This month Julian Crump focuses on one FICPI endeavour that deserves your special attention; the tremendous work carried out by our Study & Work Commission (CET) in the field of substantive patent law harmonisation. Read more...
FICPI President at AIPLA Annual Meeting 2018
FICPI President, Julian Crump (UK), attended the AIPLA’s Annual Meeting 2018 in Washington DC as part of an ongoing collaboration between the two organisations. Read more...
FICPI at ICANN63 Public Meeting in Barcelona
Petter Rindforth reports on the 63rd ICANN public meeting held in Barcelona, Spain, on 20-25 October 2018. Read more...
News in 2018
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As we move into the last three months of the year, FICPI’s pace of activity has picked up after the summer, and there is much on which I could report. However, this month I want to focus on one FICPI endeavour that deserves your special attention; the tremendous work carried out by our Study & Work Commission (CET) in the field of substantive patent law harmonisation.
B+ Sub-Group Patent Law Harmonisation
FICPI is no stranger to having its ‘scientific’ work cited in positive terms by inter-governmental organisations and judicial bodies. For instance, FICPI’s “Memorandum C” (DATE) was discussed extensively by the EPO’s Enlarged Board of Appeal in its recent decision G1/15 on “toxic” divisional applications. That FICPI’s positions are often influential in higher court decisions around the World and in the development of IP laws and treaties is a testament to the very high quality of FICPI’s studies and work in the fields of patents, trade marks and designs that draw on the very wide knowledge and experience of its dedicated members.
The latest FICPI contribution to be welcomed and appreciated derives from a FICPI Working Group with core members from 11 countries that was established in 2016, initially to look at the issue of “Conflicting Applications”. At a B+ Sub-Group/Industry Symposium in 2017 in Munich, the following “Cornerstones” for patent law harmonisation were identified:
Prior User Rights
The remit of FICPI’s Working Group was expanded accordingly, resulting in the adoption of a detailed position paper by the FICPI’s Executive Committee in June 2018 in Toronto EXCO/CA18/CET/1302). FICPI’s complete position on the Cornerstones is contained in a detailed FICPI white paper on Patent Law Harmonisation.
As a result of lobbying by Michael Caine (AU), Vice President of the CET, and Jérôme Collin (FR), Chair of CET 3,with members of the B+ Sub-Group, FICPI was invited to present its recommendations to a meeting of the B+ Sub-Group on 26 September 2018 in Geneva. At the meeting, which was attended for FICPI by Jerome Collin (FR) and Jan Modin (SE), the Industry Trilateral (IT3) presented updated exhibits on the grace period, conflicting applications, prior user rights and prior art, which showed that agreement had been reached on both the definition of prior art and norms governing conflicting applications (with the exception of the treatment of PCT applications). The delegations found FICPI’s presentation interesting and appreciated FICPI's continuous work over many years on these issues. The B+ members discussed, without agreement, the possibility of including FICPI’s findings into the future work. A significant point about the FICPI proposed package, which was noticed by the B+ Sub-Group, is that it is relatively simple and easy to understand, is based on well-established principles of patent law, contains no gaps and aims to strike a balance between the interests of applicants, third parties and the general public and also between large companies and small entities, including individual inventors. As a result of FICPI’s presentation, the B+ Sub-Group agreed that the IT3 should be requested to respond to the FICPI proposals (the Agreed Statement will be announced soon).
In brief, the FICPI recommendation comprehends:
A 12-month grace period after an applicant’s pre-filing disclosure (PFD).
A safety net comprising prior user rights for third parties and full status as prior art for non-derivative disclosures by third parties.
A voluntary statement of any PFD by the applicant, which gives rise to a presumption that, the PFD is to be exempted from the state of the art. In the absence of a statement, no presumption exists.
Brief details of new applications, including the contents of the PFD, to be published within 6 months of the filing date.
Prior User Rights
Prior user rights for third parties who have made commercial use – or made significant preparations to use - an invention within the grace period, which will be acquired even if based in good faith on the applicant’s PFD.
FICPI supports “whole contents novelty”, which is simple and predictable, balances the interests of first and later applicants and does not require complicated anti-self- collision provisions or terminal disclaimers.
