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Upcoming Events – Florence Forum, Yokohama Symposium and the World Congress. (more) Sydney ExCo April 14 – 17 – The ExCo will include a strategic planning session, workshops on patent harmonization, patent quality and development of the Madrid Protocol. There will also be a discussion on inventive step in the ExCo as a whole. (more) The London Agreement – beyond the fanfare and obvious cost savings, there are significant implications for the profession, and perhaps a silver lining. (more) US divisional applications – FICPI has filed an amicus brief in support of the injunction to prevent the new rules being implemented. (more) What is an invention? – initial work by the CET has produced a useful compendium of definitions of “invention”. (more) Bureau Activities- Meetings have been held with the Japanese and Chinese Patent Offices (more) Seville Exco – a milestone birthday preceeded discussions on divisional applications, status of the profession, workshops on the grace period, patenting of non-technical subject matter and criminal sanctions for infringement, and the London Agreement. (more) Seville ExCo CET topics (more) CET reports - in Seville included FICPI training courses – SEAD and Eurosead continue to thrive. (more) Action for negligence in Hungary – a recent decision of the Hungarian Supreme Court provided a bittersweet victory for an inventor and a cautionary tale for professionals. (more) ICAAN developments – attempts to change WHOSIS have been put on hold. (more) Obituary – Michael van Malderen. (more) |
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Upcoming EventsFICPI Forum in Florence October 8 - 10 2008 The Forum will return to Florence, one of its most popular locations, after a 10-year absence. As the home town of Enic, the event planner, we can expect the unusual and exceptional for the social events. The Forum will follow its regular format of three parallel streams, providing everyone the opportunity to find at least one topic of interest at any given time. Early booking is recommended. FICPI Japan Symposium in Yokohama December 4 - 5 2008 Following the success of the symposium in Beijing last year, a similar event is being planned in Yokohama in conjunction with FICPI Japan and with the support of JPAA. The topics will promote a discussion of the differences in practice between different regions -- EU, Japan and the U.S. in particular -- in different fields. Inventive step, enforcement, restoration and new types of trademark will be considered, as well as an update on the developments in Japan. The event will take place over two days and the location has been chosen to be readily accessible to visitors from overseas, as well as Japanese professionals. A full social program is being planned, with the possibility of post-event tours for those interested. World Congress Washington June 6 - 10 2009 Planning is well underway for the 2009 FICPI Congress in Washington, D.C. The meeting hotel is the JW Marriott, which is perfectly situated – within walking distance to the White House, the various Smithsonian Museums and other Washington highlights. The opening Congress dinner will include dining under the Space Shuttle at the Udvar-Hazy Air and Space Museum (editor’s note: drive-through diner with a difference?) Another evening will include dinner at the National Portrait Gallery, a building with the esteemed history of being the old U.S. Patent and Trademark Office, followed by a tour of the monuments by moonlight. Our final gala dinner will take place at the spectacular National Building Museum. Please mark June 6-10, 2009, on your calendar so you don't miss these wonderful events! |
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ExCo meeting Sydney April 14 – 17 2008The Executive Committee will reconvene in Sydney in April. During the meeting, FICPI’s strategic plan will be updated to provide direction to the organization for the next five years. Your input is required, either directly or through your delegate, to ensure that the plan reflects the needs and wishes of the members. The previous plan was prepared at the ExCo held in Broome in 1998 and many of the goals laid out in the plan have been achieved. At the time of the previous planning session, the main focus was on development of the patent system and the effect it would have on the profession. Many of the proposals at that time for overhauling the international patent system have been rejected or are stalled. The present emphasis appears to be on the changes in the profession as the practitioners become more mobile and as IP plays an increasingly important role. The Bureau would like members to identify the major challenges facing them over the next five to 10 years and indicate how they believe FICPI can help in meeting those challenges. It is hoped that a meeting with IP Australia will take place during the ExCo. The CET has been developing a position on Inventive step and this will be presented as a special topic for discussion by the ExCo at large. Workshops There will be three workshops during the ExCo. The first will discuss outstanding issues on Patent Harmonisation. The discussions will focus on topics of interest to the “B+ “countries, including grace period. The second workshop will discus issues surrounding quality of patents, a subject of great importance to FICPI. It is hoped that officials from IP Australia will join this discussion. The workshop will try to understand what is meant by quality and how definitions of quality may affect the patent prosecution process. The final workshop will discuss developments under the Madrid Protocol and Madrid Agreement. The role of the practitioner and the appropriate routing of notifications will be the focus of the discussions. |
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Lost in TranslationThe London Agreement – cheaper patents at what cost? When the London Agreement comes into force May 1, it will cost less to get a European patent in more countries, but the new rules are not entirely good news. There are downsides for FICPI members, their clients, European industry and the European patent system. Proponents of the agreement, including the European Patent Office, applaud the change because obtaining a European patent will become dramatically cheaper: translation can represent up to 40 per cent of overall patent costs, which will now be more in line with those in the U.S. and Japan. Small and medium-sized firms will particularly benefit since they will have easier access to European patents. Multinational corporations that file many patents will save significant amounts of money. Industrial property lawyers are not all singing from the same up-tempo songbook as the EPO. Lost Business “Many FICPI members will lose business if the London Agreement is enforced in their country,” said Austrian patent attorney Daniel Alge, chair of CET 4 and author of a draft paper on the practical consequences of the London Agreement (EXCO/ES07/CET/1404), which he presented at the November EXCO meeting