At this week’s WIPO Standing Committee on Law of Patents (SCP) meeting the main discussion centres on four preliminary studies prepared by the WIPO Secretariat. The studies relate to: patents and standards;  exclusions from patentable subject matter and exceptions and limitations to patent rights; dissemination of patent information; and client-attorney privilege. As I noted in my earlier post on the changing landscape of WIPO’s patent agenda, all the preliminary studies are worth reading. Each of them deserves some commentary and I start with the study on patents and standards. I comment, in separate posts to come, on each of the other preliminary studies.

Value of WIPO’s study on standards and patents

The study, which is quite accessible in terms writing style and language, provides an insightful overview on standardisation, some of the key issues that arise with respect to patents in standard-setting processes and the current patent policies of the main standard setting organisations (SSOs) as well as other measures to address patent challenges such as the use of patent pools. The study also correctly identifies some of the key policy challenges that arise in addressing the interface between standards and patents - what to do with participants in standard-setting who conceal information regarding patents that are essential to the implementation of the standard but then seek to aggressively enforce their rights on adoption of the standard; what to do in cases where an essential patent owner is not a participant in the standard-setting process but seeks to enforce their rights in a manner that discourages the use of the standard or its widest implementation; and what to do with high transaction costs.

The study also does a fair job at identifying some of the challenges with the current approaches in SSOs, in patent pools and competition questions. Quite importantly, the study at paragraph 45, clearly identifies the international dimension of standardisation, and by implication, the international dimension of the interface with patents. This is an important point because the core task for WIPO in this area is to identify:

• the international dimension of the interface between standards and patents;
• cross-border or international policy challenges that arise with respect to the interaction between standards and patents; and
• the policy challenges which require international cooperation, through rule-making or other means, to address.

Key gaps and shortcomings of the study

While acknowledging that this is a preliminary study, the study suffers from a number of important gaps and shortcomings in the approach and analysis.

The main shortcoming of the study is the dearth of literature reviewed and/or used to develop the study when one considers the amount of literature available on this subject. The study primarily appears to have relied on SSOs documents, a July 2008 ITU Workshop report and some presentations at the workshop (which was attended by WIPO) and another workshop in November 2008, a few government documents such as documents of the US Justice department and limited caselaw. Someone who is not well versed with the subject would be forgiven, reading this study, in thinking that this is the first major work on the subject. A simple abstract search on SSRN shows that there is significant scholarly, academic and practice journal articles and other literature on the subject. Other than enriching the study, providing a more detailed selected bibliography in WIPO’s study would have been  a valuable service both to WIPO member states and other stakeholders as well as researchers since the study is a public document.

Secondly, while the WIPO Secretariat was constrained by the member states instructions not to offer any conclusions in these preliminary studies, it is arguable that the Secretariat could have done more in delineating the key questions that WIPO members should consider to determine whether the international aspects of the interface between standards and patents requires enhanced international cooperation.

Finally, in terms of treatment of the various issues, there are some weak sections. The weakest, in this regard, is the section on dispute settlement. The sense one gets reading this section of the study is that it was intended as a promotion of the WIPO ADR services through its Arbitration and Mediation Centre.