WIPO SCP 2017
12/12/2017 | Dr. Alexander J. Wyrwoll
Discussions on QUALITY OF PATENTS and CONFIDENTIALITY BETWEEN ATTORNEYS AND CLIENTS are ongoing at WIPO.
Dr. Alexander J. Wyrwoll, President of FICPI’s Communications Commission, represented the Federation at the SCP meeting at WIPO’s headquarters in Geneva from 12-14 December 2017, when the topics “Quality of patents, including opposition systems” and “Confidentiality of Communications between clients and their patent advisors” were discussed.
01/12/2017 | Julian Crump
FICPI visits JPO and presses need for local representation, procedural simplicity and fair protection for inventors.
FICPI held its annual visit to the Japan Patent Office (JPO) on 1 December 2017 and urged the JPO to support its recommendation to maintain a requirement for local representation for PCT national phase entry applications.
In the context on ongoing Group B+ patent harmonisation discussions, FICPI urged the JPO to resist proposed “DIU” measures that would unduly complicate the patent system. FICPI also challenged the JPO over its approach to double-patenting that can lead to applicants and inventors being prevented from obtaining fair protection for their inventions.
FICPI and the JPO agreed on the need to take account of the requirements of small and medium size businesses and private applicants in relation to a variety of different IP issues.
FICPI @ ICANN60
28/10/2017 | Petter Rindforth
FICPI at ICANN: Arbitration the best dispute resolution system for International Governmental Organizations.
The Internet Corporation for Assigned Names and Numbers (ICANN), an internationally organized, non-profit corporation that has responsibility for Internet Protocol (IP) address space allocation, generic and country code Top-Level Domain name system management (respectively gTLD and ccTLD), and root server system management functions, held its 60th public meeting in Abu Dhabi, United Arab Emirates, from 28 October to 3 November 2017.
The focus of this Annual General Meeting was on outreach, capacity building and to showcase ICANN’s work to a broader global audience.
FICPI was represented at this meeting by Petter Rindforth, CET 1 co-Chair in charge of Domain Names.
Among the topics were:
Whois: It is important to find the appropriate balance between individual rights to privacy and ensuring transparency and accountability which serves to keep the internet secure and reliable and helps guard consumers and users against various types of illegal abuse.
Geographical Terms/Names: The geographic name issue most clearly and directly affects companies that have trademarks which coincide with or call to mind some location, landmark, geographical feature or “sensitive term”. The most notable example of this being “Amazon” (the company vs the geographical name), which is still discussed with no final solution.
International Governmental Organization (IGO) and International Non-Governmental Organization (INGO) access to dispute resolution systems: Petter Rindforth has been co-chair of this working group since its start in August 2014. The Final Report is now close to being completed, with the following proposed solution:
“Where a complainant IGO succeeds in a UDRP/URS proceeding, the losing registrant proceeds to file suit in a court of mutual jurisdiction, and the IGO subsequently succeeds in asserting jurisdictional immunity, the registrant shall have the option to transfer the dispute to an arbitration forum, meeting certain pre-established criteria for determination under the national law that the original appeal was based upon, with such action limited to deciding the ownership of the domain name. The respondent shall be given 10 days (or a longer period of time if able to cite a national statute or procedure that grants a period longer than 10 days) to either: (1) inform the UDRP/URS provider [and the registrar] that it intends to seek arbitration under this limited mechanism; or (2) request that the UDRP/URS decision continue to be stayed, as the respondent has filed, or intends to file, a judicial appeal against the IGO’s successful assertion of immunity. An IGO which files a complaint under the UDRP/URS shall be required to agree to this limited arbitration mechanism when filing the complaint. If, subsequently, it refuses to participate in the arbitration, the enforcement of the underlying UDRP/URS decision will be permanently stayed. The parties shall have the option to mutually agree to limit the original judicial proceedings to solely determining the ownership of the domain name. Subject to agreement by the registrant concerned, the parties shall also be free to utilize the limited arbitration mechanism described above at any time prior to the registrant filing suit in a court of mutual jurisdiction. In agreeing to utilize the limited arbitration mechanism, both the complainant and the respondent are required to inform ICANN.”
