PCT Claim fees – a proposal by the EPO to charge excess claim fees for PCT applications is opposed by FICPI. more Sydney ExCo – despite the attraction of the location, the ExCo planned, deliberated and resolved. moreFICPI Survey & Strategic Planning – the results of the on-line survey provided valuable insight for the next generation of strategic plan. more Resolution – two Resolutions were passed during the Sydney ExCoCET News - the CET presented papers on the following topics :- more
Excess claim fees proposed for the PCT The large number of claims presented in some PCT applications is placing a burden on some ISA. A proposal was made at the WIPO PCT Working Committee to assess excess claim fees under the PCT. The details of such a proposal have not been released but it is assumed that it will follow the model of US and EPO claim fee structures. A paper has been prepared for consideration by the ExCo as CET paper 1301 in which FICPI opposes the imposition of fees of this nature. A broad application of fees based on the number of claims presented in an international application is believed to make the PCT unattractive to users, to be unfair to applicants, to work against the interests of intellectual property in less developed countries and to lead to complication within the international and subsequent national application process. The paper proposes a model that would not assess fees based on the number of claims presented but instead would limit the number of claims examined unless excess claim fees are paid. return Sydney ExCo, April 13th to 17th, 2008 The Executive Committee returned to Australia after a 10 year absence with 33 countries represented. As reported elsewhere, the major topic was a strategic planning session to set the direction of the organization for the next 5 years. Significant work had been done by the CET, as reported in the CET News, and two resolutions were passed reflecting the work of the previous ExCo’s. Three workshops were conducted, one on Substantive Harmonisation, one on the Madrid Protocol and one on Patent Quality. The work of these workshops will be carried forward and serve the basis of FICPI positions in the future. As might be expected, the Australian Association extended a warm welcome to all delegates and guests, including Maggie Royal. The social events displayed the best that Sydney has to offer with an opening reception at the Opera House, dinner at the Art Gallery, an evening at the Zoo and the final dinner at Fort Dennison in the middle of Sydney Harbour. The traditional day out took us out of the city to the Hawkesbury River, where the relatively calm waters allowed work to continue on the planning and other reports to be presented the next day. A wonderful ExCo with much work and many memories. return FICPI’s Strategic Plan 2008-13 FICPI had established its initial strategic plan at the Broome ExCo in 1998 and, although it was considered a living document, a wholesale review of the plan was needed. Marc Chinoy of the Regis Group, who had prepared the initial plan was engaged to lead the ExCo and Bureau through the planning process. Initially, the membership as a whole was asked to complete an on line survey designed to understand the make up of the membership, the issues it considered important and its connection to FICPI’s work. A large number of members responded, providing valuable and sometimes surprising insight. For example, a significant number of members who answered the poll had not participated in FICPI events, perhaps indicating the need to establish virtual communications to engage these members. The planning session took one full day of the ExCo and followed the previous planning methodology of looking ahead to determine the state of IP in the future and then determining the FICPI’s role. The initial conclusions were that:-
The details of the strategic plan are currently being developed for discussion at the ExCo in Florence and as the plan is finalized it will be communicated to the membership at large. return Unregistered design Grace Period Unregistered Design Rights in the European Community can only be secured when first publication occurs within the Community. Previous discussions within FICPI had considered whether this was discriminatory, or reasonable to ensure rights were not granted to designs not introduced into Europe. From a practical point of view, however, it was also recognised that the global nature of the design business often required European designers to first publish the design outside the Community. The resolution urges the adoption of a 3 month grace period similar to that under the Community Design Registration, to permit initial publication outside the Community. more return FICPI has supported the provision of a Grace Period from an inventor's own disclosure as part of the harmonization process. Opposition remains in the UK in particular, arguing that a grace period will introduce legal uncertainty. It has been suggested that an applicant wishes to take advantage of the grace period, he should file a declaration at the time of filing that lists all disclosures believed to be “graced”. FICPI opposes such a declaration as its accurate preparation would be almost impossible and would make the system unworkable. FICPI has considered a “Declaration on Demand” as used previously in Germany, in which a third party may request a Patentee to confirm or otherwise that a publication is graced. The resolution passed in Sydney rejects the concept of a mandatory declaration but permits each country to establish procedures by which a third party can determine from a Patentee whether or not a disclosure is to be graced. more return Mike and Mary Catherine Kirk receive Malcolm Royal Award for Distinguished Service The Malcolm Royal Award for Distinguished Service is presented on an ad hoc basis by the Presidents of Honour to recognize outstanding service to the IP community. The first such award was presented to Jean Jacques Joly at the Paris Congress. The Sydney Exco provided the opportunity to recognize the contribution made by Mike and Mary Catherine, and it was particularly fitting that Maggie Royal was there to make the presentation. Mike’s contribution over the years in the USPTO and as Executive Director of AIPLA is well known. Those who have had the privilege of working with him also recognize that Mary Catherine is an indispensible part of that team. The AIPLA and FICPI have cooperated over the years on a number of initiatives, including the Colloquium in Rome on the backlog when Malcolm was President, and the award is justly deserved. return ASIPI, AIPLA and FICPI have joined forces with WIPO to present a one day seminar on the PCT during the ASIPI Annual Meeting. The purpose of the seminar is to explore the impact of the PCT on national practices and to encourage countries in the Americas to consider joining the PCT. At present, South America represents the largest region where the PCT is not widely available. The presenter will include practitioners from countries in the Americas who have implemented the PCT and government officials from offices in the region. An overview of the PCT will be provided by WIPO. The format will encourage discussion and a frank exchange of ideas. More details are available at www.ficpi.org.return