in Seville. “At first glance, it looks good for the patentees, our major clients, but bad for those in the profession who mainly rely on filing of translations and doing validation work in Europe.” Canadian patent attorney John Orange, president of FICPI’s Communications Commission, adds that “although established EU practices have had time to adapt as the London Agreement has developed, members of the profession in newly admitted EU countries have suffered the double blow of loss of national filings and loss of translation, which will severely impact their growth.” Under the new protocol, an inventor need only file an EPO-granted patent application in one of the three EPO official languages – English, French or German – in order to validate it in a country that has ratified the agreement. Signatory countries whose official language is one of the three have agreed to waive the requirement that translations of European patents be filed in their national language. Full translation into the national language of the member country is only required if there is litigation over patent infringement. Countries with no national language in common with one of the official languages of the EPO have the right to require translation of the claims. Under the old rules, claims of EPO patents had to be translated into German, French and English, and the complete text translated into the language of the country in which the patent was to be validated. That meant translation into as many as 25 languages. English May Dominate Critics of the London Agreement are concerned that English may eventually dominate since the new rules make it permissible to file an English-language patent in all signatory countries, including France and Germany. Currently, about 70 per cent of European patents are registered in English, 23 per cent in German and seven per cent in French. While the intrinsic function of a patent (specifically, to disclose information about the invention to the public) will technically continue to be fulfilled, Daniel pointed out the consequences for non-English-speaking nations. “I don’t know how good your command is of Chinese – mine is zero – so it’s the same as if the patent information was in Chinese. Imagine what the U.S. would say if they had to face Chinese patents being fully valid in the U.S.” The Importance of Language The EPO website says that “translations into national languages are hardly ever consulted” and calls the pre-agreement system “translating for the sake of procedure, not the advancement of science.” British patent attorney Julian Crump, who is Secretary General of FICPI, says: "FICPI's long-standing position is that there should be a weIl-qualified profession in each and every country of the world to provide local IP advice and assistance to innovators and businesses in those countries. No one would advocate translation for translation's sake, but ratification of the London Agreement in a country where none of the three official languages is commonly used will certainly damage the profession in that country, and that cannot be a good thing for industry in the country." He adds that FICPI has a role to play and “should respond by redoubling its efforts to strengthen the professional skills and legal privileges of qualified patent attorneys and to raise public awareness that FICPI members represent the best option for obtaining professional advice and assistance for acquiring patents and other forms of intellectual property, especially in countries with a smaller or emerging profession." Signed in 2000, the London Agreement required the ratification of eight Implementation Problems Details on interpretation and implementation of the new rules, including precisely when they come into effect, will have to be ironed out to avoid confusion. Some commentators have suggested, for example, that in the U.K. translations won’t have to be filed for European patents granted on or after February 1 because of Britain’s three-month period for filing translations. This seems to be at odds with the plain language of Article 9 that indicates the agreement applies to European patents granted after the agreement comes into effect. The way in which the agreement has been implemented has also left some large loopholes that could cause problems if they are not addressed. Daniel believes that local firms in many countries “will have to face patent infringement suits based on patents they don’t understand.” Under the agreement, the patent holder can shape a translation when enforcing the patent, thus giving the inventor an advantage over the alleged infringer. The London Agreement “affects all our members,” he said. “The inventor gets a monopoly for 20 years in exchange for disclosing the invention, so the disclosure is an essential part of the contract with the public. People in countries that do not have a good command of English feel that this contract is broken by the London Agreement. “FICPI does not have an opinion saying yes or no to the London Agreement. But if the agreement is accepted in a country, then proper measures have to be introduced to rebalance the system again for the public.” Julian adds: “Another inevitable consequence of the London Agreement is that applicants will validate their European patents in more countries. At a time when both the U.S. Patent & Trademark Office and the EPO are arguing for fewer but higher quality patents, measures that result in more patents for lower cost appears to go in the opposite direction to that." An unexpected consequence of this, John notes, may be that in the longer term, the reduction of translation will increase the number of countries in which patents will be validated and thereby increase complexity for businesses operating in Europe and work for the profession in advising these businesses. The Next Step Countries that have not joined the agreement may face political pressure to do so. To help them decide, FICPI is undertaking an education campaign with politicians and patent attorneys. A questionnaire (http://www.ficpi.org/library/07SevilleCET/CET-1004exec.pdf) for FICPI members will gather information and identify potential problems arising from the agreement. |
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FICPI’s Position Upheld
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What is an Invention?To expostulate why day is day, night night, and time is time, were nothing but to waste night, day, and time. As part of its study of inventive step, CET Group III has conducted a survey of its members to identify similarities and differences on this imponderable topic. Although the study is not complete, the survey makes a useful reference tool. The laws of various countries have different definitions of inventive step/non-obviousness. Here are some definitions from the laws of some major jurisdictions. U.S. (35 U.S.C. 103 (a) Conditions for patentability; non-obvious subject matter): Europe (Art.56 EPC Inventive step) Japan (Art. 29(2) JPA Conditions for patentability) Australia (Art. 7 (2) and (3) Patents Act 1990 Novelty and inventive step) (3) The information for the purposes of subsection (2) is: (a) any single piece of prior art information; or (b) a combination of any 2 or more pieces of prior art information; being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.” Canada (Section 28.3 Patent Act Invention must not be obvious)
