WIPO plans to allow member nations to delegate patent scrutiny powers

World Intellectual Property Organisation (WIPO) is considering a proposal to permit countries to outsource their patent examination duties to patent offices of other countries.

Civil society groups fear that the move, if approved, could undermine the flexibilities offered under the TRIPS (Trade Related aspects of Intellectual Property Rights) Agreement of World Trade Organisation for adopting differential patentability standards by developing and least developed countries.

The proposal to amend the Patent Cooperation Treaty (PCT) regulations to allow such delegation of patent application scrutiny rights is being considered by WIPO's PCT Working Group's five-day long meeting that began on June 18 in Geneva.

According to Malaysia based non-government advocacy group Third World Network (TWN), the immediate implication of such delegation is that the examination of the patent application will be determined by the patentability criteria and practices of the delegated offices. "The risk is the further erosion of the use of TRIPS flexibilities including with regard to patentability standards by developing countries," it states.

PCT is a system that allows innovators to apply for patent rights in multiple countries though a single patent application filed in any one of the 152 WIPO member countries. While this international patent application will save innovators the time and effort to file individual patent applications in individual countries, it will not allow them to escape country specific patent application scrutiny. Each national patent office approves the patent application for the respective jurisdiction on the basis of the patentability criteria prescribed under the national patent law of that country. Since TRIPS Agreement allows countries to tweak their patent laws to limit the grant of patent to real and substantive innovations, national patent offices are best placed to interpret the law of the land. The WIPO attempt is to delegate that right to the national patent office of another country or any intergovernmental organization.

According to the proposal under consideration, once the patent office functions are delegated to an external entity through a bilateral agreement, the delegated patent office will assume all the rights and obligations of the contracting country's national patent office and will perform all delegated functions according to PCT regulations.

TWN points out that under the current PCT Regulations, such 'delegation is only permitted for a state if the state is also a party to a regional patent treaty and in such a case, the regional Office acts as the patent office for that State'. The proposed new rule allows delegation by any PCT Contracting State to any another national patent office or to any intergovernmental organization, it explains.

India is expected to oppose this proposal as it can undermine the country's ability to serve generic and low cost versions of patented medicines to third world countries. In the recent past, AIDS/HIV medicines used to be prohibitively expensive in African countries until Indian companies started supplying generic drugs at a fraction of the cost of the patented medicine.

India's patent law which does not permit patents to incremental improvements of known substances has remained one of the major pain points for the developed countries. Global pharmaceutical corporations have been putting immense pressure on India through their governments to make it easier for them to obtain extended exclusive marketing rights for their products by gaining intellectual property protection on improvements on existing drugs.

The proposed amendment to PCT Regulations  is seen as another attempt to undermine such flexibilities of developing nations.