FICPI Japan Symposium – Yokohama, December 4th and 5th, 2008 FICPI Japan has organized a two day symposium that is open to all practitioners, including those from Japanese Industry. The purpose of the symposium is to compare practices in different regions in key areas such as inventive step, enforcement, restoration of rights and new forms of trademarks. High ranking officials from the Japanese Court and the Patent Office will also contribute. The discussion of inventive step will follow the format used in last year's symposium in Beijing and use the “Workmate” as a basis for comparing practices. A full social program has been arranged to allow networking between participants. Full details and registration is available at www.ficpi.org. return FICPI World Congress – Washington June 6th – 10th, 2009 Preliminary details have been released of the Congress in Washington. To allow for travel to other venues in the US, the working program will run from Sunday to Wednesday with a full day outing on the Tuesday. A number of stimulating discussions are included in the working program, including an initial session on whether patents are worth the cost of obtaining them, addressing the backlog, being in business with your client and IP Auctions. Other topics include protection strategies, business method patents, counterfeiting and design protection. After such sessions the final topic is most apposite, maintaining a work/life balance in the virtual World. Venues chosen for the social events are equally exciting. Dinners will be held at the new Air and Space Center, the National Portrait Gallery and for the Gala Dinner, at the national Building Museum where the interior hall soars to 15 stories. More details are available at www.ficpi.org and registration packages will be distributed early in the New Year. return FICPI and Argentine Customs Officials cooperate. The Argentinian Section of FICPI has promoted the establishment of a “Custom Alert System” by which trademark owners may place their trademarks on a watch list with the Customs officials. The owner is then notified if shipments of goods bearing those marks are being processed and can confirm their legitimacy. As a further step, FICPI and Customs officials held a one day conference to promote the system within the pharmaceutical industry. more return To translate or not to translate, that is the Question The implementation of the London Agreement was heralded as simplifying the grant of European Patents. In the short term it has added a further layer of complexity in the decision making process by varying the translation requirements from country to country. At present, 7 countries require no translation, 7 require translation of the claims only and 19 require translation of the entire specification. Grahame Marshall provided the accompanying status, as of the ABC meeting, which is believed to be current. Countries requiring no translation DE, FR, GB, CH/LI, IE, MC, LU Countries requiring claim translation only DK, IS, HR, LV, NL, SE, SI Countries requiring full text translation AT, BE, BG, CY, CZ, EE, ES, FI, GR, HU, IT, LT, MT, NO, PL, PT, RO, SK, TR During the meeting between the FICPI delegation and the USPTO, Pinchus Laufer, who has developed training materials for USPTO Examiners following the KSR decision, provided an overview of how the office will now approach patentability standards. Mr. Laufer provided a one page synopsis that was thought to be of value to practitioners and clearance has been provided to reproduce it below. It is of course a synopsis and not a binding exposition, but nevertheless is believed to be useful. more return FICPI ABC meeting Charleston SC. The American section of FICPI hosted the American, British, and Canadian groups, choosing the historic location of Charleston to introduce participants to southern hospitality. Over 60 attendees enjoyed three days of discussion and varied activities. The now traditional format was followed with working sessions in the morning and social activities in the afternoon. The format allowed a wide range of topics and developments of interest to each country to be discussed and information exchanged. The city of Charleston is a fascinating location steeped in American history, and a pleasant 90 degrees in early July. The social events concluded at the local “picture house”, now converted to a theatre and restaurant, where a demonstration of the dance named after the city convinced attendees that this was not for the faint of heart. An excellent meeting in the finest traditions of the ABC and many thanks to our US hosts. return It is with great sorrow that we have learnt of the passing of Jack Chrystal on September 11th 2008, at the age of 80. Jack was a Member of Honour of FICPI, having served on its Council, and retired partner of Ladas & Parry, Chicago. He was a welcoming and friendly figure at FICPI events and besides his contributions to the more serious discussions, he could be counted on to provide an amusing anecdote at an appropriate time. He will always be remembered by the editor for his attempts to teach members of the English Rugby Team to sing a Barber’s Shop Quartet in the bar of the Harrogate Congress hotel. Jack had a large immediate family of 10 children and 35 grandchildren and his recounting of endeavours to “orchestrate” family gatherings was met with amusement and awe. Our deepest sympathies are extended to his family and to his wife Eleanor at this difficult time. return |
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"Grace Period for Unregistered Community Designs" FICPI, the International Federation of Intellectual Property Attorneys, broadly representative of the free profession throughout the world, assembled at its Executive Committee held in Sydney, Australia from 13 April to 17 April, 2008, passed the following Resolution: Recognising the benefit of the Unregistered Community Design Right, Noting the apparent desire of the legislators to avoid the creation of unregistered rights in Europe for designs that are never disclosed within the geographical area of the European Union; and Noting the frequent need for the first disclosure of designs, even by European design owners, to be outside the geographical area of the European Union; Urges the European Union Legislators to amend the Council Regulation (E.C.) No. 6/2002 of December 12, 2001 on Community Designs to provide a novelty grace period for an unregistered Community design, similar to that allowed for a registered Community design, during the three month period preceding the commencement of the unregistered Community design right. return "Grace Period and Declaration for Patents" FICPI, the International Federation of Intellectual Property Attorneys, broadly representative of the free profession throughout the world, assembled at its Executive Committee held in Sydney, Australia from 13 April to 17 April, 2008, passed the following Resolution: Continuing to support the introduction of a harmonized world-wide 12-month novelty grace period before the priority date, whereby a disclosure of an invention derived directly or indirectly from the inventor during that period shall not be considered as comprised in the state of the art, as urged in earlier FICPI resolutions; Continuing to oppose the requirement for a mandatory declaration of such a disclosure in order to benefit from the grace period; Recognizing that in the course of the current discussions on substantive patent law harmonization some countries maintain that any such disclosure should be considered as not comprised in the state of the art only if it is the subject of a mandatory declaration, while other countries are opposed to any kind of declaration; Noting that some countries already impose on applicants the duty to identify prior art; Resolves that any country may adopt procedures to determine whether a specific disclosure drawn to the attention of an applicant/patentee is derived from the inventor, but may not require a general mandatory declaration. return |
