28 April 2016 // 16th Open Forum // Fast Track Examinations in France // India Trademarks Suspended // Korean Patent Act & Trade Mark Act // ExCo Workshop Reports
16th Open Forum
Practice Management Stream
Practice Management (formerly the General Stream) in FICPI’s Open Fora has been enjoying continuous attention and praise by attendees in the past. It has now become a distinguishing feature of the Open Fora. This years’ Practice Management Stream will focus on how IP firms can adapt to the commoditisation of IP-related services.
The Plenary session will present procedures for an IP firm to find and develop a position in the market which is both lasting and fitting the firm’s culture. At the heart of these procedures are instruments for building a stable relationship with the client and raise his awareness to the value of professional IP services
In another Practice Management session, the measurement of economic key parameters of an IP firm and the use of these parameters in managing the firm will be discussed. The CEOs and presidents of three large IP firms will present their practices and experiences.
To be attractive to clients, high-quality services at a reasonable service fee are essential. Both these aspects will be highlighted: one session will be concerned with presenting quality assurance methods such as self-assessment questionnaires for determining the state and the progress of an IP firm in fulfilling its strategic plan. Further, representatives of IP firms will present their experiences about the introduction of Six Sigma methods. Another session will take a look at rationalizing and automating the work flow in IP firms using software to compete with third-party service providers.
With the Practice Management Stream in St. Petersburg, FICPI is confident to again provide competent advice and guidance to the attendees in best practices of practice management.
Fast-Track Examination procedure now available in France for patents and utility models
The French Patent Office (INPI), following in the steps of the EPO PACE program, has now implemented procedures for accelerated examination of a French patent or utility model application. Patent and utility model applications qualifying for accelerated examination, and in which such a request is made, may now be issued within 20 months from filing, instead of the more common time frame of 30 to 40 months from filing. This will apply to applications filed electronically only. The acceleration request has to be filed within 10 months from filing and must be accompanied with a request for early publication. Read more...
Abandonment of hundreds of thousands of Trademark Applications by Indian Trademark Office
In a throwback to a report in 2011 of several thousand missing files in the Indian Trademarks Registry, Applicants/Agents again got a shock from Indian Trade Marks Registry which deemed many of their applications as abandoned in cases where no response to examination reports containing office objections were received, despite such examination reports having been dispatched to applicants or their agents individually. Read more...
Revision of Korean Patent Act & Trademark Act
Some notable changes in the patent act and the trademark act of Korea from the recent amendments which will come into effect soon. The changes in the patent act include a newly adopted ex partes patent cancellation proceeding and the shortened time frame to file request for substantive examination. The changes in the trademark act include supplement provisions for non-use cancellation trial. Read more...
Executive Committee Workshop on "Practical Issues of the Unitary Patent and the Unified Patent Court"
Despite the Unitary Patent and Unified Patent Court being ready for implementation, a number of questions remain. These include “will the unitary patent be cheaper or more expensive?” or “should one opt-out from the jurisdiction of the UPC?“
Discussions on such practical issues as well as possible advantages of the new systems, compared to the present system of European patents and national courts, took place at the ExCo workshop, with a focus on cost, quality and legal issues.
Executive Committee Workshop on "Non-Traditional Ownership of IP Firms"
A workshop was organized on 11th April 2016 in the framework of a FICPI ExCo meeting in Zurich to gather information from different jurisdictions on how practitioners can work together, the form of associations that are allowed, to identify trends and to evaluate collaborations that are clearly not allowed.
In a majority of jurisdictions the IP profession comprises practitioners known as patent attorneys, patent agents, trademark attorneys or trademark agents on one side and lawyers on the other side. A number of countries have specific rules either allowing or specifically forbidding multidisciplinary partnerships. The trend seems to be towards a softening of the requirements. The main aim of the interested circles in the past was directed to avoiding a basis for accounting firms to form this kind of partnership with lawyers and other professions.
Reasons why professionals are thinking about going public were also discussed. One major driver relates to questions around retirement. The demographics are such that the baby boomer generation has to plan its succession and Generation Y is not always willing or able to step in under the current conditions. In a number of jurisdictions, one option – at least in the future – appears to be financing succession in IP firms through outside capital. It was noted that in Australia the public was – at least in 2015 in the first year after such an IPO – quite enthusiastic and trebled the initial price of the shares.
These questions relating to multidisciplinary partnerships and non-traditional ownership of IP firms will be discussed at the FICPI Open Forum in St Petersburg in October 2016.
A further summary of the discussions is available here.