News Round-Up
- Japanese Group's Journal "A.I.P.P.I." Latest issue (Vol 46, No.6) is now available to AIPPI members.
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Read the full text of the 2021 AIPPI Resolutions. Library link here.
- AIPPI Standing Committee Annual Reports now available in the AIPPI Library.
- 2022 AIPPI Elections.
Articles & Case Notes:
AIPPI National and Regional News:
Join the AIPPI Celebration!
AIPPI was founded 125 years ago in Brussels, and to mark this milestone, AIPPI Belgium & AIPPI International are pleased to invite you to a one-day event on 13 May 2022 - a hybrid conference and a social event in prestigious locations in the heart of Brussels.
The theme of the day is IP and Common Welfare with a special focus on Health and Environment.
Click here for the full programme and save the date in your calendar!
Registration will open on 7 February.
Please note that spaces are limited for the onsite events in Brussels!
We hope you can join us to help celebrate this eventful year!
The AIPPI Japanese Group's journal "A.I.P.P.I." latest issue (Vol 46, No.6) is available to all AIPPI members.
The Japanese Group is pleased to inform you that the latest issue (Vol 46, No.6) of the Japanese Group's Journal "A.I.P.P.I." is now available to all AIPPI members. You can view the contents page for this issue below.
Please sign in to the “Membership Portal” on the AIPPI website and visit “Member Offers” to read the current edition of the journal.
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 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
Invitation to present nominations for members of the Bureau and Statutory Committees.
The National and Regional Groups are invited by the Bureau of AIPPI to present nominations for candidates for the Bureau and the Statutory Committees. The invitation has been sent to the Presidents and Secretaries of your National and Regional Groups on January 10, 2022.
The Nominating Committee wishes to inform all AIPPI members by way of this AIPPI e-news article about the elections 2022 for the Bureau and for our Statutory Committees.
The following Bureau positions are to be voted this year:
- President,
- First Vice-President,
- Second Vice-President,
- Treasurer General,
- Reporter General,
- First Deputy Reporter General,
- Second Deputy Reporter General and
In the Statutory Committees, the following positions are or will become vacant this year:
Programme Committee: four new members
Finance Committee: two new members
Membership Committee: four new members
Venue Selections Committee: five new members
Communications Committee: five new members
Nominating Committee: nine new members
If you are interested in taking part in the work of one of these Statutory Committees, and your National Group does not already have a member in this Committee, please submit promptly to your National or Regional Group your application as a candidate for a specific position, together with a brief CV explaining your qualification for the proposed position. The final deadline for your National or Regional Group to submit a proposal for the nomination of candidates, as set forth in the invitation to the Presidents and Secretaries of the National and Regional Groups, is March 18, 2022.
Please make sure that your National or Regional Group receives your application well before this date.
In case your National or Regional Group supports your application, it will then be sent to the General Secretariat and the Chairperson of the Nominating Committee. The Nominating Committee will select a number of suitable candidates according to the Regulations of AIPPI. Depending on the specific Committee, the selection will be based on several different criteria, such as for example professional, geographic, gender and age diversity, as well as aptitude for financial matters, knowledge of AIPPI members, good knowledge of AIPPI as an institution, experience with international IP meetings and, especially regarding candidates for the Nominating Committee, experience in participating in AIPPI Committees.
Candidates may also be proposed jointly by at least 50 members of the Association. In such a case, the application together with the CV as well as a list of the members of the Association supporting the application should be sent directly to the Bureau.
By Luca Rinaldi, Vice-Chair AIPPI Standing Committee on TRIPS.
Every year, since 2014, the Standing Committee on TRIPS attends, with one or more of its members, the WTO Public Forum in Geneva: the largest and most important symposium organized by the WTO to discuss the trends of the international trading system, open to all stakeholders of the worldwide economic, civil and political society.
In 2015, 2017 and 2019 the Standing Committee on TRIPS was also selected by the WTO Public Forum Organization to organize and moderate workings sessions or workshops on IP-related topics.
This year I have attended the WTO Public Forum as observer and reporter for my Standing Committee, and AIPPI Int. in general, from September 28 to October 1.
