Dear Friends

Our Paths

Have Changed...

But I still find myself

thinking of you so often,

even though we have gone

our separate ways...

I still remember you

with such fondness,

and I can’t help but smile when

I think of all the wonderful

times we have shared ¾

Those were truly

special times.

While time and distance have kept

us apart, warm memories

still kept you close to me...

You will always

be someone very

dear and very special to me ¾

And I hope, one day our

paths will cross again...

Until then, I will hold

onto some warm and

wonderful memories.

With thanks for all your well wishes

And with my warmest regards always

Maggie

COUNTRY REPORTS

Full reports from Argentina, Australia, Austria, Belgium, Canada, China, Czech Republic, Denmark, Finland, France, Greece, Hungary, Italy, Mexico, Norway, Portugal, Spain, Sweden, Switzerland, UK, and USA can be found at http://www.ficpi.org/newsletters/58/BUR-005full6.pdf.

Argentina

• a meeting was held with customs officials to permit registration of trademarks with customs officials and this has been followed up with a draft decree.
• an IP workshop attracted 280 attendees from Latin America including Federal Judges and officials.

Australia

• The annual meeting was held in September 2006 with a theme of IP communication. Peter Huntsman remains as President.
• three meetings have been held with IP Australia to discuss a wide range of topics.
• Critiques of proposals to reform the regimes for Patent and Trademark Attorneys were filed and a follow up meeting has been held.
• Many consultative papers have been published which are being responded to in a selective manner.
• Amendments have been made to the Patent Act dealing with prior use, compulsory license provisions, exemplary damages, and a revised Bolar type provision.
• Amendments to the Trademark Act have strengthened the rights of trademark owners but also reduced the grace period for renewal.
• Court decisions on co-ownership of patents and business method patents have been issued.
• FICPI Australia website is www.ficpi.org.au

Austria

• the EU enforcement directive has been brought in to force.
• a Biopatent Monitoring Committee was established following adoption of the EU directive on biotechnological inventions. Its first report was submitted to Parliament and showed an increased investment in the biotech sector with confidence as to the legal certainty of the patent rights granted. No negative impact on publication by University scientists was noted.

Belgium

• amendments to the existing statutes are being studied to bring the EU directive on enforcement into effect.
• a revised Benelux convention on IP came in to effect 1 Sept 2006 (see www.boip.int)

Canada        

• Ingrid Schmidt was elected President
• the annual salary survey was distributed
• a meeting with the Commissioner of Patents was held.

China

• formation of a Chinese section of FICPI was approved in Paris, 2006 with 18 members.
• A plenary meeting was held in Beijing in August 2006.
• A FICPI page on the ACPAA has been established.
• A number of initiatives for enhancing IP rights are under consideration including a new Patent Law

Czech Republic

• Joseph Smola was elected President of the FICPI section at a plenary meeting in June 2006.

Denmark

• Mrs Anne Schouboe has been appointed as President.
• The EU enforcement directive has been implemented.
• The central limitation procedure of EPC 2000 has been adopted and the revised Article 52(5) is expected to be implemented in January 2007
• Attorney privilege was discussed at a meeting in Sept 2006 and submissions have been made to permit IPR consultants to represent clients in Court.
• A seminar on appearing as a qualified expert was held in November 2006 in view of the use of the patent profession by the courts in this role.

Finland

• a new board was elected as of 1 Jan 2006 with Torbjorn Lydman as President
• monthly meetings have been held
• a meeting with the examiners of the Finnish Patent office has been held.

France  

• proposals are being studied that would exempt people having extended experience in IP law from the qualifying examination.
• the Constitutional Council has found the London Protocol not contrary to the French constitution

Greece

• a specialised IP Court has been introduced.
• FICPI members have met with officials to discuss practical issues and IP training for the judiciary.

