In this issue

1.    FICPI Forum, Seville, November 7-10

Over 320 participants have registered for the Forum. Two new sessions have been added to Friday's program, one on the new US Continuation Rules, the other on OHIM business tools. register here

 

2.    FICPI ExCo, Seville November 4-7

Topics to be discussed include the London Agreement, Bayh-Dole Act for Europe and SPLT developments.(more)

 

3.    FICPI China Symposium

FICPI's symposium in China attracted over 300 people from all over the World. more

 

4.    EPC 2000

Substantive changes to EPO practice come in to effect Dec 2007 more

 

5.    EPO decision on Divisional practice

Enlarged Board of Appeal clarifies divisional practice in EPO more

 

6.    FICPI ExCo meeting, Amsterdam, 3-6 June 2007

Resolution on Prior User Rights and report on proceedings. amsterdam

 

7.    FICPI UK Business Seminar

FICPI UK held a Business Practice Seminar more

 

8.    FICPI ABC Meeting.

Loch Lomond was the site for the meeting of the American, British and Canadian groups.more

 

9.    ExCo News

The CET Work and Study Commission continues to study and report on a wide range of topics more

 

10.ATRIP Sponsorship

FICPI sponsored the attendance of Professor Varma, who reports on the ATRIP Congress

 

11.Changes in Country practices

UK Trademark and Canadian Patent practice changes. more

 

12.Obituaries

We note with regret the passing of Dr Peter Stearne and Richard Catt from Australia, Jean-Louis Hautier from France and Dr. Heinrich Pawloy of Austria. memorium

 

13.New members

FICPI welcomes the following new members to its family.

Mr George FU, China
Dr. Lulin GAO, China
Ms Qingfen HAO, China
Mr Weimin WEI, China
Mr Shenmin XU, China
Dr. Michael Hermann Koch, Singapore 

 

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ExCo Meeting, Seville, 4-7 November.

A meeting of the Executive Committee of FICPI will be held in Seville, immediately before the Forum. Among the topics to be discussed is the practical considerations of the London Agreement, the applicability of the Bayh-Dole Act to Europe, and developments in the Substantive Patent Law Treaty. Three workshops will be held, one dealing with alternatives to the proposed mandatory declaration for a grace period, one dealing with criminal sanctions for infringement, and one dealing with patenting of non-technical subject matter. Copies of the relevant papers can be viewed on the FICPI web site at www.ficpi.org/library.

 

The London Agreement

On September 26th. 2007, the French National Assembly ratified a bill concerning the"London Agreement". Subsequently, on October 10th 2007, this bill was passed by the second chamber of the French Parliament, thereby making it likely that the London Agreement will come in to force in 2008.

 

The major impact of the London Agreement is to remove the need for a proprietor of a European patent to file translations of the patent specification in the language of the country in which the patent is validated. Instead, each member state will designate one of the official languages of the EPO and the submission of the specification in that language will be sufficient for validation. Translation of the claims in to the language of each validated country may be required.

 

This change in practise will have an impact on the profession in Europe and there are many practical consequences for patentees. The consequences of the London Agreement will be discussed at the Seville ExCo and a comprehensive paper will shortly be available on the FICPI web site www.ficpi.org in the library frame under Seville ExCo CET paper 1404.

 

The Bayh-Dole Act

The Bayh-Dole Act has been effective in the US to promote transfer of technology from academia to the private sector. The EU Commission is interested in whether aspects of the Bayh-Dole Act can be transferred to Europe to enhance technology transfer in Europe.

Development of a SPLT is effectively stalled within WIPO but attempts are being made through a group of industrialised countries, known as B+, to reach agreement on a reduced set of provisions. FICPI has provided input to those deliberations, notably on the provision of a grace period and its interface with prior user rights. A further issue that appears to have arisen recently is tha mandatory nature of the 18 month publication period. Most of Group B+ consider it essential but at least one member would prefer it to be optional.

 

FICPI's position with respect to the grace period is set out in the paper prepared by Robert Mitchell. more

 

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FICPI China Symposium

The newly formed Chinese Section of FICPI has made an immediate contribution by arranging a Symposium in Beijing. This is the first FICPI event held in China and attracted support from all around the World and a significant support from within China. Lego® building blocks were used to exemplify different issues in patents, trademarks, designs and copyright wit ha full exchange of ideas and practices, highlighting the global nature of our profession. more

EPC 2000

Extensive revisions to the European Patent Convention come into effect in 13 Dec 2007. In all 97 articles of the EPC will be amended, and while the basic structure of the EPC will remain the same, some care will be needed in handling the new provisions, particularly in view of changes in handling Unity of Invention in European applications resulting from a PCT application. The main issues dealt with are:-

1. transfer of procedural matters from the convention to the rules and changes to comply with international law;
2. a central limitation system;
3. an amendment concerning second medical use claims;
4. an adjustment to the effect of unpublished prior art of earlier date.
5. an article on privilege;
6. changes in applicability of further processing and restitutio provisions;
7. an improvement in legal remedies;
8. an amendment to the protocol to Article 69 (but see below);
9. changes to requirements regarding convention documents; and
10. a change to the EPO's powers to call for details of citations made elsewhere.

Alan Senior has kindly provided a summary of the changes and a commentary on their practical effect. For those attending the Seville Forum, there will be a detailed discussion of these changes in one session of the patent stream. more

EPO practice on divisional Applications.

For some time the status of divisional applications in the EPO has been uncertain. The decision of the Enlarged Board of Appeal of the EPO concerning the Divisional Applications (G1/05 and G1/06) has clarified this issue, and in doing so has adopted to a large extent the position advanced in the Amicus Brief submitted by FICPI.

 

Amendment of the divisional application after filing (and after grant of the parent) to bring it into accord with the parent is permitted.

 

An implied waiver of subject matter in the parent case, for example by way of amendment, does not carry forward in to the divisional, so claims to subject matter outside the scope of the claims of the parent can be included.

 

Multiple divisional applications may be filed in series, but the disclosure of the divisional must be in accord with the immediately preceding parent case. subject matter deleted in an earlier application cannot be re-introduced in to a subsequent divisional application. more

FICPI ExCo Meeting Amsterdam, 3-6 June 2007

Over 80 delegates from 31 countries gathered in Amsterdam for the ExCo in June. The arrangements made by the Dutch Section were exemplary, the weather co-operated for all the social events, and significant progress was made on a number of issues of interest to members of  FICPI .

 

The question of a grace period to excuse a disclosure by an inventor before the filing date has been a hot topic in harmonization discussions. FICPI has long supported a grace period as part of a harmonization package. For a summary of FICPI's position with respect to the grace period see Robert Mitchells report graceperiod

 

During the ExCo, considerable attention was paid to the correct structure of a prior user right with a grace period. As a result of those discussions a resolution was passed supporting the establishment of a prior user right in the grace period to the same extent as those rights are established after the filing of an application.(see resolution) Further work will be undertaken to refine that position to cover particular circumstances at future ExCo's.

 

A report was received from Alan Senior, the UK sub-delegate, which provides an excellent overview of the work conducted at the ExCo for the benefit of members and the profession at large. more

Sixty five attendees from America, Britain and Canada, and some other countries, enjoyed a break in the (bad) weather, a break in the (unannounced) construction, and a few breaks on the golf course while participating in a three day working program. more

ExCo Notes

The CET sub groups continue to monitor and report on developments of interest through papers delivered at the ExCo. The following summaries highlight some of the developments reported in Amsterdam.

 

1.             WIPO – Madrid Update madrid

2.             WIPO Standing Committee of Trademarks (SCT) Update sct

3.             Unpublished Prior Art art

4.             Prior User Right userright

5.             PCT Reform Work Group Meeting pctreform

6.             Community Patent Update cpupdate

7.             Patent Litigation in the EU litigation

8.             Rockbass – the question of representation in court rockbass

9.             Seagate – Attorney/client privilege revisited seagate

10.          MedImmune v. Genentech medimune

11.          EU – directive on criminal sanctions criminal

12.          Patenting of non-technical matter  nontech

13.          14^th OAMI User Group Meeting oami

14.          Protection of clinical data clinical

15.          Generic Biotech Drugs generic

16.          WIPO – National strategy for innovation, June 18, 2007 wipo

17.          New cases before the Enlarged Board of Appeal of the EPO cases

ATRIP CONGRESS 2007

BUENOS AIRES, ARGENTINA

JULY 16-18, 2007

ATRIP, Association internationale pour la promotion de l'enseignement et de la recherche en propriété intellectuelle (the International Association for the Advancement of Teaching and Research in Intellectual Property) is an international organisation whose objective is to contribute to the advancement of teaching and research in the field of the law of intellectual property. Its members are professors and researchers in the field of intellectual property. FICPI has provided sponsorship to a member from a developing country to allow that member to attend the annual conference. The most recent annual congress was held in Buenos Aires in July and FICPI sponsored Professor Verma from India.

The liason with ATRIP is organized by Francois Curchod who reports that Professor Verma's participation was very fruitful. She gave a lecture and also intervened on several other occasions, asking questions or making comments after presentations given by other speakers. This follows the example of Professor Tankoano from Niger the beneficiary of FICPI's assistance the previous year who also took an active role.

 

FICPI will continue its support for the next meeting in 2008 in Munich. more

Changes in country laws.

We have received two requests from IP offices to publish information about changes in practice.

The UK Trademark registry has changed its practice regarding refusal of an application on the basis of an earlier registration, unless the owner of the earlier mark successfully opposes the new application. uk

In Canada, detail changes have been made to the definitions of small Entity and a provision to permit "top up" fees if a fee is paid at the wrong level. An attempt to simplify the requirements for establishing an applicants right to make an application permits a declaration to be filed, although the contents of the declaration are onerous.  canada

Obituaries

It is with deep regret that we have learnt of the bereavement of a number of eminent members of FICPI.

 

The Australian group has advised that Dr. Peter Stearne, and Richard Catt from Australia, Jean-Louis Hautier from France and Dr. Heinrich Pawloy passed away within the last few months.

 

Greg Chamber's, Australia's Exco delegate has noted the impact on the Australian profession with the loss of these two active members so soon after the passing of Malcolm Royal.

 

Dr Peter Stearne was a partner of Davies Collison and succumbed after a battle with motor neurone disease which he had fought bravely and with his characteristic cheerfulness. He had a distinguished career handling many significant matters.

 

Mr Richard Catt, was the senior partner at Madderns and a long-time FICPI member. He was only 57 years of age. Richard had been actively involved in FICPI affairs

 

We extend our deepest sympathies to the family and colleagues of  these eminent members of the extended FICPI family.

FICPI China Symposium

The symposium was held in Beijing, China on September 20th and 21st, 2007.  The symposium was jointly organized with the FICPI China Section and was well attended.  There were about 300 attendees, including those from China, United States, Europe, Japan, Canada, East Asian countries, Australia, and Africa.  About half of the attendees were from China, mostly private practitioners.  There was also a significant contingent of examiners from China's State Intellectual Property Office ("SIPO") and a number of officials from different levels of Chinese governments and Mr. HE Hua, Deputy Commissioner of SIPO, made the opening remarks.

 

The main theme of the symposium was "Challenges of a Global IP Practice".  Speakers from United States, Europe, China, Canada, Australia and Japan provided diverse and in-depth coverage of a wide range of topics dealing with patents, trade-marks, copyrights, and design registrations/design patents.  One purpose of the symposium was to compare practices on protection and enforcement of intellectual property rights in major jurisdictions in the world, with emphasis on China, Europe and the United States.

 

The presentations were exemplified by reference to the LEGO® building blocks and consideration given to, for example, drafting patent claims for the United States, Europe, and China, the effect of amendments in those jurisdictions and effective enforcement against infringers.  Lively discussions generally followed each of the presentations, which included comments and questions from Chinese delegates and SIPO examiners.  Our Chinese colleagues imparted invaluable information and insights on the upcoming Chinese Patent Law reform and judicial and administrative enforcements in China.

 

FICPI China Section provided organization support and worked very diligently to make this symposium a success.  Chinese translation of all presentation materials was prepared and provided to Chinese delegates.  Presentations were mostly given in English. Simultaneous translation between English and Chinese was provided, for both the presentations and the ensuing discussions, to ensure maximum participation by everyone.

 

There were also ample opportunities to network.  In addition to the usual coffee breaks and lunches, dinner events were organized for both nights during the symposium, which gave the delegates and accompanying persons a taste of Chinese cuisine and culture, in addition to the opportunities for old friends to re-connect and new acquaintance to know each other.  Pre-conference and post-conference tours provided further opportunities for delegates and accompanying persons to enjoy their stay in China.

Copies of the presentations will shortly be available at FICPI HOMEPAGE

 

Dr. Sean Zhang

EPC 2000

 

Background

 

The existing European Patent Convention was agreed in 1973 and the EPO opened for business 1 June 1978 with just 8 contracting states. In the first few years there were up to 20,000 applications a year, but by 1990 there were 13 states and 63,000 applications, by 2000 there were 19 states and a 100,000 applications, and by 2005 there were 29 states and 130,000 applications per annum.

 

Of course the convention was the result of negotiation and compromise.  This continued throughout the 1980s and 1990s as experience was gained and improvements planned.

 

The prospect of many new members entitled to join the debate, and obligations arising under the TRIPS Agreement, forced the negotiators to come to conclusions and this was achieved, with what might be called reduced aims, at a Diplomatic Conference in November 2000, at which EPC 2000 was agreed.

