20 June 2016 // TRIPS Compliance // USPTO Visit // Traditional Knowledge // Partial and Multiple Priorities // B+ Meeting Report // ACPI Quality Charter
16th Open Forum
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FICPI Resolution - TRIPS Compliance
FICPI has been supportive to international substantive patent law harmonisation, as reflected in several past resolutions. Unfortunately, following approval of the Patent Law Treaty (PLT), discussions in WIPO about substantive harmonisation have practically stalled, while parallel discussions by certain groups of countries are also advancing only very slowly.
However, a higher level of substantive harmonisation can be achieved in the short term by an increase in the consistency between national laws and TRIPS, the Agreement on Trade-Related Aspects of Intellectual Property Rights administered by the WTO, which entered into force on January 1, 1995. Full realisation of the objectives of TRIPS depends upon allowing members to ensure not only that the national legislation of other members expressly complies with the obligations provided for in that treaty, but also, and particularly, that the practice in the country is consistent with those objectives. While the possibility exists for members to submit consultations to other members about a possible lack of express compliance, the treaty’s Article 64 has suspended until today the possibility of settlement of disputes based on so called non-violations, that is, situations in which the national law expressly complies with TRIPS, but the practice deviates from the intended objectives of the treaty.
Therefore, FICPI resolved to urge WTO members a) to lift the moratorium on the submission of consultations based on non-violations, with the possible exception of disputes involving LDCs, and b) to intensify the submission of mutual consultations aiming at achieving a higher degree of compliance with TRIPS among WTO members. FICPI's resolution may be read here.
In a closely related development, in the WTO 2016 News Item released recently, the WTO announced that the chairman of the WTO’s Council on TRIPS urged members during a 7-8 June meeting to revitalise discussions in the Council, including allowances for more open exchanges through informal discussions. The chairman also said that he had intended to put forward a paper in order to help overcome the decades-long deadlock on the issue of non-violations, but that this did not receive consensus support.
On 2 May 2016 a FICPI delegation, led by FICPI President Doug Deeth and CET President Coleen Morrison, was hosted by the USPTO in Washington DC for FICPI’s annual official visit. This productive and information visit included a chance to speak directly with Undersecretary and Director Michelle Lee.
The FICPI delegation was given the opportunity to discuss issues of interest to FICPI members, including USPTO-led IP5 initiatives, PTAB and TTAB developments, and practical patent, trademark and design issues such as such as patent subject matter eligibility and the recent availability of petitions to revise goods or services specifications in cases wherein evolving technologies have rendered the Registrant unable to fulfill requirements to prove use.
The FICPI delegation was also provided with detailed information on the ongoing Enhanced Patent Quality Initiative (EPQI), including the efforts on various work products, patent quality measurement metrics, and customer service initiatives. In addition, the USPTO provided a demonstration on current developments in the Global Dossier centralised access system.
For a complete report of the visit’s events and some additional information on the topics discussed, please refer to the complete report. Read more...
Practice in Granting and Defending SPC in Romania
Supplementary Protection Certificates for pharmaceutical products and for plant protection products have been available in Romania since 2007- the date when Romania joined the European Union.
Between 1 January and 30 June, 2007, pursuant to Art. 19(l), roughly 90 SPC applications were filed with the Romanian Patent Office on the basis of a first Marketing Authorisation in Romania issued after 1 January 2000, the majority of which were granted. From 2007 to date, the number of SPC applications filed with the Romanian PTO has increased yearly, from about 20 in 2008 to about 55 in 2015.
Since 6 October 2015, the Examining Commission of the Patent and Trademark Office has decided that the expiring date for all SPC Applications currently under examination is to be calculated taking into account the date of the notification of the first Marketing Authorisation, in compliance with the Judgement of the CJEU in case C471/14. Read more...
B+ Meeting Report - 6 October 2016
For the first time, FICPI attended as an observer at a B+ meeting where two major topics were discussed, Client Attorney Privilege and Patent Law Harmonization. FICPI made an oral statement reiterating FICPI’s position in support of a safety net grace period without requiring a mandatory declaration. Read more...
The Quality Charter of ACPI
Using cooperative self-assessment to improve quality and competitiveness in IP attorneys firms, the French Quality Charter focuses on the development of practice and of a view of the national state of the profession.
The French Quality Charter could be used by FICPI International to build a platform to exchange ideas and share experiences between the national sections of FICPI. It can also be taken into account in relation to the next strategic plan. It will be introduced and discussed again at the next FICPI Forum, with a focus on the self-assessment questionnaire. The Charter also raised interest in national sections to secure members and find new members. Read more...