Articles & Case Notes:
- The Case of Ferrari: When Reality Surpasses Theory.
- Provisional patent applications in Israel?
- India: unceremonious demise of a tribunal!
- U.S. Supreme Court Decision: Google v. Oracle.
- Japan: partial revision of the Patent Act and other Acts.
- Update on DABUS case (AI named as inventor) in the US.
- The European Patent Office’s view on computer implemented methods – Decision G 1/19 of the Enlarged Board of Appeal.
- Russia: Design Blows Away a Trademark.
- Mandatory Licensing of Pharmaceutical Patents in Andean Countries.
- AIPPI World Congress Online 2021.
AIPPI National and Regional News:
- New Board for AIPPI Turkey
- 2021 AIPPI China Youth IP Seminar
- Paraguayan Group of AIPPI co-hosts the “IP & SMEs: successful cases of Paraguayan SMEs” webinar
- The Italian AIPPI Group launches its own Young Members group.
- AIPPI China: Seminar on Trademark Practice in Internet Economy
- Trilateral Seminar of the French, Polish and German National Groups
The Japanese Group is pleased to inform you that the March 2021 issue (Vol 46, No.2) of the Japanese Group's Journal "A.I.P.P.I." is now available to all AIPPI members.
Please log in to the AIPPI Members Area of the website to read this 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 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.
The January 2021 issue is also available to read in the Members Area of the AIPPI website.
Masatoshi ABE, AIPPI JAPAN
Are you wondering what the ceremony of an internationally recognised innovation prize looks like? Join EPO on 17 June 2021 at 19.00 (CEST) and get an insight into how the European Inventor Award promotes a greater awareness of Europe’s potential to innovate and stimulate better utilisation of the patent system. Created in 2006, the prize showcases outstanding inventors and their inventions, and tells their success stories to a wider public at large.
For the first time in the history of the event, the ceremony of the 2021 edition of the European Inventor Award will be held in digital format.
The Award will recognise the achievements of fifteen finalists in five categories (Industry, Research, Non-EPO countries, SMEs, and Lifetime achievement) and the Popular Prize, as chosen by the public.
By Bryan M. Kernitsky of Claro & Cia. Chile.
Those who enjoy motor racing, and particularly those who enjoy Formula 1 and were thrilled during last April 18th “Pirelli Grand Prix of Made in Italy and Emilia-Romagna” at the historic circuit Enzo & Dino Ferrari in Imola, Italy, probably noticed at the podium the top three drivers celebrating with enormous bottles of Ferrari branded sparkling wine over a balcony with the same brand displayed below in white letters and painted on a gigantic black carpet that flooded the entire TV screen.
None of the drivers on the podium was from Scuderia Ferrari, nonetheless, and the Ferrari trademark I’m mentioning, has nothing to do with the famous red cars, Enzo Ferrari or motor racing…or does it?
Earlier this year, Formula 1 signed a sponsorship deal with Ferrari, but not the Ferrari one would first think of in this context. This Ferrari or “Ferrari Trento” is a leading and very old wine trademark in Italy and other parts in the globe; the Ferrari trademark for wines was already there, decades before the first Ferrari car was even designed. In that regard, Ferrari Trento’s deal with Formula 1 looks to deliver a powerful statement on the quality of Italian sparkling wine as a premium beverage in a field in which French champagne has long been exclusively used as the elixir reserved for the fastest drivers on Earth: The ones on the Formula 1 podium.
Thus, when watching the live transmission from Imola, we had two Ferraris competing for light pixels in our screens, but oddly enough, they were different Ferraris and only one was a car.
Can this be problematic? From a trademark law point of view, the case seems quite straightforward: both Ferrari for wines and Ferrari for cars are registered trademarks, both are very well-known -at least in Italy- in their respective fields, and therefore -according to standard parameters in trademark litigation- there should be no chance of even insinuating infringement. But what about the average consumer? What about the viewers in countries in which Ferrari Trento is not sold or has ever been sold? Is it odd to think that, when watching an event taking place in Italy, during the celebrations that occurred after the Emilia Romagna Grand Prix, at no less than the Enzo & Dino Ferrari circuit -the circuit that honors Ferrari’s founder-, and in the context of the Formula 1 world championship -in which the most famous and oldest brand competing is Ferrari-, the name displayed in the bottles or the carpet had something to do with the car manufacturer? Without prior knowledge of the other Ferrari trademark, it seems obvious.
Further, what would happen if either Ferrari trademark were not registered in a certain country? Would these previously described events help the other Ferrari registered trademark in an opposition litigation arguing that sparkling wines and cars are two somehow related or connected categories of products and that an average consumer may believe both are developed by the same producer?
