2017 AIPPI World Congress – Sydney
October 13 - 17

0
Days
0
Hours
0
Minutes
0
Seconds
Loading Events

Celebrating its 120th Anniversary, AIPPI went “down under” to hold its annual AIPPI World Congress in one of the world’s most beautiful and vibrant cities – Sydney, Australia.

The members of the Bureau of AIPPI and of the Australian Group of AIPPI were excited to welcome all attendees to a city and country renowned for visually stunning attractions, such as the iconic Sydney Opera House and Harbour Bridge. This was a unique setting to take part in AIPPI’s comprehensive Educational Programme, featuring all areas of IP law and all disciplines of practice from prosecution to litigation, while at the same time taking advantage of extensive networking opportunities with attendees from around the world, including prominent government, IP office and industry officials.

The Congress took place at the International Convention Centre Sydney (ICC), which opened in late 2016. It provided state of the art facilities and comforts. The ICC is located in Darling Harbour, in the heart of Sydney, allowing for many of the events and receptions to take place on or around the spectacular natural harbour.

AIPPI has been “Shaping IP for 120 Years”. This was the year to take part in that activity and to do it in what promised to be an unforgettable AIPPI World Congress.

 



Print List of Participants

Exhibitors

Select a company logo for company description to appear.

ABPI, the Brazilian Intellectual Property Association, is a nonprofit organization dedicated to the study and development of intellectual property, notably the right of industrial property, copyright, competition law, technology transfer and other related areas. ABPI is the Brazilian Group of AIPPI and, among other activities, promotes and organizes conferences, congresses and seminars, edits publications on the subject of intellectual property, and permanently maintains 14 Study Commissions and other Working Groups aimed at improving legislation, doctrine and jurisprudence of this branch of law.

Booth No. 23

WEBSITE

Acumass is a leading Intellectual Property service provider, operating on a global level with offices based across Europe, Asia and the US. We take pride in providing comprehensive, secure and cost effective renewal services.

Booth No. 29

WEBSITE

ARIPO is a regional office which issue IP rights on behalf of its member states. Membership stands at 19 states. ARIPO accords simplified procedures for the processing of applications, making it cost effective and attractive.

Booth No. 27

WEBSITE

2018 AIPPI World Congress - Cancun

Booth No. 0

WEBSITE

Booth No. 0

WEBSITE

Ambercite provides patent discovery tools, based on deep Citation Analysis and AI algorithms. Ambercite, scores and prioritises patent families, providing a unique view often unseen using keyword and semantics. No Search is Complete Without it.

Booth No. 10

WEBSITE

Asia Business Law Journal is a new bi-monthly magazine for in-house counsel with the responsibility for all or part of Asia. It clarifies the regulatory environments in all key Asian jurisdictions and arms its readers with the tools to seize opportunity, manage risk, implement effective legal solutions and identify the most capable external advisers. Asia Business Law Journal is published by Vantage Asia.(Media Partner)

Booth No. 7

WEBSITE

Asia IP is the market leading resource for companies looking to protect their intellectual assets. With in-depth analysis and commentary, it gives in-house counsel and lawyers the knowledge to devise an effective IP protection strategy. (Media Partner)

Booth No. 13

WEBSITE

China Business Law Journal (CBLJ) is a fully bilingual monthly magazine for China-focused in-house counsel and law firms. It provides in-depth analysis of the legal and regulatory challenges facing domestic and international businesses in China and indispensable intelligence on the country’s legal market. China Business Law Journal is published by Vantage Asia. (Media Partner)

Booth No. 7

WEBSITE

Darts-ip is the only global IP case law database. IP professionals use Darts-ip to make more confident decisions and get the upper hand at all stages of their work.

Booth No. 19

WEBSITE

Dennemeyer Group is the world’s most comprehensive full-service provider for the protection and management of Intellectual Property rights: from legal services (Dennemeyer & Associates), software and management services (Dennemeyer IP Solutions) to IP consulting (Dennemeyer Consulting).

Booth No. 15

WEBSITE

With the Unitary Patent and the Unified Patent Court poised in the starting blocks, the EPO will present essential information on the new system at this years AIPPI World Congress. The Unitary Patent and the Unified Patent Court are the new building blocks which will complete and strengthen the existing centralised European patent granting system. Users will have (at their disposal) an attractive, cost-effective option for patent protection and dispute settlement across Europe.

Booth No. 25

WEBSITE

IAM is the only intelligence service to provide global coverage of the IP value creation environment. Its unrivalled coverage and in-depth analysis of key sectors gives executives critical business intelligence to maximise their IP value. (Media Partner)

Booth No. 22

WEBSITE

India Business Law Journal (IBLJ) is a market-leading monthly magazine that provides in-depth analysis of the legal and regulatory challenges facing domestic and international businesses in India and unrivalled intelligence on the country’s law firms and legal market. Its readers are in-house counsel and private practice lawyers around the world. India Business Law Journal is published by Vantage Asia.

Booth No. 7

WEBSITE

IPM will help you meet the demands of your clients and business through reliable, independent and exclusive articles and expert analysis from experienced practitioners. We offer coverage and analysis on all areas of IP law. (Media Partner)

Booth No. 0

WEBSITE

IPPro Patents is the primary source of global patent news and analysis, featuring commentary on trends in patent prosecution, enforcement, and more. (Media Partner)

Booth No. 9

WEBSITE

IPPro The Internet is the primary source of global internet intellectual property news and analysis, featuring commentary on trends in online copyright and trademark protection, domain names, and more.

