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Meet this year’s AIPPI Congress Chair

Philip Mendes da Costa of Bereskin & Parr is Chair of the Organising Committee of this year’s Congress. He talks planning, patents and portfolio management with James Nurton

Philip Mendes da Costa well remembers when he started work on this year’s IP Congress. It was October 2009 and the AIPPI Forum and ExCo was being held in Buenos Aires. “It’s not the easiest place to get to,” he recalls, and he was undecided about whether to attend. Then he received a call from Zurich asking when he was available for a meeting to discuss the plans for the 2014 Congress. “That’s when I knew I was going,” he says.

The five years since have been a rollercoaster, he explains. Three years ago, the Organising Committee Chair and his team launched their “Grand Plan” and reserved the main venues, including the conference centre and the locations for the Welcoming Reception, Cultural Evening and Closing Dinner. There followed a “couple of years of relative quiet” before a period of great activity as all the details of the meeting had to be finalised, right down to “which ice wine we’re serving at dinner”.

The venues were all carefully chosen. Mendes da Costa formally welcomed attendees at the Opening Ceremony at Roy Thomson Hall last night, and admits that he was nervous about standing on the famous concert stage. Tonight’s Cultural Evening presented “an interesting challenge” given the attractions of recent Congress venues such as Paris and Seoul: “We don’t have any 1,400-year old temples in Canada. So we’re not going to try and out-compete the rest of the world on tradition and history. We are modern so we will have a modern theme.” The reception will be held in three connected buildings around a courtyard; these will be transformed into different regions of the country for the evening, with themed entertainment and catering.

Toronto innovations

While this year’s Congress includes all the normal activities, such as the working committees and plenary sessions on the working questions and the workshops on topical issues, Da Costa highlights a few novelties. A special session has been added on the Aereo copyright case today (see page 1) and yesterday there was an additional plenary session to develop work on prior user rights that arose from Q233 on the grace period for patents, which was studied in Helsinki last year.

Another innovation this year is the Working Lunches, which take place today and tomorrow and feature keynote addresses from Christian Archambeau (OHIM) and Benoît Battistelli (EPO) followed by panels discussing international registration of designs (today) and patent law harmonisation (tomorrow). Places for these sessions “filled up very quickly” says Mendes da Costa.

Another popular event is the post-conference trip to Niagara, for which about 150 people have signed up. This takes place on Thursday. But if you can’t make that, Mendes da Costa has plenty of tips for other things to do in and around the city. He recommends the McMichael gallery – which was built to host the work of the Group of Seven – as well as the city’s various shopping options and the distillery district. Then of course there is the CN Tower: “If you are interested in an adrenalin rush, we have the glass-floor walkway you can go on. For these more inclined to something less tame, there is a little outdoor walkway where you walk on the roof suspended on a cable. I don’t necessarily recommend it.”

Old Home Week

Mendes da Costa has been attending the AIPPI Congress regularly for many years: he says the first working question he took part in was Q109 on the PCT which was debated at the Copenhagen ExCo in 1994, and he has been involved in the Working Questions ever since, and has often been one of Canada’s delegates.

He describes the Congress and ExCo meetings as “like Old Home Week” where old friends meet up. This year he says he is looking forward to having “a beer or a lunch” with colleagues and clients from around the world. But he stresses that what makes AIPPI unique are the debates on important IP issues, and working with national offices and governments and organisations such as WIPO: “You’re trying to formulate a worldwide position. It’s small steps every time you pass a resolution. And meeting people from different parts of the world is a huge draw.”

From tax to patents

Philip Mendes da Costa may have been destined to become a lawyer, as his father was a law professor and eventually a judge. But, even though he studied chemical engineering before going to law school, he intended to practise not IP but tax law. “I found tax fun. A few friends suggested patent law and I said ‘I don’t want to do anything so boring. I want to do tax.’”

At the time – he graduated from law school in 1984 – IP was “a sleepy backwater” he says. “IP was not part of the glamour work, it existed in the background.”

Nevertheless, he tried it out and has never looked back, soon qualifying as a patent and trade mark agent. His background gave him the opportunity to work in a variety of technical fields and on different issues (“I thought I was studying heavy chemistry. By the third year, I found out I was really a physicist,” he says of his first degree). He now heads Bereskin & Parr’s mechanical and industrial processes group.

Today, he works on patent portfolio management and prosecution, mainly helping companies develop IP strategies, though he admits he still enjoys writing patent applications. His work does not extend to litigation though: “I’ve been involved in one trial which as far as I was concerned was one trial too many.”

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