Recruitment event for ACPI (FICPI-France)
03/10/2017 | Julian Crump
Recruitment event for ACPI (FICPI-France)
FICPI Vice President Julian Crump visited the French national association of FICPI (ACPI) on 3 October 2017 to attend a recruiting event for that group.
Mr. Crump met with Pierre-Louis Désormière, President of ACPI, and other members of the ACPI board. FICPI’s Treasurer General, Marc Chauchard, was also in attendance, together with Didier Intès President of FICPI’s Academy of Education, and Eric Le Forestier, past president of FICPI’s Study & Work Commission (CET).
About 50 French patent and trade mark attorneys attended the event, including about 30 who were not current members of FICPI. After some introductory words by Mr. Désormière, Mr. Crump gave the attendees a brief history of FICPI’s evolution over the last few decades into the world’s leading international IP association for private practitioners, and summarised FICPI’s achievements and ongoing efforts to represent the views of the profession and its clients in relation to the development of IP laws and to enhance the skills of the profession as professionals and business managers.
Mr. Crump noted the leading role played by the French group in FICPI’s work, highlighting interest in possibly extending the ACPI’s quality charter to other countries, and work done by AFNOR (the French national standardisation organisation) to standardise electronic communications concerning IP rights, and encouraged all those present to become more involved in the worldwide FICPI family.
FICPI at ICANN59
The Internet Corporation for Assigned Names and Numbers (ICANN), responsible for the global domain name system, held its Policy forum, ICANN59, in Johannesburg, South Africa on June 26 – 29, 2017.
The work was focused on two topics:
The ongoing review of all rights protection mechanisms in all generic top-level domain name systems, meaning that all trademark protections systems related to generic domain names, such as .com, are studied to see what improvements may be necessary. At the moment, this working group is dealing with the Trademark Clearinghouse, followed with an overview of the Uniform Rapid Suspension System (URS), and finally, at the end of 2018, an overview of the traditional Uniform Domain-Name Dispute-Resolution policy (UDRP).
FICPI’s representative, Petter Rindforth, Co-Chair, CET Group 1, is also co-chair of a working group of ICANN dealing with International Governmental Organizations (IGO) access to dispute resolution systems. In order to solve the fact that most IGO’s avoid dealing with disputes in national courts, referring to their jurisdictional immunity, the working group is finalising a proposal that a decision rendered against the registrant in the initial UDRP or URS phase may be brought before a neutral arbitration entity for de novo review and determination.
Group B+ Users
Group B+ Users Symposium
FICPI contributed to the Group B+ Industry Symposium on patent harmonisation, hosted by the EPO on 20 June 2017.
The Group B+ was established to promote and facilitate progress on substantive patent law harmonisation. It has become a major forum for this harmonisation.
The discussions on harmonisation currently involve three main topics : Grace period, Prior user rights and Conflicting applications.
At the Symposium Industry representatives from AIPLA, IPO, Business Europe and JIPA could present their views. Group B+ members Australia, Canada and Korea also presented their comments on the three topics.
Invited by the Chair of Group B+, Ms. Patricia Kelly, FICPI could present its position regarding Grace period, as exposed in the FICPI White Paper published at http://www.ficpi.org/_/uploads/gonzo/FICPI-WP-2013-01Grace-Period.pdf. On Prior user rights, FICPI reminded its ongoing work, and its draft position paper to be completed in the near future. On conflicting applications, FICPI mentioned the current study led by a FICPI working group, and the session on this topic at the next Open Forum in Venice.
FICPI will continue to closely follow the work of Group B+, and to actively represent IP attorneys and their clients in the discussions on patent law harmonisation.
05/12/2016 | Marc Chauchard
2016 FICPI and ASIPI jointly promote the new FICPI ACADEMY Patent Drafting Course in South America.
On December 5, 2016, Danny Huntington, Joseph Morales & Marc Chauchard of FICPI met with several members of the Executive Committee of ASIPI, the Inter-American Association of Intellectual Property, including Vice-President Elisabeth Siemsen do Amaral, Secretary Luis Alejandro Henriquez, and Director Marco Antonio Palacios, as well as Carlos R. Olarte President of ASIPI’s Patents Working Committee.
The purpose of the meeting was to present to ASIPI information about the first FICPI Academy Patent Drafting Course in Latin American countries.
