Malcolm Royal, Francis Ahner, David Bannerman, Andrew Parkes, Jan Modin and Julian Crump attended a meeting at WIPO on October 3, 2002.

The FICPI team was welcomed by Jürgen Schmid-Dwertmann, Special Advisor to the Director-General who was himself not able to be present. Shozo Uemura, the Deputy Director-General, added some complimentary words about FICPI. Malcolm Royal replied, applauding WIPO's efforts at addressing so many key issues in the IP field and noting that it was sometimes difficult for us to keep up as FICPI relies on volunteers who also have busy practices to run. The meeting then moved on to the agenda items.

First was the SPLT. Julian Crump expressed FICPI's support for this initiative and emphasised that every effort must be made to get the treaty right from the beginning as it will be very difficult to change in the future. Legal certainty is important but can sometimes conflict with fairness which is even more important. Some criteria for patentability cannot be defined in legally-certain terms.

Francis Gurry replied that it is clear that the SPLT should address only broad principles and that details should be left to the Rules and the Guidelines which will be easier to change. A key objective is to identify what is the "best practice" in each area and to adopt that in the treaty. The SPLT should not be too wide in scope; its main purpose should be to harmonise those provisions that will facilitate the sharing of work product between patent offices.

Francis Gurry warned that the developing countries are insisting on introducing a further requirement for patentability that would refer to social policy issues (public health, biodiversity, etc.) giving governments the right to refuse patents for political reasons. WIPO's response is that such issues should be dealt with by laws authorising or preventing exploitation and should be kept out of the SPLT which should concern solely the granting of patents.

Philippe Baechtold continued by noting that there are two sorts of issues in the SPLT negotiations : issues that are already broadly agreed and issues where there is still no such agreement. Among the issues where broad agreement exists (and which will be incorporated in the forthcoming draft) are:

• The scope of the treaty - it will not go beyond the grant phase except for provisions on interpretation of claims and equivalents
• The elements required for an application
• Amendment (no added matter) and correction of granted patents
• Definition of prior art (despite the currently different US practice)
• Prior art effect of co-pending PCT applications to be for novelty only and to date only from national phase entry
• Sufficiency of disclosure. Areas where there is still no agreement include:
• The social policy issues referred to above
• Whether or not "technical character" should be a requirement
• File wrapper estoppel
• The grace period.

Malcolm Royal observed that the SPLT seems to be focussed on provisions that will enable patent offices to solve their backlog problems and expressed disappointment that, for example, the criteria for invalidity will not be addressed.

David Bannerman mentioned that FICPI has always been opposed to the arbitrary exclusion of some classes of invention from patent protection and in emphasising FICPI's support for WIPO's resistance to the introduction of a "social policy" ground for refusal of a patent offered to draft a resolution to present to the forthcoming ExCo in Prague.

The second agenda topic was PCT reform.

Malcolm Royal began by mentioning the concerns over the extension to 30/31 months of the Chapter I national phase. This was clear from the 2001 FICPI Rome Colloquium. Our President emphasised that, for users, quality of search and examination are more important than pendency times.

Jan Modin observed that some of the recent rule changes to help solve the backlog problems seem to be inconsistent with the treaty itself. He referred to the clause in our Goodwood resolution entitled "General Principles of PCT Reform" resolving that the existing high standards of international searching and preliminary examination must be at least maintained. He welcomed the appointment of new PCT Authorities (such as Canada) in order to share the workload. But FICPI is unhappy with the loss of opportunities for dialogue with the examiner in the international phase: it is not satisfactory to leave this to the national phase as many patent offices are not equipped to make judgements on patentability issues.

Francis Gurry sympathised with the criticism of the extension from 20/21 to 30/31 months.

Klaus Matthes replied that it is currently not practicable to set up a formal dialogue procedure under Chapter I but mentioned that applicants may file "informal" comments and that WIPO will pass those on to the national offices. He reminded us that dialogue possibilities remain under Chapter II.

It has been accepted that reform of the PCT system cannot continue by amendment of the rules. A revised treaty is being drafted. The recent proposal from the British government to apply quality standards for search and examination to new PCT authorities has been accepted by the General Assembly. Both WIPO and FICPI agree that there should be no extension of the national phase beyond 30/31 months. Julian Crump mentioned the problem of relevant art being cited for the first time during the national phase and asked if there could not be established a mechanism for pooling search results. Malcolm Royal reminded the meeting of FICPI's longstanding proposal for supplementary searches during the international phase. Klaus Matthes said that this possibility would be put back on the table during discussions of a revised PCT.

Francis Ahner mentioned the practical problems for applicants where a unity of invention objection lends to a demand for further search fees. Francis Gurry said that WIPO may consider revising the search and examination guidelines in order to alleviate this problem.

