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No. 27
November 2012
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Contents
AIPPI Congress 2012 AIPPI 2012 Seoul
The AIPPI 2012 Congress will be recalled for its outstanding programme focussing on contemporary IP issues, which brought together leading judges, officials, IP practitioners and academics from around the world for four days of debate, discussion, networking and camaraderie in the very modern yet rich with history city of Seoul. It will be fondly remembered for the wonderful and gracious hospitality enjoyed by the almost 2000 participants who were introduced to Korean culture and history.
(Article by John Bochnovic, President of AIPPI)

Thank you letter
On behalf of the AIPPI 2012 Seoul 43rd World Intellectual Property Congress Organizing Committee, I would like to express my deep appreciation to you for your participation and contribution to the AIPPI 2012 Seoul Congress which was held in Seoul, Korea, from 20-23 October, 2012.
(Article by Seong-Ki Kim, Seoul Organising Committee of AIPPI)

New Bureau of AIPPI
On the last day of the 43rd World Congress of AIPPI in Seoul, the term of office of AIPPI's President, Mr. Yoon-Bae Kim from Korea, ended. The Bureau thanks Yoon-Bae Kim for his extraordinary commitment to representing our Association at all relevant IP events in the past two years.

The Executive Committee of AIPPI has elected John Bochnovic (Canada) as the new President and Felipe Claro (Chile) as the new Vice President of the Association. Bruce E. Morgan (Canada) was elected to fill the new position on the Bureau of the Congress Representative.

(Article by Stephan Freischem, Secretary General)

Resolutions adopted in Seoul
The delegates at the 2012 World Congress in Seoul last month adopted five Resolutions on various questions of intellectual property law. Each Resolution provides important guidance for further harmonization of the law. The first question, Q229, dealt with the use of prosecution history in post-grant proceedings. The second question, Q230, examined the infringement of trademarks by goods in transit. The third question, Q232, concerned the interplay between design and copyright protection for industrial products. The fourth question, Q233, looked into the relevance of traditional knowledge to intellectual property law. Besides the Resolutions emerging from the regular working questions, AIPPI also adopted a Resolution on the Unified Patent Court which had been put forward by Special Committee Q165. The full texts of the adopted Resolutions are available on our website. A summary of the Resolutions can be found here. The Resolutions will now be disseminated by the Bureau and the National Groups to the relevant authorities and bodies so that they can make use of them.
(Article by Thierry Calame, Reporter General of AIPPI)

The presentations of the Workshops and Special Panels
All presentations of the Seoul Congress are accessible on our website
(AIPPI General Secretariat)

AIPPI Congress News of Seoul 2012 and The Korea Herald
Click on the image below to expand
(AIPPI General Secretariat)

Articles published by Managing Intellectual Property


Articles published by The Korea Herald

AIPPI Forum & ExCo meeting 2013 Sponsorship opportunity at AIPPI Forum & ExCo meeting 2013 in Helsinki, Finland
After this year's World Congress in Seoul, Republic of Korea, the next AIPPI meeting will be AIPPI's Forum & Executive Committee Meeting in Helsinki, Finland, on September 5-11, 2013. We expect to welcome more than 600 participants from all over the world, having their area of practice in all fields of intellectual property. Take advantage of this unique opportunity to reach a wide audience and become a sponsor, an exhibitor or a media partner for this event.
(AIPPI General Secretariat)