 

Outcome - overview

The main objectives achieved included:

1.       transfer of procedural matters from the convention to the rules and change to comply with international law;

2.       a central limitation system;

3.       an amendment concerning second medical use claims;

4.       an adjustment to the effect of unpublished prior art of earlier date.

 

There are also introduced:

5.       an article on privilege;

6.       changes in applicability of further processing and restitutio provisions;

7.       an improvement in legal remedies;

8.       an amendment to the protocol to Article 69 (but see below);

9.       changes to requirements regarding convention documents; and

10.     a change to the EPO's powers to call for details of citations made elsewhere.

 

Matters contemplated but left out included:

a.       giving basis in the convention for the BEST project;

b.       increased autonomy for the Boards of Appeal;

c.       removing the computer program exclusion; and

d.       further work on the Article 69 protocol.

 

For another day

Of those matters left out, (a) the BEST (bring exam and search together) project is in action but without the basis that the EPO would like in the convention.  That, and the Board of Appeal autonomy amendments (b), although not particularly controversial, were not ready in time for the November 2000 Diplomatic Conference.

 

In contrast, the computer program exclusion (c) remains controversial, for instance at present the UK Courts and the EPO Boards of Appeal are steering rather different courses.

 

Likewise, the question of further changes to the protocol to Article 69 (d above), such as a further section concerning recognition of equivalents, remains unresolved.

 

Outcome - more detail

The outcome of the Diplomatic Conference was the Revision Act of 29 November 2000, in which the contracting states agreed to amend, add or omit certain Articles and they agreed that a complete new writing of the rules was necessary to give effect to the transfer and the final version of these was available late in 2006.  The Act also agreed that the new convention, EPC 2000, would enter into force on the earlier of two years from the 15th ratification (which was on 13 December 2005), or on the first day of the third month after the last state deposits its instrument of ratification.

 

At the present time 15 countries have ratified, so EPC 2000 will come into force, not later than 13 December 2007.  But many others have not, most famously France, Germany, Italy and Sweden, who, if they do not ratify by that date will be expelled from the European Patent Convention.  We do not expect that to happen.

 

Many of the amendments in EPC 2000 will apply to applications that are pending on the day, either as direct Europeans or as designations in PCT applications, and some of the changes affect practice now.  More particularly the Revision Act (Article 7) says that EPC 2000 applies to all cases filed after the entry into force and that the Administrative Council can decide to make some of EPC 2000 apply to cases pending or granted by

13 December 2007, and in fact it has decided that quite a lot of EPC 2000 will apply to already pending and granted cases.

 

But most day-to-day practice will be unchanged, in particular the search/examination, opposition and appeal procedures will be basically the same and unchanged, although with some exceptions.

 

The new version of the convention (EPC 2000) and Rules are available in the 1st special edition of the EPOJ for 2007 and from the EPO website.

 

 

Actual amendments

 

Turning to the changes made.

1.       The Administrative Council is presently able to change rules, but the convention has a number of essentially procedural matters in it which the Administrative Council can not touch. These will be transferred to the rules, as the Administrative Council does need to change time limits and to make amendments needed to align the convention with international treaties and obligations. To bring EPC into line with PLT (Patent Law Treaty) the minimum requirements for filing are relaxed and small changes to the definition of patentable subject matter are also made but not likely to have much effect.

 

2.       EPC 2000 provides for central amendment at the European Patent Office for claims of a granted European patent (new Article 105a(1)).  Thus, in future "at the request of the proprietor the European patent may be revoked or be limited by an amendment of the claims ...".

 

For this to occur the Examining Division examines only whether:

the amended claims constitute a limitation compared to the claims as granted;

                  the amended claims comply with Article 84 EPC (concerning clarity and support); and

                  the amended claims do not add any new subject matter (Rules 90 to 96).

 

At this stage there is no examination of novelty, inventive step, or motive for amendment.

 

The procedure takes second place to any opposition proceedings.  Thus a request cannot be filed while an opposition or appeal thereon is pending.  Under the transitional provisions the procedure can be used in respect of patents already granted at the date of entry into force of EPC 2000.  Central amendment will be much easier than amendment country-by-country.

 

3.       As regards a new medical use, the current form of claim, the so-called "Swiss claim" is "use of compound X for the manufacture of a medicament for treating condition Y".  Under new Article 54(5) a new form of claim will be allowed under EPC 2000, namely "compound X for use in a method of treating condition Y".

Note that the new form of claim will be allowed in any application pending on the date the EPC 2000 enters into force, "pending" meaning that a "Decision to Grant" has not issued by then (Transitional provisions of the Revision Act, Article 7).  Of course the previous Swiss-style claims will also be available.

 

4.       As regards novelty (whole contents) there are at present under Article 54(3) potentially different effects from one state to another of an item of prior art which is an unpublished European application.  This is being removed by deletion of Article 54(4).

At present an application of earlier date (EP1) unpublished at the date of a later application (EP2) is only effective as prior art (as in Article 54(3)), and then only as regards a novelty objection, in the states for which it was

designated, thanks to Articles 54(4).  So, at present a European designating only UK, Germany and France of earlier date than one designating all states, only bites in UK, Germany and France as novelty destroying.

 

The changes in the designation routines, and in particular the delay in identifying the countries covered, have made that situation hard to work.  In future  EP1 will be citable for novelty against all designations in EP2, but only for applications and subsequent patents with filing dates after

13 December 2007.

 

5.       Privilege

Rule 153 introduces a certain extent of privilege for advice from a European Patent Attorney relating to communications between him and his client.  The EPO itself has no power to call for such documents, but this may help as regards other jurisdictions.

 

6.       Further processing and restitution

Further processing will be available now for most situations where an applicant fails to observe a time limit, an exception being when a case is filed after the priority year, no priority claim then being possible.  It will be the way to enter the European phase after 31 months, replacing grace period provisions, action being needed within two months of Rule 69 notification of loss of rights.  In contrast, restitutio, i.e. for repair of an error where the applicant took all due care, while still available, will not be used for any situation where further processing is applicable, but may be used if an applicant fails to apply for further processing in time and becomes aware of the lapse later.

 

7.       Review of appeal decisions by the Enlarged Board of Appeal.

Currently the EPO's Enlarged Board of Appeal hears cases of general legal significance only, but EPC 2000 (new Article 112(a)) provides that any party adversely affected by a decision of a Board of Appeal can file a petition for review of the decision by the Enlarged Board of Appeal.  However, the grounds are essentially limited to serious defects of procedure or criminal acts.  Serious defects can be criminal acts or a fundamental procedural defect, for instance that the Board did not hear a case properly or at all, or that the Hearing was taken by inappropriate people who in some way were compromised. Clearly this is not going to be a day to day matter, more likely we will see one every year or so.

 

8.       As regards the scope of the claims there is a new Article 2 to the protocol on interpretation of Article 69.  This new Article, which applies to all pending and granted cases, reads

"For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims". 

Article 69 itself gets a small amendment:  it refers to protection being determined by "claims" rather than "terms of the claims".

A proposal to introduce file wrapper estoppel did not succeed and efforts to introduce a definition of "equivalents" also failed.

 

9.       Changes to requirements regarding convention documents and priority claims

A translation of a priority document which is not in English, French or German will in future not normally be needed, although it can be called for if a priority claim is in issue.  Also, priority will be available from countries that are members of the WTO (e.g. Taiwan) which are not Paris Convention members.

 

10.     Calls for prior art

Under Article 124 as amended the EPO can invite the Applicant to provide information on prior art considered elsewhere.  It is thought the office may introduce a policy of routinely doing this.

Unity of Invention for European Regional Phase Applications

New Rule 164 replaces Rule 112 but has a potentially serious limiting effect. For example:

 

A.      if a PCT application is searched by the USPTO, the EPO conducts a supplementary search we have the following:

Current situation: if lack of unity of invention is raised, the first invention is searched, and an opportunity is provided to get further invention(s) searched by paying additional supplementary search fee(s).

Under new Rules: if lack of unity of invention is raised, the first invention is searched, but no opportunity will be provided to have further invention(s) searched by paying additional supplementary search fees (new Rule 164), and substantive examination can only proceed on first invention, and to pursue a further invention, a divisional application must be filed.

It is suggested one should put first the invention that you most wish to elect, to make sure that it gets searched and can therefore be elected in the EPO.  If the invention that you wish to elect is not first in the claims at the time of EP phase entry, file preliminary amendment to put it first.

B.      In Euro-PCT applications where the EPO did the international search.

The EPO will in future not perform a supplementary search in the EP regional phase at all (new Rule 164 does not apply, old Rule 112 to be dropped), and only an invention searched in the international phase can be elected for examination and prosecution.  A divisional application must therefore be filed to pursue another invention.

It is suggested that where the EPO does the international search and raises a disunity objection in the international phase, you should pay further search fee(s) to get a search done on any invention that you want to elect in the EP regional phase.

 

Alan Senior

On 29 June 2007, the Enlarged Board of Appeal issued its decisions in the cases G 1/05 and G 1/06 regarding the practice on divisional applications (see http://legal.european-patent-office.org/dg3/pdf/g000105.pdf and http://legal.european-patent-office.org/dg3/pdf/g000106.pdf; the decisions are identical in wording). The third case (G 3/06 – relating to the "opposition" part of the divisional application questions) has been withdrawn (because all appeals had been withdrawn in the referral case T 1040/04).

 

It can be noted with relief that the Enlarged Board of Appeal has decided the cases in a practical and reasonable way: It is the opinion of the Enlarged Board of Appeal that Article 76(1) of the EPC permits an applicant to amend a divisional application after the application has been filed as to comply with the provisions of that article (of course, provided that the amendment complies with the other requirements of the EPC) (see reason 7). Therefore, it is possible to correct a divisional application which has been filed with claims contravening Article 123(2) (the referring Technical Board of Appeal had denied this in T 39/03 !).

 

This is also the case if the parent application is no longer pending (see reason 8.2). Further, the Enlarged Board does not consider that from the mere fact of division it is possible to derive limitations, such as by waiver or abandonment of any subject matter of the earlier application not encompassed by the claim of the divisional application under consideration, on what further amendments can be made or to what subject matter further divisional applications of a given divisional application can be directed (see reason 9.2.).

 

In the situation of a sequence of divisional applications each having been divided out from its predecessor (the question on which G 1/06 is based), the Enlarged Board held that content which has been omitted on filing a member higher up the sequence cannot be re–introduced into that member or in divisional applications lower down the sequence from it.

Therefore, relying on subject matter is only justified if this subject matter was disclosed in each of the preceding (earlier) applications as filed and if it was still present (i.e. it was not unequivocally and definitely abandoned by that time) (see reason 11.2).

 

The Enlarged Board also commented that the present law does not allow further limitations to the divisional application filing practice (or more restrictive conditions). This had to be done by the legislator itself (see reasons 13.1, 13.3 and – explicitly stating that the Enlarged Board holds the present situation "unsatisfactory" – 13.5). The Enlarged Board explicitly "accepts that the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject matter if he already possesses one granted patent therefor". The Board also "finds nothing objectionable in the established practice of the EPO that amendments to a divisional application are objected to and refused when the amended divisional application claims the same subject matter as a pending parent application or a granted parent patent (see reason 13.4).

 

It has also be noted that the present decision is fully in line with the FICPI Amicus Curiae brief drafted by Peter Indahl of CET Group 4 (contained in the ExCo papers for Chile (2006) available at the FICPI Homepage as EXCO/CL06/CET/1405). This FICPI Amicus Curiae brief was prominently mentioned under item IX on page 28 of the present decisions.

 

In summary, the Enlarged Board affirms the present practice at the EPO but gives a strong recommendation to the legislator to change the present law in order to prevent misuse by filing sequences of divisional applications keeping the original application pending for up to twenty years."

 

Daniel Alge, FICPI CET 4 Chairman

ExCo report.

"For those who are unfamiliar with the workings of the ExCo, an important part of the meeting is based on the hard work carried out behind the scenes by the various CET groups, under the Presidency of David Bannerman.  The CET (Study and Work Commission) is the largest commission of FICPI, whose initials derive from the French title "Commission d'Étude et de Travail".  The CET has specialist groups concerned with trade marks, designs and copyright, international patent questions, European topics, biotechnology and dispute settlement, including litigation and arbitration.

As a relatively new sub-delegate for the UK, I was previously unaware of the extensive work carried out by these groups, which is why I wish to draw this to the attention of other members.  A list of the various groups can be found at:

http://www.ficpi.org/aboutframe.html

 

Building on this work carried out behind the scenes, the ExCo included workshops and discussions on the following topics:

-      approval of a Resolution concerning prior user rights in a grace period situation, headed "Prior User Rights and a Novelty Grace Period", visible on the FICPI website.  After giving background including reference to FICPI's support of a 12 month world wide novelty grace period this resolves that "if prior user rights are available in the territory concerned, then these should also be available to persons who have become aware legitimately of an invention as a result of a disclosure excused by such grace period".

 

-       A debate was held on the European unregistered design right: does it/should it have novelty destroyed by prior disclosure outside EU.  A German Court has found it does; a strong suspicion remains that this was not the intention, but the legislation is far from clear.  Further consideration will take place during the ExCo in Seville.

 

-       Workshop A – Prior User's Rights, which revealed the difficulty and complexity and differences internationally.