Booth No. 9

WEBSITE

Managing Intellectual Property magazine gives you all of the latest news, insight and commentary on the top stories affecting the world of IP law. Visit www.managingip.com to take a free trial today. (Media Partner)

Booth No. 32

WEBSITE

MARCASUR is the leading Intellectual Property media specialized in Latin America. This year celebrating 20 years of continuous growth, MARCASUR products stand out for its exclusive content and attractive design. With contents in Spanish, English and Mandarin, among MARCASUR products you can find Marcasur Magazine (printed), Marcasur Digital Magazine, Marcasur International, Marcasur free iPad application, Marcasur.com, Marcasur Week, and Marcasur Clips. (Media Partner)

Booth No. 0

WEBSITE

Park IP Translations provides translation, litigation and filing solutions for patent and legal professionals. We protect our clients’ most valued assets and global brands in more than 175 languages and filing-ready documentation into more than 60 countries.

Booth No. 21

WEBSITE

Patent Seekers Ltd is based near the UK IPO and is the largest independent research team in Europe. In the 12 years it has been operating it has become one of the leading specialist International Patent and Design Research companies and trusted by Patent Attorneys around the World, both in private practice and in house at companies such as: Unilever, Smith & Nephew, Rolls Royce, Airbus, GKN, BAE, Nissan, Jaguar Land Rover, ARM Holdings

Booth No. 0

WEBSITE

Practice Insight’s software products change the business of IP: Filing Analytics – identify new business opportunities from the latest reciprocity intelligence Citation Eagle – discover and monitor customized opportunities from global patent citations WiseTime – increase billable hours

Booth No. 16

WEBSITE

S.S. Rana & Co. is an ISO 27001:2013 certified law firm in India, representing many Fortune 500 Companies in the area of Trademarks. Patents, Copyright, Designs, Domain Names, IP Licensing, Enforcement, Litigation and Corporate Laws.

Booth No. 30

WEBSITE

Spruson & Ferguson is a leading provider of intellectual property services across the Asia-Pacific region, with 350 staff working from our offices in Bangkok, Beijing, Hong Kong, Jakarta, Kuala Lumpur, Melbourne, Shanghai, Singapore and Sydney.

Booth No. 17

WEBSITE

The State Intellectual Property Office of the People’s Republic of China (SIPO) is the government institution in charge of organizing and coordinating IPR protection nationwide, and the authority for receiving and examining patent applications.

Booth No. 28

WEBSITE

The Patent Lawyer and its sister publications, The Trademark Lawyer and The Copyright Lawyer provided unrivaled specific IP information to the world’s largest IP owners and law firms. (Media Partner)

Booth No. 8

WEBSITE

Wanhuida Peksung is a leading IP service powerhouse offering a full range of IP services, from procuring all forms of IPRs to dispute resolution, protecting and defending client’s interests and help advancing China’s legal fronts.

Booth No. 31

WEBSITE

Wolters Kluwer Legal & Regulatory U.S. (lr.us.wolterskluwer.com) delivers expert content and solutions in the areas of law, corporate compliance, health compliance, reimbursement, and legal education. (Media Partner)

Booth No. 11

WEBSITE

WIPO is the UN agency dedicated to intellectual property. Learn more about the international filing systems for patents, trademarks and industrial designs. Let us help you get the most out of your innovations and creations.

Booth No. 0

WEBSITE

World IP Review and its sister publications Life Sciences IP Review, the WIPR Annual and WIPR Leaders provide news and guidance on the challenges facing businesses and legal practitioners active in intellectual property. (Media Partner)

Booth No. 12

WEBSITE

Sponsors

Select a company logo for company description to appear.

One of the foremost European partners in the market of industrial property. A tailor-made approach to transform ideas into key drivers of corporate's asset, besides helping clients achieve a competitive edge in the global market.

WEBSITE

Founded in 1957. Today employing 600 professionals, CCPIT is a global network. CCPIT focuses on full-service intellectual property and prosecution and enforcement.

WEBSITE

Founded in 2002, Chofn is a Chinese IP firm with a staff of 1500 in 19 offices in China, including 400+ patent attorneys & engineers, 300+ trademark attorneys, and 40+ lawyers.

WEBSITE

FB Rice is a private partnership firm of patent and trade mark attorneys with a strong local presence in Australia. We believe innovation is fundamental to economic prosperity and global growth.

WEBSITE

G&B has represented clients worldwide in all aspects of intellectual property law for almost 40 years, in the areas of monetization/licensing and due diligence/acquisitions, patent and trademark prosecution, USPTO post-grant procedures, and litigation.

WEBSITE

Luiz Leonardos (LLIP), with almost 100 years devoted to IP, counts with the expertise of over 80 professionals, a highly developed IP system administration and a long tradition of personal services caring for clients' professional needs.

WEBSITE

MATERIALS

Pharma Day Sessions

Pharma 1: Sufficiently plausible?

