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20 October 2015 // 16th Open Forum // OHIM // Indian Patent Office // Wound Treatment Apparatus // WIPO Roving Seminars //
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Official Visit - FICPI at OHIM

On 29 September, a small FICPI delegation started the ‘European Tour’, by visiting OHIM in Alicante, Spain. The delegation consisted of: Doug Deeth (President), Coleen Morrison (CET President), Elia Sugrañes (CET Special Report for Trade Marks) and Robert Watson (CET Vice-President).  They received an extremely warm welcome from Antonio Campinos, OHIM’s President and a team lead by João Negrão, the Director of ICLAD.  The working session is reported fully below, and lasted for three hours covering issues raised by both OHIM and FICPI.  Particular topics include a discussion of working with OHIM to extend the Project Orange work to Trade Marks and the upcoming changes to the Community Trade Mark Regulation.

In the next couple of weeks, FICPI delegations will meet with the European Commission and the EPO, including attendance at an event to mark 30 years of collaboration between the EPO and SIPO (the Chinese Patent Office).
Click here to download the meeting report
Click here to download the meeting photos
Guidelines relating to Examination of Computer Related Inventions

The Indian Patent Office has finalised its Guidelines relating to the Examination of Computer Related Inventions (CRIs). The Guidelines mark a paradigm shift in the thinking of the Indian Patent Office towards patent eligibility of CRIs and is a watered down version of the draft guidelines. There was considerable ambiguity regarding patentability of inventions whose subject matter dealt with the exclusions from patentability as specified in Section 3(k) of the Indian Patents Act, i.e., a mathematical method, business method, computer programme per se or algorithms. The finalised Guidelines clear up the ambiguity to a fair extent.

The article, prepared by Mr. Sharad Vadehra with and for FICPI-INDIA, compares the finalised guidelines relating to examination of CRIs to the practice as followed by the EPO, as reflected in the decisions of the Technical Boards of Appeal of the EPO. The comparison shows that differences between the IPO and the EPO regarding examination of CRIs seems to have been narrowed down with the release of the final Guidelines for the Examination of CRIs by Indian Patent Office.
Read more: Comparing the Criteria of Patentability of Computer Related Inventions (CRIs) in India to those of the EPO
Guidelines for Applications relating to Pharmaceutical Inventions

The Indian pharmaceutical industry is well known for its global success story and market leadership in producing generic drugs. However, in order to lead to higher quality patent applications, the Indian Patent Office has recently released examination guidelines for applications relating to pharmaceutical inventions. These guidelines have provided relief to applicants as well as Attorneys on various issues faced during the examination stage of the patent application process, such as lack of clear explanation regarding codified Sections, lack of adequate case law, the presence of different practices followed by the Examiners, etc. Accordingly, these guidelines are a welcome step in bringing uniformity to examining patent applications in the field of Pharmaceuticals. It is to be noted that these guidelines are not law of the land and can be challenged in a Court of law. The article, prepared by Mr. Sharad Vadehra with and for FICPI-INDIA, highlights the various issues that still need to be looked at in these guidelines. 
Read more: Guidelines for Pharmaceutical Inventions

Germany’s Supreme Court Decision
“Wound Treatment Apparatus” – A Possible Cure for EPO’s Inescapable Trap Disease?

Germany’s Supreme Court [FCJ] has announced its milestone decision in a Nullity Action (X ZR 161/12) concerning the German part of EP 1 088 569 granted with an originally non-disclosed feature. In essence, the FCJ found a solution to avoid EPO’s inescapable trap approach, typically originating from a conflict between Art. 123 (2) and (3) EPC, resulting in total loss of the patent:

If a claim in a European patent validated in Germany contains a feature not originally disclosed as part of the invention, the patent is not to be declared null and void if the feature leads to a limitation of the claimed subject-matter being protected, rather than to an aliud (another subject-matter). 

FCJ’s decision perfectly joins the line of a number of its recent decisions concerning the question of inadmissible amendments in German invalidation proceedings. Common to all of the decisions appears to be that the FCJ opens up the scissors between EPO’s and Germany’s national jurisdiction in favor of a more relaxed position with regard to as what is considered to be new matter.

What catches the IP professional’s eye in the Supreme Court’s Decision is the refreshingly liberal usage of the skilled person’s overall understanding of an invention, rather than the mere linguistic approach as practiced by the EPO. Thus, the FCJ’s Patentee-friendly “non-aliud” - Decision gives hope for a future potential cure of EPO’s inescapable trap disease, and might lead to giving up of EPO’s stringent Art. 123 (2) EPC interpretation.

Authors: Dr. Jürgen Kaiser & Dr. Alexander Wyrwoll
Click here to download the full report
      WIPO - Roving Seminars

Are you looking to take your business overseas but not sure how to protect your intellectual property (IP) rights? Or do you represent businesses and want to hear about the latest developments in global IP systems? Then sign up to attend WIPO Roving Seminars

The next seminars will take place in Valencia, Barcelona and Zaragoza on 20-22 October 2015 respectively.  Further information is available in the event flyer.

Sent by FICPI - Holbeinstrasse 36-38, 4003 Basel, Switzerland
Authorized by Dr Alexander Wyrwoll, President of Communications Commission.