16th July, 2018
Twelve highly relevant and topical resolutions, covering EU IPR in the UK after Brexit, patent and design law harmonization, trademark examination and ethical and professional rules for virtual IP firms, were passed at the FICPI Executive Committee Meeting and World Congress held in Toronto, Canada, 3-9 June 2018.
The Resolutions may be found in the FICPI Library, here.
The three Brexit related resolutions “BREXIT and transition of EU registered rights and applications therefor”, “BREXIT and Trade Mark Use” and “BREXIT and European Patents with unitary effect” focus on preserving TM, Design and potential Unitary Patent owners’ rights after United Kingdom’s forthcoming exit from the European Union. The first resolution urges the UK and the EU to adopt a regime for the transition of applications for EU Trade Marks, Registered Community Designs and Community Plant Variety Rights that will not require them to be refiled at the UKIPO. The second resolution urges that genuine use of a TM within the EU should also be taken into account for converted UK trade marks and vice versa. The third resolution urges that the proposed regime for the transition of EU IP rights should also be extended to future Unitary patents.
By its resolution on conflicting patent applications FICPI is the first NGO to issue a position on conflicting applications for the ongoing substantive patent law harmonization process. FICPI urges Group B+ and Authorities to adopt a “whole of contents” approach for treatment of conflicting applications. An in depth study on the harmonization process is linked to this resolution. A further harmonization related resolution on patents “Late objections for lack of unity of invention” states that objections to lack of unity should not be allowed after a patent has been granted by an examining authority.
The resolution on “PCT National Phase Requirements” urges that extensions of time beyond the national phase entry period should be allowed for certain measures, such as filing translations, amendment of claims for reducing fees and the filing of supporting documents.
In a TRIPS Agreement related resolution “Patent eligibility” FICPI notes that differences in statutes and judicial determinations have led to uncertainties as to what is patent eligible in several jurisdictions. Legislators should thus clarify the law on patent eligibility in this respect.
For trade marks FICPI issued three resolutions directed to IP Offices. Some Offices only grant extremely short times for responding to office actions, which may result in loss of rights for applicants. Consequently, FICPI urges that “trademark applicants should be given reasonable length of time to respond to office correspondence during prosecution and the opportunity to recover deadlines”. The second resolution states that Trade Mark Offices should accept Letters of Consent and consider these in assessing confusion between trade marks. The resolution “Examination of slogan marks” finds that Trade Mark Offices should apply the same examination standards to slogans and other word trade marks.
The resolution on “Harmonized approach for the protection of GUIs and Icons” emerged from the growing demand for design protection for static and dynamic Graphical User Interfaces and Icons. Authorities are urged to ensure availability and clear guidelines for such protection.
Finally, in view of the migration of professional practice from traditional and easily identifiable legal structures into so-called “Virtual IP firms”, FICPI resolved that regulatory and professional bodies should ensure that also such firms meet fundamental ethical rules and skills requirements.
Most of these resolutions originated from FICPI’s Study and Work Commission with over 200 highly experienced and qualified members. Some of the interesting and intensive sessions of the World Congress program also reached conclusions that lead to additional resolutions on the spot!