FICPI is pleased to provide you with this report on the Executive Committee meeting held in Munich from September 5 - 8, 2010. In this Newsletter, you will find a summary of some of the key reports and papers delivered to the ExCo, and links to the documents themselves. There is also a list of the principal CET papers that are now open for your review, and a link to those documents. Finally, at the end of this newsletter, is a link to a pdf file that contains all of the reports referred to in this paper.
Please let us have any comments or suggestions you may have for this or other FICPI communications - write to communications@ficpi.org

In his report, Peter reports on the activities of the Bureau since the Buenos Aires ExCo, including the work done by the Bureau, the Secretariat and FICPI's commissions upon learning, in February, that SPOF, the Swedish Institute of Patent Attorneys, was considering relinquishing its position as the Swedish Association within FICPI.  Many people worked hard to prevent such a decision, creating a “FICPI Brochure” extolling the aims, virtues and successes of our Federation for circulation to the membership in Sweden.  However, our efforts were not successful, and the ExCo was asked to establish a new FICPI Association in Sweden.

Eric reports on  CET activities since the Buenos Aires Executive Committee meeting, and the disruption to planned CET activities caused by the Icelandic volcano. This forced cancellation and rescheduling of the CET meeting scheduled on April 24 and 25, as well as scheduled meetings in Brussels (European Commission and CEPLIS) and in Geneva (WIPO and WTO).

A rescheduled CET meeting was organized in Paris on June 14 and 15, 2010 to plan the CET portion of Munich ExCo; a total of nearly 40 papers were prepared and provided to the delegates.

The CET attended or gave substantial input to several meetings with other IP organizations including the WIPO Standing Committee on the Law of Patents (SCP), the OHIM User’s group; and the WIPO meeting of the Standing Committee on Trademarks and Designs in Geneva from June 30 to July 2, 2010 (cf. papers CET/1102 and CET/1202).

The CET will be represented at a number of future meetings including meetings with SIPO, the JPO, the USPTO and WIPO.

Finally, the CET was, as usual, busy in the preparation of resolutions for consideration by the ExCo (details below) and workshops for the ExCo members.

For Eric’s complete report, please click here.

 

The ExCo passed three important resolutions. The first dealt with the ability of an application to submit test results after the date of filing of an application, noting that objections to allowability or validity of a patent application or patent are always raised after the date of filing, and often based on prior art not known to the applicant at the time of filing. The ExCo urged that all authorities tasked with the examination or evaluation of a patent application or patent take account of any test results that were not inconsistent with the content of the application, submitted after the filing date of the application in response to any objections to allowability or validity.

The second resolution referred to FICPI's resolution (Berlin, 2003) that the Patent Law Treaty (PLT) serve as a model for those countries that are not yet contracting parties, and noted that the PLT had been ratified by only a minority of contracting parties. FICPI urged all countries, whether they intended to ratify the PLT or not, to adopt provisions allowing at least for (a) relief in respect of time limits and (b) reinstatement of rights in accordance with articles 11 and 12 and rules 12 and 13 of the PLT respectively.

The ExCo's third resolution dealt with second (or further) medical uses of a known compound or composition and expressed concern that some countries exclude second (or further) medical uses of a known compound or composition from patentability. The Resolution emphasized the importance of affording patent protection for second (or further) medical uses to encourage the   development of new medicines and the improvement of public health and to that end resolved that no country should exclude from patentability second (or further) medical uses.

For the full text of the Resolutions, please go to http://www.ficpi.org/libraryframe.html.

The Regulations under the Singapore Treaty of 2006 referred to a Three-Dimensional Mark [Rule 3(4)], a Hologram Mark, Motion Mark, Color Mark, Position Mark [Rule 3(5)],or a non-visible sign [Rule 3(6)], but left it to national law to deal with the requirements for reproductions of the mark and details concerning the mark.  The Singapore Treaty Assembly in September/October 2009 decided to set up a Working Group to review Rule 3(4) to (6) with a view to aligning the wording, where possible, with “Areas of Convergence on Representation of Non-Traditional Marks” that had been agreed by the SCT in 2008.  The Secretariat prepared a document STLT/WG/1/2 for the Working Group meeting, that can be accessed at http://www.wipo.int/edocs/mdocs/stlt/en/stlt_wg_1/stlt_wg_1_2.pdf

After detailed discussions, in which FICPI made various interventions, wording was agreed for each of paragraphs:

• Rule 3(4) Three-Dimensional Mark
• Rule 3(5) Hologram Mark
• Rule 3(6) Motion Mark
• Rule 3(7) Color Mark
• Rule 3(8) Position Mark
• Rule 3(9) Sound Mark
• Rule 3(10) Mark Consisting of a Non-Visible Sign other than a Sound Mark

The Working Group agreed on the text as revised and further agreed to recommend to the Singapore Treaty Assembly that the revised Rules be adopted, with November 1, 2011 as the date for entry into force. The revised text is attached to the Summary by the Chair at available at http://www.wipo.int/edocs/mdocs/stlt/en/stlt_wg_1/stlt_wg_1_3.pdf .
The Singapore Treaty Assembly in September 2010 approved the changes to the Regulations.

