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The AIPPI 2014 Toronto World Intellectual Property Congress

January 20, 2015
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AIPPI 2014 Toronto

 

AIPPI is the abbreviation for Association Internationale Pour la Protection de la Propriete Intellectuelle.  It deals with all forms of IP – patents, trademarks and copyrights.  Founded in 1897, it is the oldest global association for the protection of intellectual property. AIPPI has 9000 members representing 100 countries and is headquartered in Zurich, Switzerland. Its purpose is to promote the protection of IP on both international and national basis, by working for the development, expansion and improvement of international and regional treaties and agreements and also of national laws relating to IP. It conducts studies of existing national laws and proposes measures to achieve harmonization of these laws on an international basis.
Working Questions on various IP issues are formulated and taken up annually by national IP groups such as our own Intellectual Property Association of the Philippines (IPAP). Reports by the various national groups are distilled in Working Committees. Resolutions are then formulated based on the discussions and debates in said Working Committees and then presented in plenary session akin to a parliamentary assembly and voted upon.  These Resolutions are then presented to international governmental organizations, the World Intellectual Property Organization (WIPO) in particular, and national intellectual property offices. 
AIPPI has contributed immensely to the development, improvement and harmonization of the international protection of IP. Members include lawyers, patent attorneys, trademark agents, judges, scientists and engineers; also corporations. IPAP membership is necessary to become an AIPPI member.
This year, the four Working Questions (WQ) presented for discussion and resolution by AIPPI are as follows:
 
Question 238 – Second medical use and other second indication claims.
Sometimes, a drug is successfully developed for a use other than what it was originally patented for.  The patenting of such second or further uses, the enforcement of second medical use claims and the level of protection accorded to it is the subject of this particular Working Question.  
 
Question 239 – The basic mark requirement under the Madrid System
Aside from being a complex issue, there are widely differing opinions on the basic mark requirement under the Madrid system which entails a basic registration in the country of origin following which other Madrid member countries can be designated as part of an international registration.  Some are for its abolition because of the central attack possibility, i.e., the possibility to nullify an international registration within 5 years by nullifying its basic registration. Its present usage and pros and cons of retaining it are the subject of this WQ.
 
Question 240 – Exhaustion issues in copyright law
Also called the “first sale doctrine” in some jurisdictions, exhaustion of copyright is a principle that is widely accepted.  After the first sale of a copyrighted work in tangible form (such as a book, CD or DVD) with the consent of the copyright owners, the distribution right derived from the copyright is deemed “exhausted”.  Countries have differing treatment however of international exhaustion, viz., first sale outside their territories.  There is also now some questions on the treatment of downloaded material from the internet.  This WQ tackles these issues.
 
Question 241 – IP licensing and insolvency
In view of the wide reach and coverage of many subjects of international licenses such as in the field of high tech, telecommunications, pharmaceuticals, music and entertainment, a plethora of questions have arisen as to whether a country’s laws or jurisprudence provide rights and/or obligations in case a licensor/licensee becomes insolvent, what national insolvency laws apply when the licensors/licensees are from different countries and/or the license pertains to IP assets of more than one country. These themes and variations thereof are covered by this WQ.
 
Prior User Rights
Another issue presented before the Toronto attendees though not in the form of a Working Question, is the matter of prior user rights.  This involves a situation where a person has been using a patentable item or method without obtaining a patent for it, ahead of another who applies and obtains a letters patent for it. The relative rights and obligations of such persons are discussed in this question.
 
Aside from these 4 standard WQs and additional question on prior user rights, there were many interesting workshops spread over the 4 days of the Congress. Among others, use of survey evidence in trademark cases, cross-border infringement of IP rights, free riding/parasitism and copyright aspects of embedding, framing and hyperlinking.
 
Perhaps the highlight of these workshops was a mock trial in the setting of an international IP arbitration.  This well-prepared and presented mock trial demonstrated the general nature of an international IP arbitration, focusing on the typical procedural, evidentiary, legal and tactical issues that arise in such proceedings.  The participants who are leading IP arbitrators and litigators in their own right from around the world, conducted the make-believe arbitration of a patent design infringement case.  Design rights principles and jurisprudence from multiple jurisdictions were submitted in this single arbitration process.  The session was very informative as well as entertaining as some humor was injected in the proceedings. 
 
Needless to state, the Congress also afforded the attendees the opportunity to get acquainted with new clients and colleagues and interact with old ones.
 
The next AIPPI World Intellectual Property Congress will be held in Rio de Janeiro, Brazil on 9-15 October 2015.