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AIPLA President's blog: Uruguay, vegetable mistakes and the Paris Convention

I was just in Uruguay, attending a Congress held by the Intra-American Association of Intellectual Property (Asociación Interamericana de la Propiedad Intelectual, ASIPI)

While there I met with representatives from a number of countries about U.S. intellectual property interests and spoke extensively with the IP Attaché to the U.S. Consulate in Rio de Janeiro, who also was in attendance.

One of the topics on the Congress’s agenda was the Patent Cooperation Treaty (PCT). As I mentioned in an earlier post, I was on a panel at the ASIPI Congress about a treaty known as the Paris Convention and what happens when the Convention’s one-year application deadline is missed. The panel included representatives from several countries and from the World Intellectual Property Office (WIPO), the agency that administers PCT. It was sort of fun speaking with simultaneous translation into Spanish and Portuguese, although there was a momentary time lag that made jokes more difficult.

Speaking of which, I began my talk by relating a vignette about the breakfast buffet. Each morning I asked the same waiter how to say a different vegetable name in Spanish. The morning before the panel I asked as usual and then repeated what he said. Apparently, I made a mistake because whatever I said made the nearby Spanish speakers burst out in laughter. A few even blushed! I have no idea what I actually said, and I don’t want to know, but it did emphasize the point that sometimes mistakes happen despite the best of intentions.

Under existing U.S. law, I explained, there are very few exceptions for letting applicants perfect their Paris Convention rights when they have missed the one-year deadline. Moreover, the few U.S. options are different than those for other countries and jurisdictions, such as the European Patent Office. In addition to making it difficult for practitioners to keep track, the inconsistent standards can create situations in which curing a defect in one jurisdiction can preclude obtaining patent coverage in another.

One of the topics I discussed during my talk was the Patent Law Treaties Implementation Act of 2012 (the Act), U.S. legislation needed to implement two treaties: the Hague Agreement Concerning the International Registration of Designs and the Patent Law Treaty (PLT). The PLT, which one commentator incorrectly described as having “as much impact on patent practice as the addition or deletion of comma,” would bring the U.S. into conformity with the PLT standards for curing a late-filed application.

As I explained, however, the U.S. Senate passed the Act but it languished in the House of Representatives. Since the U.S. Congress is dysfunctional, I continued, no one can depend on the Act becoming law. But, I soon learned that I had made another error despite my good intentions. When I returned to my seat and read the email that came in during the panel discussion, I learned that the House had just passed the 2012 Act while I was on the dais and it was going to President Obama for signature. (The President did sign the Act, by the way.)

In any event, my participation in the ASIPI Congress opened and strengthed significant lines of international communication that will further the Association’s strategic international goals. There are more and more international issues to address, including the move toward international harmonization, and these joint discussions will help to facilitate the development and implementation of sensible, consistent policy going forward. I am now planing to attend the Executive Committee Meeting of the International Federation of Industrial Property Attorneys (FICPI, the Fédération Internationale des Conseils en Propriété Industrielle), where hopefully the dialogue will continue.

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