29th April, 2019
The FICPI Executive Committee met in Turin, Italy from 31 March to 4 April 2019 and passed seven important and highly topical resolutions covering the assessment of unity of invention, consultation with stakeholders prior to publishing or updating patent office guidelines, back up for online filing systems, priority assessment for design applications, and protection for virtual designs and 3D printed tissues and organs.
Two of the resolutions related to unity of invention, one covering procedural aspects and the other substantive aspects of the assessment of unity of invention. The first resolution urges IP Offices to provide a procedure to allow applicants to challenge unity of invention objections within a reasonable timeframe that would permit the complete and timely search and/or examination to be carried out in the event of a successful challenge. It also urged the same offices to provide, as part of such a challenge procedure, the option for a higher level review of the unity of invention objection, also within such a timeframe. The second resolution urges IP Offices IP Offices that are currently not using the PCT standard of unity of invention for all types of application at least to offer such a standard for all types of application, if not adopt such a standard for all types of application. It further called on the Offices to converge their application of the PCT unity standard and to work together to improve consistency in the manner in which the PCT unity standard is applied.
There are also two resolutions relating to designs, one urging all jurisdictions to adopt a standard for assessing priority based on whether the subsequently filed design is substantially disclosed in the first application, not whether the representations are identical, and the other urging jurisdictions to allow for the registration and enforcement of Virtual Designs. The first of these resolutions addresses the loss of priority for design applications in some jurisdictions when minor alterations are made to the drawings to meet local formality requirements, while the latter resolution addresses problems caused by the failure of legislation, regulations and practices to keep up with rapid advances in technology, in this case recognising that designs can exist in the virtual world.
In view of the lack of examination guidelines for some IP Offices, and also the presence in some examination guidelines of examples that are confusing or inconsistent with the law or regulations, the Executive Committee passed a resolution urging all IP offices to issue and publish up-to-date guidelines, to undertake meaningful consultation with all stakeholders, including representatives, prior to issuing or updating such guidelines, and to ensure that all examples provided in guidelines are well reasoned and consistent with established case law, legislation and regulations.
Another problem considered by the Executive Committee was the lack of technical support and suitable back up filing systems for users of online filing systems in some jurisdictions. This lead to a further resolution urging IP Offices to ensure that in addition to reliable, properly tested and adequately supported online filing systems, suitable alternative and backup filing methods are available at all times. The resolution also urges the introduction where needed of procedural and legal safeguards for users in case of problems with the online filing systems to prevent failure to meet a deadline or other loss of right, and encourages IP offices to communicate promptly and clearly with users when there are issues with the online filing systems, as well as keeping a public record of such issues.
Finally the Executive Committee considered the advances being made in relation to 3D printing, and the fact that 3D printing of artificial tissues and organs by using living cells can provide significant advantages, including providing a solution to the limited number of donated tissues and organs available for transplantation, and avoiding having to transport such tissues and organs. Accordingly, the Executive Committee passed a resolution urging legislators and patent offices to consider 3D printed tissues and organs as being eligible for patent protection.
Five of the above resolutions originated from FICPI’s Study and Work Commission with over 200 highly experienced and qualified members. The remaining two resolutions were the result of highly interactive workshops held at the Executive Committee meeting.
The resolutions may be found in the FICPI Library.