The title of the symposium was “Trade Beyond COVID-19: Building Resilience”.
106 among working sessions and workshops have been organized in the frame of the 2021 WTO Public Forum.
Most of those meetings were aimed at discussing strengths and weaknesses of the international trading system in the COVID-19 era; more weaknesses than strengths, actually, given the augmented propensity to regionalism versus multilateralism and the instances for a reformation of the current WTO rules and bodies that from many quarters during the COVID-19 era have been observed.
In some other meetings however IP-related topics have been addressed, most of them focused on the waiver to TRIPS protections for Covid-19 vaccines and medicines.
Summary of meetings
In one of these meetings, entitled “Copyright, trade and a TRIPS waiver for COVID”, organized by the “American University, Washington College of Law, Program on Information Justice and Intellectual Property”, the emphasis was placed on the role that copyrights, not just patents, may play in the contrast to the Covid-19 pandemic (think the role of copyright laws to enable remote and digital uses of works for education and scientific research, or to allow the repair of medical devices requiring software, or again to enable use of tools such as computational algorithms, needed to produce vaccines); so that a waiver to copyright protections provided by TRIPS or an effective use of TRIPS flexibilities in the copyright environment should be called into question.
In another meeting, entitled “Reforming the TRIPS agreement to respond effectively to the public health challenges”, organized by the “Institute for Studies in Industrial Development”, the emphasis was rather placed on the role that patents play in the contrast to Covid-19 pandemic and on the measures that could be effectively taken in the very short term to enable least developed and developing countries to produce patented Covid-19 vaccines and medicines. In this perspective, Prof. Carlos Correa, Executive Director of South Centre, remarked that a waiver to patent protections provided for by TRIPS does not seem to be a workable solution in the very short term imposed by the Covid-19 pandemic, given that WTO Members have been discussing about this possibility since the Doha Declaration, but nothing has been made in this respect since then; rather, an actual use of the flexibilities already provided for by TRIPS, such as the compulsory licensing system, could bring in the short term to a more effective result. Faizel Ismail, Director of the Nelson Mandela School of Public Governance, conversely, affirmed that only a waiver to patent rights on vaccines, even temporarily (3 years), could effectively enable the manufacturing capacity of developing countries, according to a solution which is supported by more than 100 WTO Member States, but that EU is challenging. On his end, Kevin Gallagher, Director of Global Development Policy Centre, Boston University, observed that “TRIPS waiver” is necessary, but not sufficient, since the pillars of a global Covid-19 vaccination and medicines manufacturing capacity must necessarily include also “technology transfer” and “global financing”. Lastly, Srividhya Raghavan, Professor of Law, Texas A&M University, very interestingly, observed that “There is no trade if there is no public health”, and that if TRIPS compulsory licensing system may help on patents, only a TRIPS waiver may affect also trade secrets, copyrights and trademarks, which are just as important in building vaccines and medicines manufacturing capacity of developing countries, bringing them to a real next level of development.
On the other hand, for TRIPS, and against a TRIPS waiver, a working session has been organized by “Global Innovation Policy Centre, US Chamber of Commerce”, entitled “Intellectual Property – The Unsung Hero of the Pandemic?”. Here Dr. Hans Sauer, Deputy General Counsel and Vice President for Intellectual Property, Biotechnology Innovation Organization, emphasized that only the ability to license and collaborate, therefore acting within (and not against) the TRIPS system, may help in facing Covid-19 pandemic; and that pharmaceutical companies are not indifferent to “equity in vaccines”: first step was creating safe and effective vaccines, second step is spreading-up vaccines over the world, and both could be attained only through licensing and collaboration, which TRIPS waiver would not certainly encourage. Basically the same considerations have been made by Elizabeth Crossick, Head of Government Affairs, RELX Group. On her end, Komal Kalha, Associate Director, IP and Trade Policy, International Federation of Pharmaceutical Manufacturers and Associations, added that production capacity, investments in research, infrastructures and skilled workers are key in the Covid-19 pandemic situation, and all of this could not be built on a TRIPS waiver.
