Julian Crump reports on successful FICPI visits to the major Asian IP Offices in India, Singapore, China, Japan and Korea.

FICPI’s annual visit to the major Asian IP Offices wrapped up on 29 November 2019 in Tokyo with a meeting with the Japan Patent Office (JPO). The “tour” had started some 10 days earlier in India with a meeting with Dr. Dinesh Patil, Head of the Mumbai branch of IP India, and had taken in stops in New Delhi, Singapore, Beijing and Seoul.

FICPI invests substantial resources in its visits to the leading IP Offices, making annual visits not only to the main Offices in Asia, but also to the USPTO, EPO and EUIPO as well as to international organisations active in the field of IP, such as WIPO and the European Commission.

Those taking part in these visits give up copious amounts of their time, for which FICPI is very grateful. By fostering strong, cordial relationships with IP Offices, FICPI creates opportunities to offer constructive criticism of existing practices and procedures from its members, who are the predominant users of the IP systems, and to help guide and influence the development of IP laws and practices at the national, regional and international levels.

In most Offices, the majority of applications are filed by non-domestic applicants, so FICPI’s visits also give the Offices a unique chance to meet with representatives of their major users.

In making these visits, FICPI has the overarching objective of making it easier for its members’ clients to protect and enforce their IP rights – or to challenge the IP rights of others which they consider to have been invalidly granted or granted with inappropriate scope – as well as simplifying the relevant procedures and formalities to reduce unnecessary expenditure and minimise the risks of applicants losing rights when things go inadvertently wrong.

Of course, FICPI delegations to IP Offices always emphasise the importance of applicants using a properly qualified IP attorney. In line with one of the ongoing initiatives under FICPI’s current Strategic Plan, all of the Asian Offices visited on the 2019 tour were presented with a copy of FICPI’s report on “The IP Practitioner – Adding Value to Innovation?”, which was received with interest by all those concerned.

Protection of client communications

A key issue discussed with Dr. Patil in Mumbai was FICPI’s ambition for an international treaty that would guarantee protection from disclosure for communications between an IP attorney and his or her client and international mutual recognition of that protection. The matter is currently under discussion in WIPO, where FICPI recently gave a presentation on the topic at the 31st Session of the Standing Committee on the Law of Patents.

India has been one of the countries that has raised concerns about the introduction of such a treaty and the FICPI delegation was keen to find out why, given that the protections involved would surely be of benefit to Indian industry.

Dr. Patil, who has represented India at previous sessions of the SCP, explained that his country has concerns that some applicants might use the proposed protection – which is called “client-attorney privilege” in common law countries – to conceal the most important details of an invention for which a patent application had been filed, thereby frustrating full technology transfer.

The FICPI team pointed out that the protection envisaged would only apply to communications made for the purpose of giving and seeking advice, and not to other kinds of documents, such as lab notebooks, which might contain important technical information and could never benefit from protection from disclosure. Dr. Patil also had concerns about the standing of WIPO to discuss the issue and questioned whether it was appropriate to extend legal privilege to non-lawyers such as patent attorneys who typically have a formal training in science or engineering and not in the law. The question of ethics is of course of paramount importance and one that FICPI must reflect on carefully in the context of the ongoing discussions of this issue.

Conflicting patent applications

FICPI’s established positions on “conflicting applications”, which forms a key component of the package of measures for substantive patent law harmonisation under discussion by the Group B+ at WIPO, was discussed in detail with the Intellectual Property Office of Singapore (IPOS), the Korean Patent Office (KIPO) and the JPO.

In Singapore, FICPI raised concerns that “double-patenting” was a ground for revocation, but the bigger issue is in Korea and Japan, where the court-mandated requirement for a later applicant to excise from his or her claims not only subject-matter that is identical to that disclosed in an earlier application which was unpublished at the time of filing the later one, but also subject-matter that is “substantially identical” risks leaving a gap in protection between the two patents which could be exploited by an infringer to work around both patents.

FICPI pressed the offices to support a “whole of contents” approach of the kind used by the EPO and the Chinese National Intellectual Property Administration (CNIPA).

New laws for new technology?

Being on the frontline for advising businesses on the protection of their innovations, FICPI members are often amongst the first to appreciate the challenges to existing IP systems that are posed by new technologies and technical opportunities.

High level meetings with IP offices give FICPI a chance to raise these issues and to discuss how laws or practices might need to be adapted to accommodate new technologies. One such area relates to graphical user interfaces (GUIs) and icons. Traditionally, registered design protection (design patents in some countries) requires registration of a new design as applied to a physical product. However, increasingly, new products are the result of new software which can be run on multiple different devices.

In this context, it makes no sense to limit the protection of a new design for a GUI or icon to a particular piece of hardware or to represent a GUI or icon in a way that is removed from how it would be presented in practice, often in conjunction with other GUI elements or icons.

Referring to FICPI’s resolution, this issue was raised with IPOS and CNIPA. Whilst noting that the requirement to show a human-machine interaction had been weakened in new guidelines published by CNIPA on 1 November 2019, such that there is now only a requirement for a display on a machine screen, it is still necessary to indicate the device, albeit in dotted lines. CNIPA reported that they were continuing to work with other organisations to determine how best to protect this new technology.  FICPI will continue to monitor this issue and to press for a harmonised treatment.

Working inventions and claim amendments

In terms of simplifying procedures and avoiding unnecessary costs, FICPI urged IP India to apply pressure on the Indian Government to dispense with the annual need to report working of an invention in India on the notorious Form 27.  It is understood that the office does not examine these returns which represent an unnecessary burden on patent owners.

The FICPI delegation also raised the issue of claim amendment in India, with many examiners still refusing to allow applicants to amend their claims based on subject-matter in the specification that was not already called out in the claims. FICPI pointed out that this is not in line with the requirements of Section 59 of the Indian Patents Act 1970 (as amended).

Longer timescale to reply to Chinese refusal notices?

In China, FICPI drew attention to the severe difficulties caused by the very short response time (15 days) that is allowed for responding to an official notice of refusal of a trade mark application, especially for foreign applicants for whom the chain of communication is typically rather long.

Referring to its resolution, FICPI asked CNIPA to do what it could to provide a longer period within the confines of the legal requirement for the examination of trade mark applications to be completed within nine months. It was noted however that CNIPA does have to handle about 7 million new trade mark applications every year.

Constructive meetings

Overall, FICPI was pleased to receive a warm welcome from all of the offices it visited this year and enjoyed construction discussions on a range of topics of great importance to FICPI members and their clients.

In India and China at least, the visits were also very timely, coinciding as they did, in India, with the commencement of a new PPH pilot arrangement between India and Japan and, in China, with a press release by the Chinese Government of a new programme offering 99 measures to enhance IP protection in China, which was important not only to the opening up of China but also to China’s internal development. Steps including revisions to China’s patent and trademark laws were being implemented to combat infringement and deal with bad faith filings.

FICPI’s view and involvement 

FICPI’s focus on building connections and good working relationships with the major IP offices ensures that lines of communication are open for two-way discussions as laws and guidelines develop and that FICPI is in a position to influence those developments. Feedback from the FICPI delegations is translated through to members through communications such as the newsletter and through FICPI’s own resolutions and guidelines.

Next steps