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November 23. 2014 // President's Report // Cape Town Registration // Barcelona Workshops // India

President's Report Delivered to the Barcelona ExCo

At the commencement of the Barcelona ExCo, Bastiaan Koster, President of FICPI, delivered his report on the activities of FICPI since the last Executive Committee meeting, and on the activities with which the Bureau was dealing. Many of these relate to the state of the profession, and Bastiaan reviewed in detail the recently-released Project Orange report, an important effort of FICPI in demonstrating to the world the role and contribution of the IP attorney in the IP system world-wide. Bastiaan updated the ExCo on past and planned official visits, including the upcoming visits to Asian patent offices, and discussed the financial issues affecting a few national groups. To read Bastiaan's report, please click here.

Six Successful Workshops at Barcelona ExCo

During the FICPI ExCo in Barcelona, Spain, the Work and Study Commission (CET) and Professional Excellence Commission (PEC) organized a series of six interactive workshops covering topics ranging from unity of invention, to the handling of communications between IP firms.  The workshops proved to be lively and constructive with many new issues being explored and discovered.  Below is a summary of the outcome of each workshop, with links to more detailed workshop summary reports.

Workshop 1 – Unity of Invention (Monday session):

Workshop 1 (paper EXCO/ES14/WOR/001) stems from a presentation at the ExCo in Sorrento in 2013 regarding “Unity of Invention and Restriction Requirements in three Different Jurisdictions”.  As described in detail in the Briefing Paper for this Workshop, the Workshop had the goals of: (a) further exploring the similarities and differences between the practices in the different countries on this issue, and (b) determining whether consensus could be reached in considering further action.  Consensus for recommendations was reached on four issues.  However, no recommendations were able to be formed on the specific issue of the standards used for determining whether or not unity of invention exists.   The four issues for which consensus was reached were: i) Affording applicants the ability to file divisional patent applications at any time during the pendency of at least the original (parent) application, ii) Patent Offices should allow applicants an effective opportunity to argue the validity of a lack of unity rejection, iii) Patent Offices should consider services to allow applicants to get all claims searched, and iv) Continued Study and possibly a questionnaire should be considered.

The Report on Workshop 1 is available here.

Workshop 2 – Madrid Trademark System (Monday session):
Workshop 2 (paper EXCO/ES14/WOR/002) was based on a briefing paper summarizing responses received from an Intra-CET1 Survey.  IP professionals generally like the Madrid Protocol many are reluctant to see and changes at all. However, there are some specific procedural issues that should be taken into further consideration and inspection.  According to the discussions had in the workshop, there exists a need of users to request some improvements on some aspects of the system such as seeking clarification of deadlines in replying refusals, as well as dates of updating databases.

The Report on Workshop 2 is available here.

Workshop 5 – Computer Implemented Inventions in Europe (Tuesday Session):

Workshop 5 (paper EXCO/ES14/WOR/005) dealt with recent developments relating to patentability of computer implemented inventions (CII) in European countries (part I) as well as some non-European countries represented at the workshop (part II) were discussed. In the EPO member states the patent authorities and courts in general come to results consistent with EPO practice, albeit sometimes based on a different reasoning. Some non-European countries follow the EPO precedent (Brazil, New Zealand and India, the latter showing g a particularly strict practice), Australia relies more on the US approach, while Canada mixes elements of both ways. In the US itself the recent Supreme Court Decision “CLS Bank vs Alice” has considerably raised the patent eligibility threshold for software and in particular business method related inventions.

The Report on Workshop 5 will be available shortly.

Workshop 6 – Design Invalidity Assessment (Tuesday Session):

Workshop 6 (paper EXCO/ES14/WOR/006) looked at how design invalidity is judged in different jurisdictions, and in particular the EU and US.  The aim was to see how convergent or divergent the approaches are, perhaps with an eye to future substantive harmonisation.  The fruitful discussions showed that in many jurisdictions the approach is similar to that in the EU, but that in a few key aspects the US differs.  These were the ability in the US to use a second reference and the nature person carrying out the test for invalidity (the designer in the EU and elsewhere vs. the user in the US).

The Report on Workshop 6 is available here.

PEC Workshops

Workshop 3 – Communications Between IP Firms (Monday Session):

Workshop 3 (paper EXCO/ES14/WOR/003) dealt with an ongoing PEC project related to introducing basic guidelines for communications between IP firms. The idea is not to create mandatory rules, but orientations that will presumably lead to an increase in clarity and reduction in the risk of miscommunication. Only as examples, we can cite: (1) a person sending instructions should always request confirmation of receipt and monitor timely receipt thereof, and the person receiving the instruction should ensure that further handling of an instruction is reasonably under control before sending a confirmation of receipt; (2) the subject field should contain summarized information about the nature and content of the message, and other relevant information should follow in the body of the e-mail, avoiding generic messages like “Please refer to the enclosed letter”. The complete proposal will be submitted to discussion and approval in Cape Town. 

