24th September, 2019
FICPI had the pleasure of having a full-day meeting with the WIPO leadership on 11 September 2019 covering a broad range of topics, from one-portal digitalization to arbitration. The WIPO is also expanding its patent drafting training programs.
Should the Client-Attorney Privilege question be separated from patent law harmonization? Will China be the game changer for the Hague Agreement; 75% of the world’s designs are filed from China?
Director General Francis Gurry gave a comprehensive overview over the latest developments at the WIPO and concerning the various treaties it administers. The PCT filings are growing, the Madrid applications are in the rise and membership expands; and the Hague agreement is moving along well. The Design Law Treaty may move forward in the WIPO General Assemblies in October this year.
In its internal operations WIPO is moving for AI based speech-to-text reporting (including machine translations) connected to searchable video recordings. The WIPO platforms are already extensively used and enhanced by the WIPO translating tool and image search (designs).
Yoshiyuki Takagi, Assistant Director General, informed that the WIPO is planning to launch a new IP Portal in a few weeks. The portal will collect the present 48 portals and include ePCT, eHague, eMadrid, allow for financial transactions and thus offer a one-stop shop for all IP services. It will have a single sign-on user account providing overall access to files and related payments.
A further new service that WIPO is considering is digital time stamping instead of traditional notarial services for retaining documents as future evidence. According to a WIPO survey, about 10 jurisdictions offer such on-line services. There are also a number of commercial providers in this area. The service would be based on a single user account and subject to fees.
After the more general overview Marco Aleman, Director, Patent Law Division, took the lead on a discussion on patent law. The patent law division works on four tracks: SCP; legislative advice to member states on patent related issues; support with the Paris, Budapest and Patent Law treaties; as well as local capacity building by patent drafting and inventor assistance programs. Within the SCP framework almost 70 dossiers on substantive patent law have been produced during the last five years. FICPI was again encouraged to contribute with advice on the substantive issues. The client-attorney privilege (CAP) discussions are also advancing, but it could be advisable to focus on CAP with respect to litigation, and not prosecution.
Presently, WIPO runs patent drafting programs on a national and regional level. The plan is to start with an international program based on both distance learning and on-site training in Geneva. The goal is to achieve an accreditation arrangement by way of MOU’s with member states.
Matthew Bryan, Director, PCT legal and User Relations Division, reported that the PCT Working Group was functioning well and that FICPI’s interventions and suggestions had been well considered and taken aboard. An amendment to the rules on erroneously filed elements in the PCT Regulations will be proposed to the General Assembly in October 2019. The PCT Applicant’s Guide will provide clarifying examples on how the rule amendments will be applied in practice. There is also a proposal on providing extensions to time limits in case of problems with online access for applicants. A more difficult issue is the broadening of the competence of any ISA/IPEA.
After lunch, the discussions moved onto brands and designs. David Muls, Senior Director, Madrid Registry, noted that the Madrid system has developed positively. By now 121 countries are included and the goal is to raise the number to the PCT member state level (150 +). The use of the Madrid system, however, differs in the way that even the larger filers only file less than 200 applications/year, whereas the majority of applicants only file a very few applications. One issue that is looked into is harmonizing time limits, since offices calculate them differently; an example being provisional refusal. There is a clear rise in filings from Asia. WIPO has been tasked to study the introduction of new languages into the system; Arabic, Chinese and Russian.
Grégoire Bisson, Director, The Hague Registry, continued by reporting that 2018 was a significant year for the Hague Agreement as Canada, Russia and UK joined. Further countries are in the pipeline, including China standing for about 75% of the world’s design filings.
We then briefly reviewed our latest resolutions on slogan marks, letters of consent, adequate response times and our discussions regarding anti-scam measures. With regard to the latter, Debbie Rønning, Director, Madrid Registry, noted that WIPO received such notices themselves and took actions by notifying banks. With regard to our resolution on assessing priority of design applications, it was noted that the DAS code could be used as part of the priority claim data.
The WIPO, in addition to the PCT Working Group (WG), also runs a Madrid WG and Hague WG. FICPI was welcomed to join these groups.
Finalizing the day, Erik Wilbers, Senior Director, WIPO Arbitration and Mediation Center, gave an update on the activities of the center. The center has been operating for 20 years and has processed about 44000 domain name cases under the UDRP, 3500 cases last year. In view of the GDRP WIPO provides an advantage since it may go back to authorities for information. Alternative Dispute Resolution (ADR) is also clearly growing; about 60 cases have been processed.
FICPI delegation: Julian Crump, Coleen Morrison, Elia Sugrañes, Didier Intès, Kim Finnilä