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No. 31
July 2013
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International Association for the Protection of Intellectual Property
AIPPI General Secretariat |Toedistrasse 16 |P.O.BOX |CH-8027 Zurich
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Bureau 3rd Annual Conference in Seoul on International Intellectual Property Rights & Industrial Security
The President of AIPPI spoke in Seoul, South Korea in May at the 3rd Annual Conference on International Intellectual Property Rights & Industrial Security
(Article by John Bochnovic, President of AIPPI)

First Regional ACPI-AIPPI Seminar in Bogotá, Colombia, June 18, 2013
The first regional conference was organized by the Colombian Intellectual Property Association (ACPI) and AIPPI, with more than 110 attendees participating. Juan Carlos Cuesta, President of both ACPI and the Colombian AIPPI National Group, welcomed the foreign speakers, authorities and attendees. The seminar covered several topics including public policy, unfair competition, patent and trademark validity and data protection, and included international and local speakers from both private practice and the public sector. Both AIPPI's Vice-President and an Assistant to the Secretary General participated in the meeting. In view of the great success, the ACPI leadership is already planning the second version of the meeting to be held in 2014.
(Article by Felipe Claro, Vice President of AIPPI)

Consultation on Rules of Procedure of the Unified Patent Court (UPC) Call for volunteers
The preparations for the Unified Patent Court (UPC) in the European Union are moving ahead. The Preparatory Committee has recently published a draft of the Rules of Procedure which were prepared on the basis of input of expert judges, lawyers and industry representatives. The draft Rules of Procedure are open to written comments from stakeholders and interested parties until 1 October 2013. For further details please see under ”Consultations”.

It is the Preparatory Committee's ambition to establish a patent court that meets users‚ and practitioners‚ demands and the Preparatory Committee therefore attaches great importance to receiving input from stakeholders. Hence, the Bureau has decided to submit comments on the draft rules on behalf of AIPPI. The plan is to come up with a position which can be discussed and voted on by the ExCo in Helsinki so that AIPPI's position can be submitted to the Preparatory Committee before the consultation closes on 1 October 2013.

Given the urgency of the project, the Bureau has invited all officers and members of the Bureau, of the Programme Committee and of all Special Committees which deal at least to some extent also with the enforcement of patents or may be otherwise interested in the project to contribute to this important task. Jochen Pagenberg, Chair of Special Committee Q162, and Alan Johnson, Secretary of Special Committee Q162, have kindly volunteered to lead this project.

Given the nature and extent of the project and to provide a sound basis for an AIPPI position, we have equally alerted all National and Regional Groups as well as delegates of Independent Members of the opportunity to participate in this important project. If you would like to volunteer, you are warmly invited to send your comments to Fabienne Martin ( by August 5, 2013.

All contributions should have the same format, namely start each comment by naming the Rule and then either cite the respective (short) text extract and explain what should be changed. Alternatively, one may recommend a new text or explain why the text is not acceptable. In exceptional cases, e.g. where a certain Rule has been disputed one may also confirm that this Rule is welcome and should not be changed.

(Article by Thierry Calame, Reporter General of AIPPI)

Plain Packaging Questionnaire — Trademarks Committee
In view of the Australian plain packaging legislation and similar legislative initiatives in a number of other jurisdictions, and following the workshop “Plain Packaging — a slippery slope?” held in Seoul during the 2012 AIPPI Congress, AIPPI intends to study the legal basis for adopting plain packaging in more detail. Members of the Trademarks Committee and the Reporter General Team have kindly prepared a Questionnaire to this effect which has been sent to the National and Regional Groups.

The purpose of this survey is to study the issue on a broader level considering the legal frameworks in national systems that limit or prohibit trademark use in particular product classes based on stated public interest considerations, and what rights affected trademark rights holders may have in those circumstances.

A number of WTO member states have filed complaints under the WTO Dispute Settlement Procedure challenging Australia's Tobacco Plain Packaging Act. Consultations are still ongoing and panels have not yet been established. However, there is a likelihood that the panels will be established and the panel procedures initiated in early autumn 2013. Depending on the outcome of the survey regarding plain packaging the Bureau is considering filing amicus briefs in the panel procedures. To provide a sound basis for possible amicus briefs, the Bureau contemplates adopting a Resolution on Plain Packaging at the upcoming Executive Committee Meeting in Helsinki.

