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No. 29
March 2013
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(AIPPI General Secretariat)
Bureau The annual visit of the Bureau of AIPPI to the EPO
The annual visit of the Bureau of AIPPI to WIPO

The traditional annual visits from the Bureau of AIPPI to WIPO and the EPO were this year organized in the same week of February to take advantage of the presence in Europe of John Bochnovic, President of AIPPI. The meeting at the EPO was held on February 5 and the AIPPI delegation was welcomed by Marion Fröhlinger, Principal Director, Patent Law and Multilateral Affairs. The meeting was followed by an evening of informal discussions with the EPO directors, hosted by Benoit Battistelli, President of the EPO. The annual meeting at WIPO on February 8, 2013 was opened by Francis Gurry, Director General of WIPO, and lasted for the better part of the day. The AIPPI delegation was composed of John Bochnovic, President, Stephan Freischem, Secretary General, Thierry Calame, Reporter General, Laurent Thibon, Deputy Secretary General, and John Osha, Assistant to the Reporter General. Gunnar Baumgärtel, Treasurer General, joined for the EPO meeting and Sanna Wolk, Member of the Programme Committee, joined the delegation to WIPO in Geneva.
(Article by Laurent Thibon, Deputy Secretary General of AIPPI)

EPO Tegernsee Questionnaire
The Tegernsee Group, initiated in 2011 by representatives from the Patent Offices of Denmark, France, Germany, Japan, the United Kingdom and the United States and from the EPO restarted a dialogue concerning international patent law harmonization. Recently, that Group developed a Questionnaire covering four topics: grace period, 18-month publication, treatment of conflicting applications, prior user rights.

The Bureau deemed it necessary that AIPPI has a position based on responses to said Questionnaire; the author of this article and Ralph Nack, Secretary of Q228, were then asked to prepare such an AIPPI position. For that purpose, the Questionnaire was sent to the members of the Bureau (including Assistants), the Programme Committee and Special Committees Q109, Q162, and Q228. Their answers led to the present article.

(Article by Alain Gallochat, co-Chairman of Q228)
AIPPI Forum & ExCo meeting 2013 Save the date: Registration for Helsinki will open in one week
As you already know, the 2013 Forum and Executive Committee meeting of AIPPI will be held in Helsinki (Finland) from 5 to 13 September this year. After South America in 2009 (Buenos Aires) and Asia in 2011 (Hyderabad), this Meeting comes to Europe. Don't miss this opportunity to meet your colleagues, clients and friends. Please check your mailbox for the opening of registration, which will start soon.
(Laurent Thibon, Deputy Secretary General of AIPPI)

Announcing the Forum Workshops for AIPPI Forum & ExCo in Helsinki
The preparations for the educational programme of the AIPPI Forum & ExCo in Helsinki are well under way. The Forum will again offer 12 Workshops over two days (Friday and Saturday, 6 and 7 September 2013) covering a wide array of hot topics in intellectual property law such as design lessons from Apple v. Samsung, digital gaming and IP, online exhaustion in copyright law, IP licensing and insolvency, trade secrets, as well as brand strategy in light of new top level domain names. Given the recent historic agreement on the unitary patent and the creation of a unified patent litigation system in Europe, 2 out of the 12 Workshops will deal with the unitary patent and the unified patent court. Finally, building on the success of the Pharma Day at previous meetings, 4 out of the 12 Workshops will again be special pharma Workshops dedicated to topical issues in the pharmaceutical industry such as second medical use patents, data exclusivity, the use of TRIPS flexibilities, as well as current issues in trademark law in the pharmaceutical industry. Here is a description of all of the Workshops.
(Thierry Calame, Reporter General of AIPPI)

AIPPI booth at INTA Annual Meeting, Dallas Texas, U.S.A., 4-8 May 2013
AIPPI will be at the INTA annual meeting. Come and visit us at booth no.813 in the Exhibition hall to gather information and gadgets of Helsinki, Finland and Toronto, Canada (Host cities of the AIPPI events in 2013 and 2014).
(AIPPI General Secretariat)

