2018 AIPPI World Congress &#8211; Cancun September 23 - 26

2020 AIPPI WORLD CONGRESS – HANGZHOU

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION (AIPLA)

Founded in 1897, AIPLA is focused on maintaining high standards of professional ethics, improving laws relating to intellectual property, ensuring their proper interpretation by the US courts, and providing legal education on intellectual property issues.

ASIA BUSINESS LAW JOURNAL (ABLJ)

(Media Partner) Asia Business Law Journal (ABLJ) is a 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.

ASIA IP

(Media Partner) Asia IP is a unique and vital source of intelligence for IP-owning companies active in Asia, and international law firms that want to keep ahead of the key issues.

ASIPI - INTERAMERICAN ASSOCIATION OF INTELLECTUAL PROPERTY

ASIPI is a non-profit organization, composed of members whose common denominator is to practice and defend IP rights. It promotes in the American countries the development and harmonization of the IP related laws and procedures.

BEIJING THINKIN CONSULTING CO., LTD.

(Media Partner) Beijing ThinkIn is specialized in promotion and release of IP-related news, planning and implementation of IP activities (including communication between Chinese and foreign Law Firms and IP Agencies), and liaising with relevant government authorities.

BRAZILIAN INTELLECTUAL PROPERTY ASSOCIATION

ABPI 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 Among other activities, ABPI promotes and organizes conferences, edits publications on the subject of intellectual property, and maintains 14 Study Commissions aimed at improving legislation, doctrine and jurisprudence of this branch of law. ABPI is also the center of resolution of domain name disputes and has a mediation and arbitration tribunal.

CHINA BUSINESS LAW JOURNAL (CBLJ)

(Media Partner) 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.

CHINA IP MAGAZINE

(Media Partner) Since its establishment in 2004, China IP Magazine provides a general media platform comprehensively reporting the Chinese IP industry, with the Chinese & English Version magazines, Website, China IP Annual Forum, Directory, Wechat, LinkedIn, etc.

CPAC INTELLECTUAL PROPERTY PUBLISHING HOUSE

Launched in 2010, CPAC is committed to building up platform of international cooperation and communication for patent professionals.

DARTS-IP

Darts-ip is global IP cases. Our IP case law database brings more than 3 million cases from over 3,000 courts to 30,000 IP professionals, every day.

EUROPEAN PATENT OFFICE

Quality is the hallmark of the European Patent Office. At this year’s AIPPI World Congress, the EPO will present the quality improvements to its search and examination standards, especially those concerning the coverage of Asian documentation and the new options and services available for PCT applicants filing with the EPO. The Office will also present its Federated Patent Register and Global Dossier projects, both of which bring together reliable legal status and other important information.

IAM

(Media Partner) 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.

INDIA BUSINESS LAW JOURNAL (IBLJ)

(Media Partner) 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.

INVENTA INTERNATIONAL

Inventa International is an IP consulting firm, specializing in Intellectual Property protection and internationalization, with a particular focus within the African continent, including the regional conventions – ARIPO and OAPI.

IOLITE SOFTWARES PRIVATE LIMITED

Iolite Intellectual Property Management Software is a powerful administrative integrative tool to manage trademarks seamlessly integrated with the status watch for leading registries. Patents, Copyrights and Industrial Designs docketing software featuring allocation of work, client correspondences, case document docketing & reminder alerts for renewals, hearing dates, due filing and submissions so as to eliminate errors and never miss an important deadline. Iolite transforms the office of IP Attorneys and IP Owners paperless.

IP-COSTER

Free and open for IP practitioners, IP-COSTER is an online platform designed to facilitate the IP protection process worldwide. IP-COSTER provides accurate cost estimates, foreign filings and workflow solutions for patents, trademarks and designs.

IPPRO THE INTERNET

(Media Partner) IPPro The Internet is the go-to industry publication for free news, views and opinion on intellectual property online. The fortnightly publication and accompanying website—the only free-to-read intellectual property resources around—cover the full spectrum intellectual property rights, including patents, trademarks, copyright and domain names, as they relate to the internet.

LEADERS LEAGUE

(Media Partner) Leaders League is a media and rating agency for top executives at the international level. We connect senior business leaders to a dynamic network of business information and people sharing a common passion:excellence in leadership and management.

MANAGING INTELLECTUAL PROPERTY - IP STARS

(Media Partner) Managing IP is the foremost source of news and analysis on all intellectual property developments globally. IP STARS is the leading specialist guide for IP firms and practitioners, providing research and rankings for more than 80 jurisdictions.

MARCASUR

(Media Partner) MARCASUR is the leading IP media in Latin America with 20 years of continuous growth. MARCASUR has various products in Spanish, English and Mandarin, in printed and digital format.

NEVRIVY PATENT LAW GROUP P.L.L.C.

Nevrivy Patent Law Group is an IP law firm located in Washington, D.C., focused on life sciences. Our clients are located throughout the U.S. and internationally and include start-ups, Fortune 500 firms and research universities.

PATENT SEEKERS LTD

Patent Seekers Limited is recognised as one of the Global Leaders in patent and design research. We perform patent, design, technical literature and general internet searches to help our clients make the best business decisions.

PATRANS IP

PATRANS IP is a patent translation boutique established by patent attorneys, the only one of its kind in Latin America. We exclusively translate patents and related patent documents.

