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Articles & Case Notes:
- Canada Announces Measures to Speed Up Trademark Examination
- Australian court rules that artificial intelligence can be an inventor
- India: Trademark Applications Cross the 5 Million Mark!
- Patent box for Australia
- Intellectual Property in the UK following Brexit
- A union of French traditional cheese producers contributes to European law on protected geographical designations and indications
- Anti-Enforcement Injunction by Indian Court Follows Anti-Suit Injunction by Chinese Court
- Establishment and Implementation of a Patent Linkage System in China
- The Madras Bar Association in India raises concerns about the Tribunals Reforms Ordinance
- United Kingdom’s Court of Appeal refuses to depart from CJEU jurisprudence on communication to the public: TuneIn v Warner Music
- Guest news: 2021 European Inventor Award Winners Announced
- Will a Japanese version of Amicus Brief work well for Patent Litigation?
- PCT: Italy has opened the National Route
- PCT filings during the first year of the COVID-19 pandemic continue to grow – but for how long?
AIPPI National and Regional News:
- The AIPPI French Group held a life sciences webinar
- AIPPI Poland takes a stand on the recent personnel changes at the IP court in Warsaw
- AIPPI CA-Caribbean Regional Group - news from Honduras
- Andean decision on the common regime
- Young AIPPI Members (YAM): A Call to Connect!
- The UAE Cabinet approves accession to the Madrid Protocol system
- Annual IP-NGO Coordination Meeting
- News from the Dominican Republic and the Caribbean
- AIPPI Italian Group's exploration of the usefulness of mediation in IP dispute resolution
- The First Ever Patent Congress in Russia
The Japanese Group is pleased to inform you that the May 2021 issue (Vol 46, No.3) of the Japanese Group's Journal "A.I.P.P.I." is now available to all AIPPI members.
Please sign in to the “Membership Portal” on the AIPPI website and visit “Member Offers” to read the current and past editions of the journals.
Since 1965, the Japanese Group has been publishing its bimonthly journal "A.I.P.P.I." in English for the purpose of disseminating information on the Japanese intellectual property system to the foreign countries.
AIPPI members can read the entire issue online (not available for download or print).
We hope that many AIPPI members around the world will find it interesting.
Back issues are also available to read in the Members Area of the AIPPI website.
Masatoshi ABE, AIPPI JAPAN
By Anthony Prenol and Antonio Turco of CPST Intellectual Property.
In recent years, the length of time that it takes the Canadian Intellectual Property Office (“CIPO”) to examine a trademark application has grown dramatically, so much so that it now typically takes more than 2 years after the filing of an application for CIPO to examine it. In order to address its steadily-worsening backlog, CIPO has announced some changes, effective as of May 3, that it hopes will speed up the process and provide some relief to applicants who are suffering prejudice owing to CIPO’s delays.
It is now possible for an applicant to request expedited examination of its trademark application. Such a request must be supported by an affidavit or statutory declaration establishing that one or more of the following criteria are met:
- a court action is underway, or expected, in Canada with respect to the applicant’s trademark in association with the goods and/or services listed in its application;
- the applicant is in the process of combating counterfeit goods at the Canadian border with respect to the applicant’s trademark in association with the goods and/or services in its trademark application;
- the applicant requires a registration in order to protect its intellectual property rights from being severely disadvantaged in online marketplaces; or
- the applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline, following a request by a foreign intellectual property office.
There is no requirement that an application be pending for any particular period of time before expedited examination can be sought. For example, it is possible for a trademark owner to file such a request in respect of a new application.
Goods and services descriptions
CIPO has noted that applications that designate the goods and services using CIPO’s pre-approved list will be examined more quickly than applications that do not use this option.
Fewer examination reports prior to refusal
CIPO has also announced its intention to reduce the number of reports issued by examiners prior to final refusal. In order to achieve this goal, where an examiner has responded to a particular issue raised by an applicant, and the applicant subsequently submits further evidence on the same issue that is not persuasive on the examiner, CIPO will address the issue by way of a final decision to refuse the application rather than issuing a further examiner’s report.
In view of this change in practice, CIPO is encouraging applicants to advance all of their arguments in response to an examiner’s report at the first opportunity rather than in a piecemeal manner.
By Richard Hamer, Lauren John & Alexandra Moloney, of Allens, Australia
Can an artificial intelligence (AI) system be named the inventor of a patent? An Australian court says ‘yes’. The decision in Thaler v Commissioner of Patents  FCA 879 is the first judicial determination in the world in favour of AI systems being named as inventors of a patent. The availability of patent protection for AI-generated inventions is a vexed and controversial issue. As AI is increasingly contributing to research and development efforts, the decision will have significant ramifications for stakeholders across a wide range of industries.
The inventive capacity of AI systems continues to evolve, raising significant philosophical and legal questions. Should inventions generated by AI be patentable? Who should be designated as the inventor of such inventions? Who should own any resulting patents?
For the first time in the world, Justice Beach of the Federal Court of Australia has answered the key legal question in favour of permitting AI inventors. The decision in Thaler v Commissioner of Patents  FCA 879 means that an AI system can be named as the inventor on a patent application. However, a non-human inventor cannot be an applicant or grantee of a patent – only a natural person or corporation can.
Dr Stephen Thaler is the inventor of the Device for Autonomous Bootstrapping of Unified Sentience or DABUS. Dr Thaler built DABUS to generate new ideas and determine the most novel or valuable. DABUS conceived an improved beverage container and ‘neural flame’ for search-and-rescue operations. Dr Thaler filed a patent application for those inventions, which designated the inventor as DABUS.
The Commissioner of Patents determined that the patent application had lapsed because it failed to name a human inventor. Dr Thaler sought judicial review of that decision. Nobody suggested that DABUS was a person who should be the owner of the patent; rather, it was argued that Dr Thaler was entitled to be granted a patent in relation to the invention made by DABUS.
Unlike some other jurisdictions, the Patents Act 1990 (Cth) does not define the term ‘inventor’. Rather, the term is to have its ordinary meaning.
The Commissioner’s primary contention was that the ordinary meaning of ‘inventor’, as set out in various dictionary definitions, is inherently human.
However, Justice Beach disagreed, finding that the ordinary meaning of ‘inventor’ does not exclude non-humans. The term ‘inventor’ is an agent noun. Like ‘computer’ or ‘dishwasher’, it refers to the agent that does the act denoted by the verb to which the suffix ‘-or’ or ‘-er’ is appended. It is not limited to a human agent.
Justice Beach also considered that recognising the ordinary meaning of inventor as not excluding non-human inventors is consistent with the stated objects of the Act, being the promotion of technological innovation and the dissemination of technology, whether generated by a human or not.
Finally, Justice Beach found that AI as inventors is not inconsistent with the Act, particularly the provision of the Act which defines who may be granted a patent. At the formalities stage, the only requirement is that the inventor be named, and his Honour considered that a valid application had been filed, as the name of an inventor can be a non-human. The question whether Dr Thaler is entitled to be the owner of the patent is a question for another day. However, Justice Beach accepted that, in principle, Dr Thaler is capable of being entitled to be granted a patent. It did not matter that an AI system cannot legally assign rights in an invention to the patent application. This is because the relevant provision in the Act extends beyond assignments to encompass other means by which an interest may be conferred, and so Dr Thaler could derive title to the invention from DABUS through his possession of the invention, combined with his ownership and control of DABUS.
The Australian decision follows the recent grant of a South African patent naming DABUS as the inventor. However, those cases stand in contrast to the decisions of courts and Patent Offices in other jurisdictions such as the UK, Europe and the US, where equivalent patent applications have been filed but rejected because they name a non-human inventor.
The decision will be of interest for many industries, such as the pharmaceutical industry where AI is becoming an important tool utilised to achieve effective, cheaper and quicker drug discovery.
The decision may be appealed.
By Mr. Vikrant Rana of S.S. Rana & Co.
We are thrilled to share the news that the number of trademark applications filed in India has crossed the 5 million mark!
The trademark application numbered the historic 5,000,000, was filed on June 10, 2021, in the Indian Trademark Registry under:
Trademark Filing Trends in India
According to the latest Report released by the Indian Trademark Registry, during the period 2018-2019, a total of 3,23,798 trademark applications were filed with the Indian Trademark Registry. The number of trademark applications examined were more than applications filed during this period and pendency in examination of trademark applications was brought down to less than a month. The number of trademark registrations also reflected an increase of 5.3%.