 

-       Workshop B – Cross Border Privilege: recent decisions in Australia and Canada required documents concerning patent drafting, between a UK agent and his client, to be produced despite the UK statutory privilege.  Both Canadians and Australians have difficulty seeing how this can be repaired, the first mainly due to lawyer-jealousy, the second as the tide is flowing towards greater openness.

 

-       Workshop C – Finding the Right balance in a Regional Trade Mark System

 

The following papers were also approved and/or ratified:

      i.         A report by Andrew Parkes on the OAMI Users Group Meeting in Alicante, March 2007.

    ii.         An Amicus brief filed in Seagate (CAFC), a case where wilful infringement is asserted, the questions being inter alia whether there is a resulting affirmative duty of care on the defendant.  FICPI says not: the burden should be fully on the plaintiff.

   iii.         An Amicus brief to the US Supreme Court in Microsoft, on the question whether production of anything outside the US which relies on software code generated in and exported from the US is infringement of a US patent.  The CAFC has said it is, FICPI's brief said it should not be so as such a decision breaches the basic principle of territoriality.  As you know, the Supreme Court reversed the CAFC.  As a result, very briefly, now installation of software computers assembled and used outside the US cannot infringe a US patent.  However,there are similar cross border issues in other technical fields on which FICPI wants to take a position.

   iv.         A questionnaire concerning the protection afforded to industrial designs and spare parts in Europe.

Observers from AIPPI, AIPLA, APAA, ASIPI, epi, UNION and WIPO summarised the activities of their respective organisations."

RESOLUTION 1

"Prior User Rights and a Novelty Grace Period"

 

FICPI, the International Federation of Intellectual Property Attorneys, broadly representative of the free profession throughout the world, assembled at its Executive Committee in Amsterdam, The Netherlands, from 3 to 6 June 2007, passed the following Resolution :

 

Continuing to emphasize that any patent system must provide a fair balance between the rights of patent owners and those of third parties;

 

Continuing to support the introduction of a harmonised world–wide 12-month novelty grace period, whereby a disclosure of an invention derived directly or indirectly from the inventor during that period shall not be considered as comprised in the state of the art, as urged in earlier FICPI Resolutions;

 

Stressing that the sole purpose of such a grace period is to provide an equitable remedy in the case of an invention that has been the subject of such a disclosure;

 

Therefore urging that the relief provided to an applicant as a consequence of any such grace period should be limited so as to discourage its deliberate use by a potential applicant wishing to preserve the option later to file a patent application for the disclosed invention;

 

Resolves that if prior user rights are available in the territory concerned, then these should also be available to persons who have become aware legitimately of an invention as a result of a disclosure excused by such grace period.

The patent law harmonization process going back to 1984 has carried the concept of Grace Period as an important consideration but with little progress because of the failure of Hague Diplomatic Conference of 1991. Article 12 of the Basic Proposal [1] provided a model for a Grace Period. The draft Substantive Patent Law Treaty (SPLT) now before the Standing Committee on Patents [2] includes Article 9 (annexed to the present report).

 

FICPI is strongly in favour of the Grace Period as noted in its Resolutions passed at Edinburgh 1981, Vienna 1983, Funchal 1986, Hilton Head 1987 and most recently in Prague 2002.

 

A Grace Period is at best a safety net, that is not generally relied on as a filing strategy. The best way to describe it is as a flexible inventor-friendly provision of the type developed under the Patent Law Treaty. No one would rely on "Relief of Time delays" provided under Article 11 in the PLT [3] as part of a patent strategy. An inventor X will normally try to file a patent application as early as possible under a first-to-file system. If another independent inventor Y should file a patent application on the same invention before the filing date of the inventor X, the other inventor Y will be entitled to the patent. The Grace period will only allow the applicant to file a patent application even if he inadvertently published the invention, on condition that the application is filed before another independent inventor files an application for the same invention. (The publication could be prior art to the other independent inventor.) If a third party should publish the subject matter of the invention (and not file for a patent) the third party publication is considered prior art to the applicant. It is only the applicant's own publications which are exempted from prior art under the Grace Period, and publications which can be shown to have been derived from the applicant.

 

Why does a Patent System need to include a Grace Period? The Grace Period is an exception to an Absolute Novelty system that allows the inventor, (and his/her legal representatives such as an assignee) to be exempted from the prior art effect of the inventor's own disclosure of the invention when that disclosure was made less than 12 months from the inventor's first filing date on which priority is claimed. The only party obtaining an exception under the Grace Period is the inventor who actually made an invention and was the first person to file a patent application for that invention. Under those conditions, the inventor is not affected by a disclosure of his invention, accidental or otherwise, made within twelve months before the priority date.

 

In many cases an invention has to be validated, or reduced to practice, prior to the filing of the patent application. This implies carrying out validation trials, sometimes the constructions of prototypes, cooperation with other technical advisers, in other words circumstances in which it is difficult to control public disclosures. Additionally, many institutions require that the effectiveness and value of the invention be considered before making the decision to file a patent application. Such protocols often require outside scientific and technical advisors to be involved. Such requirements increase the risks of disclosure.

 

Within the last thirty years, the importance of the University researcher as a substantive user of the patent system cannot be underestimated or ignored.  University research has gradually moved from pure research to applied research, as government funding of such research has not kept up with expenses. Governments, since the l970s, have allowed universities full ownership of patents, when they had previously been the major beneficiaries of such rights.  At the same time governments have transferred most of the burden of funding such research to the universities. The result is that universities have had to concentrate their research more and more to the applied sciences at the expense of pure research.  By making inventions that are more useful in the immediate future, universities have used the patent system to protect their useful (industrially applicable) inventions. Any patent practitioner, who has dealt with universities, is aware of the "Publish or Perish" policies of such institutions.  The pressures that such policies place on the inventor-researcher results in premature publications of discoveries or inventions, even before the usefulness or industrial applicability can be fully appreciated. On the one hand there is the obligation of the Universities or other institutions to generate and disseminate their technical or scientific knowledge, while on the other hand, there is the apparently conflicting drive of Industry to obtain exclusive rights through filing for valid patents.

 

The new information and communication technologies, and more specifically relating to the internet and intranet, have greatly increased the risks of an uncontrolled publication with the very rapid dissemination of information.  Prior to most scientific and/or technical conference, the text of an abstract, is often put on the web.

 

In many fields, included biotechnology, some basic inventions remain unprotected only due to the culture of the academic and scientific world, which mandates early publication of any innovative activity. On the other hand, it is compulsory to involve human patients in the framework of clinical trials and biotechnological research if one is seeking to get regulatory approval to market a medicine or vaccine. The current trend is to provide full knowledge of the test in order to respect the freedom and dignity of the patient. In such cases, the patient, subjected to the clinical trials, must sign a document in which he declares having received the full knowledge of his treatment. It is usually stated that he can seek independent advise from an expert to understand the information. It is often only at the end of the clinical trials that the final formulation of the medicine will be determined. Without a grace period, important features of the invention may exist without proper patent protection.

 

SMEs are often faced with having to test their prototypes in a public environment in order to assess the feasibility of the invention. For instance the testing of an invention pertaining to a watercraft will by necessity be conducted on a body of water, which is by definition public. In the UK, the inventors of the "windsurfer" lost their otherwise valuable patent because they had sailed their new craft a distance from the shore, but still in view, before filing for their patent.

 

Any patent system, that is friendly to the inventors obtaining patent rights, requires a grace period provision, which is unfettered by bureaucratic technicalities such as a declaration of publication especially within certain time limits. On the other hand States such as Germany, which had to give up its Grace Period when it adhered to the European Patent Convention [4] , wish they still had a Grace Period. Brazil is one of the most recent countries to adopt an unfettered Grace Period while Estonia is struggling with the implementation of its new law including a provision on Grace Period. Canada has always had a Grace Period and in fact reduced its Grace Period from 2 years to one year from the filing date. The United States is the prime example of a State with a well-developed and popular Grace Period.

FICPI is of the opinion that the Grace Period should be part of the current SPLT and proposes the following criteria.

 

1. Harmonisation at international level

It is essential that, harmonisation of the Grace period should take place at an international level. Indeed, nowadays, for a Canadian inventor, it is frustrating to learn that he is not be able to validly file a European patent application, despite being able to file corresponding patent application in Canada, the USA, Brazil and possibly Australia, if he is aware of local restrictions and Mexico, if he lists all the possible public use events. It is unnecessary to insist on the fact that the existing patchwork situation is no longer acceptable in the framework of a worldwide economy.

        

2. Who is entitled to benefit from grace period?

It is only the inventor or legal representative of the inventor such as his employer, who will be entitled to benefit from the grace period.

The inventor will also be the person from which the publication or public use, prior to the filing of the application, originated. The rights to the invention may have been assigned to a person, for example the company employing the inventor. It is then a matter of recognising that the benefit of this exception passes on to the successor in title.

 

3. Direct or indirect disclosure

Direct disclosures are those published by the inventor himself. Indirect disclosures are publications, derived from the inventor, but made by a third party.

In order to benefit from the grace period exception, the person who is claiming the exception will have to demonstrate an irrefutable relation between the derived disclosure and the invention as made by the inventor. In case such a demonstration fails, the exception would not be invoked.

 

4.  Different types of disclosure

No restriction should exist.

The prior disclosure can be in the course of conferences, oral disclosure, disclosure contained in posters exhibited during scientific conferences and public use of the invention. The acceptable kinds of disclosures should also include publications of uncontrolled patent application from the applicant or patent applications which should not have been disclosed by an Office and which were filed without the knowledge or consent of the inventor.

 

5. Location of the disclosure

It is sensible to consider that no restriction could be seriously taken into account as far as the location of the disclosure is concerned. Generally speaking, public disclosures that would normally be considered prior art in an absolute novelty system, should be exempted.

 

6. Term of the grace period

The term of the grace period should be 12 months.

 

A 12-month grace period from the priority date allows the applicant to take full advantage of the Convention priority under the Paris Convention. For instance, if an applicant files a first "provisional" patent application on an embryonic invention and makes several modifications within the convention year with the idea of filing a complete PCT application before the end of the convention priority period, the applicant will be able to safely protect the improvements in the complete PCT application.

 

In Europe, the requirement for claiming priority for the same invention is becoming stricter and stricter. The decision of the Enlarged Board of Appeal G02/98 fixed the rule: "The requirement for claiming priority of "the same invention", ...is to be acknowledged only if the skilled person can derive the subject matter of the claim directly and unambiguously, using common general acknowledge, from the previous application as a whole". This decision stated that a narrow or strict interpretation of the concept of the same invention referred to in Article 87(1) EPC is perfectly consistent with paragraphs (2) to (4) of Article 84 EPC and with Article 4C4 of the Paris Convention. Furthermore, the decision also mentions that an extensive or broad interpretation of the concept of the same invention referred to in Article 87(1) EPC is inappropriate and prejudicial to a proper exercise of priority rights.

 

According to the EPO Board of Appeal interpretation, a first patent application can for example define an invention such as a family of new compounds represented by a general formula allowing quite a number of variations which are obviously not all described. If new compounds corresponding to the general formula are synthesised in the priority year, the description of the PCT and/or foreign application filed under priority, will be completed by the addition of these supplementary examples. One of these additional examples might be important and should be protected by a specific claim. However, in the European Patent Convention countries, if the inventor has published some results in connection with these new compounds within the year of priority, he will not be entitled to the claim specifically covering these new compounds, due to its prior disclosure.

 

A 12 months grace period would be the only way to solve his problem.

 

7. Starting date for calculation of the grace period

All disclosures made by the applicant, within 12 months of the priority date of the earliest application in which the subject matter claimed, was first described, should be exempted from prior art, by the grace period.

Most patent systems today relate the priority to the claimed subject matter. What is not claimed is in the public domain, so the grace period for that unclaimed subject matter is irrelevant. Therefore, the only starting date in order to lead to an homogeneous situation as regards the grace period, is indeed the priority date based on a patent application  when the claimed subject matter was first described.

 

8. Applicant's declaration

A declaration of the applicant's intend to invoke the Grace Period should only be required when it is necessary to invoke the Grace Period.

The analysis of entitlement to a grace period is made when the grace period is invoked i.e. during prosecution if the applicant's own or derived publication is cited, at trial or whenever validity of a claim is being judicially decided. The analysis includes determining when the subject matter claimed was first described in the patent application.

 

The grace period is not a priority system to be used to obtain immunity against any later independent disclosure from third parties.

 

Therefore, there is no need to request a declaration from the inventor at the time of filing the patent application.

 

9. Burden of proof

Traditionally, the burden of proof is on the person who intends to benefit from or contest the benefit of the grace period.

During prosecution, the applicant may have to prove that a "prior disclosure" was directly or indirectly issued from the inventor and thus invoke the grace period to set aside the prior disclosure as prior art. If the patent is granted and the validity is being challenged before a tribunal, the plaintiff will merely cite a prior art disclosure and the Patentee, defending his patent, will have the burden to prove that the prior art disclosure is exempted by the Grace Period.

It goes without saying that an applicant who proceeds to file an application based on the Grace period cannot take advantage of the above security but will need to keep track of the initial publication or public use to count the Grace Period, if the invention was published before the first priority.

 

10. Disclosure by the Patent Offices

It would be unfair in a grace period to exclude accidental or unauthorised disclosures of the invention. Thus the grace period should apply whether the public disclosure by an Office was improper, inadvertent or in the normal course. The disclosure should remain exempt from prior art by reason of the Grace Period. The disclosure by a third party in another patent application filed in the patent office before the filing of the inventor's application, where the disclosure was derived from the inventor should also be exempted by the Grace Period.