Hungary

• the Hungarian group is active in promoting revision of a number of IP laws following accession to the EU. These areas include:-
• the deposit and handling of biological material;
• registration of copyright works;
• compliance with the enforcement directive;
• status of IP attorneys;
• official fees of the Hungarian patent office and
• compliance with the TLT after Singapore.

Italy

• efiling has been implemented for patents and trademarks and the Collegio has offered suggestions for further improvement.
• there has been participation in a discussion of the respective merits of technical experts of the Judge vs. Technical Judges
• a FICPI Italy web site, including a list of technical experts, has been established at www.ficpi.it

Mexico

• Amendments to the IP law will be enacted to govern conditions for a franchise agreement

Norway

• ratification of the EPC will occur no later than January 1, 2008.
• meetings have been held October and November.

Portugal

• a round table meeting to discuss a new Government project “ Mark on the Hour” was organised in view of wide spread criticism of the project.
• a meeting was held in Alicante with OHIM officials.

Spain

• amendments to bring the EU directive on enforcement of IP rights have been made to a number of statutes.
• the copyright Act has been amended to bring it in to line with the EU directive
• regulations concerning customs actions against infringing goods have been implemented
• a “Bolar” exception has been adopted.

Sweden

• a meeting with Customs officials was held to discuss identification of counterfeit goods.
• in general elections, the Piracy Party, which proposed to find patent agents who drafted claims for non-statutory subject matter in contempt of court, did not win any seats.

Switzerland

• There has been a 20% increase in membership since the beginning of the year.
• a report on proposals to revise the unfair competition law was submitted to the Swiss Patent Office.
• A questionnaire from the EPO to users was answered.
• Three meetings were held to discuss development of the EPC and defeating trademark pirates, cross border litigation and changes in US practice.

UK.    

• The ABC meeting will be hosted by the UK group 28th -31st May 2007 at Loch Lomond, Scotland.
• The UK Patent Office has adopted the test for computer programs and business methods set out by the Court of Appeal. (See Santiago ExCo paper CET 1701).
• A streamlined design registration process has been implemented by the UK Design registry permitting, among other things, multiple applications on one form and postponement of public disclosure for 12 months upon request.

US.

• several proposals for Patent Reform legislation have been introduced but none has proceeded beyond preliminary discussion.
• PTO proposed rule changes limiting the number of claims to be examined, number of continuations, and more demanding information disclosure requirements have been proposed. Widespread opposition to the proposals makes their implementation uncertain.
• Accelerated examination is available under revised rules.
• Supreme Court has considered cases dealing with appropriate test for obviousness, patentable subject matter, injunctive relief and patents and antitrust.

In a recent decision dated October 27, 2006 the England and Wales Court of Appeal passed a joint judgement on patentable subject-matter under Art. 52 EPC of two separate patent appeal cases. While the concrete results are unsurprising and in line with what the EPO would have decided the Court has applied the following four-step test different from the EPO practice, the steps being:

(1) properly construe the claim

(2) identify the actual contribution

(3) ask whether it falls solely within the excluded subject-matter

(4) check whether the actual or alleged contribution is actually technical in nature.

In addition, the Court identified inconsistencies between different decisions of the Technical Boards of Appeal and invited the President of the EPO to submit the following questions to the Enlarged Board of Appeal to clarify these inconsistencies:

(1) What is the correct approach in determining whether an invention relates to subject-matter that is excluded under Article 52?

(2) How should those elements of a claim that relates to excluded subject-matter be treated when assessing whether an invention is novel and inventive under Articles 54 and 56?

(3) And specifically:

         a) Is an operative computer program loaded onto a medium such as a chip or a hard drive of a computer excluded by Article 52(2) unless it produces a technical effect, if so what is meant by "technical effect"?

         b) What are the key characteristics of the method of doing business exclusion?

The full report is available at http://www.ficpi.org/library/SantiagoCET/CET-1701.pdf.

CET TOPICS

The CET Executive has held meetings in Bristol to prepare for the Santiago de Chile ExCo and will hold meetings in Dublin in March to prepare for the Amsterdam ExCo and Cambridge, Ontario, to prepare for the Seville ExCo.