Out of a total of 323,798 trademark applications filed with the Registry; the number of applications filed by foreign applicants during the year 2018-2019 was 13,682. The top filers are:
India is drastically transforming and the aforementioned figures are a testimony of the same. More and more IP intensive companies and industries are emerging each day, and now even start-ups in India have commenced IP filings and are understanding the substance of IP protection.
A recent Report released by the Department for Promotion of Industry and Internal Trade (DPIIT), Ministry of Commerce and Industry, published figures indicating the number of patents filed by start-ups over the past few years and the same is illustrated below:
These statistics showcase a gradual increase in patent filings by start-ups every year. The Government of India, through its various initiatives like the Start-up India Campaign and National IPR Policy, has floated schemes and enacted legislative amendments which have made IP filings conducive by entities in India.
By Tommy Chen, Lauren John & Tony Shaw, of Allens, Australia.
The Australian federal government has announced funding for a 'patent box' tax incentive scheme. The government has pledged just over AUD 200 million for the scheme, and it will aim to spur investment in medical and biotech innovation in Australia. Income derived from new Australian medical and biotech patents, where the patented technology derives from research and development (R&D) that took place in Australia, will be taxed at a concessional tax rate of 17%. This is significantly lower than the 30% standard corporate income tax rate, or the 25% rate for small and medium enterprises.
The new scheme was announced as part of the government budget on 11 May 2021. The new 'patent box' scheme is expected to apply from 1 July 2022, and full details have not yet been announced. However, the government has announced that it will be available for granted patents that are filed after the budget announcement date (11 May 2021). Notably, it will not only apply to standard patents, but also to Australian 'innovation patents' (which are akin to petty patents or utility models in other countries). The innovation patent system is due to be abolished, but innovation patents can still be filed until 25 August 2021, and may be a useful way to access the 'patent box' scheme once it becomes available.
The announcement anticipates that a consultation process will be undertaken as to the detailed implementation of the scheme.
The 'patent box' is similar to concessional tax regimes relating to IP which have been adopted by a number of countries, particularly in Europe, over several decades. Concerns about how such 'IP regimes' operate in recent years led to discussions at the international level. This culminated in a series of agreements at the G20 and OECD level, and reforms to a number of existing IP regimes, notably the Irish scheme (the oldest) and more recently the UK scheme.
The Australian government has announced that the proposed patent box scheme will be consistent with the OECD's guidelines on IP regimes. This would include the 'nexus approach' endorsed by the OECD (which requires a link between the income benefiting from the IP regime and the extent to which the taxpayer has undertaken the underlying R&D). This means that the amount of income from the Australian patent which is eligible for the concessional tax rate would be a function of the expenditure on activities conducted in Australia that contributed to development of the patent technology. It is also expected that the concessional tax rate will only apply to income derived directly from the patents. Other income related to exploitation of the technology, such as manufacturing and branding, will continue to be taxed at the standard rate.
By limiting the qualifying R&D to activities that took place in Australia, the patent box may incentivise businesses to invest in R&D activities in Australia, and to relocate R&D functions to Australia. Further, because it only applies to income derived from Australian patents, it is designed to encourage businesses to file and maintain Australian patents that cover innovations derived from their R&D activities. More broadly, the patent box is intended to create jobs and drive commercialisation of innovation in Australia. However, unlike similar regimes in many other countries, the announced 'patent box' regime will, at least initially, be narrowly focused on the medical and biotechnology fields. The government has however stated that there is potential for the scheme to be expanded to other sectors in future.
By Edward Cronan, of Hogarth Chambers, London, United Kingdom.
The UK and European legal community continue to adjust to the consequences of the new legal order in Europe following Brexit. The initial administrative tasks in relation to the duplication of registers of registered rights (trade marks and community registered designs) by the UKIPO appear to have been successful. Rightsholders are continuing to adapt to changes in the rules in relation to exhaustion, affecting parallel imports, and also changes to the jurisdictional regime.
The UK Courts have shown preliminary signs that they are unlikely to depart from EU law in order to return to pre-existing UK legal approaches, in particular in a recent decision by the Court of Appeal in relation to copyright law. In patents, it is business as usual for UK and EU practitioners. However, for Supplementary Protection Certificates (“SPCs”) the regulatory divergence between Northern Ireland and the remainder of the UK has created an additional administrative burden arising from the bifurcation of the UK regime for marketing authorisations.
The Legal Position
The UK’s legal commitments fall roughly into three categories following Brexit:
- First, there are treaty commitments such as those in relation to jurisdiction. To the extent necessary these have been replicated or amended in the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (link) (References below to Articles are references to Articles of this agreement).
- Second, there is EU-derived domestic legislation. EU laws, in particular directives, which the UK implemented into domestic law, remain part of UK domestic law and have the same effect as prior to the UK’s departure from the EU (see Section 2 of the European Union (Withdrawal) Act 2018 (link)).
- Third, there is directly applicable EU legislation, including Regulations, that has been incorporated into UK law on and after the UK’s exit from the European Union (see Section 3 of the European Union (Withdrawal) Act 2018.
The case law of the EU courts is retained as effective in the UK if effective at the date of exit; however, EU case law after that date is only something that the UK court can “have regard to … so far as it is relevant to any matter before the court or tribunal” (see section 6 of the European Union (Withdrawal) Act 2018)
The Court of Appeal for England and Wales in the UK has been asked to depart from retained EU case law in relation to EU-derived domestic legislation on copyright and has declined to do so. The issue was considered in the case of TuneIn v Warner Music  EWCA Civ 441 (link).
From 1 January 2021, EU and international trade marks designating the EU no longer had effect in the UK. Comparable marks have been created on the UK register for EU trade marks and international trade marks designating the EU. The former have been prefixed with the code “UK008” and the latter with “UK009”. These can be accessed on the UK government portal at https://trademarks.ipo.gov.uk/ipo-tmcase
Pending applications with the EUIPO were not transferred to the UK register, though an applicant can claim priority from such an application at the UKIPO until 30 September 2021. Pending invalidation actions at the EUIPO, as of 31 December 2020, will continue to invalidate any EU trade mark transferred on to the UK register, unless the grounds for cancelling the mark do not apply to the UK (for example because they rely on a national right in another EU member state, even if a comparable national right also exists in the UK). It is necessary to notify the UKIPO of the cancellation by the EUIPO using a cancellation notice.
For EU marks moved to the UK register, the issues of non-use and the reputation of the mark will be assessed on an EU-wide basis up to 31 January 2021, and on a UK-only basis after that date. Unwanted marks on the UK register are therefore more likely to lapse for non-payment of fees than to be revoked for non-use.
Registered Community designs and unregistered community designs no longer exist in the UK. However, existing rights of either kind have been automatically replaced by equivalent UK rights. These can be identified on the government register at https://www.registered-design.service.gov.uk/find/. Around 700,000 community registered designs have been transferred to the UK register with the prefix “009”.
Pending Community Registered Design registrations with the EUIPO have not been transferred, though an applicant can claim priority from such an application at the UKIPO until 30 September 2021. Pending invalidation actions at the EUIPO, as of 31 December 2020, will continue to invalidate any Community Registered Designs transferred on to the UK register, unless the grounds for objection do not apply to the UK. It is necessary to notify the UKIPO of the cancellation by the EUIPO using an invalidation notice.
For further details see the UK government guidance here.
Leaving the EU has not affected the operation of the UK patent system in respect of either GB patents, applied for through the UKIPO, or European patents designating the UK.
UK legislation now incorporates EU law in relation to SPCs. While UK SPCs that were granted prior to 1 January 2021 will continue to be valid throughout the UK, the position after that date is complicated by the status of Northern Ireland. Northern Ireland has remained in the EU regulatory sphere in respect of the regulation of medicines. Therefore, since 1 January 2021, marketing authorisations (MAs) for medicines may relate to Great Britain (i.e. England, Wales and Scotland: UKMA(GB)), Northern Ireland separately (UKMA(NI)), or the UK as a whole (GB + NI together: UKMA(UK)).
Under the Supplementary Protection Certificates (Amendment) (EU Exit) Regulations 2020 applicants can file for a UK SPC using a UKMA(UK), a UKMA(GB) or a UKMA(NI). However, the effect of the relevant SPC will only cover the parts of the UK covered by the associated marketing authorisation at the date the SPC takes effect.