 

11. Prior User rights

Prior User Rights are an important element in the equilibrium that should exist in a patent regime that is based on First-to-File with a Grace Period exemption. [5]

 

If someone who derives the knowledge of the invention from the inventor, during the Grace Period, that person should be entitled to "prior user rights".

         

FICPI proposes the following draft Grace Period definition for the draft SPLT.

1.1.        Any disclosure of information relevant for the patentability of an invention claimed in a patent application shall not be taken into consideration when determining the state of art relevant for that invention where the information was disclosed, during the 12 months preceding the filing date or, where priority is claimed, the priority date of the patent application,

(i)   by the inventor, or

(ii) by a third party which acquired the information directly or indirectly from the inventor or in consequence of acts performed by the inventor, or

(iii)                          by a Patent Office, the information being contained in :

a)    another patent application filed by the inventor [6] , or

b)    a patent application filed, without the knowledge or consent of the inventor, by a third party which obtained the information directly or indirectly from the inventor.

1.2.        For the purposes of paragraph 1.1., inventor means any person who, at the filing date of the application, had the right to the patent. Inventor also means the original owner of the invention other then the inventor itself, and any successor in title of the inventor or of such original owner.

1.3.        The effects of paragraph 1.1 may be invoked at any time.

1.4.        The burden of proof will be with any person who intends to invoke the grace period stated in paragraph 1.1.

FICPI UK Business Seminar.

The first speaker was Roz Watkins and her topic was "Executive Coaching in an IP Environment".  Roz was managing partner at Swindell & Pearson in Derby before leaving the profession for something completely different.  We began with an exercise to test our powers of concentration.  Without giving the game away for those of you who haven't done this, it's surprising what you miss when concentrating on something specific.  Roz then gave us some general pointers on how to use our skills to maximise our own potential and improve our working relationships.

 

Next was Sue Higgins talking about marketing.  Sue reminded us that marketing has as much (if not more) to do with looking after our existing clients as trying to attract new ones.  Our marketing assets are our people, our presentation (personal, premises, documentation) and processes (e.g. billing and reporting procedures).  Ours is a market facing more aggressive competition at home, in the rest of Europe and further afield, and marketing is increasingly important.  Sue finished with a case study of a fictional Yorkshire IP practice planning to attract new business and how it might have done this.

 

Next, Justin Temblett-Wood gave us some ideas on "How to be Smart about Instigating Change".  This was not so much about specific changes that we might face, but more about how to change the culture of an organisation to make it more adaptable to change.  You can learn a lot about the culture of a company by listening to the conversations that are taking place, e.g. at the coffee machine.  Do they focus largely on the past ("things aren't what they used to be..."), assess where the company is now ("this is how we do things") or is anyone looking to the future (as in the famous line "in ten years' time we'll have a rocket on the moon")?  We were taught about the importance of considering what your audience is actually hearing when you talk to them.  No matter how much Bill Clinton lectured you on the importance of family values, the "little voice" in your head would hear something different from what Bill said.  Cue more audience participation.  We paired up, one speaker on listener, and the listener was asked to record not what the speaker was saying, but what the "little voice" in the listener's head was saying.  The results were entertaining and provoked some thoughts about the way we communicate.

 

Finally Nick Dougan's topic was recruitment.  Nick took us through the whole recruitment proves, from making up the description of the job to be filled, through advertising, selection, interviewing and contracts and the first year.  Selection aids such as assessment centres and psychometric profiling were discussed.  Nick generously shared his views on interviewing techniques (including what questions not to ask) and other competency tests that candidates might be asked to complete.  The subject of discrimination (and avoiding being accused of it) was treated thoroughly as well as how to handle new recruits in their first year through induction and probationary periods.

Liz Dawson.

FICPI-ABC Conference Loch Lomond 28-31 May 2007

The FICPI ABC (American, British and Canadian) meeting has become a fixture since its inaugural meeting in Bermuda in the early 90s. The meeting in Loch Lomond was organized by the British group under the capable direction of Alistair Neill and attracted a full capacity attendance of 65 attorneys plus their Accompanying Persons from America, Britain, Canada, France, South Africa and China.  "Minor difficulties" caused by unexpected hotel renovations were overcome seemingly effortlessly, although the opening comment of Alistair at the closing speech  ("When I offered, 12 months ago, to organize this event...............I was ten years younger.") perhaps indicates more accurately the work involved for the organizing committee.

 

Everywhere in the UK had a wet and miserable May/June (some much more than others) but nowhere has the weather been more consistently poor than in Scotland.  However, the gods clearly appreciate FICPI and provided a week of very pleasant weather for the conference.  The golfers took advantage of that and played the championship course "The Carrick" to their great enjoyment.  The golf club donated green fees for a foursome as compensation for the clubhouse being closed (more renovation) and these are being auctioned in Glasgow shortly, with the proceeds to be given to the Marie Curie cancer charity – a fitting gesture, we felt, to the memory of past president Malcolm Royal.

 

The conference week was split, as usual, more or less 50:50 with working programmes each morning and organized activities each afternoon and evening.  The size of the attendance was perfect for networking, as it was possible to organize prime time with selected attorneys of one's choice – and all in the most delightful of surroundings whether that was in the hotel with its direct views over the Loch, in Glasgow where we had an evening dinner, on the cruiser which took us on a beautiful sunny tour of Lock Lomond or on the inevitable (but hugely enjoyable) distillery visit.

 

As always, there was a substantive working programme with contributions from each of the groups. The topics ranged from an analysis of recent US CCPIT court decisions, through a discussion of KSR – v- Teliflex in the US Supreme Court, an insight into IP protection, Trade Marks in Europe, the UK Legal Services Bill, Global Forum Shopping, and Professional Privilege to Claim interpretation and the use of expert witnesses.  The speeches were all of very high quality, and all speakers had spent a considerable amount of time and effort in honing their presentations so as to command our full attention for precisely their respective allocated time slots.

 

As the meeting was held in Scotland, it is only fitting that the golf tournament receives more than a passing mention. Nineteen people took part on the Carrick Course attached to the Hotel and all enjoyed playing the course which has an inviting layout with great views and variety.  Although its newness and the building going on made things a bit difficult, there were some good scores (and presumably the converse is true!).  The overall men's winner was Dave Ruston, Jane Baggott was the best (in fact better) lady, and team and secondary prizes were awarded.  In memory of Malcolm Royal £180 was raised for Cancer Research in a "beat the pro" tee-shot competition at a short hole and more will be given to the Marie Curie charity in Glasgow when, as mentioned above, they auction a valuable gift to us, from the course organisers, which we have passed to them.  This is a free voucher for a 4 ball to play the course this year, with a face value of over £400.

 

Next year the ABC meeting will be in South Carolina, USA. Although designated an ABC meeting, it is open to all, both members and non-members of FICPI, and all are welcome.

 

Grahame Marshall

 

WIPO-Madrid Update

The work to improve the legal development of the Madrid System continues to succeed.

 

At present (May 2007), the Madrid Protocol has 75 member countries, whilst the Madrid Agreement from April 15, 2007 only has 8 member countries. The intention is that the System should be governed by one Treaty only, namely the Madrid Protocol.

 

In this respect a harmonization is required as well as clarification of some of the Articles:

 

1) The discussion in respect of the Safeguard Clause – Article 9 sexies – of the Madrid Protocol continued and a consensus was obtained that the Working Group should request the International Bureau to draft amendments based on the delegates' positions. It was determined that five options for development of the Madrid system existed.  These included:

1. Maintain safeguard clause as present;
2. Repeal safeguard clause;
3. Repeal of the safeguard clause with measures aimed at limiting undesirable effects;
4. Restriction of the scope of the safeguard clause to cover only certain features of the international procedure (refusal and fees);
5. Restriction of the Safeguard Clause to cover only existing international registrations (freezing).

 

The International Bureau prepared and distributed the contemplated draft revisions required to enact the compromise solution decided upon. A new rule 1bis would become the key implementing provision of the recall of the safeguard clause.  Rule 1bis would also apply in the event that a Contracting party denounces one of the two treaties and would apply in certain cases of change in ownership.

 

2) The Working Group also discussed some basic principles which should be taken into consideration in respect Article 4 bis (1) of the Madrid Agreement and of the Madrid Protocol – replacement - of a national or regional registration in the Office with an International Registration and recommended that this work should be pursued, including the establishment of an Internet forum and at the same time the International Bureau would conduct a survey of Office practices which seem to differ from the one country to the other.

 

The final study topic for the 4^th session of the working group was a proposal by Australia in relation to further work on the future development of the Madrid System. Australia put forth for discussion purposes the proposal that, in discussing the development of the Madrid system, priority should be given to considering improving accessibility of information regarding international registrations.

 

If agreement was reached within the Working Group, the International Bureau would prepare a draft amendment of the Protocol, for report to, and adoption by the Madrid Assembly in September 2007. 

 

CET Group 1 members, particularly from countries who are signatories to both the Agreement and Protocol, were not generally supportive of the proposed "freeze" option for which consensus had been reached during the 3^rd session of the Working Group.  The need for a simplified system was clearly recognized however considered equally important was maintenance of the 12 month refusal period and the need to keep fees low.  It was felt that during the Working Group meeting it was essential to, as much as possible, move away from the "freeze" option towards one more acceptable to those in countries subject to the safeguard clause.

 

Insofar as the Australian proposal was concerned, as might be imagined, all efforts towards raising the level of services were strongly supported.

 

WIPO Standing Committee of Trademarks (SCT) Update

At the 16th session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT), the International Bureau was called upon to prepare a document regarding "new" types of marks.  The resulting paper, tabled for consideration during the 17th session, covered a number of types of marks but focused primarily on three-dimensional marks, holograms, colour marks, motion marks and position marks.  Difficulties with representation and the requirement that the mark be capable of publication were some aspect of this topic studied and reported upon.

 

The International Bureau also prepared a document involving opposition practice in member states.  Various features of opposition systems were considered as was the relationship between opposition and examination. The SCT considered grounds of opposition, and pre-registration or post-registration opposition.  Also, third-party observations during opposition procedures, cooling of and settlement as well as experiences introducing new opposition procedures were studied.  Also contemplated was the effect of removal of prior rights examination on the number of oppositions filed. The SCT will, at the 18th session, consider a promised paper.

 

The Secretariat had also completed work on several procedural aspects associated with communications under Article 6ter of the Paris Convention, for example contact information, nature of goods and services, availability of the constituting document or charter for review and the availability of electronic communication.  The need for review of existing communications was also considered. This work formed the basis of a paper for delegate consideration and debate.

 

Unpublished Prior Art

In the FICPI EXCO in Santiago December 2006 two alternative proposals were discussed as to how to define prior art as far as the "secret prior art" is concerned. Secret prior art or unpublished prior art refers to a patent application filed in the same jurisdiction earlier than a later patent application, but only published later.

 

Systems promoting patent harmonisation are generally considered worth striving for. The substantive patent law treaty (SPLT) developed by WIPO is an attempt to harmonise on a worldwide basis the various patent systems dealing with the substance of patents. The SPLT has not yet been adopted. The concept of novelty (among other patenting concepts) plays a fundamental role in all patent systems, because an invention must be novel in order to be patentable. However, the concept of novelty and its effect is not uniform in the existing patent systems. Discussions within FICPI have shown that there should exist a uniform global well defined concept of novelty. In all patent systems, novelty is directly or indirectly defined in relation to prior art. FICPI position paper EXCO/IT04/CET/1305 defines "Prior art shall consist of all information which has been made available to the public anywhere in the world in any form before the priority date of the claimed invention". Problems, however, exist because the different patenting systems treat unpublished but publicly available prior art, such as "public uses" and "sales" in different ways, and hence they provide non-uniform effect for such prior art. As a result of the differences in views on this subject FICPI has not yet reached a position on how to deal with unpublished prior art. 

 

There are two possible principle alternatives:

 

1) Secret prior art is applied only for novelty purposes (not inventive step)

 

Advantages

- possibly the prevailing situation in most legislations 

- taken to constitute a fair solution for the later inventor, since he/she could not be aware of the secret prior art at the filing date of the later application

- encourages first applicant to disclose as early as possible [seldom used; disadvantage for first applicant]

 

Disadvantages

- results in granting of patent (later patent) not fulfilling the inventive step requirement with respect to the earlier patent

- raises issues as to whether "novelty" should also include some degree of non-obviousness [enlarged novelty]

- mitigates the effects of a first-to-file system (since "second-to-file" will get some protection for substantially the same invention even though he is not the first inventor to file]

 

2) Secret prior art is applied for novelty and inventive step

 

Advantages

- same approach is used for all types of prior art

- novelty concept can be simple [photographic novelty]

- better protection for first inventor to file

- less conflicts between patentees

- less trivial patents granted

 

Disadvantages

- unfair to second applicant who could not be aware of first application

- raises issues on anti-self collision and terminal disclaimer

- if no anti-self collision exists, possibility to protect improvements by the same applicant diminishes [from 18 months to 1 year]

- no incentive for first applicant to disclose invention earlier [but it is an advantage for the first applicant]

 

Prior User Right

The discussion of Grace Period in the SPLT has been linked to the provision of Prior User rights. FICPI is developing a position on prior user rights, as may be seen from the resolution passed in Amsterdam. A background paper was prepared for discussion in Amsterdam and served as a basis for one of the workshops.