Monday, October 16 , 2017 - 09:00-10:30

The time between the invention of an active ingredient (or the second medical use thereof) and the approval of the final drug is significant, often a decade or more. To safeguard rights, patent applications must generally be filed when enough is known to justify further resources, for example, to conduct animal and human studies.   Various questions arise in this respect. How can the invention be expressed in a manner sufficient to one of ordinary skill in the art? What experimental or other data are required? Is the invention at issue (e.g. compound or second medical use claim) relevant? How are questions about utility/industrial applicability and obviousness/inventive step resolved? Can post filing data be used to overcome these issues?   Variations of these issues arise in many jurisdictions, creating challenges for applicants – in China, over the use of post filing data in overcoming inventive step and sufficiency rejections; in Canada, over the “patent promise” doctrine; and in Europe increasingly over the question of the “plausibility” of the invention as described in the patent specification.   Speakers from Asia, Europe and North America will address these issues in the hope of formulating a global standard.
Download Presentation

Panellists:

Pharma Day Sessions

Pharma 2: Injunctions: innovator vs. innovator

Monday, October 16 , 2017 - 11:00-12:30

The business model of the biopharmaceutical industry depends on the ability to sell innovative products exclusively for period of time in order to recoup the substantial research investment. Generally, regulatory approval for a generic version is based on the innovator’s safety and efficacy data. Thus, the cost of bringing a generic product to market is considerably lower.   The advent of complex bioproducts has changed this equation. The US case Amgen v Sanofi involves two innovator companies in a patent infringement dispute over a new class of cholesterol lowering agents. The court at first instance enjoined Sanofi from selling its competing anti-cholesterol agent after Amgen’s patents were found valid and infringed. Both innovator products are the result of billions of dollars of research.   This finding shocked the biopharmaceutical industry. Medical professionals filed amicus briefs in Sanofi's appeal, indicating that trials of the Sanofi drug are on the verge of finding the superior product. The Court of Appeals stayed the pending appeal, noting several factors, including Sanofi’s likelihood of succeeding on the merits, and the possibility of irreparable harm.  

This panel will debate the relief that is appropriate in cases when innovators compete in the same field and infringement is found.


Download Presentation

Panellists:

Pharma Day Sessions

Pharma 3: Medical devices and patents – a shot in the arm for pharma?

Monday, October 16 , 2017 - 14:00-15:30

Medical devices play an increasing role in the provision of healthcare.  Recent developments in technology, in particular in the areas of advanced materials, miniaturization, robotics and computing have enabled faster and more effective treatment for a range of conditions.  Alongside this, healthcare companies have been looking to enhance their IP protection for medical devices, including where there is overlap with pharmaceutical products.  The regulatory environment surrounding pharmaceutical products can be tied to particular treatment plans which can be controlled with dedicated types of medical device, for example, drug delivery apparatus such as injection devices, stents and inhalers.   In Europe, the regulatory regime around medical devices is changing in 2017 with the adoption of new EU Medical Device Regulations and a new EU In Vitro Diagnostic Medical Device Regulations.  Alongside this, the ability to extend patent term and obtain supplementary patent protection for regulated medicinal products in certain circumstances is leading to a proliferation of extension mechanisms for pharmaceuticals and related products.   This session will examine the developments in medical device technology and look at the role of the current and future IP and regulatory regimes in relation to their protection, and for related healthcare products.
Download Presentation

Panellists:

Pharma Day Sessions

Pharma 4: Digital health – your health on (the) line

Monday, October 16 , 2017 - 16:00-17:30

The growth in recent years in computerized healthcare has been remarkable. Significant developments in diagnostics, robotics and sensor technology have led to improved patient care involving many types of new product, including wearable and implantable devices, connected devices, remote monitoring and surgery, and many others.   With the development of so-called ‘connected health’, diagnosis can take place remotely along with the formulation of improved treatment plans utilizing data from large populations.   The numerous IP and related issues include data privacy and patent protection for diagnostic methods and computer software (cf the US Supreme Court in Mayo Collaborative Services v. Prometheus Laboratories, Inc.). Another issue is the convergence of different sectors and their approaches to IP protection, in particular reconciling an exclusivity-based approach traditionally adopted in the healthcare sector with the licensing-based approach employed in hi-tech industries.   This session will focus on the both the technology and the related IP issues and provide examples of where IP has been successfully utilized in this new and exciting field.  One aspect which will be considered is how IP has enabled startups and SMEs to gain a foothold in the healthcare sector, which has previously been dominated by larger, more-established companies.
Download Presentation

Panellists:

Panel Sessions

PS I: The best kept (trade) secret: a real life scenario

Sunday, October 15 , 2017 - 09:00-12:30

2016 was a blockbuster year for trade secrets legislation. The US signed into law the Defend Trade Secrets Act and the EU passed the Trade Secrets Directive. Law makers are increasingly recognizing the value of trade secrets to their economies and the need to provide legislative frameworks to protect these valuable assets. However, despite these positive steps, trade secret theft knows no jurisdictional boundaries. Trade secrets and those who misappropriate them frequently cross international borders. In the absence of international harmonization or coordination, companies and their lawyers have to navigate a patchwork of substantive and procedural civil and criminal laws, all against a ticking clock. This exciting, practical and interactive session will include a panel of global experts who will advise a New York-based company which has just been the victim of trade secret theft by its Head of R&D. The panel, with audience participation, will advise the company of the procedural and substantive tools available to it to try to recover its trade secrets, as the employee traverses the globe. By the end of the session, the employee will have passed through a number of key jurisdictions before ending up in Sydney.
Download Panel Presentation