Any goods sold in the EEA with the rightsholder’s permission will continue to cause exhaustion of the rightsholder’s rights in respect of the UK. However, the reverse is not true. Sale of goods in the UK with the rightsholder’s permission does not entail a freedom from suit by the rightsholder if those goods are imported into the EEA. For further information, please see the UKIPO guidelines on Exhaustion.
Jurisdiction and enforcement of judgments
The common law has now replaced the Brussels I Regulation (recast) in respect of jurisdictional issues between the UK and the member states of the EU. However, there have not yet been any intellectual property cases where the distinction has been material. In cases where proceedings were initiated prior to the UK’s departure from the EU, the Courts have continued to apply the provisions of the Brussels Regulation, notwithstanding that the UK will not be a signatory to the regulation by the time judgment is delivered, see for example TOT v Vodafone  EWHC 46 (Pat) (link). Under the transitional provisions of Article 67 judgments delivered in such cases will remain enforceable in the EU.
By Tougane Loumeau, AIPPI (France) Co-Group Reporter. Lawyer at Gide, Paris, France.
On 14 April 2021, the French Supreme Court issued its decision in a long-standing case concerning the protection of morbier, a French cheese named after a village in the Jura mountains region. Morbier cheese benefits from the European ‘Protected designation of origin’ (PDO) regime, which protects agricultural products whose qualities are specifically and strongly linked to their area of production, against appropriation for similar products that do not comply with the specification for the PDO. The case gave rise to a reference for a preliminary ruling to the EU Court of Justice (CJEU), on whether PDO protection may cover the shape and appearance of a product.
French Supreme Court (Cour de cassation), 14 April 2021, No. 17-25.822; CJEU, 17 December 2020, C-490/19, ECLI:EU:C:2020:1043
Regulation (EU) No 1151/2012 of 21 November 2012 on quality schemes for agricultural products and foodstuffs (hereafter ‘the PDO/PGI Regulation’) establishes a protective regime for PDOs and for protected geographical indications (PGIs).
Morbier cheese has enjoyed a PDO since the year 2000. As noted in the specification, it must be produced inside a given geographical area, it is made of raw cow’s milk and features a black line, made of vegetable carbon, which divides the cheese horizontally (as seen in the picture).
Prior to the registration of morbier as a PDO, some operators located outside the geographical reference area produced so-called morbier cheese, sometimes with pasteurized milk. This had been the case of the defendant Fromagère du Livradois, since 1979. As of the expiry in 2007, of a transitional period, Fromagère du Livradois had to cease using the name ‘morbier’ and renamed its cheese ‘Montboissié du Haut Livradois’. Nevertheless, it continued using the morbier shape and appearance for its own cheese and in 2008, it renewed its US trademark ‘Morbier du Haut-Livradois’, which was later withdrawn.
In 2013, the Syndicat de défense du fromage Morbier, an association in charge of defending the interests of morbier cheese producers, launched a lawsuit against the defendant before the Paris tribunal, notably on the alleged violation of the PDO/PDI regulation.
Both the Tribunal and the Court of Appeal dismissed the action. More specifically, the Court of Appeal held that PDO/PGI legislation aims to protect not the appearance or features of a product as described in its specification, but its name, and therefore does not prohibit a product being made using the same techniques as those set out in the standards applicable to the geographical indication.
This finding was based on the circumstance that article 13(1) of the Regulation reads as follows:
‘Registered names shall be protected against:
(a) any direct or indirect commercial use of a registered name in respect of products not covered by the registration in so far as those products are comparable to the products registered under that name or in so far as using the name exploits the reputation of the protected name;
(b) any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated or accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation” or similar;
(c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin;
(d) any other practice liable to mislead the consumer as to the true origin of the product’.
The Syndicat contested this point of law and appealed to the French Supreme Court, who decided, in 2019, to refer the point to the CJEU for a preliminary ruling.
In a judgment of 17 December 2020, the CJEU ruled that Article 13(1) is not limited to prohibiting the use of the registered name itself, but has a wider scope, and that it must be interpreted as prohibiting the reproduction of the shape or appearance characterising a product covered by a registered name where that reproduction is liable to lead the consumer to believe that the product in question is covered by that registered name. The assessment of whether such reproduction may mislead the European consumer, who is reasonably well informed and reasonably observant and circumspect, must take into account all the relevant factors in the case.
In view of the CJEU ruling, the French Supreme Court reversed the judgment of the Paris Court of appeal, on the ground that the latter should have investigated whether the ‘cinder line’ constituted a particularly important and distinctive feature of morbier cheese, and in the affirmative, whether copying such line, combined with all the other relevant factors of the case, was liable to mislead the consumer as to the true origin of the product.
On the other hand, the Cour de cassation rejected the Syndicat’s contention that by itself, the renewal of the US trademark infringed the Syndicat’s rights. The court held that the mere renewal of a US trademark can have no impact on European consumers and therefore does not amount to infringement of the PDO.
By Mr. Ashwani Balayan, of ALG India Law Offices LLP.
In the matter of Interdigital Technology Corporation and Ors. v. Xiaomi Corporation and Ors. [CS(COMM) 295/2020], the High Court of Delhi [Hari Shankar, J.] in India, on May 3, 2021 granted an anti-enforcement injunction order against the defendants - Xiaomi Corporation and Ors. (Xiaomi), restraining them from enforcing in India the anti-suit injunction obtained by them from a court in Wuhan in China against the plaintiffs - Interdigital Technology Corporation and Ors. (Interdigital). This is a Case Note of the aforementioned order.
Interdigital alleges in its Indian lawsuit that the cellular handsets, manufactured by Xiaomi are compliant with 3G and 4G standards, which make use of the technology contained in the SEPs (Standard Essential Patents) held by Interdigital in India.
Xiaomi has sought determination of global royalty rates on FRAND (Fair, Reasonable and Non-Discriminatory) terms from the Chinese court. Interdigital has responded by its patent infringement suit before the Indian court, seeking, in the alternative, FRAND terms from it.
In its Chinese lawsuit, Xiaomi filed an application for and obtained an anti-suit injunction to restrain Interdigital from pursuing its Indian lawsuit. The Chinese court also imposed a fine of Chinese RMB 1 million yuan per day on Interdigital for violation of the anti-suit injunction.
In its Indian lawsuit, in response, Interdigital filed an interim application seeking, inter alia, an injunction to bar Xiaomi from enforcing the Chinese court’s anti-suit order and fine, until Interdigital’s Indian lawsuit gets tried and decided.
The Indian court considered Interdigital’s application on the legal test of whether three criteria were met:
- Defendant, who is sought to be injuncted, is amenable to the jurisdiction of the Indian court issuing the injunction;
- Refusal of the prayer for injunction would result in defeating the ends of justice and perpetuating injustice;
- Principle of comity of courts, pre-eminent in private international law, has to be scrupulously borne in mind.
These criteria were borrowed by the Indian court from the judgment  of a superior Indian court, the Supreme Court of India, on anti-suit injunctions. The law declared by the Indian Supreme Court is binding on other Indian courts such as the High Court of Delhi which applied the three criteria.
Being provisionally satisfied that each of the three criteria were met, the Indian court, on October 9, 2020, held that prima facie, a case exists for grant of ad-interim relief. The Indian Court clarified, as is done while passing ad-interim orders, that its observations and findings were only ad-interim in nature and would not be treated as binding even on itself when it would later take up Interdigital’s interim application kept pending for a final hearing.
Interdigital on May 3, 2021 obtained, vide the Indian court order which is the subject matter of this Case Note, a confirmation from the Indian court of its earlier ad-interim order of October 9, 2020. This confirmation is now slated to operate till the Indian court eventually tries and decides Interdigital’s lawsuit itself. This time, however, the Indian court has proceeded differently from before in identifying and applying the criteria for deciding on the application. This time, while disposing of Interdigital’s interim application, the Indian court has applied the ‘troika test’ for the granting of interim injunctions more generally, which is judicially well established in India. This legal test requires satisfaction of these three criteria:
- Prima-facie case;
- Balance of convenience; and
- Irreparable losses.
In finding these three criteria as satisfied, the Indian court has found it notable that Xiaomi did not disclose to the Indian court about the anti-suit injunction application filed by it in the Chinese Court. As per the Indian court, this amounts to the “fraud on the [Indian] Court as well as material concealment”, which is sufficient even as a sole ground for the granting of an injunction.