 

What are Prior User Rights? Generally speaking, a prior user right permits a party to continue to do something they have been doing before rights exist under a patent or patent application. In its broadest context, a prior user right is prior art that will invalidate a patent and thereby permit the prior user, and others to practice what has been done before the filing of the patent application. More typically, however, prior user rights address situations in which the prior use does not constitute prior art but nevertheless was part of a commercial practice before the filing of a patent application. In that situation, some countries provide for the continuing use of the invention by the prior user, sometimes with restrictions. Other examples of prior user rights include limitations put on a re-issued patent where the claims are broadened. These are often distinguished from prior user rights by referring to them as intervening rights, and so are considered separately. Prior user rights can also be distinguished from restrictions placed on recovery of damages prior to publication, grant, translation of the claims in to the language of the jurisdiction, or even national entry under the PCT. Under these provisions there is no ongoing right of use, merely a limitation on the recovery for infringement. It would seem that a general definition of a prior user right is a continued right to use the invention without regard to the Patentee of a coexisting valid patent for an invention. 

 

Are Prior User Rights justifiable under a Patent System? Before deciding upon the scope and operation of prior user rights it is necessary to consider whether a modern patent system should permit the existence of prior user rights. The purpose of the patent system is to encourage the dissemination of new inventions in return for a limited monopoly. A prior user right however encourages the maintenance of new inventions in secret and then rewards that secrecy by granting an ongoing right of use when another discloses the invention. This unfavourably in different jurisdictions and in some cases has been incorporated in to statute. These situations suggest that the patent system should be structured to encourage disclosure, and that prior use without disclosure should have no effect on a Patentee. Many companies rely on trade secrets to protect their innovations, particularly where the consequence of disclosure of the invention would not be offset by the value obtained by a patent. The absence of a prior user right in one form or another would therefore adversely impact on this practice. This practice is compounded by the evolving definition of what is patentable, so that processes previously only protectable by trade secrets are now considered patentable. This is particularly true in the business methods area and the consequences of such a change in practice was recognized by an amendment to the US statute to provide a prior commercial use defense for methods of doing business.

 

It would seem that in order to provide a patent system that meets the need of the user community, some provision for modern business practices must be made without undermining the essence of the disclosure/monopoly bargain. 

 

Can these requirements be met with different novelty requirements? The present text of the SPLT provides the test for novelty as the invention "being made available to the public". Case law has suggested that this test requires the invention itself to be ascertainable from the disclosure and this is based on many years of case law under similar provisions. UK case law under the present act has found the display of a computer at a trade show does not constitute a disclosure of the invention contained in the code being run on the computer. Some countries include in their novelty provisions that the invention must not have been in use or on sale before the relevant date. The adoption of such a provision in the SPLT would seem to address some of the concerns with trade secrets, provided the in use or on sale is interpreted so as not to require the implicit disclosure of the invention claimed. Such a broad interpretation however would seem to go back to the situation where secrecy is encouraged and the rights of the inventor who has chosen to disclose will be defeated by a person who has chosen to keep secret. An interpretation to require a prior public use or sale would also not seem to cover the more typical situation where a process is used within a commercial enterprise, where the public does not, as of right, have access due to circumstances other than secrecy, e.g. safety concerns. Whilst a prior user needs to be accommodated, it seems that this must be done in a way that does not reward secrecy. Thus a limited prior user right would seem appropriate. 

 

Why is Prior User Right linked to grace period? In discussions around the SPLT, a linkage has been made between these two provisions. There is no apparent reason for linking the two provisions. The adoption of a first to file system over first to invent system would logically lead to a need for a prior user right. Thus by providing a prior user right, some balance is provided between the rights of the prior inventor under first to invent and the rights of a prior user under first to file. The effect of a grace period does not seem to influence this, except perhaps for the potential period in which a user would be unaware of the potential patent right. This seems to go to the issue of when a prior user acquires rights rather than a fundamental aspect of the grace period.. If it is accepted that a prior user right should exist, the questions then are prior to what, used by who and what right? 

 

PCT Reform Work Group meeting

The 9^th Meeting of the PCT Reform Working Group was held in Geneva, from 23 to 25 April 2007. This was the last meeting of the Working Group, as it is expected that in September 2007 both the Committee for the Reform of the PCT and its Working Group will be formally dissolved by the PCT Assembly. The reform work having reached its end, WIPO has not yet decided which body will assume the role of the Working Group in the future, whenever it becomes necessary to further improve the PCT system.

 

The following documents were in the agenda of meeting:

PCT/WG/R/9/2 and its corrigendum – Supplementary International Searches: the text of the amendments aimed at supporting supplementary international searches in the PCT system was approved by the Working Group. However, due to inflexible opposition from Japan and Spain, the Working Group could not recommend the adoption of the amendments to the PCT Assembly.  A factual report will be prepared in which all discussions will be detailed, and the Assembly will be asked to take note thereof. However, it is possible that one of the delegations will propose that the Assembly appreciates the actual amendments .

 

PCT/WG/R/9/3 - Use of Results of Earlier Searches: the amendments were approved by the Working Group, and will be carried forward to the Assembly. The system will be fully optional to applicants and International Authorities.

 

PCT/WG/R/9/4 - Publication in multiple languages: the amendments had been approved in the previous meeting. However, once again, the proposal could not be carried forward to the Assembly due to the continued resistance of the Chinese delegation.

 

PCT/WG/R/9/5 - Declaration of the Source of Genetic Resources and Traditional Knowledge in Patent Applications (the Swiss proposal): this document was removed from the Agenda by request of the Swiss delegation itself. It was felt that one should wait for the completion of the discussions under way at the IGC – WIPO's Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore before bringing the matter into the PCT.

 

PCT/WG/R/9/6 - Amendment of Rules 29.1, 48.2(c) and 90bis.1: a new subparagraph was added to rule 29.1, to make it clear that only if the International Bureau receives the notification of withdrawal before the preparations for publication are completed it will be able to prevent the publication of a withdrawn application. The International Bureau withdrew the proposal for amending rule 48.2 (c).  Rule 90bis.1 was not amended, as it was decided that applicants should keep the right to communicate the withdrawal to their own Receiving Offices.

 

PCT/WG/R/9/7 - Amendment of Rule 26bis.3(d): an extension of the term currently available for paying the fee for the restoration of the priority right was proposed. The Working Group decided that, in order to preserve legal certainty, the maximum extension should be of two months.

 

Informal paper on the physical requirements of the international applications: The Russian Federation authored this paper, containing a proposal to change the margin requirements of rule 11.6. However, it was decided that one should wait for the results of the discussions at the Standing Committee on Information Technologies Standards and Documentation (SCIT) Working Group. The work of the task force that had been established to look into the physical requirements of PCT applications was suspended for the time being.

 

 

Community Patent Update

According to COM(2007) 165final of 3 April 2007, the "Commission is of the opinion that the creation of a single Community Patent continues to be a key objective for Europe". Although not directly reflecting the "Interim Legal Opinion" of the Legal Service of the European Parliament of 1 February 2007, respective statements to it are included. Council working document "Commission Communication on enhancing the patent system in Europe – Presidency Questionnaire" of 23 April 2007 provides a series of questions. However, an important question for FICPI which is not asked is the question of representation.

 

Although the questionnaire addresses only the national delegations, other bodies and NGOs are free to bring in their view on the questions provided.

 

On 14 June 2007, the working group established by the STOA (Scientific and Technological Options Assessment Group of the European Parliament) for the assessment of "Policy options for the European patent system" presented their final draft paper in a workshop held at the European Parliament in Brussels.

 

The working group has given a strong support of the creation of a Community Patent accompanied by a European Patent Court dealing with litigation on European patents, although this system still seems to be difficult to introduce in the near future. The policy options presented in this report should be seen as to improve the current functioning of the patent system, especially to stimulate innovation and the diffusion of knowledge.

 

As the main challenges for the European patent system, the following issues were identified:

 

1. The rapidly increasing demand for patent rights is putting strain on the system and could jeopardise patent quality in the European patent system.
2. The high speed of introduction of new technologies makes it harder to determine the adequate scope of patents granted. Too broad patents should not be granted within the European patent system.
3. A rise in defensive and strategic patenting behaviour was observed which may lead to "patent thickets", the effects of such patent thickets should be alleviated within the European patent system.
4. Trading rights and licensing activities should not divert resources from actual innovation.
5. Increased interest in the European patent system should be connected to greater transparency and the involvement of more experts, politicians and stakeholders in the future development of the system.

 

It was held by the working group that "the general premise of this report is that the patent system has so far had a positive influence on levels of innovation". However, the policy options recommended  are seen as suggestions for improving the present European system. The policy options of the working group are the following:

 

1. Insertion of the economic mission of the patent system in the European Patent Convention.
2. Enhancing governance within the European Patent System.
3. Improving quality aspects in regard to patentability standards and patent grant procedures.
4. Dealing with emerging technologies.
5. Increasing access to patented inventions.
6. Facilitating defensive publications.

 

The report is available under: http://www.tekno.dk/pdf/projekter/patent– system–STOA/p07_STOA_Background_document_and_report.pdf.

 

 

Patent Litigation in the EU

The European Commission has issued a (further) questionnaire to the future European patent system, this questionnaire is highlighting the future court system. The Commission noted that the EPLA as it was proposed is legally impossible in the EU. It also noted that the Community Patent Court as proposed earlier as centralised new court established centrally in Luxembourg will not be accepted by the users. Accordingly, the Commission (as well as the Legal Service of the European Parliament) followed the FICPI position to Europe's patent future, presented last year wherein these doubts were raised. 

 

The Portuguese Presidency now issued a paper summarising the work to be done to arrive at the aim of the Commission's proposal earlier this year which included a compromise solution having elements of EPLA and the alternative (Community) model. The Portuguese EU Presidency wants to concentrate on the details of such a solution, namely: 

i.               degree and mode of decentralisation of the first instance of the litigation system; 

ii.             features of the second instance; 

iii.            qualification of judges and technical expertise in court proceedings; 

iv.            allocation of cases and relationship with the Brussels I Regulation; 

v.             rules of procedure; 

vi.            provisional and precautionary measures; 

vii.          operating costs; 

viii.         arbitration procedures; 

ix.            Community Patent. 

 

The details cover proposals that have already been provided in previous FICPI positions (including national first instance senates with technically qualified judges, international jurisdiction under Brussels I Regulation, etc.). With respect to translations systems for the Community Patent, this paper also suggests to further investigate in machine translations.  

 

 

Rockbass - the question of representation in court

An appeal was filed against a decision of the CFI, finding that a German 'Patentanwalt' is not authorized for representation before the European Courts as a 'Patentanwalt' is not a lawyer ("Anwalt") within the meaning of Art. 19 of the Statute of the Court.

 

In its decision, the CFI did not give any reasoning why a German 'Patentanwalt' does not satisfy the prerequisites of Art. 19 but rather referred to an earlier decision denying representation rights to a British patent and trade mark agent.

 

In its statement of appeal, the appellant proved in detail that a German 'Patentanwalt' satisfies all prerequisites of Art. 19 set out in earlier decisions of the CFI.

 

However, at the hearing, during preliminary discussion, the judges and the Advocate General gave the impression that there was no chance of success. Thus, the ground of appeal regarding representation by a 'Patentanwalt' was withdrawn in order to avoid negative findings by the ECJ.

 

Political intervention seems necessary to gain rights of representation for IP attorneys before European Courts in actions against OHIM.

 

 

Seagate – Attorney/client privilege revisited

In Re Seagate Technology (January 26, 2007) the Federal Circuit of the United States ordered the following questions to be briefed for en banc consideration:

1. Should a party's assertion of the advice of counsel defense to willful infringement extend waiver of the attorney/client privilege to communications with that party's trial counsel?
2. What is the effect of any such waiver on work product immunity?
3. Given the impact of the statutory duty of care standard announced in Underwater Devices on the issue of waiver of attorney-client privilege, should this court reconsider that decision and the duty of care standard itself?

 

In its amicus brief FICPI answered these questions as follows:

 

1. FICPI believes that the attorney/client privilege should not extend to trial counsel's work and that any waiver of the attorney/client privilege should only extend up until the date the complaint is filed. In the US when the complaint is filed the case commences. FICPI set forth a bright line test that all communications after that date would not be considered producible if the attorney/client privilege was waived before that date. This would also be true with respect to trial counsel being the counsel that submitted an attorney/client opinion prior to the filing of the complaint and it was submitted to plaintiffs and waived. The main exception to this rule, we believe, would be when after the filing of the complaint trial counsel rendered an opinion to a client and the client decided to produce that opinion to the plaintiff, i.e., the patent owner. We understand there are arguments on both sides of this question but felt a bright line test is absolutely necessary to preserve the balance between the parties.
2. FICPI believed that the same effect should occur with respect to work product. There is no difference in the work product of an attorney after a case commences and perhaps more reason to have a bright line test for work product. Typically, in litigation in the Unites States the parties reach an agreement that once a case is filed  neither party will ask for discovery beyond that except perhaps for damages and in other unusual situations.
3. FICPI believes that the decision in Underwater Devices which established an affirmative duty of care to the defendant (i.e., alleged infringer) was a wrong standard, a standard that shifted the burden of proof to the defendant for alleged reprehensible conduct by the defendant and was contrary to all tort principles in all other tort situations.

 

FICPI's position was that the plaintiff was claiming willfulness on behalf of the defendant and the plaintiff must prove it. We believe it was so inappropriate to establish an affirmative duty of care that we agreed with the Sedona Conference papers, an established and well respected conference in the United States, that the affirmative duty of care should be removed completely. It is the plaintiff's burden.

