NEW MANAGEMENT TEAM APPOINTED
On Tuesday September 3, 2003
a key decision-making body of WIPO approved the appointment
of two new Deputy Directors General (DDG) and two new Assistant
Directors General (ADG). Amongst them is Australian, Mr.
Francis Gurry as DDG.
Mr. Gurry is currently ADG and Legal
Counsel of WIPO, responsible for WIPO's activities in the
area of patents (including patent policy questions and the
administration of the Patent Cooperation Treaty (PCT), and
the WIPO Arbitration and Mediation Center. Prior to joining
WIPO in 1985, he practiced as an attorney in Melbourne and
Sydney and taught law at the University of Melbourne.
Online Policy Forum
WIPO will host an online forum on Intellectual Property in the Information Society, from June 1-15, 2005. The forum, held here, will provide a unique opportunity for all to contribute to the emerging debate on the value of intellectual property in the information society.
The Forum is designed to encourage an open debate on a number of themes related to intellectual property and the information society in light of the goals of the World Summit on the Information Society (WSIS). The themes examine the relationship between the intellectual property system and the information society; including issues of freedom of information and creativity, development goals, cultural diversity and emerging opportunities and challenges for use of intellectual property in the digital environment.
Click here for information.
WIPO Activities
The World Intellectual Property Organisation
(WIPO) describes itself as 'dedicated to promoting the use
and protection of works of the human spirit'. WIPO is an agency
of the United Nations. It administers 23 treaties and currently
has 179 member states (see list).
WIPO's main activities may be grouped as follows.
By
area of law:
Patents
1. Further harmonisation of patent law
2. Reform of the Patent Cooperation Treaty
3. Special Union for the International Patent
Classification
4. The WIPO Patent Agenda
Trademarks,
Industrial Designs and Geographical Indications
1. Harmonisation of laws for the protection
of marks
2. Protection for trade marks against abusive
domain name registrations
3.
Geographical indications
Copyright
1. Broadcasters' rights
2. Protection of databases
3. WIPO Copyright Treaty and Performances and
Phonograms Treaty
By
issue:
Domain
Names
1. Second WIPO Internet Domain Name Process
IP
and Genetic Resources, Traditional Knowledge and Folklore
1. Access to genetic resources
2. Protecting traditional knowledge
3. Protecting folklore
Patents
1. Further harmonisation
of patent law
2. Patent Cooperation Treaty
3. Special Union for the International Patent
Classification
4. The WIPO Patent Agenda
1.
Further
harmonisation of patent law
Substantive Patent Law Treaty
Following the successful adoption of the Patent Law Treaty
(PLT) in June 2000, which harmonises many aspects of patent
procedure, the Standing Committee on the Law of Patents (SCP)
is currently considering a the adoption of a Substantive Patent
Law Treaty (SPLT).
Members of the Standing Committee have agreed
to focus on six basic legal principles governing patent protection:
prior art, novelty, inventive step, utility, sufficiency of
disclosure and claim interpretation. At the moment, these
concepts are treated differently in different jurisdictions
such that the same patent application in two different countries,
though subject to the same procedural requirements, could
have different results. Harmonising substantive patent law
would reduce the duplication of search and examination work
and lead to huge efficiency gains.
At its fourth session in November
2000, the Standing Committee on the Law
of Patents resolved to investigate the patent
law implications of disclosure of information on the Internet.
The Standing Committee asked the International Bureau to
conduct
a questionnaire on current national and
regional practices with respect to Internet-related issues.
The results of that questionnaire were
presented at the fifth
session of the Standing Committee in May
2001 (SCP/5/4).
The Bureau's main finding was that most countries do not
have specific rules dealing with disclosures on the Internet
and their effect on prior art. Rather, they apply general
prior art principles. This approach was also favoured with
regard to harmonisation of rules at the international level.
Most countries preferred to harmonise the general definition
of prior art first, and leave Internet disclosures for
consideration at a later date (possibly as part of the
Practice Guidelines).
As a result, the Standing Committee
has decided to first establish general principles concerning
prior art in the SPLT, and consider Internet disclosures
later (see fifth session report SCP/5/6).
The sixth session of the Standing
Committee on the Law of Patents, held in Geneva from November
6-9, 2001, discussed how national and regional patent
offices might provide immediate and long term relief for
patent owners and applicants affected by force majeure circumstances.
The United States raised this issue in light of the September
11 terrorist attacks (see SCP/6/7),
which have unfairly prejudiced the ability of some United
States patent owners to lodge applications in foreign countries.
Although the PLT provides some relief, that treaty will not
enter into force until it has been ratified by 10 countries.
National and regional offices have been invited to submit
information on how they deal with force majeure circumstances
to the International Bureau. The
Eighth Session of the SCP
took place in Geneva on 25-29 November 2002 and considered
revised provisions of the draft
SPLT. The draft covers a number of basic legal principles
relating to the grant and validity of patents in different
countries. It aims, in particular, at ensuring that applicants
in all contracting parties are subject to the same substantive
conditions for the grant of patents and the invalidation
of granted patents and at contributing to the reduction
of duplication
of search and examination work in patent offices.
The SCP made further progress towards common
understanding on several issues arising from differences that
exist among patent systems. While agreement in principle was
achieved on a number of draft provisions, discussions on provisions
such as those relating to the grace period and the scope of
patentable subject matter, were postponed. It was also decided
to include proposals relating to the protection of public
health, genetic resources, traditional knowledge and a number
of other public policy issues, in the draft Treaty, on the
understanding that substantive discussions of these provisions
would be postponed.
The Ninth Session of the SCP took place
in Geneva from 12-16 May, 2003. The SCP made progress in
reviewing provisions of the draft Substantive Patent Law
Treaty (SPLT). Drafts of the Treaty, its Regulations and
its Guidelines presented at this session can be obtained
here.
At the Session the SCP made further headway in establishing
a common understanding on several issues arising from differences
that exist among patent systems. Provisional agreement was
reached on a number of provisions on the understanding that
any delegation could re-open discussions on these matters
at any time in the future. For example, progress was made
in respect of the introduction of a grace period in the draft
SPLT.
On a number of other subjects, however, important differences
in patent systems remain and require further reflection.