Panellists:

By video:

Panel Sessions

PS IV: The business of IP – IP and competition

Sunday, October 15 , 2017 - 11:00-12:30

Australia's Productivity Commission issued a report on its inquiry into Australia's Intellectual Property Arrangements in September 2016. The report arises from a recommendation in an earlier competition law review which suggested that Australia's IP regime needed to be viewed through 'a competition prism'. The final report recommends sweeping changes to all aspects of Australia's IP system. The intersection between IP and competition law has been a key area of focus in many jurisdictions in recent years. It seems to be acknowledged that IP laws offer opportunities to create new and valuable knowledge by incentivising innovative endeavour and investment. However, competition regulators remain concerned that IP rights are inherently monopoly rights, and that rights holders may engage in anti‑competitive behavior. As a counterpoint, another recent focus has been the contribution of IP to economic performance, particularly in light of the EPO/EUIPO report 'Intellectual Property Rights Intensive Industries and Economic Performance in the European Union' (October 2016). However, this perspective too may differ depending upon whether a particular jurisdiction is regarded as a 'importer' or 'exporter' of IP. This first session in 'The business of IP' series will explore these issues and the effect they have on international harmonization efforts.
Download Panel Presentation

Panellists:

Panel Sessions

PS II: On a different note – copyright and music

Sunday, October 15 , 2017 - 14:00-15:30

Although music is traditionally the subject matter of copyright, the business opportunities (and legal challenges) relating to music have been increasing over the last few decades with the development of new media and technologies.   The various mechanisms for licensing music aim to strike a balance between the interests of music authors, performers, recording studios, and broadcasters. That balance has served well in some instances, and less well in others. The introduction of digital music has further complicated this balance, triggering dramatic changes to the industry business model in both positive (easy access to markets) and negative (rampant illegal copying) ways. Arguably, music is the most protected, licensed and breached of all forms of copyrighted works.   New media offers to authors unprecedented opportunities for self-producing and self-promoting their works, and the chance to experiment with innovative forms of expression. For recorded music today based on previously created works that have been re-sampled, remixed or re-mastered, it may be difficult to tell whether they qualify as derivative or original works.   This panel session will offer an overview of the current hot topics in music copyright, including recent case law and legislative developments.
Download Panel Presentation

Panellists:

Panel Sessions

PS V: The business of IP - venturing with IP

Sunday, October 15 , 2017 - 14:00-15:30

Many companies depend on their intellectual property assets to drive value creation, achieve market differentiation and generate M&A activity. The role of IP as collateral has a long history – Thomas Edison used his patent on the incandescent electric light bulb to secure financing to start his company, The General Electric Company. Increasingly, large corporations, small and medium enterprises (SMEs) and start-ups are leveraging their IP assets to seek access to capital.   Start-ups and SMEs may need to commence or enhance operations, or increase their R&D spend. The financing requirements of established companies may be driven by the need to expand or make acquisitions. With the increasing the contribution of IP assets to overall company value, IP financing has become more mainstream. However, with crowd funding now presenting an alternative source of capital, companies and venture capitalists alike need to understand and evaluate all options.   This second session in 'The business of IP' series will explore the use of IP as collateral for financing, which can include IP-backed loans, royalty securitization and IP sale and license-back arrangements. The advantages and disadvantages will be canvased both from the perspective of companies of different sizes, as well as the institutions and vehicles that invest in them.
Download Panel Presentation

Panellists:

Panel Sessions

PS III: Don't take it for granted - developments in post-grant proceedings

Sunday, October 15 , 2017 - 16:00-17:30

Patentees cannot take for granted the life and scope of a granted patent. After grant, patent validity may be challenged or its scope amended through various proceedings including opposition, post-grant review, revocation actions and limitations.  This creates ongoing uncertainty for patentees.   Most patent systems allow for at least some types of post grant proceedings. In Europe, there is the possibility of opposition proceedings before the EPO, patent revocation proceedings before national courts and limitation proceedings both before the EPO and national offices. Some European countries allow cumulative opposition and revocation proceedings, while others don’t; some also allow national limitation actions while EPO oppositions are ongoing.   China allows multiple revocation actions involving the same parties and patents. The jurisdiction of the US Patent Trial and Appeal Board includes inter partes and post-grant reviews. Ex parte reexamination remains available at the USPTO. Other countries, like Japan, offer fewer opportunities, although Japan (along with the US) have recently revised their respective post-grant processes. France has recently developed case law limiting the availability of revocation actions by applying a limitation period and qualified standing.   This panel session will explore global strategies using various national and/or regional tools, from the perspective of both the patentee and the opponent.
Download Panel Presentation

Panellists:

Panel Sessions

PS VI: The business of IP – Big Data, big issues

Sunday, October 15 , 2017 - 16:00-17:30

Developments in information technology have enabled businesses to produce, collect, store, analyse, use and share vast collections of data which are estimated to be worth trillions of dollars. Essentially large databases, the manner in which data is collected (including through collaboration and user-generated content), and the ways in which it can be used to create value, sets Big Data apart from traditional databases. The increasing prevalence and value of Big Data raises questions in many areas of law, from data protection and consumer law to competition, telecommunications and fundamental-rights law. This panel will focus on the challenge of Big Data to IP law. Central to IP protection is the concept of ownership of property (albeit, intangible). Big Data is generally dynamic, massive, unstructured and real-time. The emphasis is on access and use. Traditional IP laws provide limited protection to those who invest in Big Data, and little predictability for those who use it. Rights such as trade secret protection and sui generis database protection struggle to fill the gap. This third session in 'The business of IP' series will explore the relevance and application of current IP laws to Big Data, whether they meet industry needs, and whether there are any alternative models.
Download Panel Presentation