PATRIX IP HELPWARE

Patrix specializes in software solutions with Patricia®, an all-inclusive, platform agnostic, IP case management system that has helped professionals for over 20 years.

PRACTICE INSIGHT

Practice Insight develops IP business intelligence and time management software that enables IP professionals to stay ahead of their competitors and grow their business. IP tools that are affordable, user friendly and intuitive.

PREMIER CERCLE

(Media Partner) Premier Cercle™ acts independently as a strategic consultancy and a conference provider specialised in Intellectual Property. Premier Cercle™ researches, produces and promotes high-level conferences across Europe and in the US.

SNEAKER INTERACTIVE

Sneaker works on development projects and event support all over the world, including systems integration for IP operations, profitable global web apps or customized WordPress sites with thousands of users. New services: Blockchain, Data Science.

THE GLOBAL IP MATRIX MAGAZINE

(Media Partner) The Global IP Matrix is a brand new FREE Intellectual property law magazine with a difference. We have designed a less formal looking, impressive and eye-catching publication with the 'off the shelf' appeal that still holds vital up to date literature and features that will keep you wanting to read more. We have collaborated with two of the world's leading IP Law firms to bring you an IP magazine designed and overseen by lawyers for lawyers. After spending many years in IP and attending hundreds of conferences all over the world we are very aware of our audience and their needs so we are confident that this new publication will supply you with the right content and keep you interested.

THE PATENT LAWYER MAGAZINE

(Media Partner) The Patent Lawyer Magazine is a ‘need to read’ publication for all international patent professionals. Published bi-monthly in both hard copy and electronically, each issue of The Patent Lawyer Magazine is seen by an average of 20,000 global patent professionals.

WOLTERS KLUWER

Wolters Kluwer Legal & Regulatory U.S, International Group provides legal practitioners, corporate counsel and business executives with comprehensive legal information and tools that cross boundaries and jurisdictions to navigate the increasingly global aspect of law.

WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO)

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.

WORLD IP REVIEW

(Media Partner) 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.

MATERIALS

Study Questions

Conflicting patent applications

Sunday, September 23 , 2018 - 09:00-15:00

How do applications that have an earlier filing or priority date, but which have not been published, affect patentability of a later filed application? In some jurisdictions, a prior filed, later published application is relevant both for considerations of novelty and obviousness or inventive step. In others, such an application is relevant for novelty only. Some jurisdictions take a middle ground: such applications are relevant for novelty and “enlarged novelty,” i.e. applications for inventions that differ from the prior application in a manner which does not go beyond common general knowledge may be rejected. Further, some jurisdictions will reject later filed applications filed by the same applicant over their own prior filed, later published applications while others provide for “anti-self collision”. Yet another class of conflicting applications are PCT applications. Some countries will consider a published PCT application to be prior art from the PCT filing date only if the national phase is entered in that country, while other countries will treat the published application as prior art for all designated countries regardless of national phase entry. In short, there is wide variation in how prior filed, later published applications are treated for prior art purposes, leading to very disparate results with the same prior references depending on the jurisdiction. Given the various renewed efforts directed at harmonization in this area, it is timely for AIPPI to revisit this issue and update its position.

Responsible Reporter:

First Deputy Reporter General: Jonathan P. OSHA

Chair: Joshua GOLDBERG (US)

Vice Chair: Gastón RICHELET (AR)

Vice Chair: Sabine AGé (FR)

Secretary: Jeroen BOELENS (NL)

PLENARY SESSION (5) Tuesday, September 25, 2018 - 09:00-12:30

Chair: Karsten KÖNIGER (DE)

Study Questions

Registrability of 3D trademarks

Sunday, September 23 , 2018 - 09:00-15:00

Historically, shapes of products and packaging were not registrable as trademarks in many jurisdictions because a trademark was considered to be something separate from the goods themselves. Today, many jurisdictions permit the registration of trademarks comprised of the three-dimensional (3D) shape of goods or packaging. Yet the registrability of such trademarks con-tinues to present challenges to trademark owners. Primarily, the challenges concern distinctiveness and functionality. While in principle the general criteria of distinctiveness should apply, it may be difficult to establish that the shape of a product or its packaging is capable of functioning as a trademark, i.e. that the shape is operating as an indicator of trade source. Similarly, if a product shape has significant func-tional features, other traders may also wish (and possibly need) to use that shape for similar goods. There is a tension between the reluctance to allow trademark protection for 3D shapes on the one hand, and the market reality where 3D shapes often function as a trademark, i.e. as an indicator of source. AIPPI therefore considered it important to study whether, and if so under what conditions, trademark protection for 3D shapes should be available. This Study Question seeks to establish whether, and if so under what substantive conditions, registered trademark protection for signs consisting of 3D shapes comprising the 3D shape of goods or packaging should be available.