Although the Working Group stepped back from some of the more applicant-friendly provisions of the “Areas of Convergence” document, the success in reaching agreement on even a small part of an International Treaty is very welcome at WIPO. 

The complete text of the ExCo Paper (CET-1101) can be found here.

Double patenting objections from the Examining Divisions of the EPO can create increasing and unnecessary burdens and costs for applicants. Especially in Communications concerning divisional applications, the Examining Divisions often make double patenting objections based on their interpretation of Art. 125 EPC and Art. 60 (1) EPC. This practice of the Examining Divisions is unfortunately also explicitly contained in the Examination Guidelines.

The decision practice of the Boards of Appeal is, however, in clear contrast to the practice of the Examining Divisions (see the most recent decision T 1423/07, rejecting the presence of a basis for double patenting rejections in the EPC).

This practice of the Examining Divisions is not covered by the EPC, but is a question of national law of the EPC Member States. During the Diplomatic Conference leading to the EPC 1973 the topic of double patenting was discussed; it was, however, decided not to adopt any specific law regulating double patenting in the EPC.

ExCo Paper EXCO/DE10/CET/1406 by Daniel Alge summarises current case law of the Boards of Appeal of the EPO and the specific law stipulations. It demonstrates that since double patenting is a question of national law of EPC Member States, and not part of the EPC, objections with respect to double patenting in the EPO are not justified.

The EPO is therefore urged to correct the Examination Guidelines by deletion of paragraphs C-IV, 7.4 and C-VI, 9.1.6 (these paragraphs relate to the double patenting issue) and to instruct examiners to cease from providing double patenting rejections in Communications under Art. 94(3) EPC.

On the other hand, if double patenting is regarded as a major problem which must be solved on the EPO level, the EPC should be amended to permit such objections, without relying on erroneous interpretations of the Articles of the EPC.

However, it appears that the Member States have developed suitable instruments for coping with any problems of double patenting, making use of the flexibility in dealing with this question that arises from the use of national laws and that is appreciated by the Member States.

To read Daniel's paper (CET-1406), please click here.

 

An amendment to Rule 36(1) EPC, which came into force on 1 April 2010, introduced a cut-off date for the filing of voluntary and mandatory divisional applications, namely 24 months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued.

This first communication had been identified to include a "Communication under Art. 94(3) EPC”. (For an EPC presentation on this new Rule, go to http://tinyurl.com/2aaxfwx.)

In an unprecedented manner, many influential user groups, including FICPI, urged the EPO to carry out, at a minimum, at least the most urgent correction of this Rule, namely the inclusion of this reference to Art. 94(3).

At a meeting of SACEPO (the Standing Advisory Committee before the European Patent Office) on 1 July 2010, the CIPA proposed amendments to this Rule that were supported by FICPI (based upon provisional approval of FICPI's position by the FICPI Bureau). FICPI's opinion was passed on to the EPO Liaison Committee of CIPA by Liz Dawson of CET4, who was representing FICPI–UK in the Committee.

The Statement (which was subsequently ratified by the Munich ExCo) read:

"Taking current Rule 36(1) EPC as a starting point, FICPI supports the rewording of this rule as proposed by the CIPA in the appended document, for the sake of improving legal certainty in the computation of the term for filing divisional applications.

"However, FICPI continues to believe that strong restrictions on the filing of divisional applications such as those implemented by current Rule 36(1) EPC are inappropriate, and that the original wording of Rule 36(1), allowing to file divisionals at any time during the pendency of an earlier application, should be restored."

 

 

In accordance with a long-standing FICPI tradition, the Secretary General addressed the Gala Dinner at the ExCo on the relationship of FICPI and its members.

"No doubt without FICPI we would also continue to travel the world and make good friends from other countries; IP is after all an international business.  But who would speak for us? Who would represent our views as private practitioners when changes were proposed, especially internationally, that would have a profound effect on the users? Who would governments and organisations turn to for counsel when they wished to make changes? There is no doubt that it would be unwise to amend the IP system without consulting - and listening to - the free professional who is able to take an expert view, rooted in deep experience of use of the systems in many different countries, with many clients having many different needs over many, many years.  Civil servants may feel they are in control when it comes to making changes in law or practice, but the system does not exist for their benefit, any more than it does for us, and there is no one more knowledgeable of the operation of the IP system or more able to predict the likely effect of proposed changes than the independent professional, and that means FICPI.

“There is no FICPI without the members of FICPI.  There is no point asking, "What can FICPI do for me?" because there is no FICPI other than you.  The real question is "What does FICPI help me to do?"  And that is why FICPI needs you.  Without you, there is no FICPI.”