Inspired by the Paris Convention, Chilean trademark law provides the tools for challenging applications filed for trademarks that are similar or identical, even if they were filed for different and unrelated products as long as: (i) they have some type of connection to the goods distinguished by the other well-known trademark; and (ii) it is likely that the applied for protection will harm the interests of the holder of the well-known registered trademark. Therefore, with events like the one that that took place this year in Imola, could Ferrari -the car manufacturer- potentially argue such type of connection with sparkling wine and a potential harm in its interests with an identical trademark registered for sparkling wine considering that driving and drinking do not mix well? At least in Chile, we will never know, since both trademarks have been long registered, but a question remains on the suitability of legal provisions that extend the spectrum of protection of very well-known trademarks beyond its products or strictly related products.
Another avenue for looking into this is trademark dilution. This new sponsorship deal means that the Ferrari name will be on the podium of every race regardless of the pecking order after the checkered flag, but not in the way the car manufacturer probably would have hoped. With the Ferrari name being associated with victory and winning by new and different means and products, the enchantment and appeal of the other Ferrari may be eroded. Now the Ferrari name will have even more space in the racing world, but not exclusively related to one manufacturer, not unequivocally distinguishable.
For some, one Ferrari blocking, diluting or leading to confusion with regards to the other Ferrari would seem irrational considering the size of both trademarks and that they are clearly two very different products, but in an increasingly interconnected world, when this type of vague connection arises or can be fabricated out of the most unexpected events, we could potentially have, in the blink of an eye, two very well-known trademarks facing each other, racing to court, and presenting a case that seems illusory in theory, but that reality has made quite possible. It is all fiction and conjectures at the time being, but one thing is clear: there was a lot of Ferrari on that podium, but none of it was red.
By Dr Eyal Bressler, AIPPI (IL) Group Reporter.
The Israeli Patent Office recently proposed an amendment to the Israel patent regulations to enable the filing of a provisional application in a simple and inexpensive manner thereby obtaining an early application date pursuant to article §11 of the Israeli Patent law.
The impetus for this initiative by the Israel Patent Office arose in light of the widespread use by Israeli applicants of the provisional patent procedure in the United States; the intention is to enable an applicant filing in Israel enjoy a similar procedure in the Hebrew language. In connection with the proposal, two fees are contemplated: a provisional application fee (being 40% of the official fee for a regular patent application, namely approximately 140 USD) and a further fee of 60% of the regular fee, when and if a non-provisional patent application will be filed.
This proposal follows on additional initiatives taken by the Israel Patent Office, including expedited examinations of up to six months for a relatively small additional fee of approximately 300 USD, reducing PCT fees for IL-originated patents applications; and implementing WIPO Standard ST.2 to enable amino acid and nucleotide sequence listings in Israeli applications.
By Ms. Manisha Singh of Lex Orbis, India.
When patent and trademarks laws were undergoing rejuvenation in view of international harmonisations of IP law to stay tuned with the provision of TRIPS agreement it was felt by the Parliament to include a fast-track mechanism in the form of Intellectual property Appellate Board to hear appeals against the decisions of the registrar of the Trademarks.
In the object and reasons for the introduction of the provisions relating to the setting up of an Appellate Board it was stated that it is being set up “for speedy disposals of appeals and rectification application which at present lies before High courts.” Interestingly, reasons for switchover from IPAB to High court remains the same that is “for quick speedy disposal of appeals”. More precisely, the statement of objects and reasons of the Ordinance states that “the tribunals that were proposed to be abolished by the Ordinance are of the kind which handle cases in which public at large is not a litigant or those which neither take away any significant workload from High Courts nor provide speedy disposal. Many cases do not achieve finality at the level of tribunals and are litigated further till High Courts and Supreme Court, especially those with significant implications. Therefore, these tribunals only add to another additional layer of litigation.” This happens in all the tribunals which were created to share the work originally assigned under the constitution to the High Courts.
What prompted the Government for specifically targeting IPAB and subject it to undergo this switchover would go unanswered for want of parliament debate on this bill. However, unceremonious winding up of the functioning of IPAB though an urgent ordinance route does raise many eyebrows in IP fraternity in India. Truly, IP users were benefited during the last two decade or so, as many landmark and path breaking judgements were delivered by IPAB, which not only helped various IP users but also hastened the process of speedy delivery of justice in IP related matters.
IPAB was constituted on September 15, 2003 inter alia to hear appeals against the decisions of the Registrar under the Trademarks Act, 1999 and the Geographical Indications of Goods (Registration and Protection) Act, 1999. The jurisdiction of IPAB was later extended under the provisions of the Patents Act, 1970 in 2007 and under the provisions of Copy Right Act, 1957 in 2017. It is interesting to note that appeals in IPR cases were vested with High Court before this Board was created. As such, the proposal to abolish IPAB would amount to restoring the status quo and all the cases pending with IPAB would now be transferred to the Original and Appeal jurisdiction of the High Courts. If Creation of IPAB was a conscious decision to bring the best experts in the field of IPRs as technical members who would be helpful in adjudicating the technical and complicated scientific matters, particularly patent appeal cases while teaming up with experienced High Court judges, its dissolution is a move in haste leaving the working patent and trademarks agents and attorneys in fix. Most of these Advocates normally do not practice in High Courts and will they be allowed to continue as an advocate on record only the rules framed by respective High court would tell? However, If the rules framed by Calcutta high court in respect of appeals under the old act [ High court order dated 15th September 1952] to be believed still applicable than
“22. Attorneys and advocates not entitled to practices on the original side, shall be entitled to act in such appeals, such advocates shall be entitled also to plead, but Advocates entitled to practice on the original side shall not be entitled to act.”