One such issue relates to the extent to which the SPLT should
allow contracting parties to retain divergent laws and practices,
bearing in mind that the objective of the draft treaty is
to harmonize patent law and practice. Proposals relating
to the protection of public health, genetic resources, traditional
knowledge and a number of other public policy issues, which
the SCP agreed to include in the draft Treaty at its December
2002 meeting, were not discussed. For a more detailed summary
of the meeting click here.
The Tenth Session of the SCP was held in Geneva from 10 to 14 May, 2004. WIPO member states met to discuss future directions for international harmonization of substantive patent law and to review provisions of a draft SPLT. The SCP was attended by representatives from 71 member states, 7 intergovernmental organizations and 27 non-governmental organizations.
The draft SPLT covers a range of basic legal principles that govern the grant and validity of patents in different countries, such as the criteria for assessing whether an invention is novel and involves an inventive step, whether it is industrially applicable (or has utility) and whether it is sufficiently described in the patent application concerned, and how patent claims should be drafted and interpreted. It aims to simplify, streamline and achieve greater convergence among national and regional patent laws and practices.
The SCP considered whether discussions should at this stage be limited to a number of provisions dealing with the definition of prior art, grace period, novelty and inventive step (non-obviousness) or whether talks should cover the current draft SPLT as a whole and consider issues such as disclosure of the origin of genetic resources and traditional knowledge, public health and exceptions to patentability criteria.
A number of draft provisions, such as the one relating to the fact that information made available to the public in any form shall form part of the prior art, which is central to the patent examination process, were accepted on the understanding that any delegation could re-open discussion of them in the future. Discussions brought about greater mutual understanding and movement towards agreement on a number of issues, such as the introduction of a grace period, the prior art effect of international applications under the Patent Cooperation Treaty (PCT) that are filed before but published after the application under consideration, and the definition of novelty. On a number of other issues, however, there are still important differences of approach among delegations and further reflection is required.
Documents prepared for this session can be found here.
The eleventh session of the SCP was held in Geneva from 1-3 June, 2005. Past work of the SCP has focused mainly on the so-called draft SPLT, which covers a range of basic legal principles that govern the grant and validity of patents in different countries, such as the criteria for assessing whether an invention is novel and involves an inventive step, whether it is industrially applicable (or has utility) and whether it is sufficiently described in the patent application concerned, and how patent claims should be drafted and interpreted.
This meeting of the SCP was devoted solely to the consideration of options for the future work of the Committee. Talks focused on whether discussions should be limited to six issues pursued in parallel processes (prior art, grace period, novelty, inventive step, sufficiency of disclosure and genetic resources), or whether the draft SPLT should be discussed as a whole, with further issues, such as clauses on public interest flexibilities, transfer of technology and the disclosure, in patent applications, of the source of genetic resources.
While delegations recognized the importance of the work of the SCP and emphasized that the work on patent law harmonization should progress taking into account the interests of all parties, they did not reach agreement as to the modalities and scope of the future work of the Committee.
For more information, click here. For documents from the meeting, click here.
For the latest developments regarding WIPO's
harmonisation of patent law, please visit the IPRIA
International Developments WIPO webpage.
2.
PCT
The Patent Cooperation Treaty (PCT) makes
it possible to seek patent protection for an invention simultaneously
in each of the 123 Contracting States by filing one "international"
patent application under the PCT with one patent office in
one language. For more information on the PCT click here.
Record year for international patent filings
On 7 February 2007, statistics were released on the registration of patents under the WIPO Patent Cooperation Treaty (PCT) for 2006. WIPO reports that 2006 saw a record 145,300 PCT applications, representing a 6.4% growth over the previous year. The most significant growth came from countries in Northeast Asia for the third year running and represented over a quarter of all international applications under the PCT. In 2006, the list was topped by applications from the US, Japan, Germany, Republic of Korea, and France. The top 5 applicants remain unchanged. The Dutch multinational Philips Electronics N.V. again had the most applications published in 2006, followed by Matsushita ( Japan), Siemens (Germany), Nokia ( Finland), and Bosch ( Germany). Among the 20 top filing companies, seven were from the US, four from Japan and three from Germany. Applications received from developing countries in 2006 saw an increase of 27.6% compared with 2005, representing 8.2% of all international patent applications filed.
For more information, click here
WIPO Report shows internationalisation of patent trends
WIPO’s patent report, ‘Statistics on Worldwide Patent Activity (2006 Edition)’, released 16 October 2006 shows an internationalisation of patent trends. According to the report, the number of patent applications filed worldwide almost doubled between 1985 to 2004, with an average annual rate of increase of 4.75% since 1995. The number of Patent Cooperation Treaty (PCT) applications grew at an average annual rate of 16.8% between 1990 and 2005 and is now used in 47% of all international filings. Patent filing activity is highly concentrated, with patent offices in the US, Japan, Republic of Korea, China and Europe accounting for 75% of all patents filed. The ownership of patents granted over the past 20 years shows even greater concentration, with residents of Japan and the US owning 29% and 22% respectively of all patents in force in 2004. The report also notes a boom in patent filings in northeast Asia over the past 20 years, most notably with the emergence of China and the Republic of Korea as major industrial economies. In only 20 years, China has become the 4 th largest patent office in the world (by number of patent applications filed) and patent filings by Chinese residents grew more than five-fold between 1995 and 2004.
For more information and to access the report, click here
WIPO reports exceptional growth from North East Asia in record year for international patent filings
In a record year for international patent filings, 2005 saw over 134,000 applications of WIPO’s Patent Cooperation Treaty (PCT) filed, representing a 9.4% increase from 2004. In 2005, the five top users of the international patent system remained unchanged: United States of America, Japan, Germany, France and the United Kingdom. And, for the second year running, the most impressive rates of growth came from North East Asia – namely, Japan, the Republic of Korea and China, which between them accounted for 24.1% of all international applications. The Republic of Korea overtook the Netherlands as the 6 th biggest user of the PCT and China dislodged Canada, Italy and Australia to take 10 th position. According to WIPO, "The rate of growth from Japan, Republic of Korea and China continues to be exceptional, reflecting the rapidly expanding technological strength of those countries. Since 2000, the number of applications from Japan, Republic of Korea, and China, has risen by 162%, 200% and 212%, respectively.”
For further information, click here
Reform of PCT
In October 2000 the Patent Cooperation
Treaty Assembly set up the Committee on Reform of the Patent
Cooperation Treaty. In its first session in May 2001, the
Committee considered various proposals for how to reform the
PCT. In accordance with the Committee's recommendations, in
October 2001 the Assembly established a Working Group to come
up with more specific proposals for reform (including possible
amendments to the provisions of the PCT).
