He began by receiving approval of a vote to change the title of special committees to standing committees. He then underlined that AIPPI likes having the ability to add a “fifth strand” to the four annual Working Questions when necessary. This gives it flexibility to address issues that crop up after Working Questions are set. “We believe going forward we would like to do it the way we have done it with prior user rights,” he said.
AIPPI studied the grace period for patents at the Executive Committee meeting in 2013 in Helsinki. During the deliberations in the working committee meeting and the plenary session in Helsinki, it became clear that the partially related topic of prior user rights should equally be studied. Accordingly, the resolution adopted in Helsinki noted that AIPPI could valuably extend its work on the issue of prior user rights.
As a result, the Bureau decided to study prior user rights again with a view to adopting a Resolution on prior user rights in Toronto (see box).
“That said, we still see an important role for standing committees going forward – note I said standing, not special, because that is how they will be known going forward,” said Calame. “The standing committees are also ambassadors, for example they comment on behalf of AIPPI in public consultations.” Recent examples of this are commenting on EU copyright issues, FRAND in Europe and the role of IP in the development of climate change technology.
AIPPI has also been active in filing amicus briefs. It filed one in Alice v CLS Bank in collaboration with the US group. It has also been granted leave to file an amicus brief in the Sanofi-Aventis v Apotex patent case before the Supreme Court of Canada. In January, the Supreme Court granted Apotex leave to appeal a decision of the Federal Court of Appeal that overturned a Federal Court’s decision invalidating the patent that claims clopidogrel bisulphate, a drug that inhibits platelet aggregation sold under the brand name Plavix. This is expected to consider important issues with respect to the law of utility in Canada, including the degree to which utility should be disclosed or discussed in a patent.
“AIPPI is not taking a stance in the matter, it is merely looking to provide an overview of law around the world,” noted Calame. He added that Canadian judges have been very open in looking at law in “like-minded countries”. An example of this was provided to attendees on Sunday at the Opening Ceremony when Justice Marshall Rothstein of the Supreme Court of Canada said he “never had any hesitation about seeking guidance about the experience of courts in foreign countries, particularly Commonwealth nations and the United States.”
Calame also reported that the establishment of the Amicus Brief Committee “is just about complete and it will be taking up its work shortly”. Setting up this committee had been discussed for some years, and was viewed as preferable to an ad-hoc group formed on a per-issue basis. This will give advantages including improved process control, improved uniformity, reduction of the risk of inconsistent positions, a clearly defined mandate and clearly defined leadership.
What’s in a name?
A proposal to change the name of this Congress to make it snappier is up for a vote. The US has proposed renaming the annual meeting World Congress instead of World Intellectual Property Congress. It was revealed at the ExCo yesterday this will be up for vote on Wednesday afternoon.
Some changes to the Bureau have been proposed as well, including adding a second vice-president, a second secretary general and reducing assistant secretary generals to two, down from three.
Prior user rights
On Sunday Congress delegates agreed a draft resolution on prior user rights. It states: “A prior user right should be recognized when a party has used an embodiment falling within the scope of a patent before the filing date or, if earlier, the applicable priority date of the patent.” The draft resolution, which will be voted on at the General Assembly on Wednesday, goes on to set out when a prior user right should lapse; what its territorial limit should be; and what limits should apply. It adds that a prior user right should be transferable, but should not be licensable, and that it should be available “in any field of technology and for any type of entity”.
Ralph Nack, Chair of the Special Committee on Patents, described the position on prior use as “heavily unharmonised at present” and said the resolution adopts a simple, robust solution: “The position adopted here is compatible with most legal regimes, including the US regime.”
He said that while a treaty on the issue is unlikely to be initiated soon, harmonization could come about through national reforms: “Things can change quickly.”