The Report on Workshop 3 is available here.

Workshop 4 – Why and When Do You Need a Retainer Letter (Tuesday Session):

Workshop 4 (paper EXCO/ES14/WOR/004) included discussions on the propriety and advantages of obtaining a signed retainer letter prior to commencing professional work.  In the workshop, participants discussed the propriety and advantages of obtaining a signed retainer letter prior to commencing professional work.  In particular it was considered whether retainer letters not only help set reasonable expectations, but also build trust that seeds a healthy and fruitful professional relationship with our clients.  The participants further considered the role that FICPI might play in providing guidance to its members regarding the structure and content of such retainer letters.  It was concluded that FICPI members should consider the advantages of using engagement letters as a way to foster relationships with clients and promote transparency about the scope of work.  It was further concluded that FICPI might endeavor to generate a checklist of possible terms and clauses to be considered when drafting engagement letters.

The Report on Workshop 4 will be available shortly.

Cape Town Registration Now Open!

The theme of the World Congress is “Adapt to Advance” where you may join leading IP professionals, Commissioners and Presidents of leading IP offices, as well as leaders of industry, including SMEs, and debate how IP and the IP profession should adapt in order to advance. Understand how the roles of the key players in IP should change in order to promote innovation and stimulate economic growth, and learn how to keep up with a changing IP environment. The discussions will set IP professionals thinking as to how they should adapt their practices so as not to be left behind.

An excellent technical programme has been devised.  The Director General of WIPO, Mr. Francis Gurry, and the EPO president, Mr. Benoît Battistelli, will update the Congress attendees on the status of harmonisation efforts by the IP5, the Global Dossier and e-PCT filings.  These are issues that will impact how we conduct our businesses in the future.

In addition, we will welcome the heads of the JPO, KIPO, SIPO and the USPTO to join Mr. Gurry and Mr. Battistelli to participate is a panel discussion where delegates attending the Congress will be able to submit questions and issues relevant to the IP profession and our clients to be discussed by the panel. 

Registration may be made via the FICPI website  or the Congress website

The World Congress is open to FICPI members.  For this year, as a special dispensation, we invite IP professionals from South Africa and Africa who are not members, to attend.

Round Tables in Mumbai and New Delhi,  India

FICPI India was established in the year 2009 and presently has 36 members. It is one of the most vibrant, energetic, and enthusiastic group of members who are very active in the IP profession in India as well as FICPI activities overseas. Members of FICPI India have been involved, wherever possible, in the law making process relating to Intellectual Property in India.
Since the Indian Patent and Trademark system is also based on unique practices that are prevalent in the Patent and Trademark Offices, FICPI India has been organizing Roundtables for the last two years. This year, the FICPI India group has gone ahead with such Roundtables not only in New Delhi but also in Mumbai. The roundtable feature speakers who are senior members of their respective firms  and IP community in India and they will deliver presentations on current topics which are of utmost importance not only to the fellow Attorneys in India but also to the Attorney firms and Applicants protecting their IP rights in India. These Roundtables are interactive in nature where the participants get an opportunity to clear doubts and other issues that they may have in mind.
Roundtables in the past have featured topics relating to: Section 3(d): Decision from Supreme Court in Novartis vs Union of India, Section 8 – Recent developments, Issues relating to entering into national phase in India with amended set of claims and/or specification and issues relating to fee for sequence listing besides other relevant topics on Trademarks.

These Roundtables are scheduled for November 27 and 28.
Speakers invited include Bastiaan Koster, President – FICPI; Douglas Deeth, President - Communications Commission of FICPI; Coleen Morrison, Vice President – FICPI; Sharad Vadehra, President - FICPI India, Archana Shanker, Member - FICPI India; Vikrant Rana, Executive Committee Member - FICPI India; Dr. Niti Dewan, Member - FICPI India; Sunita Sreedharan, Member - FICPI India and Rahul Vartak, Member - FICPI India. This is besides active participation from almost all Patent and Trademark Law firms represented by their Senior partners.

Who should attend and benefit: Attorneys/Agents/Companies following Indian IP practice and obtaining their rights in India.
Those who want to attend, can get in touch at the following address to register:
Sharad Vadehra
A-11, Shubham Enclave, Paschim Vihar,
New Delhi-110063
Phone:  +91-11 4377 6666 (100 Lines)
Fax        +91-11 4377 6677, 4377 66 76


FICPI World Congress
13-17 April 2015
Cape Town, South Africa
Sent by FICPI - Holbeinstrasse 36-38, 4003 Basel, Switzerland
Authorized by Doug Deeth, President of Communications Commission.