Panellists:

By video:

Panel Sessions

PS VII: On the ball – IP and sport

Monday, October 16 , 2017 - 09:00-10:30

The world of sport is a globalized, IP-intensive place. One of the key drivers to the commercial success of any sports enterprise or endeavour is the associated IP which can cover the full spectrum of available rights.   In the drive to go faster, longer and higher, patented technology plays a significant role in athletes achieving results that push the bounds of human possibilities. Examples include high tech swim wear fabric and advanced materials used in bicycles and sports shoes.   The branding of a sporting event, team, product or athlete is a primary revenue generator. However, with IP rights, and the related benefits of sponsorship and merchandising, come the pitfalls of ambush marketing and counterfeits.   One of the most significant revenue streams for major sports events or leagues are broadcast rights. For example, television rights to the American NFL broadcasts are reported to be in the billions of dollars annually.   Overall, the role of IP in any successful sporting endeavour is critical. This panel session will explore the key issues and challenges for IP protection in sport.
Download Panel Presentation

Panellists:

Panel Sessions

PS VIII: Partial Designs – full protection?

Monday, October 16 , 2017 - 11:00-12:30

An “industrial design” or “design patent” typically protects the outward appearance or ornamentation of an object or article of manufacture.  At the AIPPI Milan 2017 Congress, one of the adopted resolutions concerned the definition and the requirements for protection of such designs, with a focus on the role of functionality.   Building on the Milan discussion, this panel session will focus on whether a part or portion of a product can be the subject of independent design protection and if so the requirements for and scope of any such design protection.  As part of this discussion, the panel session will consider whether such a partial design must be visible to the human eye when used, and whether exemptions from protection such as “must fit” (where the design for the portion of the object is dictated by the need to fit with other parts or products, which may or may not be in the context of "reparation") apply.   This panel session lays the groundwork for a study leading up to the 2018 AIPPI World Congress, where it is hoped that AIPPI will pass a related resolution to assist AIPPI in ongoing efforts to contribute to further global harmonization of design protection.
Download Panel Presentation

Panellists:

Panel Sessions

PS IX: Funny, bad taste or out of order? Morality and public order in trademarks

Monday, October 16 , 2017 - 14:00-15:30

According to article 6quinquies(B)(iii) of the Paris Convention, trademarks may be denied registration or invalidated if they are contrary to morality or public order and, in particular, of such a nature as to deceive the public. National trademark laws contain similar provisions.   In Switzerland, an applicant wanted to protect "Madonna" as trademark for a variety of goods. While the application was accepted in other jurisdictions, Switzerland's highest court held that such a trademark would violate the religious feelings at least of the catholic part of the Swiss population and must therefore be denied protection. In the US, four musicians of Asian origin are trying to protect their band name "The Slants" as a trademark. The USPTO refused the application under the disparagement clause of US trademark law on the ground that this phrase is a generally disparaging slang term for Asians. The US Supreme Court reversed this refusal in a June 19, 2017, decision finding the disparagement clause to be a violation of the free speech clause of the First Amendment to the US Constitution.   This panel session will canvass decisions refusing or invalidating trademarks on these grounds across jurisdictions, illustrating differing cultural or religious values and exploring when trademarks should be refused or invalidated on such grounds.
Downlaod Panel Presentation

Panellists:

Panel Sessions

PS X: The middleman - intermediary liability

Monday, October 16 , 2017 - 16:00-17:30

Advanced technologies and increased access to the Internet and communication networks around the world bring many opportunities both to exploit and infringe intellectual property rights online. According to Google data, the number of requests to remove links to copyrighted materials for the Google web search engine alone has jumped from a few hundred thousand web addresses each week in 2011 to more than 21 million a week in 2016.   Courts in many countries have now granted injunctive relief in the form of site-blocking injunctions requiring Internet Service Providers (ISPs) - “the middleman” - to block local access to sites which have infringing content. The EU and a number of countries have adopted various laws in an effort to combat digital infringement.  Scenarios where a "middleman" may be enjoined and/or liable are numerous and varied, and subject to a web of different laws and regulations in many different jurisdictions.   This panel session will discuss intermediary liability in the digital world in key jurisdictions, including the availability of site blocking injunctions and address the practical effects and inherent limitations of such injunctions in the digital era.
Download Panel Presentation

Panellists:

Panel Sessions

PS XI: How much for your FRAND?