Responsible Reporter:

Second Deputy Reporter General: Anne Marie VERSCHUUR

Chair: Maria SCUNGIO (US)

Vice Chair: Áron Márk LáSZLó (HU)

Vice Chair: Felipe CLARO (CL)

Secretary: Stoyan SIRAKOV (BG)

PLENARY SESSION (7) Wednesday, September 26, 2018 - 09:00-12:30

Chair: Robert W. SACOFF (US)

Study Questions

Partial designs

Sunday, September 23 , 2018 - 09:00-15:00

An “industrial design” or “design patent” typically protects the outward appearance or ornamentation of an object or article of manufacture. AIPPI's Resolution on "Requirements for protection of designs" (Milan, 2016) concerns the definition of and the requirements for the protection of designs, with a focus on the role of functionality. That Resolution does not address "partial designs". A partial design is in respect of only a portion or portions of a product, e.g. a design registration directed at protection of the handle of a pan rather than the whole pan including the handle. This Study Question focuses on partial designs and whether a portion of a product can be the subject of independent design protection, and if so, the requirements for and scope of such protection. Issues include the manner in which a partial design must be described or depicted in order to be eligible for protection; whether and how the external context that does not form part of a partial design (such as the pan, in the case of a registration for the handle) influences the scope of protection and the assessment of validity of the partial design (for the handle); the requirement for and level of any originality or; and the appropriate test for infringement. It also examines how the “must fit/must match” exemption from protection should apply in the case of partial designs, i.e. where the design for the portion of the object is dictated by the need to fit with other parts.

Responsible Reporters:

Assistant Reporter General: Ari LAAKKONEN
Assistant Reporter General: Yusuke INUI

Chair: Sara ASHBY (UK)

Vice Chair: Irmak YALCINER (TR)

Vice Chair: Lili WU (CN)

Secretary: Christopher M. SCHERER (US)

PLENARY SESSION (6) Tuesday, September 25, 2018 - 14:00-17:30 Chair: Dariusz SZLEPER (FR)

Study Questions

Joint liability for IP infringement

Sunday, September 23 , 2018 - 09:00-15:00

Infringement claims that are mainly based on the actions of a single party are generally addressed by existing intellectual property laws. However, it is common for a number of actors to be involved in distribution networks, product shipping and imports, and the assembly of complex products from smaller components. For example, a car may be assembled from components supplied by independent companies/sub-contractors, and a mobile phone may be based on multiple chipsets from multiple vendors. In such cases, it is difficult, impractical or impossible for a single party to infringe the IP rights in protected subject matter. Alternatively, a party may not themselves be infringing, but may contract with, or employ or instruct others, to perform some or all of the infringing act and thereby escape liability for direct or indirect infringement. In these circumstances, it may only be possible to find infringement by combining the actions of more than one party. This is commonly referred to as "joint infringement", and can create significant problems for courts and IP right holders. The aim of this Study Question is to propose harmonized rules to determine whether there is any liability for joint infringement, based on common scenarios including where:

There is direct IPR infringement by a party, but the IPR holder wants to pursue another party involved in the relevant acts
There is no direct IPR infringement by any party, but IPR infringement nonetheless occurs as the result of the combined act of two or more parties.

Responsible Reporters:

Assistant Reporter General: Ralph NACK

Chair: Nicolaj BORDING (DK)

Vice Chair: Tsuyoshi SUEYOSHI (JP)

Vice Chair: Kelly HYNDMAN (US)

Secretary: Klaudia BLACH - MORYSINSKA (PL)

PLENARY SESSION (4) Monday, September 24, 2018 - 14:00-17:30

Chair: Justin WATTS (UK)

Panel Sessions

PS I: Artificial Intelligence - the real IP issues

Monday, September 24 , 2018 - 09:00-12:30

Artificial Intelligence, or “AI”, has gained prominence across many sectors from healthcare to finance, telecommunications to marketing, and transportation to genetics. Whilst AI has existed in basic forms for many years, recent developments based on more complex implementations have started to impact businesses and everyday life. This double panel session will include a technical overview setting out some fundamental concepts of AI, along with some issues that are commonly misunderstood. The automotive sector and its use of AI in the field of autonomous vehicles will be profiled to demonstrate how AI is used in practice. The focus will then move to IP and the implications for IP rights, including new challenges and possibilities. For example: what are best practices for protecting AI-related inventions? How should IP be handled for works created using AI? What are the issues surrounding ownership of AI-created works? What special issues arise in enforcement of AI-related IP rights? The purpose of this panel session is twofold:

To advance IP practitioners’ technical understanding of a complex field which has very wide scope, but also some misconceptions;
To explore some of the practical issues IP practitioners might face as AI-related technology becomes increasingly prevalent.

Panellists:

Peter Finnie, Gill Jennings & Every (UK) (Moderator)
Bin Chen, Shanghai Patent & Trademark Law Office (CN)
Dr. Sam Kherat, Bradley University / Caterpillar Inc (US)
Bea Koempel-Thomas, Lee & Hayes (US)
Sean Murphy, PingThings (US)
Heli Pihlajamaa, EPO (DE)
Dr. Vincent Spinella-Mamo, Zoox, Inc (US)
Xiaolei Wu, Baidu (CN)

Panel Sessions

PS IV: Alternatives for enforcement: criminal and administrative proceedings

Monday, September 24 , 2018 - 09:00-10:30

Various options are available to IP holders when seeking to enforce their rights. Civil proceedings are a frequently used mechanism against alleged infringers. However, civil actions might not be the only option available, and especially in the case of persistent, large-scale or determined infringement it may be that the only sanction that will prevent future infringement is criminal sanctions, such as custodial sentences. In sectors such as healthcare, the unregulated and unlawful production and sale of counterfeit medications to the public may result in serious public interest/health issues. This panel session will examine different options available for enforcement of IP rights and provide analysis on how strategic use can be made of those options, either alone or in conjunction with civil proceedings. Some of the issues to be covered in the panel session include:

the availability, types and advantages and disadvantages of criminal and administrative procedures for enforcement for different types of IP in different jurisdictions
considerations before opting for criminal and/or parallel criminal and civil proceedings
the benefits and drawbacks of parallel proceedings.