Major reforms of the PCT will enter into
force at the beginning of 2004. Key changes concern:
- Revised request and demand forms;
- Indications regarding parent application
or grant, or continuation or continuation-in-part;
- Signature requirements;
- Possibility of power of attorney waivers
by PCT Offices, PCT Authorities and/or the International
Bureau;
- Changes regarding payment fees;
- Enhanced international search and preliminary
examination system
- New time limit for filing the demand;
- Exclusion of elections of States no longer
possible.
For a more detailed summary of these changes,
see pages 1-7 of the November
2003 PCT Newsletter.
On February 12, 2004, the PCT-SAFE (Secure Applications Filed Electronically) system became available, allowing inventors seeking patent protection under the PCT to file their applications electronically with WIPO as the receiving office. The introduction of the new system will make the the PCT considerably more efficient and will reduce the cost of filing an application.
For more information about PCT-SAFE, click here.
At its 32nd Session in Geneva from September 22 - October 1, 2003 the Assembly made a number of amendments to the PCT Regulations following previously adopted major changes designed to streamline and rationalize the PCT system, and agreed on a future work program for PCT reform. Fee reductions for applicants from least developed countries were expanded and a new scale of fee reductions was adopted for international applications filed in electronic form. The National Board of Patents and Registration of Finland was appointed by the Assembly as an International Searching Authority and International Preliminary Examining Authority under the PCT, with likely effect from sometime in 2004. Finally, the Assembly took note of status reports on two major IT projects relating to the PCT: the IMPACT (Information Management for the Patent Cooperation Treaty) Project and the PCT-SAFE (Secure Applications Filed Electronically) Project. The report adopted by the Assembly at the session can be obtained here.
Most recently, on January 14, 2005, WIPO marked the filing of the one millionth patent application under the PCT. A record number of applications, just over 120,000 were filed in 2004 using the PCT. The USA continued to top the list of largest users, but the biggest rate of growth came from Japan, the Republic of Korea and China. For further information, click here.
For the latest developments regarding reform
of the PCT, please visit the IPRIA International
Developments WIPO webpage.
The Working Group on Reform of the Patent
Cooperation Treaty (PCT)
The Working Group held its First Session in November
2001, and its Second Session from 29 April to 3 May 2002.
The Third Session of the Working
Group was held in Geneva on 18-22 November 2002. Working
documents are available on the following agenda topics:
The Fourth
Session of the Working Group
was held in Geneva from May 19-23, 2003.
For a summary of the meeting click
here.
Working documents are available on the following topics covered
during the session:
A summary of the Fifth Session of
the Working Group on Reform of the PCT, held in Geneva from November
17 to 21, 2003, is now available. The meeting covered
a wide range of issues, including:
- simplified protest procedure in case
of non-unity of invention (see document PCT/R/WG/5/1,
annex ii);
- publication of translation furnished
by the applicant (see document PCT/R/WG/5/1,
annex iii);
- formalities checking under the pct (see
document PCT/R/WG/5/4);
- restoration o the right of priority
(see document PCT/R/WG/5/7);
- central electronic deposit system for
sequence listings (see document PCT/R/WG/5/3);
- “missing part” requirements
(see document PCT/R/WG/5/8);
- rectification of clear mistakes (see
document PCT/R/WG/5/2);
- options for future development of international
search and examination: making greater use of international
reports (see documents PCT/R/WG/5/9 and 9
Corr.);
- proposals by Switzerland regarding
the declaration of the source of genetic resources and
traditional knowledge in patent applications (see document PCT/R/WG/5/11
Rev;
- aspects of copyright and other rights
in non patent literature (document PCT/R/WG/5/5);
and
- divisional applications under
the pct (document PCT/R/EG/5/6).
For summaries of the latest sessions of
the PCT Working Group, please visit the IPRIA
International Developments WIPO webpage.
The Assembly
of the International PCT
A number of changes were approved by the
Assembly of the International PCT Union during its
Annual Session, held in Geneva from 23 September
to 1 October 2002 as part of the meetings of the Assemblies
of the Member States of WIPO (see documents).
Some of the important changes include:
- Fee reduction for international applications
filed in electronic form from
17 October 2002;
- An enhanced international search and
preliminary examination system, an overhaul of the designation
system, and availability of priority documents from digital
libraries, from 1 January 2004; and
- Appointment of a new International Searching
and Preliminary Examining Authority (expected to take place
in the summer of 2004).
The Assembly took note of the recommendation
of the PCT Committee for Technical Cooperation (PCT/CTC),
which met earlier in the week, that the Meeting of International
Authorities under the PCT (PCT/MIA) undertake a study on the
inclusion, in the non-patent literature part of the PCT minimum
documentation, of traditional knowledge-related periodicals
and databases, as well as a study on the use of databases
in certain technical fields.
The Assembly also agreed on a program for further work on
reform of the PCT system. It agreed that two sessions of the
Working Group on Reform of the PCT should be convened between
the September 2002 and September 2003 sessions of the PCT
Assembly to consider issues of three kinds. First, those proposals
for reform which had already been submitted to the Committee
or the Working Group, but had not yet been considered in detail,
should be reviewed. Second, consideration should be given
to options for revising the Treaty itself. Third, the Working
Group should commence discussions on the development of a
common quality framework for the international search and
international preliminary examination procedures under the
PCT.
For summaries of the latest sessions of
the PCT Assembly, please visit the IPRIA
International Developments WIPO webpage.
The Meeting of
International Authorities under the PCT
The Seventh Session of the Meeting
of International Authorities under the PCT was held in Geneva
from 10-14 February, 2003. The Meeting included the
following agenda items for discussion:
- Draft PCT international search and
preliminary examination guidelines: containing the first
draft of a set of combined guidelines for International
Search and Preliminary Examination under the PCT that was
submitted by the USPTO after consultation between that Office
and the EPO and JPO;
- PCT minimum documentation: looking
at the minimum documentation required by International Authorities
to satisfy PCT art 15(4) in light of recent developments
in traditional knowledge-related periodicals and databases
and the use of database in certain technical fields to supplement
paper based non-patent literature; and
- The format of written opinions and
reports under PCT Chapters I and II.