Sponsorship opportunity at AIPPI Forum & ExCo meeting 2013 in Helsinki, Finland
After the 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)

Don't miss the Corporate industry meeting
Date: 7 September 2013
Time: 12:30–14:00

AIPPI wishes to strengthen its cooperation and deepen the dialogue on pressing IP issues with the corporate & industry sector. AIPPI appreciates that in–house counsel have subjects of interest that may be peculiar to this sector, as well as particular needs beyond the regular scientific activities of AIPPI. As in Hyderabad and Seoul, we will organize a meeting exclusively for participants from industry.

The purpose of this special meeting is to provide a forum in order to discuss ways and means by which AIPPI can more adequately address the needs of its existing industry members, as well as draw more members from industry. The meeting will provide the participants with the opportunity to exchange views on issues of common interest with their colleagues in corporations from various industries. The participants are also encouraged to raise their concerns and discuss any suggestions with the leadership of AIPPI, who will attend the meeting.

(AIPPI General Secretariat)

Don't miss the Women in IP event
Date: 7 September 2013
Time: 18:00–19:30

The Women in IP networking event is now a firm tradition at AIPPI's annual meeting. It provides a forum to meet with old and new colleagues and friends, and to exchange information about business opportunities and working life as professional women practising in IP.

We are pleased to announce that in Helsinki, the Women in IP reception will be generously hosted at the premises of Attorney–at–Law Juridia Ltd. The theme of “Sparkling & Strawberries” and the opportunity to get acquainted with some aspects of famous Finnish design will provide a lively atmosphere to meet your colleagues from many parts of the world.

The Women in IP events are deliberately informal. The aim is for women IP professionals to get to know each other, expand their networks and learn about the practice of IP in the many countries in which AIPPI is represented. As is now the established format, after a short introduction, the rest is up to you. We look forward to seeing our women colleagues at this event in Helsinki.

(AIPPI General Secretariat)
Forthcoming Events AIPPI 8th bi-annual International Baltic Conference on Intellectual Property
Plan to attend the 8th bi-annual AIPPI International Baltic Conference on Intellectual Property, 11-13 April 2013 in Vilnius Lithuania.
(Lithuanian Group of AIPPI)

PCT at the EPO
Conference for patent professionals and industry, 13 June 2013 – EPO Munich, Germany

The EPO is organising an in-house training event for patent attorneys and IP professionals from industry in Europe and elsewhere interested in filing and prosecuting PCT applications with the EPO.

The event will consist of eight sessions which will give participants the opportunity to get first-hand information and experience from experts on important aspects of filing and processing PCT applications with the EPO in all its capacities under the PCT. EPO experts and experienced patent attorneys will lead the sessions. Furthermore, experts from other major patent offices (USPTO, JPO, SIPO) and patent attorneys experienced in the respective procedures will run sessions on specific aspects of entry into their national phases. The EPO will introduce and give details of proposed new services such as supplementary international search, the second written opinion in the Chapter II procedure, and utilisation of PCT work in the PCT–PPH framework. The event will conclude with a panel discussion on key developments in the PCT, followed by a cocktail reception and a networking dinner to celebrate the 35th anniversary of the PCT. More information can be found on the website of the European Patent Office under

(European Patent Academy)

ECTA 32nd Annual Conference
Plan to attend the ECTA 32nd Annual Conference, 19-22 June, 2013 in JW Marriott Grand Hotel, Bucharest, Romania.