AIPPI Helsinki Forum & ExCo 5 – 11 September 2013
The Finnish AIPPI Group thanks all the organizers and participants for the excellent Congress in Seoul in October! Next year it will be the Finnish Group's honour to host the AIPPI community. We are hoping to meet many of you on 5 –11 September 2013 in Helsinki, the design world capital. Save the dates and welcome to Helsinki!
(Article by Johanna Lilja, Roschier, Attorneys Ltd, Helsinki, Finland)
AIPPI Bureau The new policy concerning languages in AIPPI
Two years ago, the Bureau of AIPPI decided to create a Bureau Advisory Committee (Q211, Language Committee) to study the question of languages in AIPPI and to make recommendations if necessary. This Committee delivered its report in Hyderabad. The Bureau adopted all of the recommendations made by the Committee and asked the Executive Committee in Hyderabad to propose their implementation. In Seoul this year, the General Assembly amended the Statutes and the Executive Committee amended the Regulations. The new policy will now be implemented. Thanks to the thoughtful guidance of the Language Committee chair and the exceptional contributions of the Committee members, it was possible to find a widely accepted compromise for this intensely discussed and controversial topic.
(Article by Laurent Thibon, Deputy Secretary General of AIPPI)
Forthcoming Events 2013 Israeli Group of AIPPI
The Israeli National Group of the International Association for the Protection of Intellectual Property (AIPPI), in collaboration with the Faculty of Law at the Tel-Aviv University, is happy to announce the forthcoming international conference on Intellectual Property, to be held in Tel-Aviv, Israel, between March 19 and 21, 2013
(Israeli Group of AIPPI)
National Groups Japan-China-Korea Trilateral Meeting in Japan 2012
The 10th Trilateral Meeting among the Japanese, the Chinese, and the Korean Groups of AIPPI took place from 13 to 15 July 2012, in the city of Chitose, Hokkaido, Japan. This meeting was attended by members of the three Groups, as well as President Yoon Bae Kim and Vice-President John Bochnovic from the AIPPI Bureau and guests from the Japan Patent Office. The participants had a lively discussion on three topics after listening to reports from the three Groups. On the final day, some of the participants went on an excursion and others played golf to enjoy the early summer in Hokkaido.
(Article by Goro Umeda, Secretary General of AIPPI Japan)
Articles and notes Canada: Supreme Court finds Viagra Patent Void
The Supreme Court of Canada has ruled that Pfizer's patent 2,163,446 (446 Patent), which covers quintillions of compounds for the treatment of erectile dysfunction (ED), is void. The Court held that the 446 Patent did not meet the disclosure requirements under s. 27(3) of the Patent Act – the patent stated that one of nine “especially preferred” compounds was effective in treating ED in patients, but it did not specify which one. This decision is the most recent statement from the Supreme Court confirming that the patent system is a “bargain” – an inventor is granted exclusive rights in a new and useful invention for a limited term in exchange for public disclosure of the invention.
(Article by Craig Brusnyk and Bill Mayo, Heenan Blaikie LLP, Toronto, Canada)

European Union: Big Bucks Bunny - ECJ Decision on Protection of 3-D Community Trademarks
Renowned chocolate manufacturer Lindt & Sprüngli AG filed an application for the protection of their gold rabbit with a red ribbon as a 3-D Community trademark with the EU Community Trademarks Office (OHIM). OHIM rejected the application, stating that the 3D figure did not possess sufficient distinctiveness to become registered. Lindt & Sprüngli took the matter to the General Court, which came to the same conclusion. Lindt filed an appeal with the Court of Justice of the EU, which has recently come to a conclusion in case C-98/11 P.
(Article by Claus Marcussen, Awapatent A/S, Copenhagen, Denmark)

France: Referencing on the internet: Supreme Court rules on national application of ECJ caselaw
The French courts have issued several judgments since the ECJ decision in the Google France case relating to the use of a third parties' trade marks on Internet referencing services such as Google Adwords. Criteria are gradually emerging as to how the courts will assess whether or not such activity is acceptable, within the framework established by the ECJ. On September 25, 2012, the French Supreme Court added another brick to the construction of national case law by validating the solutions favoured by the majority of the lower French courts which have ruled on this issue.
(Article by Tougane Loumeau, French Group Reporter)

Israel: Neurim Pharmaceuticals is entitled to Patent Term Extension
An application by Neurim for Patent Term Extension (PTE), based on a marketing authorization (MA) for “Circadin” (a melatonin formulation for human use), was denied by the Israeli Commissioner of Patents, due to an earlier MA for “Regulin” (a melatonin formulation for veterinary use).

In an appeal on the Commissioner's decision, the District Court ruled in favour of Neurim and held that in light of the purpose of the Israeli Patents Law, the grant of PTE to a patent protecting a medicinal product for human use cannot be precluded where an earlier MA has been granted for a veterinary product, comprising the same active ingredient.