November 25, 2021
Patentability of AI-generated inventions at the European Patent Office.
By Tougane Loumeau, avocat, cabinet Gide, Paris, France.
European Patent Office, Press Communiqué of 21 December 2021 on decisions J 8/20 and J 9/20 of the Legal Board of Appeal.
On 21 December 2021, the Legal Board of Appeal of the European Patent Office (EPO) announced its first decision on whether an AI system may be designated as an inventor on a European (EP) patent. The case concerned DABUS, an artificial intelligence system created by US scientist Steven Thaler, that has reportedly autonomously developed technology that might, per se, be eligible to patent protection.
The DABUS inventions at stake (namely a 'food container' and a 'device for attracting enhanced attention') have been the subject of several patent applications across the world, filed in the name of Steven Thaler. In these applications, the designated inventor section generally reads as 'DABUS, The invention was autonomously generated by an artificial intelligence'. Steven Thaler apparently considers that he cannot himself be regarded as the inventor.
With regard to European Patents, that are governed by the European Patent Convention (EPC), article 81 EPC provides that 'The European patent application shall designate the inventor. If the applicant is not the inventor or is not the sole inventor, the designation shall contain a statement indicating the origin of the right to the European patent' while rule 19(1) EPC specifies that the designation shall state 'the family name, given names and country and place of residence of the inventor'. Article 60(1) provides that the right to a European patent belongs to the inventor or his successor in title.
The two DABUS applications were found by the EPO Receiving Section as not consistent with these provisions of the EPC and therefore refused. More specifically, the Receiving Section was of the opinion that (i) under the EPC, only a human inventor can be an inventor; and (ii) a machine cannot transfer any rights to the applicant. The cases were referred to the EPO Legal Board of Appeal under No. J 8/20 and No. J 9/20.
At the end of the oral proceedings that were held on 21 December 2021, the Legal Board of Appeal orally announced its decision to dismiss the appeal, substantially on the ground that at least, under the EPC, the inventor has to be a person with legal capacity. The detailed reasoning is not yet publicly available.
This decision is an important addition to the string of decisions that have already been or are expected to be handed down in the different territories where the DABUS inventions have applied for patent protection.
In July 2021, the South African patent office granted the patent (making it the world's first patent of the sort) and the Federal Court of Australia, overturning a previous ruling from the Deputy Commissioner of Patents, ruled that an artificial intelligence system can be an inventor for the purposes of Australian patent law (Thaler v Commissioner of Patents [2021] FCA 879).
On the opposite, the USPTO refused the grant of the patent, a decision that was upheld on 2nd September 2021 by the Virginia United States District Court, Eastern District of Virginia (1:20-cv-00903-LMB-TCB). The applicant has lodged an appeal. The UKIPO also refused to grant the patent, a decision that was approved by the Patents Court and later, by the Court of Appeal, with one judge dissenting ([2021] EWCA Civ 1374). According to the JUVE Patent website, the German Federal Patent Court has ruled similarly around November 2021.
The debate remains open.
Recent administrative resolution defines the applicability of principle non bis in idem in patent infringement cases in Peru.
By Francisco Espinosa Reboa, of ESPINOSA BELLIDO ABOGADOS, Lima, Peru.
A recent administrative decision has defined the criterion in order to decide whether a prior decision on a patent infringement action, involving the same parties and the same patent, affects the principle non bis in idem on a new patent infringement action.
By the Resolution No. 000107-2021/CIN-INDECOPI, dated October 05, 2021 and issued on the File No. 000259-2021/DIN, the Peruvian Commission of Inventions and New Technologies (CIN) declared that a new patent infringement action filed by CRYSTAL LAGOONS TECHNOLOGIES, INC. against PROMOTORA DAVECO S.A.C. was NOT ADMISSIBLE, since it affected the principle non bis in idem, in relation to a prior patent infringement action involving the same parties, that had been already declared GROUNDLESS, and this decision became firm after not being appealed.