The Indian court also emphasized the fact that since patent rights are territorial in nature , “perceived infringement of Indian patents can, indisputably, be challenged only in India”. It accordingly found that the order passed by the Chinese court entrenched on the lawful invocation of remedies under Indian law. As per the Indian court “no consideration of comity can militate against grant of relief in such a case”. These observations and findings do not, as is usual, foreclose these issues when the lawsuit itself eventually goes up for trial and disposal.
The Indian court clarified that this is only an anti-enforcement injunction and not an anti-anti-suit injunction. It observed that referring to "anti-enforcement injunctions" as "anti-anti-suit injunctions” would be “a misnomer”. Recording that Interdigital is not even pressing its prayer for restraining Xiaomi from prosecuting its Chinese lawsuit, the Indian court dwells on the distinction - “there is really no comparison between a prayer for restraining further prosecution of proceedings pending in a foreign Court, with a prayer for restraining execution, against the Indian litigant, of an order passed by a foreign Court.”
This appears to be the first ever example of an anti-enforcement injunction case in India. The Indian court shows an awareness of this by observing that the legal tests which should govern consideration of an application for an anti-execution injunction, as compared to an anti-suit injunction, do not “find any authoritative delineation, at least in any decision of any Indian court...The issue appears, therefore, to be in a sense res integra.”
 Magotteaux Industries Pvt. Ltd. v. AIA Engineering Ltd. 2008 (155) DLT 73 (DB)
By Dr. Fei Kou, of NTD Intellectual Property Attorneys, Beijing, P.R. China.
In the 4th Amendments to the Chinese Patent Law which came into force on 1 June 2021, a patent linkage system was introduced, and industry and IP professionals are all watching and waiting for the implementing regulations of this system. Here are the judicial interpretations and implementing measures.
On 4 July 2021, the National Medical Products Administration (“NMPA”) of China and the China National Intellectual Property Administration (“CNIPA”) jointly released the “Implementing Measures for Early Resolution Mechanism for Drug Patent Disputes (Trial for Implementation)” (hereinafter referred to as the “Patent Linkage Implementing Measures”), which came into effect immediately. On the same day, the NMPA also issued the “Notice for the Implementation of Patent Linkage Implementing Measures (No.46 of 2021)”, confirming that beginning from 4 July 2021, the China Marketed Drug Patent Information Registration Platform (hereinafter referred to as “Patent Registration Platform”) is fully functional.
One day later, the Supreme People’s Court of China issued the “Provisions on Several Issues Concerning the Application of Law in the Trial of Patent Civil Cases Involving Drug Marketing Review and Approval” (hereafter referred to as “Judicial Interpretations”) to provide guidance on the application of the patent linkage provisions set out in the 4th Amendments to the Chinese Patent Law. Simultaneously, the CNIPA issued the “Administrative Adjudication Measures for Early Resolution Mechanisms for Drug Patent Disputes” and the “Notice for Accepting the Cases of Administrative Adjudication for Early Resolution Mechanism for Drug Patent Disputes (No.436 of 2021)”, announcing that the CNIPA is now open to the Administrative Adjudication cases.
To date, the policy and legal portfolios have been all set, which include one Law, one Judicial Interpretation, two Measures, along with one Patent Registration Platform. The patent linkage system is now officially established in China, and is mainly composed of:
- patent information registration for marketed drugs
- patent certification
- a bifurcated adjudication system including both judicial and administrative proceedings
- a 9-month stay of NMPA approval
- a 12-month exclusive period authorized to the first approved generic chemical drug which is also the first to have its successful patent challenge
Three authorities, the NMPA, the CNIPA and the Beijing IP Court will process separately while closely coordinating with one another to deal with the Drug Patent Disputes between the brand-name drug companies and the generic ones. Significantly, patentees in China are allowed to go to court or apply for an administrative ruling when facing a generic drug application that could potentially fall within the scope of its patent right. If the patentees fail to take any actions within a specific time limit, the applicant of the generic drug can go to court or apply for an administrative ruling to determine that the generic drug does not fall within the patent scope.
For chemical drugs, the eligible drug patents in the patent linkage system include patents of API compounds, compositions (containing API), and medical uses. For biologics, the eligible drug patents include patents of sequence structures and medical uses. For Traditional Chinese Medicines, the eligible drug patents include patents of compositions, extracts, and medical uses.
Patents not registered on the Patent Registration Platform cannot be used as the basis for early disputes resolution. In this case, the patentees have to seek dispute resolution after a generic drug has been approved.
By Dr. Mohan Dewan, Principal, RK Dewan & Co. and Adv. Aboli Kherde, Legal Associate, RK Dewan & Co, Pune, India.
The Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021 was promulgated on April 4, 2021. On April 23, 2021, the Madras Bar Association approached the Supreme Court challenging the constitutional validity of the Tribunals Reforms (Rationalization and Conditions of Service) Ordinance, 2021.
Specialisation v. Judicial Power…
…the debate continues
The Ordinance dissolves the Appellate Tribunals formed under, inter alia, the Cinematograph Act, 1952, the Copyright Act 1957, the Customs Act 1962, the Protection of Plant Varieties and Farmers’ Right Act 2001, the Trade Marks Act 1999, the Geographical Indications of Goods, the Patents Act 1970, and transfers their cases to the respective High Courts. It also abolished the Airport Appellate Tribunal. On April 23, 2021, the Madras Bar Association filed a writ petition at the Supreme Court challenging this Ordinance.
IP Takes the Hit:
A glance at the Tribunals that stand disbanded shows that the prosecution procedure under Intellectual Property Laws has taken a direct hit. Consequently, all the IP adjudicatory systems related to Trademarks, Patents, Copyright, Plant Varieties, GI, etc. are impacted by the Ordinance.
Each Intellectual Property Right - Patents, Plant Varieties, Trademarks, GI, etc. requires a certain extent of specialisation for dispute resolution. It is not only the litigants, litigators, or the experts (or the “Person Skilled In The Art” - a term commonly used in patent matters) but also the adjudicating quorums that require a special understanding of the subject matter of the disputes. It is unreasonable to expect a legal luminary to understand the science of semi-conductors or software programming. A common counter to this is the availability of expert opinions at the Court’s disposal. However, expert opinions by themselves can only comment on the subject matter in a technical sense. Contrastingly, what is required is a “technico-legal” adjudication of the matters. For this very reason, different Tribunals, including the Intellectual Property Appellate Board were established, with its quorum requiring Technical Members for the different species of IP, to preside over the proceedings.
Now, with the disbandment of the IPAB, all its cases are to be transferred to the High Courts. Not only is there a want of technical expertise but also an apprehension that the High Courts will again be burdened with cases, which will cause severe delays.
Balance of Powers:
However, the repercussions of this Ordinance are not restricted to their direct impact on prosecutions and litigations in the field of IPR. They are much more deep-rooted. In its contentions, the Madras Bar Association has raised concerns about the Ordinance being unconstitutional. Sections 12 and 13 of the Ordinance also amend Sections 184 and 186 of the Finance Act, dealing with appointments, salaries and allowances, resignation, removal and the other conditions of service of the Chairperson and Members of the Tribunals formed under it. Time and again the Supreme Court has highlighted the significance of the guidelines laid down by it for maintaining balance of powers amongst the executive, legislature and the judiciary and how they should not be ignored or overridden by the Parliament while framing Rules or Ordinances.
From the times of S. P. Sampath Kumar and L. Chandra Kumar, the debate of distribution of judicial power and the need for specialised judicial acumen continues. This Ordinance has only added fuel to the debate. How these dicta affect the current case, remains to be seen.
 S.P. Sampath Kumar v. Union of India (1987) 1 SCC 124
 L. Chandra Kumar v. Union of India, (1997) 3 SCC 261
By Edward Cronan, of Hogarth Chambers, London, United Kingdom. Co-authored by Jack Rigelsford.
The European legal community has been faced with uncertainty caused by the UK’s departure from the EU. One ‘unknown’ has been the extent to which UK law in relation to intellectual property will diverge from EU law following Brexit. In its recent decision in TuneIn Inc v Warner Music UK Limited and Sony Music Entertainment UK Limited  EWCA Civ 441, the Court of Appeal for England and Wales in the UK has rejected arguments that the UK should depart from the CJEU’s copyright jurisprudence on “communication to the public”.