“The subject-matter defined by a claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to Inventive/non-Inventive: decisions and practice Despite the different definitions of the inventive character of a patentable invention in different countries, courts have tried to give the general definitions in the law a more definite character. But since the question of inventiveness is mostly dependent on the peculiarities of every single case, the guidance of the courts can also be interpreted differently, depending on whether one argues as an opponent or a patentee. In the U.S., the Supreme Court has re-affirmed the full applicability of the Graham/Deere decision in the KSR decision and overturned the general applicability of the “teaching, suggestion, or motivation” test (TSM test), under which a patent claim is only proved obvious if “some motivation or suggestion to combine the prior art teachings” can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art. The European Patent Office almost exclusively applies the “Problem/Solution-Approach” under which first the so-called closest prior art has to be identified. Then, the "objective technical problem" to be solved by the invention is established. Finally, it is considered whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person. In this final stage, the question to be answered is whether there is any teaching in the prior art as a whole that would (not simply could, but would {“could/would” approach}) have prompted the skilled person, faced with the objective technical problem, to modify or adapt the closest prior art while taking account of that teaching, thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves. In the “Lockwood” decision, the Australian High Court reflects on this “Problem/Solution-Approach” as being sometimes “particularly unfair to an inventor of a combination, or to an inventor of a simple solution”: “Although the recognition of the need to identify an ‘inventive idea’ justifying a monopoly is not new in Australia, the developments in the United Kingdom, which emphasise the need to identify the ‘inventive concept’ in terms of ‘problem and solution,’ have raised the threshold of inventiveness. This has been exemplified by a number of relevant English cases since 1977. Inventive/non-Inventive: other ways of defining inventiveness There have been many definitions published seeking a better definition of what makes a patentable invention. In the German literature (specifically of the ‘60s and ‘70s), complicated formulae have been developed to calculate the inventive character of an invention. If it was above a certain level, the invention was patentable, if it was below this level, it was not patentable (but might be protectable by a utility model). Without claiming to be complete (and intentionally without references), here are some other definitions for the “inventiveness” of a patentable invention or “non-inventive” character of a non-patentable invention: "Invention means more than novelty. Novelty alone will not sustain a patent." "Ingenious." “A patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skilful men.” “When a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” “Inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” "Obvious" means "very plain." “The question of determining whether a patent involves an inventive step is also one of degree and often it is by no means easy." “Obviousness and inventiveness are antitheses and the question is always is the step taken over the prior art an 'obvious step' or 'an inventive step'?" "It is as well to bear in mind that the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge." “In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.” Inventive/non-Inventive: major issues The man skilled in the art: neither an idiot nor a genius (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”?) The state of the art: everything made available to the public before the priority date (in the field?). Inventive/non-Inventive: a little bit less? In some countries, a second level of inventiveness is often defined for utility models (patents of innovation, etc.). For example, in Australia, the following definition is given in Sec. 7 (4) to (6) of the AU-Patent Act for “innovative step” (which is required for an “innovation patent” less inventive than the “inventive step” for a (standard) patent (of Sec.7 (2) and (3)): In the German and Austrian Utility Model Acts, the term “inventive step” (“erfinderischer Schritt”) is used for indicating that this inventive achievement should be less than “inventive activity” (“erfinderische Tätigkeit”) which is the patentability requirement (also according to the EPC; amazingly enough, the term “inventive step,” which is the literal translation of “erfinderischer Schritt,” has been legally construed to mean something different in German). Whereas the prior decision practice in Germany and the literature have followed this “two-level” system (before the introduction of the EPC, the term for inventiveness was “sufficient degree of inventive ingenuity” (“ausreichende Erfindungshöhe”; literally translatable to “inventive altitude” or “inventive height”). In a recent decision, the German Federal Court deviated from this view and stated that the “erfinderische Tätigkeit” as required by the EPC represents the lowest level of inventiveness for which an exclusive right should be granted. It was reasoned that lowering the bar further is against the constitutional right for everyone to freely act in a given market and that such a monopoly is not economically justifiable. Accordingly “erfinderische Tätigkeit” was regarded as being equal to “erfinderischer Schritt” (thereby “harmonising” the German and English version of Article 56 EPC). Inventive/non-Inventive: why bother? The final question to be considered is whether the reasons for introducing the inventiveness requirement are still valid (or have shifted compared to the past). “The key observation here: Patents can encourage innovation and economic growth under certain conditions and hamper it under others. The impact of patents on innovation and economic performance is so complex that a fine-tuned patent system is crucial to ensure maximum benefit for a country's firms and its overall economy.” (from EPO website) “We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. These advances, once part of our shared knowledge, define a new threshold from which innovation starts once more. And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts. These premises led to the bar on patents claiming obvious subject matter [..] codified in §103. Application of the bar must not be confined within a test or formulation too constrained to serve its purpose.” (from U.S. Supreme