third World formulation presented by Indonesia would have no provision for patent protection term.

While Third World countries favoured a comprehensive and workable patent system that could be effectively enforced, factors such as socio-economic problems and level of their capabilities had to be taken into account in dealing with technology, Indonesia said.

Matters relating to term of patents came under this notion and Third World countries could not commit themselves to provisions they could not afford. Other Third World countries said that a single, uniform, across-the-board term of duration for patents was unreasonable and there was no fundamental logic in stipulating a 20-year term either. The problem could not be solved by merely putting in a transitional period for the Third World countries.

The WIPO bureau draft text and a proposal by the United States have called for "mandatory reversal of burden of proof" in infringement proceedings where the subject of patent is a process for producing a product and an identical product is put on the market. The producer of the identical product would be called upon to prove that his product is produced by a different process.

Germany introduced a further amendment that this requirement would be confined to cases where the product is "new".

The alternative Third World formulation introduced by Cameroon would delete any such provision. The principle of the plaintiff having to prove his allegation was a long-established principle of civil and penal law and the reversal of the burden of proof created an "unacceptable exception" to the rule and a discrimination against the defendant, Cameroon and others pointed out.

India said there was also the paradox that through a harmonisation process the majority of the countries were being asked to align their law with provisions in a minority.

Moreover, this would also nullify the whole intent of granting a process patent, namely that the same product could be manufactured by a completely different process and need for encouraging growth of competitive technologies and processes for producing the same product.

The diplomatic conference would now have three alternatives: that by Germany, that by the US and that by the Third World for deletion of this requirement.

Ghana on behalf of Third World sponsors presented a draft article laying down the obligations of a rights holder.

These would include the duty of disclosure, obligation to provide information and supporting documents concerned corresponding foreign applications and grants. The right holder would also be obliged to work the patent in the country of patent and refrain from engaging in abusive, restrictive or anti-competitive practices in license contracts and contracts assigning patents.

The ICs opposed the submission of this text to the diplomatic conference on among other ground that the list of subjects to be presented to the conference had been closed and the proposals had been received too late. This was however rejected by India and others who pointed out that Third World countries had made clear that they would submit their proposals after the consultative meeting of Third World countries held in June 1990.

Third World countries also presented a new draft article for remedial measures that could be provided under national laws to secure compliance of rights holders with obligations.

The remedial measures would include provisions for grant of non-voluntary licenses and revocation or forfeiture of patents. Non-voluntary licenses could also be provided at any time, on grounds of public interest, national security, nutrition, health or development of other vital sectors of the economy or for exploitation of the patented invention by the government of the county or a third party authorised by it.

The ICs opposing this argued that the proposal went beyond the provisions of the Paris Convention and hence was a matter to be dealt with in the conference for revision of the Paris Conventions - where US and others have in fact blocked the revision process.

India however argued that the amendment merely reaffirmed the fundamental principles of the Paris Convention and supplemented it where the Paris Convention was silent.

Brazil said that the ICS were not consistent in opposing the proposal on the ground that it went beyond the provisions of the Paris Convention, while at the same time they sought to bring in through harmonisation such issues as fields of technology to be protected, duration of patents and reversal of burden of proof all items not dealt with in the Paris Union Conventions.