In any other situation where such rules are not framed by other high courts it would certainly create a situation where the patents agents would have to inform their existing clients to search for new Advocate to present their case and incur additional cost.
This hasty decision of the Government to disband the Intellection Property Appellate Board is step backward which would create an element of doubt in the minds of the new patent applicants like small entities such start up, SMEs and women inventors. Most of these applications are based on the new and complex technology which always come under the minute scrutiny of the patent office and face refusal orders. Approaching a court of law would require hiring an Advocate who practice before that high court. It may be difficult for patent attorney (facilitator) who helped the applicant to file the application at first place to take up his case if he is not practicing in the high court. Hiring a new advocate would be like reinventing the wheel for the applicant as he has to start from the scratch to brief the new advocate who may not have a scientific background and hiring an advocate with scientific background would be quite expensive. Chances are that the financially starved invention of stratus, SMES and women invention whom government on one hand profess to promote may shy away from filing appeals in the courts for want of huge cost involved . Similarly, disbanding of IPAB, may result in grant of bad patent as an interested person, who does not have commercial interests but with only public interests, would avoid taking the tedious expensive and time-consuming route through a court. Unceremonious demise of Intellectual Property Tribunal may serve well to those who feels that let the bad patent stay in the patent register and a good patent remain outside the patent cover.
It is worth adding a few remarks about the role of IPAB in the Indian patent System in last two decades. All the judges who held the post of Chairman were experienced retired Judges of the high court and so were the technical members. Undoubtedly, they have performed their assigned function judicially with help of the experienced technical members. A cantina of jurisprudence left by the decisions of IPAB is a clear reminder to those who kept on clamouring for the independence of the IP tribunal. On the other hand Judges who would now get to resolve IP Disputes or Appeals would be a part of the general judicial system who play an active role in deciding non-IPR cases. In court of Appeal most of the judges’ time is spent on cases unrelated to IPR. In United Kingdom from where Indian patent System owes its existence, for example, this anomaly has been resolved by hiring the specialised Judges for adjudicating patent matters post 1977 Patent Act amendment.
“Section 96 (1) There shall be constituted, as part of the Chancery Division of the High Court, a Patents Court to take such proceedings relating to patents and other matters as may be prescribed by rules of court.
(2)The judges of the Patents Court shall be such of the puisne judges of the High Court as the Lord Chancellor may from time to time nominate.”
It is pertinent to note that though all the judges of the High Court have formal jurisdiction in patent cases but in practice only the High Court’s patent specialists, the judges of the Patents Court, adjudicate these cases. This provision still applies today and working well in UK. It should also be noted that patent judges are selected from patent law practitioners with extensive experience and are not career judges, a usual practice in common law systems. This method produces better judges: a gamekeeper would likely to be better at his or her job if he or she were first a poacher. Interestingly, two main judges, Judge Floyd and Judge Arnold, both of whom possessed degrees in science and experience practicing patent law before their appointment in the Patent Court of the high court.
Those who feel that tribunals only add to another additional layer of litigation are wrong in their understanding the basic concept of a tribunal. IP Litigants also deserves to be treated with equity and at par with other common law litigants. Since right in IP particularly Patents is perishable more care and caution in adjudication is desirable. Just ping pong of IP cases from high courts to IPAB and back to of high courts clearly demonstrate that IP litigation is an orphan child of common law and Government is making stop gap arrangements to deal with such cases. If standing of a wrong patent/trademark monopoly is harmful, then the denial of a good patent/trademarks is equally harmful to the economy, industry, innovation, and the public at large. Without looking into the pros and cons of specialised courts it is worth to give it a chance to settle this imbroglio on patent dispute resolution mechanism in India once for all. However, if this move is not connected to such policy objectives, then the U-turn by the Government would be a step backward as it will take some time for the commercial courts to adjudicate on the specialised appeal /revocation / rectification matters under patents, trademarks and copyright law.
By Bret Hrivnak, of Hahn Loeser, USA.
On April 5th, in a noteworthy decision, the U.S. Supreme Court reversed a lower court’s decision by finding that Google did not violate U.S. Copyright laws when creating its Android operating system (OPS) by copying portions of Oracle’s Java code. In doing so, the Court found copying portions of Oracle’s Java code pertaining to an application programming interface (API) a permissible fair use. The Court declined to consider the broader question as to whether APIs are subject to copyright protection.