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Training Session in Argentine Customs to deal with Infringements of Pharmaceutical Products. On August 12, 2008 the Argentine Section of FICPI together with the Argentine Customs organized a full day training session to prevent the importation of counterfeit pharmaceutical products. Silvina Tirabassi, General Director of Customs, and Miguel B. O’Farrell, FICPI Delegate, made the introductory speeches, which were followed by presentations made by representatives from Customs, health authorities, Pharmaceutical Security Institute: Fabián Di Risio (Director of Investigations- Customs) In the course of these presentations, the effectiveness of the Customs Alert System was pointed out by some of the speakers. |
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Patentability Standards after KSR Applicant is entitled to a patent unless the Office demonstrates otherwise by a preponderance of the evidence. The Examiner applies the methodology of Graham vs. Deere to arrive at a determination of obviousness. This includes acting as the fact finder to gather necessary evidence to support the determination. Prior to KSR, the Federal Circuit, in an effort to prevent improper hindsight, had set up the TSM (teaching, suggestion, motivation) test as the touchstone of a proper determination of obviousness. In KSR, the Court stated that although TSM is one method, it is not the only rationale that may be relied upon to support a conclusion of obviousness. Furthermore, the Court stated that it was eror to apply TSM in a rigid and formalistic way. To refuse an applicant a patent based on a determination of obviousness, an examiner must provide evidence and a reasoned statement of rejection grounded in the Graham enquiries. The examiner must articulate a reason or rationale to support an obviousness rejection. The Basic Factual enquiries of Graham v. John Deere:
Objective evidence, sometimes referred to as “secondary considerations”, when timely presented by applicants must be evaluated. Some Illustrative Rationales Supporting a case of Prima Facie Obviousness
Examiner Training materials in view of KSR are found at www.uspto.go/web/offices/pac/dapp/opla/ksr/ksr_training-materials.htm. return |
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CET News(full copies of the papers may be downloaded from the library at www.ficpi.org ) WIPO meeting of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications Eighteenth Session, November 2007 (EXCO/AU08/CET/1101) The SCT requested the Secretariat to prepare new documents for the next Session (19th) in relation to the methods of representation and description of non-traditional marks and trademark opposition procedures, containing the following: . Relation of established trademark principles to non-traditional marks; Finally the SCT requested the Secretariat to invite the WHO Secretariat to make a presentation to the next session concerning the application of the relevant WHO resolutions relating to the non-appropriation of proposed and recommended INNs (INN is an International Nonproprietary Name, which identifies a pharmaceutical substance or active pharmaceutical ingredient by a unique name that is globally recognized and is public property). As to the industrial designs, the discussion was based only on the second document and the SCT requested that a revised questionnaire be distributed to members at the end of 2007 with the possibility to file replies before the end of January 2008. return Grace period for unregistered community designs(UDR) EXCO/AU08/CET/1202 Unregistered Community designs were brought into existence by the Community Design Regulation (CDR) on 6 March 2002. They provide protection against copying of the design for a restricted period of three years from first disclosure, and as such are useful for protecting transitory designs and to protect designs which are market tested, before a registered design is applied for. Having previously examined whether the first disclosure of a design has to occur in the European Union for unregistered Community designs to validly exist, this paper puts the case for a short grace period to be attached to Unregistered Community Designs in order for them to properly fulfil their purpose. From enactment, the provisions have attracted substantial discussion as to whether it is required that the first disclosure to be made within the boundaries of the Community for a UDR to exist. Based on current interpretation, it appears to be accepted that a disclosure does have to occur within the geographical boundaries of the Community for UDR to commence. It appears to be widely agreed that a disclosure of the identical design prior to commencement of the unregistered right destroys novelty. Thus, the current legislation results in a position that any disclosure outside the geographical boundaries of the European Community will destroy the novelty of a subsequent UDR that arises from a disclosure within the geographical boundaries of the European Community. Although some commentators have said that the current position is intended to make it harder for non-European based companies to obtain UDR than for European based companies, this does not hold true in the commercial design world. Many industries rely on major international trade shows to launch their latest products, and these occur across the globe. If a trade show occurs in Europe, then all the designs disclosed for the first time attract UDR, whereas if the the trade show occurs outside Europe, then none of the designs attract UDR. Even if it were legitimate for the law to discriminate between European and non-European design owners, on which issue this paper makes no comment, the present wording fails to achieve the suggested objective. A solution may be the addition of short grace period for Unregistered Community Design Rights to the Community Design Regulation. This period would exempt from the prior art for Unregistered Community Design Rights disclosures by the design owner within the grace period. Thus, any disclosure within the grace period outside the boundaries of the European Community would not destroy the novelty of a subsequently commenced Unregistered Community Design Right. return Origin of the 18 Month Publication Period A discussion of the origins of the 18 month period is contained in the WIPO records of the 1970 Washington Conference. The history of the 18 month time period, as presented at the Washington Conference, is summarized as follows. The first reference to an 18 month time