In order to meet this goal, the National and Regional Groups have been requested to respond to the Questionnaire. by August 19, 2013.

If you are interested in contributing to this important project, please get in contact with the President or Secretary of your National or Regional Group.

(Article by Thierry Calame, Reporter General of AIPPI)
AIPPI Committees New limitations and exceptions in an international copyright treaty
A historical copyright Treaty was adopted on 27 June 2013 at the WIPO Diplomatic Conference in Marrakesh, Morocco. Through the Treaty to Facilitate Access to Published Works for Persons Who are Blind, Visually Impaired, or Otherwise Print Disabled, there will be an international harmonization relating to limitations and exceptions for blind persons. The Treaty was preceded by negotiations that had been going on for a long time.
(Article by Sanna Wolk, Co-chair Copyright Committee of AIPPI)
AIPPI Forum & ExCo meeting 2013 AIPPI Forum & ExCo 2013, September 5-11, 2013, Helsinki, Finland
Forum & ExCo Helsinki, 2013 — 2nd registration deadline ends on 5 August 2013
The next AIPPI Forum & ExCo meeting is approaching. More than 850 participants have already registered. We expect this meeting to set a record for the number of participants at an AIPPI Forum & ExCo meeting.
(Article by Laurent Thibon, Deputy Secretary General of AIPPI)

Download the Preliminary Programme in English or Spanish.

Download the Accomodation & Social Events brochure.

Download the List of participants
The list of registered participants to our Forum/ExCo meeting in Helsinki is available here and on our website under meetings soon. AIPPI members will be able to find complete address information of the Helsinki participants in the member sections.

New Special Session: The protection of IP rights in Africa through the ARIPO system
The Director General of ARIPO, Fernando dos Santos, will introduce the African Regional Intellectual Property Organization's role in protecting IP in Africa on Sunday, 7 September 2013 at 16.00 h. Please consult the website for further updates of the programme and the list of speakers.
(AIPPI General Secretariat)

Sponsorship opportunity at AIPPI Forum & ExCo meeting 2013 in Helsinki, Finland
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 Congress 2014 Toronto Working Questions
The working programme for the 44rd World Intellectual Property Congress in Toronto, Canada comprises the following four questions:
  1. Patent Law Question
    Second medical use and other second indication claims

  2. Trademark Law Question
    The basic mark requirement under the Madrid System

  3. Copyright Law Question
    Exhaustion issues in copyright law

  4. General IP Question
    IP Licensing and insolvency
All four Working Questions were approved by the Executive Committee by a large majority. The Reporter General Team will start drafting the Working Guidelines and introduce the Toronto Working Questions in Helsinki on Saturday, September 7, 2011, 4:00pm. As always, you will have the opportunity then to comment on and contribute to the questions to be asked to the National and Regional Groups. Here is a short overview of the four Toronto Working Questions.

(AIPPI General Secretariat)
Forthcoming Events August 2013:  ABPI XXXIII International Congress on Intellectual Property
On the subject of Intellectual Property and the Knowledge Society in the New Economy, the XXXIII International Congress of ABPI, the largest IP Association in Brazil and one of the most important in Latin America, will take place in Rio de Janeiro, 18-20 August at Windsor Barra Hotel.