Panellists:

Gustavo de Freitas Morais, Dannemann Siemsen (BR) (Moderator)
Raimondo Galli, Studio Legale Avv. Raimondo Galli (IT)
Leticia Leon, Novartis (MX)
José Alejandro Luna Fandino, Olivares (MX)
Lena Shen, Beijing Sanyou Intellectual Property Agency (CN)

Panel Sessions

PS V: A balancing act - copyright versus other rights

Monday, September 24 , 2018 - 11:00-12:30

This session will address the means by which copyright laws in different jurisdictions seek to achieve balance between copyright and other rights and interests. Once mostly achieved through exceptions and limitations, recent developments show an increasing role for other doctrines and methodologies. In Europe, balancing has moved increasingly into the sphere of constitutional law. The Court of Justice of the European Union has established that the protection of copyright is a fundamental right that must be balanced against other fundamental rights, including the freedom of expression and of information, the freedom to conduct a business, and the protection of privacy and personal data. Courts in other jurisdictions show an increasing propensity to interpret statutes, and resolve infringement cases, with reference to maintaining an overall balance between the interest of copyright owners in protecting their works and the interest of the public in accessing them. Issues to be explained include:

Do differences in balancing mechanisms actually lead to different answers to specific questions?
What is the point of legislating specific exceptions and enforcement rules if copyright cases are ultimately determined by balancing copyright against other rights?
How can the outcome of the balancing exercise be made more predictable?

View Presentations:

Panellists:

Jan Nordemann, Boehmert & Boehmert (DE) (Moderator)
Irely Aquique, Mexican Institute of IP (MX)
Remy Chavannes, Brinkhof (NL)
Gregory Sebald, Merchant & Gould (US)

Panel Sessions

PS VI: Harvesting innovation in agriculture – patents and more

Monday, September 24 , 2018 - 14:00-15:30

This panel session will explore the availability of IP protection for innovation in the agricultural sector, the scope and limits to such protection and the implications for enforcement of IP rights. In most jurisdictions, new plant varieties can be protected by specific rights, raising questions about the interface with patent protection. However, recent US Supreme Court decisions regarding products or laws of nature have limited the availability of patent protection in this field. Similarly, the European Commission recently considered that the European Patent Office has allowed excessive patent protection, resulting in some countries amending their legislation and causing the Administrative Council of the EPO to amend its rules. IP protection in respect of plant growth involves interesting questions for harvested material and manufactured agricultural products, genetic improvements and growing processes. Related issues include:

The existence and scope of any “farmers' exception" to infringement
The role of various Conventions on the protection of biodiversity in the acquisition and enforcement of IP rights.

In the face of the challenge of global food security, the importance of innovation to enhance crop production cannot be overstated. This panel will also explore developments in and protection for aspects of agricultural engineering.

View Presentation:

Panellists:

Peter Schechter, Osha Liang (US) (Moderator)
Eyal Bressler, Dr. Eyal Bressler & Co (IL)
Hector Chagoya, Becerill, Coca & Becerril (MX)
Heli Pihlajamaa, EPO (DE)

Panel Sessions

PS II: Standard essential patents - maximising value before enforcement

Monday, September 24 , 2018 - 14:00-15:30

This panel session will explore the topic of standard essential patents (SEPs). Recent cases in Europe and the US have focused on FRAND determination, for example TCL v Ericsson in California, and Unwired Planet v Huawei in the UK Patents Court. These high profile cases are generally at the end of long running disputes over the licensing of SEPs. At the other end of the spectrum, both during prosecution and post-grant, or in the early stages of disputes, a determination has to be made as to which patents are essential to particular standards. Notably, the EU Commission has recently communicated on SEPs in general and its communication of November 2017 discussed the possibility of a more formal approach to essentiality determination. This panel session will consider the strategies around building a portfolio of SEPs, including what to designate as essential and whether to use licensing pools. The panel will also consider issues of essentiality and the obligation to license. For example, what does essentiality mean in the context of different types of standards? How is it assessed by courts? What role, if any, should administrative bodies play in this determination?

Panellists:

Gertjan Kuipers, De Brauw Blackstone Westbroek (NL) (Moderator)
Tadanobu Andou, Docomo (JP)
Adrian Howes, Nokia (UK)
Peter Martinsson, Ericsson (SE)
Judge James L. Robart, US District Court for the Western District of Washington (US)

Panel Sessions

PS III: A means to an end - the doctrine of equivalents

Monday, September 24 , 2018 - 16:00-17:30

Since AIPPI studied the role of equivalents concluding in its Resolution on Q175 – "The role of equivalents and prosecution history in defining the scope of patent protection" (Lucerne, 2003), there have been case law developments in various jurisdictions focusing on the scope of protection provided by patent claims. Most recently, in Actavis v Eli Lilly, the UK Supreme Court adopted a significant change in comparison to the previous settled law of purposive construction. It remains to be seen whether the UK has formally adopted an approach more akin to the doctrines of equivalents in jurisdictions such as the US and Germany. This panel session will consider how the scope of protection in relation to equivalents is currently assessed in various jurisdictions, and explore whether there is a wider trend towards permitting equivalents, including:

considerations as to whether and how prosecution history is taken into account
the effect of adopting a more liberal approach for issues other than infringement, e.g. validity
how a change in approach might be handled when the scope of protection was originally established – when the patent was prosecuted – on a stricter test.

