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30 June 2015 // ICANN Report // Prior User Rights // Utility Models
Petter Rindforth


Latest news on translation of Whois and dispute resolution for Intergovernmental Organisations

FICPI is actively working with two specific topics related to the domain name system with the Internet Corporation for Assigned Names and Numbers (ICANN).

One group deals with the issue of Translation and Transliteration of Contact information. Although the non-FICPI majority of this working group does not support FICPI’s position that transformation of contact information shall be mandatory, the working group expressed support at the April 16, 2015 meeting to FICPI’s suggestion that:  i) data information should be displayed as selectable text and not as an image, ii) transformation should happen if the submitted data is not in Latin characters of a UN language, iii) whether transformation is mandatory or not, the data need to be tagged/marked to be clear which script is used, iv)  a global WHOIS search, providing access to data in as uniform fashion as possible is necessary for the data registration service to achieve its goal of providing transparency and accountability for the domain name system is noted by the working group to be “an interesting comment that merits further reflections”, and v) one solution to collect and converse national data safely could be for ICANN to designate each country’s GAC to coordinate locally to standardize the conversion from local language to English for each country. 

The working group planned to submit its Final Report in May 2015, and at some time by June/July FICPI will have the possibility to file final comments. 

FICPI’s representative is also Co-Chair of the “IGO-INGO Access to Curative Rights Protection Mechanisms Working Group”, the working group dealing with the issue of finding a domain name dispute resolution system that works for International Intergovernmental Organizations (IGO’s).

The working group has concluded that Article 6ter of the Paris Convention for the Protection of Industrial Property can be used to identify registered IGO protection on the same way as a traditional registered trademark. Therefore, there is no need to change the Uniform Domain-Name Dispute-Resolution Policy (UDRP), but rather to inform IGO’s of their existing rights by adding comments to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. The remaining issue is the scope of the principle of sovereign immunity to IGOs, as IGO representatives states that this is an obstacle to use the UDRP but the working groups research shows that a number of IGO’s have in fact used the UDRP system many times, without claiming sovereign immunity.

The next ICANN public meeting was held on 21-25 June in Buenos Aires, Argentina.  

Author: Petter Rindforth

Prior User Rights

FICPI considers Prior User Rights (PURs) - the right to continue exploiting an invention after having started exploitation without infringing any patents held by others - to constitute an essential element of any patent system based on the first-to-file or first-inventor-to-file principle. This is especially important in case the patent system includes an effective Grace Period (GP) provision of the “safety net” type. In such a system, the existence of PUR will put pressure on the pre-filing disclosing party to file a patent application without undue delay. 

However, the PUR should be limited so as not to unnecessarily curtail the exclusive rights of a patentee. A number of conditions should be set up for the prior user to enjoy such rights. Primarily, PUR should be acknowledged for independently created inventions. On certain conditions, however, even derived knowledge may form the basis of a right to start and continue the use of an invention on which another party subsequently files a patent application.  However, the prior user may not exploit the invention on the basis of non-public information, derived from another party, without the consent of the latter party.

Any party claiming PUR must be able to prove such rights and provide evidence on the prior activities that will justify a continued exploitation within a territory being geographically limited to the particular national state or jurisdiction.

Author: Jan Modin, CET 3

The full position paper is available here.

FICPI approved a position paper on Utility Models as a distinct right as part of an IP system

Based on studies and consultation within FICPI, FICPI asserts that the current processing time of a patent application to receive an enforceable right for an invention, in other words to receive a granted patent, is typically long in various IP systems. Especially products with a short life time cycle need a fast intellectual property protection. Moreover, the current costs to have a patent granted are too high, mainly due to the examination procedure.
On the other hand, FICPI recognizes generally positive experiences with utility models in the various countries, although there are different rules in different countries. Therefore, FICPI supports utility model systems. Although harmonization is not necessary in detail, it is FICPI´s common understanding that a successful utility model system should have minimum frame conditions which provide a certain “minimum” level of harmonization.

A utility model system may encourage inventors to protect technical developments with low costs and quick registration. FICPI is of the view that utility models, as a distinct right as part of an IP system, with appropriate safeguards are beneficial and also strategically important by completing the possibilities for protection of inventions. Utility models are of particular interest and importance to small / medium-sized companies and may be well suited for inventions evolving in products having only a rather short lifespan.

Authors: Klaus Roitto & Uwe R. Borchert

The full position paper is available here.
FICPI / ACPAA - The 5th China Intellectual Property Symposium
5-7 November 2015
Chengdu, P.R. China
Sent by FICPI - Holbeinstrasse 36-38, 4003 Basel, Switzerland
Authorized by Dr Alexander Wyrwoll, President of Communications Commission.