March 26, 2010 - FICPI's New Look, President’s Report, ExCo resolutions, Fees for SMEs & PROs...
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FICPI's Executive Committee, including delegates and sub-delegates from many member countries, met in Buenos Aires from January 11 - 14, 2010. One of the key reports to the ExCo was the President’s Report, delivered to all delegates by FICPI’s President, Peter Hunstman. Peter’s report, which you will find here, dealt with many topics of interest to all FICPI members, including the 2012 Congress in Melbourne, visits of FICPI representatives to the USPTO, the JPO, OHIM and WIPO’s Global Symposium of IP Authorities, as well as to a number of local and regional meetings in Argentina, China and Sweden. Your representatives also met with the JPAP and IP India. (Detailed reports on these visits will be coming to you shortly). FICPI’s continued leadership in education and training were emphasized in Peter’s discussions of the SEAD and Euro SEAD courses, and of FICPI’s efforts to improve training in developing countries. For the full report click below.
In Buenos Aires, the ExCo passed six important resolutions, three of them based on principles agreed at the June, 2009 Washington Congress. The links here are to the English language versions of the resolutions; the resolutions in all 3 official languages can be found at:
The first resolution, based on principles agreed at the Washington Congress and following a resolution passed at Newport Beach in 2002, asked patent offices to consider adopting or maintaining a regime of reduced official fees to facilitate access to patents by SMEs and PROs, to provide simple and practical criteria for determining eligibility to pay such fees and to include remedies against incorrect payment of such reduced fees.
The ExCo acknowledged the on-going current plurilateral negotiations on an Anti-Counterfeiting Trade Agreement (ACTA), but urged that these involve public consultation with all stakeholders of the intellectual property system, including qualified intellectual property professionals.
The third resolution recognized the growing tendency of patenting authorities in some countries to provide for deferred examination as a way of reducing backlogs of unsearched and unexamined patent applications. FICPI expressed its concern that deferral of examination generally leads to legal uncertainty, both for applicants and third parties. The Resolution opposed the introduction of deferred examination as a backlog-reducing measure, but recognized that an early-published search report would enable third parties to assess the likely outcome of any eventual examination. FICPI urged any patenting authorities that provide or intend to provide for deferred examination to complete the search and publish the search report as a matter of priority; and to permit third parties to request examination for applications where examination has been deferred.
The ExCo addressed the so-called PCT Roadmap in a resolution regarding attempts to strengthen the international phase of PCT applications by including, at the applicant's request, a supplementary search performed by at least one other ISA within the current overall time frame, while coordinating any additional search and examination activities at the national/regional with those already made by the PCT Authorities and any other designated Offices. ::read resolution
Pre-Grant Publication
In a fifth resolution, the ExCo urged patent granting authorities, particulary the USPTO, to publish all applications for patent in the USA no later than 18 months from the filing date or first priority date, and to establish a system of expedited examination and grant to address the concerns of those currently using the limited exemption. FICPI continued to advocate a harmonized world-wide 12-month novelty grace period and the introduction of a "first-inventor-to-file" system in the USA, regardless of any changes in the USA's limited exemption from pre-grant publication.
Searches in National/Regional Phases of PCT Applications
Finally, the question of additional searches by was dealt within a resolution urging that national and regional designated/elected Offices of PCT Contracting Parties conduct only such additional searches as are truly supplementary to the searches performed during the international phase and that such searches and examination results be made easily available to the public and other patent offices on the Internet.
At the ExCo, CET Group 3 presented a paper authored by Andrew Meikle (US) and Martin Bensadon (AR) on the patentability of second (or further) medical uses. The authors note that research into additional medicinal or veterinary uses of currently marketed drugs and previously known substances is a very important part in the R&D activities performed by the pharmaceutical industry, and that some countries do not provide patent protection for new medical uses of known substances. For example, a second medical use of a known substance is deemed in some countries as not being inventive or as constituting an unpatentable therapy method, irrespective as to the form of the claim. Ivan Ahlert provides this report on the CET Group 3 paper.
FICPI Awaits The US Supreme Court's Decision in Bilski
Over the past two years FICPI has presented amicus curiae briefs on the case of In re Bilski before both The United States Court of Appeals for The Federal Circuit and The Supreme Court of the United States. In this paper, Mac Waldbaum (US) explains the issue that has perplexed the Courts for some time now, namely how to address patent claims to innovative subject matter that is derived primarily from the mind, in many cases described as business method patents. In Bilski, where the claims were to a method of trading commodities, the Federal Circuit enunciated the "machine and transformation" test or rule, which requires claimed subject matter to include a "machine," somewhat undefined, or a transformation of an article of commerce, also broadly but not yet clearly defined. Generally speaking such a rule is the death knell to business method patents and causes even greater concern for such people as software developers and other methods, such as in medical processes, where innovation occurs from understanding certain medical procedures (or methods). The Federal Circuit test has been roundly criticized. The solutions proposed by FICPI are outlined in this paper.
FICPI's Participation in the EC Study on the overall functioning of the Trade Mark system in Europe
On 22nd July 2009 the European Commission issued a Questionnaire presenting two sets of questions focused on the links between the Community trade mark system and the national trade mark systems and the functioning of the Community trade mark regime and OHIM. CET Group 9 prepared a response to this questionnaire, in conjunction with Andrew Parkes (IE), FICPI Special Reporter for Trademarks and Designs, bearing in mind previous FICPI positions before the OHIM, and presented this response to the ExCO. FICPI's response focused on the importance of building a Community Trademark that is valuable and realistic in each of the 27 countries as well as the CTM territory as a whole. Elia Sugrañes (ES) reports on FICPI's response to the EC.
Domain Name News: New Top Level Domains and the protection of prior rights
The 36th international public meeting of ICANN (the Internet Corporation for Assigned Names and Numbers - the global organisation responsible for the domain name system of the Internet) - was held in Seoul, Korea in October 2009. The meeting was well attended with an audience of more than 1 000 participants from all over the world. Petter Rindforth (SE), FICPI CET Special Reporter (Domain Names) attended the meeting and provided this summary to the Buenos Aires ExCo. Prior to the meeting, ICANN had posted what it called "two milestone documents for the introduction of new top-level domains", namely i) The Proposed Final Implementation Plan for the introduction of country-code Internationalized Domain Names (IDNs) - better known as the Fast Track, and ii) the 3rd version of the draft Applicant Guidebook ("the DAG") - the instruction manual for those requesting a generic top-level domain (gTLD).
For the complete text of the CET papers referred to in the 4 articles above, and of all other CET papers prepared for the Buenos Aires ExCo, please go to www.ficpi.org, click on Library, and look under ExCo Papers for the CET Papers from the ExCo Buenos Aires.
::visit www.ficpi.org > click "Library" > look under "ExCo Papers" for "CET Papers" from ExCo Buenos Aires
ExCo Workshop #1 - Design and Trademark Protection for Computer Generated Designs.
A well attended workshop received presentations from Robert Katz (US) and Coleen Morrison (CA) on design and trademark protection for computer generated designs such as GUI's, icons and typefaces, and factors to be considered in determining the form of protection to be pursued. See Stephen Perry's (CA) workshop report for full details.
Lennart Karlström (SE) led a discussion on the attempts by some patent offices to deal with the ever-increasing back log of unprocessed patent applications by providing for deferred examination. David Bannerman's (GB) report of the workshop summarizes the views of those present.
