PROGRAMME at a glance

FICPI - APAA JOINT SYMPOSIUM
NEWPORT BEACH, USA, 15-17 March 2002
WORKING PROGRAM

DAY 1

OPENING CEREMONY AND ADDRESSES - PLENARY SESSION
Moderator: Mr. R. Stewart, President, FICPI U.S. Section
Speakers:
Mr. Myung Shin Kim, President, APAA
Mr. Malcolm Royal, President, FICPI

P1.   UDRP IN DOMAIN NAMES - A MOCK ARBITRATION PROCEDURE - PLENARY SESSION

What is a "pattern of bad faith" and how do you show it and where do you search? What do you do when there is a registration "in bad faith" but no "use"? What is a sufficient "color of right" to successfully defend in a UDRP - is it still sufficient, even if you are clearly a trademark infringer? These, and other questions will be raised and answers suggested as the participants argue over "bad faith Domain Name Registration" based on a fact situation designed to highlight the UDRP case law of significance and the practical tips you need to put together a solid UDRP case.

Panel:
Ms. Colleen Morrison (Canada)
Mr. Eric Wilbers (WIPO)
Mr. Yoshio Kumakura (Japan)
Mr. Joseph R. Reh (USA)

PATENTS (P) TRADEMARKS (T)

P2.   WHOSE SKELETONS ARE THEY ANYWAY?
MANAGING YOUR FILES FOR DISCOVERY

Is there an inherent conflict between the interests of an intellectual property attorney wishing to keep complete records of his/her advice and preparatory notes and those of a client who desires that potentially damaging documents should be removed from the file to preclude their discovery in possible litigation? A record the attorney may want to keep to defend his or her actions against possible claims of negligence may well be a liability to the client. How should we manage our files - including those relating to IP rights in other jurisdictions than our own - to strike an appropriate balance?

Moderator: Mr. Willem Schuurman (USA)
Speakers:
Mr. Kiyoshi Muraki (Japan)
Mr. D. Laufhütte (Germany)

T2.   MADRID PROTOCOL - AN INFORMED VIEW ON THE MERITS AND DIFFICULTIES

The Madrid Protocol has functioned for many years in a number of countries. There is renewed interest in the system with a number of countries recently joining or actively considering joining the Protocol. How does the system work? What are the risks and the benefits? What effect will it have on your practice and how do you advise your clients? Those who have experienced the transition will explain all.

Moderators: Mr. Ken.J. McInnes (Australia)
Speakers:
Mr. Tee-Jim Tan (Singapore)
Mr. Luis Hernando de Larramendi (Spain)

P3.   GRACE PERIOD AND FIRST TO FILE

In most countries, the entitlement to a patent is determined by a race to the patent office otherwise known as "first to file." Countries operating under a "first to invent" system have traditionally offered a grace period for the inventor's own disclosure. Model harmonized laws proposed a grace period with a "first to file" system and this has been adopted by a number of countries. There has recently been interest in Europe in providing a grace period, but this has met with resistance as users strive for "legal certainty." Does a grace period offer benefits without increased uncertainty? How is it integrated with a "first to file" system, and how does it differ from practice under a "first to invent" system?

Moderator: Mr. Ohtsuka, Fumiaki (Japan)
Speaker:
Mr. Robert Mitchell (Canada)
Mr. Leon Allen (Australia)

T3.   PRACTICE BEFORE OHIM - THE COLLISION OF PRE-EXISTING RIGHTS IN A REGIONAL SYSTEM

Do we like the trend or do we feel cheated? Is OHIM's case law in line with traditional doctrine? Will it change Europe's ideas about how to judge similarity? Does it have a changing impact on other concepts? Will existing rights be diminished? Does the reasoning expressed support new views? Can harmonization of European trademark practice be foreseen along the lines now partly distinguishable? Is the practice of OHIM's opposition divisions to be applauded or criticized?

Moderator: Mr. Gonzalo de Sampaio (Portugal)
Speakers:
Mr. Terry Johnson (UK)
Mr. Andrew Parkes (Ireland)

P4.   THE NOVELTY OF INVENTIVE BUSINESS METHODS - IS A TECHNICAL EFFECT NECESSARY FOR PATENTABILITY?

We all have clients with "bright ideas" for new business schemes and nowadays the majority of those focus on the Internet. Often the details for implementing the scheme have not been considered, let alone accomplished, but are dismissed as "routine programming." Many clients of this kind are individuals looking for a financially attractive, early "exit route". How should we advise such clients? What protection is currently available and how should we write the claims? This session will examine this globally common situation through consideration of real examples.