At the Santiago ExCo the following topics were presented for discussion in the ExCo.

WIPO Madrid working group

WIPO is working to make the Madrid system more user friendly and this requires international unity, including adjustments of national regulations. (more)

WIPO Standing Committee on Trademarks (SCT)

The SCT will continue its work on “new types” of Trademarks. Brazil has compiled a list of 5000 generic terms pertaining to genetic resources as a reference tool (more).

Report from OAMI user group meeting

A meeting of the OHIM Users Group discussed a large number of practical issues. FICPI led the widespread criticism of the efiling system (more).

Patent Law Harmonisation

Discussions on substantive harmonization have stalled but a group of countries, known as B+, have continued discussions outside WIPO (more).

Japanese proposal for New Route

Japan has proposed a “New Route” to obtain an 18 month deferral without utilising the PCT (more).

Meeting of SACEPO and EPO Board of Appeals

Topics discussed include new Technical Boards, requests to postpone Oral Proceedings, inappropriate conduct, special representation and exhaustion of priority rights.(more)

Implementation of EU IP Enforcement Directive

The Directive 2004/48/EC on the Enforcement of IP Rights should have been implemented/transposed by the EU member states at the end of April 2006 at the latest. Italy, UK, Spain, Hungary, Romania and Finland have implemented the EC Directive (more).

International legal binding instrument on genetic resources and traditional knowledge (TK)

There have been proposals to adopt a legally binding instrument to address TK issues. FICPI is opposed to this as there is no broad consensus on appropriate measures (more)

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WIPO Madrid Ad Hoc Working Group in Geneva

The Madrid Ad Hoc Working Group met in Geneva June 12-16 2006 and decided upon a number of suggestions to be submitted to the Assembly.

1) In order to reduce the examination period, it was agreed that when a refusal is based on an opposition, the main rule should be that the notification should be made within a time limit of one month from the expiry of the opposition period and, in any case, not later than seven months from the date on which the opposition period begins. (The Protocol: Article 5(2)(c((ii)).

2) The Madrid System today exists of the Madrid Agreement and the Madrid Protocol. Some countries have signed both treaties, others have only signed one of the treaties. In order to simplify the operation of the Madrid system, it was suggested that the system should be governed by only one treaty to allow equal treatment for the users and to allow users to benefit from the advantages of the Protocol when a State is bound both by the Agreement and the Protocol. The meeting is to recommend to the Assembly of the Madrid Union to extend the mandate of the Working Group in order to reach a proposal for a possible repeal of the safeguard clause. (The Safeguard Clause of the Protocol: Article 9SEXIES.

3) The Working Group recommended the Assembly to alter the Common Regulations to establish a full trilingual regime under the Madrid system for adoption in the framework of the revision of the safeguard clause and also to encourage the International Bureau to make standard forms available to the Offices of the Contracting Parties.

4) A recommendation was also prepared on the kind of information which should be available when a national or regional registration is replaced by an International Registration. (Article 4bis).

Time did not allow the proposal from Norway, to change the basis for an International Registration, to be discussed and the Working Group agreed to request a continuation of the mandate until the subject-matters of the present mandate were concluded. full report http://www.ficpi.org/library/SantiagoCET/CET-1101.pdf

Report on WIPO SCT, 16th Meeting

At the most recent meeting of the SCT, one agenda item was retired, several were deferred and further submissions were sought in respect of two items.

The SCT will be undertaking further work in the area of new trademarks, considering in particular the manner of representation and description as well as the application of existing trademark principles to these new indicia. Submissions from delegates were sought both in this area and in respect of Opposition Procedures, another agenda item for which work will continue. Grounds, “pre” versus “post” registration opposition, as well as the relationship between examination and opposition were topics to be considered.