The next topic was the WIPO Patent Agenda, introduced by Francis Gurry. This had generally been well received although there had been some negative reaction from Latin American countries. Francis Gurry emphasised that the Patent Agenda is not an action item like the SPLT or PCT reform, but rather a discussion document that should remain on the table for the future. He mentioned that both FICPI's detailed response to the Patent Agenda and contribution to the meeting organised by WIPO in March 2002 had been well received. Julian Crump summed up the FICPI position by stressing the importance of balance : that is balance between the rights of patent owners and third parties, and balance between national and international patent systems. Francis Gurry replied that many countries are expressing support for the development of a further regional systems, possibly as an intermediate step towards a global patent.

Next on the agenda was FICPI's proposal that a central electronic library of patent office search reports should be set up. Jan Modin stressed that such a library, which should be accessible to third parties as well as patent offices, would help avoid duplication of work. For WIPO, Klaus Matthes agreed that this would be a good idea but that it was not yet technically feasible. Francis Gurry mentioned that such a library would be a natural extension of the current project for electronic sharing of priority documents.

Malcolm Royal stressed that WIPO should proceed with this quickly as otherwise a commercial organisation would take it up.

The next agenda item was the tendency of the trilateral offices to work together independently of WIPO. Malcolm Royal noted that this is undesirable as unlike discussions instigated by WIPO, user groups cannot take part. Whilst agreeing, Francis Gurry mentioned that the trilateral offices are becoming more open to input from other bodies such as the other PCT authorities.

Traditional knowledge (TK) and Genetic Resources were then discussed. Antony Taubman introduced this topic on behalf of WIPO. Francis Gurry mentioned that the IPC is under revision and that a special class for TK may be added. Antony Taubman continued that the potential impact on existing IP systems is uncertain. There is a feeling in developing countries that foreigners may have been able to protect TK as it largely remains undocumented and thus inaccessible to searching authorities. The Indian government, in particular, is making efforts to document TK. But developing countries do not necessarily want the resulting documentation brought into the public domain so there is the potential risk of a patent application being refused on the basis of prior art that would not even be identified to the applicant! There also remains the question whether a patent applicant should be obliged to disclose the source of biological material used in his invention.

David Bannerman replied that whilst FICPI sympathises with the needs of the developing countries it is concerned that established IP systems would be damaged if attempts were made to amend them to embrace TK. FICPI would have no problem with an appropriate Sui Generis system. Julian Crump added that any such system should be structured so that all concerned would benefit, from the holders of the TK to the ultimate exploiters of it.

That concluded the patent topics on the agenda so the meeting was then joined by some of WIPO's trade mark specialists, in particular Ernesto Rubio (Senior Director), Denis Croze and Alan Datri. After brief introductions, Ernesto Rubio outlined the work of his group. Denis Croze then spoke about progress on the SCT. At the November 2002 meeting there would be two main issues, the first being further amendment work on the TLT. Article 8 (the right to continue to file paper documents as well as to develop electronic filing), Article 13 (the right to correct or restore a claim to priority), and Article 4 (the right to representation) would be major topics. FICPI was invited to raise the issue of harmonisation of the format of registration certificates.

Another key issue would be further development of international trade mark law and the convergence of practices. WIPO plans to develop model examination guidelines to include the interpretation of distinctiveness. This "soft" approach might eventually lead to further harmonisation.

For FICPI, Andrew Parkes expressed disappointment at the slow rate of accession to the 1994 TLT. FICPI is concerned that negotiations on amendments must not further delay ratification. FICPI would like to see a minimum definition of what constitutes a registrable mark, leaving optional the possibility of registering unconventional marks. FICPI is also interested in designs and how they interface with three-dimensional trade marks.

We were notified that the US is likely soon to implement the Madrid Protocol.

We then moved onto enforcement issues. Wolfgang Starein who had just joined the meeting reported that he was assuming responsibility for this area. Ms Marta Friedli from the WIPO Advisory Committee on Enforcement, which is studying the difficulties and especially the training needs in this area, indicated that WIPO is planning soon to introduce an electronic forum on enforcement.

Malcolm Royal stressed that enforcement is of great importance to patent attorneys and asked about any WIPO involvement in arbitration. Wolfgang Starein agreed that arbitration or mediation is a possible way of solving complex issues, especially cross-border problems, at a favourable cost. He reported that WIPO also wants to become involved in IP insurance.

The final agenda item was education. Malcolm Royal began by explaining the SEAD and EURO-SEAD courses and expressed disappointment that FICPI had received no further funding from WIPO. Mr Rai, who is in charge of the WIPO Academy, gave an update on its activities. Whereas the work of the Academy had originally been focussed on Patent Offices, the focus has now been widened to include other interested professionals. In the future the Academy might consider courses for trainee patent attorneys in cooperation with FICPI.

The meeting was then closed with appreciative remarks from Malcolm Royal and Jürgen Schmid-Dwertmann. Both parties resolved to hold these meetings at least once a year in the future.