The Defendant, TuneIn, operated an online platform called “TuneIn Radio”, which allowed users in the UK to access around 70,000 music stations from around the world. TuneIn Radio connected the users to third party radio station streams via links, although the user’s screen remained on the TuneIn Radio webpage. The URL of the underlying radio station stream was not obviously visible.
The Claimants, Warner Music and Sony Music, alleged that TuneIn had committed the restricted act of “communication to the public” by allowing access to radio stations from around the world that were not licensed for reproduction in the UK, and that TuneIn had therefore infringed the Claimants’ copyright. The Claimants were successful in the High Court. However, under the European Union (Withdrawal) Act 2018 (the “2018 Act”) the High Court did not have the power to depart from retained EU case law.
In contrast, the Court of Appeal for England and Wales in the UK (Scotland and Northern Ireland having separate courts) does have the power to depart from retained EU case law. The hearing in TuneIn was therefore the first occasion on which any judge in the UK had the power to depart from EU case law on any intellectual property matter.
“Communication to the public”
TuneIn submitted that the Court of Appeal should exercise its power to depart from CJEU case law. TuneIn argued that the UK should depart from retained EU case law on communication to the public, in particular CJEU decisions on hyperlinking including Svensson and GS Media.
The Court of Appeal considered this request under the new post-Brexit legislative framework. This framework gives both the Court of Appeal and the Supreme Court the power to depart from retained EU case law (including decisions such as Svensson and GS Media which were decided while the UK was a member of the EU), but only on the same basis on which the UK court can depart from its own previous decisions (section 6(5) of the 2018 Act). The Court held this was a power to be exercised rarely and sparingly: even if the Court of Appeal would have resolved a prior case differently themselves that is not enough to justify departing from the earlier judgment.
Consequently, Lord Justice Arnold held that the UK should not depart from the CJEU’s jurisprudence in this area. He stated, in reaching this decision, that interpreting the concept of “communication to the public” was problematic due to the lack of legislative guidance and the conflict between the territorial component of copyright and the global nature of the internet. He reasoned, however, that the “CJEU has unrivalled experience in confronting this issue” and “has developed and refined its jurisprudence over time”. He considered that there had been no change in domestic legislation or to the international legislative framework (including the Berne Convention and the WIPO Copyright Treaty) and stated that a departure from the existing jurisprudence would “create considerable legal uncertainty”. The other judges agreed, stating that the courts of states that accede to such international treaties should be striving for ‘harmonious interpretation’ and that departure from retained EU law should only occur where the law is “impeding the proper development of the law or [would] have led to results which were unjust or contrary to public policy”.
In the Court of Appeal’s judgment, regard was also given to the decision of the CJEU in VG Bild, which was only decided after the UK’s departure from the EU. Such judgments do not form part of the retained EU case law. Any UK court is therefore free to diverge from such judgments, but a UK court may nonetheless ‘have regard to’ such judgments under section 6(2) of the 2018 Act. The Court of Appeal held that VG Bild was ‘highly persuasive’: possibly the highest level of respect that can be given to a non-binding decision. In particular, the VG Bild judgment was thought to be persuasive on the basis that it interpreted and built upon the prior CJEU decisions in the retained EU case law. This is a factor that is likely to be applicable in any case where a new CJEU decision applies and interprets EU case law that pre-dates Brexit.
The unanimous decision of the judges of the Court of Appeal to stick with the CJEU’s jurisprudence on the concept of communication to the public shows that any wholesale departure from established CJEU principles remains unlikely. This is particularly so given that the concept of ‘communication to the public’ is one of the more contentious developments in European intellectual property jurisprudence. Critics of the CJEU’s muddled jurisprudence on communication to the public will regret this conservative approach.
Notably, the other judges sitting in the Court of Appeal also distanced themselves from the use of summaries of existing CJEU jurisprudence. Both judges commented that such summaries rarely last for long, with Lady Justice Rose noting that courts and tribunals in the coming years should not feel hindered in referring to new EU case law by the description of pre-existing retained EU law in the judgments of UK courts.
TuneIn Inc v Warner Music UK Limited and Sony Music Entertainment UK Limited  EWCA Civ 441 (Arnold LJ, Rose LJ, Vos MR)
Warner Music UK Ltd and Sony Music Entertainment UK Ltd v TuneIn Inc.  EWHC 2923 (Ch) (Birss J)
Case C-466/12 Svensson v Retriever Sverige AB [EU:C:2014:76]
C-160/15 GS Media BV v Sanoma Media Netherlands BV and Others [EU:C:2016:644]
Case C-392/19 VG Bild-Kunst v Stiftung Preußischer Kulturbesitz [EU:C:2021:181]
The 2021 European Inventor Award has come and gone, and each winner now has a coveted trophy on their shelf. This year's Award ceremony, held for the first time as a digital event, was entirely open to the public, who tuned in from around the world as the winners were revealed. The European Patent Office (EPO) also made a major announcement during the ceremony: the new Young Inventors prize for innovators aged 30 and under.
The laureates of the European Inventor Award 2021 are:
In the Industry category, Per Gisle Djupesland (Norway) was awarded for his nasal drug delivery device. The invention uses the nose's natural form and the patient's breath to improve nasal drug delivery and provide relief for various conditions.
Robert N. Grass (Austria) and Wendelin Stark (Switzerland) were winners in the Research category. The inventors developed a novel method of preserving data - which been converted into genetic code - in tiny glass spheres.
Indian-American inventor Sumita Mitra clinched the trophy in the Non-EPO countries category. Mitra found that nanoclusters could be used in dentistry and developed a technique that produces robust, durable, and aesthetically pleasing fillings.
Swedish inventors Henrik Lindström and Giovanni Fili were winners in the SMEs category. The duo produce a dye-sensitised solar cell using a new electrode material with high conductivity. This cell can be custom printed in almost any shape or colour and can even generate electricity indoors.
In the Lifetime achievement category, German physicist Karl Leo was honoured for his tremendous body of work. Leo advanced organic semiconductors by improving their conductivity through a technique called doping, ushering in a new generation of highly efficient organic light-emitting diode (OLED) displays.
The Popular Prize is only Award decided by the public through an online vote. Gordana Vunjak-Novakovic was the winner in 2021 – the Serbian researcher was nominated for her advances in tissue engineering. In total, the EPO received around 27,000 votes for 15 finalists at this year's Award.
The Award may be over, but you can still experience each incredible moment from the EPO’s first-ever digital ceremony - the full recording is available online.
Nominate an inventor
Nominations for the 2022 edition of the European Inventor Award are now open. EPO invites you to propose an inventor who you think is worthy of a European Inventor Award. You may make a nomination in one of the existing categories as well as the new Young Inventors prize. Details on criteria, eligibility as well as the nomination process are available on the EPO’s website. You can submit a nomination until 1 October 2021.
Young Inventors prize
To inspire the next generation of inventors, the EPO has established the Young Inventors prize. From students to entrepreneurs, the global prize is open to various innovators aged 30 and under and will recognise sustainability-driven initiatives across all technical fields. Unlike the current categories, a granted European patent is not a pre-requisite, and is not limited to individuals with EPO Member State nationality, enabling young innovators around the globe to participate.
By Kozo YABE, of Yuasa and Hara, Tokyo, Japan.
On May 14, 2021, an amendment of the Patent Act and others was finally passed by the Diet. It adopted the Amicus Brief system. This is the first time to install this kind of system whereby the court can call opinions from non-litigant/parties having legal interests in a Japanese civil procedure of litigation, despite a similar practical attempt held during the Apple vs. Samsung case of the IP High Court (Judgment of Heisei 25(Ne) No.10045 case rendered on May 16, 2016). The Amendment was promulgated on May 21, 2021 and will be effective within one year from the date of promulgation as designated by the administrative ordinance.
Even before the 2021 Amendment of the Patent Act and the Utility Model Act adopted a new Amicus Brief system of litigation, a party who had some legal interest in a certain litigation could join the litigation as an intervener assisting either party under the Civil Procedure Code. But other parties who may have had certain views on the conclusion of the litigation did not have any opportunities to place their opinions in the court room of a specific civil litigation unless they were called as witnesses or expert opinion providers by the litigants or the courts in Japan.