The
Eighth Session of the Meeting of International Authorities
under the PCT took place in Washington DC from 5-9 May,
2003. The agenda included discussion on:
- PCT minimum documentation;
- Proposed revised
PCT International Search and Preliminary Examination Guidelines
(see Doc PCT/MIA/8/2)
including comments by the USPTO, EPO, Rospatent and IP Australia
(PCT/MIA/8/2
Add.1 and PCT/MIA/8/2
Add.2);
- Format of written
opinions and reports (PCT/MIA/8/3,
PCT/MIA/8/4);
and
- A common framework
for international search and preliminary examination, including
an Initial Task Force Report prepared by the UK (PCT/MIA/8/5).
The Ninth
Session of the Meeting
of International Authorities under the PCT took place
in Geneva from July 21 to 25, 2003.
Key items on the Agenda were:
Proposed revised PCT International
Search and Preliminary Examination Guidelines
The Meeting agreed on the text of the revised
draft Guidelines. The Meeting also noted that it was desirable
to work towards increased consistency in practice and agreed
that areas of difference should be the subject of further
review in the future, including in particular:
i) recording of search history; and
ii) unity of invention practice in relation to biotechnological inventions
The Meeting concluded that periodicals
and databases mentioned in the lists prepared should be further
studied in the light of their accessibility, facilities for
electronic searching, and technical and geographical coverage.
The Meeting requested the International Bureau to prepare
revised ranked lists, taking into account the comments and
further suggestions made during the session and making a
comprehensive check of their conformity with the criteria
agreed upon by the Meeting at its seventh session (see document PCT/MIA/7/5,
paragraph 12). The International Bureau was invited to post
the updated lists on the MIA electronic forum for comment
by Authorities with a view to reaching agreement by way of
correspondence as to the inclusion of appropriate traditional
knowledge-related periodicals in the non-patent literature
part of the PCT minimum documentation, and on a list of recommended
traditional knowledge-related databases, by the end of 2003.
To view documents from this meeting, click here.
For summaries of the latest sessions of
the PCT International Authorities, please visit the IPRIA
International Developments WIPO webpage.
3.Special
Union for the International Patent Classification
The International Patent Classification
(IPC) is based on an international multilateral treaty administered
by WIPO (the Strasbourg Agreement Concerning the International
Patent Classification), which was concluded in 1971
and entered into force in 1975. The industrial property offices
of more than 90 States, four regional offices and the International
Bureau of WIPO under the Patent Cooperation Treaty (PCT) use
the IPC.
In order to keep the IPC up-to-date, it is continuously revised
and a new edition is published every five years. The current
(seventh) edition entered into force on 1 January 2000.
The current revision period runs from 1999 to 2004. Changes
to the IPC are prepared by the APC Revision Working Group
and are subsequently approved by the IPC Committee
of Experts set under the Strasbourg Agreement (all States
party to the Agreement are members of the Committee of Experts).
The current version of the IPC is available
here.
IPC Revision Working
Group
On 4-8 November 2002, the ad hoc IPC Reform Working
Group met and resolved a number of issues, including:
- General principles of classification
(elaboration of rules for multiple classification in the
IPC) (IPC/R
4/99 Rev.11);
- Elaboration of principles of the creation,
maintenance and functioning of the mast classification database
(IPC/R
8/99 Rev.13);
- Improvement of IPC training by providing
modern training techniques (eg computer-based and internet
training tools), involving, in particular, enhanced support
for developing countries in the use of the IPC (IPC/R
13/99);
- Determination of the most appropriate
contents of the core level of the reformed IPC (IPC/R
14/00 Rev.9);
- Study of the feasibility of introducing
a simplified set of rules in the IPC (in particular, a uniform
precedence rule) (IPC/R
15/00 Rev.8);
- Study of ways and means for the establishment
of a French version of the Advanced Level of the IPC (IPC/R
16/00 Rev.2 and IPC/R
16/00 Rev.3);
- Revision of the Guide to the IPC (IPC/R
17/01 Rev.6); and
- Elaboration of the IPC Systematic Maintenance
Procedure (IPC/R
19/02).
The Thirteenth Session of the IPC Revision Working Group was held in Geneva from June 13-17, 2005.
The Working Group continued its consideration of IPC revision proposals and discussed various projects aimed at the implementation of IPC reform results. Documents for this session can be viewed here.
The twelfth session for the IPC Revision Working Group was held in Geneva on November 29, 2004. The working group discussed various projects aimed at the implementation of IPC reform results. Documents for this session can be viewed here.
The IPC Revision Working Group's eleventh session was held in Geneva, from June 14-24, 2004. Items on the Agenda included:
- The updating of IPC training examples, a discussion that followed on from the Working Group's tenth session;
- The elaboration of classification definitions, in which the IPC scheme could be improved using material collected in definition projects; and
- Various IPC revision projects, relating mainly to the titles and classification of the projects.
The Working Group also discussed the preparation of the eighth edition of the IPC. This would involve updating the existing catchwords index and associated IPC symbols.
The final report and other documents for this session can be accessed here.
The IPC Revision Working Group's
tenth session was held in Geneva, from November
24-December 5, 2003. This session followed on
directly from the previous session, as the Working Group
finetuned a number of issues arising from the Revision
Program. A summary of this meeting is available here.
The previous meeting of the Working
Group was held in Geneva from June 4 to 13, 2003,
at which it was agreed to incorporate additional classifications
schemes for traditional knowledge based inventions and business
methods patents into an international system designed
to facilitate search and retrieval of patent information
in all fields of technology.
The Working Group responsible for the revision
of the system agreed to create and incorporate into the IPC
a new main category of information on traditional medicine
based on the use of plants, comprising more than 200 subdivisions
in its English version. Such information represents the most
important part of documented traditional knowledge. This
new enhancement provides classification-based access to classification-based
traditional knowledge as prior art and thereby will facilitate
information searches relating to traditional knowledge-based
innovations.
The inclusion of this new category, in
the English version of the IPC, is the result of two years
of investigation by a Task Force comprising representatives
of China, India, Japan, United States of America and the
European Patent Office Organization (EPO). The French version
of the new scheme was finalized and submitted for approval
by the IPC Committee of Experts at its meeting in October
2003. The Working Group also agreed to establish
a new provisional subclass of information relating to business
methods patents, entitled known as "Data processing
equipment or methods specially adapted for administrative,
commercial, financial, managerial, supervisory or forecasting
purposes".