The agenda item relating to the relationship between trademark and copyright has been deferred until such time as the Secretariat can prepare a paper comprising a jurisprudential review for consideration at the 18th session. The Secretariat will also be preparing a paper on Article 6ter of the Paris Convention for the next SCT meeting where it is expected this will be a significant agenda item.

A questionnaire relating to industrial designs was contemplated as the basis for discussion at future SCT meetings.

There were no developments in the area of geographical indications.

The Brazilian communication marks the entry into the trademark field of the issue of protection of genetic resources and what is termed by Brazil as bio-piracy. Brazil had compiled a list of 5000 generic terms in Portuguese related to Brazilian plant biodiversity. The purported aim of the list was as a tool to prevent registration of trademarks without sufficient character. Erroneously registered marks were characterized as a form of biopiracy detrimentally affecting local or traditional communities. The Communication from the permanent mission of Brazil involving customary names associated with biodiversity was accepted to be maintained as a SCT paper. Several other delegates expressed an interest in adding to the list.

(full report http://www.ficpi.org/library/SantiagoCET/CET-1102.pdf)

Meeting of the OAMI (OHIM) User’s Group

1. As a founding member of the Group, FICPI was again invited to participate, being represented on the day by Christian Hano and Terry Johnson.

2. A pre-meeting of NGO’s namely AIPPI, APRAM, ECTA, UNION and FICPI was held the evening before. This pre-meeting has become a useful forum. At this one it was agreed that e-filing at OAMI was not satisfactory, and particularly put a burden on private practice firms. It was agreed that FICPI was the appropriate body to raise the topic, and that our intervention would be supported by other NGO’s present.

3. The President of OHIM, Wubbo de Boer, then gave a general report.

(i) That day was significant as it was the first day of new procedures internally in the office in that separate TM & Design departments had been replaced by two new Departments, namely (a) Trade Marks and Cancellation Department (Director: Beate Schmidt (who takes up her duties on 1st August 2006)) and (b) Trade Mark and Registry Department (Director: Hans Jakobsen).

(ii) The reason for this reorganisation is so that Examiners can handle a whole file, e.g. one Examiner would handle both examination and opposition. The aim is to have no transfer between different Examiners.

(iii) The trend of applications is rising (as it is too in National offices). OAMI had seen an increase of 17% in trade mark applications and 6% in Designs over the last year.

(iv) The rate of renewals for the 10 years to April 2006 showed a 75% renewal rate, which was higher than the “blue sky” assumption made when the budget was set (the assumption was 50% renewal!).

May and June showed a slight falling off (68% and 62% respectively), still higher than the 50% assumption.

(v) The Office was in good financial shape - despite fee reductions there would nevertheless be a 40 - 50 million EURO surplus for the current year.

(vi) User Satisfaction Survey

(a) This had been counted a success;

(b) A second one would be conducted in December 2006;

(c) The aim had been to see what users want. (i) Predictability was the main requirement as were (ii) updated Guidelines, and (iii) a consistent adoption by the Office of Board of Appeal, CFI and ECJ Decisions;

(d) The complaints procedures were explained, and users were encouraged to report any dissatisfactions;

(e) Access to Examiners by e-mail was encouraged;

(f) The Office was going to initiate consultation of new practice focus groups with IP professionals. However, the office confirmed that the Users’ Group would be the primary consultation body;

(g) e-filing, e-oppositions and e-payment were explained. The meeting was told that as of the week before the meeting, an opposition could be filed on-line. There seemed to be a lack of certainty as to whether evidence in support of an Opposition can be filed on-line at the present time.

A power-point presentation was made concerning e-filings etc. At this point, FICPI intervened to say that e-filing was not as successful as was made out, namely:

(i) It was not certain;
(ii) It was “clunky”;
(iii)There was no automatic confirmation;
(iv) The differentiation in fees (i.e. lower for e-filing) gave private practice firms (and industry) no choice, they had to use the e-filing system to pass on lower fees to clients. In view of the deficiencies in the system, extra burdens were placed on firms in that they had to check all filings and whatever came back from the Office. This created an artificial barrier as there was no choice - the “traditional” fax filing method was sure, and easy to use. AIPPI, ECTA, CNIPA, APRAM and EFPIA supported these comments.