Japanese civil procedure, however, has been facing some scenarios which have proven ideal and helpful for judgments, if the judges could know the circumstantial/societal situation of a subject issue even outside of the court room and the litigants. For example, a patent litigation of SEP and FRAND issues always involves discussions about why the subject patent falls into a technically essential category and what are the most fair, reasonable and non-discriminatory conditions for the subject patent and patented products. These issues cannot be easily judged only via the evidence submitted by the parties but necessitates the hearing of information and opinions from players and parties who are concerned in the real market and at the forefront of research & development. That is the reason why the IP High Court encouraged the public to submit their opinions via the counsel of both litigants as to the SEP and FRAND issues disputed between Apple and Samsung. The new Amicus Brief system follows exactly upon this trial at the Apple vs. Samsung case. It was decided that it should be installed into the substantial law of intellectual property of patent and utility models rather than the general rule of the Civil Procedure Code.
The new Amicus Brief system requires a party who wants to submit an opinion as an Amicus Brief to comply with the following conditions (New Art.105-2-11 of the Patent Act):
- It applies only in infringement cases of patent, utility model and their statutory exclusive licensing right (Senyo Jisshiken);
- Either of the litigants can file a petition to call Amicus Briefs which needs approval by a court decision admitting its necessity after hearing the other litigant’s opinion; and
- For admission of evidence, the litigant of the case should review and copy Amicus Briefs as they would like to submit it as written evidence.
As you can see, the new Amicus Brief system still seems to be operated narrowly for patent cases like SEP & FRAND. However, even in other areas of intellectual property, the same system may work, for example when considering the distinctiveness of 3D/Color trademarks. We may recall how efficiently the Amicus Brief system worked on the registrability of color per-se under the U.S. Federal Trademark Act (Lanham Act) in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995). So, we look forward to seeing how the Japanese Amicus Brief system will be developed in the future.
By Ferruccio Postiglione, Member of the AIPPI Standing Committee on IP Office Practice and Procedure.
According to the Ministerial Decree dated 13.11.2019, art. 1, is now possible to enter the Italian phase directly from the Patent Cooperation Treaty (PCT). Prior to the issuance of said Decree, the national route was not possible for Italy. It was necessary to file a European patent application and subsequently validate the European patent in Italy. The possibility to directly enter Italy applies to PCT patent applications filed on or after 1 July 2020, designating or electing Italy. The Italian PTO has issued a Notice (Circolare No. 610; 02-07-2020) clarifying the procedure for entering the Italian phase.
A summary of the procedure is indicated herein below, together with some additional comments.
- Online filing, by the same tool of national applications, can be used;
- In entering Italy: an application for a patent for invention or a utility model can be selected;
- An application number will be generated by the online tool: the first numerical figure is 11 for patents and 12 for utility models;
- An application text (description, claims, abstract and drawing, if any) has to be filed;
- If the filed text is not in the Italian language, a translation into Italian has to be filed within two months from the filing;
- A PoA with a stamp (€20) is required (late filing is admitted);
- Filing fees (€50) must be paid at the filing (fee payment cannot be delayed);
- Claims fees are requested only for claims over the 10th; €45 for each additional claim;
- The subsequent examination procedure is identical to the one applied for national applications;
- Utility models are submitted only to a formal examination; it is underlined that “method claims” and invention related to chemical products in general are not protectable by utility models;
- For patent applications, an Office Action is issued by the Italian PTO wherein the applicant is requested to reply to the objections raised in the Written Opinion attached to the international Search Report;
- A term of not less than two months is fixed by the Office for replying to the Office Action.
- The reply can be avoided if the Written Opinion of the International Search Report is positive for at least one claim.
- The reply may include arguments and amendments.
- The filed reply is only formally analysed and usually patent applications are granted without any additional Office Action.
- However, the Italian PTO has the right to issue further Actions. As an example, an additional Office Action may occur when the inventions are in prima facie related to subject matter excluded from patentability: computer-related inventions, chirurgical methods, therapeutic methods as such, and so on. Very rarely, patent applications are refused.
By Jim Boff, Dietmar Haug and Gastón Richelet of the AIPPI PCT Committee.
On March 2, 2021, WIPO released its 2020 PCT report with data concerning the system´s usage during the past year. The full report can be accesses at Innovation Perseveres: International Patent Filings via WIPO Continued to Grow in 2020 Despite COVID-19 Pandemic
Interestingly, the report indicates that during 2020 PCT applications grew by 4% to reach 275,900 applications – the highest number ever - despite an estimated drop in global GDP of 3.5% during the same year.
In the document´s annexes that can be found in the following link - https://www.wipo.int/export/sites/www/pressroom/en/documents/pr_2021_874_annexes.pdf#page=1 specific details regarding different classification criteria can be found, brief summaries of which, can be found below.
Top 5 PCT filing countries (Annex 1)
According to the report, the top 5 PCT filing countries are the following:
1° China 68.720
2° US 59.230
3° Japan 50.520
4° Korea 20.060
5° Germany 18.643
Other countries that experienced strong growth during the past year are the following: Saudi Arabia (956 applications, +73.2%), Malaysia (255 applications, +26.2%), Chile (262 applications, +17.0%), Singapore (1,278 applications, +14.9%) and Brazil (697 applications, +8.4%).
Impressively, Asia accounts for 53.7% of all PCT activity.
Top 5 PCT applicants (Annex 2)
In terms of applicants, the companies listed below are in the top 5 positions:
1° Huawei Technologies 5.464
2° Samsung Electronics 3.093
3° Mitsubishi Electric Corp. 2.810
4° LG Electronics 2.759
5° Qualcomm Inc. 2.173
The report points out that of the top filers, the one experiencing fastest growth in the number of published applications was LG Electronics (+67.6%) and as a result it moved up from the 10th position in 2019 to the 4th position in 2020.
Top 5 educational institution filers (Annex 3)
The following universities and research institutions are at the top of the list of the main filers in this category:
1° University of California 559
2° MIT 269
3° Shenzhen University 252
4° Tsinghua University 231
5° Zhejiang University 209
Applications by technological field (Annex 4)
The report also includes data regarding the different technological fields to which the filed applications belong. In this case the information is disaggregated within sub technological areas within each field.
Computer technology (9.2% of total) accounted for the largest share of published PCT applications, followed by digital communication (8.3%), medical technology (6.6%), electrical machinery (6.6%), and measurement (4.8%).
Chapter II demands
While the number of PCT applications has been growing in the past years the use of the Chapter II system and the filing of the corresponding demands is showing an opposite trend.
The chart below clearly shows that the percentage of applications in which a Chapter II demand is filed has been steadily decreasing.
While the information included in this last chart is not included in the report mentioned at the beginning of this article, the data can be obtained from WIPO´s Statistics Data Center.
A closer look at statistics
The fact that the annual number of PCT applications filed has continued to grow in the midst of the COVID-19 pandemic may reflect the growth in national filings during 2019 (as most PCT applications claim a national priority).
Looking to monthly statistics one gets a rather different view. The WIPO statistics data center lets one examine monthly filing numbers which move somewhat erratically through the year. The following graph shows for each month indicated, the average number of PCT filings over the preceding 12 months.
This seems to show a steady growth over a long period; followed by an acceleration in 2018/2019; and then a flattening in 2019/2020.
It appears too soon to determine whether the number of PCT filings will revert to its previous long-term growth, notwithstanding the fact that lockdowns and movement restrictions were declared in considerable parts of the globe, or whether COVID-19 will disrupt filings for an extended period. However PCT filing numbers will reflect national filing numbers from the year before.
From an IP5 report https://www.fiveipoffices.org/statistics total filing numbers were variable: China up 6.9%, Japan down 6.3%, Korea up 3.6%, US down 3.9%, EPO down 0.6%.
Vaccines are now available and several countries, especially those having the most important and dynamic innovation hubs, have been able to inoculate important portions of their population.
While we continue to suffer the second and subsequent contagion waves of the COVID-19 pandemic in different parts of the world it will be interesting to see how PCT filings are impacted during the next 12 months; but it is difficult to be optimistic.
Introduction to IP and Genetic Resources: Recent Developments at the International Level
This is the first webinar of a series on genetic resources, and will explore what GRs are, their relevance to Intellectual Property, the competing policy imperatives that form the backdrop to the economic exploitation of genetic resources, the international frameworks that are intended to govern access to and sharing of benefits from the utilisation of GRs, and the practical challenges that lie in the way of their implementation. In particular, integrated rights management for IP and genetic resources as well as requirements of disclosure and prior informed consent are discussed.
The AIPPI French Group held a life sciences webinar
By Laurence Loumes, Plasseraud IP.
