New national groups from Pakistanand Vietnam were welcomed atthe AIPPI Executive Committee

meeting yesterday.Both groups have been formed in the past

year, and the ExCo confirmed them in near-unanimous votes.The Pakistan group, which has 38 mem-

bers, was presented with its flag and took upits position in the hall (between Norway andPanama) to vote on the rest of the agenda.Vietnam’s group is not represented in

person in Rio de Janeiro, but KarenAbraham from Malaysia accepted thegroup’s flag on its behalf. She has been activein setting up the new groups and was presentat its inaugural meeting in Hanoi in Augustthis year.AIPPI now has 66 national groups and

two regional groups (covering the Caribbeanand the Middle East). Including independentmembers in countries where there are not yetnational or regional groups, there are mem-bers in more than 100 countries.

Yesterday’s lunch panel featured dif-fering perspectives on “Continuousimprovement of IP systems” from

representatives from patent offices.Luiz Otávio Pimentel, President of

Brazil’s National Institute of IndustrialProperty, Ministry of Development andForeign Trade, went first and revealed a chal-lenging situation for his office. The countryhas long suffered a large backlog of applica-tions. The effort to improve this has becomean even bigger challenge with Brazil’s econo-my falling into recession, with a contractionof 1.9% between April and June. “In Brazil we are going through a large

revamping of our public structure,” saidPimentel, speaking through a translator atthe lunch. “Brazil is going through a difficulteconomic situation. That means a reduc-tion in expenses for public institutions andthat will include INPI too.”Rather than the hoped-for increase in

examiners to reduce the backlog, INPI mustmake do with what it has. “The worst thing we face is a backlog,”

he said. “There is a problem at the momentwhere we would need more people workingfor us but that is not going to happen. Onechallenge we have faced is the lack of quali-fied people. Also, our salaries are not ascompetitive as other institutions in publicservice. There is a need for remedies.”Pimentel outlined a number of initiatives

he is undertaking to tackle this problem. Heexpanded on these in an interview withAIPPI Congress News later (see page 5).Kunihiko Shimano, Director-General of

the Trial and Appeal Department in theJapan Patent Office (JPO), gave an updateon his office’s activities. One initiative it is undertaking is to

implement three pillars of quality measure-ment: quality assurance, quality verifica-tion, and external evaluations. The Hague

Agreement concerning international designregistrations has been effective in Japansince May this year. Japan last year alsoamended its Trade Mark Act to protectnon-traditional marks such as colours andsounds. The JPO has also been collaborating

with other offices. In May it signed a mem-orandum of cooperation with the USPTOto begin a bilateral Collaboration SearchPilot programme. This allows the twooffices to share search information before afirst office action. Niclas Morey, Director of International

Organisations, Trilateral and IP5 at theEuropean Patent Office (EPO), gave theEuropean perspective. He said there hadbeen a small dip in in the rate of increase inEuropean patent filing of 3.1% in 2014.“We are quite pleased about that,” he said,noting the 5%-6% increases in the yearsbefore that.

PUBLISHED BY

managingip.com

AIPPI CONGRESSNEWS

46TH WORLD IP CONGRESS, RIO DE JANEIRO, TUESDAY 13 OCTOBER 2015

PROFILEJOHN BOCHNOVIC, NEW EXECUTIVEDIRECTORPAGE 6

PREVIEWSINVENTORSHIPPAGE 8

TRADE SECRETSPAGE 10

PROFILE

LAURENT THIBON PAGE 3

NEWS

FRAND IN FOCUS PAGE 4

INTERVIEW

LUIZ OTAVIO PIMENTELPAGE 5

THINGS TO DO

RIO’S NIGHTLIFE PAGE 10

WHERE AND WHEN

TODAY’S SCHEDULEPAGE 12

TODAY’S WEATHER

WEATHER 27°C

TheAIPPIfamilyexpands

Patent Office views from around the world

The Executive Committee meeting yesterday: full reports on page 2

The recently agreed Trans-PacificPartnership (TPP) was discussedduring yesterday’s Executive

Committee meeting. Peter Siemsen ofDannemann Siemsen, chair of AIPPI’sStanding Committee on Free-TradeAgreements, described it as “an extremelyimportant area involving many countries”. Though the official text has not been

released yet, Siemsen said that certain factswere known, including that 12 countries aredue to be members and that it is due to beimplemented within three years, thoughsome countries will have a transition periodof 10 years.One of the 23 chapters concerns IP, said

Siemsen, and is understood to cover trademarks, geographical indications, industrialdesigns, patents, copyright and enforcementand to promote access to innovation andtechnology transfer. “It has been possible toinclude rules on traditional knowledge andgenetic resources, a sensitive issue for manyemerging economies,” he added. In addi-tion, the environment chapter addresses bio-diversity.“The consequences of this agreement will

affect many countries not on the rim of thePacific,” said Siemsen, whose Committeewill continue to study it. In an additionalstatement, Stephan Freischem of theGerman group noted that leaked versions ofthe text included mention of a grace periodfor patents, and said this should be “closelymonitored”. Other Committees who provided an

update on their work were the newly formedPharmaceutical Committee, which has 35members; the Committee on Patents, whichhas been focusing on harmonisation issues

including the Tegernsee Process, the IP5users consultation and the work being doneby the B+ group; the GeographicalIndications Committee, which representedAIPPI at the recent Diplomatic Conferenceon the Geneva Act; and the TRIPSCommittee, which held a workshop duringthe WTO ministerial meetings held lastmonth.