Tuesday, October 17 , 2017 - 09:00-10:30

In recent years there have been a number of high profile cases in a number of jurisdictions concerning FRAND-committed standard essential patents (SEPs).   One of the main topics considered in these cases has been the availability of injunctive relief, but a crucial issue which has not yet been addressed in many jurisdictions is a determination of an appropriate FRAND royalty.  This is paradoxical since a disagreement about royalties is often the cause and origin of the dispute.   Reasonable royalties have been determined in some US cases (e.g. Microsoft v Motorola). In Europe, the first significant determination of FRAND was carried out in Unwired Planet v Huawei and others, a judgment of the UK Patents Court handed down in April 2017. Following previous findings of infringement and validity, the UK Patents Court addressed the issue of the determination of a FRAND royalty rate, and the nature of the FRAND commitment, in a comprehensive 166-page judgment.   This session will consider the UK case, as well as cases from other jurisdictions, and provide an overview of royalty rate determination issues for SEPs, related issues for standard setting organizations (SSOs), approaches adopted by other entities, such as patent pools and non-practicing entities (NPEs), and also touch on the use of arbitration to resolve royalty rate disputes.
Download Panel Presentation

Panellists:

Panel Sessions

PS XII: What`s the (technical) problem?

Tuesday, October 17 , 2017 - 11:00-12:30

Consideration is often given to the technical problem by patent offices and courts when assessing patentability, specifically, the existence of an inventive step. The relevance attributed to the technical problem is an issue in itself. The EPO problem-solution approach renders the identification of the technical problem central to any reasoning. Other systems have a different approach. It is also relevant to some patent offices whether the technical problem is identified in the specification (expressly or implicitly from any statement of advantages or objectives). Failure to comply with any formal requirement in this regard may have consequences for validity. Reformulation of the technical problem is another issue – offices and courts may take different approaches as to whether this is permissible and, if so, when and how it is done. Reformulation may be acceptable when new prior art is identified. What is the position when the technical problem is not identified as solved, or a technical effect is not sufficiently demonstrated? Can the applicant request any reformulation? And what is the remaining relevance of the initial formulation? The speakers will compare the requirements relating to the technical problem in patent applications and patents across jurisdictions, and seek to identify a preferred approach.
Download Q&A Document
Download Panel Presentation

Panellists:

Briefings

Briefing: Standing Committee on Development and IP – Relevance of IP in developing countries

Sunday, October 15 , 2017 - 09:00-10:30

Long-term economic prosperity in developing countries necessarily involves the transition from a manufacturing to a technology and knowledge-based economy. Developing countries depend on the ability both to import and to develop technologically advanced solutions in many fields, including robotics, healthcare, ICT and sustainability solutions.  Economic development increasingly depends on the ability to design, produce and export goods of cultural and creative value, incorporating advanced and specially adapted technologies, differentiated by designs and brands, or goods in electronic format.   Developing countries are increasingly both recipients and originators of ideas, designs and marks. Contrary to a view that protection of intellectual property generally hinders economic development, IP protection as part of a smart IP strategy plays a key role for developing countries in reaching higher growth levels.   The Standing Committee on Development and Intellectual Property (SCDIP) monitors and reports on this important area on behalf of AIPPI.  The purpose of this session is to provide an introduction and briefing on this topic, with a focus on the perspective of developing countries. It will be moderated by Reinhard Oertli, chair of the SCDIP, will feature experienced practitioners from developing countries as keynote speakers, and will allow delegates to present their views and concerns.
Download Presentation

Panellists:

Briefings

Lunch 1 - Briefing: Development of the IP system in China

Sunday, October 15 , 2017 - 12:30-14:00

Since joining the World Trade Organization in 2001, China has continued to strengthen its legal framework and amend its IP laws and regulations to comply with TRIPS. Today, China has the second largest economy in the world, one of the top five patent offices in the world and hosts the world's largest trademark office. It is therefore not surprising that the 2016 Global Patent & IP Trends indicator cited the continued increase in the importance of IP in China as a key trend.   While China has embraced IP to drive an innovation‑based economy, the development of its IP system has drawn increasing attention from the world. In December 2016, China released the 13th Five-year Plan on National IP Protection and Utilization. Amongst other things, the plan calls for an improved IP legal system, enhanced IP protection, better IP quality, comprehensive IP utilisation and strengthened international cooperation.   This Lunch Session will provide a briefing on recent Chinese IP system developments, and a practical guide to navigating the systems of IP protection in China including via criminal, civil and administrative measures. Download Presentation

Panellists:

Briefings

Lunch 2 - Briefing: Recent developments at the EPO

Monday, October 16 , 2017 - 12:30-14:00

AIPPI is very pleased to once again welcome EPO President Benoît Battistelli at its Congress to provide lunch session attendees with the latest updates on the EPO.   The EPO, with 38 member states and reaching a population of 650 million, is certainly a highly influential actor on the global patent stage. Recognized for its high-quality and business-friendly services, the EPO continues to achieve rising productivity. In 2017, the reform of the Boards of appeal is being implemented and the EPO is preparing for the possible arrival of the unitary patent. Celebrating ten years of IP5 co-operation, the EPO hosted the IP5 Heads meetings in Valetta, Malta in June 2017.
Download Presentation

Panellists:

Briefings

Lunch 3 - Briefing: Update on Brexit / the UPC

Tuesday, October 17 , 2017 - 12:30-14:00

Article 50 of the Lisbon Treaty was triggered in March 2017, giving the UK two years to negotiate its withdrawal from the EU. Given the extent of harmonization of IP law across Europe, the consequences of a UK departure are complex. UK legislation has been planned which will facilitate the transition of the UK out of the EU legal system by preserving and converting EU laws into domestic UK law as at the point of exit.   This session will provide a briefing on the likely implications for the protection and enforcement of IP in the UK generally, including the issues of free movement/exhaustion and the jurisdictional arrangements if the Brussels Regulation (or part of it) no longer applies to the UK.   While the UK's announced intention to ratify the UPC agreement suggests that the UPC system might go ahead, it is unclear if and how the UK can participate in the context of the current UPC framework: part international treaty, part EU Regulation, and subject to the oversight of the Court of Justice of the EU (CJEU), especially as - under the current framework of laws - no references from UK courts to the CJEU are possible once the UK has left the EU.   Germany's ratification of the UPC is also necessary for the UPC to come into force. The hope that the UPC may be operational by December 2017 now seems unlikely, with a challenge filed with the German Federal Constitutional Court concerning the compatibility of the UPC with EU law and the German Constitution.   This session will also provide a timely briefing on the progress of the UPC, including the effect of present hold on German ratification and the possibilities for the UK’s ongoing role in the UPC.