The AIPPI French Group held a special webinar focused on hot topics in life sciences in cooperation with LES and ASPI on June 3, 2021. The event attracted over 150 participants.
The first part consisted of a presentation by Brigitte Carion-Taravella (Sanofi) and Cyra Nargolwalla (Plasseraud IP) on the patentability of antibodies and the criteria for fair protection.
The second part was a roundtable discussion on access to vaccines and the role of patents. Anne Charlotte Le Bihan (Bird & Bird LLP) moderated the virtual table composed of Antoine Courgeon (BioNTech), Marcus Dalton (Curevac), Olivier Herbreteau (Sanofi), Pierick Rousseau (EFPIA), and Dora Talvard (LEEM).
Recent Pharma case law was discussed by Thomas Bouvet (Jones Day) and Frédéric Portal (Lavoix) before this engaging and successful event ended.
On 1 July 2020, the long-awaited system of specialized IP courts started operating in Poland. The system was introduced as part of a reform which additionally brought to the Code of Civil Procedure some important new procedures applicable to IP-related disputes, aimed at better alignment of the Polish legal system with the requirements of the EU Enforcement Directive (2004/48/EC). The governmental and parliamentary work on the reform had been supported by various business organisations and professional associations, including the Polish National Group of AIPPI (AIPPI Poland).
The reform introduced special IP divisions at five district courts of first instance (in Warsaw, Poznań, Gdańsk, Lublin and Katowice) and appeal divisions at two courts of second instance (in Warsaw and Poznań). The IP court in Warsaw was entrusted with exclusive jurisdiction over so called technical IP matters, in particular those related to patents, utility models, computer programs and technical know-how. The latter court (i.e. the IP Division of the District Court of Warsaw) was created on the basis of the previously operating EU Trade Marks and Community Designs Division of the District Court of Warsaw, which was the only specialised IP court in Poland before 1 July 2020. The presiding judge of the EU Trade Marks and Community Designs Division was at the same time one of the most experienced and knowledgeable IP judges in Poland and it was natural for that judge to be re-appointed to the transformed IP Division of the District Court of Warsaw, now under new presidency.
In June 2020, i.e. less than one year after launching the new system of IP courts, information was revealed that the ex-presiding judge of the EU Trade Marks and Community Designs Division had been unexpectedly moved to another (non-IP related) division of the District Court of Warsaw for reasons which, most likely, have nothing to do with the judge’s judicial work and its quality. This caused some concern and disappointment among IP practitioners in Poland and triggered reactions such as open letters and public statements. Also AIPPI Poland, as one of the leading associations strongly involved in and supporting the recent reform, decided to take a stand in its position paper dated 22 June 2021.
In said position paper, AIPPI Poland emphasized that such unexpected personnel change at the most important IP court in Poland contradicts the main ideas behind the creation of specialised IP courts, such as formation of highly specialised judicial staff who are fully competent to deal with sophisticated IP matters. This purpose undoubtedly requires long-time work, experience, additional education as well as the personal commitment of individual judges. Therefore, any change in the IP courts’ casting, especially at the very beginning of their operation, must be carefully considered so that it does not undermine the purposefulness of said organisational and personal effort.
AIPPI Poland expressed its concern that this change at the IP court in Warsaw may adversely affect the assessment of the entire reform establishing specialised IP courts in Poland and discourage judges from specialising in the area of IP. Such instability is a disturbing signal not only for judges but also for IP practitioners and business operators. The innovative economy needs an effective, efficient and predictable judicial system for resolution of IP related disputes and this requires the work of experienced and knowledgeable judges representing a broad spectrum of legal views.
AIPPI Poland hopes that its substantive and balanced position – which, despite being focused on the individual situation of one judge, is of a more universal nature – will be taken into account by the Polish decisionmakers responsible for the functioning of the new IP judicial system.
By Blanca Mejia, Spokesperson, AIPPI CA-CARIB.
The Secretary of State in the Offices of the Interior, Justice and Decentralization, and the Orange Economy Commission of Honduras signed a cooperation agreement aimed at producing new policies and regulatory frameworks in various municipalities of the country, in which production stands out, as well as artistic and cultural creations and manifestations.
Through the agreement, Honduras expects to finally propel the orange economy as an economic value-added model that seeks to contribute to the reduction of socioeconomic gaps through a commitment to sectors with great wealth and potential that have not been properly used to date.
The Orange Economy Commission of Honduras was approved by Executive Decree in 2018 in order to promote the development of creative industries. The Commission has been steadily helping local creators and businesses to build in the future a much more profound base of public support.
By Maria del Carmen Arana Courrejolles, National Group Reporter, AIPPI Peru.
Decision 876 of 2021 establishes the common regime of the country brand. The purpose of this regime is the use of the country brand made by the members of the Andean Community: Bolivia, Colombia, Ecuador and Peru to promote their different business sectors as well as their identity and positive image.
By Debbie David, Chairperson of YAC and Samantha Yung, Vice-chairperson of YAC.
The Young AIPPI members Advisory Committee (YAC) was formed to explore more ways to connect with and interact with Young Members throughout the year, through various initiatives and activities that have been planned.
If you are a Young Member (defined as aged 36 or below), or are not quite in this definition but are keen to be involved in the development of Young Members, do read on to find out more and connect with us!
Getting to Know You & Staying Connected
The YAC would love to get to know you, and to stay connected with you! If you would like to receive our updates and emails, please click here to share your details, so we can get to know you a little bit better and gain insights into how we can serve you better. If you know anyone who will be interested in joining AIPPI as a Young Member (defined as aged 36 or below), to enjoy 50% discount on the regular membership fee and also participate in our YAM network, please do invite them by either sending us their contact details or ask them to reach out to us at firstname.lastname@example.org.
2021 AIPPI Essay Competition
We are delighted to be involved with the 2021 AIPPI Essay Competition. For this year, we are excited to have an added video category, so you have the option of a written essay or a video submission for the selected topic. For details about the competition and the prizes, please refer to the dedicated page at https://aippi.org/news/aippi-essay-prize/.
2021 AIPPI Congress
Don’t forget to mark your calendars for the 2021 Congress, which will be taking place online from 15 – 22 October. As always, a highlight for us will be our Young AIPPI Forum (YAF), which is an excellent place to learn something new and connect with like-minded people. The YAF will take place prior to the Congress on 12 October and is titled ‘The Resilient Professional’. We look forward to seeing you there! We also have two IP Cafés during the Congress that are tailored towards our young members, so do look out for them!
Be part of our new YAM network! Enjoy some of the many opportunities we will have to meet you!
By Munir Suboh, of the AIPPI UAE Communications Committee.
The UAE recently announced its decision to join the Madrid Protocol for trademark registration and they plan to complete the process by the end of 2021/early 2022. This accession has been discussed throughout the years and there were many different views on the cons and pros to enter the system.
As the UAE continues to improve its Intellectual Property practices, the authorities decided to join the Madrid Protocol as being an optional international trademark administrative system that permits a unitary filing with legal effect in over 120 different member countries. This should reduce costs and the administrative burden for applicants and should enable them to broaden protection of their rights throughout the world, as per their designated countries. At present, only Bahrain and Oman are part of the Madrid Protocol in the Cooperation Council for the Arab States of the Persian Gulf (GCC).
In order to implement the Madrid Protocol, the UAE Trademark Office will need to submit its admission papers to the management of Madrid System and also issue implementing regulations and clarification on how this will work within the realms of the existing trademark regulations in UAE.
We await further updates in this regard, in particular concerning the recognition and application of the Arabic language within the Madrid System.
By Diarmuid De Faoite, AIPPI Communications Manager.
On June 9, 2021, the annual IP-related Non-Governmental Organization (NGO) Coordination Meeting took place via videoconference in view of ongoing COVID-19 restrictions. This meeting, organized by AIPPI-International, is a welcomed opportunity for IP-related NGOs to share experiences and identify paths for coordinating addressing of IP issues and furthering harmonization.
Luiz Henrique do Amaral, current AIPPI-International President, welcomed the NGOs and spoke, inter alia, on the increased need for collaboration during the pandemic. Anne Marie Verschuur, AIPPI-International Reporter General, moderated the meeting.
The meeting included presentations and discussion by the attending NGOs, including on Internet IP issues such as the WHOIS system at ICANN, domain name system (DNS) abuse, and IP-governance of the Internet, and on the internationally-debated compulsory licensing / TRIPs waiver of COVID-related patents/trade secrets. Position statements by the NGOs, including those by FICPI, AIPLA and AIPPI, regarding compulsory licensing / TRIPs waiver were discussed. Appreciation for the patent offices providing procedural relief for various actions/ deadlines was expressed by some NGOs.