The Office responded by saying that

(i) automatic e-mail confirmation of new applications would be provided as of the week before the meeting.
(ii) e-caveats would soon be available, as would e-inspections of files.
(iii)e-opposition had gone “live” on 30th June 2006.
(iv) e-payment was encouraged - so far 112 payments by credit card had been received.
(v) MYPAGE should be fully operational in 2007.
(vi) Renewals of RCDs on-line was a recently started project.
(vii) E-COMM was expected to be fully operational in 2007.
(viii) “Business to Business” (B2B). This was being developed by the tender firms, namely Dennemayer and CPA. It was not envisaged that the Office would make it available as of right to users.

4. Guidelines

(i) Opposition: a revised version should be available for comment by users by the end of July ’06.

(ii) Examination: an updated version should be released before the end of July ’06.

(iii) Cancellation: The first ever version should be released in September/October 2006.

(iv) Madrid Protocol: An updated version should be available before the end of 2006.

(v) Other Guidelines: These would be updated as necessary on a case-by-case basis.

(vi) Practice Notes would also be issued, but no date was set for this.

(vii) e-mail: Examiners responses would be binding on the Office. However, in response to my question, it was said that not all e-mails would be open to inspection in the file when open to public inspection. The Office would decide what was an “informal” response. (FICPI should make a submission on this, if we think it important).

(viii) Complaints: The Office takes these seriously, and has different levels of response. For example, a working party on an improved response to informal complaints was being set up.

(ix) The Office agreed that 8 months (the average) was too long a time from application to publication.

(x) Translation deficiencies were not the Office’s problem, rather that of the EU Translation Service in Luxembourg. Nevertheless, the Office would urge a better service from Luxembourg

(xi) As regards search/classification, EURONICE had been withdrawn in favour of EUROCLASS. After some discussion, the Office agreed to look into re-opening EURONICE until EUROCLASS is fully on stream.

(xii) Designs

(i) There was a brief discussion.    The Office thinks the system a success. Up to 30the June 2006, 50,000 applications had been filed in the current year. 190,000 had been filed in total.

(ii) This year, 26% of applications had been filed as e-applications. The average period for acceptance is 59 days from filing.

(iii) The Hague. The EU Council was expected to approve a “link” this July, so the link between the CDR system and the Hague should be up and running “soon”

• the Office’s words!

The next meeting would be in February, 2007.

Group B+ Patent Law Harmonization

As a result of the stalemate in the discussions of the substantive patent law harmonization in WIPO, a so-called Group B+ of countries decided to proceed with discussions outside WIPO. The current draft document is based on a reduced package as suggested by a group of countries in WIPO, and a November 2006 version of that document is enclosed, tabled with comments concerning FICPI’s positions. A recent meeting of the Group B+ took place in November 20th.-21st. 2006, but the corresponding report was not made available to date.

Among the open issues concerning which FICPI has established positions are:

• introduction of “first-to-file” system in all member states (Art. 4);
• a PCT application should form part of the “secret prior art” only if it enters into the respective national phase (Art. 8, 2(b));
• a novelty grace period of 12 months, covering any form of prior disclosure caused by or derived from the inventor or his successor in title, including experimental use and publication of patent application; and no mandatory declaration.

Among issues to discuss are:

• whether conflicting applications (secret prior art) should be taken into account for determining novelty alone, or for both novelty and inventive step;
• whether the abstract should form part of the secret prior art;
• whether or not to provide for anti-self-collision in connection with the secret prior art;
• whether secret commercial prior use should be assimilated to novelty-destroying prior art.

Among the open issues which are pending discussion in FICPI, the influence of the secret prior art is the object of paper http://www.ficpi.org/library/SantiagoCET/CET-1301.pdf. A full report is available at http://www.ficpi.org/library/SantiagoCET/CET-1303full.pdf

Japanese Patent Office “New Route “ Proposal.