The FICPI representatives explained the concept of the course and its history in South East Asia and Europe, and described the team of Tutors Team that would be involved in teaching the course. The support of the European Patent Office was explained to those attending and the dates that had been set for the course, to be held in June & September 2017 in Rio de Janeiro were confirmed.
The ASIPI wholeheartedly welcomed this new initiative by FICPI and agreed to distribute the course brochure and registration materials to its members in South and Central Americas soon as the Brochure was available..
The course brochure and related information was subsequently made available to ASIPI and distributed on April 4th, 2017. This co-operation in the promotion of this new initiative by FICPI in South and Central America strengthens the links between FICPI and ASIPI.
SIPO & CTA
11/11/2016 | Julian Crump
2016 FICPI-SIPO & CTA Meeting Report
Official visits in China at the end of November further strengthened FICPI’s relationship with SIPO and extended the Federation’s reach in the field of trade marks in Asia by making a first visit to the Chinese Trademark Association (CTA).
As part of its statutory Aim to establish and maintain trusting and cordial relations with IP offices and other organisations in the field of intellectual property, FICPI made its regular, annual visit to the State Intellectual Property Office of China (SIPO) on 28 November 2016. On 29 November 2016, FICPI made its first official visit to the CTA. The FICPI delegation to Beijing, headed by President Doug Deeth, called upon Mr He Hua, SIPO Deputy Commissioner, and Ms. Xiao Yun, Deputy Secretary General of CTA.
2016 FICPI-Indian Patent Office - Minutes of Meeting
Continuing the tradition of yearly meetings between FICPI and the Indian Intellectual Property Office, delegates from FICPI International and India met senior IP officials at Mumbai on November 24, 2016. The officials were briefed on the growing interest of FICPI in, and importance of, the Asian Region with special emphasis on India, China and the Middle East. The Federation’s deliberate and regular engagement with the Patent Offices across the world, including but not limited to EPO, USPTO, JPO, SIPO etc., was also highlighted. Information on FICPI’s study and work commission (CET), its role, various sub-groups within it and work done by the CET was also discussed. Several crucial issues, including bringing in more transparency in the examination process and interaction with stakeholders, compliance with Section 8 requirement of the Indian law (IDS requirement), excess claims fees on national phase entry, examination and hearing proceedings of applications by Examiners of different jurisdictions, scope of amendment and its interpretation under Indian law, National Biodiversity Authority (NBA) related issues, maintenance of the online design register, avoidance of the ‘creep’ of plain packaging to fields other than tobacco, Madrid registers, TRIPS compliance etc., were discussed in detail.
08/06/2016 | Robert Watson
2016 FICPI-EPO Meeting Report
FICPI held its regular bilateral meeting with senior management of the EPO alongside the European Inventor of the Year award 2016. A number of current topics of interest were discussed, including Board of Appeal reform, the work of the IP5 and the EPO’s Early Certainty projects.
2015 FICPI-JPO Meeting
The visit to the JPO began with a brief meeting with Commissioner Ito in his office. Mr. Ito was accompanied by Mr. Shintaro Takahara (Director, International Policy Division) and Mr. Shunsuke Shikato (Deputy Director, International Policy Division).
Commissioner Ito welcomed the FICPI delegation, and thanked FICPI for its work. He explained the interest of the JPO in the harmonization of IP systems, driven by a desire to make life easier for Japanese applicants abroad. He commented on the JPO’s involvement with the Trilateral and IP5 as well as with the ASEAN group of patent offices. With this involvement he characterized the JPO as a bridge between the systems of the developed and developing countries. Commissioner Ito also mentioned the leadership position of the JPO in the IP world, as demonstrated by projects such as the PPH. During the conversation the President, Doug Deeth, emphasized FICPI’s support for harmonization in IP as well as its emphasis on quality of drafting, examination, and enforcement.
The meeting continued with an in depth discussion on topics of interest. This latter part of the meeting was opened by the Deputy Commissioner, Mr. Masayuki Koyanagi, who thanked FICPI for inviting the JPO to the Cape Town Congress, as well as for FICPI’s input at the B+ meeting and to the IP5 open consultation. He said that user input is very important to the JPO and that they would continue to seek FICPI’s views.