CRYSTAL LAGOONS TECHNOLOGIES, INC. had filed a prior infringement action against PROMOTORA DAVECO S.A.C. for the alleged infringement of patent "STRUCTURE TO CONTAIN LARGE BODIES OF WATER FOR RECREATIONAL PURPOSES”, registered under Title N° 6487. This prior infringement action was declared GROUNDLESS in 2017, and such decision was not appealed.
That prior decision was based on the fact that the defendant’s structure for an artificial lagoon, which was the subject of the infringement action, contained enough differences in its characteristics, in relation to the claims granted under patent N ° 6487.
The new infringement action, filed on 2021, argues that the prior action was decided when the defendant´s structure was not completely constructed yet, and that affected the outcome of the action. The new action is directed against the already completed structure for such artificial lagoon, and therefore the CIN should analyze the completed structure, and its differences in relation to the characteristics of the incomplete structure, that were analyzed in the decision issued for the prior case.
The new Resolution No. 000107-2021/CIN-INDECOPI has now ruled that “when in a patent infringement procedure it is firmly determined that the subject matter of the claim is not within the scope of protection of the patent that supports the action because it includes characteristics that differ from the matter claimed by it, the permanence of said characteristics in the object in question must provide sufficient security that future exploitation of the same may not be the subject of a new action that seeks to establish an affectation to the same patent, even when the rest of the characteristics of said object suffer some variation, since the simultaneous concurrence of the characteristics that led to establish that said patent was not infringed constitutes sufficient merit to ensure that the product or process in question is outside the respective scope of protection, this by virtue of the principle of simultaneity of all the elements .
Therefore, in the analysis of a possible violation of the principle of thing decided non bis in idem, it cannot be considered new facts the acts of exploitation carried out on a product or process that incorporates the technical characteristics that, according to what was decided in a firm case, led to establishing that said product or process was outside the scope of patent protection".
In other words, if a prior patent infringement action was definitely declared groundless because the defendant´s product or procedure incorporated elements A and B, that differed from the patent claims, the defendant should be assured that it cannot be subject of a new patent infringement against said product or procedure if it still incorporates those different elements A and B, even if new or additional elements have been incorporated.
Conversely, the same infringement action was declared GROUNDED in relation to a second patent for "POND WATER FILTRATION PROCESS FOR RECREATIONAL AND ORNAMENTAL USES WHERE FILTRATION IS PERFORM ON A SMALL VOLUME OF WATER AND NOT ON THE ENTIRE POND WATER ”, registered under Title N° 7170, and even though the possible infringement of this patent had already been declared GROUNDLESS in the prior infringement action decided in 2017, because the CIN concluded that the process used by the defendant, subject of the new action, no longer included those characteristics or conditions that led to the negative decision on the first case, and therefore the new infringement action did not violate the principle non bis in idem on this point, and proceeded to analyze whether the use of said process infringed the rights derived from the aforementioned patent.
The importance of this ruling is given by the fact that it provides legal security and stability to a defendant, who is guaranteed that as long as its product or process maintains the characteristics that were already declared to be outside of the scope of protection of a patent, on a prior case decided by a firm decision, it cannot be subject to new infringement actions even if such product or process incorporates some new or additional characteristics.
New Era For “.tr” Extension Domain Names.
By Hakan PEHLIVAN of Istanbul Patent A.S., Istanbul, Turkey.
First-come, first-served principle is now in effect in registration of some Country Code Second Level Domains (“ccSLDs”) in Turkey as “.com.tr”, “.net.tr”, “.org.tr”. Registration of such domain names were subject to proof of other rights on the dominant portion of these domain names.
ccSLDs in Turkey used to be governed and registered by an administration, Nic.tr, organized by Middle East Technical University. Starting from early 2020, a government administration, Information Technology and Communication Authority, has started to take over managing authority of ccSLDs in Turkey. This transition period is expected to be completed in early 2022. Along with the completion of that transition, major changes will go in effect in relation to registration, transfer and dispute resolution of subject domain names. Some of the changes are summarized below.