This of course, is the most controversial issue as many patent attorneys wish that there be an affirmative duty of care on the part of defendants. We do not believe so because it lends itself to difficult situations where it becomes impossible to answer a charge of willful infringement except by producing an attorney/client opinion, which immediately triggers the issues of waiver and the cut-off of production. Placing the burden on the plaintiff will make a clean break with difficult and, we believe, wrong precedent that placed undue burden on the defendant. If the defendant is reprehensible that will show up in the evidence. It is not necessary to add another burden to the defendant.

 

MedImmune v. Genentech                                     

In its January 9, 2007, opinion in MedImmune, Inc. v. Genentech, Inc., the US Supreme Court removed a significant barrier to licensees desiring to challenge the validity or enforceability of patents they operate under. In a near unanimous opinion (Justice Thomas was the sole dissenter), the Supreme Court held that a patent licensee need not breach its license, and thereby risk injunctive and enhanced monetary damages, before seeking a declaration under the Declaratory Judgment Act of patent invalidity, unenforceability, or non-infringement. This ruling reversed Federal Circuit precedent in Gen-Probe Inc. v. Vysis, Inc., which held that there was no case or controversy, and therefore no subject matter jurisdiction, over such patent challenges because a licensee in good standing cannot establish any "reasonable apprehension" of being sued by the licensor.  The Federal Circuit has since had two opportunities to implement the MedImmune decision.

 

EU-directive on criminal sanctions

On 25 April 2007, the European Parliament approved in a plenary session the text of a Directive providing criminal sanctions against counterfeiters. These sanctions include fines up to €300,000 or, in the most serious cases, imprisonment for up to four years.

 

The draft Directive provides harmonized criminal sanctions for wilful infringement of IP rights with a commercial profit in mind.

 

Smaller offences and offences committed by individual without any profit in mind would be excluded.

 

Infringement of patents would also be excluded.

 

However, the Directive is currently blocked as some member states consider that criminal law is outside the competence of Community Law.

 

FICPI CET Group 6 will continue to follow up this question.

 

Patenting of non-technical matter

Traditionally patent protection has been restricted to the technical domain. In recent years, however, patent offices in some countries have granted patents for inventions which no longer belong to a field of technology, most notably for business methods. Such patents are subject to an ongoing public debate. In this discussion FICPI intends (probably at the ExCo in Seville in October 2007) to pass a resolution defining the federation's standpoint on the matter. FICPI so far has taken a cautious position to leave the decision on patentable subject-matter to the respective countries but to urge a minimum standard based on a broad and flexible interpretation of technology taking into account technological progress.

 

The economic justification of the exclusive right conferred by a patent is broadly based on the following three arguments:

• Reward for disclosing the invention and not keeping it secret;
• Protection of the investment for developing, testing and marketing the invention; and
• Incentive to stimulate inventive activity and innovation.

All three aspects apply more or less to technical as well as to non-technical inventions. Is there any justification beyond tradition that the patent system is restricted to the technical domain?

On the other hand, it has to be taken into account how a pledge to globally extend the applicability of patents would influence the public debate?

And would a growing number of non-technical patents amplify a trend that IP matters are handled mainly by the legal profession organised in big law firms and that patent and trade mark attorneys/agents more and more assume the role as mere technical experts?

 

 

14^th OAMI User Group Meeting                              

FICPI was represented at the OAMI Users Group Meeting March 9, 2007.

 

The main items discussed were:

 

User Satisfaction Survey, Service Charter and Quality Check system. The Office places emphasis on these aspects in order to show its commitment to quality services.

 

Fees. The Office has large budget surpluses. Most user organisations welcomed a European Commission proposal for an annual review, leading to a reduction in official fees. FICPI regretted that this situation was not recognised in 2002/3 when abolition of searches was proposed. If filing, registration and renewal fees were to be reduced, third party fees for opposition and cancellation should also be reviewed in order to maintain balance. FICPI asked whether there was any proposal to review the CTM System after 10 years of operation.

 

E-business. There are still difficulties with e-filing.

 

CTM Optional Search. Searches among national trade marks will be optional from March 2008. The fee payable has not yet been fixed. FICPI asked whether there was any intention of investing funds in IT so that the search reports would meet the requirements of the new Rule 5.a which lays down the minimum information and format. The Office replied that the fees to be fixed are supposed to cover all of the costs for national offices participating in the system.

 

Madrid Protocol. The Office has a problem sending communications, particularly search reports, in cases where the applicant does not have a professional representative on the OHIM list.

 

Accessibility. It is no longer possible to phone or email an examiner directly.

 

Other items included Classification, Proof of Use and Use Requirement, Opposition, Consistency of decisions, Boards of Appeal, Publication of Designs, and Technical Co-operation with National Offices.

 

Protection of clinical data

A new EU Diretive 2004/27/EC, which amends the previous directive 2001/83/EC, was published on 30 April 2004. It harmonises the period of data exclusivity and provides for the introduction of a "Bolar" provision in Europe. Member states should have implemented the directive by 30 October 2005.

 

Data exclusivity guarantees additional market protection for originator pharmaceuticals by preventing health authorities from accepting applications for generic medicine during the period of exclusivity. Thus, data exclusivity prevents regulatory authorities from assessing the safety and efficacy profile of a generic application for a period of time beginning from the first marketing approval of the originator product.

 

Generics contain well-known, safe and effective quality substances. Therefore, unnecessary animal testing and clinical trials on humans performed by the originators are not repeated. Instead, regulatory authorities evaluate the generic application against the originator's documentation on file, so-called "abridged procedure". However, this can only be done after the period of data exclusivity has expired. This assessment is carried out internally by the authorities. In no instance is the originator's research data released or disclosed to the generics producer or anyone else. The generics manufacturer never sees the originator's data.

 

Generic applications do not use data from the originator's registration file. They are approved on their own merits, using their own development data, under the same EU requirements as the originators. The originator's data is never released to third parties by the medicine authorities. It, therefore, is not and cannot be used by generic producers.

 

The effective period of market exclusivity gained by the originator company is the period of data exclusivity (currently six or ten years) plus the time it takes to register and market the generic medicine — a further one to three years.

 

Data Exclusivity was introduced in 1987 to compensate for insufficient product patent protection in some countries.

 

Under the previous directive, member states could choose the period of data exclusivity. Data exclusivity has nothing to do with protecting research data. Long after the data exclusivity period has expired, the originator documentation remains protected by copyright laws and other legal provisions. Data exclusivity merely extends the originator company's market monopoly over a product by not allowing the authorities to process an application for marketing authorisation.

 

The New EU Pharmaceutical Legislation adopted in 2004 has created a harmonised EU eight-year data exclusivity provision with an additional two-year market exclusivity provision. This effective 10-year market exclusivity can be extended by an additional one year maximum if, during the first eight years of those ten years, the marketing authorisation holder obtains an authorisation for one or more new therapeutic indications which, during the scientific evaluation prior to their authorisation, are held to bring a significant clinical benefit in comparison with existing therapies.

 

In practical terms, this means that a generic application for marketing authorisation can be submitted after Year 8, but that the product cannot be marketed until after Year 10  or 11 .

 

Because of the adamant opposition to this overall increase in data exclusivity from the current six-year countries — especially from the Accession countries, which had not agreed to this law in their accession agreements, were not yet entitled to vote on it during the legislative process, and which felt it would have a significant effect on their government medicine bill — an additional clause was inserted at the last minute making the law prospective. As a result, the new periods of data exclusivity will only take effect for reference products applying for marketing authorisation after the new law is fully in effect (around November 2005), paragraph 87 introducing new articles 2 and 3. Therefore, the first generic applications under the 8+2+1-year data exclusivity period will not occur until late 2013.

 

 

Generic Biotech Drugs

On February 14, 2007, Rep. Henry A. Waxman and co-sponsors re-introduced the "Access to Life-Saving Medicine Act" bill.  The news release issued by the sponsors explains that the purpose of the proposed law is to give the FDA "The express legal authority to approve safe, lower cost copies of biotech drugs, also known as biologics or biopharmaceuticals."  The bill, which comes 20 years after the Hatch-Waxman Act (designed to promote generic drugs while ensuring a financial incentive for research and development), is designed to permit the FDA to approve "safe and effective copies of biotech drugs" says Rep. Waxman.

 

The bill would amend the Public Health Service Act to authorize the Secretary of Department of Health and Human Services to approve abbreviated applications for follow-on biologic product (herein FOB) that are "comparable" to brand name drugs that have been previously approved.  By "comparable," an application must demonstrate that there are no clinically meaningful differences between the two products with respect to safety and effectiveness and the application must show that the new product and the reference product contain "highly similar" principal molecular structural features and the same mechanism(s) of action.

 

The Biotechnology industry is concerned that the bill is lopsided towards the FOB applicants for several reasons. They argue that the bill should incorporate provisions to ensure substantial data exclusivity that is concurrent with the patent term of the biologic product to ensure that the biologic product innovators are able to receive an appropriate return. 

 

The bill is still pending in the US Congress, and the prospects of passage are uncertain under the current political climate.

 

WIPO – National strategy for innovation, June 18, 2007

The Colloquium on national strategy for innovation organized by WIPO was attended by about 30 participants (approx. 1/3 WIPO employees). This article will focus on some of the main points of two of the most interesting emerging countries, China and India.

 

China

Mr. Liu's presentation primarily focused on the planned economic growth of China and the intention to bring China into the group of innovation-oriented countries within the next 15 years. China is convinced that competitiveness, increased living standard, reduced economic and technological dependency from foreign countries and energy efficiency must be based on indigenous (= domestic, independent from foreign countries) innovation.

China is 4th largest manufacturing country in the world. A 7 % annual growth of GDP for the next 10 years which will double the GDP compared to today. Today, the R&D expenditure is approx. 1.41 % of the GDP. This number should rise to 2.5 % of GDP. Use of resources per GDP is much higher than in the developed countries. On the long run, more efficient use of resources is required.

 

There is a 25 % annual growth of "Patent" (i.e. examined patents, unexamined utility models plus designs) filings. The examined patents are primarily of foreign origin while utility models are mainly of domestic origin. Domestic applications are mostly in the field of food, traditional medicine and beverage. In the high-tech field, most patents are owned by foreign companies. The SIPO concludes from this that the advanced technology is still primarily from abroad. As long as China relies on imported technologies and has to pay high licence rates, the main part of the money is earned abroad.

 

China has established an innovation financing system and allows government sponsoring of research projects between universities and companies (600 mill. USD in the last 5 years).

Some miscellaneous points:

- Only 40 % of the companies have a trademark.

- 90 % of the companies do not file patent applications at all.

- Enforcement is possible on administrative and on a court route.

- Patent, Trademark and Copyright Offices (separate).

- SIPO: 4300 employees

 

India

Mr. James' presentation focused on the amendments in the law, the investments into the IP-Administration and the results with respect to much faster administrative procedures.

India has had an IP-System since a long time. On joining the WTO India had a need for amendments of the laws. Therefore, most of the laws have been amended during the last 10 years. Geographic indications are protected by lex sui generis. There is also a separate act on Biodiversity. It is important in India to reach a balance between owners and public interest.

The government has invested into the administrative infrastructure: All sections (Patent, Trademark etc.) are now in the same building. The IP-Offices are present in the 4 major cities. The number of examiners has increased by the factor 4. IT for search, electronic documentation has been established. It is possible to get a patent within 8 months (at least theoretically). The income of the IP-Office is about 10 times higher than in the old days (40 mill. USD instead of 4 mill. USD). The officers are not any more ashamed of taking visitors to the office.

 

Some miscellaneous points:

• New initiative: Design Centres for innovation.
• Education for different groups to enhance IP-sensitivity (1-day seminars in cooperation with industrial organisations, 1-week seminars for scientists at University, courses in cooperation with judges for courts.)
• Bilateral Agreements with different countries (Europe, US, Japan) for assistance in sensitivity building and education
• India wants to become an ISA and IPEA of the PCT.
• India wants to join the Madrid System MMP/MMA.
• Build up Confidence of international firms to attract their investments.
• Compulsory license is in the law but has not been used (a mere deterrent).
• "Traditional knowledge"-based inventions cannot be protected in patents.
• Sponsoring of Universities by private firms possible for boosting cooperation.

 

New cases before the Enlarged Board of Appeal of the EPO

Exclusion of diagnostic method from patentability

 

T 992/03 relates to the question whether a diagnostic method involving a (non–therapeutic) surgical step (injection of a contrast agent) is excluded from patentability due to the exclusion of surgical methods. Technical Board 3.4.1 referred the following questions to the Enlarged Board: 

1. Is a claimed imaging method or a diagnostic purpose, which comprises or encompasses a step consisting in a physical intervention practised on the human or animal body to be excluded from patent protection as a "method for treatment of human or animal body by surgery" pursuant to Article 52(4) EPC if such step does not per se aim at maintaining life and health?
2. If the answer to question 1 is in the affirmative, could the exclusion from patent protection be avoided by amending the wording of the claim so as to omit the step at issue, or disclaim it, or let the claim encompass it without being limited to it? 
3. Is a claimed imaging method for a diagnostic purpose to be considered as being a constitutive step of a "treatment of human or animal body by surgery" pursuant to Article 52(4) EPC if the data obtained by the method immediately allow a surgeon to decide on the course of action to be taken during a surgical intervention?  