Oracle originally sued Google for copyright infringement, asserting Google copied elements of Oracle’s Java code pertaining to an API. Google argued it only copied what was necessary (the API) to permit interoperability of its software (Android) with mobile apps. APIs allow programmers to use prewritten code to build certain functions into their own programs without having to write new code to perform those same functions. The district court found Google infringed Oracle’s copyright, and that Google’s use did not qualify as a fair use. Ultimately, Google appealed to the U.S. Supreme Court.
In rendering its decision, the U.S. Supreme Court determined Google’s limited copying of the API to be a fair use, as including the API in Google’s Android software was necessary to support interoperability with apps created by developers. Moreover, Java was intended to be used with desktops and laptops, while Android was developed for use with smartphones. It is also recognized Java and Android operated in fundamentally different ways. The Court also focused not on the amount of code copied, but rather whether the code copied was the heart of the work’s creative expression. In this case, it was determined the API portion copied by Google was not the heart of Java’s creative expression. In weighing the factors, the Court determined Google’s implementation and adaptation in creating Android transformative, resulting in fair use.
By Hirohito Katsunuma of Katsunuma International Patent Office, Tokyo, Japan.
Responding to major changes in the economic activities caused by digitization, remote work and non-contact transaction, the Japanese Cabinet approved a Bill for "Partial Revision of the Patent Act, etc." on March 2, 2021.
The revisions are as follows.
1. Developing new procedures (e.g., digitalized procedures) to address the expansion of the COVID-19 pandemic
(1) The revised act introduces a system that allows the parties concerned to conduct oral hearings, etc., using the web conference system without appearing in the appeal court at the discretion of the chief appeal examiner.
(2) The revised act is to allow users to pay patent fees, etc., using bank transfers in advance (abolishment of advance payment by revenue stamps) or using credit card payments at the counter.
(3) The revised act is to simplify the procedures for informing applicants of the decisions on registration of their designs or trademarks filed as international applications (e.g., allowing the JPO to electronically send such notifications via the International Bureau instead of sending the applicants by postal mail which may stop in response to the expansion of the COVID-19 pandemic).
(4) The revised act is to stipulate a new rule for the exemption of patent surcharges during a predetermined period, targeting right holders who, due to the COVID-19 pandemic, natural disasters, or other similar reasons, have failed to meet the due date for the payment of patent fees.
2. Reviewing the protection of rights to address changes in corporate activities due to the advancement of digitalization, etc.
(1) In response to the increasing importation of counterfeit goods for personal use, the revised act is to recognize an act of bringing counterfeit products into Japan via postal mail, etc. by overseas businesses as an infringement of trademark rights.
(2) In response to the increasing complexity of patent license forms due to the advancement of digital technologies, the revised act is to remove the requirement for licensers to obtain the consent of the non-exclusive licensee when patent rights are corrected.
(3) The revised act is to relax the conditions on which right holders are allowed to restore their patent and other rights which have been forfeited due to the expiration of the timeframe for required procedures (patent, utility model, design and trademark). The previous condition "justifiable reason" for restoration of patents rights, etc. is to be relaxed to "unintentional".
3. Strengthening the foundation of the intellectual property systems
(1) In litigation involving patent right infringement, the revised act is to introduce a new system that allows courts to broadly call for opinions from third parties and to allow patent attorneys to provide consultation services under the system.
(2) In order to address the growing burden on examinations and digitalized procedures, the maximum amount of patent fees, trademark registration fees, trademark renewal fees and PCT search fees will be raised from the current level. The specific amount will be stipulated by the ordinance of the Cabinet.
(3) The revised act is to add consultation and other services on intellectual property rights related to new plant varieties and geographical indications to the scope of the businesses that patent attorneys are permitted to conduct. The revised act is also to take measures such as changing the name of the patent professional corporation and introducing a single-patent-attorney-corporation system.
By MaryAnne Armstrong, AIPPI (USA) Group Reporter.
On April 6, 2021, the US District Court for the Eastern District of Virginia heard summary judgement arguments from the USPTO and Stephen Thaler regarding the naming of an AI as the inventor on a US patent application. Thaler v. Iancu, et al. (No. 1:20-cv-00903).
As way of background, Mr. Thaler filed a patent application naming as the inventor the AI “DABUS.” The USPTO issued a Notice stating that the application was incomplete for failing to name the inventor(s). Mr. Thaler filed several petitions with the USPTO requesting that the AI be named as the inventor. In response to the petitions the USPTO held that an inventor must be a natural person, conception of an invention must be by a natural person and “U.S. patent law does not permit a machine to be named as the inventor in a patent application.”
Mr. Thaler sued the USPTO on August 6, 2020 in the US district court and earlier this year both parties filed motions for summary judgement. While there is no decision from the hearing, the comments from Judge Leonie Brinkema during the hearing suggested that the ability to name an AI as an inventor would require a change in the laws by the US Congress because the laws require that an inventor be an “individual.” Judge Brinkema stated, “I think you’ve got a huge uphill battle…because the statutory language is so crystal clear” and that Mr. Thaler was asking the court to legislate by holding that an AI could be an inventor on a US patent application.
