United Colors of AIPPI

More than 1 600 attendees from 83 countries came to Toronto, Canada’s metropolis, to participate in the 44th Congress of the International Association for the Protection of Intellectual Property (AIPPI).

The scientific program as well as the workshops addressed key hot intellectual property topics, while the social program allowed networking opportunities.

Having to host a congress, so soon after the Helsinki meeting, was a challenge for the Canadian organizing committee. Indeed, everyone agreed that the 2013 Forum and Exco meeting in Finland was a huge success.

We were inspired by the Finnish management of the meeting but we gave it a Canadian spin. Mother Nature gave participants a taste of early Canadian autumn with temperatures much colder than usual for September. However, Toronto’s Convention Center facilities and the proximity of hotels together with a strategic choice of locations for the evening venues, provided accessible warm shelter, as well as permitted participants to tour the city on foot.

The IP workshops included pharmaceutical industry issues, implications of 3D printing, attorney-client privilege issues, survey evidence in trademark cases, parasitism, software patents, cross-border infringement of IP, internet copyright issues and international arbitration. Other subjects studied during the Congress included the AEREO case, green technologies and The Hague system for the protection of industrial designs.

Two working lunches allowed officials from key IP offices to discuss their current projects in respect of implementing the Hague System for the Protection of Industrial Designs, and their progress with PLT and other issues of harmonization, such as Grace Period. Special interest receptions were held for the first-time attendees, women in AIPPI and the in-house counsel members.

Surprising Tunes from Canada

The Honorable Justice Marshall Rothstein, a judge of the Supreme Court of Canada, with a keen interest in IP, welcomed participants to the Congress during the Opening Ceremonies. He delighted the participants with candid opinions about the harmonization of the interpretation of IP laws by Canadian Courts and jurisprudence from other countries.

A live band performed internationally-renowned popular songs written or originally interpreted by Canadian artists. Many attendees were surprised to learn that some of their favorite tunes were actually created by Canadians! I proudly represented the Canadian IP community by acting as Master of Ceremonies for the Opening Ceremonies, in both official languages.

The cultural evening allowed participants to travel all across Canada, in one evening, in a network of interconnected rooms, to experience different regions of Canada. Each room reproduced the sights, sounds, entertainment, foods, drinks and music of a different part of Canada including Cowboy country, the Northern Lights, Niagara Falls, Quebec’s joie de vivre, and an East Coast Kitchen party.

The closing gala was an evening of wonder with performers delighting attendees with their Cirque du Soleil -inspired acrobatics and aerial performances. The lunch hall of the Convention Center had been completely transformed to create a warm and vibrant atmosphere. During the gala, a medal ceremony took place.

Mansala and Simmelvuo Awarded

Of note are IPRinfo-magazine´s own Marja-Leena Mansala, and another Finnish member Markku Simmelvuo, who were awarded the AIPPI Award of Merit for their considerable contribution to the work of AIPPI. An amazing dance band brought everyone to the dance floor, after dinner, and the party continued until the early hours of the morning.

The post-tour to Niagara Falls and Region attracted more than 120 participants, all eager to discover one of Wonders of the World. Felipe Claro, the association’s newly elected president, commented that “It was not a coincidence that the Congress took place near the great Niagara Falls, which is a symbol for the powerful and continuing changes taking place in AIPPI.”

The dedication of AIPPI members who come together to study, discuss, debate, consider, listen and integrate each other’s views to resolve what IP laws should be, for the greater benefit of mankind, never ceases to amaze me. It was truly a pleasure to welcome the World of AIPPI to Canada.

Isabelle Chabot
Patent Agent, Partner 
Fasken Martineau
Quebec City, Canada
Chair of hospitality in the organizing committee of the AIPPI 2014 Toronto Congress.

Questions considered by the Congress

This year, the questions considered for study and resolution towards harmonization were:

Question 238: Second medical use and other second indication claims,

Question 239: The basic mark requirement under the Madrid System,

Question 240: Exhaustion issues in copyright law and

Question 241: IP licensing and insolvency

Question 238 addressed second medical use and other second indication claims and considered the implications and the scope of disclosure and protection for a previously known chemical compound which exhibits previously unrecognized benefits. It was resolved that a second medical use should be patentable if it meets the patentability requirements of novelty, inventive step (non-obviousness), and utility or industrial applicability.

Patent eligible second medical uses may include, but are not limited to, the use of a known compound or substance for the treatment of a disease or condition not previously treated by that compound or substance; the use of a known compound or substance for the treatment of a new patient class; a different mode of administration of a known compound or substance; the use of a known compound or substance in a new dosage regimen; and a new therapeutic application of a known compound or substance based on a different technical effect.

Each jurisdiction should recognize at least one claim format that provides patent protection for second medical uses. The fact that a pharmaceutical does not contain label instructions specifying the patented second medical use should not per se exclude the finding of infringement of a patent for the second medical use.

Question 239 investigated what should be the basic requirements of a mark under the Madrid system. It was resolved that AIPPI does not support an abolition of the basic mark requirement and an abolition or freeze of the dependency on the basic mark. However, AIPPI supports a reduction of the dependency period from five years to three years, as such would provide a more even balance between the interests of the trademark owner on the one hand (providing an earlier level of certainty) and third parties on the other hand.

Question 240 pertained to exhaustion issues in copyright law and whether international exhaustion can be clearly defined and recognized. This is particularly relevant in the digital world. It was resolved that the legitimate first sale or other transfer of ownership of tangible copies of copyrighted works should be subject to exhaustion, however, only the right of distribution should be exhausted. There should be no exhaustion of the rights in the case of streaming. There should be no general international exhaustion of rights. However, jurisdictions may provide for regional exhaustion between jurisdictions.

Question 241 dealt with IP licensing and insolvency. The consequences of insolvency of a patentee, and the impact upon licensees and resulting arrangements with bankruptcy trustees were discussed. It was resolved that contractual rights in an IP license permitting the solvent party to terminate or alter the IP license during a bankruptcy or insolvency proceeding should as a rule be enforceable. Exceptions to the rule must safeguard legitimate interests of the IP licensor and licensee.

A contractual right in an IP license restricting or prohibiting transfer or assignment of the IP license during a bankruptcy or insolvency proceeding should be enforceable. In the event of termination of an IP license agreement during a bankruptcy or insolvency proceeding, the licensee should not be able to continue using the underlying IP rights. In the event of termination of an IP license agreement by the administrator during a bankruptcy or insolvency proceeding, a solvent, exclusive licensee should be granted a first right of refusal to acquire the pertinent IP rights.