Court {KSR}) “A monopolisation of trivial improvements … excluding third parties from using [such trivial improvements] … is not justifiable”; “It is forbidden, however, to regard obvious subject matter as being based on an inventive step [..], thereby excluding all other economic operators [from using this obvious subject matter. Such an extension of rights is not justifiable in view of the [general] freedom to operate for third parties guaranteed by constitution.” (German Supreme Court in considering {denying} whether a lower threshold for inventive step than for patents should be accepted for utility models.) How much innovation is required to justify patent protection from an economical point of view? Is this varying from field to field or even depending on the level of creativity in a given field at a given time (the skilled man in the art is more creative in one field with a high number of patent applications filed (perhaps biotech and information technology) compared to another field where a low number of patents is filed (perhaps mechanics). Does this lead to a new concept of the “flexible person skilled in the art?” Since the call for raising the bar for the level of inventive step is mainly heard as a means for competing with the steadily rising number of patent applications filed, should one raise the bar now and lower it once the number of applications decreases? The U.S. Supreme Court has indicated that the TSM-test is not always applicable for defining the non-obviousness of an invention, thereby criticising the CAFC’s routine decision practice. In Europe, the “inventiveness question” has often been based on some European patents that “went through” and were granted erroneously. Criticism of the general standard applied by the Boards of Appeal is not present in a visible amount. Therefore, is the call for “raising the bar” justified at all in the European Patent System, or is the task to more carefully ascertain quality of the patents to be granted by the EPO? In Japan, one can currently observe that most of the patents in nullity proceedings are invalidated on the basis of lack of inventive quality. Does the nullity judge apply different standards than the JPO? How can users anticipate future amendments in practice and law with respect to inventive step (an application should be drafted to take into account developments over the 20-year-term of the patent)? |
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Bureau ActivitiesThe Bureau has attended a number of meetings with officials from different organizations. Meeting with JPOA delegation of FICPI members met with officials of JPO, including the Commissioner, Masahiro Koezuka, and had the opportunity to discuss a number of matters of interest to FICPI. The JPO had raised some concerns about the proposed supplementary international search, an initiative FICPI strongly favours. FICPI explained why such a system would benefit users of the system and patent offices, which might see a reduction in applications filed or earlier presentation of applications with patentable claims. Japan’s alternative proposals were also discussed at length. Harmonisation was also on the agenda; FICPI was in complete accord with the JPO position of moving ahead with the reduced list of topics. FICPI commented on its opposition to a mandatory declaration for the grace period proposed by the U.K. Patent Office. Other topics discussed at length were the efforts to reduce duplication of effort in the patent offices by sharing search and examination results and adopting a common application format. The meeting concluded with a discussion on counterfeiting and the impact of counterfeit goods on Japanese companies. Meeting with SIPOThe Symposium in Beijing provided a welcome opportunity for FICPI to meet the officials of SIPO, including He Hua, the deputy commissioner of SIPO. By way of introduction, Mr. He explained that the Chinese patent office, which is affiliated with SIPO, has approximately 2,800 examiners and disposes of 200,000 applications per year, of which 91,000 are patents. The average pendency was two years from receiving the request for examination for patents (utility models and designs were dealt with in approximately eight months). The patent office is looking to increase the number of examiners. SIPO recruited 600 new examiners in 2006 and 850 in 2007, and provided a 22-month training cycle to maintain quality of examination. The topics discussed with SIPO included a grace period and the proposal for supplementary searches under the PCT. On grace period, Mr. He noted the existing six-month grace period in China and the need to balance the rights of the applicant with those of third parties. SIPO is generally supportive of the supplementary search that was due for consideration in WIPO. FICPI has been involved in discussions on protection of traditional knowledge for a several years, so the SIPO view on how best to provide protection was of interest, particularly in view of the protection of traditional Chinese medicine. Mr. He noted it is a complex topic and there is no clear solution at present. Further study is required. Protection for Chinese remedies is available through patents, provided novelty requirements are met. More generally, the respect for IP in China is of paramount importance to the Chinese government, Mr. He said; although the patent law has only been in existence for 30 years, significant progress has been made. Education of the public is a major goal, with IP day being held on April 26 and a proposal to make 2008 the “Year of IP Culture.” |
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Seville ExCo CET topicsThe CET is the commission within FICPI that studies topics of interest to the members and reports to the ExCo. The papers are available on the FICPI website; a synopsis of some of the activities is given below. 4th Session of the Madrid System Ad Hoc Working Group The Ad Hoc Working Group on the Legal Development of the Madrid System has been meeting regularly since June 2006 to discuss ways to make the system more beneficial to users. The latest meeting, held from May 30-June 1, 2007, was to refine proposed draft amendments aimed at restricting the so-called safeguard clause such that it would apply only to existing registrations. The primary effects of the proposed changes would be twofold. First, the states party to both the protocol and agreement, previously bound by the Agreement, would be permitted to raise fees in respect of new applications. Second, the 12-month period for refusal could be extended to 18 months if a contracting party so wished. Rather surprisingly, instead of discussing refinements to the agreed-upon revisions to Article 9 sexies and the new rule 1 bis, the working group revisited the proposed change to the safeguard clause, termed the “freezing” option, ultimately agreeing that the protocol would apply except as it related to increased fees and extending the refusal period. Interestingly, the change in direction seems to have been largely driven by the user groups who attend