The Working Group agreed that the creation
of this subclass was necessary in view of the potential rapid
growth in the number of patent documents relating to business
methods. On the basis of a proposal submitted by the EPO,
the Working Group approved a provisional scheme of the new
subclass which is expected to be completed at the next meeting
of the Working Group.
For summaries of the latest sessions of
the IPC Working Group, please visit the IPRIA
International Developments WIPO webpage.
IPC Committee of
Experts
The Thirty-Fifth Session of the Committee of Experts was held from 25-29 October, 2004, and continued on from the previous meeting, including the consideration of amendments to the IPC, as proposed by the IPC Revision Working Group, and the implementation of the IPC reform.
A full report of this session is available here.
The Thirty-Fourth Session of the Committee of Experts was held from February 23 to 27, 2004 in Geneva. Items on the agenda included:
- Report of the tenth meeting of the Trilateral Working Group on Classification
- Consideration of amendments to the IPC emanating from revision projects
- Consideration of changes to the IPC concerned with the preparation of the new edition
- Treatment of hybrid systems in the IPC
- Guidelines for determining where to classify patent documents
- Implementation of the results of IPC reform
- IPC reform implementation plan
- Development of classification tools for traditional knowledge
- Publication of the eighth edition of the IPC and related materials
- CLAIMS Project Status report
A full report of this session is available here.
The Report from
the 33rd
Session of the Committee of Experts,
held in Geneva from 2-10 October, 2003 is
now available. It contains details of discussions, conclusions
and decisions of the Session, which included the following
topics:
- consideration of amendments to the IPC
- treatment of the hybrid systems in the
IPC
- contents of the core level of the reformed
IPC
- establishment of the special subcommittee
for the revision of the advanced level of the reformed
IPC
- revision of the guide to the IPC
- guidelines for determining where to
classify patent documents
- concept of operations for the reformed
IPC
- use of the reformed IPC
- implementation of the results of IPC
reform
- IPC reform implementation plan
- CLAIMS project
To access a complete copy of the
Report, click here.
To access documents discussed at the Session, click here.
The IPC Committee of Experts met for its
32nd Session on 24-28 February, 2003. The
Committee considered:
- Amendments to the IPC (IPC/CE/32/2);
- Working groups and working methods of
the Committee of Experts (IPC/CE/32/3);
- Recommendations formulated by the ad
hoc IPC Reform Working Group (IPC/CE/32/4).
- Recommendations formulated by the IPC
Revision Working Group (IPC/CE/32/5).
- IPC reform implementation plan (IPC/CE/32/6).
- Concept of operations for the reformed
IPC (IPC/CE/32/7).
- Development of classification tools for
traditional knowledge (IPC/CE/32/8).
- Publication of the eighth edition of
the IPC (IPC-2005) and related material (IPC/CE/32/9)
and
- Elaboration of a concordance table between
the IPC and the International Standard Industrial Classification
of All Economic Activities (ISIC) (IPC/CE/32/10).
Annexes to these documents are available
here.
For summaries of the latest sessions of
the IPC Working Group, please visit the IPRIA
International Developments WIPO webpage.
4. The
WIPO Patent Agenda
The WIPO Patent Agenda
is an initiative to promote discussion about the medium to
long- term future of the international patent system. Given
that most WIPO activities are limited to particular issues
of concern, the Patent Agenda is intended to open up a wideranging
debate about what priorities WIPO should pursue over the next
few years.
At the 37th series of meetings of
the WIPO Assemblies in Geneva from
23 September to 1 October 2002, the Assemblies considered a memorandum (Doc
A/36/14) of the Director General which sought to identify salient issues
relating to the future development of the international patent system (see Doc
A/37/6). The Director General's initiative expressed the belief that the
international patent system should become more user-friendly and accessible,
and provide an appropriate balance between the rights of inventors and the general
public, while at the same time taking into account the implications for the developing
world. This initiative was intended to increase the effectiveness of existing
activities being undertaken in relation to the Patent Law Treaty, the draft Substantive
Patent Law Treaty, and the Patent Cooperation Treaty.
The Assemblies discussed the memorandum, with the WIPO General Assembly, the
Paris Union Assembly and the PCT Assembly approving the proposals for further
work. The Assemblies mandated the Secretariat to prepare a study on the possible
implications of the proposals on developing countries.
Central
recording of changes in patents and patent applications
The Standing Committee on the Law of Patents
has indicated that it will in the future consider the feasibility
and desirability of a central system for recording changes
in patents and patent applications in member states. The
aim would be to give central recording the same effect as
recording in each individual member state, subject to refusal
through notification.
Biotechnological
Inventions
The Standing Committee on the Law of Patents
will investigate practical issues associated with the patenting
of biotechnological inventions. However, according to WIPO's
Revised Draft Program and Budget for 2002-2003 (WO/PBC/4/2),
this issue is not yet ready for the Standing Committee's
consideration and will first be investigated by consultants.
The International Bureau will continue
to examine the feasibility of establishing a data bank for
the deposit of DNA sequence listings referred to in patent
applications. The Bureau is considering whether this system
should be, centralised, or decentralised using a similar
approach to the Budapest Treaty on the International Recognition
of the Deposit of Microorganisms for the Purposes of Patent
Procedure.
Other provisions of the Budapest
Treaty are also being scrutinised by the International
Bureau, including those relating to the storage, handling
and transportation of biological material.
Industrial
property aspects of space law
According to WIPO's Revised Draft Program
and Budget for 2002-2003 (WO/PBC/4/2),
the Standing Committee will investigate the desirability
and feasibility of providing rules relating to the industrial
property aspects of space law.
Commercialisation
of industrial property developed by universities
WIPO's Revised Draft Program and Budget
for 2002-2003 (WO/PBC/4/2)
also includes a study (in conjunction with other sectors
of WIPO) of the commercialisation of industrial property
rights developed or held by universities and other research
institutions.
For summaries of the latest regarding the
WIPO Patent Agenda, please visit the IPRIA
International Developments WIPO webpage.