By Laurence Loumes & Mathias Robert, of Plasseraud IP, France.
The Enlarged Board of Appeal (EBoA) of the European Patent Office (EPO) issued on March 10, 2021 a long-awaited decision regarding the patentability of computer-implemented simulations under the European Patent Convention (EPC). The EBoA's decision has consequences on computer-implemented methods as a whole. Since as a principle, only technical features are taken into account in assessing inventiveness, and since mathematical algorithms per se are found to be non-technical, the decision addresses if, in inventions that contain technical and non-technical features, the non-technical features can, under certain conditions, still be relevant to the assessment of the inventive step.
Under the EPC, computer programs per se are excluded from patentability. However, inventions that are based on a computer program may be patented if they can be regarded as having a technical character as a whole.
The assessment of technical vs. non-technical features in a claim is paramount in computer-implemented methods, since only features contributing to the technical character of the invention can be taken into account for determining whether it involves an inventive step (Decision T 641/00 - COMVIK).
Non-technical features may contribute to the technical character of an invention. For example, a mathematical algorithm (non-technical per se) can be used for various technical purposes such as, for instance, enabling parallel computing or calculation in industrial processes.
The specificity of computer simulations has been addressed by the EPO in decision T1227/05 (INFINEON), where the Board of Appeal followed the approach laid above and reaffirmed that simulations may have a technical character, for example when applied to a specifically determined technical purpose.
The recent decision G1/19 of the EBoA concerned a patent application on a computer-based method to simulate, for design purposes, the movement of an entity, e.g. a pedestrian, in an environment, e.g. a building. The questions submitted were:
- In assessing the inventive step, can a computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?
- Provided that the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?
- What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?
The case proceedings attracted a lot of attention, with numerous amicus curiae briefs being submitted, culminating in an oral hearing attended by nearly 1,600 people via a live webcast. The EBoA answered as follows:
- A computer-implemented simulation of a technical system or process that is claimed as such can, for the purpose of assessing inventive step, solve a technical problem producing a technical effect going beyond the simulation’s implementation on a computer.
- For this assessment it is not a sufficient condition that the simulation is based, in whole or in part, on the technical principles underlying the simulated system or process.
- The answers to the first and second questions are no different if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design.
Confirming the COMVIK approach, the EBoA stated that a feature of a computer-implemented method can contribute to the technical character of the invention if it is related to a technical effect in the form of an input (e.g. the measurement of a physical value) or an output (e.g. a control signal for a machine). But such a direct link to physical reality is not necessary in all cases, and the EBoA recognizes that in simulation methods as such, few technical effects are usually produced in connection with the input or output of the method.
Overall, the position of the EBoA remains in line with the established case law of the EPO and is thus rather favorable to computer-implemented simulation patents as it underlines the possibility of deriving technical effects from a simulation method, including when the simulated technical process or device is not technical.
By Vladimir Biriulin, President of AIPPI Russia.
An applicant filed a trademark application No 2018735909, for the goods in Classes 35 and 39. The application was filed on August 22, 2018. The examiner made a search and found that the applied designation is confusingly similar to a series of industrial designs patented before the priority date of the trademark application. Industrial design patents were dated: No 89992 of November 6, 2012, No 89993 of February 19, 2013, No 65655 of May 8, 2006. The patents were issued in the name of Sony Computer Entertainment Inc.
The applicant did not agree with the decision of the patent office and filed an appeal. The appeal was examined by the Chamber of Patent Disputes. The collegium of the Chamber sided with the opinion of the patent office examiner and noted that comparative analysis of the claimed designation and design patents shows that the compared items consist of a game controller which is a device serving to control the movements and actions of the elements of the game, for instance, movements and actions of the game characters. The Chamber of Patent Disputes noted that the importance of a particular element does not depend only on its special position but also on its originality, on its role in providing the claimed services.
The image of the game controller in the claimed designation according to application No 2018735909 occupies much space, it is central in the whole composition and is highlighted in red. Therefore, the image of the game controller attracts attention of the consumer, it underlines the meaning of the whole designation and is a most important element in the designation.
When absence or presence of similarity is analyzed the figurative element represented by the game controller and the cited industrial designs are examined in their totality. The difference in details does not have much importance because the consumer, when he eyes the object he is guided by general impression, often blurred, about a trademark or designation or an article that he previously saw.
When similarity of figurative and 3D designations is analyzed most important is the first impression perceived during comparison of the designations: if similarity strikes the eye as first impression and subsequent analysis shows difference between the designations, the first impression should prevail during examination of the designations. In this particular case the first impression is undoubtedly similarity of the shape and disposition of the main elements of the game controller that determine the impression they produce.
By Gabriel Kuri and María Cecilia Romoleroux, of CorralRosales, Ecuador. MCR is the AIPPI Ecuador National Group Reporter.