the meetings as observers and not delegates. It seems that once the proposed “improved compromise” was taken seriously, the pertinent delegations, these being representatives of the countries bound by both the protocol and the agreement, were in agreement. As a compromise within a compromise, a fee increase to 100 Swiss francs was considered appropriate. Survey Results on Protection of Spare Parts Currently, 15 out of 31 countries reported by the national groups of FICPI claim to have protection of spare parts, e.g., do not have the right of repair. Nevertheless, six of the countries claiming to have protection are EU states that may be forced to eliminate such protection depending on the outcome of the proceedings at the EU Parliament on the proposed amendments to Directive 98/71. The debate over the protection of spare parts is very political and FICPI should not enter the fray other than to ensure that the information being put forward to legislators and the public is accurate and fair. The detailed report of the questionnaire results was submitted to the FICPI ExCo in Amsterdam, June 3-6, 2007. That report provided a survey of the responses received from 31 National Groups and provides a comparison of the varied legal approaches to protecting or making exceptions to protection of industrial designs in what amounts to spare parts. The report proposes to draw conclusions from the survey. The first general conclusion to draw from the survey is that there are as many attempts to deal with the issue of spare parts (also read right to repair) as there are respondents. The second general conclusion is that while almost half the countries reported by the groups claim to have industrial design protection for spare parts, at least six such countries are part of the European Community and will be obliged to amend their national laws to conform to the EU Directive 98/71 when it is eventually amended. The latest version of the Draft European Parliament Legislative Resolution (6.12.2006) would provide protection to the owner of an industrial design for a limited period, with member states having the right to introduce a form of automatic compulsory license following the period of exclusivity. The limited term is proposed to end with the end of a model cycle. In other words, if the amendments are adopted, all EU states will in effect not have protection for spare parts. (At the time of writing --ultimo 2007-- there are reports of movement at the EU Parliament towards a resolution.) Countries that profess to provide industrial design protection for articles “dictated solely by function,” such as South Africa and Australia, have in all probability the most severe provisions on exceptions to protection of spare parts. The controversy surrounding the exception of industrial design protection was obviously created from the automobile industry. The commercial considerations of trade in after-market parts for automobiles are considerable and have created two very strong political lobbies, namely the automotive industry and insurance lobbies. These two lobbies have been equally active in every country where the issue of protection of industrial design in spare parts is raised. The political forces involved are no greater than in the United States, where a stand-alone industrial design law has been blocked for more than a century, and the EU, where Directive 98/71 continues to be in limbo. While FICPI should normally be in favour of fair and equitable protection of intellectual property rights for inventors, designers and owners of such rights, FICPI should not enter the political battles that represent the spare parts issue. FICPI should, however, monitor the progress of statutory developments of such industrial design laws around the world and ensure that information provided to governments and the public is accurate and objective. Patent Harmonisation In Geneva on September 26, 2007, the Group B+ (developed countries) Plenary discussed the list of proposed outcomes suggested by the chair of Working Group 1, which are set out below. Article 8 - Prior Art Article 12 - Conditions for Patentability Concerns were raised, however, about the legal certainty for third parties under the proposed grace period, and there were proposals to include
PCT Supplementary Searches The proposal for supplementary searches in the PCT was approved by the last PCT Union Assembly, held in September 2007. This came after an initiative of France circumvented the blocking efforts of Japan and Spain that had resulted in the Working Group for the Reform of the PCT being unable to recommend its adoption. FICPI has been a strong supporter of supplementary searches since the system was first proposed. It is with pleasure that we see it coming into force. Under the new rules, any international authority may choose to offer supplementary searches to those applicants who submit a request to the International Bureau before the expiration of 19 months from the priority date. Applicants will be allowed to request supplementary searches from more than one authority. A supplementary search handling fee will have to be paid to the International Bureau. The amount will be the same as the normal handling fee. Each Supplementary Searching Authority will define the amount of its own supplementary search fee, whenever joining the system. A translation of the text of the application into one of the languages accepted by the Supplementary Searching Authority must be submitted by the applicant, together with the search request, whenever necessary. Faced with a valid request, the International Bureau will then forward to the appropriate authority the documents it will need to carry out the search, which should include the international search report and its accompanying opinion, if completed. The supplementary search will be started after the receipt of the documents by the authority. If the main International Search Report has not been completed, however, the start may be delayed, at the discretion of the authority, until up to 22 months from the priority date. The Supplementary Searching Authority (SIA) will be entitled to exclude from its search any claim not considered in the main search. Furthermore, in the same manner as the International Preliminary Examining Authorities, the SIAs will be able to reach their own conclusions regarding unity of invention, not being bound by the findings of the International Search Authority (ISA). In such cases, a simplified protest (review) procedure will be available to the applicants. Payment of additional search fees, so as to ensure that all inventions are searched by the SIA, will not be possible, however. The provisions, comprised in new rule 45bis, shall enter into force on January 1, 2009, and will be applicable to any application filed, or for which the period of 19 months from the priority date expires, on or after that date. The agreements between WIPO and the authorities that choose to provide the Supplementary International Searches will need to be changed so as to foresee the newly created