The New Route Proposal is an initiative of the Japanese Patent Office, which was presented to the Trilateral Summit of European, US and Japanese Patent Offices in Munich on November 17, 2005. Under this proposal, it will be possible for applicants to obtain an extra 18 months for processing at the national or regional level, provided certain steps are taken on filing, without resorting to the PCT system. The applicant must, at the time of filing, notify the office of first filing (OF) of the intention to use the new route and conform to certain standards. The new route filing can either be a priority application or a non-priority application. In either case, publication occurs at 18 months from the priority date, followed by examination by the OF. The applicant must then pursue the application in one or more Offices of Second filing (OS) within 30 months from the priority date, where prosecution continues, taking into account the results from the OF. The primary advantage put forward by the proponents of the new route for applicants is simplicity and lower cost.

For applicants, especially if there is a distinct cost benefit relative to the PCT, there would seem to be little disadvantage in using the new route. The only disadvantage for the applicant would seem to be that once an applicant has opted for the new route, it no longer has the option of changing its mind and expanding the range of countries to include non-participating countries at a later date. Some non-participating countries might see their applications decline because applicants who initially only opted for the simplified route, and who possibly found the invention to be more successful than originally anticipated, or perhaps who might have found a licensee in a non-participating country, would no longer have the option of obtaining protection in such a country.

The filing cost of a PCT application is a sufficient deterrent to prevent the automatic filing of a PCT in all cases, but is not sufficient to deter serious applicants. If the cost for pursuing the new route is comparable to that of the PCT, the new system would have little purpose. If, to the contrary, the cost of the new route is substantially less than the cost of the PCT, it would have the effect of encouraging applicants to routinely opt for the new route without giving due consideration to the merit of an application, and the patent system could become burdened with multiple new route applications prior to processing at the national office. These would be inherently more costly to search, and would increase the cost for third parties of freedom-to-operate opinions since they would need to consider the likelihood and scope of such applications being granted in each country of interest. More details http://www.ficpi.org/library/SantiagoCET/CET-1304full.pdf

Report on the MSBA

On 21 June 2006 MSBA meeting (Members of SACEPO and Boards of Appeal of the EPO) was held at the EPO in Munich.

In the report of the recent developments the President of DG3, Mr. Messerli informed that two new Technical Boards of Appeal have been established, 3.5.04 (electricity) and 3.3.10 (chemistry). There are now 24 Technical Boards (7 mechanics, 10 chemistry, 4 electricity and 3 physics). In 2005, 1684 new appeals were filed and 1499 appeals were settled (2004: 1533 filed and 1451 settled). This represents a further increase of filed appeals of 9,8 % compared to 2004. The average duration of appeals has fallen from 32 months (in 2000) to 25 months in ex parte cases and 29 months in inter partes cases.

The Enlarged Board of Appeals has issued two decisions G 3/04 on 25 August 2005 regarding inter­vention in opposition proceedings and G 1/04 on 16 December 2005 regarding diagnostic methods.

Currently, four cases are pending before the Enlarged Boards of Appeal : G 1/05, G 1/06 and G3/06 regarding divisional applications (we have already provided a draft for an Amicus Brief of FICPI), and G 2/06 regarding the patentability of stem cells (a draft for an Amicus Brief of FICPI is currently discussed in CET Group 5).

We were informed that the 5th edition of the case law book (the “White Book”) will be sold before the end of 2006, probably in November.

With respect to requests for postponing oral proceedings before the Boards of Appeal a (non– exhaustive) list was provided by DG 3 containing examples of reasons which did not convince the Board of the necessity that the oral proceedings should be postponed. The list was as follows :

a)	planned booking of holidays,
b)	alleged booking of holidays without indicating the date of booking
	and without corroborating evidence,
c)	bank holiday in the country of residence,
d)	other appointment fixed after the receipt of the Board's summons,
e)	oral proceedings of representative the following week,
f)	litigation process (in another case) 2 months later,
g)	wife's birthday, and
h)	incorrectly alleged other appointment.