Trade
Marks, Industrial Designs and Geographical Indications
The Standing Committee on the Law of Trademarks,
Industrial Designs and Geographical Indications (SCT) provides
a
forum to discuss issues, facilitate coordination and provide
guidance concerning the progressive international development
of the law of trademarks, industrial designs and geographical
indications, including the harmonization of national laws
and procedures. It was established by a decision of the Assemblies
of the Member States of WIPO and the Unions administered
by
WIPO, taken at their thirty-second series of meetings, held
in Geneva from March 25 to 27, 1998. The SCT submits its
recommendations
and policies to the WIPO General Assembly for approval.
Developments from the sessions of the SCT
feature under the below headings:
1. Harmonisation of
laws for the protection of marks
2. Protection for trade marks against abusive
domain name registrations
3.
Geographical indications
For the latest developments concerning Trade
Marks, Industrial Designs and Geographical Indications, please
visit the IPRIA International
Developments WIPO webpage.
1.
Harmonisation
of laws for the protection of marks
Trademark Law Treaty
The Trademark
Law Treaty (TLT) was concluded in 1994 with a view to
streamlining and simplifying, on a worldwide basis, formal
trademark procedures relating to national and regional trademark
applications and the maintenance of trademarks. It currently
has 31
member countries.
The fourteenth session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) took place from April 18-22, 2005.
Efforts to revise a key international treaty in the field of trademarks made significant headway, as the Committee agreed on a text to be proposed as a basis for negotiations at the Diplomatic Conference for the Adoption of the Revised Trademark Law Treaty (TLT), to be convened in March 2006.
In order to keep pace with developments in telecommunications and to create an institutional framework allowing the adaptation of certain administrative details regulated under the treaty, the revision of the TLT envisages the inclusion into the treaty of provisions on electronic filing of trademark applications and associated communications, the formalities concerning the representation of all types of marks, including visible signs (and certain forms of visible signs, such as hologram marks, colour marks, position marks or motion marks) as well as non-visible signs, provisions concerning the recording of trademark licenses, relief measures when certain time limits have been missed, and the establishment of an assembly of the contracting parties.
The SCT agreed on a "basic proposal" to be presented at the diplomatic conference, which will be held from March 3 to 31, 2006. The absence from the basic proposal of text between square brackets or alternative texts for certain provisions, indicates consensus among member states.
A preparatory meeting for the Diplomatic Conference for the Adoption of a Revised TLT was also held in Geneva, from April 25-26, 2005. This meeting adopted the provisional rules of procedure for the diplomatic conference.
For more information on these sessions, click here.
The thirteenth session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) took place in Geneva from October 25-29, 2004. Negotiations for the revision of a key international treaty in the field of trademarks gathered pace, as delegates attending the session made significant progress in fine-tuning legal texts to revise the existing Trademark Law Treaty (TLT), bringing it in line with the technological advances of the past decade. This follows on the heels of a decision by WIPO member states at their annual meetings in October 2004 to convene a Diplomatic Conference on the revision of the TLT in March 2006.
In order to keep pace with developments in telecommunication and to create an institutional framework allowing the adaptation of certain administrative details regulated under the treaty, the revision of the TLT envisages the inclusion into the treaty of provisions on electronic filing of trademark applications and associated communications, provisions concerning the recording of trademark licenses, relief measures when certain time limits have been missed, and the establishment of an assembly of the contracting parties.
The SCT reached consensus on a range of articles and rules including the marks to which the treaty applies, questions relating to communications, measures in case of failure to comply with time limits, duration and renewal of registration, questions relating requests for recordal, amendment or cancellation of a license.
The SCT also reviewed and discussed a provisional summary of responses from member states to a questionnaire on national trademark law and practice. This survey, which contains a large number of questions on national trademark law and practice was circulated to SCT members in August 2003. Countries and intergovernmental organizations that have responded to the questionnaire have until the beginning of 2005 to review and submit comments on their inputs. After this time the final version of the document, which will take into account all comments received, will be submitted to the SCT. This document could serve as a basis for future work of the SCT.
For more information, click here.
At the Twelfth Session of
the SCT, from April 26-30, 2004 in Geneva,
members endorsed the introduction to the TLT of a specific
provision concerning communications with intellectual property
offices under which contracting parties are free to choose
their preferred means of communication, including electronic
communication. This will transform the originally paper based
approach of the TLT without imposing a specific mode of communication.
The draft revised treaty will maintain
a provision which does not allow contracting parties to require
the attestation, notarization, authentication, legalization
or other certification of any signature in a communication,
with very few exceptions, such as the surrender of registrations.
The provisions on signature accommodate recent developments
such as the increasing acceptance by offices of electronic
signatures or other types of identification.
The SCT also made progress on a provision
relating to measures required in case of failure to comply
with time limits. There was a general understanding among
delegations that future contracting parties to the revised
TLT should provide at least one form of reinstatement of
rights. These would be made available in situations in which
rights were lost due to non-compliance with a time limit,
in spite of due care on the part of the person who missed
the time limit.
Moreover, the Committee discussed, for
the first time, provisions aiming at the harmonization and
simplification of requests for the recording of trademark
licenses. In this respect, a number of delegations and representatives
of observer organizations supported the inclusion of provisions
on the recording of trademark licenses in the treaty, while
other delegations expressed some concern on the issue.
Finally, the SCT had a first exchange of
views on a new set of final and administrative clauses for
the draft TLT. These clauses provide, among other things,
for the creation of an assembly constituted by contracting
parties. This assembly would have the power to change the
regulations under the treaty, thereby allowing the administrative
framework set up by the treaty to regularly adapt to changing
circumstances and new developments in trademark registration
procedures.
To view draft documents from this meeting,
click here.
At the Eleventh Session of
the SCT from November 10 to 14, 2003 members
focused on revision of the TLT.
They approved a proposal on communications which envisages
that "any Contracting Party may choose the means of
transmittal of communications. This means that the trademark
office of any Contracting Party may choose whether to accept
filings on paper only, by electronic means only, or both
on paper and by electronic means. They also agreed to reduce
and simplify requirements regarding the language of communications.
Member States approved, in large part,
a provision on measures in case of failure to comply with
time limits, which, among other things, requires Contracting
Parties to provide at least one of three possible types of
relief: time extensions, continued processing or reinstatement
of rights. Parties could not agree, however, on whether or
not to include the provisions contained in the Joint Recommendation
on Trademark Licences adopted by the WIPO and Paris Assemblies
in September 2000 regarding Trademark Licences. They decided
to continue discussion on this matter at the SCT's next session.
