FICPI was invited to participate at the Group B+ Sub-group meeting and the Group B+ Plenary Session held in Geneva on 1st October 2019. The meeting was attended by Jérôme Collin and Kim Finnilä.

The sessions were chaired by Ms Frances Roden (Deputy Director General, IP Australia).

During the Sub-Group meeting IT3 (AIPLA, BusinessEurope, IPO, JIPA) gave an overview in the form of a chart on their work on the main topics of patent law harmonization. The IT3 has reached consensus on some issues, but is still discussing some other issues of the patent law harmonization package. The issues remaining under discussion at the IT3 include Conflicting applications, duration of a Grace Period, a declaration to be filed in the case of a Pre-Filing Disclosure (PFD), Defence of Intervening Users (DIU), and Prior User Rights (PUR).

The Sub-group then continued their discussions on future work in a closed session.

The Group B+ Plenary Session commenced with an introduction to a Draft Agreement on Cross-Border Aspects of Client/Patent Attorney Privilege introduced by the core members (AU, CA, JP, KR, SE, ES, CH, UK) of the group. The draft is still a working paper but already covers the essential features of issue, including a definition of an IP advisor, cross-border communication and protection of forcible disclosure of confidential information.

AIPPI intervened in support of the draft agreement and presented its resolution recently adopted on this subject during the AIPPI 2019 London Congress.

The following steps suggested by the core group to the Group B+ member states were: (i) consultation on the draft agreement from 1 October 2019 to 28 February 2019; (ii) possible amendments to the draft from March to June 2020; and (iii) voting on the proposed agreement at the next Group B+ meeting in 2020. This proposal met with agreement.

FICPI was asked to give a concise presentation on the FICPI position on Substantive Patent Law Harmonization to Group B+.

Jérôme Collin and Kim Finnilä preparing to present the FICPI position during the break

Jérôme Collin thus summarised the FICPI position to the audience:

  • FICPI appreciates the useful feedback received from the IT3 during the meeting, and the possibility to further contribute to the convergence process,
  • FICPI notes the common interest in taking onboard the perspective of a wide variety of users, geographically and by nature of users, including all types of companies, universities, and also the public at large - this variety of stakeholders being directly reflected in FICPI work, as FICPI represents all kind of users on a global scale,
  • As the IT3, FICPI believes that the package should be based on a balance of interests, across this variety of users. It was also reminded that FICPI has searched and found a consensus on a solution which should be transparent and as simple as possible.

Jérôme Collin reminded that:

Regarding a Grace Period (GP) and Prior User Right (PUR):

  • FICPI supports a GP up to 12 months after an applicant’s own Pre-Filing Disclosure (PFD),
  • In order to incentivize inventors to file an application early after the PFD the GP should be balanced, notably by strong a PUR (PUR may be acquired even if derived – in a legitimate way – from a PFD made by the applicant), and by the fact that third parties’ independent (non-derived) disclosures should be considered prior art,
  • Patent applicants should be incentivized to voluntarily file a Statement for fostering transparency, giving details of any PFD. After filing a statement, there should be a presumption that the PFD is to be exempted from the prior art,
  • FICPI further supports additional transparency through a notice published by Patent Offices (“public filing notice”), no later than 6 months from the filing date. Such notice should contain bibliographic data of the application including the IPC classification, any priority claim, and any voluntary statement of a PFD.

Regarding Conflicting applications, after carefully studying various options FICPI has concluded that the Whole of contents novelty approach efficiently solves the issue of Double patenting, by removing from claims of second application whole subject matter of first application. Furthermore, this approach is simple and predictable, and has been tested in practice for some 40 years. Importantly it balances the interests of an early and a later filer by providing equal rights to both filers when assessing novelty and inventive step, in relation to actual prior art.

This topic will be discussed at the upcoming Bureau and CET meetings in Vienna in late October to determine FICPI’s next steps.

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