As noted in EXCO News, officers of FICPI visited Washington, D.C. on October 15-17, 2002 to meet officials of the AIPLA (American Intellectual Property Law Association) and representatives of the U.S. Patent and Trademark Office. The visit started with a planning meeting on October 15, particularly with respect to FICPI's response to the 21st Century Strategic Plan and Fee Legislation associated with the Plan as proposed by the USPTO.

A welcome dinner hosted by the U.S. Section was held at the University Club in downtown Washington that evening. In attendance were Malcolm and Maggie Royal, Mr. and Mrs. Kazuaki Takami, Tip and Pat Jennings, Joe and Arla Kolasch, John Orange, Jan Modin, Julian Crump, Ray and Marie Stewart and, as special guest, Judge Paul Michel, a Member of Honour of FICPI.

On October 16, the delegation met with Mike Kirk, Executive Director, and the Board of AIPLA to discuss issues relating to the proposals made by the USPTO. Apparently, the USPTO has listened to comments from AIPLA, ABA (American Bar Association, IP Section), IPO (Independent Patent Owners), INTA (International Trademark Association) and BIO (Biotechnology Industry Organization), and a revised Strategic Plan is anticipated from the USPTO in mid-November. The AIPLA Board noted that comments from FICPI were important since FICPI brings an international perspective to the discussion.

The FICPI delegation then met with Bob Stoll of the USPTO concerning the same issues. Bob has been active in many discussions held in Geneva and is well known to various FICPI members. Lois Boland of the USPTO was unable to attend the meeting but was represented by Karen Hauda. The USPTO representatives were impressed by the fact that FICPI supports many of the initiatives in the Strategic Plan and seemed to listen carefully to FICPI's objections to certain proposals in the Plan. However, it was this writer's impression that the USPTO was intent upon separating search and examination functions and strongly desired to out-source searches to other patent offices and/or private search organizations in order to decrease its workload.

A meeting of the FICPI group was scheduled with Director James Rogan and Commissioner Nicholas Godici on October 17. Unfortunately, Director Rogan was unable to attend the meeting, but his senior advisor, Brad Huther, attended. Mr Huther strongly defended the USPTO position, but the FICPI delegation was able to state its views on many of the proposals in the Strategic Plan. One notable comment was to question the ability of the European Patent Office to handle searches requested by the USPTO in view of its large backlog of cases. The discussion was quite open and frank, and the USPTO seems to be quite willing to receive FICPI's comments in the future. Indeed, Messrs. Huther and Godici both noted that the USPTO would soon issue a revised Strategic Plan and suggested that FICPI study the revised Plan and provide comments to the USPTO. The U.S. Section is willing to take responsi-bility for this task. U.S. Section members who helped to put the FICPI position together on a rather fast time line were Jason Cooper (Chairman), Doug Johnson, David Kera, Andy Meikle and Bill Simons. The accompanying position paper on the proposed Fee Legislation was prepared by Herb Cantor (Chairman), Richard Michaud, Michael Grow and Len Svensson. Ray Stewart presented the U.S. Section position to the EXCO in Prague, and after discussion and some modifications, the FICPI position was unanimously adopted by the EXCO.

Dear Friends

US Strategic Plan

During our visit to the USPTO last week, we met with Commissioner Godici and Mr Brad Huther, Senior Assistant to Director Rogan. We discussed details of the strategic plan proposals (see ExCo Paper: ExCo/CZ02/CET/1303. These would have an international impact.

Firstly, under the four track plan, the country of first filing of any application family will be identified (the EPO in the case of any application filed in an EPC country). The Office of that country or the EPO will be required to undertake the search. It will be required to give priority to such a search (resulting in a delay to other searching). The countries will be required to use a common data base (I cannot see how this can be made to work for it will require the US and EPO to search Japanese art and the JPO to search English, German and French art). As a consequence, I expect the requirement to search a common data base will be dropped in the hope by the Offices that relevant literature will be duplicated in the art searched or equivalent art located. The presumption of validity may be harmed in this event and we may be faced with a presumption of invalidity.

Secondly, the search result will be binding on all Offices. Additional searching will be permitted in what Brad Huther said were "very exceptional circumstances". These arrangements are being made on a bilateral/trilateral basis, by-passing WIPO, where all countries are able to contribute to the debate.

The US objective is to have this arrangement in place for the trilateral meeting in November this year.

Subsequently, I discussed this with the relevant officers of AIPLA who have been given a different story. I therefore checked my understanding with the FICPI people present, namely: Ray Stewart, Tip Jennings, John Orange, Julian Crump, Jan Modin and Mr Takami, who confirmed my understanding. AIPLA believe that, under the plan, additional searching will be permitted and that US examiners would do so in most cases.

We have, of course, indicated our objections to the proposals that would not allow additional searching (since our requirement is for quality in the result) and to any scheme that would further delay searching of applications by the EPO.

I think we must all be aware of the dangers the Patent System is under. The pressure on searching offices, particularly in Europe, is intolerable and a solution must be found. Applications in which there is no longer an interest must be removed from the system before searching occurs. The avoidance of duplication and rework clearly must be achieved also. But applicants and third parties require this to be achieved without a reduction in the quality of the searching. The proposals of the USPTO might achieve the reduction in reworking/duplication but would do so at the expense of quality. Full pilot studies must be undertaken before any change is made.

There is also a nasty suggestion that unless solutions are found, PCT 3 might be developed under which entry to the national phase will be undertaken by WIPO. This threat must encourage us to support a remedy to the current crisis which is acceptable to us. vI urge you all to be aware of these dangers and to take such steps as you think appropriate in your country. On our part, we are contacting the USPTO, EPO and JPO to express our concerns.

Yours sincerely
Malcolm Royal
PRESIDENT