Registration of domain names with the extension of “.com.tr”, “.net.tr” and “.org.tr” will no longer be subject to document submission related to an earlier right. They will be registered on a first-come, first-served basis. Taken the fact into account that trademark squatting, particularly related to trademarks of foreign firms, is highly common in Turkey, it is expected that domain name squatting would dramatically increase in Turkey under a first-come, first-served registration system.
Registrants will be able to waive the domain name registrations. Further, registrants will be able to sell or transfer the subject domain names.
Disputes regarding domain names will be resolved through Dispute Resolution Service Providers which would be formed by universities, public institutions, professional organizations and international organizations which meet requirements.
New Online System and Prospect of Series Marks under Myanmar’s Trademark Law
By Mrs. Khin Myo Myo Aye and Ms. Yuwadee Thean-ngarm of Tilleke & Gibbins, Yangon, Myanmar.
Myanmar’s first substantive Trademark Law was enacted on January 30, 2019. The law has not yet been brought into force by notification issued by the President, but preparations for the new system have already begun. On August 28, 2020, the Ministry of Commerce (MOC) issued Order No. 63/2020 announcing the commencement of the Intellectual Property Department (IPD)’s “soft opening” period, and the transition from the old first-to-use system to the new first-to-file system under the Trademark Law.
To aid that transition, the order notified all trademark owners in Myanmar that they would need to refile any existing marks that were already registered at the Office of the Registration of Deeds (ORD), and/or already in use in the Myanmar market, if they would like to enjoy priority under the Trademark Law. To facilitate these applications, the IPD implemented and launched a new online filing system which opened for submissions on October 1, 2020—officially opening the refiling process for existing marks. All applications filed during the soft opening period will be given the same filing date (i.e. first application date).
Mark owners who are not entitled to file their marks during the soft opening period (that is, those who do not qualify for protection under the old system) will be able to apply for a new mark after the IPD’s Grand Opening, the date of which has not yet been officially announced.
The IPD’s soft opening period is still ongoing, and no end date has been indicated as of December 2021. It will continue until an official announcement from the MOC or another core authority is made. The rules, regulations, official fees, and required forms relating to marks under the new system are also still pending.
Series Marks under the New Trademark Law
The Trademark Law does not include significant provisions or details about series marks. The Trademark Rules will set up further clarifications and guidelines when they are released, but as of December 2021 they are still pending. Although there is no specific definition or clear guideline regarding series marks in Myanmar, these generally refer to multiple marks which resemble each other as to their material particulars, but may differ in other non-distinct aspects. For instance, marks which look the same, but with different colour variations or fonts/scripts.
Most provisions of the Trademark Law still require further clarification through clear guidelines from officials. In the absence of such guidelines, it had been assumed that owners who had filed series marks under Myanmar’s old system were able to refile them during the IPD’s soft opening period. This was supported by the MOC order, which stated that refiled marks must be identical to those already recorded and/or in use in Myanmar.
However, at a workshop held in 2020, the IPD unexpectedly informed attendees that, contrary to the order, series marks are not permitted, and that they will be rejected for registration under the new system. Mark owners would therefore be required to submit one mark per application. The IPD also informed attendees that mark owners whose series marks were recorded under the old system can still file applications during the soft opening period, but that they must either choose one mark out of the series, or separate and file multiple applications for each mark.
In light of this conflicting information, IP owners who wish to file their series mark in Myanmar should carefully review their portfolios to determine which marks they wish to seek registration for, either prioritizing the most important marks in a series, or filing each mark separately.
Near future plan of the content management system for Copyright
By Kozo YABE of MIDOSUJI LPC, Tokyo, Japan.
In December 2021, the Fundamental Policy Subcommittee of the Copyright Committee (FPSC-CC) at the Council for Cultural Affairs (CCA) announced their Draft Interim Report (DIR) recommending the Japanese government to build the integrated content management system for Extended Collective Licensing (ECL) and additional arrangements because Japan needs to be prepared in the age of Digital Transformation (DX). It is particularly important to manage digitized contents including User Generated Content (UGC), orphan works, etc. on the internet. The DIR has two pillars of their recommendations including the content management system and the efficient arrangement of education and promotional activities for DX. However, this article focuses on the content management system relating to expected changes of legislation in the near future.
