PATENTS STREAM
Report by Julian Crump

Since their beginnings in Rome in 1993, FICPI's Open Fora have strived to offer relevant, practical advice to independent practitioners, as well as providing an opportunity for colleagues around the World to exchange views. This year was no different, and the organisers took-up many of the suggestions for topics made by delegates attending last year's Forum. Thus the Patents Stream kicked off strongly on the first morning with excellent, informative sessions on 'Effective US patent prosecution' and a 'Biotech. patenting primer'. Both were greatly appreciated by attendees, with Ivan Ahlert (BR) in the former session struggling with the twists and turns of US patent law and practice to obtain a patent for a novel pencil under the expert guidance of Charles Van Horn (US), making it perfectly clear that 'best practice' in the US is far from evident to non-experts, and, in the latter, Daniel Alge (AT) coping admirably to explain the rudiments of not only patenting genes in Europe, but also of genetics in general - all within thirty minutes! -, and Ray Stewart (US) outlining the position in the US, opining that the biggest problems were the requirements for a full disclosure and a specific, substantial and credible utility: specific utilities might not be credible, whilst general utilities might not be sufficiently specific.

After lunch, Dieter Laufhütte (DE) and Kazuaki Takami (JP) continued the thread of offering practical advice by explaining how to cope with the requirements for unity of invention in the European and Japanese patent offices, before Mike Garrett (GB) of KB Innovation Group, who holds the only MBE ever awarded for services to innovation, discussed the process of successful innovation and how it might be nurtured and managed, and Chris Sundman (FI) picked-up the theme by considering ways in which private practitioners might bring their considerable knowledge and experience of inventions to bear to the benefit of clients, beyond the traditional role of simply obtaining patents 'to order'.

Day 2 started with an highly accomplished presentation by Udo Preuss (DE) and Eric Le Forestier (FR) who explicated the EPO's requirement for patentable inventions to have a technical effect, with particular reference to examples drawn from the field of computer-related inventions, concluding - to the bafflement of some delegates - that the exclusion of computer programs could effectively be ignored, and pointing to numerous examples of claims granted explicitly to computer programs. No wonder earlier in the week FICPI's Executive Committee had unanimously adopted a position paper that there should be no requirement for an invention to have a technical character to be patentable. The organisers were delighted that the session was moderated by Tomoko Miyamoto (JP) from WIPO who is part of the team responsible for drawing up the draft Substantive Patent Law Treaty.

In the final presentation, Lora Moffatt (US) and John Orange (CA) - expertly standing in at the very last minute - considered the 'on-sale bar' in North America. Reviewing the recent Canadian case Canwell - v - Baker John concluded that Canadian law was now more closely aligned with European law, whilst Lora presented the relevant US case law that for the on-sale bar to apply: (1) an invention must be ready for patenting and (2) there must have been an offer for sale or an actual sale of the invention, and underlined the importance of the grace period to small inventors, whilst recognising the desirability of preventing effective monopolies from being unduly prolonged. In concluding the session, Chris Everitt (GB) looked at the situation from a British / European perspective.

TRADEMARK STREAM
Report by Coleen Morrison

Prague Forum Organisers adopted a novel approach in respect of the trademark program. A common fact pattern was relied upon by all speakers and served to link the various talks. Topics were chosen for their relevance to current trademark practice and the sessions covered many cutting edge issues.

The hypothetical situation relied upon involved a Scottish business, Glen Clag, which through reliance on genetically modified grapevines was able to market several wines. Designers at Glen Clag also developed the idea of a bottle within a bottle concept used to market a combined Chardonnay/after dinner wine.

The trademark sessions commenced with presentations by speakers outside the trademark field, Jeannette Hanna and Lars Lundberg, specialists in corporate branding who provided information regarding how marks are chosen.This was followed by comprehensive and thought provoking presentations by Gerard Skelly and Pier Luigi Roncaglia on the topic of trademark protection for shape marks. Marius Knijff, who was also responsible for design of the fictional, combined bottle, and Gonçalo de Sampaio relied upon their expertise to offer their insightful information regarding where and how to best file applications.

The second day saw Petter Rindforth and Chantal Bertosa deal with issues involving domain name registration and conflicts. Andrew Parkes and Dr. Istvan Gödölle turned their attention to how it might be possible to deal with difficulties arising out of enlargement of trade areas and offering practitioners some excellent advice in avoiding pitfalls and dealing with future problems which might arise. The finale involved a mock US Opposition. Howard Rockman and Kandis Kahn offered top notch, not to mention entertaining representation of Glen Clag and the Opponent. Dr. Ian Kaufman, acting as both moderator and Registrar rendered a decision from the bench drawing the trademark presentations to a close. The moderators, Coleen Morrison, Yasuhito Suzuki, Miguel O'Farrell, Christian Hano, Helmut Sonn and Dr. Ian Kaufman ensured the sessions ran smoothly and did a commendable job in eliciting questions from what was obviously an enthusiastic and knowledgeable audience.

GENERAL STREAM
Report by Arild Tofting

The general stream did not have a specific thread. It contained topics that were linked to, but did not fall within any particular major IP area. The topics ranged from managing e-mail to EU-enlargement.

The relationship between standards and IP-right session gave an overview over some of the important standardisation bodies and how IP holders could contribute to the standards by licensing their rights and the benefits for the IP holder gained by this.

Managing e-mail was a very well attended session. Two of the speakers had specific suggestions for the internal handling of the e-mail in a firm. The third speaker covered the issue of e-mails and discovery in the US.

Adult education turned out to be a particularly interesting topic. We learned how The Patent Office test candidates for Examiners before hiring. We also learned about the training of UK and Australian patent professionals in the past and presently.

Competition law and IP rights focused on the consequences of refusal to licence an IP right in the US and in EU.

The EU enlargement was attended by a substantial number of participants who learned about the requirements imposed by the EPO on new EPAs and what the consequences for the IP practitioner might be as seen from the Czech and the Polish perspective. Some interesting statistics of these countries were presented.

Plant variety protection was better attended than even expected by the speakers. The session proved to be an interesting glimpse into an area of IP that is not very well known.