The meaning of the wording "essentially biological"

 

T 83/05 relates to the meaning of the wording "essentially biological" for the methods excluded under Article 53 EPC and the following questions were referred to the Enlarged Board of Appeal:

1. Does a non–microbiological process for the production of plants which contains the steps of crossing and selecting plants escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, an additional feature of a technical nature? 
2. If question 1 is answered in the negative, what are the relevant criteria for distinguishing non– microbiological plant production processes excluded from patent protection under Article 53(b) EPC from non–excluded ones? In particular, is it relevant where the essence of the claimed invention lies and/or whether the additional feature of a technical nature contributes something to the claimed invention beyond a trivial level?  

ATRIP CONGRESS 2007

BUENOS AIRES, ARGENTINA JULY 16-18, 2007

THE REPORT

The ATRIP Congress 2007, which was held at Buenos Aires from July 16-18, was hosted by the Universidad de Buenos Aires Law School. 115 participants - 51 from Argentina and 64 from abroad, attended the Congress. The Congress carried forward the theme of the ATRIP Congress 2006 held at Parma, Italy- "Intellectual Property and Market Power". The topics to be deliberated were carefully selected which were discussed in el even sessions, spread over in three days.

 

The Congress started with a welcome address by Professor Luis Mariano Genovesi, Facultad de Derecho, Universidad de Buenos Aires, followed by Professor Gustavo Ghidini, the ATRIP President. Professor Atilio Alterini, Dean, Facultad de Derecho, Universidad de Buenos Aires, also welcomed the delegates and expressed his happiness to host the Congress at the Facultad de Derecho.

 

Session I, captioned as "Trade Secrets" had four speakers: Gustavo Ghidini and Valeria Falce, Surinder Kaur Verma, and Lars S. Smith. Professor Ghidini and Ms. Falce together spoke on the "Recent developments in Italian regulation of trade and industrial secrets: A patent contradiction of the patent regime" and discussed the rationale of protection of trade secrets vis-à-vis the basic paradigms of patent protection,  anti-trust principles for an over-all  pro-competitive governance of the innovation-related economic dynamics, and their impact on "market-power' conditions. In this context, they examined art. 6bis of the Italian Patent law in force since 2005. While observing that trade secret law encourages the development and exploitation of items of lesser or different invention than that which may be protected under patent law, but which is still important for the technological and scientific advancement, they viewed that trade secrecy should not enjoy  an "absolute" protection in the first place as mandated under the TRIPS, because of their far-reaching impact on competition, though they can be important in licensing of technology. Professor Verma, in her presentation- "Intellectual Property Protection of Trade Secrets and Confidential Information", also highlighted the significance of trade secrets and their impact on competition, R&D and consumer interests, particularly in developing countries with no viable competition law and policy. She also highlighted Art 39 of the TRIPS, particularly Para 3 on data protection and its consequential impact on health care. She gave an over-view of the Indian law and practice on trade secrets, where no specific law on trade secrets exists and cases are decided on the common law principles of equity and contract. No tort of "misappropriation" as it exists in the USA is applied for trade secrets. She argued for a strong competition law at the national and international levels. Professor Smith, speaking on "The Benefits and Costs of Adopting the US Form of Trade Secret Protection" provided an overview of the USA law where two federal statutes – the Uniform Trade Secrets Act and the Economic Espionage Act are enacted on the subject. Beside, state laws are also adopted, as a result there are 50 different, but very similar, systems exist, which raise a very pertinent question that does the USA comply with the TRIPS? Even lawful behaviour in accessing the information may be termed as "misappropriation" and can be actionable, amounting to unfair competition. Standards to prove "misappropriation" are lower than the "gross negligence" under TRIPS/WTO and thus the third parties not knowing the information as secret at the time of purchasing will be liable and may be subject to injunction and damages (not punitive but reasonable damages). 

 

Session II on Industrial Designs and Three-dimensional Trademarks, chaired by Prof. Gunnar Karnell, had four speakers: Annette Kur from Max Planck Institute, Munich, Germany; Paul Torremans, University of Nottingham, UK; William T. Fryer III, University of Baltimore Law School, USA; and Martin Michaus, Universidad Anahuac y Universidad Panamericana, Mexico City. Mexico.

 

Prof. Michaus gave an over-view of the Mexican law on the subject by first referring to law on Industrial Designs, copyright, patent and utility models and position of 3-D TM in Argentina, Brazil, Chile, Paraguay and Uruguay. He stated that no distinction has been made under the Mexican law between 3D and other marks but between registrable and non-registrable marks. A descriptive mark is not registrable. He raised the issue of cumulative protection of 3D marks and its possible effect on competition. Prof. Fryer spoke on the "Recent changes in US trade dress law" and stated that in USA for industrial designs, two things are important- functional purpose, (not in trade dress); and not only utility but commercial appeal, (can be protected as trade dress). In recent years there has been a change in US position on trade dress, as evident from judicial decisions. Burden is on the trade dress owner to prove that it is not functional. Prof. Torremans spoke on "Three Dimensional trade marks and designs for packaging" by speaking primarily on the UK law in the context of 1994 Trade Marks Act and the EU Directive and the Registered Designs Act, 1949.He observed that there is a serious overlap in the registration of 3D marks under both these laws and of dual protection which should be looked into in the near future to avoid any confusion in law in wider context of EU. Prof. Kur, speaking on "Cumulation of IP rights pertaining to 3D items – an 'illegitimate offspring' of IPR" stated that 'functionality' issue has to be the starting point for the registration of 3D marks. She examined their protection through different modes of IPR as prevalent in most European countries. But, according to her, this could pose problem for undistorted competition. To think of providing accumulative protection will be a dangerous process and certain corrective principles may be required to counterbalance over-protective effects of cumulation.

 

Session III on Research Exception in Patent Law, chaired by Prof. Christan Le Stanc, Universite de Grenoble, France, had four speakers: Vincenzo Di Cataldo, Universita degli Studi di Catania, Italy; Katsuya Tamai, RECAST, University of Tokyo, Japan; Jay P. Kesan, University of Illinois, College of law, Champaign, USA; and Rudolph J.R. Peritz, NY Law School, USA.

 

Prof. Di Cataldo, speaking on "The experimental use of the patented invention: a free use or an infringement use?" pointed out that all the patent systems allow to work 'on' the others patented inventions for purely experimental use. Commercial exploitation of the outcome of research activities amounts to infringement of the patent. He referred to the US and EU positions for this purpose. The exact structure and limit of the "research use exemption" is important as it affects the activities of the researchers and the well-being of the society in general. While referring to Bolar case (1984) which decided the use of the patented product for regulatory purposes as an infringement of the patent, he observed that the law has not remain static since then. He argued that the patentee may not be interested or capable/active in further research, according to the structure of the market. The distinction between the research uses "on" the patented product and "with" the patented product was also examined. "Public interest" must be kept in sight while delineating the limits of limits of experimental or research exemptions and over-protection of the IPRs of the right-holder are not functional to the goals of law. Prof. Tamai, speaking on "Comparative study on the 'Experimental Use' in the Patent Law, explored the issue of 'experimental use' from three aspects: a. application for the purpose of generic drug; b. as a research tool for further development; and c. academic freedom and the patent rights. He discussed these issues in a comparative context by looking into the US law primarily and concluded that unlimited patent rights could not be justified if that would obstruct the development of the technology. The better rule is to recognize the exemption for research to understand or improve upon or modify the patented subject, whatever the ultimate goal. Prof. Kesan, speaking on the topic ("The research exception (or lack thereof) in U.S. patent law") stated that in USA, no statutory research exception exists except Art. 271 of the Patent Act and the Hatch-Waxman Act. Starting with the Roche v. Bolar case, courts have consistently ruled that research exception should be very narrow. In 1981, Congress tried unsuccessfully to have legislation on research exception. Prof. Peritz also gave an overview of the US position on the subject and argued that the US law requires a re-look on the issue in the historical perspective.

 

Session IV on Ownership of Inventions and Works Created by Professors or Teachers was chaired by Martin Adelman, George Washington University, USA and had the following speakers: Jan Rosen, Stockholms Universitet, Sweden; Hong Xue, University of Political Science and Law, Beijing, China; John T. Cross, University of Louisville, Kentucky, USA; and Mary Wyburn, Faculty of Economic and Business, The University of Sidney, Australia.

 

Talking on the "Teacher's exception: control and commercialization of research results", Prof. Rosen clarified that "teacher's exception" means that teachers have the right over their invention and patent for obvious reasons, but raises the issue of conflict of interests. There has been great diversity in its statutory regulation among different countries in Europe (including Sweden and Germany), Japan and USA (Bayh-Dole Act, 1980- regulating the publicly financed research), but only few patents, based on that research have been remunerative. In Germany, PVA system has been devised for patenting, which is directly linked with the industry and presently not fully operative (as highlighted by Dr. Heinz Goddard in his intervention). Prof Cross gave the general principles of different IPRs in university context. He provided an overview of the Bayh-Dole Act, which changed the position on university research. There has been collaboration among universities through AUTM (American Universities Technology Management). Universities generally do not accept the right in trade secrets and licensing agreement cannot restrict the publication rights of the faculty members. He concluded that any system that grants IPRs to universities should always be wary of the potential effects. Prof. Wyburn speaking on "Claiming ownership in the creative works of academics: the VUT litigation' in the context of VUT v. Wilson [2004] case decided in Australia, which highlighted the inevitable conflict of interest between the staff and the university over the IPRs, when there are no clear demarcation between their precise scope of activities and powers. But the VUT case requires further clarifications. Prof. Xue talking on "Copyright maze in distance education" highlighted that there has been no formal copyright policy in educational institutions and gave an overview of the ownership of different education material and the pitfalls thereto. As an intervention from the floor, it was highlighted that with a big number of students, teacher may publish the book related to his/her work and has the copyright without falling into the maze. All the presentation favoured some IPRs for teachers over their work.

 

Session V on Fair Use in Copyright, chaired by Prof. Ysolde Gendreau, had the four speakers: David Nimmer, University of California, School of Law, Los Angeles; Emanuela Arezzo, LUISS Guido Carli University, Rome, Italy; John Kiggundu, University of Botswana, Botswana; and Raquel Xalabarder, Universitat Oberta de Catalunya, Barcelona, Spain.

 

Prof. Nimmer spoke on doctrine of "fair use" in copyright as operated in the USA, with the help of court rulings and other common examples and stated that rigid application of set formulae may prove inexact and four statutory factors may often come to a naught to reach fair use decisions. Prof. Kiggundu spoke on "Fair dealing in common law countries" and stated that 'fair dealing' in common law countries is different from 'fair use' in the USA, and 'fair dealing' is restricted. Contract law has eroded the traditional concept/law of copyright. He argued for creating statutory exceptions in copyright law to deal with the specific problem of developing countries that need access to the work for wider dissemination of knowledge in the copyrighted work. Prof. Fryer, commenting on Prof. Kiggundu's presentation suggested that the work can be put on web (that facility is not widely available in these countries!). Ms. Xalabarder spoke about the "Fair use in Spain: the EUCD aftermath" and discussed about the Spanish position on 'fair use' doctrine after the EU Directive on Copyright, which was implemented in Spain in July 2006. Law does not provide exception for teaching but for research. Librararies have not taken the library exception seriously. The three-step test for 'fair use' is implemented in the order of 1-3-2. So it is mainly two-step test. Spain is not broadly following the EU position and the courts are applying the 3-step test to benefit the users and the original author. Speaking on the "Technological measures, software and interoperability in the digital age", Ms. Arezzo discussed the software directive of the EU 2001/29 and observed that relationship between technological measures (TMs) and limitations or exceptions to copyright law in the Directive is bit complex. TMs may affect the other non-infringing uses. The issue of anti-competitive strategies rather than preventing copyright infringement may also be the consequence of these measures, which requires a close look into the matter. The interventions from the floor clarified that transformation of the original work amounts to alteration of the work. The copyright law has changed since its inception and more profit-driven and each piece of academic writing has its market (Prof. Drexl).

 

Session VI on Copyright on Information Technology (IT) Products – Balancing right-Holders' and Users' Rights was chaired by Prof. Alberto Musso, Universta di Bologna, Italy, had three speakers: Delia Lipszyc, CEIDIE, Universidad de Buenos Aires, Argentina; Christophe Geiger. Max Planck Institute, Munich; Severine Dusollier, Faculte Universitaires Notre-Dome de la Paix, Namur,  Belgium.

 

Prof. Lipszyc, speaking on the topic "Copyright on information technology (IT) products: Right holders' v. Users' rights?" delved extensively on the 3-step test, which she stated is important for users. Technological products are not protected by the authors but by the producers. Copying is allowed for private use, and for non-profit purpose. Even this situation has not changed under the new EU Directive, which she described with the help of French case law. She argued that consumers should have the ultimate right. She argued for re-thinking on 3-step test to avoid an application strictly in favour of the product holder and to allow a balance of interest. Dr. Geiger, in his presentation "Privatization of information by copyright law – what are the remedies", stated that copyright on IT products summarizes the 'change of paradigm' in copyright law. Copyright, which was originally designed to protect the author now used as a mechanism to protect investment. Copyright does not protect products. Access to digital work has been restricted by technical measures, thereby influencing the free use of information (Leading to privatization of information), which is detrimental to the process of innovation. He suggested three remedies to tackle this problem – returning to basic principles of copyright to access information; re-establish these principles through other rules such as competition law, media law and fundamental rights; and re-shaping the existing rules in the changed paradigms. In the same vain, Prof. Dusollier, speaking on "The hazards of the consumerisation of copyright", stated that increasing commodification of copyright law has happened now, which has put the consumers' rights in copyright in danger and has threatened the users' rights. No one can be the consumer of copyright but only the user. The consumer is a client as to work, engaged in a contractual relationship with the distributor, which has nothing to do with the copyright. Contract allows access to copyrighted work and at the same time has led to detrimental consequences by limited the access to work in the traditional sense.  Contractual rights should not be mixed with the copyright exceptions.