The Ninth Session of the Standing
Committee took place in Geneva on 11-15 November 2002.
The discussions on trade marks focused on the need to revise
the Trademark Law Treaty ('TLT'). In view of technological
developments, new areas for consideration in revising the
TLT include the possibility to introduce electronic
filing of trade mark applications and associated communications,
incorporation of the Joint Recommendation on Trade Mark Licenses
and relief and reinstatement of rights in case of missing
certain time limits.
Members also agreed to survey existing national
practices with a view to promoting the convergence of international
trade mark law practices and to fostering a common approach
to the examination of trade mark applications. It was proposed
that a questionnaire be circulated to member states to collect
national information and to identify issues for the further
development of international trade mark law and the convergence
of national trade mark practices.
The agenda featured a number of other provisions
for further harmonization including:
At the Tenth Session of the Standing
Committee, which took place in Geneva from April 28 to
May 2, 2003, the Secretariat distributed the Draft
Revised Trademark Law Treaty. The document contains a
revised version of draft Articles 8, 13bis and 13ter
and related rules of the draft revised Trademark Law Treaty
(TLT) which is presented separately, pursuant to a decision
of the SCT at its ninth session. The document also contains
explanatory notes related to these articles. The SCT was invited
to consider and comment on the proposals as contained in the
Annex to the document, and decided that the International
Bureau should revise Articles 8, 13bis, 13ter
and related rules according to comments and would submit for
the next meeting a new document containing the full text of
the TLT, including provisions of trademark licenses and the
establishment of an Assembly.
The SCT also considered the current proposal on electronic
communications which envisages that "any Contracting
Party may choose the means of transmittal of communications".
This means that the Trademark Office of any Contracting Party
may choose whether to accept filings on paper only, or both
on paper and by electronic means. Discussions emphasised the
need to provide developing countries, least developed countries
and countries in transition with technical and financial assistance
to facilitate the implementation of electronic communication
in those countries.
The SCT has decided that priority should
be given to the revision of the TLT at the eleventh session
and agreed to circulate a questionnaire to member States to
gather information on national practices. The date of the
next session will be announced by the Secretariat in due course.
For summaries of the latest developments
regarding the TLT, please visit the IPRIA
International Developments WIPO webpage.
2.
Protection
for Trade Marks against Abusive Domain Name Registrations
Updates on this topic can be found under
the issue heading 'Domain Names' (below).
3.
Geographical Indications
At
its Ninth Session in Geneva from 11-15 November
2002, the Standing Committee considered the definition
of geographical indications. The Committee considered
the application of the TRIPS definition at the national and
regional level by different systems of protection, including
practical differences between various systems; and the practical
differences between the systems of protection of geographical
indications such as appellations of origin, and the system
of protection under collective and certification marks.
The Standing Committee also considered geographical
indications and the territoriality
principle. The Committee noted that geographical indications
being territorial in nature, the "territoriality principle"
generally associated with the protection of intellectual property
rights is quite naturally referred to in the field of geographical
indications as well. However, it also stated that the situation
varies in that both the country of origin and the country
of protection are concerned with the determination of geographical
indications for purposes of protection. The report considered
the obligations of parties to various conventions, including
the Paris, Madrid, Lisbon and TRIPS Agreements. It noted in
particular that the obligation for WTO Members to "provide
the legal means for interested parties" to prevent (a)
the use of misleading indications of geographical origin and
(b) the use of geographical indications which constitutes
acts of unfair competition, meant that satisfaction of this
enforcement obligation can involve reference to the existence
of the geographical indications under the laws of the country
of origin. The Committee also considered the application of
exceptions to the protection of geographical indications,
namely generic designations and 'grandfathering'.
The SCT decided to request the International Bureau to
prepare a study setting out the issues generally considered
with regard to the protection of GIs, taking into account
the elements contained in the definition of the TRIPS Agreement,
art 22.1. The purpose of the study would be to provide members
with a general overview of issues considered by different
systems of protection and would constitute a basis of discussion
as well as promote a better understanding of the definition
in a more concrete way, especially of assistance for those
members in the process of establishing their own systems.
For summaries of the latest sessions of
the SCT regarding Geographical Indications, please visit the
IPRIA International Developments WIPO
webpage.
4. Nice Union (International Classification
of Goods and Services for the purposes of the Registration
of Marks)
Preparatory Working Group
The Preparatory Working Group held its Twenty-Third
Session in Geneva from March 31 - April 4,
2003. The Working Group continued to consider proposals
for changes to the eighth edition of the Nice Classification
(see documents CLIM/GTP/23/2 to 5 available here).
The Working Group approved a number of changes to the Nice
Classification, but rejected others including the proposal
presented by the US relating to the classification of goods "made
of precious metal" and "not made of precious
metal". All proposals and the responses can be found
isssn the annex to the report.
For summaries of the latest sessions of
the SCT regarding the Nice Union, please visit the
IPRIA International Developments WIPO
webpage.
5. The Madrid System of International Registration
of Marks
The Madrid system offers users a simple
and cost-effective way to apply for protection of their trade
marks in any or all of the 74
states which are party to the agreement by making a single
international deposit in one language, with one set of fees
in one currency. The system is governed by two treaties:
the Madrid Agreement Concerning the International Registration
of Marks, which dates from 1891, and the Protocol Relating
to the Madrid Agreement, which was adopted in 1989, entered
into force on December 1, 1995 and introduced some new features
into the system to address difficulties that had impeded
adherence by certain countries. Any State which is a party
to the Paris Convention for the Protection of Industrial
Property may become a party to the Agreement or the Protocol
or both.
For more information and analysis regarding usage of the Madrid System, click here.
Record year for international trade mark filings
On 15 March 2007, WIPO announced that a record 36,471 international trademark applications were received in 2006 under the Madrid system for the international regsssistration of trademarks. This represents an 8.6% increase on figures for 2005. Applicants from Germany, for the 14th consecutive year, led the list of top filers, followed by users in France, and the United States of America. China was the most designated country in international trademark applications reflecting increasing levels of trading activity by foreign companies in China. In addition, a number of other countries witnessed significant growth in international trademark filings in 2006, in particular the Republic of Korea with 190 applications (+28.4%), Singapore with 161 applications (+16.7%) and Morocco with 119 applications (+80.3%).
