ACTING FOR THE IP PROFESSION WORLDWIDE

EXCO NEWS

JULY 2009

In This Issue

· Washington ExCo Report

· ExCo Resolutions

· FICPI Elections

· CET Papers

· FICPI-India

· FICPI India Symposium 2009

Resolution on Consistent Application of IP Laws and Practices

FICPI, the International Federation of Intellectual Property Attorneys, broadly representative of the free profession throughout the world, assembled at its Executive Committee in Washington D.C. in June 2009, passed the following Resolution:

Whereas strong intellectual property (IP) laws, especially patent laws, are a vital stimulus to economic development,

Stressing that both active and passive users of IP systems require legal certainty,

Urges intellectual property offices having more than one branch to take whatever action is within their power to ensure consistent application of IP laws and related practices throughout the territory or territories where those laws apply.

For the French version of this resolution click here.

For the German version of this resolution click here.

“FICPI will take a leading role in advancing and stimulating improvements in both the profession at large and the members’ professional impact on society”
(FICPI Strategic Plan, 2009)

Resolution on IP Advisor/Client Privilege

FICPI, the International Federation of Intellectual Property Attorneys, broadly representative of the free profession throughout the world, assembled at its Executive Committee in Washington D.C. in June 2009, passed the following Resolution:

Recognizing that a purpose of legal professional privilege is to allow a client to have frank, honest and open communications with its Intellectual Property Advisors and to obtain opinions and advice therefrom,

Understanding that confidential communications between a client and an Intellectual Property Advisor may be subject to discovery in some jurisdictions, whether the Advisor acts inside or outside the jurisdiction and even where they are afforded privilege within the jurisdiction,

Appreciating the adverse consequences the discovery of such communications may have in litigation in those jurisdictions as well as others,

Appreciating the increasingly international character of intellectual property litigation,

With the knowledge that Intellectual Property Advisors are required to be registered to practice in some countries or regions, are required to be members of an accredited professional body in some other countries, and are not required to have any qualifications in other countries,

Reminding that FICPI has already resolved that the client of an IP Advisor should be afforded in relation to communications with that IP Advisor the protection of legal professional privilege,

Urges appropriate authorities in countries or regions or at an international level to adopt measures or recommendations:

(1) which will provide legal professional privilege in relation to communications between a client and a registered or accredited IP Advisor, whether the IP Advisor is in the same or a different country or region as the client and regardless of the jurisdiction of the litigation;

(2) which will further provide that all countries or regions will recognize such legal professional privilege in other countries and regions, and

(3) which will further provide legal professional privilege in relation to communications of IP Advisors in different countries or regions in relation to any client intellectual property matter in any one or more of their countries.

For the French version of this resolution click here.

For the German version of this resolution click here.

FICPI Elections

One of the pleasurable tasks of the ExCo during the World Congress is to elect a new President and other officers to lead the Federation for the next 3 year term.

Peter Huntsman (AU) was elected as the new President, with Bastiaan Koster (ZA) joining him as Vice President – the first member of the Bureau from a developing country; Julian Crump (GB) and Marc Chauchard (FR) stay on as Secretary General and Treasurer General respectively. Francesco Paolo Vatti (IT) was elected as the new Assistant Secretary General.

Bastiaan Koster was also elected President of the new Membership Commission and outgoing President Danny Huntington (US) becomes the first President of the new Professional Excellence Commission (PEC), these 2 committees being established under the new Strategic Plan.

The full list of elections is as follows:

Bureau

President	Peter Huntsman (AU)
Vice President	Bastiaan Koster (ZA)
Secretary General	Julian Crump (GB)
Treasurer General	Marc Chauchard (FR)
Assistant Secretary General	Francesco Paolo Vatti (IT)

Elected Councillors

Fabrizio de Benedetti (IT) – 3rd term

David Merrylees (BR) – 2nd term

Alastair Neill (GB) – 3rd term

Miguel O'Farrell (AR) – 3rd term

Ichio Shamoto (JP) – 2nd term

Ray Stewart (US) – 2nd term

Admission Commission

President

Philip Coyle

CET (Commission d'Etude et de Travail)

President

Eric Le Forestier (FR)

Communications

President

Doug Deeth (CA)

Contact

President

David Griffith (AU)

Deontology

President	John Orange (CA)
Vice President	Dieter Behrens (DE)
Members	Francis Ahner (FR)
	Greg Chambers (AU)
	Ge Bo (CN)
	Walter Holzer (AT)
	David Merrylees (BR)
	Simon Rees (GB)
	Bill Schuurman (US)

EUCOF

President

Lennart Karlström (SE)

FAB

President	Alastair Neill (GB)
Members	Noel Brett (AU)
	Ella Cheong (HK)
	Mariano Soní (MX)

Membership

President

Bastiaan Koster (ZA)

PEC (Professional Excellence)

President

Danny Huntington (US)

Statutes

President

David Bannerman (GB)

TEC (Training & Education)

President

Stephen Krouzecky (AU)

President of Honour

Danny Huntington (US)

Members of Honour

José Luis Arnaut (PT)

David Bannerman (GB)

Dieter Behrens (DE)

William Edgar (CA)

Chris Hano (DE)

Michele Mannucci (IT)

Jan Modin (SE)

HH Michael Fysh QC

Contact Us

http://www.ficpi.org

communications@ficpi.org

Washington ExCo Report

Report by Mark Wilson (US), Assistant Reporter General

At its meeting on 10 June 2009 in Washington, DC, the FICPI ExCo passed two resolutions and ratified four papers.

The first resolution which was adopted urges intellectual property offices to take whatever actions are needed to ensure Consistent Application of IP Laws and practices throughout the territories in which those laws apply. A primary driver of this resolution was FICPI India, whose members conveyed the challenges that multiple geographically based patent and trademark offices were having in maintaining consistent standards and practices. The resolution was adopted unanimously.

The second resolution concerns the issues of Intellectual Property Advisor/Client Privilege. This resolution urges authorities to adopt measures and recommendations that provide legal professional privilege in regard to communications between a client and an IP Advisor, whether the IP Advisor is in the same or a different country or region as the client. Further, the resolution urges, all countries to recognize the legal privileges in other countries. This resolution was also adopted unanimously.

The first two papers that were ratified related to designs and were presented by CET Group 2. The first paper, EXCO/US09/CET/1201, related to the meeting of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications that took place in Geneva from 1 to 5 December 2008. Prior to the meeting, “Comments on behalf of FICPI” were submitted as a result of the CET Group 2 meeting in Florence and subsequent discussions. Additionally, FICPI was invited to become involved in the Pilot Group on Reform of Locarno Classification and submitted comments in advance of the group’s meeting in March 2009. These comments are in EXCO/US09/CET/1202. The ExCo unanimously voted in favour of retroactive ratification of these papers.

The ExCo also unanimously ratified EXCO/US09/CET/1407, which arose out of a FICPI meeting with DG Enterprise and Industry in Brussels on 17 March 2009. At this meeting FICPI presented its view that the Preliminary Report of the European Commission, DG Competition, on the Pharmaceutical Sector Inquiry of 28 November 2008 contained significant errors in interpretation. FICPI argued that the authors misinterpreted the data gathered and identified usual practices (filing patent applications for improvements and enforcing patents at courts) as misuse or improper behavior. FICPI insisted on the need to support innovators (“without originators, there are no generics”) instead of generally blaming them (without any proof) to play against the rules. The officers of DG Enterprise and Industry asked FICPI to officially file a statement to the Preliminary Report on behalf of FICPI. Irrespective of the already lapsed official deadline for such filing statements, the officers insisted that such a FICPI statement “will be considered if submitted soon”. The FICPI observations were duly submitted to DG Competition and the inquiring officers of DG Enterprise and Industry on 27 April 2009. The ExCo unanimously voted in favour of retroactive ratification of these observations.

The final paper that was retroactively ratified was the Amicus Brief filed at the EPO Board of Appeal regarding the letter of 22 October 2008 in which the President of the EPO referred under EPCa.112(1)(b) four legal questions relating to the exclusion of computer programs as such under EPCa.52(2), (3) to the Enlarged Board of Appeal for decision. The Enlarged Board of Appeal assigned the referral case number G 3/08 and invited the public to file written statements by April 30, 2009. FICPI has submitted to the Enlarged Board of Appeal a written statement as amicus curiae brief tabled as paper EXCO/US09/CET/1701. FICPI´s brief argues that all four questions raised in the referral are to be rejected as inadmissible for lack of divergence in the appeal board decisions cited in the respective legal questions. At the ExCo, there was considerable discussion of this brief, with some taking the position that the legal questions concerned in the President’s letter were important and should have been addressed in a substantive manner by FICPI. Others took the position that the questions posed by the President were vague, in that they were posed in the absence of a factual context. Ultimately, the ExCo approved and ratified the brief with no opposing votes and two abstentions.

From left: Peter Huntsman (AU), Leo Jessen (NL), Eric Le Forestier (FR), Jan Modin (SE), Ivan Ahlert (BR), Mark Wilson (US)

ExCo papers

Copies of the CET papers listed below that were presented at the Washington ExCo are available online at www.ficpi.org:

EXCO/US09/CET/1101	Preparatory work in advance of the Madrid System Working Group, 6^th Session
EXCO/US09/CET/1102	Report of the working group on the Legal Development of the Madrid System for the International Registration of Marks: 6^th Session
EXCO/US09/CET/1103	Report of the 20^th Session of the Standing Committee on the Law of Trademarks, Industrial Designs & Geographical Indications (SCT)
EXCO/US09/CET/1106	Report of ICANN Cairo Public meeting in Review
EXCO/US09/CET/1201	Standing Committee on the Law of Trademarks, Industrial Designs & Geographical Indications (SCT) : 20^th Session
EXCO/US09/CET/1202	Pilot Group on Reform of Locarno Classification
EXCO/US09/CET/1203	Results of the Designs Searching Survey
EXCO/US09/CET/1301	Report on the WIPO PCT Users Consultation Meeting, March 2, 2009, on the proposed ROADMAP FOR DEVELOPMENT OF THE FUTURE PCT
EXCO/US09/CET/1302	Report on the 2^nd meeting of the PCT Working Group, Geneva, 4-8 May 2009
EXCO/US09/CET/1303	Report on the WIPO SCP March 23-27, 2009
EXCO/US09/CET/1305	USPTO and deferred examination
EXCO/US09/CET/1306	Questionnaire-Priority claiming under Paris Convention
EXCO/US09/CET/1307	Proposal for a PCT link system
EXCO/US09/CET/1401	Community Patent – current status
EXCO/US09/CET/1402	EU Working Group (Patents) van Pottelsberghe-Presentations
EXCO/US09/CET/1403	Community Patent – Impact analysis of the Spanish Patent Office of 1 July 2008
EXCO/US09/CET/1404	Integrated European Patent Litigation System – Current Status: most recent draft for the "Agreement on the European and Community Patents Court"
EXCO/US09/CET/1405	Integrated European Patent Litigation System – Harhoff-Report to the European Commission of 26 February 2009
EXCO/US09/CET/1406	Report of FICPI meeting with the EPO, March 18, 2009
EXCO/US09/CET/1407	FICPI Observations to the Preliminary Report of the European Commission, DG Competition, on the Pharmaceutical Sector Enquiry of 28 November 2008
EXCO/US09/CET/1408	EU Working Group (Patents) van Pottelsberghe – Final Report (see also EXCO/US09/CET/1402)
EXCO/US09/CET/1501	EPO Decision T80/05 referring to the BRCA1 gene case
EXCO/US09/CET/1502	Post-grant limitations before the EPO
EXCO/US09/CET/1603	Report on WIPO SCP meeting
EXCO/US09/CET/1701	Amicus Brief submitted to the EPO Enlarged Board of Appeal - Written statement under Article 10(1) of the Rules of Procedure of the EBA in the case G 3/08
EXCO/US09/CET/1901	Report on the 16^th meeting of the OAMI User's Group

“The percentage of highly qualified attorneys who choose to participate in FICPI will increase”
(FICPI Strategic Plan, 2009)

FICPI-INDIA

A highlight of the Washington ExCo was the admission of a new FICPI Section in India. The Indian Federation of Intellectual Property Attorneys (FICPI-India) is the first organised group of patent attorneys in India and immediately assumes a pre-eminent position as the representative body of Indian patent attorneys in private practice.

FICPI-India was voted to admission of FICPI unanimously by the ExCo and becomes the 35th national section/association represented on the executive committee. FICPI now has national groups in Brazil, India and China, leaving only Russia has the last member of the 'BRIC' countries to achieve admission to the ExCo.

At a meeting in New Delhi on January 17, 2009, the following persons were elected to the Council of FICPI-India:

President:	Francis Groser
Secretary:	Sharad Vadhera
Treasurer:	Essenese Obhan
Council members
Sudhir Ravindran, Vijay Pal Dalmia, Rajeshkumar Acharya

The officers and Council members of FICPI-India look forward to welcoming all FICPI members to New Delhi later this year for the FICPI India Symposium that will take place at the Taj Palace Hotel, New Delhi on 9-11 December 2009. (see Brochure)

Featuring a panel discussion with CEOs from different branches of Indian industry, the FICPI India Symposium 2009 is organised in partnership with the Confederation of Indian Industry (CII) and is sponsored by Managing Intellectual Property magazine.

· Live panel discussion with CEOs from Indian industry and members of FICPI and CII

· Pros and cons of outsourcing IP services offshore. How can it help your practice?

· Assessment of patentability in India, the US, Japan and Europe

· Generic v. Branded Pharma

· Update on traditional knowledge

· Comparison of patent examination & opposition practice in Europe, India & elsewhere

· IP protection for IT & software

· Trademark protection for shapes and colours

Leading Speakers include Judge Fysh (UK) and officials from WIPO, the European Patent Office & IP India.

A full social programme for delegates & accompanying persons is included; pre- and post-conference tours to popular Indian destinations are planned, including the famed Taj Mahal in Agra.

Registration is now open at www.ficpi.org

FICPI Strategic Plan

Report by Julian Crump (GB), Secretary General

In Washington, the ExCo adopted FICPI's new Strategic Plan that will chart the Federation's course for the next 10 years.

Work to refresh the previous Strategic Plan that was adopted over 10 years ago at the ExCo meeting in Broome (1998) began at a Bureau Retreat in Canada in July 2007 under the direction of the President, Danny Huntington (US), and continued in the full ExCo at its meeting in Sydney (2008), following a survey of the entire membership. Five primary goals were quickly identified: Leadership, Membership, Branding, Skills and Operations to secure FICPI's role as the representative body for IP attorneys in private practice throughout the world and realize its position as a key part of the international IP system.

Under Leadership, the ExCo determined that FICPI will take a leading role in advancing and stimulating improvements in both the profession at large and the members’ professional impact on society, providing representation of the free profession, the development of IP law, the promotion of best practices, and will strive for excellence in government relations and fully cooperative alliances with sister organizations.

Under the Membership tag, the ExCo resolved that the percentage of highly qualified attorneys who choose to participate in FICPI will increase. Steps will be taken to provide enhanced support for applicants from developing countries; measures will be adopted to provide an enhanced level of engagement with the members, and to achieve a greater understanding of member satisfaction. An expanded and enhanced referral and information network amongst the membership is a particular goal.

Recognising that in some important parts of the world FICPI's role is poorly understood, the ExCo also decided urgently to take steps to stimulate a greatly enhanced understanding and working impression of the value of FICPI globally.

FICPI cannot purport to represent the global IP profession without playing its part to train new IP attorneys; and so the ExCo decided that FICPI will be a primary force in improving the professional capabilities of the membership worldwide.

The Strategic Plan sets out an ambitious programme for the next 10 years, but looks set to assist FICPI in consolidating its global role as the voice of the IP profession. It is a remarkable achievement of Danny Huntington's presidency.