service. Since most such agreements will be extended for another 10 years by the end of 2007, it is expected that those authorities that choose to join the system from its start will declare it shortly. It is hoped that at least the USPTO and the EPO, both strong supporters of the proposal, will be among them. Inventive Step One of the major topics discussed by the ExCo in Seville and also to be addressed repeatedly in future meetings is inventive step. This topic has gained momentum from the recent KSR-Decision of the U.S. Supreme Court. Also in Australia, the High Court made an extensive review of inventive step in a recent decision, including the history and background of this stipulation. In Europe and Japan, discussions about the “level of inventive step” are taking place on every level of the patent system. Historically, the patentability requirement of inventive step or non-obviousness has evolved from different angles. Previously, most patent laws required a patented invention to be novel and technically useful. Patents have been regarded as being useful tools to foster innovation. A patent was seen as a reward for providing new technical teachings and a further incentive to innovate (in order to circumvent already existing patents). It was recognised that granting patents for minor developments is hindering progress. It was found that there is a public need for free developments. This free space was defined as the “normal development.” Accordingly, patents were not granted for obvious developments. The borderline between inventive subject matter and non-inventive subject matter is, however, difficult to find. Nevertheless, this borderline was defined in various patent laws all over the world (mainly in the second half of the previous century). Even if the intention was the same, the resulting laws and interpretations have come out differently. In the light of international harmonisation, it is time to address this issue with new eyes and an open mind and contribute to the developing discussion. The document attached usefully summarises the situation in a number of countries and highlights the diversity of opinion on the correct answer to the patent equivalent of how many angels can balance on the head of a pin. European Commission Workshop on Patent Pooling in the Biotech Sector On June 13, 2007, the European Commission (DG Research) FICPI attended a brainstorming workshop on “Patent Pooling in the Biotech Sector.” The subject initiative of DG Research was aiming especially at the practical need for patent pools in the biotech sector. Besides the discussion of the concept of patent pools, the concept of clearing houses was also presented, as well as a model system of “bundling” patents held by the public sector. A specific field of interest was in the diagnostic field, where some commentators have identified a “patent thicket” that could hinder innovation. It was asserted that – in contrast to other fields of technology – company-driven patent pools in the biotech sector seem to be rare. In fact, examples of patent pools were only institutionally driven, such as the “Golden Rice” project (Vitamin A-rich rice) or the SARS pool. The concept of clearing houses was presented and it was discussed whether a “Royalty Collection Clearing House,” (RCCH), in other words a “one-stop” licensing institution, could be an instrument for improving the system. Workshop participants discussed whether bodies such as the BTG in the U.K. and the RCT in the U.S. are already existing RCCHs. They seem to have some role in the technology transfer system, not necessarily to lower transaction and handling costs, however, as forecast by the model systems in the van Zimmeren article. A survey is planned (under the auspices of the European Commission) that addresses various questions in connection with these “alternative licensing models” and will probably be sent out (also to FICPI) in autumn 2007. A model system of “bundling” patents held by the public sector was presented: the “EPIPAGRI” project managed to bring together a critical mass of patents held by various (and partially very diverse) public patentees in the agrobiotech field (in this field, about 25 per cent of the patents are held by the public sector, whereas in the “red biotech” only about two to five per cent are publicly held). Detailed information on this project will be available soon, it was announced. The commission and the participants regarded the meeting as being very fruitful and inspiring both. For the future, two immediate initiatives were proposed: first, a workshop on a combination model for institutional licensing that would also be open to commercial partners; and second, the questionnaire on which the survey mentioned above will be based. For the near future, two immediate initiatives were proposed, following which a survey is planned in connection with “alternative licensing models” (the latter probably in autumn). FICPI proposes to continue its participation. STOA (Scientific and Technological Options On June 14, 2007, the working group established by the STOA (Scientific and Technological Options Assessment) of the European Parliament for the assessment of “Policy options for the European patent system” presented their final draft paper in a workshop held at the European Parliament in Brussels. The report is available under http://www.tekno.dk/pdf/projekter/patent–system– STOA/p07_STOA_Background_document_and_report.pdf. The working group has given strong support to the creation of a Community patent accompanied by a European Patent Court dealing with litigation on European patents, although this system still seems difficult to introduce in the near future. The policy options presented in this report should be seen as ways to improve the current functioning of the patent system, especially to stimulate innovation and the diffusion of knowledge. The working group recognised differences between the main patent systems of the world and acknowledged that challenges to other patent systems of the world and, in particular, the U.S. system, may not exist in Europe, or may not be as bad as they are elsewhere (and therefore the U.S. patent system is exposed to severe scrutiny at present). The following issues were identified as the main challenges for the European patent system:
Increased interest in the European patent system should be connected to greater transparency and the involvement of more experts, politicians and stakeholders in the future development of the system. It was held by the working group that “the general premise of this report is that the patent system has so far had a positive influence on levels of innovation.” The policy options recommended were seen as suggestions for improving the current European system. The following are policy options of the working group, along with suggestions related to each of the topics:
It was decided to suggest a preamble to the EPC, which states that the purpose of granting patents is to enhance social and economic welfare by means of encouraging inventions and their diffusion.