Full details are available here:
(Brazilian Group of AIPPI)

October 2013:  The FICPI 14th Open Forum will take place on 2-5 October 2013
Full details are available here:

October 2013:  WIPO Arbitration Workshop will take place on 10-11 October 2013 Seoul, Republic of Korea
This Workshop is hosted by the Arbitration and Mediation Center of the World Intellectual Property Organization in cooperation with the Ministry of Justice (MOJ), Ministry of Culture, Sports and Tourism (MCST), Korea Intellectual Property Office (KIPO) and Korean Commercial Arbitration Board (KCAB). The purpose of this Workshop is to provide intensive basic training of a practical nature for party representatives in arbitration and for arbitrators. The Workshop will consist of presentations by eminent international arbitrators and intellectual property lawyers, as well as supervised practical exercises and discussions between participants and instructors. After completion of the Workshop, participants will have a better understanding of the substantive components of international commercial arbitration, as well as the benefits (and limitations) of arbitration in intellectual property disputes as compared to other dispute resolution options, in particular court litigation. In addition, participants will obtain practical information about the role of the WIPO Center in ADR proceedings, and its arbitration clauses and rules. The arbitration rules of other arbitration institutions will also be referred to for purposes of comparison. For more information, please see:

October 2013:  WIPO Advanced Workshop on Domain Name Dispute Resolution: Update on Precedent and Practice will take place on 29-30 October 2013 Geneva, Switzerland
This Workshop is hosted by the Arbitration and Mediation Center of the World Intellectual Property Organization. A principal theme of this year's Workshop is the precedent summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0). The Workshop will also pay particular attention to developments in relation to UDRP decision precedent and process, and will provide an overview of new ICANN Rights Protection Mechanisms (RPMs) in connection with the planned launch of new gTLDs. This includes a status update on the WIPO-administered Legal Rights Objection (LRO) procedure. For more information, please see:

2013:  2013 Israeli Group of AIPPI
The Israeli National Group of AIPPI, in collaboration with the Faculty of Law at 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)

February 2014: Commemoration of the 50th Anniversary of the Spanish Group of AIPPI
On May 7 1963, the Spanish Group of AIPPI was established. Since then, it has become a respected voice, influencing significantly the landscape of industrial property.

To commemorate this anniversary, the Board of Directors of the Spanish Group, agreed to issue a commemorative book with studies on intellectual property, as a tribute to the production of high quality literature that has characterized the Association over the past 50 years.

Moreover, some social events will be organized to celebrate the 50th anniversary during the next General Assembly and Congress in February 2014 in Barcelona.

(Spanish Group of AIPPI)
Articles and notes Italy: Second anniversary of the Trademark opposition system, a quick view on the trends
In May 2011, the Italian Patent and Trademark Office (IPTO) launched its long-awaited opposition system. Since then, more than 2,400 oppositions have been filed against applications for Italian trademarks (and international trademarks designating Italy). The rules of procedure closely follow Community procedure. Reputation is not a valid basis for opposition against dissimilar goods or services. In order to enforce reputation of a mark owners need to proceed with cancellation actions before IP courts.
(Article by Silvia Grazioli, Bugnion S.p.A., Milan, Italy)

Switzerland: Cigarette trademarks: “Activate” and “Release” deemed distinctive under Swiss law
The Swiss Federal Institute of Intellectual Property (the “Institute”) recently issued two decisions dealing with oppositions in the field of cigarette trademarks (class 34).

The first one related to an opposition raised by the owner of the “Activate” Swiss word trademark against the “L&M Activate Fresh Flavour” Swiss word and device trademark, while the second one concerned the alleged risk of confusion between the “FlavoRelease” Swiss word and device trademark and the “Release” Swiss trademark.

The present contribution aims to briefly analyze both of these decisions.

(Article by Thomas Widmer, LALIVE, Geneva, Switzerland)

The Netherlands: Transatlantic developments in relation to the antitrust analysis of reverse payment settlements: Lundbeck and Actavis
On 20 June 2013, the European Commission imposed fines on the Danish pharmaceutical company Lundbeck (EUR 93.8 million) and four generic manufacturers (EUR 52.2 million) for reverse payment agreements relating to generic versions of citalopram, an antidepressant. A few days earlier, the US Supreme Court held in the FTC v. Actavis case that reverse payment agreements are not per se anticompetitive, but must be analysed on an individual basis under the “rule of reason” test.
(Article by Herman Speyart, NautaDutilh, Amsterdam, The Netherlands)