 

Session VII on Undisclosed Information, Preclinical and Clinical Trials of Pharmaceutical Products and Public Health was chaired by Prof. Horacio Rangel Ortiz, Facultad de Derecho, Universidad Panamericana, Ciudad de Mexico, Mexico and had the following speakers: Carlos Maria Correa, CEIDIE, Universidad de Buenos Aires, Argentina; Jerome Reichman, Duke University, School of Law, Durham, USA; and Martin Adelman, George Washington University, Washington D.C. USA.

 

The session saw a very lively discussion from the panel. The approach of the two panelists- Prof. Correa and Prof. Reichman was similar, though not identical. The main focus of the discussion was Art. 39.3 of the TRIPS Agreement, which emphasize on data exclusivity. Prof. Correa, speaking on "Data exclusivity for pharmaceuticals: decreased support to industry's demands in free trade agreements" stated that most countries do not provide exclusive protection to test data, even though there is hyper-activity in the US and EU for data protection in pharmaceutical and agrochemical products. But he viewed that only biased interpretation of Art. 39.3 can demand data exclusivity as it requires protection against 'unfair commercial use'. It can be used for lawful purposes and in public interest. From a public health perspective, the availability of test data needs to be ensured and the FTAs, concluded by the US, have shown the diversity in its protection. Prof. Reichman, speaking on "Negotiating Health- intellectual property and access to medicines" stated that Art. 39.3 requires protection against unfair practices. He argued that test data be treated as "public good", which should be available on payment of a reasonable fee. This will help in lowering the prices of medicines, particularly for poor countries. Prof. Adelman contradicted the previous speakers and argued for the protection for five years and there after made available for a price.

 

Session VIII was on Promotion of Innovation and Transfer of IP Protected Technologies and chaired by Prof. Alberto Bercovitz, Universidad Nacional de Ensenanza a Distancia, Madrid, Spain. It had four speakers: Charles McManis, CRIE, Washington University, Saint Louis, USA; Michael Blakeney, Queen Mary College, University of London, UK; Yasser Mohamed Gadallah, Helwan University, Cairo, Egypt; and Amadou Tankoano, Universite Abdou Moumouni, Niamey, Niger.   

 

Prof. MacManis, in his presentation on "The impact of the Bayh-Dole Act on genetic research and development: Evaluating the arguments and empirical evidence to date" stated that Bayh-Dole Act has profoundly impacted the policy with respect to the ownership of IPRs in federally funded research. The Act was designed to promote technology transfer by allowing the universities to retain ownership of the patent rights by sharing the royalty with the inventor. But the often quoted argument that granting patents on the results of "upstream" genetic research undermines the norms of the biological research community or retard biomedical innovation, technology transfer, or the development of downstream commercial products and processes cannot be supported from empirical evidence. Indeed the Act has immensely helped in achieving its object and has become a catalyst in the progress of science and useful arts. Prof. Blakeney, speaking on "Protection of Innovation and transfer of IP protected technologies", in his presentation referred to Art. 7 of the TRIPS and stated that it is a commonly held view that IP protection is an incentive to innovation, investment and technology transfer, which, however, is difficult to prove in the case of poor countries. He took up the case of biotechnological patenting and discussed it in the context of its impact on research, licensing, patent thickets, patent pools and finally discussed the impact of competition law upon biotechnological licensing, patent pools and cross-licensing, and may have anti-competitive effects on the markets, if the competitors agree to divide the market. Prof. Gadallah spoke on the "Intellectual property rights protection for small and medium-sized enterprises and market structure". He discussed the significance of SMEs in the economy of the country. They are mainly technology followers and generally not the innovators. On the basis of study of some OECD countries, he concluded that IPRs play important role in reshaping the markets and a strong IPR regime may help in enhancing competition among these enterprises and will lead to high productivity. Prof. Tankoano highlighted the role of IP in promoting innovation in the context of African countries and stated that ARIPO/OAPI countries have made provisions for the local exploitation of patents which may help in the transfer of technology.

 

Session IX on IP in Bilateral Trade Agreements, chaired by Prof. Francois Curchod, Universite Robert Schuman, Strasbourg, France, had three speakers: Joseph Drexl, Max Planck Institute, Munich, Germany; Horacio Rangel Ortiz, Mexico City, Mexico; and Andrew Christie, Intellectual Property Research Institute of Australia, University of Melbourne, Australia.

 

Prof. Drexl presented a vivid account of bilateral agreements entered into by three blocs of developed countries- EU, Japan and US, with developing countries in his presentation "IP in bilateral trade agreements- some ideas on how they promote market power and distort international competition". Though the stated aim of these agreements is the integration of developing countries in the world trade, but it is mainly aimed at getting the market. These agreements are entered with countries which have clear potentials in the given situation. The potent effect of these agreements is to distort international competition by capturing the markets. They also go against the basic principles of the TRIPS/WTO, and difficult to establish that they promote market power, which depends on competition and innovation in the country concerned. Inclusion of TRIPS-plus standards may promote proprietary elements of existing IP systems by the owners of large IPR portfolios to the disadvantage of innovation-oriented competition at the global level. To protect the WTO system a strong competition law at international level is necessary.  Prof. Rangel-Ortiz discussed the "Trademarks in commercial agreements recently adopted in the Americas". He highlighted that after NAFTA, many Latin American countries have concluded commercial agreements with the USA, which contain certain new features not present in international treaties and this he elaborated with respect to trademark rights, which he explained with the help of many IP-related international agreements/ joint recommendations. As uniformity and consensus on procedural and substantive trademark law in a multilateral context is difficult to achieve, hence bilateral agreements come handy, which may ultimately lead to harmonization in the law. Prof. Christie, speaking on "Exporting the DMCA through Free Trade Agreements", stated that the USA, through FTAs is putting IP standards in these agreements. The DMCA is in point on copyright, which he felt is against the very spirit of multilateralism.

An intervention from the floor (Prof. Knugger) mentioned that "special and differential treatment" granted to least-developed countries under GATT/WTO will be eroded by these bilateral agreements.

 

Session X on Human Rights and Intellectual Property was chaired by Prof. Charlotte Waelde, ARHC, University of Edinburgh, Scotland and had three speakers: Willem Grosheide, CIER, Universiteit Utrecht, Nederland; Graeme Laurie, ARHC, University of Edinburgh, Scotland; and Abraham Drassinower, Faculty of Law, University of Toronto, Canada.

 

Prof. Grosheide, speaking on the topic "The human rights paradox" gave a vivid account of human rights instruments, having bearing on IPRs and raised the question that whether IPRs are human rights? He discussed the general character of human rights and IPRs and the obligation of the state to comply with human rights. He stated that IPRs are non-fundamental human rights (as property rights), which are open to state interference fulfilling its human rights instigated obligations, thus drawing a conclusion that human rights are absolute rights, which is not so with the IPRs. But he did not touch upon the cases of interface between the two and how to resolve the conflict. Prof. Drassinower, spoke on "What's in the 'And' in copyright and human rights" stressed upon the need to create a balance between IPRs and human rights in the context of copyright with the help of  case law. Prof. Graeme Laurie, speaking on "Human rights and wrongs: A skeptical look at human rights and intellectual property", provided an overview of how IP would impact human rights and how they are used in patent law. IPRs can be under Art. 28 of the Universal Declaration of Human Rights to find mutual coherence between the two. To give a ground to IPRs, human rights should be seen from IP focus.

 

In reply to an intervention from the floor (Dr. Geiger) that the constitutionalization of IPRs as human rights has already started by the courts and it is always contextual, Prof. Grosheide stated that in horizontal context, relationship between the private parties and the state, human rights and IPRs can be assimilated, but otherwise human rights prevail.

 

Session XI was the penultimate session on National Reports, highlighting the salient features of legislative, administrative and judicial developments in the respective countries of the speakers. The session was chaired by Prof. Peter Dirk Siemsen, Instituto Danemann, Siemsen de Estudos de Peopiedade Intelectual, Rio de Janeiro, Brazil and had seven speakers: Beatriz Bugallo, Universidad de la Republica, Montevideo, Uruguay; Fabiola Wust Zibetti, Universidade Federal de Santa Catarina, Brazil; Laura Sofia Gomez Madrigal, Universidad de Colima, Mexico; Carlos Urquieta, Facltad de Derecho, Universidad de Chile, Santiago, Chile; Veruska Venegas Guarin, Universidad de los Andes, Venezuela; Mandefro Eshete, Faculty of Law, Addis Ababa University, Ethiopia; and Llewellyn J. Gibbons, University of Toledo College of Law, Toledo, United States. Prof. Llewellyn, in his presentation, "Under US Copyright Law: A new fair use? Filth, fair use, and the Family Movie Act of 2006" provided a critical view of the Family Movie Act, 2006 of the USA.

 

General Assembly: The Congress ended with the meeting of the General Assembly, which approved the ATRIP budget for 2007/2008 and approved the recommendations of the Executive Committee and of the Nomination Committee. Dr. Annette Kur took over as the new President of the ATRIP for two years and Prof. Jan Rosen from Stockholm University was nominated as the President-elect. 

Changes in UK Trade Mark Examination Procedures.

From the 1 October 2007 the UK Intellectual Property Office (UK-IPO), will be making changes to the Trade Mark examination procedures.

After that date a new trade mark application will no longer be refused because of an earlier conflicting trade mark, unless the owner of the earlier mark successfully opposes the new application.

If the applicant decides to continue with the application, the owners of any earlier conflicting marks identified in the search will be notified, if they have opted in to receive notifications, when the application proceeds to publication in the Trade Marks Journal.

To OPT IN to receive such notifications, EU Earlier Rights Holders can complete form TM6 which will be available to be completed electronically on our website ( www.ipo.gov.uk) from 1 October 2007. The fee to receive notifications will be £50 per mark and this will be for a period of 3 years from the date the form is submitted. Payment must also be made electronically when completing the form.

For further information on the changes, please see visit our web site at www.ipo.gov.uk/t-law-notice-relativegrounds

Canada

New regulations amending the Patent Rules

Rules amending the Patent Rules were published in the Canada Gazette, Part II, Vol. 141, No. 10, on May 16, 2007, and came into force on June 2, 2007. In order to facilitate a smooth transition, the Patent Office has highlighted several key changes in the new regulations, as listed below, that may affect patent applicants/holders. The following does not offer legislative advice — it is an operational view of the impact of the changes. For a complete review of the new regulations, please consult the CIPO website.

• Small entity definition: This definition can now be found in subsection 3.01 (3) of the Patent Rules.  "Small entity" is now defined as an entity that employs 50 or fewer employees or that is a university — but does not include an entity that is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees. It also excludes entities that have transferred or licensed any right in the invention to an entity that has more than 50 employees, unless that entity is a university. Similarly, it excludes entities that have an obligation, other than a contingent obligation, to transfer or licence any right in the invention to other than a small entity.
• Small entity declaration: Subsection 3.01 (1) of the Patent Rules identifies the specific requirements for a small entity declaration.  Although the declaration may be submitted as part of the petition, the Office encourages you to submit it as a separate document since the small entity declaration, unlike the petition, requires a signature.  A statement indicating that the applicant/patentee "believes that they are entitled to pay fees at the small entity level" must also be included in the declaration. While the Patent Office will not refuse previously submitted small entity declarations, i.e. those submitted prior to June 2, they recommend that clients submit a new small entity declaration following the requirements of subsection 3.01 (1). It is important that the small entity declaration be signed. The Patent Office is in the process of creating a Small Entity Declaration Tool that will soon be available on the CIPO website to facilitate this process.
• Relief payment: Please note that pursuant to section 26 of the Patent Rules, the Commissioner of Patents is now authorized to grant patent applicants/holders an extension of time to allow correction of fees mistakenly paid at the small entity level providing certain conditions as set out in subsection 26(4) of said regulations are satisfied.  Please note that this new provision applies only to fees paid on or after June 2, 2007.   
• Changes in title or ownership: Whereas prior to June 2, 2007, any changes in title or ownership that occurred prior to the filing of an application for a patent required evidence, applicants now need only provide a declaration indicative of the chain of title events as per subsection 3(2) of Form 3 of Schedule I to the Rules. For PCT applications entering the national phase in Canada, a declaration as to the applicant's entitlement to apply for and be granted a patent must be submitted in accordance with Rule 4.17 of the Regulations under the PCT.  For non-PCT applications, the declaration can be included in the petition or submitted as a separate document. For PCT national entries, the declaration may have been included in the PCT request or can be submitted directly to the designated Office as a separate document.
• Sequence Listing [link]: The Canadian format for sequence listing is now in line with the Patent Cooperation Treaty (PCT) standard.
• Re-examination: If a person, other than the patentee, requests re-examination, the prescribed fee will be based on the entity size of the requester at the time of the request, and no longer on the entity size of the applicant. Please note that in order to benefit from the small entity fee, if the requester is a person other than the patentee, a signed small entity declaration will be required.