[Conference Report] Patents, truth, PCT and more at the UIC School of Law International IP Practice Seminar

Back in October, University of Illinois Chicago School of Law’s Center for Intellectual Property (“IP”), Information, and Privacy Law organized and virtually hosted its International IP Practice Seminar. The Seminar, co-organized by the World Intellectual Property Organization (WIPO) and Kuhnen & Wacker, brought together international policymakers and practitioners to discuss the worldwide landscape of the most cutting-edge IP issues from a comparative perspective. Each speaker brought unique national and international perspectives across industries, technologies, and IP subject matter to the discussion.  Adam Ernette (UIC) reports on the seminar.  

Over to Adam:

"Patents and Technology: Perspective, Truth, and Change

WIPO’s Deputy Director-General of Patents & Technology, Ms. Lisa Jorgenson, spoke at the Seminar’s featured session. Prof. Daryl Lim, Professor of Law and Director of the University of Illinois Chicago School of Law’s Center for Intellectual Property, Information, & Privacy Law, moderated the session.

Ms. Jorgenson discussed her new appointment as WIPO’s first IP and Gender Champion. She described her role as leading a team that “looks external to WIPO to ask how do we get women involved in the invention, creation, and innovation processes, and how do we make sure they’re well-served within the IP system.” Ms. Jorgenson noted that her new appointment serves as the basis for WIPO to put together a stronger program in this area.

Ms. Jorgenson also discussed how COVID-19 affected WIPO and the Patent Cooperation Treaty (PCT) system. She noted that while PCT filings increased overall by about 4%, the increase was felt more in biopharma, medical devices, organic chemistry. She cautioned that because PCT filings are second filings, meaning the filings for the technologies likely had to happen before COVID-19, it “means [these trends are] probably not the result of COVID-19 technologies, but more in the commercialization area, which would be filing more PCT applications from the applications they filed.”

Importantly, the pandemic brought to WIPO’s attention areas to better serve its member states, specifically, in preparation for future disruptions. For example, WIPO took steps to clarify PCT language, including Rule 82quarter, which primarily does three things:

• “Epidemic” will be added to the rule as an example of a force majeure situation, which would trigger the excuse of the delay in meeting time limits;
• Adds the explicit legal basis in that rule, which will provide for the ability to wave the submission of evidence; and
• PCT offices, time limits may be extended, starting at two months but could be extended longer, if a “general disruption” is experienced caused by a force majeure.

The buzzword for Ms. Jorgenson was “competitive” – the goal is to keep WIPO competitive. The idea of competition to WIPO’s PCT system is a broader one in looking at how WIPO and its related services can remain valuable as a whole to its member states. PCT is just one aspect of that value. Therefore, “‘Competition’ is making sure that [WIPO’s] member states don’t find a need to go somewhere else and get all of the various pieces of what they need to be able to have a balanced IP system where their economy can grow.”

As far as WIPO staffing and training goes, Ms. Jorgenson reflected that they were probably not prepared to transition to remote work immediately. Despite this, WIPO PCT pivoted well enough to keep up 100% of its productivity. That said, WIPO is in the process of trying to bring people back to the office by the end of 2021. It achieves this by bringing staff back in waves and implementing flexible schedules where staff can choose two out of five days to come into the office and work remotely for the remainder of the week. To assist, Ms. Jorgenson helped convene a task force to create a “high impact virtual training” program. The goal of this program is to have the ability to provide the exact content tailormade to the audience to keep them engaged before, during, and after the training. This will hopefully also encourage them to continue with other training WIPO will offer.

Ms. Jorgenson and Prof. Lim’s conversation rounded out by discussing the reciprocal relationship between the Global Innovation Index (GII), PCT, and gender. Ms. Jorgenson highlighted the direct connection between the GII and PCT, noting that PCT gave a lot of data to the GII. Still, she would like to see GII providing PCT with its data, including data on women inventors.

Along with the featured session were panels comprised of experts from the major jurisdictions to discuss various IP policy and practice areas.

Key Developments in International Trademark & Design Law

The first panel, moderated by Mr. Christian Thomas (Kuhnen & Wacker), discussed issues such as (1) changes to the Chinese trademark system, including changes to the review of bad faith applications; (2) registrability of and search tools for multimedia and non-traditional marks across jurisdictions; (3) the U.S. Trademark Modernization Act, including the updated letter of protest and its formal requirements, and new ex-parte non-use cancellation tools, like expungement and reexamination; (4) designs, trademarks, and functionality; (5) changing terminology in the design space from the use of “aesthetic” to “ornamental”; (6) WIPO and the Hague System; and (7) amendments to the Chinese design system.

The panel also consisted of Ms. Nancy Geng (Linda Liu & Partners), Ms. Jessamyn Honculada (WIPO), Mr. Gordon Humphreys (EUIPO), Mr. Peter Spies (DTL Ltd.), and Mr. Guanyang Yao (Liu, Shen & Associates).

