6th FICPI OPEN FORUM
Rome, 14-17 November 2001

General Report

The Rome Cavalieri Hilton overlooking the splendid city of Rome, was the venue for the 6th Open Forum. The Forum had parallel working sessions in patents and trade marks and a third working session devoted to a design symposium. The Forum was attended by over 450 participants, including accompanying persons, representing over sixty-five countries from all over the world. This represented a record attendance for a Forum and one which was of a truly international nature, reflecting the interest in the wide range of topics which formed the working sessions. Malcolm Royal, the President of FICPI International, in his opening address highlighted the state of transition which the field of intellectual property was experiencing and the important issues with which it is faced. Some of these issues formed the subject of working sessions which were all well attended and generated lively discussion.

The Forum presented the opportunity for various working groups of CET and the Commissions to meet. A full meeting of the CET followed immediately after the Forum.

No Forum is complete without a social program and there can be few better places for such a program than Rome. The food and hospitality of Rome was appreciated by all with the final banquet at the magnificent stately Villa of Palazzo Brancaccio being a highlight. A full day excursion to the magnificent Villa Adriana and the Villa d'Este, villas from two different eras in the history of Rome, allowed participants to relax before returning home.

The attention of ENIC Srl ensured that the organisation of the working sessions and social events went smoothly. Behind all of this there has to be a co-ordinator and here our thanks go to Michele Mannucci for all his hard work and efforts.

Tony Hooper
CET Special Reporter

Trademarks sessions

The 6th FICPI Open Forum in Rome continued a series of successful educational programs offered by FICPI to members and non-members alike, and included seven trademark sessions, organised by Andrew Parkes and members of CET Group 1, dealing with several "hot topics" of interest to all trademark practitioners.

The Forum opened on Thursday morning with a mock UDRP arbitration procedure, presented by Jonathan Cohen, Petter Rindforth and Christian Hano, a concept that showed great promise for use at future meetings. This was followed by a discussion of OHIM opposition decisions moderated by Florent Gevers, with interesting presentations from Helmut Sonn and Alexander Von Muehlendahl of OHIM.

The e-commerce theme continued with a stimulating discussion, moderated by Rodney Cruise, of the use of trademarks on the internet, and of the concept of "commercial effect" of that use on a Member State of WIPO, presented by Jean-Marie Bourgognon, and a review of recent decisions presented by Prof. Lemberto Luizzi.

One of the highlights of the Forum was the Thursday afternoon session dealing with colour, smell and sound as trademarks, which featured a dramatic and entertaining presentation of papers by Fabio Angelini, Tee-Jim Tan, and Stefano Sandri, all moderated by Nachman Cohen-Zedek.

On Friday morning, Robert Rippe, Douglas Deeth and Marius Knijff withstood the strong attraction of the competing "Festo" presentation in the concurrent patent session to review both legal and practical issues on the use of survey evidence in trademark cases, and were followed by a copyright presentation by Q. Todd Dickinson, Nick Wood and Navin Khanna on contributory infringement issues arising in the famous Napster litigation.

The trademark sessions ended on a high note, despite the attraction of a sunny Roman afternoon, with a thorough review of the use of customs laws and agents to combat counterfeiting, and suggestions for improved efficiencies between customs and trademark owners, including the use of email to alert trademark owners to possible counterfeit goods, all presented by Guido Jacobacci and Miguel O'Farrell, under the moderation of Ella Cheong.