Panellists:

Patrick J. Coyne, Finnegan, Henderson, Farabow, Garrett & Dunner (US) (Moderator)
Judge Klaus Grabinski, German Supreme Court (DE)
Richard Miller, QC, Three New Square IP (UK)
Hideki Takaishi, Nakamura & Partners (JP)

Panel Sessions

PS VII: Personality rights – it’s all about me ©™®

Monday, September 24 , 2018 - 16:00-17:30

This panel session will cover the extent and types of IP protection available in respect of an individual’s personality rights. It is now common for the names, images, signatures or other personal indicia related to famous personalities (such as designers, athletes or actors/actresses) to be associated with commercial products or services, and on a global basis. However, questions arise as to the availability and scope of IP protection that may be available. This panel will consider whether an individual can obtain trademark, copyright or other IP protection for a family or personal name or other indicia and if so, under what conditions. For example, is it necessary to establish that the mark or design of interest be distinctive for the individual or that they have some level of reputation or fame? If there is initial difficulty in obtaining a registration to a name per se, can this be overcome through a mark consisting of additional elements such as a signature? Moreover, if the individual becomes disassociated with the goods or services, or sells or assigns their rights, does this impact on the validity or strength of the IP right? <div></div> <div></div> View Presentation

Panellists:

Eduardo Kleinberg, Basham, Ringey Correa (MX) (Moderator)
Hugo Cuddigan, QC, 11 South Square (UK)
Maria Scungio, Robinson & Cole, LLP (US)
Lena Shen, Beijing Sanyou Intellectual Property Agency (CN)

Panel Sessions

PS VIII: Linking into the digital era

Tuesday, September 25 , 2018 - 09:00-10:30

This panel will address recent developments in digital copyright law, specifically in relation to the exclusive right of communication to the public. AIPPI’s Resolution on linking and making available on the internet (Milan, 2016) was passed shortly after the Court of Justice of the European Union delivered its judgment in the controversial case of GS Media. That case held that deliberate, unauthorized hyperlinking to freely available online information can constitute a communication to the public. The CJEU has since issued numerous further judgments on the issue of communication to the public, including in relation to the offering of hardware video players with preinstalled pirate links, torrent indexing websites and online video-recorder services. This panel will address these recent developments and canvass developments on similar issues in other jurisdictions, including recent US court decisions on hyperlinking and embedding in the context of direct copyright infringement. The panelists will also discuss whether recent CJEU case law has moved the EU closer to or further from a global harmonized position. <div></div> <div></div> View Presentations:

Panellists:

Sanna Wolk, Institute of Intellectual Property, Marketing and Competition Law (SE) (Moderator)
Kenneth Adamo, Kirkland & Ellis LLP (US)
Luis C. Schmidt Ruiz Del M., Olivares and Compañía (MX)
Stefan Naumann, Hughes, Hubbard & Reed (FR)

Panel Sessions

PS IX: Use it or lose it - genuine use of trademarks

Tuesday, September 25 , 2018 - 11:00-12:30

What volume is sufficient for use to qualify as "genuine"? Can use of a trademark with some modifications still meet the bar? This panel session will address these and a number of other issues related to the use requirement for trademarks that exists in many jurisdictions. In most jurisdictions, trademark owners must (often after a certain time period) be able to show that their trademarks are “genuinely” used for each of the goods and services covered by the trademark, if they wish to avoid the risk of the trademark being vulnerable to e.g. being cancelled in a revocation action. Also there may be an "intent to use" requirement at the time of registration. Case law continues to develop in relation to the multiple aspects of the test to be applied. Given the practical importance of this topic, it is the subject of the most recent AIPPI Law Series collaboration with Kluwer. Panellists that have contributed to the AIPPI/Kluwer book will discuss what qualifies as genuine trademark use, with particular attention to recent case law developments. They will also address recurring issues encountered in practice, such as situations in which a device trademark is used in a slightly different form (e.g. a modernised logo), and the question whether an exception can apply if the trademark owner argues it had a particular reason for its non use.

Panellists:

Eléonore Gaspar, Duclos, Thorne, Mollet-Viéville & Associés (FR) (Moderator)
Karen Abraham, Shearn Delamore & Co (MY)
Bartosz Krakowiak, POLSERVICE Patent and Trademark Attorneys Office (PL)
Graciela Pérez, Hausheer Belgrano & Fernandez (AR)
Dennis Prahl, Ladas & Parry LLP (US)

Panel Sessions

PS X: Free Trade Agreements - drivers of IP policy?

Tuesday, September 25 , 2018 - 14:00-15:30

This Panel Session will address the way in which the IP landscape is being changed by FTAs. The main objective of FTAs is tariff disarmament. The advantages are the strengthening of macroeconomic stability, increase of exports and imports and diversification of markets, strengthening legal security and facilitation of the rules of the game in international trade. IP plays a key role in development and trade. FTAs also have a significant effect in increasing the scope and enforcement of IP rights. Some commentators criticise clauses that expand the scope of protection or enforcement beyond the requirements of TRIPS. This panel will provide analysis on FTA developments worldwide, including:

The TPP coming into effect in March 2018 despite the controversial US withdrawal
The FTA Mexico is negotiating with Canada and the US, and what will happen if the US also withdraws from those negotiations
What will the impact of Brexit be on the proliferation of FTAs?

