On 10-11 February 2020, FICPI President, Julian Crump, represented our Federation at the 6th Presidents’ Meeting, which was hosted by the Institute of Patent and Trade Mark Attorneys of Australia (IPTA).

Presidents or their representatives from seven national and international IP attorney Associations, including FICPI, gathered in Sydney on 10 February. They discussed important issues of local representation for foreign patent and trade mark applicants and protection from forcible disclosure in legal proceedings of confidential advice given by IP attorneys to their clients (e.g. legal privilege).  

Declaration: qualifications and demonstrable skills

The meeting concluded with a Declaration, agreed by all those in attendance, to the effect that their Associations believed that foreign applicants should be required to appoint a local representative having a relevant professional qualification or otherwise recognised to have suitable knowledge, skill and experience to act before an IP Office, and that the same requirements should also apply to local applicants who choose to appoint a representative to handle their application, although it was acknowledged that all applicants should be free to represent themselves before their own local IP Office, if they wish.

The Declaration was signed by the Presidents or representatives of FICPI, IPTA, JPAA, KPAA, CIPA and APAA, with Mr Xiaoling Dang, Vice President of ACPAA (who attended by videoconference owing to the coronavirus outbreak in China) agreeing to put the Declaration before ACPAA’s new President, Mr He Hua, for signature. 

Opportunity to discuss high level proposals

The 1st Presidents’ Meeting was organised in 2015 by the JPAA in Tokyo and has been an annual event since then. The 4th meeting was held outside Japan for the first time, in Seoul; and the 5th meeting in December 2018 was hosted by ACPAA in Beijing. 

CIPA plans to host the next meeting in London, in December 2020.

A principal reason for setting up the Presidents’ Meeting was to give IP Associations an opportunity to discuss at a high level proposals for automatic national phase entry of PCT applications using ePCT as well as electronic “cross-filing” under a future “active phase” of the Global Dossier. 

Importance of knowledgeable local representatives

In Sydney, the Associations agreed unanimously on how important it is for foreign applicants to use a local representative with the requisite skill, knowledge and experience of local laws and practice, as well as local language and culture, notwithstanding an increasing temptation by foreign applicants or their representatives to try and make use of modern communication tools, including machine translation facilities, to handle foreign applications themselves directly with the relevant Offices.  

An increasing problem at some Offices is the large number of trade mark applications being filed by Chinese applicants without qualified local representation. 

Michael Caine, president of IPTA,  reported that in Australia, it is only necessary for a foreign applicant to have an address for service in Australia or New Zealand to prosecute applications, and in practice all official communications are sent by email to an address which could be anywhere in the world.  On the other hand, it is striking that in China, Korea and Japan, it has always been compulsory for foreign applicants to appoint a local representative to file and prosecute a patent or trade mark application.

Michael then gave the attendees a presentation on the importance of trying to reach international mutual recognition of client attorney privilege or equivalent forms of protection from forcible disclosure for legal advice given by patent and trade mark attorneys to their clients, noting that a great deal of work on this had already been done by various organisations since a colloquium in Paris held by FICPI, AIPLA and AIPPI in 2013.  He urged everybody to make sure they had reviewed the copious materials that were now available on the issue before going back over old ground.

Hirohito Katsunuma, president of APAA, then gave the participants an update on the recently adopted ‘JPO Guidelines for Examination of AI Inventions’, noting that an inventive step can in principle be acknowledged for inventions using AI which give rise to an improvement.  It is not necessary for the improvement to be technical in nature. 

On 11 February, the delegates enjoyed a visit to Australia’s national science agency (CSIRO) at its Marsfield site, north of Sydney, where they were given a guided tour of the astronomy and information technology laboratories. There, they were treated to an excellent presentation by Christine Emmanuel, CSIRO’s Executive Manager, Commercial, on the development and commercialisation of Wireless LAN by CSIRO inventors in 1996, who won the European Inventor of the Year Award in 2012 for their work. The delegates were honoured by the presence at Marsfield of Michael Schwager, Director General of IP Australia since 2018, who gave an update on the work being done by his Office. 

IPTA were excellent hosts of the 6th Presidents’ Meeting, with a dinner organised on the 10th February at a restaurant with a magnificent view of Sydney Opera House and an excellent lunch on the second day before the delegates departed. 

The issue of local representation by a suitably qualified or otherwise experienced IP attorney is of great importance to applicants to ensure their applications are filed and prosecuted efficiently and result in the best available protection. 

FICPI will ask its national and regional delegates to approve and adopt the Declaration at its next EXCO meeting in Goa in March 2020 and will then work hard to bring its contents to the attention of IP Offices. It is hoped that the other Associations will do likewise.

FICPI’s view and involvement 

Ensuring that FICPI is represented at a platform with other leading IP Associations ensures that we can build on our strong shared interest to represent FICPI member interests and work with other groups to build IP value and safeguard our clients’ IP rights. FICPI’s focus on legal and professional excellence for IP attorneys in private practice helps clients to recognise the quality of FICPI members’ work. 

Next steps