AIPPI Congress Report 3: Hot topics in IP

The final morning of the AIPPI Congress in Cancun was hot, the Caribbean air having whipped up a thick humidity that turned the AmeriKat's mane into lion proportions.  So it was fitting that there a panel session dedicated to Hot Topics in IP.  Dr Catherine Bonner (Chapman IP) was on hand to summarize what the next big things in IP will be.  No surprise that one of them included Brexit.  Over to Catherine for her report:

The AmeriKat's view over the Caribbean waters

"At the AIPPI Congress in Cancun the weather is hot, at 30°C and 71% humidity, and the IP Panel Sessions are the same. Wednesday morning’s Briefing; ‘Hot topics in IP’ excellently chaired by Eryck Castillo gave a summary of six burning issues in the World of IP. 

1.  First up to the plate, with the "Implications of Brexit for IP" was Mr Justice Henry Carr (UK High Court)   

A tough topic and, as Carr J himself acknowledged, one that back in his days at the Bar he would have labelled as "a hard case to present".  There is not yet clarity as to the ultimate position and the likely consequences. It is comparable to discussing the implications of a contract when we do not know the terms of the contract or even if there is or will ever be a contract. Although some may say that any discussion is premature to avoid disappointment, Carr J did not seek an adjournment but pressed on. 

The gallop through the challenges ahead highlighted that with all EU Directives due to be transposed into UK law, judgments of the CJEU should be considered by the Courts. The hardest topic though is expected to be exhaustion of rights, with potentially international exhaustion on the cards. Carr J foresees the interests of industries such as life sciences being pitted against other sectors, for example automotive, with a seamless supply chain goal. The way forward is surely not one based on a judicial decision but on a political decision.

Expressing his personal view, Carr J considered it likely that the UK would participate in the UPC with a deal on Brexit, but that without a deal participation might be challenging. 

As a final thought – could the implications of Brexit be that the UK seizes the legislative opportunities to provide more favourable laws for innovators? Think SPCs extended to medical devices, patent term extensions, and revisiting SPC protection so that the basic patent could be directed the core inventive advance rather than having to identify the active ingredient with ‘specificity’[and/or whatever the test is now after this summer's Gilead decision, notes the AmeriKat].  

As usual, no answers only more questions on this hot topic! 

2.  Judge Dr Klaus Grabinski (German Supreme Court) discussed the Unitary Patent Court (UPC), Brexit implications and the German constitutional complaint.

So far the UPC Agreement has been ratified by the UK and 16 other Participating Members, but crucially not yet Germany. Judge Grabinski reminded us of the importance of the Protocol on the UPC Agreement which so far has also not been ratified by Germany.

The ratification process in Germany is now stalled with matters stayed ahead of a green light to proceed from the federal court. Although the Complaint is listed as for consideration by the Judge Rapporteur in 2018, there is no guarantee or commitment that the case will be decided this year.

There was detailed description of how the UK could possibly stay in the UPC after leaving, with the takeaway point being that the Vienna Convention on the Law of Treaties and EU regulation 1257/2012 would not prohibit or be incompatible with the UK having a status of Participating Member State of the UPC. Watch this space! 

3.  Tony Rollins (CIPA) was up next taking us through Discussions of Substantive Harmonisation of Patent Law from an EU industry perspective. 

Back in 2014 the Trilateral Offices of the JPO, USPTO and EPO had invited industry views and a proposal on Substantive Patent Law Harmonisation (SPLH) and while there was no consensus on all points, the Industry Trilateral had made good progress.

The contentious issues that the Trilateral has grappled with since 2014, are; Grace Periods; Prior User Rights, Conflicting Applications, 18 month publication (which had been agreed), and first of all – a common working definition of "prior art". Tony noted that some of these topics had also been rigorously discussed within AIPPI Congress this week.

A common European voice was sometimes difficult to find in the Industry Trilateral as there are a variety of views among the Member States. The challenge is to look forward and see what would be of future benefit for all, over and above individual current practice in national jurisdictions.

Notable progress had been made regarding a grace period, often a divisive topic. The Trilateral had made a step forward with the proposal of a filing statement of the disclosure to be graced, triggering 18 month publication. Alongside this is the proposal for a penalty for non-filing of the statement. In this case, without a statement of the disclosure to be graced, there would be something akin to prior user rights (Defence of Intervening User). 

4.  TCL v. Ericsson - Stephen Korniczky (Sheppard Mullin) gave us a fascinating insight into the case on FRAND licenses for SEP (Standard Essential Patents) and the, now, more level licence playing field. 

TCL sought a worldwide licence agreement for 4G SEP from Ericsson and commenced proceedings in the Central District of California claiming that the terms offered during negotiations were not fair and reasonable rates and were in fact discriminatory as compared to other licensees.

The hot topic here is the calculation of the FRAND rate. Redacted slides were shown with licence calculations establishing the % offered to existing licensees as compared to that offered to TCL. With the outcome of the case in favour of TCL, potential licencees are now asking SEP owners for claim charts, clear methodology for how rates are calculated and confirmation that the offered rates are the same as those offered to existing licencees. 

The second standout point was the issuance of an anti-suit injunction by the Californian court against related pending infringement actions in other jurisdictions. 

5.  Wolf Meier- Ewert (WTO) condensed the mammoth WTO dispute – Australia/Tobacco Plain Packaging (TPP) measures and the ruling in favour of the TPP into a speedy 15 minutes. 

The history here is well known, litigated worldwide and Wolf Meier-Ewert set out an overview of the complainants’ claims.   The WTO case considered objections that the TTP restrictions on the use of certain signs were contrary to TRIPS, Paris Convention and GATT.

The WTO panel stated that the TTP provisions have the objective to improve public health and that the TTP measures were not more trade restrictive than necessary to fulfill the legitimate objective. In addition WTO concluded that there was no unjustifiable encumbrance to trade with the TTP provisions.

Appeals have been filed by Honduras and Dominican Republic to the outcome of the panel reports. The tim line of the process of appeal is difficult to track and predict due to fluidity in the panel members and appointments, so this hot topic may smoke for some time to come.

6.  Finally, Eryck Castillo (Uhthoff, Gomez, Vega & Uhthoff) ran though recent amendments to Mexican Industrial Property Law, coming into enactment, including significant amendments to trade mark law.

The new trade mark categories comprise the non-traditional trade marks of sound, scent, holographic and trade dress, as well as collective trade marks, certification trade marks, and protection for famous and well known marks. There are also amendments including protection for geographical indications (GIs) although the operation and functioning of the GI registry is not yet clear. These momentous changes have led to a recent boom and huge increase in new trade mark filings in the last month alone. 

In addition the amendments to the Industrial Property Law now increase Industrial Design protection from 15 years to 25 years, and for any existing designs an increase for an additional 10 years. Looks like there might now be a rush on new filings in Mexico!

Eryck closed the interesting and thought-provoking session after taking questions from the floor. Questions spanned the UPC and EP national rights, we touched again on the German constitutional challenge to the UPC and WTO packaging rules as well as the worldwide licence negotiation in view of TCL vs. Ericsson. The panelists and attendees were thanked for their presence and contributions at such an early morning session. We then, of course, moved to the beach for margaritas and jetskiing foyer for coffee and networking.  "