Significantly, Mr. Peter Spies opined that new non-use cancellation proceedings before the USPTO (i.e., expungement and reexamination) would “greatly impact” trademark practice. “Every time you file an application, you get a rejection from the USPTO, oftentimes it’s formalities. Very often you’ll receive likelihood of confusion refusals.” Mr. Spies opined, “And some of these marks are very old, some of these marks cover a very broad description of good and services. These proceedings will allow attorneys to attack these cited marks if they have not been in use, and it will allow attorneys to either cancel them or limit the scope of their registration.” Compared to a cancellation proceeding, Mr. Spies noted the cost-effectiveness and timeliness of these proceedings would also impact the frequency of their use.

Gordon Humphreys noted something like this occurs in the EU, which some actors have used abusively. When asked, Mr. Spies noted there is certainly a possibility of misuse, but that the required certified statement accompanying the expungement or reexamination filing contains a verified statement requiring the filer to show they have engaged in a “reasonable investigation of that non-use,” which should address the issue of rent-seeking to which Mr. Humphreys alluded.

Key Developments in International Patent & Trade Secret Law and Policy

The second panel was moderated by Dr. Stanley Lai (Allen & Gledhill LLP). The panel discussed issues such as (1) European Patent Office (EPO), the pandemic, the innovation boom, and the resilience of IP-intensive industries; (2) digital transformation at the EPO; (3) the Unified Patent Court (UPC) and the status of ratification and remaining process of the UPC Agreement; (4) UPC basics, its benefits, and potential issues; (5) multinational applications and foreign filing licenses; (6) international licensing agreement traps and considerations; and (7) China’s amendment of its unfair competition laws and the consideration of a standalone trade secret protection law.

The panel also consisted of Ms. Jill Ge (Allen & Overy), Dr. Roberta Romano-Götsch (European Patent Office), Mr. Marcus Thymian (GrowIP Law Group), and Dr. Michael Zeitler (Kuhnen & Wacker).

Strategies for Patent Cooperation Treaty (PCT) Filings

The third session was moderated by Mr. Matthias Reischle-Park (WIPO). The panel discussed topics from the perspective of China, Germany, Europe, Japan, and the U.S., including (1) latest developments of the PCT system, including imminent rule changes to filing standards and the appointment of another international searching and preliminary examining authority – the Eurasian Patent Organization (EAPO); (2) whether priority claiming can be amended or added after entry of the national phase in; (3) assignment of the priority right when filing the PCT application; (4) and problems arising from assignment of rights from a Chinese citizen to an external jurisdiction and best practices for avoiding these issues

The panel also consisted of Mr. Katsuhide Akazawa (Tani & Abe), Mr. John Richards (Ladas & Parry LLP), Ms. Nancy Song (Linda Liu & Partners), Mr. Detlef von Ahsen (Kuhnen & Wacker), and Mr. Yunpeng Xiao (CNIPA).

Intersections in International IP Law, Policy, and Practice

Mr. Kenneth Ng (Davies Collison Cave) moderated the final panel of the seminar. The panel also consisted of Mr. Duck Soon Chang (Kim & Chang), Mr. Raymond Millien (Harness Dickey Pierce), Mr. James Pooley (James Pooley, PLC), Ms. Maria Strong (U.S. Copyright Office), and Ms. Alice Wang (Beijing Guantao Law Firm).

The panel discussed topics such as (1) building a truly international team, (2) the challenges of being truly international, (3) international trade secret enforcement, (4) forum selection in enforcement actions, (5) injunctive relief, and (6) copyright considerations near and far.

Mr. Millien lamented that too many entities bill themselves as “international.” “If you want to have an international strategy, you’ve got to have your folks around the world,” Mr. Millien advised. “You can’t tell me, if you’re a Korean company, all your R&D is in Korea and all your smart people are in Korea.” To be truly international, you have got to have boots on the ground where you’re harnessing IP, and you have to have boots on the ground where you’re most likely to enforce your IP.”

Concerning copyright issues, specifically, Associate Register Strong highlighted some of the recent actions being implemented by the U.S. Copyright Office. She took aim at the ability to protect copyright, stating, “If we can’t have an effective means to enforce a right, what’s the value of that right?” Associate Register Strong noted that federal copyright litigation could be incredibly cost-prohibitive, meaning copyright holders are left with a right by no remedy. Finally, she highlighted the Copyright Office’s efforts in standing up a small claims tribunal within the Copyright Office under the Copyright Alternative in Small-Claims Enforcement (CASE) Act.

The program for the Conference can be found here.


On behalf of UIC School of Law’s Center for Intellectual Property, Information & Privacy Law, we look forward to welcoming you to our events in 2022.

For more information, please contact Adam Ernette (aernette@uic.edu)"