Moderator: Mr. David Merrylees (Brazil)

Speakers:
Mr. Man-Gi Pak (Korea)
Mr. J. Burkowitz (USA)

T4.   UTILIZING CUSTOMS FOR COMBATING COUNTERFEITING

The European Commission has proposed an action plan for strengthening the fight against counterfeiting and piracy, and improving the means for enforcing intellectual property rights. How successful are the existing measures for checking counterfeit and pirated goods at external borders? How do they compare with measures available in other parts of the world? What lessons can be learned? What practical improvements are needed?

Moderator: Mr. Boonma Tejavanija (Thailand)
Speakers:
Mr. Miguel O'Farrell (Argentina)
Ms. Ella Cheong (Hong Kong)

DAY 2

PATENTS (P) TRADEMARKS (T)

P5.   INVENTIVE STEPS AND OBVIOUSNESS IN ASIA, EPO AND THE U.S.A. - A COMPARISON OF THE CRITERIA FOR DETERMINING NON-OBVIOUSNESS

"Day is day and night is night but who is to say when day begins and night ends." Different countries have established different standards for inventiveness. These differences will be examined using practical examples.

Moderator: Mr. Motohiko Fujimura (Japan)
Speakers:
Mr. T. Q. T. Tsai (Taiwan)
Mr. Maxim Waldbaum (USA)
Dr. Julian Crump (UK)

T5.   SURVEY AND OTHER EVIDENCE IN TRADEMARK CASES

Evidence in trademark cases may be directed to reputation, secondary meaning, likelihood of confusion or dilution. How can such evidence be collected? How is it best presented to the Court or other tribunal? What are the strengths and rules of survey evidence? Are there alternatives?

Moderator: Mr. K.T.S. Tulsi (India)
Speakers:
Mr. Douglas Deeth (Canada)
Mr. Rogelio Vinluan (Philippines)

P6.   REVISION OF THE PCT, THE EPC AND THE COMMUNITY PATENT PROPOSAL

Changes are proposed for the PCT, EPC and the introduction of a Community-wide patent. New procedures for prosecution, designation and enforcement are contemplated. The panel will provide an up-to-the-minute discussion of these changes and their impact on applicants.

Moderator: Mr. David Bannerman (UK)
Speakers:
Mr. Seong-Ki Kim (Korea)
Mr. Jan Modin (Sweden)

T6.   CONTRIBUTORY INFRINGEMENT IN ELECTRONIC MEDIA - THE NAPSTER CASE

The "Napster" technology made music available over the Internet, to the joy of the general public and the horror of the owners of the copyrights. The Internet service provider is caught in the middle as a "host" for the activities of others. What lessons can be learned from this case for liability and infringement over the Internet.

Moderator: Mr. Q. Todd Dickinson (USA)
Speakers:
Mr. Alban Kang (Singapore)
Mr. Navin Khanna (Canada)

P7.   PRIOR DISCLOSURE IN ELECTRONIC FORM - TRANSIENT PRIOR ART

A vast amount of technical information is now published on the Internet. Some is readily accessible, while much is virtually impossible to find without directions. Many websites are regularly updated or disappear overnight. How much of this electronic information is prior art? Can it be relied upon in legal proceedings? How should we approach disclosures on the Internet, and what is needed to establish its probative value?
Moderator: Mr. S. F. Wong (Malaysia)
Speakers:
Mr. Jjeung-Hoon Heo (Korea)
Mr. R. Danny Huntington (USA)

T7.   EXTRAORDINARY TRADEMARKS - PROTECTION OF 3D, COLOR, SMELL AND SOUND

What level of distinctiveness is required for protection of an extraordinary trademark? The European Court of First Instance has been asked to consider a series of appeals from the OHIM concerning 3D marks. What criteria are applied in other parts of the world? When is a single color or simple color combination distinctive? Can a smell or sound really be represented graphically? What scope of protection is obtained by registering one of these extraordinary trademarks?

Moderator: Mr Nachman Cohen-Zedek (Israel)
Speakers:
Mr. Hiromichi Aoki (Japan)
Mr Bruce O'Connor (USA)

P8.   PRACTICAL DIFFICULTIES OF U.S. CLAIM INTERPRETATION - A JUDGE'S VIEWPOINT - PLENARY SESSION

We are used to presenting cases to the courts or advising on how they might be viewed, but what is the view like from the other side of the bench? Three distinguished judges from different courts in the U.S.A. will provide their insight as to the difficulties they encounter in dealing with the complex issues of interpretation of claims, due regard to the file history, equivalents and even, perhaps, the use of plain English.