Please join with me in congratulating all members of the FICPI Working Group, who have worked intensely since 2016 on these issues, especially, Jan Modin, Michael Caine, Jérôme Collin and Philip Mendes da Costa for putting together such a clear and well thought out package of measures and for their success in attracting the significant interest of the B+ Sub-Group.
FICPI will continue to work hard to remain closely involved in this project with the aim of encouraging the relevant governments to agree on a package of measures that facilitates the exercise by inventors and industrialists of their rights, of increasing their security, and of simplifying procedure or formalities in accordance with one of FICPI’s statutory aims (FICPI Statutes, Art. 2.4).
FICPI President, Julian Crump (UK), attended the AIPLA’s Annual Meeting 2018 in Washington DC in furtherance of the two organisations’ on-going collaboration. FICPI and AIPLA enjoy a long-standing, friendly relationship and invite each other to attend their regular meetings. Members might be interested to know that in 2004, AIPLA presented FICPI with a President’s Medal as a symbol of the close relationship between the two organisations. The FICPI President’s Medal is transferred from each FICPI President to his or her successor at the FICPI World Congress every three years.
Growth of FICPI membership in the United States is a particular goal of FICPI’s recently adopted Strategic Plan, and while in Washington, Julian took the opportunity to hold brief discussions with Mark Dickson, Chair of the ABA’s IP Law Section. ABA-IPL will celebrate its 125th anniversary in 2019 and Julian indicated that he would plan on attending the associated celebrations on behalf of FICPI. In the meantime, Julian and Dickson would continue to discuss ways in which the two organisations could help each other more. Similarly, Julian discussed with Stephan Freischem, Secretary General of GRUR, how FICPI and GRUR might learn more about each other and strengthen their relationship. Of course, GRUR is one of Germany’s leading IP organisations, where FICPI has many members.
Sheldon Klein was installed as AIPLA’s new President for 2019-20. Julian extended congratulations on behalf of FICPI and its members to Sheldon and hoped that he would find time to attend FICPI’s next ExCo meeting in Turin on 31 March to 4 April 2019 as well as a joint colloquium that FICPI is co-organising with AIPPI and AIPLA on the patentability of AI inventions. Further information about the colloquium will be published in due course.
Also present at the meeting were representative from the USPTO, including Director Iancu and Commissioner for Patents Hirshfeld, WIPO and numerous other IP organisations.
The Internet Corporation for Assigned Names and Numbers (ICANN), an internationally organized, non-profit corporation that has responsibility for Internet Protocol (IP) address space allocation, generic (gTLD) and country code (ccTLD) Top-Level Domain name system management, and root server system management functions, held its 63rd public meeting in Barcelona, Spain, from October 20 – 25, 2018.
The Internet Corporation for Assigned Names and Numbers (ICANN), responsible for the global domain name system, held its 63rd public meeting in Barcelona, Spain, from October 20 – 25, 2018.
This Annual General Meeting was focused on the European General Data Protection Regulation (GDPR) that came into effect on May 25, 2018, and its impact on WHOIS Data Access.
In order to follow the GDPR and thereby protect the identification of physical person’s identity on the Internet, most registrars have closed down the possibility to identify a domain name holder by a traditional WHOIS search. The problem is that this also brings problems for law enforcement in relation to online trademark infringements, cyber security and consumer protection interests.
ICANN has developed a “Temporary Specification” with the possibility that users with a “legitimate and proportionate purpose” may access non-public Personal Data by sending a request through domain Registrars and Registry Operators. However, in many infringement cases so far, such requests have been refused.
FICPI has been actively involved in a work to find a solution where ICANN can obtain access to personal data in WHOIS records, giving legal representatives of trademark owners the possibility to retrieve the information via a centralized, ICANN controlled, WHOIS record.
Another important topic was the ongoing work with the Review of all Rights Protection Mechanisms (RPMs) in all generic Top Level Domains, which is now preparing for questions to be sent out to the public (including FICPI) for comments on the Uniform Rapid Suspension System (URS), as well as discussions related to the Trademark Clearinghouse (TMCH). According to the result of a questionnaire sent to users of the TMCH, on the specific question on what actions a trademark owner took upon information of a domain name registration including their trademarks, it turned out that in the majority of cases (82%), the domain name was added to the trademark owners list of monitored domain names, and that the most common legal action (82%) was then to send a Cease and Desist letter. 23% filed a URS Complaint, and 55% filed a UDRP Complaint.