Specifically, the patent awareness within the European Parliament (but also within the Commission and the EPO) should be enhanced by an Internal Parliamentary Standing Committee on Patents and an External Advisory Body to the European Parliament.
The working group believes that strong and well-equipped patent offices operating according to clear and strict rules are needed to maintain the right balance in order to sustain a good-quality patent system.
In order to meet this challenge, the working group recommends the allocation of additional resources to EPO examiners through, for instance, the use of external expertise employed on a consultancy and voluntary basis.
In further proposals for “clearing” patent thickets and providing easier access to patented technologies, the working group proposes exploring and supporting more flexible, non-exclusive exercises of patent rights, such as license of right or collective rights management models, such as patent pools and clearing houses.
The working group recommends using a publicly available database for such defensive publication of inventions in order to make this information more accessible. EU Directive on Paediatric Drugs A new EU directive has been issued that sets the provisions according to which clinical trials have to be performed. A series of incentives are provided, among which there is the possibility of an extension to the duration of a patent or a Supplementary Protection Certificate (SPC). Paediatric investigation plan plays the most important role in this directive. The directive provides trials specific for children, avoiding subjecting them to useless and dangerous tests, without slowing trials of drugs for adult patients. Inventive Step and Privilege – In re Seagate In In re Seagate, the United States Court of Appeals for the Federal Circuit accepted all the positions of FICPI in answering the following questions: Results of Patenting of Software and Non-Technical Matter Survey Traditionally, patent protection has been restricted to the technical domain, which is not static, but constantly evolving as new fields of technology (e.g. software) appear. In recent years, patent offices in some countries have granted patents not only for software-related inventions, but also to subject matter that no longer belongs to a field of technology, most notably for business methods. Such patents are not undisputed and are subject to an ongoing public debate. To find out the current status quo in different jurisdictions throughout the world, a questionnaire has been prepared by FICPI CET Group 7 containing 14 questions on the respective national laws and practices and including an inquiry on the patentability of different types of hypothetical inventions in the software and business method field. The questionnaire has been sent to the respective delegates of all 14 National Associations and 20 National Sections of FICPI. Responses have been received from 24 countries. The results are published as Seville ExCo paper EXCO/ES07/CET/1701 and can be summarized as follows:
WIPO Intergovernmental Committee on Genetic Resources Traditional Knowledge and Folklore (IGC) Very little progress was made at the 8th, 9th and 10th sessions of the IGC. At the end of the 10th session, the IGC agreed on 10 “issues” relating to Traditional Knowledge and Traditional Cultural Expressions that were contentious or about which there is disagreement and that these issues will have to be revisited. At the 11th session of the IGC, the 10 issues were discussed in some detail. Nothing new was disclosed and countries and traditional communities merely repeated their respective positions on the issues. The divide continues between those countries demanding an “International Legally Binding Instrument” and those countries arguing that the issues are complex, require further discussions and need to be addressed on a national level first. The discussions on genetic resources mainly focused on the disclosure of genetic resources and related traditional knowledge in patent applications. There is general support (barring the U.S. and few other countries) that some form of disclosure would be in order. Developing countries, plus Norway, argued for the TRIPS agreement to be amended to make it mandatory for countries to amend their patent laws to require disclosure. No agreement was reached. The issue was also explored in other fora. The IGC’s mandate comes to an end in September 2007. Given the unsatisfactory progress made during the last four meetings, reaching agreement on the future work of the IGC was troublesome. After two days of intense “informal discussions,” it was agreed to recommend to the General Assembly an extension of the IGC’s mandate on the same questions as the current mandate. The new work of the committee should focus on the international dimension of those questions, without prejudice to work pursued in other fora. No outcome of the IGC’s work is excluded, including the possible development of an international instrument(s). The IGC would be urged to accelerate its work. It is believed that the discussions at the IGC will go round in circles for a few more meetings before any substantive issues are discussed. Consideration should be given to simply monitoring the activities of the IGC until a point is reached when substantive issues are on the table and FICPI’s input may be of value. The Functioning of the Community Trademark System (CTM) The registration system for CTMs as operated by the OHIM in Alicante since 1996 has been an outstanding success. The OHIM has experienced annual budget surpluses that resulted in cash reserves of more than €200 million by the end of 2006, despite an initial reduction in fees in 2005. It was therefore proposed to set up a regular review procedure that would allow ongoing reductions in the filing, registration and renewal fees if the surpluses continued. Nevertheless, some of the EU Member States that maintain national trademark offices were concerned about the effects of further OHIM fee reductions. Instead of agreeing to the review procedure, the Council of Ministers adopted a decision calling upon the European Commission to immediately propose one reduction of the fees, but also to carry out a comprehensive study on the overall functioning of the CTM system. FICPI wishes to actively participate in this study and debate, and begin the discussion during the Amsterdam ExCo. The discussion is currently focused on the following points: Genuine Use Of Community Trademarks The question is whether it is fair that use in a single national market should be considered