period has been traced to a 1956 preliminary report by a patent law revision committee in the Netherlands. This report suggested that patent applications should be laid open to the public within 8 months after the initial searching had been completed. As the initial searching was expected to be completed at 18 months from filing, publication should have occurred at 26 (18+8) months from filing. The patent law committee also suggested that pre-grant publication practices of the Scandinavian countries and the Federal Republic of Germany be taken into consideration when deciding on the appropriate publication time period. By the early 1960s, portions of the Dutch proposal appear to have been referenced by patent law review committees in the Scandinavia countries which make reference to an 18 month pre-grant publication period in the Netherlands (as opposed to the 18+8 month publication period that was actually proposed). Contemporaneous patent law reform discussions in Germany described the 18 month time period as an element of the "Swedish proposal". Subsequent Dutch examinations of Scandinavian and German domestic patent laws would then reveal what appeared to be a regional consensus to adopt an 18 month publication period. Following these discussions, the Netherlands was the first country to formally adopt an 18 month mandatory publication period in 1964, but it would not be the last. The Netherlands actions were quickly followed, and 18 month mandatory publication periods were instituted by Denmark, Finland, Norway, Sweden and Germany in 1968 and by France in 1969. Therefore, by the end of 1969, an 18 month pre-grant publication period was the consensus standard of these seven European nations. The international publication provision of the Patent Cooperation Treaty (PCT), Article 21, was also drafted in the late 1960s. The preliminary publication provision contained in the 1968 draft made no reference to an 18 month publication period; however, the 18 month mandatory publication period appears in the 1969 draft version. No information has been located as to why the 18 month term was incorporated into the 1969 draft. The 1969 version of Article 21 was adopted at the Washington Conference 1970 and therefore incorporated into the published version of the PCT. As a result of its inclusion in the PCT, subsequent attempts by states to harmonize their domestic patent laws with international standards have resulted in the domestic adoption of the 18 month mandatory publication period. return i) Arguments Favoring Pre-Grant Publication A major advantage of pre-grant publication is that it reduces uncertainties involved in product or process clearance searches. If a patent application is not published until it issues to patent, then a company that proposes to introduce a new product or commence using a new process will only be able to evaluate potential infringement issues based on issued patents. Pending patent applications would not be available to be considered. Further, as the pendency period for patent applications is currently increasing in many countries, then the period of uncertainty would be increasing without pre-grant publication. Pre-grant publication shortens this period of uncertainty. It has also been argued that pre-grant publication may stimulate ideas and promote innovation, as future inventors may be inspired by or motivated by the disclosures of the patent applications that become publicly available. For example, patents and patent applications can be valuable technical documentation that can be used to assist in the development of new technologies by documenting process that work or new apparatus that may be used. Further, it has been argued that disclosure of pre-grant applications could reduce inefficiencies caused by duplicate inventions. A company may view the patent applications of its competitors and alter its research and development activities to lines of inquiry that are not being pursued by its competitors. This can result in the avoidance of two companies developing similar technologies and the consequential infringement suits that may arise and cause a delay in new products or processes being commercially adopted. On a similar point, it has also been argued that the early disclosure of advances, which occur due to pre-grant publication, will stimulate new ideas and promote invention in promising fields of research. Early publication will provide a record of promising areas of research and result in additional research being undertaken in such promising areas. Proponents of the adoption of pre-grant publication as part of the laws of the United States have also argued that pre-grant publication is a necessary step toward the international harmonization of patent laws. Further, it has been argued that harmonization may lower trade barriers and may be particularly valuable to United States companies that would otherwise face substantial costs dealing with several different types of application processes. Another argument advanced in favor of pre-grant publication of patent applications by the United States is the elimination of so-called "submarine patents". A submarine patent can be understood as a patent application that takes advantage of pre-grant secrecy (particularly in the U.S.) by maintaining broad claims in an emerging technology area in a pending application for a long period of time. When the particular technology at issue becomes economically significant, the submarine patent "surfaces" and is used to hold "new technologies as economic hostage". Mandatory publication of pre-grant applications can eliminate the threat of submarine patents and increase certainty in the marketplace. return ii) Arguments Against Pre-Grant Publication Some opponents to pre-grant publication have argued that any disclosure of a patent application prior to the grant of the patent is unfair. Specifically, it has been argued that pre-grant publication unfairly destroys the secrecy of an invention and therefore deprives the inventor of his/her trade secret rights should the application fail to issue to patent. The publication of a patent application is tantamount to the publication by a government of the confidential information of the patent applicant. While the patent applicant agrees to this when an application is filed, the patent applicant is provide with the choice of filing for patent protection and agreeing to pre-grant publication or not filing a patent application and risk loss of control of a new technology which can not be maintained confidential on a long term basis. The thoughts of the patent law revision committee in the Netherlands in the 1950’s balanced this by suggesting that publication occur after the search is received. Once the search was considered, a patent applicant would have time to determine if the patent process should be continued or abandoned (in which case a patent application could be withdrawn from publication). It has been argued that the 18 month time period is a disadvantage to small inventors because they often need a longer secrecy period for "consolidation of the invention idea and the completion of its possible applications". For example, early publication of an application can allow "patent flooding" by competitors, especially large corporations. Patent