06th November, 2018
Dear FICPI Family,
As we move into the last three months of the year, FICPI’s pace of activity has picked up after the summer, and there is much on which I could report. However, this month I want to focus on one FICPI endeavour that deserves your special attention; the tremendous work carried out by our Study & Work Commission (CET) in the field of substantive patent law harmonisation.
B+ Sub-Group Patent Law Harmonisation
FICPI is no stranger to having its ‘scientific’ work cited in positive terms by inter-governmental organisations and judicial bodies. For instance, FICPI’s “Memorandum C” (DATE) was discussed extensively by the EPO’s Enlarged Board of Appeal in its recent decision G1/15 on “toxic” divisional applications. That FICPI’s positions are often influential in higher court decisions around the World and in the development of IP laws and treaties is a testament to the very high quality of FICPI’s studies and work in the fields of patents, trade marks and designs that draw on the very wide knowledge and experience of its dedicated members.
The latest FICPI contribution to be welcomed and appreciated derives from a FICPI Working Group with core members from 11 countries that was established in 2016, initially to look at the issue of “Conflicting Applications”. At a B+ Sub-Group/Industry Symposium in 2017 in Munich, the following “Cornerstones” for patent law harmonisation were identified:
- Grace Period
- Conflicting Applications
- Prior User Rights
The remit of FICPI’s Working Group was expanded accordingly, resulting in the adoption of a detailed position paper by the FICPI’s Executive Committee in June 2018 in Toronto EXCO/CA18/CET/1302). FICPI’s complete position on the Cornerstones is contained in a detailed FICPI white paper on Patent Law Harmonisation.
As a result of lobbying by Michael Caine (AU), Vice President of the CET, and Jérôme Collin (FR), Chair of CET 3,with members of the B+ Sub-Group, FICPI was invited to present its recommendations to a meeting of the B+ Sub-Group on 26 September 2018 in Geneva. At the meeting, which was attended for FICPI by Jerome Collin (FR) and Jan Modin (SE), the Industry Trilateral (IT3) presented updated exhibits on the grace period, conflicting applications, prior user rights and prior art, which showed that agreement had been reached on both the definition of prior art and norms governing conflicting applications (with the exception of the treatment of PCT applications). The delegations found FICPI’s presentation interesting and appreciated FICPI's continuous work over many years on these issues. The B+ members discussed, without agreement, the possibility of including FICPI’s findings into the future work. A significant point about the FICPI proposed package, which was noticed by the B+ Sub-Group, is that it is relatively simple and easy to understand, is based on well-established principles of patent law, contains no gaps and aims to strike a balance between the interests of applicants, third parties and the general public and also between large companies and small entities, including individual inventors. As a result of FICPI’s presentation, the B+ Sub-Group agreed that the IT3 should be requested to respond to the FICPI proposals (the Agreed Statement will be announced soon).
In brief, the FICPI recommendation comprehends:
- A 12-month grace period after an applicant’s pre-filing disclosure (PFD).
- A safety net comprising prior user rights for third parties and full status as prior art for non-derivative disclosures by third parties.
- A voluntary statement of any PFD by the applicant, which gives rise to a presumption that, the PFD is to be exempted from the state of the art. In the absence of a statement, no presumption exists.
- Brief details of new applications, including the contents of the PFD, to be published within 6 months of the filing date.
Prior User Rights
- Prior user rights for third parties who have made commercial use – or made significant preparations to use - an invention within the grace period, which will be acquired even if based in good faith on the applicant’s PFD.
- FICPI supports “whole contents novelty”, which is simple and predictable, balances the interests of first and later applicants and does not require complicated anti-self- collision provisions or terminal disclaimers.
Please join with me in congratulating all members of the FICPI Working Group, who have worked intensely since 2016 on these issues, especially, Jan Modin, Michael Caine, Jérôme Collin and Philip Mendes da Costa for putting together such a clear and well thought out package of measures and for their success in attracting the significant interest of the B+ Sub-Group.
FICPI will continue to work hard to remain closely involved in this project with the aim of encouraging the relevant governments to agree on a package of measures that facilitates the exercise by inventors and industrialists of their rights, of increasing their security, and of simplifying procedure or formalities in accordance with one of FICPI’s statutory aims (FICPI Statutes, Art. 2.4).
With my best wishes to all FICPI members
Julian Crump, President