Patent licenses are granted, as a general rule, by means of agreements freely executed between the patent holder -licensor- and the person authorized to exploit the invention -licensee-. However, in exceptional cases and for reasons of public interest, they are granted by order of the authority under the conditions set forth in the Law, as analyzed below.
Decision 486 of the Commission of the Andean Community of Nations -CAN- provides for the granting of compulsory licenses, mainly for the industrial production of the patented product or the full use of the patented process (in the absence of exploitation of the patent by its owner) in the following cases: for reasons of public interest, emergency, or national security; when there are practices that affect free competition; and those requested by the owner of a patent, whose exploitation necessarily requires the use of another patent.
The granting of compulsory licenses requires prior notice to the licensee, when reasonably possible. The competent national office must establish the scope or extension of the license, specifying the period for which it is granted, the object of the license, the amount, and the terms of the financial consideration. The licensee is obliged to initiate the exploitation of the invention within two years from the date the license was granted. The patent may be subject to compulsory license upon declaration by a Member Country of the existence of reasons of public interest, emergency, or national security and only for as long as such reasons persist. The granting of a compulsory license for reasons of public interest does not affect the right of the patent owner to continue exploiting such patent.
Based on the aforementioned Decision 486, on 23 October 2009, the Ecuadorian Government issued Executive Decree 118, whereby it declared the access to medicines used in the treatment of certain diseases that affect the population and that are a priority for public health a matter of public interest; consequently, declaring the possibility of granting compulsory licenses. Moreover, it declared that, in principle, all medicines and agrochemicals would be subject to compulsory licenses as there are basic concepts that prevail over commercial interests. Hence, notwithstanding the fact that the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) recognizes the right of each country to order compulsory licenses for patent-based medicines, Ecuador declared access to medicines used in the treatment of priority diseases to be in the public interest.
On 16 March 2021, in proceeding 144-IP-2019, the Andean Court of Justice issued an interpretation (interpretación prejudicial) with reference to compulsory licenses of pharmaceutical patents for reasons of public interest, as a consequence of a consultation of the District Administrative Court of Guayaquil. This ruling interpreted articles 52, 65, 68, 69, 238, 239 and 243 of Decision 486 regarding the action for infringement of an invention patent, the regime of compulsory licenses of invention patents, the compulsory license foreseen in article 65, and the criteria to be taken into account in the calculation of compensation for damages.
According to the aforementioned preliminary ruling, among the situations in which the competent national offices have the power to grant compulsory licenses, are those related to reasons of public interest, emergency, or national security, in accordance with the provisions of Article 65 of Decision 486, and only for as long as these reasons persist. In these cases, the granting of a compulsory license does not affect the right of the patent holder to continue exploiting the patent. The term “reasons of public interest” is understood to include “emergency situations”, “reasons of national security” and “other reasons that also qualify as reasons of public interest” (non-commercial public use, access to medicines, food, environmental protection, among others).
The granting of a compulsory license requires that the competent authority of the Member Country evidences, explains, and substantiates in an adequate and sufficient manner the reasons of public interest, emergency, or national security, as well as the need to adopt such measure, which must meet the three requirements of reasonableness: the judgment of suitability, the judgment of necessity and the judgment of proportionality. It must be clearly established that the duration of such concession is directly linked to the time during which such reasons persist in reality. It is not sufficient, therefore, for the competent authority of the Member Country to allege in general terms the existence of reasons of public interest, emergency, or national security, but, taking into consideration the particularities of each case, demonstrating clearly the circumstances that, for example, constitute an emergency situation or the endangerment of national security.
Likewise, it must substantiate the reasons that justify that, under these circumstances, it is essential to grant a compulsory license. For example, in the case of a health emergency caused by a pandemic, the authority must prove its existence and the harmful effects on the population (identify the pathogenic agent, characteristics of the disease, percentage of the population affected, level of contagion, mortality rate, possibility of the disease being treated with other available drugs, care capacity of public and private establishments, among other relevant information). It must be demonstrated that the purpose pursued could not be feasible without the adoption of compulsory licenses, in order for the use of these measures to be fully justified. The license is not granted indefinitely, but only for as long as such circumstances and reasons persist.
In conclusion, the preliminary ruling clearly states that it is not enough to simply state one or several of the conditions included in Article 65 of Decision 486, but that these must be explained, detailed and even individualized for each case. It does not leave room for generalization, as there is the need to demonstrate that the purpose pursued could not be feasible if a compulsory license were not adopted, in order to fully justify the use of this exceptionally limiting measure of an industrial property right.
October 15 - 22, 2021
Mark your calendar. The 2021 AIPPI World Congress online is THE virtual event you must attend this year. Registration opens in June.
The annual AIPPI World Congress is the one moment in the year when members from all around the world come together to discuss hot topics in Intellectual Property. At the heart of the event are the famous Study Questions which focus on contemporary IP topics of interest. Additionally, 12 Panel Sessions with the following topics, will fill the Congress programme:
- Compulsory licences and TRIPs waivers for COVID?
