Should the Client-Attorney Privilege question be separated from patent law harmonization? Will China be the game changer for the Hague Agreement; 75% of the world’s designs are filed from China? Is writing reports history?
Payment of Fees for IP are Allowed Despite US Sanctions on Venezuela
On 6 August 2019, after US Government promulgated new sanctions on Venezuela, the OFAC published a General License which expressly permit payments to the Venezuelan Government for filing, prosecution and maintenance of patent, trademark, copyright or other forms of intellectual property protection in Venezuela, including opposition and infringement proceedings.
CORRECTION: CET5 Studies Patent Eligibility of 3D Printed Tissues and Organs
In the September News, the article on 3D Printed Tissues and Organs was erroneously attributed to Dr Sharon Crane. The author of this article was Dr Francesco Paolo Vatti.
News in 2019
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FICPI @ WIPO
FICPI had the pleasure of having a full-day meeting with the WIPO leadership on 11 September 2019 covering a broad range of topics, from one-portal digitalization to arbitration. The WIPO is also expanding its patent drafting training programs.
Should the Client-Attorney Privilege question be separated from patent law harmonization? Will China be the game changer for the Hague Agreement; 75% of the world’s designs are filed from China?
Director General Francis Gurry gave a comprehensive overview over the latest developments at the WIPO and concerning the various treaties it administers. The PCT filings are growing, the Madrid applications are in the rise and membership expands; and the Hague agreement is moving along well. The Design Law Treaty may move forward in the WIPO General Assemblies in October this year.
In its internal operations WIPO is moving for AI based speech-to-text reporting (including machine translations) connected to searchable video recordings. The WIPO platforms are already extensively used and enhanced by the WIPO translating tool and image search (designs).
Yoshiyuki Takagi, Assistant Director General, informed that the WIPO is planning to launch a new IP Portal in a few weeks. The portal will collect the present 48 portals and include ePCT, eHague, eMadrid, allow for financial transactions and thus offer a one-stop shop for all IP services. It will have a single sign-on user account providing overall access to files and related payments.
A further new service that WIPO is considering is digital time stamping instead of traditional notarial services for retaining documents as future evidence. According to a WIPO survey, about 10 jurisdictions offer such on-line services. There are also a number of commercial providers in this area. The service would be based on a single user account and subject to fees.
After the more general overview Marco Aleman, Director, Patent Law Division, took the lead on a discussion on patent law. The patent law division works on four tracks: SCP; legislative advice to member states on patent related issues; support with the Paris, Budapest and Patent Law treaties; as well as local capacity building by patent drafting and inventor assistance programs. Within the SCP framework almost 70 dossiers on substantive patent law have been produced during the last five years. FICPI was again encouraged to contribute with advice on the substantive issues. The client-attorney privilege (CAP) discussions are also advancing, but it could be advisable to focus on CAP with respect to litigation, and not prosecution.
Presently, WIPO runs patent drafting programs on a national and regional level. The plan is to start with an international program based on both distance learning and on-site training in Geneva. The goal is to achieve an accreditation arrangement by way of MOU’s with member states.
Matthew Bryan, Director, PCT legal and User Relations Division, reported that the PCT Working Group was functioning well and that FICPI’s interventions and suggestions had been well considered and taken aboard. An amendment to the rules on erroneously filed elements in the PCT Regulations will be proposed to the General Assembly in October 2019. The PCT Applicant’s Guide will provide clarifying examples on how the rule amendments will be applied in practice. There is also a proposal on providing extensions to time limits in case of problems with online access for applicants. A more difficult issue is the broadening of the competence of any ISA/IPEA.
After lunch, the discussions moved onto brands and designs. David Muls, Senior Director, Madrid Registry, noted that the Madrid system has developed positively. By now 121 countries are included and the goal is to raise the number to the PCT member state level (150 +). The use of the Madrid system, however, differs in the way that even the larger filers only file less than 200 applications/year, whereas the majority of applicants only file a very few applications. One issue that is looked into is harmonizing time limits, since offices calculate them differently; an example being provisional refusal. There is a clear rise in filings from Asia. WIPO has been tasked to study the introduction of new languages into the system; Arabic, Chinese and Russian.
Grégoire Bisson, Director, The Hague Registry, continued by reporting that 2018 was a significant year for the Hague Agreement as Canada, Russia and UK joined. Further countries are in the pipeline, including China standing for about 75% of the world’s design filings.