AIPPI reformsThe ExCo was presented with a summary ofthe structural reforms which had been dis-cussed at a forum in July, and circulated toall groups and independent members. A res-olution agreed by the ExCo on August 15will be put to the General Assembly onWednesday this week (for more details onthe reforms, see interview opposite).Secretary General Laurent Thibon added

that these changes were part of efforts toupdate the association, which include theappointment of an Executive Director (seepages 4 to 5) and the refreshing of theAIPPI website, which will be live onOctober 25.Reporter General Sarah Matheson added

that there would also be minor changes toAIPPI’s academic work, for example work-ing questions will be renamed study sessionsand workshops will become panel sessions.Two new Standing Committees have beenadded in the past year: Pharmaceuticals andCommercialisation of IP. Finally, Kluwer ispublishing a book on employers’ rights,which ties in with AIPPI Question 183.The Executive Committee yesterday

agreed to recognise three new members ofhonour: John Bochnovic, Thierry Calameand Stephan Freischem.

ExCo I: round upNews

2 AIPPI CONGRESS NEWS Tuesday 13 October 2015

SINGAPOREThe IP Office of Singapore (IPOS) hasbeen appointed as a competentInternational Searching Authority andInternational Preliminary ExaminingAuthority for patent applications enter-ing the United States and Indonesiaunder the PCT. IPOS said the appoint-ments were made on the sidelines of therecent WIPO General Assembly. IPOSoffers the Supplementary InternationalSearch service under the PCT and is thefirst SIS Authority to carry out searchesin Chinese.

UNITED STATESBikram yoga cannot be copyrighted, theUS Court of Appeals for the NinthCircuit has held, saying BikramChoudhury’s movements and breathingexercises are an “idea, process or system”to improve health, not an expression.Choudhury’s moves include the rabbit,locust and dead body postures, all per-formed in a heated room. He had suedEvolation Yoga for copyright infringe-ment but Judge Kim McLane Wardlawcompared it to giving a doctor rightsover performing surgery.

UNITED STATESPatent litigation in the US district courtsdropped in the third quarter, an analysisby Lex Machina has revealed. Only1,119 cases were filed, down 33% fromthe record 1,665 cases in the secondquarter. Patent case filings so far thisyear are still up on the same period in2014, but down on that in 2013. Thethird quarter drop was driven by theEastern District of Texas, which had 435cases – a 50% fall from its record peak inthe second quarter of 839 cases.

UNITED STATESNASA has made available 1,200 patentsunder its Startup NASA initiative.Technology startups will be able tolicense the patents for free until they startto sell a product.

IP news inbrief

The lines of flags along the desks at yesterday’sExecutive Committee meeting are a powerful visualsymbol of the scope of AIPPI’s global reach. But

they are also a reminder that AIPPI is essentially a federalassociation, built on the strength of its national and regionalgroups, which now number 66.At the apex of these groups are three bodies: the Council

of Presidents, the Executive Committee and the Bureau.The reforms that have been discussed by the ExCo, andwhich are approved to be finalised at the General Assemblytomorrow, are designed to streamline the association’sstructure, remove duplication of work and ensure that itprovides the best possible opportunity for members tobecome involved and develop their IP knowledge. “The proposal is essentially to make the ExCo the main deci-

sion-making body of the association,” says Laurent Thibonfrom France, who as AIPPI Secretary General has been at thecentre of the proposals for reform. “If these proposals areaccepted, the ExCo will be able to vote on everything based onrecommendations from the different statutory committees.The Council of Presidents will be better able to help the nation-al and regional groups exchange knowledge and experience.”

Reducing duplication of workThe changes will also affect the Bureau, on which AIPPI’s

different component parts are represented. In future, therewill be an equal number of Bureau members from thePresidency (including the addition of a second vice-presi-dent), the Reporter General team and the Secretary General,with the Treasurer General also on board. In due course, theterms of the Reporter General and Secretary General will bestaggered so they do not both change at the same time. Thatwill give more continuity in AIPPI’s work.“The changes may seem confusing, but they will be impor-

tant in reducing duplication,” says Thibon. “To give just oneexample: elections used to require recommendations fromthe nomination committee, which had to be approved by theCouncil of Presidents and the ExCo. That meant we had todo the work three times.”Moreover, the structural changes are just one aspect

alongside other measures being taken to help AIPPI betterserve its members and help them to get involved. This yearhas also seen the first steps towards Congress becomingpaperless, the approval of a 50% reduction in fees for youngmembers (up to 35 years old), full-time academics, judgesand officials from national offices and the appointment ofJohn Bochnovic as Executive Director (see article overleaf).This last change in particular is likely to affect some of the

Secretary General’s activities, says Thibon. He believes it istoo early to say how exactly things will change, though he

added that he would welcome any support in the sometimesall-consuming task of representing AIPPI to the outsideworld. Whatever happens, he affirms that he will remainclosely involved with the running of the association. “I loveAIPPI. On the one hand, I enjoy the substantive discussion ofIP topics which are always of wide interest, and the tremen-dous work done by the groups and members. On the otherhand, I value the opportunity to make friends from aroundthe world.”“Ultimately, we should always remember that and make

sure everything is working properly so that AIPPI can do thereal work of studying IP.”

Guiding AIPPI through changeProfileLaurent Thibon

AIPPI CONGRESS NEWS Tuesday 13 October 2015 3

Laurent Thibon is half-way through his term as AIPPI Secretary General. Hespoke to James Nurton about changes to the structure of the association –and to his own role

“Half of you in the audience areusing mobile phones rightnow, so the WiFi technology

standards must be working pretty well!” Sosaid Judge James Robart, of the US DistrictCourt for the District of Washington, yester-day. Unfortunately, though, the three-hourdiscussion “Focus on FRAND” suggestedthat there are in fact many and increasingquestions arising from the licensing of stan-dard-essential patents (SEPs).Robart was one of three judges who spoke

during the discussion, which was chaired byMichael Fröhlich of BlackBerry, who is co-chair of AIPPI’s Standing Committee onStandards and Patents. The panel alsoincluded contributions from IT industry rep-resentatives who spanned the licensor/licen-see spectrum: Latonia Gordon fromMicrosoft, Monica Barone of Qualcomm andMonica Magnusson of Ericsson.At the end, Gertjan Kuipers, co-chair of

the Committee, said the long discussionshowed that “FRAND is a two-way street,there are offers and counter-offers, it is case-specific and we have to find the right balance”.In this context, he added: “Litigation needs tobe equally unattractive to both parties!”

A view from the benchThe stage for the discussion was set by JudgeAndré Fontes of the Brazilian Federal Courtof Appeals, who set out the Brazilian judicialsystem and illustrated the complexity ofFRAND cases. Speaking in Portuguese, hesaid that FRAND cases raise patent validity,infringement and competition issues whichin Brazil would have to be heard in three dif-ferent venues: “No single entity looks at allthree levels of the case.”Judge Peter Meier-Beck of Germany’s

Federal Supreme Court talked the packedroom through the line of cases in theGerman courts and the Court of Justice ofthe EU (CJEU) dealing with FRAND issues,which have clarified to some extent theresponsibilities of patent owners and willinglicensees. He focused on three decisions inparticular: the Standard-Spundfass andOrange Book Standard cases at theBundesgerichtshof and the Huawei v ZTEcase at the CJEU, and how they connectwith each other.These cases have addressed the patent

and competition issues that can arise giventhe conflict between the patent owner’s rightto refuse to grant a licence and the desire topromote interoperability and product com-patibility through technology standards.Standard-Spundfass addressed what consti-tutes discrimination by the patent owner.“Stricter requirements apply when the patentowner’s dominant position derives fromstandard-essentiality,” said Meier-Beck.The subsequent Orange Book case

addressed in more detail the licensee’s defence,he added, and when a refusal to license mayconstitute an abuse by the patent owner: “Theproprietor must comply with conditions thatseek to ensure a fair balance – that’s not a one-sided argument, but a balance is necessarybetween the interests of both sides.”

The lesson of Huawei v ZTE, decided thissummer, is not that the Orange Book rulingis dead, as some commentators have sug-gested, but that it has to be applied in aslightly modified way, said Meier-Beck. TheCJEU said that undertaking to grant alicence to willing parties creates a legitimateexpectation and that a refusal to licence mayin principle constitute an abuse. But it didnot deny the right of patent owners to seekinjunctions before relevant tribunals in spe-cific circumstances. “A proprietor cannotbring an action without notice of prior con-sultation with the alleged infringer. The pro-prietor must specify the royalty and why it iscalculated. And the alleged infringer mustdiligently respond to the offer and if it doesnot accept then submit a counter-offer,”explained Meier-Beck.He added, however, that the European

decisions did not solve the problem of thesubstantive assessment of FRAND condi-tions. By contrast, the United States has seenseveral decisions where judges have gone asfar as to set FRAND rates. The first of theseto do so was Judge Robart, in the casebetween Microsoft and Motorola (whichhas recently been settled).

Robart said that any FRAND rate calcula-tions in the US have to start with the 15Georgia-Pacific factors, though he added thatthese have often been criticised as imprecise:“Judges and juries have been able to look atfactors they think are most interesting orimportant in deciding royalty rates for allpatents.”The numerous recent cases in the US

have shown that having a FRAND obliga-tion does change the emphasis, he added:“We now have almost universal acceptanceof that principle.” In particular, the FederalCircuit in the Ericsson v D-Link case hadindicated that the 15 factors should not beapplied automatically. Rather, any of the fac-tors that are not relevant should be removed. Robart also stressed the importance of

looking at the specific facts of the case: “Weneed to pay more attention to the preciseterms of the patent holder’s (F)RAND obli-gations. There is no one (F)RAND analysis,it would be implicit from the terms of yourobligation. It’s an important point.”

Take your partners pleaseThe wide-ranging discussion covered a vari-ety of questions, skilfully marshalled by

Fröhlich. These included when injunctionsare appropriate, the risks of patent hold upand royalty stacking, the recent changes tothe IEEE standards policy and the growth ofcompetition cases. The panellists also drewanalogies between injunctions and pornog-raphy (“you know it when you see it!”) andbetween renting a room in a hotel and takinga licence to a patent (“is pay- TV included inthe price?”).One of the more complex questions

raised was the tension between the commer-cial reality that most companies prefer port-folio licensing and the practical fact thatcourts can only deal realistically with dis-putes over a handful of patents, at most.That in turn prompted discussion ofwhether, and when, ADR is appropriate forresolving these kinds of disputes.Magnusson, who stressed that she was

speaking in a personal capacity, said thatfrom a commercial point-of-view, the crucialthing is balancing the competing interests:“Business negotiations are like the Fandangodance: it’s not the same if you have the guitarwith no dancer, and it’s not the same if youhave the dancer without the guitar. It takestwo to Frandango!”

Take your partners please for theFrandango!

News

4 AIPPI CONGRESS NEWS Tuesday 13 October 2015

Luiz Otávio Pimentel knew he had a tough job facinghim when he took over as President of Brazil’sNational Institute of Industrial Property, Ministry

of Development and Foreign Trade (INPI) in July. Thatjob became even harder as a result of Brazil revealing itentered recession in the second quarter. With that, comes ahiring freeze handed to the office by the government. Thenew man at Brazil’s patent and trade mark office needs toget creative.In an interview with Managing IP – with the much-appre-

ciated help of translation services provided by EduardoMagalhães Machado of Montaury Pimenta, Machado &Vieira de Mello – Pimentel admitted that next year is going tobe a rough time. But he is taking proactive steps to make themost of what he has got.Pimentel faces a daunting mathematical problem. Patent

applicants can expect to wait at least 11 years for a decisionon the granting of a patent in Brazil. The backlog has grownto 210,000 patent applications and 452,604 trade mark appli-cations this year. Yet the number of patent examiners at theoffice is expected to fall from the 196 in place now, with thesame true for the 96 trade mark examiners. Reducing the backlog is a tough task in the face of

increased filing in the past 15 years. In 2000, there were21,000 patent applications filed, whereas last year there were33,000. The figure for trade mark applications was 140,000last year, up 45% on 2000 in the past 15 years.

A productivity problem Pimentel is looking to increase the productivity of eachexaminer from the average 30 final patent decisions a month

now. But he must do it through methods that don’t requirefinancial approval from the government. Pimentel would like to create what he calls a “Brazilian fast

track” for applications. He is looking to bring in some pro-grammes similar to those in place in countries that have hadsome success in reducing their backlogs. “But Germany, theUnited States and Japan have money!” he noted dryly inEnglish when highlighting his tough task. His first step will be to implement a pilot programme

allowing examiners to work from home. It can take examinerstwo to five hours a day in commuting to INPI’s downtownRio office, and this will free up more time for examining. Non-examiner public servants are also available to the

office. Pimentel wants to make better use of them to helporganise older paper patent files. Applications in the past fiveyears have been in digital format. But the applications fromthe 10 years preceding that are on paper. The non-examina-tion staff will be used to help the cumbersome digitalisationprocess of the older files, which will help examiners be moreefficient.Other options are being considered but would need

approval from the legal department before they can beexplored further. One option could be be to use the examina-tion done by other country’s offices to expedite applications.Another option could be to ask universities to do the prior artsearches that can then be sent back to INPI.

Battling the backlog in tough timesInterviewLuiz Otávio Pimentel

AIPPI CONGRESS NEWS Tuesday 13 October 2015 5

Pimentel would like to createwhat he calls a “Brazilian fasttrack” for applications

A special guest was in the Exhibition Hallyesterday to promote the AIPPI Congress2017, which will be held in Sydney fromOctober 13 to 17. The 2016 Congress willbe in Milan from September 16 to 20. Findout more about all forthcoming AIPPIevents in the Exhibition Hall, which also hasstands from other IP associations, IP firms,service providers, publishers and IP offices.The Exhibition is open from 9.00 am to 5.30pm tomorrow and from 8.30 am to 2.00 pmon Wednesday.

AIPPISydney2017

“It’s like being a student again!” saysJohn Bochnovic, who has beenintroduced in Rio as AIPPI’s new

Executive Director. The former AIPPIPresident has retired from Smart & Biggar inCanada, where he was a partner for 29 years,and on September 1st relocated to AIPPI’sheadquarters in Zurich, where he now occu-pies an office on the third floor. “It’s the firsttime in over 25 years I’ve been able to openmy office window!” he says.The role of Executive Director was creat-

ed and advertised following the 2012 AIPPIStrategy Objectives Project, conducted byRobin Rolfe Resources. The Project made a

number of recommendations to improve thefunctioning and communication of AIPPI,ranging from updating the website (some-thing that will happen later this year) tostreamlining the organisational structure. Itwas discussed at the Seoul Congress in 2012and subsequently, and a number of reformsto AIPPI’s complex structure have beenagreed by Executive Committee.“It’s a different kind of challenge, and I’m

anxious to see how I can contribute to helpthe association. I’m here in a kind of transi-tional role and hopefully it will be an attrac-tive role for a successor to take on in the not-too-distant future,” says Bochnovic. He addsthat the AIPPI Executive Director role is dif-ferent from equivalent jobs in similar associa-tions that have a significant centralised infra-structure. AIPPI will remain based aroundthe national and regional groups, with just asmall secretariat, and much of the work willcontinue to be done at the national level.

Ramp up the buzzIn fact, says Bochnovic, part of his role willbe to help the national/regional groups

and independent members grow and“ramp up the buzz and attendance” atevents, both the Congress (which as ofthis year becomes an annual event) andother AIPPI meetings. He notes that thereare already some initiatives, such as theannual Japan/Korea/China trilateralmeeting, and a two-day meeting held by

the Israeli group every other year, that canbe built on. “Not everyone can go to aCongress every year. People may not beable to go the Congress, so regional meet-ings might make sense for some people.”For example, in a year when the Congressis in one hemisphere, it might be desirableto host an additional regional event in

A new era opens for AIPPIJohn Bochnovic has become AIPPI’s first Executive Director. He talks to James Nurton about how the associationis changing – and also what will stay the same

Interview John Bochnovic, AIPPI Executive Director

6 AIPPI CONGRESS NEWS Tuesday 13 October 2015

At the ExCO yesterday,Secretary General LaurentThibon summarised recentevents hosted by AIPPIgroups and members:• Independent Members

meeting in Penang,end 2014

• Seminar of the SriLankan Group andEuropean Chamber ofCommerce of SriLanka, end 2014

• Bureau visit to the ThaiGroup

• Tri-lateral meeting ofthe Chinese, Japaneseand Korean Groups inNara, June 2015

• Argentinian GroupSeminar, August 2015

• Baltic Conference inTallinn (Estonian,Latvian, LithuanianGroups), September2015

In addition, AIPPI wasrepresented at the 2015ASEAN IP AssociationConference & BureauMeeting in March 2015;was represented by aBureau Member at meet-ings of sister organisa-tions; and took part inannual visits to WIPO,EPO and OHIM (whereAIPPI has observer status).

Recent AIPPI activities

“People may not be able to go to the Congress, so regional meetings might make sense for some people”

ExCo attendees were given a thor-ough analysis of the imminentreforms to trade mark law in

Europe by Arnaud Folliard-Monguiral ofOHIM. However, as he explained, one ofthe changes is that OHIM’s name will bechanged to EUIPO, and another is thatthe Community trade mark (CTM) willbecome the EU trade mark (EUTM).The dates when the various changes

will enter into force are not yet certain,but it is likely they will start to be effectiveduring the first half of next year. Folliard-Monguiral explained how the reforms will

affect substantive trade mark law in theEU as well as practical matters, such as thefees charged for trade mark registrationsand renewals.He also took a number of questions

from the audience. One of these askedwhether there was any unfinished busi-ness arising from the reforms. Folliard-Monguiral said that one area where fur-ther consultation is underway is designlaw in Europe, and that may also lead toreforms in due course. “I wish to see youanother time to discuss design matters,”he concluded.

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Trade mark reform in Europe

another hemisphere of the world. Therewill also be cooperation with other associ-ations: for example, AIPPI is jointly host-ing a meeting on design law with INTA inSingapore in February/March next year.“I’m hoping we can stimulate moreinvolvement from people. Groups may nothave been able to be as active as they

would like in the past, and that may besomething I can help with,” saysBochnovic. In addition, the Executive Director

emphasises the need to “change the lookof the Association” with a new website,some changes in terminology and in therole of the Council of Presidents and

Executive Committee, and a more modernappearance. “In part my role is administra-tor,” he says, and indeed in the weeks lead-ing up to the Congress he says he has beenclosely involved in the planning andorganising. Another hat he will wear is as represen-

tative of the association, attending eventsand meetings with national and regionaloffices, particularly in Europe. This rolehas traditionally been fulfilled principallyby the Secretary General, but havingsomeone working full time will helpensure that AIPPI’s voice is heard and itremains at the forefront of IP policyworldwide.

A streamlined AIPPIThe changes are a recognition, saysBochnovic, that “the association and thedecision-making needs to be streamlined”.He adds: “It will never be truly top downbecause you have to take into account theinterests of national groups, but I think wecan build a better identity for ourselvesand what we do as an association.”Moving to an annual Congress is part of

that mission and also a reflection, saysBochnovic, that “the membership wantsthat kind of regularity in their calendars”.In fact, AIPPI had already been organising

an ExCo and Forum in the non-Congressyears, both of which were well attended, sothe change is not that significant in termsof organisation. The next step, he pointsout, is to have a discussion about the besttime in the year at which to hold theCongress.For this year, Bochnovic says he is look-

ing forward to seeing delegates enjoy boththe intellectual discussions and the socialactivities in Rio, a city where the Congresswas last held in 1998. He notes that thisyear’s meeting was originally slated to bean ExCo and Forum, but the BrazilianGroup stepped up and offered to host thefirst annual Congress. It is in many ways atransitional time for AIPPI, andBochnovic predicts that much of themechanics of the association – if not itsprinciples and purpose – will evolve overthe next few years. “For me, it’s an adven-ture,” he says.

InterviewJohn Bochnovic, AIPPI Executive Director

AIPPI CONGRESS NEWS Tuesday 13 October 2015 7

“I think we can build a better identity for ourselves and what we do as an association”

As companies look to take advantageof talent around the globe, inven-tions coming from research and

development teams spread worldwide areincreasingly common. Yet, even as thepatent system becomes more harmonised,issues that arise from conflicting nationallaws continue to cause problems. These con-flicts arise in three areas: who is consideredthe inventor of a particular invention, the

first-to-file requirements, and secrecyreviews for national concerns.

Who’s the inventor?Who is considered an inventor of a particularinvention varies country-by-country. Somejurisdictions have statutory language defin-ing inventors, but for the jurisdictions withworking groups responding to Question244, many did not define inventorshipthrough statute but instead through litera-ture or case law. Because in some jurisdic-tions errors about stated inventorship of apatent can lead to revocation or transfer tothe rightful owner, this issue can cause con-siderable uncertainty.“Let’s say a first person conceives a new

idea in a first country, and asks a second per-son in a second country to take that idea anddesign a product. Then, a third person in a

third country is asked to take the completeddesign and build the product. Which of thesethree people is an inventor?” asks JonathanOsha of Osha Liang, the reporter responsi-ble for Question 244. He continues: “The answer to that question

can be different depending on the three differ-ent countries involved. Moreover, it is unclearwhich country’s laws should apply: is it thephysical location of the inventor, the citizen-ship of the inventor, or the country where thepatent application was first filed? These prob-lems create significant uncertainty for ownersof patents to multinational inventions.”Osha further explains that in many

instances, the inventorship of a particularpatent is chosen based on the country of firstfiling. Because patent owners will rarely cor-rect their applications in the later filed juris-dictions to comply with the laws there, these

later patents have a hidden weakness thatcan cause problems down the line.

First-filing requirementsAnother difficulty is that some countries mayrequire that all or some types of patent applica-tions for inventions made domestically be firstfiled in that country before any others.Thirteen of the 42 reporting groups state thattheir jurisdictions have such a requirement,with five of them (Italy, Russia, Singapore,Spain and the United States) applying thisrequirement to all inventions made within thatjurisdiction. The other eight countries withsuch a requirement generally limit it to inven-tions that implicate national security concerns.These types of requirements can be partic-

ularly troublesome for inventions that may beconsidered to have come from more than onejurisdiction, such as those invented by a

The perils of international collaborationGlobalisation has made it easier for innovators from around the world to collaborate. However, conflicts betweennational statutes can cause problems, in some cases making it impossible to comply with the law. Peter Leungpreviews Working Question 244, which looks at some of these issues

Preview Question 244: Inventorship

8 AIPPI CONGRESS NEWS Tuesday 13 October 2015

Who is considered an inventor of a particular invention varies country-by-country

research team based in several countries.Some of the reporting countries including theUS have provisions that allow an inventor toobtain permission to file a patent first in anoth-er country. However, Osha says there can beobstacles to obtaining such waivers.“[The problem arises], for example, in

multinational inventions having inventors inthe US and China. Both countries have rulesthat require the applicant to file in the inven-tor’s country first, unless a foreign filinglicence or security review has been obtained,”he explains. “In order to make the request fora foreign filing licence or security review inone country, a description of the inventionmust be sent to the patent office of that

country, which potentially violates the tech-nology export laws of the other country.” He adds: “It’s a Catch-22, where you may

be forced to violate the law of one of thecountries.”

National security reviewsA related problem for multinational inven-tions is that many jurisdictions require thatinventions made even partially domesticallyundergo a secrecy review for national securi-ty before a patent application can be filed inanother jurisdiction. Half of the jurisdictionsreporting have such a requirement, and it isapplied in a number of ways. For example, 11 of the 21 countries with

such a requirement will conduct a secrecyreview on all applications, while the restrequire the review only for certain technolo-gies relating to national security. More thanhalf the countries have automatic reviews.Some groups, such as the Canadian group,explained that only government-employee-created inventions or those otherwiseowned by the government require ministeri-al approval before an application is filedabroad, though applications in some tech-nology areas are subject to a security review.Meanwhile, some jurisdictions may placethe onus on the patent applicant to apply thelaw and decide whether the application mustbe submitted for a security review.Though it is not surprising that countries

are concerned about the national securityimplications of inventions that may beexported, uncertainty can cause challengesfor multinational inventors, especially givenhow they interact with the first filing require-ments. What’s more, failure to comply canlead to serious consequences.“In some countries, the scope of what might

be considered sensitive to national security isnot clear, but violating rules governing exportof sensitive technology can result in very seri-ous consequences, including criminal penal-ties,” Osha says. “While national security is ofcourse an important and legitimate concern, itwould be helpful if the rules were more clear.”

Making it betterGiven this complex background and theobstacles it presents to international patentfilers, one of the topics of discussion at theworking group meeting will be ways toimprove the system. Most of the reportinggroups suggest that increased harmonisationmakes sense in a world where internationalcollaboration is increasingly common. Thatsaid, there will be considerable discussionabout which aspects of the law need to beharmonised such as what the languageshould be. For example, among the report-ing groups, there are more than 30 sugges-tions as to language to define inventorship.

PreviewQuestion 244: Inventorship

AIPPI CONGRESS NEWS Tuesday 13 October 2015 9

Though a strong majorityof the working groupsstated that harmonisationis important, there aremany different ideas as towhat such harmonisedlaws should look like. Forexample, in response to arequest for an interna-tional definition of inven-

torship, the 42 workinggroups submitted morethan 30 suggestions.

These included “madeor contributed to theinvention”, “substantialcontribution to the inven-tion”, “creative technicalcontribution to the inven-tion”, “participation in (or

contributes to) the con-ception of the invention”,“conceived or contributedto conception of theunderlying concept of theinvention” and “indepen-dent, intellectual contribu-tion to the invention”.Source: Question 244Summary Report

What is inventorship?

Most of the reporting groups suggest that increased harmonisation makes sense

Trade secrets and the risk of tradesecrets theft are becoming moreimportant for many companies, as

business becomes more global, employeesbecome more mobile and more informationis stored digitally or in the cloud. In the EU,a directive harmonising trade secrets protec-tion is expected to be agreed soon; in the US,there is a proposal for a federal law on tradesecrets; and in China there are also propos-als for a new law.Working Question 247 addresses some

specific unresolved issues concerning the pro-tection and enforcement of trade secrets. It isa topic that AIPPI has debated many timesbefore, dating back at least to 1970. In Q215,

agreed in Paris in 2010, AIPPI resolved thatArticle 39.2 of the TRIPs Agreement shouldbe implemented so as to protect trade secrets,and mandated the availability of injunctiverelief for threatened or actual violations. This year’s question builds on that by

looking at four practical issues: (1) what, ifany, overlap there is between trade secretprotection and laws prohibiting restraint oftrade; (2) how to ensure confidentiality iskept during court proceedings; (3) whetherand when damages are an appropriate reme-dy; and (4) alternative methods of evidencecollection, when discovery is not available.The first of these is likely to provoke themost discussion.

The protection-freedombalanceAri Laakkonen, a partner of Powell Gilbertin London, is the Assistant Reporter Generalassigned to this question. He said the firstissue – the potential conflict between pro-tecting trade secrets and restraining trade –is one of the “more interesting” dilemmasthat has arisen in this field.“If an employment contract or the under-

lying law makes everything that an employeelearns a trade secret, and people can’t usetrade secrets, then they can’t switch jobs,”Laakkonen told the AIPPI Congress News.“This issue is unclear, and certainly needssome clarification.” While public policyinterests favour the protection of legitimatetrade secrets, they also support the view thatemployees should not be unduly fettered inpursuing their careers, so AIPPI delegateswill be trying to strike a fair balance intoday’s resolution.Part of the problem is that this is one of

those areas that spans legal disciplines: IPlawyers, for example, may bring a different

perspective to competition lawyers. Out ofthe 45 reports submitted by AIPPI nationaland regional groups, about one-third sug-gested that trade secret protection could beviewed as a restraint of trade in certain cir-cumstances, while just under a quarter indi-cated that trade secret protection itself is notviewed as a restraint of trade, but laws suchas competition law might prevent enforce-ment actions. But another third firmlybelieved that trade secret protection is notviewed as a restraint of trade, with a smallnumber of groups saying that in no circum-stances should trade secrets be viewed asrestraints of trade.This question also leads to further

enquiries about what constitutes tradesecrets, compared to say general skills orknowledge acquired, what constitutes a dutyof confidence and whether certain employ-ees are subject to a higher obligation of con-fidentiality.

Practical enforcement issuesThe other aspects of the question being

The (trade) secrets of successAs several jurisdictions ponder reforms to trade secrets laws, AIPPI delegates will today debate questions thataddress how trade secrets should be protected and enforced, to ensure a balanced commercial environment.James Nurton reports

Preview Question 247

10 AIPPI CONGRESS NEWS Tuesday 13 October 2015

The potential conflict between protecting trade secrets and restraining trade – is one of the “more interesting” dilemmas that has arisen in this field

Johanna Flythström AIPPI ExCo I, “mini-United Nations of IP”, starting in Rio.#aippi2015

INPI Brasil INPI está atendendo o públicoem estande no Congresso Internacional daAIPPI no Rio de Janeiro

Mladen Vukmir AIPPI CONGRESS 2015Opening Ceremony underway in Rio. AIPPIPresident stated the ass’n is ready toembrace change

Ticiano Gadêlha Iniciando o congresso daAIPPI ‘15. Vamos aprender PI com quemmais entende do assunto no mundo, em

Kristian Fredrikson AIPPI participation inWTO work presented by Ivan Hjertman in#AIPPI2015

Richard P. Beem #Patent harmonization isproceeding in Group B+ says N. Morey,Director @EPOorg #AIPPI Unstated why:Stalled @WIPO of UN

PriorSmart Recent article at @ipkat: AIPPICongress Report 1: The Brazilian sun risesover this year’s Congress -http://bit.ly/1VOJ0MB #ip

Estudio Caldera The 2015 AIPPI WorldCongress is the first of its kind to go“paperless”, in a new paper-savinginitiative implemented by the association

TWEETSSunset at Sugar Loaf

The place to see the sunset in Rio is fromthe top of Sugar Loaf Mountain. You cantake a scenic cable car to the top of the396 metre peak (the same journey onwhich James Bond fought Jaws in the1979 movie Moonraker). Once at thetop, an awe-inspiring panorama of thecity is revealed. Sunset is the best time tomake the trip, with tourists watching Riolight up before their eyes. The cable carservice runs between 8am and 9pm eachday. But tickets can only be bought until7.50pm. sunset takes place at about5.55pm this week.

Sample the local food

Rio has a wide array of food for visitorsto feast on. Meat lovers must visit achurrascaria to gorge on meat cookedin churrasco style. The food keeps

coming around until you tell it to stop.Porcão – which has three locations inBarra da Tijuca, Ipanema and in theAterro do Flamengo park – is a popularchoice. Other popular restaurantsincludes Churrascaria Palace, Fogo deChão and Carretão Ipanema.If fish is more to your taste, try the

native cod, garlic and olive oil dishes onoffer in Rio. Fish fans with expensivetastes should head to the fine dining ofAntiquarius. A cheaper option is Adegado Portugues. In addition, Barracuda inthe Marina de Gloria offers goodseafood by the water.

Dance the night away

Rio is the city of samba, and there aremany places that you can sip on onecaiprinha too many while showing offyour dance moves to vibrant Brazilianmusic. One place to do this is the Lapaneighbourhood, which is filled withcolonial buildings that have beenrestored and rejigged to the needs ofthe party scene. One popular spot isCarioca da Gema, which has been opensince 2000. Locals flock to this largehouse to hit the dance floor to some of

the city’s best samba bands. There are anumber of rooms, including quieterareas for patrons needing a break fromthe packed dance floor. Plenty of otherbars and clubs are nearby. Another spotpopular with locals and tourists is RioScenarium, which boasts three floorsand an impressive collection of antiqueclocks and dolls. Some establishmentsrun a drink card system, which you areissued upon entry. Be sure not to losethe card or you will face a penalty thatis stiffer than the cocktails!

Attend the TheatroMunicipal

The grand Theatro Municipal wasinaugurated in 1909, and restored in2010 as part of its centenarycelebrations. This week’s programmeincludes the ballet Age Of Innocencewith music by Philip Glass and ThomasNewman, acoustic guitar player NandoReis, the Petrobras SymphonyOrchestra, and the Brazilian SymphonyOrchestra’s Amethyst Series.If you do not have an evening to

give up to take in a show, you can taketours of the theatre Tuesday to Friday.

Sample Rio’s nightlife

debated today address various aspects of theprocedures arising from the enforcement oftrade secrets. One problem that arises is con-fidentiality during court proceedings: own-ers of trade secrets might be unwilling toreveal them in open court, but not doing someans that defendants are at a disadvantagefrom not knowing what they are accused of.In its 2010 Resolution, AIPPI resolved thatcountries should “provide effective and sub-

stantial means” of protecting trade secretsduring and after proceedings, but did notregulate this in detail. The group reportsindicate that this issue is treated differentlyin each jurisdiction, giving rise to particularproblems in some countries such asGermany.Another point discussed today concerns

valuation of loss, in particular where aninjunction prevents misappropriation, and

where a second defendant has also benefitedfrom the trade secrets: put simply, shouldthe owner be able to recover damages twicefor the same loss? Or, as Laakkonen says:“Obviously the publication of a trade secretdestroys much if not all of the value of thetrade secret. However, this does not meanthat a defendant who misappropriated atrade secret, when it was still secret, shouldnot pay damages.” In addition there is aquestion about the recovery of damage toreputation, particularly where the tradesecret owner has goodwill in the marketlinked to the trade secret.With regard to proving infringement, the

vast majority (80%) of groups believe thatmeasures to preserve evidence should beavailable, and just 50% say that informationseized can only be used in the proceedings inwhich the seizure occurs. There is overwhelming support among

national and regional groups for harmonisa-tion on all these points, and the draft EUTrade Secrets Directive as well as the EU

Enforcement Directive may prove helpful inthis respect. Today is an opportunity to dis-cuss some detail in this notoriously opaqueaspect of IP law, says Laakkonen: “Our mis-sion is to flesh out some concepts more fullythan the last time this topic was debated, inParis in 2010.” He adds that is timely to doso: “Practitioners and industry are seeingmore and more of these kinds of cases, oftenconnected with other issues such as patententitlement, so it is an important topic toaddress.”

PreviewQuestion 247

AIPPI CONGRESS NEWS Tuesday 13 October 2015 11

13th Fl., 27 Sec. 3, Chung San N. Rd., Taipei 104, Taiwan, R.O.C.Tel: 886-2-25856688 Fax: 886-2-25989900/25978989Email: email@deepnfar.com.tw www.deepnfar.com.tw

ProsecutionInfringementLitigationIP

ChinaA long-running disputebetween Sinovel andAmerican Semiconductorinvolved allegations ofthe theft of trade secrets,including computer code.Sinovel and threeemployees were accusedof stealing know-how andcausing losses of over.$800 million. Civil andcriminal proceedings inChina and the US arecontinuing.

United KingdomIn its most recent rulingin a trade secrets case, in2013, the Supreme Courtaffirmed that a formeremployee was not liablefor breach of confidentialinformation inVestergaard v Bestnet, acase concerning mosqui-to nets. Lord Neubergerwrote that “the lawshould not discourageformer employees frombenefitting society and

advancing themselves byimposing unfair potentialdifficulties on their hon-est attempts to competewith their former employers”.

United StatesJawbone sued Fitbit fortrade secrets theft in Maythis year, in a case that iscontinuing. It alsoinvolves various patentlawsuits and concernswearable technology.

Examples of recent trade secrets disputes “Our mission is to flesh out some concepts more fully than the last time this topic was debated, in Paris in 2010”

Working questionsDraft reports and resolutions for all fourworking questions being debated thisweek will be presented to the ExecutiveCommittee for adoption on Wednesday.Once adopted, they will be presented tonational and regional IP offices, otherinternational NGOs and governments asguidance on harmonisation.

07.30 – 08.30 RGT, PC, SCs Leadership Breakfast Versailles I (Ground Floor)

09.00 – 12.30 Plenary Session II Q244 Segovia I-IV (2nd Floor)

09.00 – 10.30 Pharma Session1 Don’t miss the (right) mark Louvre I-II (Ground Floor)

09.00 – 10.30 Panel Session IV Industrial designs: form over function? Louvre III-IV (Ground Floor)

10.30 – 11.00 Coffee break Exhibition Area

11.00 – 12.30 Pharma Session 2 Personalized Medicine Louvre I-II (Ground Floor)

11.00 – 12.30 Panel Session V Collective marks and GIs Louvre III-IV (Ground Floor)

12.30 – 14.00 Networking Lunch Area Multiuso (Second Lower Level)

12.30 – 14.00 Lunch 2 with Keynote Speakers: How to manage innovation in an Queluzes I-VII (First Lower Level)

anti-IP climate (ticketed event)

14.00 – 17.30 Plenary Session III Q247 Segovia I-IV (2nd Floor)

14.00 – 15.30 Pharma Session 3 Technology transfer: public versus private interests Louvre I-II (Ground Floor)

14.00 – 15.30 Panel Session VI Keeping the faith: dealing with bad faith registrations Louvre III-IV (Ground Floor)

15.30 – 16.00 Coffee break Exhibition Area

16.00 – 17.30 Pharma Session 4 Double Jeopardy: policy-based examination of patent validity Louvre I-II (Ground Floor)

16.00 – 17.30 Panel Session VII Non-traditional marks: sounds like a mark, smells like a mark… Louvre III-IV (Ground Floor)

17.45 – 19.00 In-house meeting Liberdade (1st Floor)

TODAY’SSCHEDULE:

TUESDAY 13 OCTOBER 2015