- What does DIR recommend?
The Copyright Committee of the CCA is one of the government councils’ most important committees making copyright protection policy in Japan. The Ministry of Education, Culture, Sports, Science and Technology oversees enforcing the policy as guided by the CCA. To follow the Intellectual Property Promotion Plan 2021 (IPPP 2021) of the Intellectual Property Strategy Headquarters at the Cabinet Office announced on July 13, 2021, the FPSC-CC recommends the following points for Japanese government to take swift actions for Japan’s DX. According to the IPPP 2021, the government should take real actions in 2022.
(1) The copyright management system for ECL should be established across the various types of content markets, especially digitized content although its management is decentralized.
The system intends to reduce costs to search for copyright holders and provide creators more opportunities to utilize the content. The ECL also allows copyright management organizations to reduce their operational costs and decide upon appropriate distribution of copyright royalties. It assists timely licensing and to respond to infringements in the international context.
(2) The enhancement of databases for each type of content, e.g., music, graphics, publication etc. should be also expedited.
It can be done in some areas, for example, the database for educational content on public transmission regarding compensation / levy under Art. 35 of the Copyright Act and the same for various publications to be available for public transmission of library materials as enacted under the 2021 amendment of the Copyright Act.
(3) The simple and easy way for UGC registration.
Since much UGC is not subject to copyright management organizations and their databases, it is extremely hard for creators and users to appropriately utilize UGC at this moment. So, for instance, the creator’s ID can be given to each content by creators in the database. To promote registering UGC in the database, it is also important to corroborate with existing databases and content platforms.
- Which actions should be taken?
To enforce the recommendation, the DIR suggests the following actions:
(1) Creation of reliable procedures for creators and copyright holders to indicate their intention, even opt-outs, to make content easily available for users.
This is specially to assist the usage of UGC and the reduction of orphan works. The new system should be a simple and user-friendly one, in addition to the Creative Commons License, Free Use Mark of the Cultural Affairs Agency etc.
(2) It is necessary to establish the centralized window of the above-mentioned integrated database but its management has associated costs.
Such costs should be appropriately allocated to not only the copyright management organizations but also users of content.
(3) Management is desired for the related issues, e.g., the assumption of a starting time for protection periods, the consent by multiple copyright holders and the utilization of new digital technology to identify content like fingerprint technology.
(4) Reform of the arbitration of orphan works is also necessary.
The current arbitration procedure is not unfortunately user-friendly and generally perceived to be complicated. If a user can find a possible copyright holder but not receive any responses, there is no way to manage this situation in the current procedure.
2021 AIPPI China Copyright Forum: Hot Issues in China Copyright Law
By Gao Cheng and Zhao Hui, of the AIPPI Chinese Group.
The 2021 AIPPI China Copyright online Forum was successfully held on 11 December 2021, attracting more than 800 attendees, including academics, lawyers, representatives of judiciary authorities, representatives from internet industry and entertainment industry.
Chuanhong Long, Vice President of AIPPI China, opened the forum with a welcome speech, moderated by (Richard) Yi Li, Secretary General of the Group. Prof. Xiong Wencong, a member of the Copyright Committee of the Group, announced the Top Ten Copyright Cases in 2021 and gave professional comments on each particular case.
The keynote speech sessions focused on several hot topics of the third revision of the Copyright Law of China, such as basic issues of works concept, technical measures protection, algorithm recommendation and infringement liability, legal liability for video transshipment, which were given by Prof. Li Chen, Prof. Wang Qian, Mr. Su zhifu, Prof. Li Yang, Prof. Zhang Weijun and Prof. Xiong Qi.
Lena Shen, assistant to the Reporter General of AIPPI, delivered a closing speech and expressed best wishes for the prospective development in the copyright field, which was moderated by Allen Wang, Chairman of Copyright Committee of AIPPI China.
The General Assembly Meeting for the AIPPI UAE Group was held in December 2021.
Click here for this story and others from the January 2022 AIPPI UAE newsletter.
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