- Trademark evergreening – limitations to refiling
- Alternative medicine? Data protection rules for pharmaceutical compounds in different jurisdictions
- Video gaming: copyright & design issues
- Multi-jurisdictional inventorship
- Guilty or not guilty: platform liability & safe harbours
- Managing global patent portfolios
- Turning local into international: protection of GIs
- Transfer of priority rights – getting what you bought
- Many A’s and no end in sight: anti-suit & anti-anti-suit injunctions
- A year in an hour – EU & US case law
- Doctrine of equivalents: can the prior art infringe?
Looking for interesting discussion with your IP friends? Join the AIPPI Café, an interactive discussion room for the AIPPI Congress participants. There are eight 45-minute AIPPI Café slots on each Congress day. Each roundtable will be hosted by senior members of AIPPI Standing Committees or AIPPI Bureau Members, with a limited number of “seats” per table. Each roundtable has a designated topic, ranging from cutting-edge IP questions (e.g. Compulsory licensing in times of COVID) to important managerial topics (e.g. How to efficiently manage staff working from home). Learn from one another and thereby connect in a much more profound way than at a typical cocktail event.
New Board for AIPPI Turkey
We are glad to announce that the new Board of AIPPI Turkey was selected on March 29, 2021.
The new Board is listed as follows:
President: Irmak YALÇINER
Vice President: Melis ABACIOĞLU VİSKUŞENKO
Secretary: Halise ATABAY
Treasurer: Mesud Korkut ÜZÜM
Board Member: Önder Erol ÜNSAL
Board Member: Barış ATALAY
Board Member: Ayşe İLDEŞ ERDEM
Board Member: Volkan HAMAMCIOĞLU
Board Member: Bilge TAŞKARA
We wish them all a successful term of office.
By: Hui Zhao, AIPPI Chinese Group, Beijing, China.
The 2021 AIPPI China Youth IP Seminar was successfully held in Beijing on April 22-23, 2021, with more than 110 attendees.
The long-awaited in-person event, the 2021 AIPPI China Youth IP Seminar was held in Beijing on April 22-23, 2021, with more than 110 attendees, most of them young lawyers, patent or trademark attorneys.
This seminar was divided into ten sessions coving various hot topics as following:
Overseas Patent Protection
Pharma Patent Practice
Session V (Panel Discussion)
Trademark Hot Issues
Session VII (Japanese)
Patent Law Amendment and Patent Litigation
Session IX (Panel Discussion)
Patent Linkage &Patent Term Extension
AI Patent Practice
Session IV (Japanese)
Hot Issues in Patent Prosecution
Design Patent Practice
Patent Law Amendment and Patent Litigation Strategy and Practice
Distinguished judges from the Supreme People's Court (SPC) and officials from the China National Intellectual Property Administration (CNIPA) were invited to attend and share their perspective on respective topics.
Heather Lin, Vice-President of the Group delivered the opening speech to kick off the Seminar, and Chuanhong Long, Vice-President of the Group wrapped up the meeting, both were moderated by Richard Li, Secretary General of the Group. Mr. Hao Ma, Former President of AIPPI and Ms. Lena Shen, Assistant Reporter General of AIPPI also attended to show their support and gave a brief introduction on AIPPI and AIPPI’s work, encouraging our young members to be more actively involved.
We had to cancel the annual Youth IP Seminar last year due to the outbreak of the COVID-19 global pandemic. The Group organized the first Youth IP Seminar in 2014 and has put it on every year thereafter. The Seminar provides our young members with an opportunity to demonstrate their expertise, and exchange insights on IP in English or Japanese other than our mother tongue.
By Lorena Mersán, National Group Reporter, AIPPI Paraguay.
On April 26th, 2021 the Paraguayan Group of AIPPI, together with Inter-American Association of Intellectual Property(ASIPI) and the Paraguayan Association of Intellectual Property Agents (APAPI) organize a webinar called “IP & SMEs: successful cases of Paraguayan SMEs” to celebrate the World Intellectual Property Day. The participants learned about the experience of three successful SME in the fields of technology, gastronomy and textiles. The speakers were Juan E. de Urraza from Possibilian Tech, Mariela Ramirez from ASUKA and Camila Vaz and Olivia Cazal from Albertina. The event was moderated by Victor Abente, APAPI’s President.
By Chiara Pappalardo & Lorenzo Micacchi, Chairs of the Young AIPPI Members Italian Group.
While AIPPI launched the YAC, the Italian Group approved the initiative of two young members, Chiara Pappalardo and Lorenzo Micacchi, to start the Italian AIPPI Young members’ group.
The two main goals of the group are the spread of a mentorship program across the country to connect new and young members with their neighboring colleagues, and the organization of other initiatives aiming to promote the active involvement of new and young members into the Italian group’s activities.
The group organized its first webinar on April 16th, an “Aperitivo di proprietà industriale” (IP’s Happy Hour) entitled “Vino, birra e IP: tra vecchie problematiche e nuove prospettive” (Wine, beer and IP: between old problems and new perspectives), a sparkly way to discuss some issues related to IP aspects of the commercialization of alcoholic products.