(Article by Tal Band, Adv., S. Horowitz & Co., Tel Aviv, Israel)

Netherlands: Healthcare policy meets patent law: preferential treatment of generics while the originator has patent protection
The Court of Appeals of The Hague has recently ruled that healthcare insurance companies, by inviting parties to bid in a tender to become the preferred supplier of a medicinal product which is still under patent (SPC) protection, do not infringe the originator's patent and do not commit an “unlawful act” (i.e. a tort). That is, provided certain strict conditions are observed.
(Article by John Allen and Paul van Dongen, NautaDutilh, Amsterdam, The Netherlands)

Republic of Korea: Supreme Court's en banc decisions holding that the civil courts may dismiss patent/trademark infringement actions if it is evident the patent/trademark is invalid
The Korean Supreme Court has made it clear in two recent en banc decisions that, even before the Trial Board's decision that invalidates a patent or trademark has become final and conclusive, the court hearing an infringement claim can review the validity of the patent or trademark, including lack of inventiveness for a patent; and, if the patent or trademark is found to be clearly invalid, the court can refuse to grant injunctive relief, damages, and the like, on the basis that it would constitute an abuse of right.
(Article by Aera Kim, Korean Group Reporter)

Thailand: Tobacco Plain Packaging and Beyond
Thailand already has some of the strictest tobacco regulations in the world. A current draft Thai Tobacco Consumption Control Act is set to introduce more restrictions facilitating the introduction of plain packaging. As this debate pushes ahead, there are some important legal and practical issues that need to be given full consideration.
(Article by Alan Adcock and James Evans, Tilleke & Gibbins, Bangkok, Thailand)

Thailand: Accession to Madrid Protocol
Thailand is currently considering accession to the Madrid Protocol concerning the International Registration of Trademarks. The competent authority has created a draft amendment of the current Trademark Act which has been given approval by the Cabinet and has recently been passed to the Council of State for review and to Parliament for its final approval. In the meantime, the authority has asked Parliament to approve Thailand for membership. No timeframe has been given when either will be finalized as it could easily take more than one year.

The main amendments are with respect to descriptions of goods/services, the multi-class application system, registration date and the timeframe for issuance of office notifications. However, there is no sign that the registrar’s current examination procedures will be changed to comply with the international standard.

(Article by Panisa Suwanmatajarn, Siam Premier International Law Office Limited, Bangkok, Thailand)

United Kingdom: AIPPI UK Group intervenes in Supreme Court, London, in important case relating to the extent of legal professional privilege.
In early November 2012, the case of Prudential v H.M. Revenue & Customs (HMRC) was heard by the UK Supreme Court. Judgment is expected in early 2013. A central issue is the extent of the common law right of legal professional privilege. This case touches on the issues under consideration within AIPPI as part of Question 199 and could have implications for IP practitioners both in the UK and abroad although it relates to whether or not HMRC could force Prudential to disclose certain documents relating to a tax avoidance scheme. There were five interveners: one of the accountancy organisations; the Law Society; the General Council of the Bar; the Legal Services Board; and, AIPPI UK (AIPPI was represented by Michael Edenborough QC (UK Council member).
(Article by Charters Macdonald-Brown, Redd Solicitors LLP, London, United Kingdom)

United States of America: Discovering What's in the eDiscovery Provisions of the USPTO's Umbrella Trial Rules
Minimal pleading with liberal evidentiary discovery is a touchstone of litigation in the US. The discovery of electronically stored information (ESI), since its first major incorporation into the Federal Rules of Civil Procedure in 1996, has become a focus for reducing litigation costs. The final USPTO rules set forth a uniquely limited approach to ESI discovery in patent trials before the new Patent Trial and Appeal Board. Knowing how the final rules treat eDiscovery is the first essential step to preventing sanctions or the potential loss of US patent rights due to a Post Grant Review or Inter Partes Review.
(Article by Kelly G. Hyndman, Sughrue Mion PLLC, Washington, United States of America)
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AIPPI General Secretariat |Toedistrasse 16 |P.O.BOX | CH-8027 Zurich | Tel. 44 280 58 80 | Fax 44 280 58 85 | [email protected] | www.aippi.org

This issue was prepared by Ching-Ying Chen, AIPPI General Secretariat
in co-operation with Stephan Freischem, Secretary General of AIPPI and the Communications Committee:
Chair:Charters Macdonald-Brown
Members:Johnny Fiandeiro
Kristian Fredrikson
Klaus Haft
Bernardo Herrerias
Jehyun Kim
Emmanuel Larere
Bianca Manuela Gutierrez
Bill Mayo
Petri Rinkinen
Robert Sacoff
Ana de Sampaio
Matthew Swinn

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While AIPPI makes every effort to be accurate in the information it transmits, such information is not to be considered as substitute for specific and qualified professional advice. AIPPI accepts no responsibility for opinions expressed in interviews or for the information provided through external web links.
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