Douglas Deeth

Patent stream

On the evidence of the seven patent sessions, as if confirmation were needed, the world of patents is changing at a greater rate than ever before. In the opening session, Danny Huntington (US) outlined the difficulties in obtaining allowable claims to biotechnological inventions, followed by Urban Paulsson (SE) who, addressing the practical aspects of research tool licences, recalled that prior to 1980 fewer than 200 patents per year were issued to American Universities, whilst in 2001 that figure is about 2000/year. The increasingly commercial nature of university research, as promoted in the US, for example, by the Bayr-Dole Act 1980, is making it harder to ascertain whether work is truly experimental. On the first afternoon, Greg Gramenopoulos (US) warned against approaching claiming business methods as an engineer or assuming that all business method inventions were software-related, whilst Mr Tani (JP) reported that in 2000 over 15,000 business method applications had been filed in Japan. On day two, Mr Takami (JP) discussed WIPO's new proposal in the draft Substantive Patent Law Treaty that to be prior art there must be a reasonable possibility that a disclosure could be accessed by the public, and Marco Celestino (IT) considered how to assess the probative value of Internet disclosures which were "Here today; gone tomorrow". Previously, in the morning, the assembled attorneys from over 55 countries had been treated to an erudite potted history of the twin US doctrines of equivalence and prosecution history estoppel by Judge Paul Michel of the CAFC, before the full impact of the Festo decision was revealed in an interactive session involving Julian Crump (GB) trying to find a winning strategy for avoiding Festo only to be thwarted each time by Bill Schuurman (US), provoking numerous interventions from the floor.

And yet the more things change, the more they stay the same, as indicated by Hans-Christian Metternich (DE), Head of the Legal Division of the German Patent Office, who outlined the historical backlogs of examination work that had prompted his office in 1968 to adopt deferred examination. Tony Hooper (ZA) took that principle to its logical conclusion, explaining why unexamined patents could be appropriate for some developing countries, provided there was a strong, qualified profession and an effective court system.

To complete a full and varied programme, Francis Ahner (FR) and Peter Huntsman (AU) presented the prior user rights of their respective countries; Robin Nott (GB) felt lucky that English law protected patent attorneys from disclosing to a court privileged communications with their clients; and Anika Ryberg (SE) urged all those present to adopt reasonable, uniform policies for document destruction, but failing that to avoid "spoliation" at all costs and to confront any "skeletons in the cupboard".

The organisers express grateful thanks to the guest speakers, Judge Paul Michel, Hans-Christian Metternich, Urban Paulsson and Anika Ryberg, and to Bill Schuurman for stepping into the breach at very short notice.

Julian Crump
Reporter CET Group 3

Design Symposium

A Design Symposium, as a special event, was conducted in parallel with a Patent and a Trademark stream at the 6th FICPI Open Forum in Rome.

The Symposium which extended over two days, involved over 20 speakers and three moderators, representing at least 15 jurisdictions and inter-governmental organisations. Academics such as Professor W. Fryer from the University of Baltimore and Annette Kur from the Max Planck Institute in Munich; inter-government officials including Bruno Machado from WIPO, Alexander von Mühlendahl of OHIM, Victor Saez from the European Commission, Martin Schlötelburg, OHIM and Vivienne Thom, Commissioner of Patents at IP Australia as well as a number of industrial design prationers and Cooper Woodring an American Industrial Designer, all contributed to make the Symposium an enormously successful event.

The Symposium served, first of all to provide a comparative law analysis of the current systems for protecting Industrial Designs around the world, and secondly to determine some basis for advancing the cause of harmonisation of design laws around the world. A roundtable was conducted at the end of the programme for the purpose of identifying such a basis. The programme included the analysis of the Qualcomm Q-phone® mobile phone in comparison with two Motorola design patents. Each speaker was asked to deal with the Q-phone® in his/her respective jurisdiction i.e. from a registerability point of view as well as infringement and the remedies.

The Symposium was a special project of CET Group 2 Designs Committee and had been in the planning stages for several years. It was first proposed to the CET in 1997. I would like to especially thank Joe Kolasch for his efforts in setting up the case study and organising the programmme as well as other members of the committee such as Peter Sommer and Helmut Sonn who acted as moderators.

Robert Mitchell
Chairman of CET Group 2 Designs and
co-ordinator of the Design Symposium

FICPI acknowledges the work put into this project by Bob Mitchell. He developed his idea into a very successful and useful symposium.