genuine use in the whole Community. Was this indeed the spirit of the CTM system when it was created? Would it not rather be use-adapted to the “scale of the Community?” It is important to note that the “use rule” was one of the top reasons for users to use the CTM system. It a controversial issue, but it is considered that some changes could be made on the use requirement in order for the register to be more in accordance with the market. List of Goods The system provides the possibility of applying for three classes with the basic fee. Users are encouraged to use class headings, this probably being one of the reasons for having an increasing difficulty of clearing marks on the CTM system. It is considered that abolishing this principle of having the right to three classes when applying for the mark for the basic fee could help clear the register. Proof of Use/Intention to Use The cost of a CTM is no longer a question for European applicants. On the other hand, the current number of CTM rights may now become a problem, since it is starting to be difficult to clear a mark. It is obvious that an increasing number of entities are choosing the CTM route instead of the national route, the balance being unmistakably in favour of the CTM system. The Future Below are some of the ideas put forward by FICPI members as possible working areas for future review of the system:
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SEAD Expands FICPI Reach in South AsiaThe goal of creating a world-wide network of FICPI professionals knowledgeable in patent drafting is getting closer, thanks to SEAD. SEAD (South East Asian Drafting course) provides a structured format for teaching students to draft patent claims and descriptions. When the course moved to Bangkok in 2007, 42 students from 11 nations (Thailand, Singapore, China, Cambodia, India, Indonesia, Laos, Malaysia, Philippines, Sri Lanka and Vietnam) took the hands-on training. Taught in three parts over six months, the FICPI course has been running for 10 years. As the name implies, the goal is to plant a seed that will expand both FICPI’s reach and the expertise within the intellectual property law community. “In Southeast Asia, the intellectual property profession is growing,” said course leader David Carmichael. “It’s about increasing the expertise. The more competent we can make the local operatives, the better we’re going to be when we file our patent applications in their country. They are going to give us good advice and know what they’re on about.” The European Patent Office is a major course sponsor, with financial assistance coming from the EC-ASEAN Intellectual Property Rights Cooperation Programme. Between 30 and 35 applicants will take the 2008 course, whose dates are March 31 to April 4, wrapping up September 22 to 26. Fees are US$2500. EuroSEAD FICPI’s Training and Education Commission also manages EuroSEAD, the equivalent course in Europe. EuroSEAD will take place in the autumn and details will be announced on the FICPI home page www.ficpi.org. Fees are expected to be in the order of €2250. |
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A Cautionary Tale for Young Lawyers
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Seville ExCoThe Executive Committee (ExCo) met in Seville between October 30 and November 5, preceded by meetings of the Bureau, Council and CET. Thirty-two national groups of FICPI were represented by delegates and sub-delegates; presidents of each of the Commissions and members of the CET were present to provide reports to the Executive Committee. Representatives of sister organizations AIPLA, AIPPI, ASIPI, EPI and UNION reported on their activities, and Francois Curchod reported on the ATRIP sponsorship that was covered in detail in the previous newsletter. The papers considered during the ExCo are available on the FICPI website, http://www.ficpi.org/library/07SevilleCET/CET-1404.pdf. The following is a synopsis of the major decisions reached. There was a lot of discussion of the proposed new rules for divisionals in the U.S. and the injunction granted to prevent them coming into force. The ExCo approved the filing of an amicus brief and passed a resolution relating generally to divisional applications. Resolution 1. During the Council meeting, there was a discussion of the status of the profession and its relationship to other professions, notably the general legal profession. It appeared that this issue was of concern in a number of countries, including Portugal and Canada, and information-sharing was very beneficial. This led, in turn, to the preparation of a resolution “Recognising the Unique Skills of the Patent Attorney Profession,”. Resolution 2. Attention was also drawn to the provision of advice on patent office websites, and in particular the lack of reference to the profession on those sites. A resolution was passed urging the public authorities to include a clear indication that reference to the profession should be made on such sites. Resolution 3. A further topic of concern to the profession was the London Agreement. The positions set forth in paper 1404 were supported and approved. A fuller discussion of the London Agreement appears elsewhere in the newsletter. The training and education commission reported on the continuing success of both the SEAD course, now located in Thailand, and the EuroSEAD course that was held in Warsaw. These courses will continue for the foreseeable future; full details will be available on the FICPI website. Three workshops were held during the ExCo: one dealt with a mandatory declaration for a grace period; one dealt with criminal sanctions for IP infringement; and one dealt with the patenting of non-technical subject matter. There is a synopsis of each in the CET report and full reports can be found at ExCo papers 2201, 2202 and 2203, respectively. There was, of course, a social program accompanying the ExCo. This was made all the more memorable since the opening night coincided with the 80th birthday of the distinguished President of Honour, Alberto Elzabura. His contribution to FICPI and the profession at large was recognized at a gala dinner where a slide show of past ExCos refreshed the memories of many in attendance and the agility of the guest of honour on the dance floor belied the milestone being celebrated. A wonderful time was had by all. The next ExCo will be in Sydney in April 2008. |
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WHOIS Reform on Hold
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Michel VAN MALDEREN
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