The discussion was lead by Lorenzo Micacchi, who provided a brief history of wine and beer recalling the most significant inventions, discoveries and IP-related events that characterize the wine and beer industries. Since the domestication of the grapevine in the Neolithic era, this industry has shown a continuous and solid tie with IP.
The first topic was about trademarks used for wines and beers, with a special focus on de facto trademarks and distinctiveness.
Valentina Malerba told us how, in recent years, the wine sector has significantly grown, with increasing attention focused on the "image" of the product and therefore on IP rights. Nevertheless, this figure has to be read in light of the historic features of the sector, characterized by family companies (and a large use of patronymics) for a long time. These considerations allow us to understand the Italian and EU case-law approach to some traditional IP issues in the wine sector. Alessandro Bura focused his attention on the beer sector instead. As happened in the wine sector, demand for beer has recently increased, following increased availability through large-scale distribution of craft brewery products. It follows that consumers are much more demanding and thus their attention when purchasing the product should be considered more than average. This has an impact on the assessment of trademarks’ distinctive character when approaching their validity or their infringement. When it comes to the indication of origin, EUIPO’s and Italian Courts’ decisions do not reach consistent results even amongst the same Division or Court.
The second topic was about the online commercialization of alcoholic products. Valeria Giugliano explained us that, as for all product categories, also for alcoholic beverages there has been a very important development of online trade in recent years. With regard to the Italian B2C e-commerce of wine, some peculiarities can be highlighted: the possible need for geoblocking outside the country, the possibility of setting up a selective distribution for high quality wines (as luxury products), the rules on warranty and return to apply (e.g. when wine tastes corked). It is also worth mentioning the need to protect minors and to technically prevent them from buying alcoholic products over the internet according to national law. Chiara Pappalardo, at the end, focused on the advertising of alcoholic products, recalling the norms stated by Italian Institute for Advertising Self-Regulation since 1975, providing some examples of incorrect commercials. Then she examined how those norms are applied to online marketing, with the cooperation of the online commercial platforms, and specifically to influencer marketing.
This first initiative could be summarized as a nice kickoff to foster the active involvement of young members in the Italian group activities.
By Mr. Yongjian LEI of Wanhuida Intellectual Property and Mr. Yakai SHI of Beijing DAKUN Law Firm, China.
On the afternoon of May 14, 2021, the seminar Trademark Practice in Internet Economy was jointly held by the AIPPI Chinese Group and the Intellectual Property Study and Service Center of Zhejiang Province in Hangzhou, the hosting city of the 2023 AIPPI World Congress. It attracted more than 100 attendees from judicial authorities, administrative authorities, the academic community, industries, law firms, and IP firms around the country. The seminar was sponsored by the Alibaba Group.
Ms. Jingya Chen, Deputy Director of the Intellectual Property Study and Service Center of Zhejiang Province, and Mr. Richard Yi Li, Secretary General of AIPPI China, delivered speeches at the opening of the event, which was moderated by Maggie Mi, Co-Chair of the Trademark Committee of AIPPI China.
Besides speakers from the Group, we also had invited guest speakers from SPC, the Supreme People’s Court, CNIPA, the China National Intellectual Property Administration, the People’s Court of Yuhang District of Hangzhou, the Institute of Law of the China Academy of Social Sciences, the Alibaba Group, COFCO Corporation, and Baidu. The seminar was divided into two sessions. The first session focused on “Non-use cancellation against a registered trademark under the new forms of the internet industry”, and the second session was centered on “Trademark protection on the internet-related goods/services under the new forms of the internet industry”.
Mr. Yongjian Lei, a member of the Trademark Committee of AIPPI China presided over the Seminar. Ms. Wei Zhou, another member of the Committee, presented her views from the perspective of a trademark attorney. The Committee Co-Chair Mr. Yakai Shi and other committee members Ms.Chengyan Zhao, Ms. Xuefang Huang, Mr. Qiang Ma, and Ms. Rachel Zhang contributed a lot to the success of this event.
By Laurence Loumes, Plasseraud IP and AIPPI France National Group Reporter.
On April 22, 2021, a webinar was held between the AIPPI national groups of France, Germany, and Poland under the direction of their respective presidents, Corinne Vedel, Karsten Königer and Bartosz Krakowiak, and Marek Łazewski - Secretary General of AIPPI. This webinar brought together over 100 participants on the latest developments in the IP law of the three countries.
The three groups are used to organizing trilateral meetings every two years with a place of gathering rotating between the three members. The goal of such meetings is to have a comparative approach in French, German and Polish IP laws on given topics. We had to maintain the tradition virtually this year, waiting for the next event that will be held in Munich, Germany in 2022!
The German-Polish trilateral meeting is not the only one where AIPPI France takes part. AIPPI France is currently working with the Italian and Spanish groups to hold a trilateral meeting together. Stay tuned for this next event.
© All rights reserved.