Moderator: Mr. Raymond C. Stewart, President, FICPI U.S. Section
Speakers:
Hon. Paul R. Michel, Court of Appeals for the Federal Circuit (USA)
Hon. Ronald M. Whyte, U. S. District Court for the Northern District of California (USA)
Hon. Paul J. Luckern, Administrative Law Judge, International Trade Commission (USA)

DAY 1
OPENING CEREMONY AND ADDRESSES - PLENARY SESSION Moderator: Mr. R. Stewart, President, FICPI U.S. Section Speakers: Mr. Myung Shin Kim, President, APAA Mr. Malcolm Royal, President, FICPI
P1. UDRP IN DOMAIN NAMES - A MOCK ARBITRATION PROCEDURE - PLENARY SESSION What is a "pattern of bad faith" and how do you show it and where do you search? What do you do when there is a registration "in bad faith" but no "use"? What is a sufficient "color of right" to successfully defend in a UDRP - is it still sufficient, even if you are clearly a trademark infringer? These, and other questions will be raised and answers suggested as the participants argue over "bad faith Domain Name Registration" based on a fact situation designed to highlight the UDRP case law of significance and the practical tips you need to put together a solid UDRP case. Panel: Ms. Colleen Morrison (Canada) Mr. Eric Wilbers (WIPO) Mr. Yoshio Kumakura (Japan) Mr. Joseph R. Reh (USA)
PATENTS (P)	TRADEMARKS (T)
P2. WHOSE SKELETONS ARE THEY ANYWAY? MANAGING YOUR FILES FOR DISCOVERY Is there an inherent conflict between the interests of an intellectual property attorney wishing to keep complete records of his/her advice and preparatory notes and those of a client who desires that potentially damaging documents should be removed from the file to preclude their discovery in possible litigation? A record the attorney may want to keep to defend his or her actions against possible claims of negligence may well be a liability to the client. How should we manage our files - including those relating to IP rights in other jurisdictions than our own - to strike an appropriate balance? Moderator: Mr. Willem Schuurman (USA) Speakers: Mr. Kiyoshi Muraki (Japan) Mr. D. Laufhütte (Germany)	T2. MADRID PROTOCOL - AN INFORMED VIEW ON THE MERITS AND DIFFICULTIES The Madrid Protocol has functioned for many years in a number of countries. There is renewed interest in the system with a number of countries recently joining or actively considering joining the Protocol. How does the system work? What are the risks and the benefits? What effect will it have on your practice and how do you advise your clients? Those who have experienced the transition will explain all. Moderators: Mr. Ken.J. McInnes (Australia) Speakers: Mr. Tee-Jim Tan (Singapore) Mr. Luis Hernando de Larramendi (Spain)
P3. GRACE PERIOD AND FIRST TO FILE In most countries, the entitlement to a patent is determined by a race to the patent office otherwise known as "first to file." Countries operating under a "first to invent" system have traditionally offered a grace period for the inventor's own disclosure. Model harmonized laws proposed a grace period with a "first to file" system and this has been adopted by a number of countries. There has recently been interest in Europe in providing a grace period, but this has met with resistance as users strive for "legal certainty." Does a grace period offer benefits without increased uncertainty? How is it integrated with a "first to file" system, and how does it differ from practice under a "first to invent" system? Moderator: Mr. Ohtsuka, Fumiaki (Japan) Speaker: Mr. Robert Mitchell (Canada) Mr. Leon Allen (Australia)	T3. PRACTICE BEFORE OHIM - THE COLLISION OF PRE-EXISTING RIGHTS IN A REGIONAL SYSTEM Do we like the trend or do we feel cheated? Is OHIM's case law in line with traditional doctrine? Will it change Europe's ideas about how to judge similarity? Does it have a changing impact on other concepts? Will existing rights be diminished? Does the reasoning expressed support new views? Can harmonization of European trademark practice be foreseen along the lines now partly distinguishable? Is the practice of OHIM's opposition divisions to be applauded or criticized? Moderator: Mr. Gonzalo de Sampaio (Portugal) Speakers: Mr. Terry Johnson (UK) Mr. Andrew Parkes (Ireland)
P4. THE NOVELTY OF INVENTIVE BUSINESS METHODS - IS A TECHNICAL EFFECT NECESSARY FOR PATENTABILITY? We all have clients with "bright ideas" for new business schemes and nowadays the majority of those focus on the Internet. Often the details for implementing the scheme have not been considered, let alone accomplished, but are dismissed as "routine programming." Many clients of this kind are individuals looking for a financially attractive, early "exit route". How should we advise such clients? What protection is currently available and how should we write the claims? This session will examine this globally common situation through consideration of real examples. Moderator: Mr. David Merrylees (Brazil) Speakers: Mr. Man-Gi Pak (Korea) Mr. J. Burkowitz (USA)	T4. UTILIZING CUSTOMS FOR COMBATING COUNTERFEITING The European Commission has proposed an action plan for strengthening the fight against counterfeiting and piracy, and improving the means for enforcing intellectual property rights. How successful are the existing measures for checking counterfeit and pirated goods at external borders? How do they compare with measures available in other parts of the world? What lessons can be learned? What practical improvements are needed? Moderator: Mr. Boonma Tejavanija (Thailand) Speakers: Mr. Miguel O'Farrell (Argentina) Ms. Ella Cheong (Hong Kong)