flooding is a practice where competitors attempt to limit the scope of a patent application by filing several subsequent applications "around" the claims of the original. As a result of pre-grant publication, small entities may not be able to protect themselves from "secondary products" created by large competitors from the teaching in a published application of a small entity. Thus a large competitor may be able to work off of the research and development of a small company and be first to launch new products. Other arguments advance in opposition to 18 month pre-grant publication include claims that submarine patents are no longer a significant problem in modern patent systems, and that international harmonization merely for its own sake is not necessarily a good thing. iii) Should The 18 Months Publication Date Be Changed? While the existence of pre-grant publication has been debated, it appears that the selection of the 18 month publication period did not benefit from a thorough debate. Even if there had been a full debate at the time, given the faster rate on product innovation that occurs today, should the publication period be shortened? Possibly, the publication period could be shortened to, say, 12-13 months. Most companies decide whether to invest in patent protection by the end of the Paris convention period. If a company decides to seek patent protection in other countries at that time, then publication could occur at about that time. return |
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Peer to patent examination Patent examination is, and has ever been, a very difficult task. After a thorough research, a deep comparison of patent features with prior art has to be carried out, in order to assess novelty and inventive step. Even very good research can miss a few documents, so that invalid patents, in spite of such a deep work, are sometimes granted. Taking into account this situation, many patent offices (for instance European Patent Office and German Patent Office) provide post-grant opposition proceedings, in order to allow a nullity action with cost savings, since the proceedings are not before a court but directly at the patent office, with a lower level of formalities. However, an examination system, which is able to reduce the number of oppositions, would be preferred. In this view, different approaches have been studied. E.g., the Brazilian patent law does not provide for a formal pre-grant opposition, but up to the end of examination allows any interested party to submit comments and documents which are relevant to the determination of patentability. The United States Patent and Trademark Office, Britain's Intellectual Property Office and the European Patent Office are evaluating a radical change: opening the process up to internet-based collaboration. i) The proposal The system was implemented by the team led by Professor Beth Simone Noveck of the New York Law School. Information about this experiment is available on the site http://dotank.nyls.edu/communitypatent, whereas the system is operative on www.peertopatent.org. A registration is needed to submit patents and to submit prior art documents. Presently a one-year pilot programme has been launched in America on 15 June 2007. It involves mainly computer-related inventions on voluntary basis and the first assignees involved include IBM, Microsoft and Hewlett-Packard. Great Britain should start in a few months. In the first phase, 250 patent applications will be scrutinised with the approval of the Applicants. The full text is posted on the above referenced website and made available to the public. Members of the public who want to participate into this project should sign up. They are thus entitled to participate into a forum, to suggest examples of prior art and vote for the prior art they consider most relevant. A rating of the other participants is being studied. Eventually, the ten pieces of prior art which receive most votes in the peer to patent community perusing each patent are sent to the patent examiners, who decide which pieces are in fact relevant and who, in any case, takes into account the community discussion in assessing novelty and inventive step. ii) Benefits and costs This systems allows to make examiners aware of documents that presently are not easily accessible, like obscure technical journals, conference slides, doctoral theses etc.. This can be particularly true in fields where patenting is fairly new, such as software, biotechnology, financial services and business methods. It is apparent that this new system allows the Examiner to reach a greater number of public prior documents than before, so that the possibly granted patent is a stronger one, which is more difficult to oppose to. A problem connected to this way of proceeding can be in an excessively large number of prior art citations which can be provided, leading to the impossibility to check all of them, so that the backlog could increase hugely. Anyway, the aim of this system is to reduce uncertainty for inventors and unnecessary lawsuits, with a save in costs, because a wider knowledge of prior art may become available and stronger patents can be obtained. Another critical point is that it is not clear how many persons will really volunteer to provide examples of prior art, to join discussions etc., also due to a rather high specialisation level required. Furthermore, there is a concern about possible “vested interests”, which could be involved in such a process. As from FICPI’s point of view, we should also determine to which extent a strategy outlined by a qualified professional to oppose to a patent can be jeopardized by the adoption of a system in which people lacking an expertise in the patent system can advance prior art documents without the appropriate reasoning about their relevance, which may mislead an examiner to consider such document as insubstantial to the determination of patentability. return Representation in European Litigation by patent attorneys EXCO/AU08/CET/1401 The discussions for a pan–European patent jurisdiction gained momentum during the German EU Presidency (Jan 2007/Jun 2007) and resulted in detailed work on a proposal termed “the integrated jurisdictional system for patents”. During Portuguese EU Presidency (Jul 2007/Dec2007), the Working Party on Intellectual Property (Patents) of the EU Council held several meetings where the details of such a system were discussed. Several papers were issued showing the development of discussion, the most recent papers, 7728/08 (“European Union Patent Jurisdiction – Preliminary Set of Provisions for the future legal instrument”; “Current Proposal”), issued on 19 March 2008 and 9124/08 (The Community Patent) of 14 May 2008. i) The main features of the current proposal The Court will consist of local, regional and central divisions as first instance courts and a Court of Appeal as a second instance. The paper describes the competence of the Court and allocation of cases, the planned Rules of Proceedings, including representation, language of Proceedings, procedure before the Court, powers of the Court, decisions of the Court, Appeal, Petition for Review (cassation) to the ECJ (European Court of Justice). The present proposal does not deal at all with the highest qualified and specialised professionals in the present field of law – qualified national patent attorneys. Qualified national patent attorneys have, in many member states, a certified knowledge not only in patent, trademark and design law (and in many other fields of intellectual property), but also certified knowledge in procedural law of the civil and criminal courts in their member state. No other profession has this specialised education and certified knowledge. The certification is safeguarded by objective examination of specialised examination boards. Our profession is not mentioned in the current proposal, although we must have a central role as representatives. Evidently, there is no objective argument to exclude national qualified patent attorneys in the free profession from the unlimited right of representation in this European Jurisdiction system. return |