For more information, click here
WIPO reports record number of international trademark applications in 2005
A record 33,565 international trademark applications were received in 2005 by WIPO under the Madrid system for the international registration of trademarks. This represents a 13.9% increase from 2004 figures. Germany, for the 13 th consecutive year, led the list of top filers. Applications from developing countries increased by 30.6% from 2004, with China topping the list of users. China also unseated Switzerland as the most designated country in international trademark applications. The top eight countries with the most international trademark applications received by WIPO in 2005 were: Germany (5,802 or 17.3% of the total), followed France (10.4%), the United States of America (8.5%), Benelux (7.2%), Italy (7.0%), Switzerland (6.7%), the European Community (5.5%) and China (4.0%). In 2005. Australia had an increase of 24.7% in international trademark applications under the Madrid system.
For further information, click here
Record year for international trademark filings in 2004
Use of the international trademark registration system reached a record level in 2004, with the receipt of 29,459 international trademark applications representing a 23.5% increase on figures for 2003. For the twelfth consecutive year, Germany topped the list of biggest users, followed by France, Italy, Benelux and Switzerland. Within only 12 months of signing up to the Madrid Protocol, the US filed enough international applications to rank 6 in the world. Statistics for 2004 also show a marked increase in the number of international trademark applications.
For a recent analysis of facts and figures
regarding usage of the system, click here.
At the Thirty-Fifth
Session of the Assembly
of the Madrid Union in Geneva from September
22 to October 1, 2003 Member States decided
to adopt Spanish as the third working language of the
Madrid Protocol. Inclusion of Spanish would be a clear
and strong incentive for Spanish-speaking countries
to join the Madrid Protocol and promises to facilitate
their
accession process and will pave the way for the Madrid
system to become a truly global registration mechanism.
Member states also agreed on a series of measures designed
to ensure that the Madrid Protocol, one of the two
international treaties governing international trademark
protection,
and the European Community trademark system are fully
compatible with each other. In view of these changes,
the European Community (EC) delegate said that it was
likely that the EC would submit its instrument of accession
to the Madrid Protocol within one year. The Assembly's
report for the Thirty-Fifth Session can be obtained here.
On November 2, 2003 the
Madrid Protocol entered into force for the United States
of America, which acceded the Protocol on 2 August, 2003.
As the USA maintains trade links with so many other countries
throughout the world, it is expected that this event will
initiate a new period of growth for the Madrid System Concerning
the International Registration of Marks (Madrid system).
As of April 1, 2004, Spanish
became a working language of the international trademark
system. Users of the international trademark system can now
file applications in Spanish, in addition to English and
French, thereby removing language as a barrier for more hispanophone
countries to join the Madrid Protocol. For more information,
click here.
On June 29, 2004 in Geneva,
the Director General of WIPO, Dr. Kamil Idris, welcomed the
accession of the European Community (EC) to the Madrid Protocol.
Under the Madrid Protocol, certain intergovernmental organizations
with a regional trademark registration office are able to
accede to the treaty. This is the first time that the EC
has signed up to a WIPO-administered treaty and is also the
first accession by an intergovernmental organization, as
a bloc, to a WIPO treaty. The EC is the 77th member of the
Madrid system.
From October 1, 2004,
the date on which EC membership to the Madrid Protocol takes
effect, trademark owners from member countries of the Madrid
Protocol have been able to designate the EC in their application
for international trademark registration. If protection is
not refused by the EC’s trademark office, the Office
for Harmonization in the Internal Market (Trademarks and
Designs) (OHIM), protection of the trademark will be effective
in all 25 EC member states as if it had been applied for
or registered directly with OHIM. Trademark owners will also
be able to use a trademark application filed or registered
at OHIM as the basis for an international application under
the Madrid Protocol.
The accession of the EC to the Madrid Protocol is the third major development in the international trademark system in the past year. The first was the accession of the United States of America to the Madrid Protocol in November 2003 and the second relates to the addition, in April 2004, of Spanish as the third working language of the Madrid system.
For more information regarding this development, click here.
For more recent developments regarding
the Madrid System, please visit the IPRIA International Developments
WIPO webpage.
Copyright
1. Broadcasters'
Rights
The Standing Committee on Copyright and
Related Rights (SCCR) is working to update international norms
governing the rights of broadcasting organisations. This is
seen as particularly important given the growth in communications
made via the Internet, cable and satellite television.
WIPO to continue discussions on updating protection of broadcasting organisations
Member states of WIPO have decided that further discussions are required on various aspects of a treaty on the protection of broadcasting organisations. The decision came at the conclusion of the second special session of the Standing Committee on Copyright and Related Rights (SCCR) from 18 to 22 June 2007 which had been mandated by the WIPO General Assembly. At the close of the June meeting, the SCCR recommended that the WIPO General Assembly take note of the current status of the work; and acknowledged that progress was made towards better understanding of the positions of the various stakeholders. It was proposed that the subject of the broadcasters treaty remain on the agenda of the SCCR, and that a diplomatic conference be convened only after agreement on objectives, specific scope and object of protection has been achieved.
For more information, click here
At the Committee's Ninth Session
in Geneva on 23-27 June 2003, 77
member states and other stakeholders made progress in identifying
the scope of multilateral treaty, which would, if adopted,
update international regulations in the area of broadcasters’
rights, bringing them in line with the realities of the information
age. Key issue on which the Committee made progress were:
- identifying beneficiaries -
Many delegations thought that traditional broadcasting and
cable-originated programs would benefit from protection
in a new treaty, but that webcasting deserved further analysis.
The possibility of protecting real-time streaming where
broadcasting occurs simultaneously over the air and on the
Internet by broadcasting organizations was also discussed.
- rights to be granted -
economic rights proposed center on those already outlined
in the Rome Convention, and the additional protection granted
under the WIPO Internet treaties (WIPO Copyright Treaty
(WCT) and the WIPO Phonograms and Performances Treaty (WPPT)),
as well as some new rights. A majority of delegations considered
that a number of issues required further discussion, namely
the right of fixation, the right of reproduction of fixations,
the right of distribution of fixations, the right of re-broadcasting,
the right of simultaneous retransmission, the right of making
available of fixed broadcasts, the right of deferred broadcasting
the right of communication to the public. It was agreed
that these issues would be re-visited at the next meeting
of the SCCR in November 2003.
Proposals and communications on the Protection
of the Rights of Broadcasting Organisations were
made by Kenya ( | 