Full details are available here:

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, later this year. More information will follow soon.
(Israeli Group of AIPPI)
Articles and notes Australia: Changes to Australia's IP Laws
The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 comes into effect on 15 April 2013 and represents the most significant set of reforms to intellectual property laws in Australia in the last 20 years. The legislation affects most IP law in Australia; however, it has its most significant impact on patent and trade mark law. These reforms will change the IP landscape in Australia, and will bring Australian standards – particularly in relation to patents - closer to those of other jurisdictions.
(Article by Andrew Massie, Phillips Ormonde Fitzpatrick, Melbourne, Australia)

Australia: Google held not liable for misleading and deceptive content displayed by its AdWords program
The High Court of Australia (Australia’s highest court of appeal) has found that Google is not liable for misleading and deceptive conduct in displaying sponsored links, generated by its AdWords program, which themselves contain misleading representations. This case is of significance for businesses that make available third party information, especially in online media. ISPs, social media and other search engines should take note and consider the potential for liability for the third party information and how such liability is managed.
(Article by Melanie Jose, Australian Customs and Border Protection Service, Canberra, Australia)

France: Supreme Court aligns its position with the European Court of Justice as regards the protection scope of SPCs
Until early 2012, there was a huge legal debate all over Europe on the question whether supplementary protection certificates (SPC), which provide extra monopoly after a patent on a medicinal product has expired, afforded the same scope of protection as the corresponding patent. On 9 February 2012, the ECJ put an end to a series of divergent decisions rendered in different EU countries, by issuing two Orders in the Novartis vs. Actavis feud, in which it gave a positive answer. On 15 January 2013, the French Supreme Court rendered a judgment in line with ECJ case law, which provides us with an opportunity to review and resolve this debate.
(Article by Tougane Loumeau, Gide Loyrette Nouel AARPI, Paris, France)

Israel: The Patent Registrar clarifies the PTO's position on subject matter eligibility
The Israeli case law regarding patent subject matter eligibility has been inconsistent. In two recent decisions the Patent Registrar clarified the PTO's position in this matter: in order for an invention (whether a product or a process) to be regarded as “technological” and eligible for patent protection, implementation of the invention must involve a genuine technological process. A “genuine technological process” means a physical expression in the subject matter of the invention or in the nature of the activity which the product or process performs.
(Article by Eran Liss and Dan Adin, Adin-Liss, Law Offices, Tel Aviv, Israel)

Philippines: An Update on the Madrid Protocol in the Philippines – Its Accession and Implementation
On 14 December 2012, a petition was filed by the Intellectual Property Association of the Philippines questioning the constitutionality of the accession to the Madrid Protocol. It also challenged the implementation of the Madrid Protocol to the extent that it is inconsistent with the statutory requirement of a resident agent for foreign entities that seek protection under Philippine trademark laws, as mandated by the Intellectual Property Code of the Philippines.
(Article by José Cochingyan, III, Cochingyan & Peralta Law Offices, Makati, Philippines)

United Kingdom: UK Supreme Court in London gives judgment in important case relating to the extent of legal professional privilege (AIPPI UK Group intervened)
On 23 January 2013, the UK Supreme Court gave judgment in R. (on the application of Prudential) v Special Commissioner of Income Tax [2013] UKSC 1. By a 5-2 majority, an enlarged board of the Supreme Court dismissed the appeal by. Prudential, which had sought to extend the common law principle of legal advice privilege to legal tax advice given by professionally qualified tax accountants. 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 UK Council members, Michael Edenborough QC and James Tumbridge.
(Article by Charters Macdonald-Brown, Redd Solicitors LLP, London, United Kingdom)

United States of America: U.S. Supreme Court Holds Covenant Not to Sue Can Moot Trademark Invalidity Claim
A trademark owner's covenant not to enforce its mark mooted a competitor's action to have the mark declared invalid, the U.S. Supreme Court held in Already, LLC dba Yums v. Nike, Inc. Based on Nike's covenant not to sue, promising not to enforce its registered trademark against a competitor's existing products and any future “colorable imitations,” the Court affirmed the dismissal of the competitor's pending counterclaim that Nike's mark was invalid. While the U.S. Constitution gives courts jurisdiction over any “case or controversy,” where a trademark owner delivers a broad covenant not to sue, no case or controversy exists.
(Article by Seth I. Appel, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Chicago, Illinois, 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 | |

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

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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