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“Monitoring and analysis of technology transfer and intellectual property regimes and their use” Validation Workshop in Brussels, 22 January 2008, organised by the European Commission EXCO/AU08/CET/1402 FICPI was officially invited by DG Research to participate at this workshop which had the following major topics: --The Experimental Use Exception. In the present meeting, summaries of various surveys for these topics concerning the current status of these questions in the Member States were presented. Two of these summaries are available under http://www.eutechnologytransfer. eu/downloads.php (“Topical Reports”; besides the “Publishing vs. patenting” and “Experimental Use Exemption”, also the reports “Professor's privilege (Sept. 2007)” and “Prior user rights (Sept. 2007)” contain interesting information). i) Experimental Use Exception The experimental use exemption (research exemption or research defence) allows third parties to use a protected invention or work for experimental purposes without the consent of the right holder. With some exceptions, national laws show no clear pattern regarding the application of the exemption within different categories of IPRs and across the categories of IPRs. It was concluded that this can give rise to a level of uncertainty on the applicability of the exemption and present difficulties for research. The lack of a common European approach to the experimental exception was regarded as not just being simply theoretical, but as potentially problematic for borderline cases such as research tools and clinical trials, both of which are key to innovation and research. Research tools can significantly affect the cost of doing research but a broad experimental use exemption could deprive them of any real value at all. As a conclusion, however, it was stated that there does not appear to be, as yet, evidence that disparities between Member States laws concerning this issue are having a significant impact. ii) IP/TT awareness and training activities at EU higher education institutions. With respect to IP/TT (Intellectual Property/ Technology Transfer) awareness, significant national differences were identified throughout the Member States. Whereas in some countries, awareness has increased, in some member states general knowledge in these topics was not at high level. At university/SME level, the same picture is given. For SMEs throughout the EU, IP is still not considered as a major issue. Interestingly, the study carried out by the European Commission identified the economical university studies as the ones with the highest appreciation of IPRs in the curricula. iii) The Publishing vs. Patenting issue Under this topic the impact on the diffusion of technical and scientific knowledge by virtue of, on the one hand, scientific publications (protected by copyright) and, on the other hand, patents was assessed. The question which activity – publishing or patenting – is more desirable from a knowledge dissemination point of view was also investigated taking into account the different aspects of each activity. It was reported that the traditional view of research activities has changed, however, due to increasing public budget constraints, legislative incentives to patenting, lowered barriers in patenting requirements, new scientific fields prone to patenting, blurred boundaries between basic and applied research and changing views on how industrial research should be performed. What was once a strong dichotomy between basic research at universities and applied research in the industry, has evolved into a dynamic researching setup with increased cooperation between industry and universities, greater attention to applied/patentable research, and new performance metrics for academic researchers. These changes have impacted on the answer to the Commission’s central question for this topic, whether publishing or patenting is more desirable from a knowledge dissemination point of view. From a knowledge dissemination point of view, the following factors were taken into consideration:
In the discussion of this topic, FICPI was able to present its history for fighting for an internationally harmonised grace period for patents, specifically for SMEs and university. return “Future Workload” Study of “The Board 28” of the EPO (a board of the Administrative Council set up under Article 28 EPC) EXCO/AU08/CET/1404 As a result of the “Strategic Debate” about the future of the European patent system, the Administrative Council of the EPO (AC) decided that a study should be carried out "to study the big picture – namely how should the European patent system best deal with future workload”. Therefore, a Board under Art. 28 EPC (“Board 28”) was set up to work on this topic in close contact with all stakeholders and regularly report to the AC. After conclusion of this study by the end of 2007, this study was presented to the AC. Following a positive opinion of the AC on the analysis and the recommendations made in the study, “Board 28” decided to make it accessible to a broader public. The study was therefore published on the website of the EPO with unchanged text. Based on the assessments that:
“Board 28” has developed 5 strategic orientations for dealing with the future workload. They were formulated “against the background reference of the financial framework where cost–effectiveness and cost–efficiency take a central role”. Those 5 strategic orientations were the following:
For each of these strategic orientations, “Board 28” has formulated policy recommendations, which have been supported by the EPO. These actions are the start of a work program to be followed after the Council has now expressed its positive opinion on this study. return EPO Board of appeal decisions on genomics relating to in silico (computer based) analysis and industrial applicability of genes and proteins EXCO/AU08/CET/1502 Examiners at the European Patent Office (EPO) have announced their opinion that applications relating to genomics based on in silico analysis without wet experiments should not be allowed (Siobhàn Yeats, Global Patent Management, October 2001 p.30-32). Now there are some technical board decisions at hand, wherein the industrial applicability of proteins has been decided or suggested by in silico analysis or structural comparison with other known proteins. In cases T 870/04, T 1329/04 and T 0609/02 industrial applicability was denied whereas in T 338/00, T 604/04 and T 0898/05 industrial applicability was recognised. The fact that a function is based on computer-assisted methods rather than on the basis of traditional wet-lab techniques does not mean that it has to be automatically disregarded or excluded from a careful and critical examination. The probative value has to be examined on a case-by-case basis regarding the nature of the invention and the prior art relating thereto (catchwords of T 08998/05). However, for the purposes of industrial applicability according to Article 57 EPC, the skilled person must be able to recognise that the invention has an immediate and concrete benefit. This must be derivable directly from the description, if it is not already obvious from the nature of the invention or from the background art (catchwords of T 08998/05). To have a patent granted on in silico analysis of genes and proteins, the effect of the genes or the proteins should be substantial and credible on the effective date i.e. priority or filing date (T 0609 p.13). Decisions are made on a case basis. Criteria involved for the decision are: inventive step A 56 EPC i.e. providing a non-obvious solution to a technical problem; industrial applicability A 57 EPC i.e. indicating how to exploit the invention, sufficiency of disclosure A 83 EPC and clarity and support A 84 EPC. The John Hopkins case T 1329/04 for example relates to a new protein with 34% homology with the TGF beta family. The EPO found that it was not likely at the priority date that the protein really belonged to this family due to the low homology percentage. No wet experiments were disclosed at the filing date. Only three years after the priority date could the applicants prove that the protein in fact belonged to the TGF beta family. However, this was deemed too late and a patent was not allowed. In case T 604/04 it was disclosed that the polypeptides themselves were respectively 34% and 36% identical to the known IL-8 receptor. The polypeptides were identified as members of the G-protein-coupled super family of receptors, which bind members of the PF4A family of chemokines and, insofar, indicated what their function could be. It was observed that they bear greater similarity to the IL-8 receptor than other receptors. Yet, there was no characterisation of their ligands, and thus the function remained at best incompletely understood. However, taking into account the common general knowledge at the filing date, the board found that chemokines as a family were considered not only to be interesting in fundamental research, but also as important for the pharmaceutical industry irrespective of whether or not their role had been clearly defined. Thus, it was credible on the filing date what their role might be. Inventive step was recognised because the cloning of the genes was not straightforward. return |
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Implementation Status of EC Directive 2004/48/EC on Enforcement of IP Rights - Update The Directive 2004/48/EC on the Enforcement of IP Rights should have been implemented/transposed by the EU member states at the end of April 2006 at the latest. This report is an update of papers EXCO/FR06/CET/1604 and EXCO/CL06/CET/1602 provided at the Paris and Santiago ExCos and gives a fresh picture of the implementation status in countries where relevant information is available, showing still a few countries are late. In 2007, the European Commission launched procedures against five member states as having failed to implement the Directive in their national law: • France The procedure (case C-329/07) has been cancelled after France passed its implementing law in October 2007. • Luxembourg A sanction has been pronounced on February 21, 2008 for failure to implement the Directive (case C-328/07). The current status is that the Directive has been implemented for trademarks and designs through the amendment of the Benelux Convention on Intellectual Property (CBPI) in 2005. However, there has been no progress for patents. No draft bill is apparently pending. • Germany The procedure is still pending (case C-395/07). The implementation process is in progress. There should have been a second and third examination of a Bill at the lower chamber of the German parliament (Bundestag) on April 11, 2008. The Bill will then be passed to the upper chamber (Bundesrat). Should the Bundesrat schedule examination of the Bill in one of its next sessions (planned in April 25 and May 23, 2008), then the implementing law could enter into force on July 1st, 2008. Of course delays can occur if some points raise disagreement. • Portugal The EC procedure is still pending (case C-24/08). However, the Portuguese Parliament has already approved the law transposing the Directive. This law should be published in the Official Journal within the next few weeks, in which case the European Commission proceedings should be cancelled. • Sweden The EC procedure is still pending (C-341/07). It is Possible that a new legislation is passed effective January 1st, 2009, implementing the “right to obtain information” aspect of the Directive. • Other countries It seems that all other member states have complied with the transposition requirements. return WIPO Advisory Committee on Enforcement EXCO/AU08/CET/1606 The WIPO Advisory Committee on Enforcement (“ACE” or “the Committee”) was established by WIPO in 2002 to manage issues related to enforcement of intellectual property rights, including industrial property, copyrights, and related rights. The mandate of ACE is limited to technical assistance in the field of enforcement, which excludes norm setting. ACE held its first session in Geneva in June 2003, and has since held a session in each of the years 2004, 2006, and 2007. ACE has invited its members, as well observers, to each of the four sessions. The members of ACE include all Member States of WIPO, the Paris Union, and the Berne Union, and the observers include all Member States of the United Nations that are not members of WIPO, the Paris Union, or the Berne Union, as well as certain intergovernmental and nongovernmental organizations that are accredited with observer status by WIPO. FICPI has been officially accredited as an observer to WIPO, and therefore may attend ACE sessions. The topics of discussion at the ACE sessions have included coordination, training, and development of enforcement strategies; the electronic exchange of information related to intellectual property enforcement issues; the role of the judiciary and quasi-judiciary authorities, as well as prosecutors, in relation to the enforcement of intellectual property rights; awareness and education, including training, in regard to all areas of enforcement of intellectual property rights; and cooperation and coordination of enforcement efforts at the national, regional, and international levels. return Workshop on Madrid Protocol and Madrid Agreement EXCO/AU08/WOR/2001 and EXCO/AU08/WOR/2rep At the FICPI ExCo in Sydney a workshop was held discussing different aspects of the Madrid Protocol and the Madrid Agreement. The following article contains a condensed version of a briefing paper issued before the workshop and a report from the discussions in the workshop. The working group of the