The FICPI Executive Committee met virtually on 19 May 2021 and passed five important resolutions covering the protection of IP rights in connection with COVID-19 vaccines and treatments, the protection of partial designs, remedies in the case of inaccurate declarations made to support fee reductions, expedited examination of trade marks and IP Offices providing access to automated search, classification and examination tools they develop.

The first resolution was prompted by a proposal by India and South Africa, subsequently supported by several other countries, that certain provisions of the TRIPS Agreement be waived to assist the prevention, containment and treatment of COVID-19. FICPI understands that the international COVID-19 pandemic represents a global humanitarian crisis and that a widespread distribution of sufficient amounts of a vaccine, drugs, devices or methods for treatment or protection against COVID-19 should be facilitated to meet the needs of the global population. However, FICPI believes that IP rights do not inhibit access to vaccines and treatments. On the contrary, IP protection acts as a strong incentive for innovation of vaccines and treatments and encourages development of related technologies. 

The resolution emphasises the importance of IP protection and its beneficial effects on the fight against COVID-19 and urges WTO member states to reject the proposed waiver, and to continue to afford IP protection for all COVID-19-related innovations. The resolution further urges WTO member states to adopt appropriate measures as and when required, and to encourage all stakeholders to work together expeditiously, to ensure that all relevant IP rights are made available for licensing on fair and reasonable terms promptly as required, with the objective of facilitating the widespread distribution and use of sufficient amounts of vaccines, drugs, devices and methods of treatment or protection against COVID-19, to meet the needs of the global population during the course of the pandemic.

The second resolution addresses the fact that some jurisdictions do not provide protection for partial designs. FICPI believes that partial designs deserve meaningful protection. A partial design can be e.g. a separately made component of a complex product or system or a stand-alone design. While this is recognized in some jurisdictions, a number of jurisdictions do not allow registration of partial designs. Some jurisdictions in principle allow registration of partial designs, but set conditions or limitations to such registrations often rendering them useless. This resolution sets out the main principles for achieving a meaningful protection for partial designs, urging all jurisdictions to provide for their protection. The resolution further urges that such provision should not require the entire article including the partial design to be represented; that a partial design be part of a complex and/or larger product; or that the portion of an article embodying the partial design be manufactured separately from the remainder of the article.

The third resolution relates to problems that can be encountered when seeking to rely on fee reductions applicable to certain categories of applicants. FICPI is pleased that some jurisdictions provide a possibility for certain categories of applicants and patentees to obtain a reduction in official fees, which may incentivize the use of the patent system by such categories of applicants and patentees. Fee reductions are given when certain conditions are met, and Applicants and patentees are normally required to file a declaration that said conditions are met. However, if the declaration is inaccurate, the result can be a loss of rights that may be irremediable. This resolution sets out the remedies that FICPI believes should be available for avoiding an irremediable loss of rights and urges Authorities to provide procedures to enable applicants and patentees in these situations to pay retrospectively any fees due without loss of rights, and, in case of any actual loss of rights in these situations, to make it possible for applicants and patentees to restore their rights. The resolution further urges Authorities to apply an “unintentional” standard to such procedures.

The fourth resolution was passed to express concern in relation to the considerable delays experienced in some jurisdictions for obtaining examination and registration of trade marks. The delays in acquiring a registration of a trademark may have various negative consequences. In some jurisdictions a trademark application does not allow enforcement, and in some an application does not even establish a prima facie proof of ownership. In this resolution FICPI urges Trade Mark Offices to provide applicants with the option of expedited examination, with or without requiring additional fees or justification.

The fifth and final resolution passed by the Executive Committee relates to the automated tools for enhancing searching, classification and examination being developed by several IP Offices. FICPI believes that the use of such high-quality search tools by applicants and third parties would lead to better quality patent applications and granted patents. The IP Offices are uniquely well placed to develop such automated tools based on historical information on examiner decisions and related searching, classification and examination. According to this resolution FICPI urges IP Offices to make their automated tools available to all users of the patent systems, and request that such automated tools be made available at no cost.

The Resolutions passed in by the Executive Committee may be found here.

Michael Caine
Vice President
Study & Work Commission (CET)

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