<div></div> View Presentation

Panellists:

Sharon Israel, Shook Hardy & Bacon (US) (Moderator)
Wolf Meier-Ewert, WTO (CH)
Orlando Perez Garate, Mexican Institute of IP (MX)
James Tumbridge , Venner Shipley (UK)

Panel Sessions

PS XI: Surveying the field - a gold standard for survey evidence

Tuesday, September 25 , 2018 - 16:00-17:30

This panel session will cover the use of market survey evidence, particularly in the context of trademarks, and will seek to determine the ‘gold standard’ for different types of surveys. In particular, what standards could (or should) apply in respect of the admission of such evidence and the reliance on the same for proving different types of facts? In some jurisdictions, the admissibility of consumer survey evidence may be an issue on the basis of hearsay. In other jurisdictions, consumer survey evidence may be admissible but the weight accorded to such evidence can vary. Nevertheless, the potential importance of such survey evidence cannot be overstated. This session will focus on the required standards for surveys dealing with important issues relating to trademark law such as the issues of confusion, parasitism/dilution and acquired distinctiveness. The panel will also explore the possibility of use of market surveys in other IP cases, such as design infringement cases. One of the aims of this panel session is to develop the topic as a Study Question leading to an AIPPI resolution.

View Presentations:

Panellists:

Ruth Corbin, CorbinPartners Inc (CA) (Moderator)
Justice Henry Carr, UK High Court (UK)
Judge Li Jian, Supreme People's Court of China (CN)
Ricardo Nunes Ferreira, EUIPO (ES)
Almut Pflüger, Pflüger Rechtsforschung (DE)

Panel Sessions

PS XII: Briefing: hot topics in IP

Wednesday, September 26 , 2018 - 08:30-10:30

This session will provide an update on a number of live IP topics which have previously been keenly followed by Congress attendees. This session will cover:

Brexit and its effects on all types of IP
The Unified Patent Court and the Unitary Patent, particularly the status and timing of relevant ratifications in view of the German constitutional challenges and Brexit
Global efforts in substantive patent law harmonization, particularly in view of the work of the Group B+ and the Industry Trilateral around a package of issues including grace period, publication of applications, conflicting applications, prior user rights and prior art, many of which are reflected in recent or current AIPPI studies
Developments in FRAND determination following TCL v Ericsson
WTO dispute resolution and the plain packaging Panel Report
Recent IP developments in Mexico.

A panel of experts in these areas will provide a briefing on each topic, with some time for Q&A at the end. Attendees will leave completely up to date on the latest hot topics.

Panellists:

Eryck Castillo Orive, Uhthoff, Gomez, Vega & Uhthoff (MX) (Moderator)
Justice Henry Carr, UK High Court (UK)
Judge Klaus Grabinski, German Supreme Court (DE)
Stephen Korniczky, Sheppard Mullin (US)
Wolf Meier-Ewert, WTO (CH)
Tony Rollins, CIPA (UK)

Panel Sessions

PS XIII: Out of term - provisional and post term enforcement

Wednesday, September 26 , 2018 - 11:00-12:30

This panel session will explore the type of protection and potential remedies that may be available for patents both prior to issue and after expiry. Topics will include a review of how an invention which is the subject-matter of a domestic or PCT application may be provisionally protected before and after publication, with particular attention on the issues of enforceability, remedies and compensation. The panel will also consider the issue of the patent applicant's potential liability seeking and obtaining provisional protection where the application is ultimately rejected or granted in modified form. At the other end of the spectrum, the panel will also consider the availability of post expiry remedies. For example, post-expiry "springboard" injunctions have been considered in a number of jurisdictions. In the UK, they have been granted where, for example, infringement gives the infringer an unwarranted springboard advantage by allowing regulatory approvals to be obtained earlier than those have not committed infringing acts. Further, courts in Canada have also recently ordered damages or the disgorgement of a defendant’s profits on the basis of the defendant’s post expiry activities gaining a “spring boarding” market advantage post expiry, based on infringing activity prior to expiry.

Panellists:

Steve Garland, Smart & Biggar / Fetherstonhaugh (CA) (Moderator)
Philip Swain, Foley Hoag (US)
Chief Judge Marina Tavassi, Court of Milan, IP Division (IT)
Dominic Adair, Bristows (UK)

Pharma Day

Pharma 1: The endgame: patent term extensions and SPCs

Tuesday, September 25 , 2018 - 09:00-10:30

This panel session will address recent developments in patent term extension (PTE) and supplementary protection certificates (SPCs). The importance of PTE and SPCs for drug lifecycle management in the pharmaceutical industry cannot be overstated: they are regularly used and the interests at stake are often high. PTE systems differ significantly among countries in both scope and duration. Although the concept is not new, PTE and SPCs are frequently the subject of litigation in many jurisdictions, and new questions continue to arise. In Europe for example, recent CJEU decisions have led to new trends in national litigation and national IP Office practice regarding such issues as the correction of expiry date, application to combination products and whether products fall within the scope of claims. In late 2017, the EU Commission also announced the launch of a consultation on improvements to the SPC system including consideration of an unitary European SPC title. This panel session will include a comparative analysis of the current PTE landscape, looking at unresolved issues, anticipated developments and whether the present regimes are fit for purpose.

