29th April, 2019
Following a detailed discussion held in a workshop during the ExCo meeting in Zurich in 2016, it was apparent that the examination guidelines/manuals issued by various national IP Offices had quite divergent scope and implication. In fact, it was ascertained during such discussion that some IP Offices did not issue any examination guidelines at all. While other IP Offices did issue guidelines, they were not only binding on officials of the respective IP Office but also on the applicants. Not only this, some IP Offices issued guidelines unilaterally without consulting the stakeholders while others held extensive consultation and engagement with the stakeholders before finalising and issuing such guidelines. Some guidelines were challengeable in a court of law, while others were not. Such noticeable divergence in practice, content, process and legal implications of the guidelines or patent manuals issued by various IP Offices prompted the group to take up a project to study the this topic in detail, prepare a report thereon and share it with the FICPI membership.
The first step towards achieving such a goal was to draft a questionnaire on the scope and implication of examination guidelines or patent manuals issued by various national IP Offices. This worked out to be a joint venture between the then CET 5 and CET 7. After drafting the questionnaire, discussing it in detail and receiving suggestions from both the groups, it was finalised. The questionnaire then received approval of CET, Bureau and ExCo following which, it was forwarded to the delegates of the national groups of FICPI for their reply, input and comment. The best part was that responses from the following 32 national groups were received : Argentina, Australia, Austria, Brazil, Belgium, Colombia, Switzerland, Chile, China, Germany, Denmark, Ecuador, Spain, Finland, Greece, India, Italy, Japan, Republic of Korea, Mexico, Malaysia, New Zealand, Netherland, Portugal, Poland, Romanian, Russia, Sweden, Singapore, South Africa, United States and Venezuela.
The responses were so divergent, insightful and enriching that putting them together in one document was quite a task. Nonetheless, after extensive study and deliberation, a detailed summary of the responses received to each of nine questions posed to the respective national groups was prepared. Said briefing was presented in the form of an information paper and can be accessed here.
With relation to trademarks, FICPI recently participated in two EUIPO consultations (with responses drafted and submitted by CET 1) in connection with the convergence projects organised by EUIPO, which lead to the drafting of Common Practice documents binding EU IP Offices’s practices: CP8 Convergence project on the use of a trademark in a form differing from the one registered and CP9 Convergence project on the distinctiveness of a shape mark containing other elements when the shape itself is non-distinctive. During the discussions on the consultations, it was noted that the EUIPO and the other participating EU IP Offices were using in the Common Practice documents fabricated examples, which were not real cases, and furthermore, the results included in the Common Practice drafts based on those fabricated examples were not in line with established EU case law.
In pursuance of detailed study in the information paper and findings during EUIPO consultations, a workshop was organized on April 2, 2019 in Turin jointly by the current Chairs of CET 1, Eleni Kokkini and CET 7, Swarup Kumar. Various aspects related to IP office guidelines were discussed in detail in the said workshop. The said workshop on IP office examination guidelines and manual was attended by delegates from Ireland, Australia, France, Brazil, USA, Finland, Sweden, Germany, Turkey, Russia, Japan, India, Canada, Spain, Norway, Italy, Switzerland, the Czech Republic and Argentina etc. Following are the broad consensus/agreement reached by the attendees on IP office guidelines:
- Guidelines are indeed helpful for the examiners as well as the stakeholders more so, for the sake of bringing elements of certainty and predictability for users.
- IP offices should conduct proper consultation with the stakeholders including IP attorneys, before issuing the IP office guidelines.
- While inclusion of examples in the guidelines could be helpful, only appropriate examples, which are in line with prevailing case law and legislation should be used.
- IP office guidelines should be dynamic documents, i.e. they should be updated on a regular basis so as to reflect the changes in law and jurisprudence.
- A possible draft resolution may be envisaged and following a detailed deliberation by the attendees of the workshop, a broad language for such resolution found favour with all.
The draft resolution was thereafter, polished by CET team for language, content and context accuracy whereafter, it was presented to the ExCo delegates for their comments and suggestion and consent the next day. The Exco delegates suggested a few minor changes to the language of the resolution, which were incorporated following which, the ExCo delegates passed the resolution unanimously. A copy of the resolution, which in effect, reflects the crux of the FICPI’s position on the way forward towards issuing of IP office guidelines can be accessed here.