The Netherlands: The European software patent controversy: Court of Appeal sides with the European Patent Office
The Court of Appeal of The Hague is the exclusive appeal court in patent cases in The Netherlands. For the first time, the Court of Appeal of the Hague has taken a position on a fundamental question relating to software patents (“computer implemented inventions”). This issue is treated differently in various European countries. One view is that the entire subject matter of the claim is not patentable if the contribution, in the light of the prior art, falls within the “excluded subject matter” categories software as such or a presentation of information as such. The court, in conformance with the practice of the EPO, has decided that other view is that if such a claim contains any technical feature at all, perhaps as trivial as a keyboard/processor/monitor combination, the subject matter is patentable but may fail on novelty or inventive step. This last approach conforms with the practice of the European Patent Office (“EPO”), which approach is now also accepted by the Hague Appeal Court.
(Article by John Allen, NautaDutilh, Amsterdam, The Netherlands)

United Kingdom: Supreme Court finds no damage for 'infringement' of invalid patent claims
If a patent has been held to be valid and infringed but is then subject to limitation or revocation before the damages enquiry has taken place, what is to happen?

The Supreme Court has held in Virgin Atlantic Airways v Zodiac Seats, overturning an established line of authority from the Court of Appeal, that no damages are payable since the infringer is entitled to rely on the fact of the later revocation of the patent. The doctrine of res judicata does not apply because the 'infringer' is not seeking to re–argue its case on validity, it is relying on the fact that the patent is no longer in force and is deemed never to have existed, a fact that neither had nor could have been raised at an earlier stage.

(Article by Michael Browne, Redd Solicitors, London, United Kingdom)

United States & Germany: Hosting provider liability: new cases illustrate differences between EU and US
HOSTING PROVIDER LIABILITY: NEW CASES ILLUSTRATE DIFFERENCES BETWEEN EU AND US Since Web 2.0, the Internet is no longer limited to the passive viewing of content. Users can now interact and collaborate; one result is so-called u ser-generated content (UGC), disseminated on the Internet. Often, UGC consists of clear infringements of intellectual property rights, in particular, copyrights and trademark rights. Hosting providers (in the US, “Internet Service Providers” or “ISPs”) are key players for making generated content available on the Internet. National jurisdictions are still struggling to find a fair balance between technology providers and right owners. The underlying concepts and the results may be quite different, as a look to the EU and the USA illustrate.
(Article by Corey Field, BALLARD & SPAHR, Los Angeles, USA and Jan Bernd Nordemann, Anwaltssozietät BOEHMERT & BOEHMERT, Berlin, Germany)

United States: Naturally Occurring DNA Segments Ineligible for Patent Protection, but Synthetically Created cDNA is OK: United States Supreme Court in Myriad
In an important case development, the United States Supreme Court held in Myriad that naturally occurring segments of DNA, even if isolated, are not patent eligible subject matter under U.S. patent law. In the same ruling, however, the Court held that synthetically created DNA which is not naturally occurring can qualify for patent protection. In reaching this conclusion, the Court drew on precedent illustrating the long history of denying patent eligibility to the discovery of that which occurs in nature without inventive contribution by humans.
(Article by Kelly G. Hyndman, Sughrue Mion, PLLC, Washington, DC, United States)
National Groups Ireland: Practitioner Experiences in the new UK Patents County Court: AIPPI Irish Group Seminar, April 2013
The AIPPI Irish Group held a seminar on the UK Patents County Court in Dublin, April 2013. Claire O'Brien (Wragge & Co LLP) addressed practice and experience in the new UK Patents County Court and how Irish litigants can make use of that court for disputes within its jurisdiction.
(Article by Shane Smyth, FRKelly, Dublin, Ireland)

Singapore: News from the AIPPI Singapore Group
Under the leadership of Mr Morris John, President of the AIPPI Singapore Group, membership of the Group has increased. The Group has actively collaborated in the Intellectual Property programmes of the Intellectual Property Office of Singapore (“IPOS”) and the Ministry of Law. Also, It organizes activities such as Round Table Meetings where members present papers on the Scientific Questions to be discussed in forthcoming AIPPI international meetings.
(Article by Susanna H.S. Leong, National University of Singapore, Singapore)
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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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