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Samson Helfgott is a partner with KMZ Rosenman in New York. He has practiced for more than 30 years in domestic and international patent, trademark, and copyright matters.
A number of interesting items have come up with respect to the I2P Group (International Intellectual Property Group), which are of interest to the entire membership.
The heads of the world’s five largest intellectual property offices have been meeting together since 2007. These offices—including the USPTO, EPO, JPO, Korean Intellectual Property Office, and Chinese Intellectual Property Office—together handle over 90 percent of the world’s patent applications. For the first time, the heads of these IP5 offices also met with industry representatives from the respective five countries. During the meeting, the heads of the patent office sought input from users on their needs concerning various projects being undertaken by the IP5 Organization.
The meeting had an initial exchange of views on a “Global Dossier” concept aimed at simplified procedures for patent applicants for improving the efficiency of the offices when dealing with the same patent application. The concept presents a virtual environment to provide stakeholders secure, one-stop access and management to dossier and/or examination information of all family applications of corresponding offices by establishing a common service interface to each intellectual property office’s electronic dossier system.
This proposal would also serve as an umbrella for numerous existing projects. These projects would effectively become modules in the overall Global Dossier System. By way of example, the Common Hybrid Classification project, the Common Citation Document, the various projects on machine translation of patent documents, various work-sharing projects, etc., all would fit within this overall umbrella environment.
During this meeting, several of these individual projects also were reviewed and their accomplishments updated. With respect to the Common Hybrid Classification Project, the USPTO and EPO will launch the Cooperative Patent Classification as of January 1, 2013. Thereafter, they will work to further include various searching strategies from the Japanese Intellectual Property Office.
Following a decision by the Federal Court of Canada relating to sound trademarks, the Canadian Intellectual Property Office issued guidance with respect to the requirements for accepting sound mark applications. The requirements include that the sound mark application should clearly state that the registration of a sound mark is sought. Furthermore, the application should contain the following:
Furthermore, the electronic recording of the sound:
At the end of 2011, a new specialized court, the Court on Intellectual Rights, was added within the Russian state court system. Currently, state courts consider disputes between legal entities. Under Russian law, if the dispute involves an individual, then the dispute is subject to consideration by regular courts.
The new court is to be established by February 1, 2013, to consider cases related to the protection of intellectual property rights. This is a first specialized state court to be established in Russia. Once this court is established, pending cases that have been previously initiated in other courts will continue and not be transferred to this new court. Only new cases related to intellectual property will go before this court.
This court will handle appeals against decisions of the Russian Patent Office and cancellation of patents. Once this new court is established, it also will hear all cases relating to intellectual property, whether it involves an individual or a legal entity.
In March 2012, the Australian Parliament passed a new intellectual property law, effectively “raising the bar.” The law will go into effect approximately 12 months after it is signed.
The new law harmonizes Australian patent law with that of other countries around the world. By way of example, local novelty as prior art is changed so that Australia will now accept prior art from anywhere in the world. Additionally, the definition of “useful” in the Australian patent law is changed so that the specification must disclose a “specific, substantial and credible” use for the claimed invention. Likewise, the requirement for sufficiency will be more stringent and the requirement for the claims to be fairly based on the matter disclosed in the specification is being replaced with the requirement that the claims be supported by the specification.
Examiners also will have to be more careful in their examination and will have to consider all information available to the public, including use of the invention.
In most circumstances, amendments will no longer be allowable if as a result it would extend beyond that which was originally disclosed.
Beginning in the fall of 2013, Finland will establish within the existing Market Court a centralized intellectual property court that will have exclusive jurisdiction, in the first instance, with respect to all matters concerning intellectual property rights. Currently, the Market Court is an existing specialized court but only for market competition law. This court will therefore be expanded to include the centralized intellectual property court as part of its jurisdiction.
This centralized intellectual property court will cover all matters relating to intellectual property matters. In addition, it will have exclusive jurisdiction with respect to appeals over administrative decisions of the Finnish Patent Office. Appeals from the decisions of the Market Court with respect to intellectual property matters will proceed to the Helsinki Court of Appeals, while appeals in administrative matters would take the administrative route to the Supreme Administrative Court.
Although WIPO’s general assembly agreed in 2009 to permit the Israeli Patent Office (IPO) to act as an ISA and IPEA under the PCT, preparatory efforts were required in order to permit the IPO to actually serve in this capacity. Such preparatory efforts included recruiting new examiners, training examiners, conducting an internal pilot program, developing a new computerized system permitting online filing, legislative changes, and new regulations. All have now been concluded as of June 1, 2012. Israeli applicants will be able to select the IPO as the ISA and IPEA for their PCT applications.
The costs for such filing are relatively low and it is anticipated that in future years the IPO will offer their PCT searching and examination activities to other non-Israeli applications as well.
After 40 years of discussion on the establishment of a single EU patent with a single court of enforcement, it appears that the potential for agreement may be finally reached. Under the single EU patent, it would be possible to obtain a single patent among the 25 EU states. The official languages would be English, French, and German. Currently, Italy and Spain have not yet agreed; however, through a regulatory approach the EU will be able to move forward even in the absence of Italy and Spain.
Along with the establishment of the single patent was the establishment of a single European court for enforcement of such patent. The last issue to be decided was the location of the patent court, which was contested between London, Berlin, Paris, and The Hague. It appeared that the Netherlands might be willing to remove their request in favor of moving forward on the establishment of the EU system. There were discussions that perhaps Germany might likewise remove its consideration. However, the final battle appeared to be between Paris and London, with the potential of a European compromise being reached splitting the arrangement so that the court’s headquarters would be based in one country with a branch office and support functions in another.
The second meeting of the Tegernsee heads occurred in April 2012, and was attended by the heads of the patent offices and representatives from Denmark, France, Germany, Japan, the UK, the United States, and the EPO. The meeting was aimed at considering further steps to advance patent law harmonization.
The participants noted several significant developments in Europe, Japan, and the United States, providing additional impetus to harmonization since the first Tegernsee meeting occurred in July 2011. They also took note of the work done by the various patent offices and approved an Aggregate Matrix Document as a reflection of the various existing patent laws in the respective jurisdictions. This document will form the basis for further work of the Tegernsee expert’s group.
They reaffirmed that the issues key to harmonization that they would address included first to file, grace period, prior user rights, scope of prior art, definition of novelty and nonobviousness/inventive step, 18-month publication, and treatment of conflicting applications.
The expert group will report on the work on at least the grace period, 18-month publication, prior art effect of secret prior art, and prior user rights at the next meeting to be called in the fall of 2012.