DAY 2
PATENTS (P)	TRADEMARKS (T)
P5. INVENTIVE STEPS AND OBVIOUSNESS IN ASIA, EPO AND THE U.S.A. - A COMPARISON OF THE CRITERIA FOR DETERMINING NON-OBVIOUSNESS "Day is day and night is night but who is to say when day begins and night ends." Different countries have established different standards for inventiveness. These differences will be examined using practical examples. Moderator: Mr. Motohiko Fujimura (Japan) Speakers: Mr. T. Q. T. Tsai (Taiwan) Mr. Maxim Waldbaum (USA) Dr. Julian Crump (UK)	T5. SURVEY AND OTHER EVIDENCE IN TRADEMARK CASES Evidence in trademark cases may be directed to reputation, secondary meaning, likelihood of confusion or dilution. How can such evidence be collected? How is it best presented to the Court or other tribunal? What are the strengths and rules of survey evidence? Are there alternatives? Moderator: Mr. K.T.S. Tulsi (India) Speakers: Mr. Douglas Deeth (Canada) Mr. Rogelio Vinluan (Philippines)
P6. REVISION OF THE PCT, THE EPC AND THE COMMUNITY PATENT PROPOSAL Changes are proposed for the PCT, EPC and the introduction of a Community-wide patent. New procedures for prosecution, designation and enforcement are contemplated. The panel will provide an up-to-the-minute discussion of these changes and their impact on applicants. Moderator: Mr. David Bannerman (UK) Speakers: Mr. Seong-Ki Kim (Korea) Mr. Jan Modin (Sweden)	T6. CONTRIBUTORY INFRINGEMENT IN ELECTRONIC MEDIA - THE NAPSTER CASE The "Napster" technology made music available over the Internet, to the joy of the general public and the horror of the owners of the copyrights. The Internet service provider is caught in the middle as a "host" for the activities of others. What lessons can be learned from this case for liability and infringement over the Internet. Moderator: Mr. Q. Todd Dickinson (USA) Speakers: Mr. Alban Kang (Singapore) Mr. Navin Khanna (Canada)
P7. PRIOR DISCLOSURE IN ELECTRONIC FORM - TRANSIENT PRIOR ART A vast amount of technical information is now published on the Internet. Some is readily accessible, while much is virtually impossible to find without directions. Many websites are regularly updated or disappear overnight. How much of this electronic information is prior art? Can it be relied upon in legal proceedings? How should we approach disclosures on the Internet, and what is needed to establish its probative value? Moderator: Mr. S. F. Wong (Malaysia) Speakers: Mr. Jjeung-Hoon Heo (Korea) Mr. R. Danny Huntington (USA)	T7. EXTRAORDINARY TRADEMARKS - PROTECTION OF 3D, COLOR, SMELL AND SOUND What level of distinctiveness is required for protection of an extraordinary trademark? The European Court of First Instance has been asked to consider a series of appeals from the OHIM concerning 3D marks. What criteria are applied in other parts of the world? When is a single color or simple color combination distinctive? Can a smell or sound really be represented graphically? What scope of protection is obtained by registering one of these extraordinary trademarks? Moderator: Mr Nachman Cohen-Zedek (Israel) Speakers: Mr. Hiromichi Aoki (Japan) Mr Bruce O'Connor (USA)
P8. PRACTICAL DIFFICULTIES OF U.S. CLAIM INTERPRETATION - A JUDGE'S VIEWPOINT - PLENARY SESSION We are used to presenting cases to the courts or advising on how they might be viewed, but what is the view like from the other side of the bench? Three distinguished judges from different courts in the U.S.A. will provide their insight as to the difficulties they encounter in dealing with the complex issues of interpretation of claims, due regard to the file history, equivalents and even, perhaps, the use of plain English. Moderator: Mr. Raymond C. Stewart, President, FICPI U.S. Section Speakers: Hon. Paul R. Michel, Court of Appeals for the Federal Circuit (USA) Hon. Ronald M. Whyte, U. S. District Court for the Northern District of California (USA) Hon. Paul J. Luckern, Administrative Law Judge, International Trade Commission (USA)