Panellists:

Alexa von Uexkuell, Vossius & Partner (DE) (Moderator)
Maryanne Armstrong, BSKP (US)
Makoto Ono, Anderson Mori & Tomotsune (JP)
John Todaro, Merck & Co (US)

Pharma Day

Pharma 2: Access to medicines - what's fair?

Tuesday, September 25 , 2018 - 11:00-12:30

The central topic of this panel session will be the 2016 UN High Level Report on Access to Medicines and the issues it explores relating to increasing access to medicines in developing nations and regions around the world. The panel will consider topics including:

The role and impact of IP rights on access to medicines in general
The impact of the UN Report on Access to Medicines and the current status of the issues relevant to the access to medicines
The response of governments, NGOs, pharmaceutical companies, other stakeholders and commentators to the contents and conclusions of the UN Report, including the conclusion that the current international IP legal framework limits access to medicines
A discussion of AIPPI’s Position Paper (prepared by the Standing Committee on Pharma and Biotech and the Standing Committee on TRIPS) on the UN Report
The potential impact of the UN Report on innovative pharmaceutical R&D programs, university and public institutions, if the views and recommendations of the Report are adopted
Future activities and issues with respect to the UN Report and the issue of access to medicines.

Panellists:

Catherine Mateu, Armengaud Guerlain (FR) (Moderator)
Tahir Amin, I-MAK (US)
Roberto Ribeiro, Sanofi (BR)
Christopher Ruggerio, WIPO (CH)

Pharma Day

Pharma 3: Big Data and Big Pharma

Tuesday, September 25 , 2018 - 14:00-15:30

Following the panel session at the Sydney Congress on the topic of big data in general, this panel session will focus on the big data uses and implications in the healthcare and pharmaceutical sectors. As the healthcare industry strives to provide more efficient and effective services and products, there are strong commercial and patient-driven incentives to create and share large medical data sets, and to use big data analytics which require new and innovative processing to reveal insights. Specific benefits in the healthcare and pharmaceutical sectors include the use of aggregated data from multiple clinical studies to identify new treatments and new medical uses for existing therapies, data-matching to create tailored treatments, and analysis of real time patient data to monitor the safety and efficacy of treatments. Another aspect is the impact of big data on, and its intersection with, global public health (e.g. treatment of pandemics). With big data comes big challenges. For example, what IP protection should be available? Does improved patient care and access to effective treatments come at the cost of privacy? This panel will explore the the interface between IP law (including patent and copyright), competition law, privacy and data security in the big data revolution.

Panellists:

Martin Klok, V.O. Patents & Trademarks (NL) (Moderator)
Peter Damerell, Powell Gilbert LLP (UK)
Myra McCormack, Johnson & Johnson (US)
Roberto Ribeiro, Sanofi (BR)

Pharma Day

Pharma 4: Biosimilar litigation - dissimilar considerations?

Tuesday, September 25 , 2018 - 16:00-17:30

Medicines made via biotechnology involving living organisms are different and more complex than conventional medicines (small molecule products), as are the issues regarding the acquisition and enforcement of patent rights in respect of biologics and biosimilar products. AIPPI has been closely following developments in this space. A panel session at the Milan Congress (2016) focused on the patent / regulatory interface and the various approaches taken by regulatory agencies in different jurisdictions to marketing approval (registration) for these products. A panel session at the Sydney Congress (2017) considered the relief that may be available when innovators compete and infringement is found. This panel session will focus on aspects of the enforcement of patent rights in biosimilar / biological products, and will consider issues including:

How the courts assess claims to biologics / biosimilars
The challenges for enforcing therapeutic antibody claims
How the assessment of the written description and/or enablement issues influences courts
The differences that arise in the litigation of claims to biosimilars / biologics as compared to litigation involving small molecule products, including the types of remedies available to a successful litigant.

Panellists:

Manisha A. Desai, UCB Pharma (US) (Moderator)
Jesús Sepúlveda, Clarke, Modet & Cº México (MX)
Mark Stewart, Eli Lilly (US)
Neil Trueman, Mundipharma (UK)

Lunch Sessions

Lunch 1: Trademarks, morality and “The Band Who Must Not Be Named”

Monday, September 24 , 2018 - 12:30-14:00

What's in a name? This lunch session will explore that question by means of the fascinating journey of the world's only all Asian-American dance-rock band to register its name, "The Slants", as a trademark. A band name chosen to undercut racial slurs to which band members had been subjected was deemed by the USPTO to be offensive or disparaging to people of Asian descent. Tensions between views of what speech may offend others and the right to free speech were played out as the case progressed through the Trademark Trial and Appeal Board to the Federal Appeals Circuit. Ultimately, the US Supreme Court unanimously ruled that the "disparagement clause" relied upon to deny trademark registration was unconstitutional. Back by popular demand, following his participation in a panel session at the AIPPI Congress in Sydney, "The Slants" founder, Simon Tam, will share the story of "The Band Who Must Not Be Named". This session will not only feature Simon's reflections on the IP system as a result of this very personal experience, but a musical experience for all: Simon will be joined by his band members to perform at the session.