We then briefly reviewed our latest resolutions on slogan marks, letters of consent, adequate response times and our discussions regarding anti-scam measures. With regard to the latter, Debbie Rønning, Director, Madrid Registry, noted that WIPO received such notices themselves and took actions by notifying banks. With regard to our resolution on assessing priority of design applications, it was noted that the DAS code could be used as part of the priority claim data.
The WIPO, in addition to the PCT Working Group (WG), also runs a Madrid WG and Hague WG. FICPI was welcomed to join these groups.
Finalizing the day, Erik Wilbers, Senior Director, WIPO Arbitration and Mediation Center, gave an update on the activities of the center. The center has been operating for 20 years and has processed about 44000 domain name cases under the UDRP, 3500 cases last year. In view of the GDRP WIPO provides an advantage since it may go back to authorities for information. Alternative Dispute Resolution (ADR) is also clearly growing; about 60 cases have been processed.
Payment of Fees for IP are Allowed Despite US Sanctions on Venezuela
Caracas, Venezuela, August 8, 2019 – General License 27 published by the OFAC (Office of Foreign Assets Control) on August 6, permit payments to the Venezuelan Government for filing, prosecution and maintenance of patent, trademark, copyright or other forms of intellectual property protection in Venezuela, including opposition and infringement proceedings.
New sanctions of US Government (Executive Order Blocking Property of the Government of Venezuela; EO 13884) prohibit US individuals or companies from engaging in transactions with the Government of Venezuela, by broadening the definition of Government of Venezuela to include not only the state and named officials but now, also, all property and property interests of the Government of Venezuela (Section 6(d), e.g., political subdivisions, agencies, entities and persons controlled directly or indirectly by the government).
In case of intellectual property matters in Venezuela, the Office of Foreign Assets Control (OFAC) published on August 6, 2013, 13 new general licenses that excused US persons from the terms of the Executive Order. In particular, General License 27 authorize transactions in connection with the protection of intellectual property rights in the US or Venezuela. Expressly permitted are the filing, prosecution and maintenance of any patent, trademark, copyright, or other form of intellectual property protection in Venezuela, as well as the filing and prosecution of opposition or infringement proceedings with respect to an IP right, or the entry of a defense in such proceedings.
General License 27 authorizes US persons to pay fees to the Government of Venezuela, and to pay reasonable and customary fees and charges to attorneys and representatives within the US or Venezuela in connection with intellectual property transactions.
Brazilian Bill Aims to Tackle Patent Backlog Through Cooperation Agreements
The Brazilian IP scenario is a vibrant one, as the country has one of the largest markets in the world. Protecting a patent in Brazil, however, will sometimes take longer than expected. One of the ways that Brazil is trying to solve the patent backlog issue is through the legislative bill no. 2334/19, which aims for a change in the Brazilian Industrial Property Law, in order to enable cooperation agreements and partnerships between the Brazilian Patent and Trademark Office (BPTO) and public or private entities. The bill has just been approved by the Brazilian House of Representatives’ Economic Development, Industry, Commerce and Service Committee.
According to the Brazilian Office’s own statistics, the patent backlog amounts to around 10 years, totaling 13 years of delay in case of pharmaceutical patent applications. In this sense, the main objective of this legislative bill is to reduce this backlog. The bill will do this by allowing the BPTO to enter cooperation agreements in order to train professionals on how to file better patent applications. It will also allow third-parties to perform preliminary, non-technical, parts of the administrative patent application procedure. After incorporating these strategies, technical examinations should be faster because the BPTO will be able to focus more on the technical aspects of the procedure, while allowing third parties to conduct preliminary procedures – not to mention that the quality of the patent applications should also increase due to BPTO’s trainings.
However, there is still a long way before the bill can be signed by the President of Brazil. It still has to go through the analysis of the House of Representative’s Commission on Constitution, Justice, and Citizenship, and, if approved, it still needs to be passed by the Brazilian Senate.
The EPO has no interpreters of its own but uses external services, which is costly and involves considerable organisation. As laid down in Rule 4(5) EPC, the cost of interpreters is borne by the EPO.
Every year, around 750 interpreting days are cancelled at short notice. In opposition proceedings, this can happen for various reasons, e.g.
the oral proceedings are cancelled due to a withdrawal of the application, the opposition, or the request for oral proceedings
the oral proceedings are postponed due to late submissions
the party who requested interpreting does not attend the oral proceedings.
Only in rare cases the interpreters can be rebooked for other tasks.
Making use of the interpreting services responsibly is to the advantage of all the parties to the oral proceedings.
Therefore, we kindly ask all FICPI members who attend oral proceedings at the EPO to request interpreting only where strictly needed and inform the EPO as early as possible if, for whatever reason, the interpreters requested are not needed.