Publications

Total Documents: 28

 

Patent Harmonisation – What is happening?

Document No: PUB 20G/15 Posted: 04 March 2016

There are a number of patent harmonisation initiatives ongoing, some driven by the IP5 Of­fices and some through WIPO and the informal B+ subgroup. Most of these initiatives are con­cerned with procedural improvements aimed at making the patent prosecution process simpler to the benefit of the offices and users. However, since 2013 there has been a major push towards substantive patent law harmonisation driven by the chair of the Group B+, John Alty.

The Global Dossier (GD) project arose out of work initiated by the Trilateral Offices including that on the Common Application Format (CAF) and Common Citation Document (CCD), with the purpose of agreeing common procedures between the Offices. Both CAF and CCD have subsequently been taken over by the IP5 Heads.

 

Patents and Standards

Document No: PUB 20H/15 Posted: 04 March 2016

In October 2014, the European Commission began a public consultation on patents and standards. The aim of this consultation was to gather information and views on inter­play between standardisation and intellectual property rights (IPR) such as patents. The purpose of the consultation was to allow stakeholders interested in stan­dardisa­tion involving patents to bring to the Commission’s attention their views on:

–how the current framework governing standardisation involving patents performs; and

–how it should evolve to ensure that standardisation remains efficient and adapted to the fast-changing economic and technological environment.

 

 

Progress on the EU Trade Secrets Directive

Document No: PUB 20I/15 Posted: 04 March 2016

Following major developments during December 2015, we can now report that the EU Trade Secrets Directive has moved to a near-final stage, with the final legislation looking likely to be passed early in the New Year. Although much remained to be finalised as recently as late autumn, a sustained push by the out-going Luxembourg Presidency of the EU Council led to several “trilogue” meetings in the early winter 2015, with a “provisional agreement” being reached on 15 December. The text in question was then released for public consump­tion on 22 December, allowing us to assess the quality and likely impact of the Directive. We can also report on the effectiveness of the IP Federation’s efforts to engage with the legislative process, which appear to have had a positive impact. 

Progress on the EU Trade Secrets Directive

Document No: PUB 20D/14 Posted: 03 March 2015

2014 has seen significant progress in relation to the EU’s legislative efforts on trade sec­rets. Since the December 2013 edition of Trends and Events went to press, we have seen: (i) the publication of the Commission’s initial proposal for legislation; (ii) negotiations within the Council of the European Union resulting in an agreed compromise text for the Directive; and (iii) early exchanges of views and draft opinions within the European Parliament.

Patent Consultations

Document No: PUB 20G/13 Posted: 23 December 2013

In 2013 the IP Federation, based on discussions in the Patent Committee and at Council, has responded to various consultations and discussion papers from the UK IPO and EPO.

Patent-related incentives and impediments to transfer of technology

Document No: PUB 20H/13 Posted: 23 December 2013

The Standing Committee on the Law of Patents (SCP) comprises all Mem­ber States of WIPO (World Intellectual Property Organization) and/or of the Paris Union, and, as observers, certain Member States of the UN non-members of WIPO and/or Paris Union, as well as a num­ber of inter­govern­mental and non-governmental organisations.

At its nineteenth session held from 25 to 28 February 2013 in Geneva, the SCP decided that the Secretariat should revise the document on transfer of technology (document SCP/18/8) by adding further practical examples and ex­periences on patent-related incentives and im­pedi­ments to transfer of technology on the basis of input received from members and ob­servers of the SCP, taking into account the dimension of absorptive capacity in tech­nology transfer. Thus the IP Federation was invited, in its capacity as observer to the SCP, to submit such examples to the Inter­national Bureau on or before 30 June 2013.

Patents, Trade Marks and Design Rights: Groundless Threats

Document No: PUB 20I/13 Posted: 23 December 2013

On 17 April 2013, the Law Commission published a consultation paper on groundless threats. This consultation relates to their Patents, Trade Marks and Design Rights: Ground­less Threats project. The Commission was consulting on two approaches to reform:

  • The first is to build on the reforms made to patent law in 2004 and to extend these to the other rights. We also propose that legal advisers should be protected from liability for groundless threats.
  • The second approach is to treat groundless threats as a form of unfair competition and to introduce a new and broader cause of action based on the Paris Convention. 

Privilege

Document No: PUB 20J/13 Posted: 23 December 2013

If a client is involved in litigation in a common-law country, then discovery (disclosure) may be sought of his communications with IP advisers. Clients have encountered serious and often insuperable obstacles to asserting privilege against such discovery with respect both to local advisers and to foreign ones. These obstacles are essentially unique to IP cases because (a) internationalised IP activity is the norm, and (b) so-called “non-lawyer” patent and trade mark attorneys/agents[1] are trusted major providers of IP legal advice and draft­ing. Privilege in general is in the public interest, and the anomalies which have arisen are accordingly contrary to the public interest. In the UK, these anomalies have been rectified to a limited extent in CDPA s. 280 and TMA s. 87, but much remains to be done both in the UK and elsewhere. (An extended discussion, albeit to be read in the light of the recent developments reported below, can be found in Trends and Events, December 2010, pages 24–27.)

 


[1] “So-called” is a reference to the UK situation. The Legal Services Act 2007 treats barristers, solicitors, patent and trade mark attorneys, and other specified legal professionals all as “lawyers”. 

Proposal for Collaborative Search and Examination (CSE) in the PCT

Document No: PUB 20C/12 Posted: 08 March 2013
Collaborative search and examination (CSE) has been the subject of prolonged support by the Federation, beginning with a presentation by a Vice-President in June 2007 at an international Colloquium on Patent Quality in Amsterdam, and in 2012 involving con­tribu­tions by the President at similar events in London and Warsaw. Since 2010, support for CSE has been given also by the International Chamber of Commerce (ICC), which has been valuable because of ICC’s relationship with WIPO.
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