Panellists:

Sarah Matheson, Allens (AU) (Moderator)
Simon Tam, "The Slants" (US)
Joe Jiang, "The Slants" (US)
Kenshin Shima, "The Slants" (US)

Lunch Sessions

Lunch 2: Briefing: recent developments in IP5 cooperation

Tuesday, September 25 , 2018 - 12:30-14:00

The IP5 is a forum of the five largest IP Offices, the members of which are the European Patent Office and the Patent Offices of Japan, Korea, China and the US. The vision is to eliminate unnecessary duplication of work amongst the offices, enhancement of patent examination efficiency and quality, and guarantee of the stability of patent rights. To this end, the IP5 Offices have set up three Working Groups dealing with classification, Global Dossier and patent information, and work-sharing and quality, in addition to exploring harmonization of their respective practices and procedures. Consultation with industry is also a key feature, the success of the Global Dossier Task Force having prompted the recent establishment of the IP5 Industry Consultation Group (ICG) to formalize the cooperation between the IP5 and industry representatives. In February this year, the ICG met in Tokyo. Discussions included the work of the IP5 Patent Harmonization Expert Panel (PHEP), the PCT Collaborative Search and Examination (CS&E) Pilot Programme and a potential new stage of work sharing. This briefing will feature representatives from the IP5 Offices to provide an update on the important work being undertaken across the full scope of the vision of IP5 cooperation.

Panellists:

Jonathan Osha, AIPPI (US) (Moderator)
Maria Holtmann, USPTO (US)
Susumu Iwasaki, JPO (JP)
Bo Li, CNIPA (CN)
Seong-Joon Park, KIPO (KR)
Panos Rigopoulos, EPO (DE)

Lunch Sessions

Lunch 3: Blockchain and cryptocurrencies - all you need to know

Wednesday, September 26 , 2018 - 12:30-14:00

Blockchain technology is in increasing use for a growing list of technologies, but there are still relatively few practical implementations. Moreover, there is a huge amount of propaganda as to how blockchain operates and what it might achieve. To date, cryptocurrencies have been the main users of blockchain, resulting in significant interest from financial institutions and increased scrutiny by regulators and governments. IP issues surrounding blockchain have been relatively unexplored, in part perhaps due to a lack of awareness and understanding. This lunch session aims to improve the IP practitioner’s understanding of both blockchain generally and cryptocurrencies. There will be a knowledgeable speaker on each topic. The speakers’ presentations are intended to be readily digestible for those with no working knowledge whatsoever – a user guide to the key concepts - whilst also dealing with some common misconceptions. A moderator will explore certain IP issues with the speakers, and there will a question and answer session to stimulate some thought-provoking debate.

Panellists:

Ari Laakkonen, AIPPI (UK) (Moderator)
Paolo Cioppa, R3 (US)
John Lee, Bunz (CA)
Fraser Rowand, Rowand (CA)
Calum Smyth, Barclays Bank Plc (UK)

Other Plenary Sessions

Plenary Session for proposed Resolution (1): Standing Committee on Patens: Inventor remuneration

Sunday, September 23 , 2018 - 17:30-19:00

This study concerns the issue of remuneration for employee inventors for inventions made in the course of their employment. In some countries, employer rights to employee inventions are regulated by national laws. 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. Other countries have no such requirements. This creates a complex compliance obligation for international organizations and an unclear compensation regime for inventors. 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. The Standing Committee on Patents has, through two questionnaires, collected information from AIPPI’s National and Regional Groups on issues relating to compensating employee inventors of multinational inventions. The key focus is how companies should deal with inventions made by inventors in different countries with differing remuneration laws. Through these cumulative studies, AIPPI aims to formulate a position on current and important issues for multinational inventions, as they affect both employee inventors and their employers.

Summary Report

Responsible Reporter:

First Deputy Reporter General: Jonathan P. OSHA

Chair: Koen M.L. BIJVANK (NL)

Vice Chair: Alain GALLOCHAT (FR)

Secretary: Andrew T. MEUNIER (US)

Other Plenary Sessions

Plenary Session for proposed Resolution (2): Standing Committee on Pharma & Biotechnology: Post filing data

Monday, September 24 , 2018 - 09:00-10:30

The Patent Cooperation Treaty allows taking into account of “any additional documents considered to be relevant in a particular case” (Art 33(6) PCT). In line with this, many patent offices allow applicants to provide additional evidence during prosecution, which may help to establish the inventive character of an invention. Although this practice may be applied in any technological field, it is particularly important in the field of biotechnology and pharmaceuticals, where early filing is often important to secure investment for expensive development work. Patents require filing before commencing the clinical trials which are necessary to safeguard the interest of public health. Patents may therefore be filed with too little supporting data. However, if filed too late, disclosures of research results may already have occurred. The Standing Committee on Pharma and Biotechnology conducted a survey which concluded that the global practice regarding the acceptability of post-filing data in support of inventive step varies considerably across jurisdictions. Following that survey, the Committee published a Position Paper which concluded that the current practice hampers innovation in the pharma and biotechnology field. The Paper recommended a harmonized practice to allow consideration of post-filing data in the assessment of inventive step, particularly if such data elaborates on effects already apparent from the application or patent. On the basis of that Paper, the Committee has proposed a Resolution for adoption at the Cancun Congress. Responsible Reporter:

First Deputy Reporter General: Ralph NACK

Chair: John C. TODARO (US)

Vice Chair: Charles Aaron BOULAKIA (CA)

Secretary: Martin KLOK (NL)

Other Plenary Sessions

Plenary Session for proposed Resolution (3): Standing Committee on Enforcement: HCCH - Judgements Project

Monday, September 24 , 2018 - 11:00-12:30