Madrid Union recently completed its work involving changes to the Madrid system. After a series of meetings the Madrid Union Assembly approved the recommended proposals of the working group including repeal of the safeguard clause slated for September, 2008, adoption of a trilateral language regime and a small increase in supplementary fees. The Madrid Union Assembly also followed the suggestion of the working group to proceed with the legal development of the Madrid system to by providing a mandate to consider other issues related to the legal development of the protocol. First, a few facts about the 81 member Madrid system as it currently exists. There was a very modest increase in the number of International registrations granted in 2007 as compared to 2002 with slightly higher growth if applications are considered. The most popular class was class 9 covering computer hardware and software as well as electrical and electronic apparatus. The second most popular class, and top services class, was 35 covering such things as advertising and business management. On average applicants sought protection in two or three classes. On average applicants designated 8 contracting parties. China took the top spot in terms of countries designated followed by the Russian Federation and the US. German entities make the most extensive use of the system and combined with their French counterparts comprise 25% of applicants. The number of US applications rose to 3741 but this remains a very small number relative to the number of applications filed before the USPTO. To put the number in perspective, tiny Switzerland files 2675 International applications. In March FICPI was invited to review a proposal by Marques pertaining to what was termed as “expansion of the protocol”. The supposition was made that the Madrid system was well placed to become the main system for trademark registration and that the system had to be improved to the benefit of users. Marques identified the current deficiency in the failure of users to be able to access information regarding the status of applications in member states. Marques previously proposed that contracting parties send to WIPO, at a minimum, notification of the conclusion of Examination and the progress of the application into the publication period and notification of the grant of protection at the end of the publication period. The new proposal was that the ROMARIN (Read-Only-Memory of Madrid Active Registry Information) database become the central repository for upto date information on international designations. It was suggested that the uploading of the information could be made automatic and that this would “minimize” the workload of the national offices. It was proposed by Marques that “in time the national office might wish to refer to the ROMARIN database for status instead of having the same information in their own databases.” AROPI (L'Association Romande de Propriété intellectuelle) considered the Marques proposal and agreed with it in principal but felt that the vehicle for transmitting the information should not be the ROMARIN database but rather the International Register itself. AROPI was also proposing amendment to the Madrid Regulations so as to allow for the division of an international registration by the holder. The scheme would allow for an applicant faced with a provisional refusal in a designated contracting party to divide its registration so protection could be granted immediately in terms of some of the goods and services with the refusal continuing in respect of others. The question at the heart of the matter might be what is the appropriate place of an international system? More importantly perhaps is how such a system interfaces with National Offices. Papers Tabled by Contracting Parties in Anticipation of the Upcoming Madrid System working Group Several countries recently tabled papers containing proposals to improve the Madrid system. The Australian proposal offers detailed suggestions as to how the process may be improved. More particularly the paper specifies:
The participants of the FICPI-Ex Co workshop represented 9 countries. Of those, Argentina, Canada and Chile have not joined the Madrid System yet, although efforts have been made by WIPO to encourage participation of these countries. There is certainly debate and consideration of the Madrid system in these countries. Canada appears somewhat more interested than the South American countries, but there is some concern about cost versus benefit to a very small number of users as well as fear of decrease in national filings. Australia seems to be generally happy about the Protocol whereas companies in the USA initially appear to be a bit more reluctant to encourage clients use the Madrid system. CTM and national filings is the most common way that client needs are met. The Protocol has become popular in Singapore. Switzerland is one of the oldest members of the Madrid System and has also joined the Protocol. A majority of the Swiss companies engaged in international trade use the Madrid System even if as few as two countries are designated. The Protocol has recently been more and more frequented also by the Nordic countries and is cost-effective if more than 2-3 countries are designated. One reason for the increased popularity is the possibility of designating CTM in the Madrid Protocol. In the long run it is efficient to have one registration for several countries, with just one renewal every 10 years. Joining the Protocol has resulted in more consulting for the Attorneys, more watching services resulting in oppositions and/or negotiations with other parties. National designations also have to be taken care of after provisional refusals and/or oppositions. The members with more extensive knowledge of the Madrid system explained several aspects of the system not apparent to members not signatories to either the Agreement or the Protocol. It was felt that there was a very real need to encourage improvements to the current system before considering major changes to the regime. For example it was felt that there was an inexplicable delay in recording the status of applications in spite of the fact that the National Office had provided the information to WIPO. The Marques’ proposal might have some merit provided that the risk of burden to the local offices is minimized. It was felt that further understandings regarding details of the proposal were needed before a position could be developed. The same was true of the AROPI proposal regarding allowance for the division of an international registration by the holder. Again, more must be known about this proposal since some countries do not currently permit the division of applications. The conclusion from the workshop is to await any further action or recommendation from FICPI until Papers tabled by i.e. Australia, Japan and Switzerland have been evaluated and there has been the opportunity for further debate and exchange amongst members, particularly from those from countries which make extensive use of the Madrid system. At a minimum it was felt that we should advocate for improvements to the system in terms of making available on a timely bases the information received from national offices. return |
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