Appreciation for the silver linings of increased flexibility and increased participation by younger members due to the switching from physical to online meetings during the pandemic was expressed by some NGOs. Some NGOs expressed interest in pursuing hybrid events in the future, expressing the belief that online meetings will not go away any time soon. Opportunities for the NGOs to support each other in co-hosting online events was also discussed.
In adjourning the IP-NGO Annual Meeting, Luiz Henrique thanked the attending NGOs for their spirit of open sharing and collaborative efforts.
By Leandro Corral, National Group Reporter, AIPPI CA-CARIB.
In April, 2021, the National Industrial Property Office (ONAPI) delivered the renewal of the collective trademark IMBERLITA, owned by the Petrified Wood Craftsmen Association. The certificate was delivered at the Petrified Wood Craft Plaza. This renewal supports the effort of artisans and their protection working with Petrified Wood. The brand has local and international recognition.
In May, 2021, the National Industrial Property Office (ONAPI) delivered 6 certificates for local inventors. ONAPI delivered one certificate for a local patent and 5 utility model registrations.
In June, 2021, the National Industrial Property Office (ONAPI) received the recognition from the American Chamber of Commerce as the third best office in PI matters considering Latin American offices. This recognition gives best position than other countries like Colombia, Chile, Argentina, Peru, Brazil, Ecuador and Venezuela. Only México and Costa Rica have better qualifications. The categories were, among others, parents, trademarks, copyright, commercial secrets.
In June 2021, the National Copyright Office discussed an agreement with the Ministry of Culture to educate and to protect the copyrights of cultural products and provide options for courses for local artists to protect their creations.
Also in June 2021, the director of the Copyright National Office and the Ministry of Higher Education, Science and Technology, signed a cooperation agreement to promote and to prepare Intellectual Property professionals to have better professionals in the area.
Trinidad and Tobago joined the Madrid Protocol on October 12, 2020, by depositing its accession with the World Intellectual Property Organization. Now in 2021 the Protocol has entered into force. Applicants in Trinidad and Tobago are now able to apply for an international registration and those from abroad will be able to designate Trinidad and Tobago with the International Bureau. The country is the second Commonwealth Caribbean nation to join Madrid. In this region, the accession by Trinidad and Tobago follows Antigua and Barbuda, which joined in 2000. Cuba is the only other independent Caribbean member of the Madrid System. The Caribbean Netherlands, Curacao, and Saint Maarten participate as non-members based on their status within the Kingdom of the Netherlands, but independently from Benelux and the European Union (EU). The French Caribbean participates based on its status as part of France and (except for St. Bartholomew) the EU.
By Simona Lavagnini, of LGV, Milan, Italy.
The group trained members on voluntary mediation but spoke out against the extension of mandatory mediation in the IP sector
Mediation is an alternative dispute resolution tool in which two or more parties are assisted in finding an amicable solution to their dispute by the figure of the mediator, who must act in a third and impartial position. The specificity of mediation, compared to other ADR instruments, lies in the role of the mediator, who is called upon to facilitate dialogue between the parties, in order to explore and identify interests, including those additional to the dispute between them, that could motivate and form the basis of the conciliation. Mediation has always had a difficult relationship with intellectual property. When it was first introduced, the main efforts of interpreters were aimed at excluding intellectual property from the institution of compulsory mediation, which applies - inter alia - to rights in rem. However, since intellectual property cannot be fully assimilated with rights in rem, compulsory mediation does not apply to it. So far, there has been a very limited use of mediation in the field of intellectual property, as also shown by the statistics of mediation bodies. There is also a lack of knowledge on the part of lawyers and IP consultants about the pros and cons of mediation in our specific field, even when – consequently – mediation could be a useful tool.
Recently the blockage of trials caused by the COVID-19 pandemic, as well as a general push in the civil procedural system to evaluate alternative means of dispute resolution that may have deflective purposes, has produced a renewed debate on mediation, also in relation to IP. For instance, WIPO and CAM (Camera Arbitrale Milano) signed a deal to promote mediation in relation to IP disputes, starting from July 2020. Meanwhile, in the framework of the current project to reform civil procedural law, there has been renewed talk about compulsory mediation and its further extension, which, according to the Council of Industrial Property Consultants, should also cover the field of industrial property. In this context, AIPPI Italian Group has taken several initiatives aimed at deepening the tool of mediation and its possible use in the field of intellectual property. Among these, there were first of all educational initiatives, such as some seminars, also in collaboration with CAM, aimed at informing about the nature of mediation and its specificities, as well as - lastly - a mock mediation, aimed at enabling members to better understand the specificities of mediation, its various phases, the role of the mediator and lawyers in the process, as well as the techniques and objectives of the crucial phase of the mediation, that of exploration. At the same time, AIPPI Italian Group participated in the public consultation launched by the MISE (Ministry for Economic Development) for the "Strategic lines of action on industrial property for the three-year period 2021-2023”.
First of all, the intellectual property sector is highly specialised and technical (as confirmed by the fact that for about twenty years, by virtue of the aforementioned legislative decree no. 168/2003, disputes in this sector have been assigned to specialised sections), in which it is often necessary to carry out specific technical investigations and also have knowledge of the specifical legal and technical issues connected to IP. Moreover, the intellectual property sector is characterised by the presence of titles that have erga omnes validity, with public profiles of the disputes, that are well represented by the participation of the Public Prosecutor in judgments on validity (participation has long been compulsory, and is still optional). The intellectual property sector is also characterised by a strong international vocation, since titles are often multi-jurisdictional, with the consequence that defence strategies are now being studied at a pan-European or intercontinental level, and compulsory mediation would place the Italian jurisdiction among the less desirable ones. Additionally, many of the disputes in the field of intellectual property concern multinational companies, which often make the personal participation of the party to mediation rather difficult, with negative consequences for the company as this is increasingly required by the courts to assess whether the compulsory mediation attempt has been made and thus whether the dispute is viable.
Finally, the protection of industrial property rights is achieved, for the most part, by preliminary recourse to protective measures, which are excluded from the scope of mediation, regardless of whether they are stabilizing or non-stabilizing measures. In the former case, however, the claimant will have no interest in bringing the ordinary proceedings and in the second case, on the other hand, the delay in commencing ordinary proceedings could seriously jeopardise the effectiveness of the protection afforded to the plaintiff. The above are all reasons why compulsory mediation in IP matters appears inappropriate, while voluntary mediation may be useful in certain areas, such as contracts, where parties are generally interested in maintaining relations and may value the mediator's assistance in facilitating their dialogue, as well as their control on the procedure (which in the absence of agreement by the parties cannot result in a decision taken by the mediator), and its confidentiality.
By Pavel Guerman, National Group Reporter for AIPPI Russia.
Technology is the basis of progress fed by inventions. Inventions need to be patented to warrant satisfaction of the inventors. Russia is a popular venue for patenting inventions. Thousands of patent applications are filed every year, something that is on the rise. Local small-scale events are occasionally organized to draw the attention of the public to the importance of patenting inventions. However there has never been an event organized that would attract an audience from all sectors of industry and people from other countries.
The Russian Group of AIPPI came up with the initiative to organize such an event. Initially a mixed setup was planned with a hundred people in the conference room and all others via ZOOM. As the pandemic situation became more critical, the organizers decided to concentrate on the online attendance.
The congress was held on June 8, 2021. More than 900 people registered for it which shows that there is indeed a great need for events focused on inventions. Aside from the Russian participants, there were many people from other countries. The 22 speakers from 5 countries included representatives of the Russian and the Eurasian patent offices, the Supreme Court of China, patent attorneys from Russia, France and USA, as well as representatives from various industries. The organizers of the Congress chose topics that were of particular interest to potential inventors and applicants.
Information technologies are at the top of the agenda everywhere, so a special section was dedicated to inventions in that field. Other topics concerned pharmaceutical inventions, disputes on validity of patents, enforcement and disposal of patent rights.
Luiz Henrique do Amaral, President of AIPPI warmly greeted the participants of the Congress which accentuated the importance of this event in Russia. The audience was active during the congress and asked many questions that were ably answered by the speakers. The feedback after the Congress was very positive, an indication that such events are exceptionally useful and should be continued.
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