The unsuccessful requests are regarded as an unnecessary burden for the Boards. In order to avoid this burden (and the work and costs associated therewith), it was strongly suggested to follow the guidelines published in the OJ of the EPO (2000, page 456), if such a postponement should be effected: the request must be properly reasoned and substantiated in order to be successful. It was again assured that the list of successful reasons given in the OJ publication is not exhaustive, but it was also highlighted that even relying on one of the reasons given in the OJ announcement will be unsuccessful, if not accompanied by a proper substantiation of the reasons in the present case. It was insisted from our side that change of representatives is in many cases not possible without severely affecting the client’s position. This was accepted by the Boards; however, also in this case, a reasoned statement as to why such a transfer to another attorney in the office is not possible or very difficult must be brought forward with the request for postponement.

Under the topic “Inappropriate conduct in proceedings before a Board of Appeal of the EPO” it was discussed whether means should be introduced into the law giving Appeal Boards the power to exclude persons from proceedings. If this person was the (sole) representative of the party, proceedings shall be suspended and the competent authorities to whom the person concerned is responsible with respect to his professional conduct shall be informed by the chairman. We informed that there are already ways established within epi with respect to disciplinary matters. It was also asked whether examples of the alleged “conduct of a representative incompatible with the dignity of a judicial procedure” could be given; however, no such examples were given. It also seemed that the chairmen of the Boards of Appeal had different views about the immediate necessity of such an instrument.

It was then discussed whether – in a future system – a special authorisation for representatives should be introduced for representation before the Boards of Appeal. As a proposal, doubtful criteria were given, such as age, uninterrupted period of professional experience, minimum record before Examining and Opposition Divisions, accreditation by a special panel or appointment by the Boards of Appeal. This proposal was therefore completely rejected by the users. It was pointed to the fact that the EQE provided the required qualification to act before the EPO and that a specific qualification for the second instance is not necessary.

Under the topic "Trivial Patents" it was (as each year) discussed whether the level of inventive step is too high or too low at the EPO. The only reportable result from this discussion is that it was agreed that the term “Trivial Patents” should not be used too much, because steady use of this term could indicate that it is also accepted from our side that this is a real type of patents.

With respect to exhaustion of priority rights, FICPI inquired whether a Board of Appeal which likes to follow the theory of exhaustion of priority rights (which was seen as an exceptional decision not representing the common decision practice of the Boards of Appeal) would be urged (e.g. by a statement of GD3 or the board chairs) to refer this question to the Enlarged Board of Appeal before taking the decision. Of course, such a guarantee could not be given by the Boards; however, it was noted that a Board would carefully consider the question of referral if this question should be decided in the “pro–exhaustion” direction.

Regarding the practice of hearing witnesses during appeal, the Board chairmen answered that this should be the exception, however, not completely impossible in special cases.

A question from FICPI regarding any guidelines or standards concerning appeal cases dealing with electronic filing was answered that for the time being, no such guidelines or standards have yet been implied; accordingly, the standards already applied for “normal” filings, such as trust into the EPO and protection of legitimate expectations, should also apply for such cases. Full report http://www.ficpi.org/library/SantiagoCET/CET-1401.pdf

Implementation Status of EC Directive 2004/48/EC on Enforcement of IP Rights Update

The status of implementation/transposition in the member states (official deadline for implementation was April 29, 2006) was the following in fall 2006:

France	Although the Director of the National Industrial Property Institute announced on Oct. 2, 2006, during a colloquium on EPLA, that the draft bill agreed by all concerned ministers was ready and would shortly go through the Parliament, nothing has moved since.
Italy	A legislative Decree implementing the Directive has been approved by the Italian Government on February 23, 2006.
United Kingdom	The Directive has now been fully implemented within a broader law (Statutory Instruments 2006 No. 1028).
Germany	In September 2006, the Minister of Justice was reviewing a draft bill. The usual process is then to have a final version agreed by various governmental bodies and to send it to the parliament. This is expected to take 6-12 months. However, sources indicates that German courts already base their decisions on certain provisions of the Directive.
The Netherlands	A bill has been approved by the Parliament. The act implementing the Directive was supposed to be effective before summer 2006, which however did not happen.
Spain	The Directive has been transposed by Law No. 19 of June 5, 2006, which entered into force on June 7, 2006.
Belgium	Two draft bills, one on piracy and the other on civil rules for infringement cases, have been adopted by the Federal Ministry of Economic Affairs. The first one was expected to go to parliament by the end of 2006. As of September 2006, the second one was not yet approved by the Council of Ministers.
Hungary	The Parliament has adopted in early 2006 an act implementing the Directive.
Romania	An “Emergency Ordinance” implementing the Directive has been adopted in early 2006.
Finland	On June 8, 2006, the Finnish Parliament adopted Bill No. HE 26/2006 implementing the directive. This came into force on September 1, 2006.
Other countries	No information readily or reliably available. However see infra, last paragraph.

 

Although some sources indicated that the European Commission would set up a meeting of the member states during 2006 to discuss the progress of implementation, no such meeting appears to have taken place.

Finally, it should be noted that in a communiqué dated October 12, 2006, the European Commission has officially invited France, Belgium, Germany, Greece, Latvia, Luxembourg, Malta, the Netherlands, Poland, Portugal, Slovakia and Sweden to implement the Directive. All these members states are then expected to receive formal notification of transposition failure.

Traditional Knowledge and Cultural Expression

In 2001, WIPO established an Intergovernmental Committee on the Protection of Traditional Knowledge and Cultural Expression (“the IGC”). FICPI has attended, as an observer, all the IGC meetings held in Geneva since its inception.

The Secretariat of the IGC has produced many useful documents including, for example, model provisions for the protection of traditional knowledge and traditional cultural expressions; guidelines for access and benefit sharing; policy and legal choices for the protection of traditional knowledge; defensive protection measures; and a comparative summary of existing Sui Generis legislation in respect of the protection of traditional knowledge and traditional cultural expressions.

A number of countries believe the issues under discussion are complex and require further investigation and discussion. These countries are mainly from the developed world. On the other hand there are countries that are now calling for an “international legally binding instrument” to take care of the issues under discussion. Generally, these are developing and least developed countries.

Although the establishment of an “international legally binding instrument” may appear to be an attractive solution to coordinating the protection and preservation of traditional knowledge and traditional cultural expressions, FICPI believes that it is not a practical and achievable solution in the near term. An analysis of existing Sui Generis legislation adopted by some countries relating to the protection of traditional knowledge and traditional cultural expressions points to the individual character of the needs of different countries in relation to it. Existing laws in China relating to the protection of traditional medicines, for example, would not be suitable for the protection of traditional knowledge in other countries. Furthermore, the participation of indigenous people in the deliberations of the IGC emphasizes the diverse needs of traditional communities.

Existing international instruments in the field of intellectual property law have only developed after there have been a sufficient number of countries having similar domestic laws to justify the international co-ordination and harmonization of such laws by way of an “international instrument”.

To date no attempt has been made by those countries in support of an international legally binding instrument relating to the protection of traditional knowledge and traditional cultural expressions to explain the substance and practical implementation of such an instrument.

There are presently no universally accepted definitions of traditional knowledge and traditional cultural expressions. Given the varying character of traditional knowledge and traditional cultural expressions in each country, it would not be practical or feasible to attempt to have a “one size fits all” approach to address their protection. FICPI therefore believes it is the responsibility of each country to adopt appropriate legislation to deal with the protection and preservation of traditional knowledge and traditional cultural expressions existing within its boundaries. Full report at http://www.ficpi.org/library/SantiagoCET/CET-1801.pdf