Panellists:

Study Questions

Bad faith trademarks

Saturday, October 14 , 2017 - 09:00-15:00

Bad faith most commonly arises in the context that a trademark is used in one or more jurisdictions, but is not registered in other jurisdictions, and someone other than the trademark owner applies for an identical or confusingly similar trademark in a jurisdiction where the trademark is not registered. This might be done to prevent the trademark owner from entering the market, with the intention of selling the trademark application to the trademark owner when the owner attempts to enter that market, or simply wishing to profit from the trademark owner's reputation. Such applications may be rejected as “bad faith” applications. The refiling of a very similar or identical trademark by a trademark owner, or the filing of a so-called "defensive trademark", can arguably also amount to bad faith. "Bad faith" may also arise in other situations, e.g. no intention to use the mark, an application contrary to contractual obligations. Because of the differences in the treatment of “bad faith” trademarks between jurisdictions and the variability of the criteria for a finding of bad faith, there is a lack of predictability regarding what constitutes bad faith. This means both trademark owners and applicants for registration may need to take different approaches in different jurisdictions. This Study Question investigated the types of conduct that constitute bad faith in trademark law and how bad faith may be proved, both from the perspective of a prior user and the perspective of a third party. Reporter:
Co-Chair: Bill MAYO (CA)
Secretary: Thomas WIDMER (CH)
 

Study Questions

Protection of graphical user interfaces

Saturday, October 14 , 2017 - 09:00-15:00

Graphical user interfaces ("GUIs") are important in relation to all types of computing devices, but particularly mobile devices. GUIs include graphical icons, screens, pages, layouts and interactive components, as well as methods of converting physical user interaction into a control signal for the device. The arrangement of these elements, and the interaction between them, can be important to the accessibility of the underlying services and data of the device. Various IP rights may protect different aspects of GUIs. The most suitable mode of protection for the technical contributions of GUIs may be patent protection. Design protection may be available for the aesthetic elements of the appearance of GUIs. GUIs may attract copyright protection as an original expression. Trademark protection is also relevant if a GUI has the function of identifying the source of products. There may also be limitations depending on the type of IP rights. Patent protection of GUIs inevitably involves the issue of whether a computer program constitutes patentable subject matter. Design protection may not be available for a GUI that temporarily appears on a screen of an electronic device. Can GUIs be characterised as protectable expressions rather than simply unprotectable ideas? Must a GUI have acquired a secondary meaning to be protected as a trademark? AIPPI has studied various protections afforded to GUIs, and aims to propose a degree of harmonization as to how GUIs should be protected by, and by which, IP rights. Reporter: Chair: Kozo YABE (JP)

Study Questions

Patentability of computer implemented inventions

Saturday, October 14 , 2017 - 09:00-15:00

Patents for computer implemented inventions have been a contentious topic since the dawn of the computing age. In 2014, in the case of Alice Corp v CLS Bank International, the US Supreme Court issued a keenly awaited judgment, reversing the trend of relative leniency towards the granting of patents for computer software and business methods. Core to the Alice doctrine is the requirement that a patentable (computer-related) invention must comprise "significantly more" than an abstract idea. European practice in this field has been reasonably clear and consistent since the early 2000s, albeit relatively strict in terms of what can be patented. Although differences exist between the EPO and national practices, and between individual European countries, the approach summarised in the EPO Enlarged Board of Appeal decision G 03/08 (Programs for computers) of 12 May 2010 is broadly followed. Core to current EPO doctrine is the requirement that a patentable (computer-related) invention must make a non-obvious contribution to the state of the art in the field of "technology", whereas contributions to non-technical fields (no matter how inventive) are not sufficient to fulfil the inventive step requirement (modified inventive step test). Practice in countries such as Japan and Australia has traditionally been less strict. Patents for business methods are often allowed, although debate about the patentability of software and business methods has recently taken a harder line in Australia. US patent practice has been significantly affected by the USPTO examination guidelines which were revised after Alice, with previously-patentable subject matter now routinely being rejected by examiners and on appeal. In the meantime, the number of patent applications relating to computer-implemented subject matter continues to grow. There will also likely be further developments in Europe based on the jurisprudence of the anticipated Unified Patent Court. This topic is of huge significance to some of the world’s largest industries. Article 27 of TRIPs stipulates that patents shall be available for any inventions, whether products or processes, in all fields of technology. However, differences in the rules and practice between individual countries and regions often mean that computer implemented subject matter is viewed differently across different jurisdictions, making it difficult to develop effective global patenting strategies. It is therefore highly desirable for AIPPI to seek to develop a Resolution on this topic. Reporter: Chair: Richard BROWN (AU)
Co-Chair: Kay KONISHI (JP)

