The FICPI Executive Committee met in London on 3-4 October 2023 and passed three important resolutions covering the Complete Examination of Trademark Applications, Standard Formats for Design/Design Patent Applications, and the Work of IGC of Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore.

EXCO/UK23/RES/001: Complete Examination of Trademark Applications

This resolution urges Trademark Offices to avoid incomplete examination of applications and endeavour to conduct a complete and comprehensive examination of all substantive issues at initial examination.  

This arises from the recognition (and our members observation) that dealing with substantive issues one at a time due to an incomplete examination of a trademark application can lead to prolonged prosecution and increased costs to the applicant.  We passed a similar resolution in 2022 relating to patent applications, although this focused on the splitting of patent eligibility from other substantive issues.

However, we appreciate that there are some cases where new issues do need to be raised after initial examination.  We urge that Trademark Offices limit such situations to inadvertent omissions or supervisor-level review.

EXCO/UK23/RES/002:     Standard Formats for Design/Design Patent Applications

This resolution arises from considering the disadvantages of raster graphic formats (e.g., JPEG, GIF, TIFF, PNG, BMP) for representing designs which have limitations particularly when resizing or detailed views are required.  We urge IP Offices to allow the use of vector graphic formats (e.g., some PDF, SVG), which:

  • provide a stepless and lossless scalability of design representations;
  • reduce memory space compared to raster graphics formats; and
  • open the possibility for automated digital comparison of images.

In addition, we urge IP Offices to work towards permitting the use of standard three-dimensional representations and standard video formats in design/design patent applications, as these will provide applicants appropriate ways to protect three dimensional designs without the need for incomplete two-dimensional representations and will provide applicants appropriate ways to protect new types of designs.

EXCO/UK23/RES/003:    Work of IGC of Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore

Having been following the work of the IGC since 2001, we passed a resolution in 2004 (EXCO/IT04/RES/001) reflecting our views on the proposals at the time relating to disclosure of genetic resources in patent applications.

Given the plans to hold a Diplomatic Conference in 2024 and following the intensive discussions at the Special Session of the IGC 4 to 8 September 2023, we have reiterated our support for the proposed treaty.  We have also restated three of our key requests from the 2004 resolution, i.e., that the provisions relating to genetic resources should: 

  • Clearly and precisely define the requirements for a declaration in a patent application of the source of any genetic material on which the invention is based; 
  • Require the applicant to identify in such a declaration only the source from which the genetic material was actually obtained by the inventor; 
  • Entitle the applicant to an opportunity to rectify any failure to comply properly with the declaration requirements and regulate that the consequence of any ultimate failure to meet such requirements shall not, in the absence of fraudulent intent, be invalidation or unenforceability of the patent.

As a refinement to our previous position regarding the retroactivity of any provisions, we agree with the proposed provision of Article 5 that contracting parties “shall not impose the obligations of this instrument in relation to patent applications which have been filed prior to that Contracting Party’s ratification of or accession to this instrument, subject to national laws that existed prior to such ratification or accession.

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

Robert Watson
Study & Work Commission (CET)