Study Questions

Quantification of monetary relief

Saturday, October 14 , 2017 - 09:00-15:00

In litigation concerning infringement of IP rights, monetary relief in the form of damages is commonly requested by the IP rights holder. It is generally accepted that this relief should at a minimum be adequate to compensate for the loss suffered by the rights holder and deter further infringement. In practice, few cases proceed beyond a determination of liability and courts are asked to determine the quantum of damages relatively infrequently.  However, if a case does proceed to that stage, it may in practice be difficult to obtain economic evidence regarding infringement, and to estimate the appropriate quantum of damages to be awarded within the factual matrix of the dispute before the court.  For example, where permanent price erosion has occurred, or other irreparable harm has occurred, the relevant quantum of damages can be very difficult to determine.  Predictable and logical rules for quantification are desirable as this allows the parties to have a reasonably clear idea of the likely quantum of damage, which may in turn encourage early settlement.  Otherwise, the amount of any damages award may vary significantly from one country to another, irrespective of the size of the market. Reports have been received from a number of National and Regional Groups on the issue of quantification, and the objective is to synthesise a number of common rules on the quantification of monetary relief that could be applied in a uniform way, promoting legal certainty. Reporter: Chair: Peter SCHECHTER (US)

Other Plenary Sessions

Standing Committee on Patents: Study on inventor remuneration

Saturday, October 14 , 2017 - 15:30-17:00

This study concerns the issue of remuneration for employee inventors for inventions made in the course of their employment.  Specifically, this study will consider whether and to what degree employee inventors should be compensated in addition to their normal wages for such inventions. In some countries, employer rights to employee inventions are regulated by national laws, whereby an employer can acquire the right to an invention made by an employee in a number of ways. In other countries, there is no such regulation. Some countries have various requirements relating to the amount of remuneration an employee must receive for an invention made by the employee and filed in a patent application by the employer. Some countries have no such requirements. This creates a complex compliance obligation for international organizations. The issue becomes even more complex in the context of multinational inventions, i.e. where joint inventors of an invention reside in different countries. This is an increasingly common situation due to the prevalence of international corporations having geographically distributed R&D groups, multinational joint venture projects, international corporate/university collaborations, and other cross-border research projects. This study is not being presented for a resolution at the Sydney Congress.  However, it will be the subject of a plenary session to debate a possible form of draft position that may then be used to invite comments from GOs and other stakeholders.  After consideration of all input, the Standing Committee intends to propose a resolution on inventor remuneration for adoption at the Cancun Congress in 2018. Chair:

Other Plenary Sessions

Standing Committee on Geographical Indications: Proposed Resolution - Requirements for protection of geographical indications and appellations of origin

Sunday, October 15 , 2017 - 09:00-10:30

The rationale for the protection of appellations of origin (AOs) and geographical indications (GIs) is to protect signs identifying the geographical origin of goods whose characteristics or reputation are linked to such origin. There is considerable divergence worldwide with regard to the protection of GIs and AOs. Some countries have enacted specific legislation in relation to AOs / GIs supporting broad protection (particularly in relation to their local typical products). Other countries, who do not tend to favour strong protection of AOs / GIs, regulate them (if at all) within the framework of trademark legislation. The differences and disagreements which have emerged within the international framework focus on several key points surrounding the regulation of GIs and AOs. These include how relevant rights are acquired, the prerequisites for any protection, the scope of any protection, maintaining any protection in the face of supervening circumstances, and relationships with other IP rights. The Standing Committee on Geographical Indications has, through a questionnaire, collected information from AIPPI's National and Regional Groups on developments in their respective jurisdictions in relation to GIs and AOs. With this as basis, AIPPI can further develop its position on issues relating to GIs and AOs, leading to a resolution aimed at harmonisation of the laws relating to GIs and AOs. This will assist in the advocacy of AIPPI's position on such issues to national and regional governments and in international forums. Chair:

Other Plenary Sessions

The Subcommittee for Biotechnology and Plant Variety Rights of the Standing Committee on Pharma & Biotechnology: Proposed Resolution on Gene Patenting

Sunday, October 15 , 2017 - 11:00-12:30

Over the last few decades, isolated genes and genetic material have been regarded as constituting patentable subject matter in many jurisdictions. However, in recent years, various court decisions, most prominently the Myriad cases in the US and Australia, have called into question the patentability of such material. Additionally, the European Court of Justice in Decision C428/08 has ruled that member state law is precluded from offering “absolute protection” to patented DNA as such. The Biotechnology Sub committee has recently published a Position Paper which concludes that the advancement of research in and with genetic material should be fostered in view of its contribution to the discovery of urgently needed therapies and medicaments. To this end, the patentability of genetic material should be promoted and harmonized. By contrast, exclusion from patentability deters efforts in genetic research, preventing beneficial developments being made available for the benefit of the public. The Position Paper offers the view that genetic materials should not be regarded as patent ineligible subject matter by reason of TRIPs Article 27(2) and (3), and nor should inventions in relation to genetic material be considered contrary to ordre public or morality. The standard tests of novelty, inventive step and industrial applicability should apply. On the basis of this Position Paper, the Sub committee has proposed a resolution for adoption at the Congress in Sydney, which will be discussed in this Plenary Session. Chair: