This year’s AIPPI Congress openedwith a distinctively Mexican flavourlast night.

The Opening Ceremony began withCarolina Xicum Moo, a representative of thePeto community of Yucatan, welcomingattendees and wishing everyone a good stay.She went on to say that her culture has neverdied but lives on.

Fernando Becerril, President of theMexico AIPPI group, noted it is the first timean AIPPI Congress has had a casual dresscode (no ties!).

Leslie Hendriks, a Quintana RooCongresswomen, noted the region had beenactive with IP. Cancun is registered as trademark, while copyright protects thousands ofsongs from the region.

Miguel Margáin, director of IMPI, saidMexico is in a time of transition. “To win,you have to take risks. The Mexican econo-my is not traditionally innovation focused,”he said.

This is changing, however. The Mexicangovernment including IMPI has worked onmany issues recently, especially amend-ments of IP statutes and discussions onTPP11.

Earlier this year, Mexico’s IP Law wasamended, including many changes related tonew protection for non-traditional trade-marks, the opposition procedure andamendments to provisions on well-knownand famous brands.

Margain noted that WIPO now ranksMexico 11th for patents and 10th in registra-tion of trade marks.

The welcoming remarks were followed aperformance by the Cancun SymphonicOrchestra and a display of traditionalMexican dancing and singing.

I n an unprecedented move for AIPPI,countries’ representatives voted to post-pone any resolution on the subject of

inventor remuneration, which was sched-uled to be resolved in a plenary session yes-terday afternoon.

Inventor remuneration is an interestingissue for several reasons. First, a number ofnational groups stated that they do not seekharmonisation in this area, “which is unusualfor AIPPI,” commented Koen Bijvank, Chairof the Standing Committee on Patents andpartner at Brinkhof.

The topic is unique because it has beentouched upon in several past AIPPI resolu-tions, such as in Rio in 2015. “So we have tocarve out a space where we can do some-thing without interfering with previous reso-lutions,” Bijvank said. Additionally, the topicis complex because it deals with labour law,which traditionally is not considered withinIP law.

Some jurisdictions have inventor remu-neration laws, others have none, and what isclear is that most don’t agree. In a multina-tional environment, one question is what theapplicable law is for an employer if inventorsare in different jurisdictions that follow differ-ent rules for remuneration. It seems the roadto harmonisation will not be smooth.

The discussion yesterday began immedi-ately with a proposal from the UK andFrench groups that the discussion be post-poned on due process grounds. John Osha,the responsible reporter for this question,established that the proper processes andregulations had been followed, so there wasno official reason – due process or otherwise– to halt the scheduled discussion.

The French group said the standing com-mittees exist to resolve urgent matters quick-ly, and perhaps the inventor remunerationquestion should be transferred to a morelengthy process, which would be appropriate

because of its complexity and untimelynature. This argument was also dismissed onthe ground that standing committees tradi-tionally address all sorts of issues, not justurgent ones.

Another argument came from the Spaingroup. It agreed that national groups hadbeen given the chance to submit their posi-tions but said that, since many had not, thereshould be a vote to delay the discussion.

Osha responded favourably: “It would bean unprecedented thing, but not an unac-ceptable thing. I would like to clarify that avote to table this would not be a mandatethat we have to wait until London, but rathera mandate to the Reporter General team tofind some mechanism by which appropriateexchange of information can be had.”

Under these terms, 79% of the groupsvoted in favour of postponing the resolution,with 20% against the postponement and 1%abstaining.

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AIPPI CONGRESSNEWS

49 TH WORLD IP CONGRESS, CANCUN, MONDAY 24 SEPTEMBER 2018

NEWSYOUNG AIPPI FORUMCULTIVATE YOURPERSONAL BRANDPAGE 3

THINGS TO DOCANCUNHOW TO MAKE THEMOST OF THE REGIONPAGE 6

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WHERE AND WHEN

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No resolution on remuneration

Congressopenswith afiesta

The convention centre in full swing

This year’s Congress features a wealthof interesting sessions. AIPPIreceived a record number of pro-

posals for sessions after the SydneyCongress, around 150.

“A very clear theme was to explore AIand blockchain,” says Sarah Matheson,AIPPI Reporter General, who is a partner ofAllens in Melbourne, Australia. AIPPI hastaken this suggestion on board. There is awhole morning devoted to AI today whileblockchain and cryptocurrencies will beaddressed on Wednesday.

“We thought it would be of interest tohave technical content, such as educatingabout what is AI. It often gets confused withmachine learning,” says Matheson. “We aretaking a similar approach to blockchain.”

Matheson is also excited about the hottopics session on Wednesday morning. Thiswill include discussion of Brexit’s impact,the latest on the UPC, global harmonisationefforts, FRAND following the TCL vEricsson decision, and the WTO dispute res-olution and plain packaging report. “Thereis substantive patent law harmonsiationgoing on at the moment,” says Matheson.“Our broader membership is probably notaware how much work is going on in thatarea.”

Pharma Day Tuesday includes what has now become anAIPPI institution. “AIPPI is quite wellknown now for our Pharma Day,” saysMatheson. This year it features sessions onpatent term extensions, access to medicines,big data and biosimilar litigation.

AIPPI looked at patent term extensionsrecently. “But the fact is we just keep gettingcases,” says Matheson. “That suggests theseissues keep coming before the courts, andwhatever is coming out of the courts is notsettling those issues.”

Access to medicines is “one of the very,very vexed issues in the pharma space”, saysMatheson. “Whenever you have a discus-sion about access to medicines, patentsinevitably come up and get blamed. One ofthe key drivers of this panel was not to havea bunch of pharma people telling otherpharma people why patents are OK. Wehave to have a balanced panel so we have a

full spectrum of viewpoints, otherwise it isjust preaching to the converted.” The cen-tral topic of this session will be the 2016 UNHigh Level Report on Access to Medicines.The panel will feature two AIPPI members– Catherine Mateu of Armengaud Guerlainand Roberto Ribeiro of Sanofi – who wrotea position paper about the UN report, aswell as Tahir Amin of I-MAK, who focuseson making lifesaving medicines available toall, and WIPO’s Christopher Ruggerio.

The big data session will explore a fast-moving area in which an interesting pairingis occurring between big pharma and hightech companies, which have traditionallyhad a philosophical difference in how theyapproach IP. “Also with data you’ve got areally interesting issue of ownership versusright of use,” says Matheson. “Traditionallyan IP perspective is that you want to own,but when you are having data generatedoutside of an organisation do you actuallyneed to own it? That causes a shift in think-ing, and of course there are privacy issuesand competition issues that crop up.”

The biosimilars topic is also timely.Litigation in this area is now starting tooccur, and throwing up unique challenges.Matheson identifies one: “With a genericyou know it is the same thing. But with abiosimilar by its very nature it’s not thesame thing. It is very similar but not thesame. In some cases it is a better drug. Soshould the better drug be injuncted and

kept off the market?”

Study questionsThis year’s four study questions are on:joint liability for IP infringement; conflict-ing patent applications; partial designs; andregistrability of 3D trade marks. The studycommittees met on Sunday to debate theissues. They will now go to the plenary ses-sions being held over the next three daysbefore the final ExCo meeting.

A lot of work has gone into the ques-tions since last year. “That is the value of anAIPPI resolution,” says Matheson. “We doget a lot feedback externally that an AIPPIresolution is valued because it is such anintense study and democratic process. It isalways by definition a compromise posi-tion that is aiming to improve the law. Noone country is going to prevail because thesystem doesn’t allow any one to dominate.”

The other route to a resolution isthrough standing committees. This allowsAIPPI to focus on issues out of the studyquestion process, which is quite long. “Astanding committee can do it out of cycle,”says Matheson. “At the end of day there isn’ta hierarchy of resolutions, just two differentways of getting there.”

End of an eraThis Congress marks the end of Matheson’stenure as AIPPI Reporter General. “It has

been a really interesting time to be on theBureau,” she says. A particular pleasure wasthat a Congress was held in her home coun-try during that time.

Matheson identifies three big changesin the four years she has held the role: anincreased level of interaction with GOs andIPOs; increasing alignment between thekinds of projects that AIPPI is working onand the projects that IPOs are working on;and a trend away from being able toachieve major multilateral treaties such as aTRIPs.

“You might say multilateral treaty mak-ing is on the wane, and surely that’s a badthing,” says Matheson. “But have otherways of achieving harmonisation filling thatgap.”

A guide to this year’s Congress Sarah Matheson

2 AIPPI CONGRESS NEWS Monday 24 September 2018

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AIPPI President Hao Ma took theopportunity during yesterday’sExCo meeting to look back. He

began by asking for a round of applause forformer Executive Director JohnBochnovic. He then honoured two AIPPImembers who passed away this year:Ronald Myrick, AIPPI President from2006-2008, and Sertac Köksaldı, Presidentof the Turkish Group from 2016-2018.Attendees at the meeting stood to mark aminute’s silence.

Ma also discussed some of the high-lights from the year for AIPPI. This includ-ed the formation of the National Groupfrom UAE, strong international involve-

ment in AIPI’s Study Questions, and theAIPPI Strategic Plan 2017-2020 beginningto be implemented. “Our national groupswere very active,” noted Ma.

Also during the ExCo, Reporter GeneralSarah Matheson gave an update on theBureau’s activities and also noted a fewdevelopments to keep an eye on.

She praised the increased role of stand-ing committees in recent years. These canwork much faster to reach a resolutionthan the study questions process. Oneexample of the value of standing commit-tees is AIPPI’s involvement with theHague Conference on PrivateInternational Law. The association had

the privilege of being an invited observerat recent meetings on the project to devel-op a convention on the recognition andenforcement of foreign judgments. Adiplomatic conference is anticipated in2019. Ahead of that, a standing committeewill meet this morning to propose a reso-lution on the project.

Matheson said another issue to look outfor is collaboration with other NGOs. Thisincludes the FICPI/AIPLA Colloquium onAI in March 2019 and INTA panel onFTAs in May 2019.

Lastly, Matheson noted that the Bureaunow has a new team with a “stellar lineup”.

Paying respects at the ExCo

“We do get a lotfeedback externally thatan AIPPI resolution isvalued because it is suchan intense study anddemocratic process”

“When I arrived at AIPPI, theythought I was with the bandand sent me down to the

basement, so it looks like I’ve got to work onmy personal branding,” began presenterJayson Williams, head of business develop-ment at Deacons in Hong Kong, at the sec-ond annual Young AIPPI Forum yesterdaymorning.

Williams went on to emphasise the impor-tance of cultivating the right image and con-stantly keeping it up to date with who youare. He shared how his career brought himthrough some surprising twists and turnsfrom owning and operating businesses tohandling marketing for a law firm.

“At that stage,” Williams said, “I realisedthat it was my personal brand that carried methrough. It wasn’t my knowledge of law firms– I had no idea how it was going to work. Itwas my brand that made me stand out.”

In addition to opening new opportunities,successful brand management can help indi-viduals thrive in challenging business envi-

ronments. “I’m a fan of Richard Branson’sbrand,” Williams said, “because even thoughhe’s had business fails, his personal brand hassurvived.”

Law firms have historically operated andengaged clients based on the firm’s collectivereputation, but this is changing. Individuallawyers’ personal brands are increasingly vis-ible and relevant, so naturally it is increasing-ly important to be on top of cultivating them.

The number one rule is to be yourself.People can detect inauthenticity, and avoidit. The question becomes: how can you bethe most presentable version of your real self,and how can you make sure that image alignswell with your firm’s brand?

The first step is to evaluate your image.Williams recommended this exercise: defineyourself in three words, and ask some honestcolleagues to do the same. Is your actualimage different from your intended one? Ifso, consider what you can do to bring realitycloser to what you want to project.

The next step is to consider how and ifyour personal brand aligns with your firm’sbrand. “Most people don’t know what theirfirm’s brand is” when doing this exercise, saidWilliams. “So approach your marketing teamand ask!”

Williams provides various exercises todevelop your brand in a template of hisPersonal Marketing Plan (PMP), which isavailable under Publications on the AIPPIapp.

How can you actually build a successfulpersonal brand? Social media is the mostimportant personal branding tool because so

much professional networking, searching,and sharing happens in the digital space.

The most popular professional socialmedia platform is LinkedIn. Of courseTwitter can also be used for professional pur-poses, “but the downside is that it can be hardto keep the momentum going with constantposts,” Williams said. “Still, it can be good forevents.”

Another platform Williams encouragedpeople to be aware of is WeChat: “It’s goingto be very important where we are [in Asia].Some firms already have six to 12 Chinese-speaking people just dedicated to managingWeChat. It’ll crop up more in the future, I’msure.”

In the meantime, LinkedIn is the mostpopular place to promote personal profes-

sional brands. The presentation offeredhacks to navigate this platform. Your profileimage is the first impression viewers get onLinkedIn, so it is the beginning of theirunderstanding of your personal brand.

When asked if LinkedIn’s Premium orNavigator offerings are worth the cost,Williams answered that it’s a personal choice,but he was “not a fan” of Premium after sev-eral trials, and that it seems to be most usefulfor recruiters. Navigator, on the other hand,“might be worth checking out,” Williamssaid. It allows users to define who they wantto connect with – by location, industry, posi-tion, etc. – and generates targeted resultsaccordingly. Williams said: “It’s not veryexpensive, and could be a very powerfultool.”

Find balance in personal brandingNews

AIPPI CONGRESS NEWS Monday 24 September 2018 3

DON’T MISS A THING!Download the AIPPI app

Attendees worried about keepingon top of their schedule in Cancuncan relax. The Congress this year hasan app to help you connect withparticipants, personalise yourprogramme, locate venues andevents, access publications and eventake part in live voting sessions.Simply download the AIPPI app

for free on your smartphone,register your account using theemail associated with your AIPPIaccount, and click “Join” on theCongress event.

Profile picture DOs:• Have a clear, focusedimage

• Show your face so thatyou are recognisable

• Dress in appropriatework clothes

Profile picture DON’Ts:• Include other people oranimals; they distractfrom the star of thepage: YOU!

• Show a hobby; mostpeople will not connectwith it

• Use a picture of anyoneelse as a joke, such asan actor in yourfavourite funny scene

• Have a joint profile withyour partner. Peopleshouldn’t have to mes-sage two people inorder to get in touchwith one

• Upload a throwbacklike a wedding or babyphoto

Other LinkedIn tips:• Your banner (the largerphoto behind your pro-file picture at the top ofthe page) is the second

impression people haveof you, so it’s importantthat your banner revealanother aspect of yourpersonal brand. Updatethis piece soon,because it is currentlyfree. As Williams said:“Things don’t stay freefor long.”

• Customise yourLinkedIn link. Thedefault link is a boringstring of numbers andletters. However, thereis an option to person-alise you link to some-thing a little snappierand better to share.

• Participate on LinkedInin order to boost yourprofile. The way thealgorithms work, themore you share and likecontent on LinkedIn,your content is pushedout further to more dis-tant connections, there-by growing your net-work.

• Update your profileoften so that it reflectsthe latest version ofyour best professionalself. However, you

don’t want to annoyyour connections withconstant updates. Insecurity settings, youcan turn off notifica-tions of your profileupdates to your con-nections when you aresimply tidying your pro-file. Remember to turnthese notifications backon when you addsomething you’d like toshare.

• Write your LinkedInsummary in first person,and be brief. Use thissection to highlightyour skills, more thanwhat you’ve done.Present your titles anddescriptors in yourheadline with bulletpoints. In some coun-tries, the LinkedIn appwill allow the headlineto be 200 characters,while the website onlyaccommodates 120.Avoid headlines thatare arrogant, meaning-less, or try to cover toomuch. Be specific,strengths-focused, andrealistic.

Jayson Williams’ LinkedIn tips

Isabelle Chabot, Assistant SecretaryGeneral, welcomed first-time attendees tothe Congress yesterday. She explainedhow the schedule works, with variousstudy questions, plenary sessions andpanel sessions.

An important bit of advice Chabotgave was for first-time attendees to askAIPPI mentors for tips and tricks fornavigating the event. The mentors can beidentified by a button worn on their lan-yards.

First timers –ask mentorsfor tips!

“I’m a fan of RichardBranson’ brand becauseeven though he’s hadbusiness fails, hispersonal brand hassurvived”

The Study Question “Joint liabilityfor IP infringement” will be debatedtoday. It will examine in what cir-

cumstances, and how, joint liability can beestablished when more than one party isimplicated in the infringement of IP.

In order for a defendant to be jointlyliable in an infringement case, it does notneed to have committed any direct infringe-ment, indirect infringement or contributoryinfringement itself. As long as its actions,along with those of others, have infringedupon an IP right, a defendant can be heldjointly liable.

The majority of the groups who participat-ed in the summary report (75%) felt thatparts of their law on joint liability could beimproved. Those who wanted to seeimprovement either wanted the establish-ment of specific provisions, or the improve-ment of current ones (depending on theirlegal background). The UK group seeks aclarification of the distinction between jointliability and indirect infringement. It also sug-gested differentiating between joint liabilityfor patent law and other IP rights. In contrast,the Brazilian and German groups suggested aunified approach to joint liability.

The summary report notes that 30 out of39 groups felt that “there should be no limi-tation to domestic jurisdictions” when it

comes to establishing joint liability. Indeedthe report suggests that globalisation anddigitalisation mean that patent infringementoften spans different countries.

Ralph Nack, Responsible Reporter for thetopic, says: “I think there is a lot of divergencearound the world about this issue. In particu-lar, there is no consolidated doctrine. Howevery country approaches the issue is differ-ent.” According to the summary report, somecountries deal with the issue of joint liabilityusing statute and case law while the approachof other jurisdictions is based on tort law.

The majority (80%) of the participatinggroups was in favour of a consolidated doc-trine of joint liability for IP infringement inorder to “improve legal certainty”. The vastmajority of the groups involved (80%) alsowanted global harmonisation on the lawaround joint liability.

Nack highlights two issues on which hehopes to gain answers in relation to this area.The first is “multi-jurisdictional infringe-ment”. He explains: “For example, theinfringement involves three countries andwe need to bring them together in order tofind infringement of one patent claim.” Thesecond issue is the “silk street type of sce-nario” where a facility enables people to sellinfringing goods. This can happen in both adigital and real marketplace.

In response to the question of joint liabil-ity across more than one jurisdiction, thegroups considered situations where no onehas carried out direct infringement, butinfringement happens as a result of an over-seas entity “controlling the acts of the partic-ipating parties, but the overseas entity is notitself performing any portion of the IPRinfringement.” The groups suggested vari-ous ways of establishing joint liability in thiscircumstance, for example if there is “delib-erate and intentional collaboration” or if“the parties are related to each other”. TheUK group stated that “the question of howthe acts of the parties relate to the substanceof the patented method needs to be takeninto consideration. The jurisdiction in whichthe substance of the patented process hasbeen performed and the jurisdiction inwhich the benefit of the process arisesshould be considered especially relevant.”

In reference to the second area highlight-ed by Nack, the groups were asked aboutjoint liability when there is direct infringe-ment by one particular party but the ownerof the IP rights wants to sue another partywho is implicated in the acts. This party “didnot supply a substantial element of the sub-ject matter of the protected IPR, but…hasknowledge and/or actively encourages orinduces the infringement.” The general con-

sensus was that this scenario should lead tojoint liability. However, the groups felt that“mere facilitation” was not sufficient toestablish joint liability.

According to most groups, knowledge orawareness of infringement is needed forjoint liability or the party must have failed totake reasonable steps to avoid the infringe-ment having been informed about theinfringing activity. Nack notes that “knowl-edge is a key issue”. He adds: “It is importantto establish the criteria around knowledge. Isthere a proactive element to it? Shouldsomeone have known? When is the knowl-edge threshold met?” The summary reportstates that the groups also considered thatthe extent of participation was a criteria forestablishing joint liability.

In terms of remedies, 100% of the groupssaid that for joint liability infringement, aninjunction should be a remedy. The majorityof groups also stated that monetary compen-sation should be available for joint liabilityinfringement. Many thought that this shouldbe based on the loss of the IP rights ownerand the profits amassed by the infringer(s),but others felt that it should be dependenton the knowledge of the infringer.

Nack has a hopeful outlook regarding adecision on the knowledge issue: “I thinkone can find a resolution on that one”.

Establishing joint liability for IP infringement

News

4 AIPPI CONGRESS NEWS Monday 24 September 2018

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ProsecutionInfringementLitigationIP

What is your strategy for dealing withthe Mexican heat?

VOXPOP

Ryann Beck Andrus IP, USWearing a removable sweater is goodto handle both heat and airconditioning.

Bernard LedeboerVO, The Netherlands I’m going to pick up that guayabera assoon as possible, and stay in the lobbyas long as I can.

Marek Lazewski AIPPI First Secretary General, Poland Eat salsa verde, because it makes yousweat, which helps you cool down.

Pauline Debre Linklaters, FranceI’m just happy to have this niceweather, but this fan is good to use.

Gwendal Barbaut IPside, France Stay in the convention centre, or be ina bathing suit.

Fernanda Vilela Coelho VCPI, Brazil I know this weather, so I broughteverything sleeveless, and dresses ofcourse.

Edna Lopez Toledo Mayora IP, El Salvador Light clothes and margaritas.

Eduardo Miravete Mcoy Abogados, Mexico Don’t be late so you don’t have to runanywhere; go from the AC in the hotelto the AC in the convention centre asquickly as possible without running.

Dmitry Markanov Patentus, Russia Accept the heat; don’t fight it. The realchallenge here is to stay inside andresist the urge to jump into the sea.

Cancun is known for its beachesand its partying. But there is plen-ty to entice AIPPI attendees aside

from sand, sunbathing and spirits. Thispart of Mexico offers rainforests, under-ground caves, ancient ruins, colonial citiesand natural wonders. For the more adven-turous, a wide range of activities are onoffer including snorkelling, ATV drivingand ziplining.

Here are some of the highlights avail-able for those who have time away fromthe Congress.

Excursions The most obvious attraction is ChichenItza, whose pyramid-like structure ElCastillo was named one of the New SevenWonders of the World in 2007 after aworldwide vote. It is the second-most vis-ited archeological site in Mexico, and oncewas one of the greatest Mayan centres inthe Yucatán peninsula. The oldest parts ofChichen Itza date back to 600 AD, whileits Maya architecture was built afterToltec invasion in 950 AD. The site lies120 miles west of Cancun.

Tulum’s archaeological site is anotherimportant Mayan centre. Tulum is 78miles south of Cancun, and its city was

built in honour of the sun. The site has amain castle, as well as the Temple of theFrescoes and Descending God, and looksout onto the Caribbean Sea. For thoselooking for somewhere to stay afterCancun, the area also boasts great beachesand is famed for its eco-friendly accommo-dations and the Sian Ka’an BiosphereReserve.

You could also go on a jungle tour.One tour would be to take a speed boat toPunta Nizuc Reef. This would involveexploring the jungle – and if you are lucky,spot its wildlife and exotic birds – beforereaching an ideal spot for snorkelling.

This area of Mexico is famed for itscenotes – underground caves with poolsthat visitors can swim in. A visit to acenote can be worked into other excur-sions you are taking. For example, the IkKil 60-foot pool is on the way to ChichenItza and the Cenote Dos Ojos is nearTulum. The latter is a system of cavernsthat extend for at least 38 miles at a depthof more than 350 feet. As the name sug-gests, however, there are two main attrac-tions – Blue Eye, where divers swimunderwater before surfacing in a bat cave;and Black Eye, which is in almost totaldarkness.

Closer to the conference If you do not have time for an ambitiousexcursion, there are attractions nearby.

Close to Cancun, but quieter, is IslaMujeres, which caters to all your diving andsnorkelling needs. The island boasts a reef, aturtle farm and an underwater sculpturemuseum.

The El Rey ruins are located in the HotelZone. They date back to 1200, when the areawas a centre for maritime trade. However,

perhaps a greater pull (especially for thoselooking for a good Instagram selfie) is thatthe ruins boast a population of hundreds ofiguanas.

Also in the Hotel Zone is the Museo Mayade Cancún. It has a number of Mayan cultureexhibits. You can walk among ruins and evencheck out the jungle that the museum abuts.

If you want to check out an equallyimportant facet of Mexican life, the HotelZone also has a Tequila Museum!

Things to do in CancunNews

6 AIPPI CONGRESS NEWS Monday 24 September 2018

United States

The USPTO has revealed revised PatentTrial and Appeal Board standard operatingprocedures on panelling of matters (SOP1)and precedential and informative decisions(SOP2).

Revised SOP1 explains the proceduresfor panel assignment and for informing par-ties about panel changes. It also explains theprocess for designating panels with morethan three judges, and notes that such panelsshould be rare and will only occur with theapproval of the director.

Revised SOP2 creates a PrecedentialOpinion Panel (POP). This will typicallycomprise the USPTO director, the commis-sioner for patents and the PTAB chief judge.The USPTO expects that the POP and theprocedures described in revised SOP2 will inmost cases replace the previous practice ofexpanded panelling under SOP1 “with aprocess that is more transparent and pre-dictable”. It is also expected that revisedSOP2 will result in more decisions beingdesignated as precedential.

Europe

The European copyright legislation couldraise challenges for brand owners. The EUParliament voted to adopt an amendedversion of the Digital Single MarketCopyright Directive on September 12 thatwill soon go through trialogue negotiationsbetween the EU Council, Commission andParliament.

Christian Schumacher, partner atSchoenherr in Austria, speaking at the MAR-QUES annual conference in Paris, pointedout that Articles 14 to 16 of the new directivemay affect contracts between brand ownersand designers. Article 14 covers fair remu-neration, Article 15 introduces a contractadjustment mechanism and Article 16 saysthat member states must provide a disputeresolution mechanism.

Schumacher said that most businesses donot design their own marks but rather out-source the task to third-party providers. Inthose cases, intangible assets such as logos,slogans and trade dress can be covered by athird party’s copyright – and that could

become more of a headache for brands afterthe Copyright Directive comes into placeunless they actively address the matter intheir contracts.

Article 15 sets out that authors are enti-tled to request additional and appropriateremuneration when the remuneration origi-nally agreed is disproportionally low com-pared low compared to the subsequent rele-vant revenues generated from exploitation ofthe works. Furthermore, Article 14 willensure that businesses will be required toinform authors with information on theexploitation of their works.

He noted that should Articles 14 to 16become law in their current iterations, own-ers must ensure that they seek grants ofrights where necessary to use all copy-rightable trade mark elements. If they donot, specific challenges could be madeagainst marks where there are no statutoryprovisions for the automatic granting ofrights for works made by third-partyprovider.

He added that the amendments made toArticles 14 to 16, which were adopted by theEU Parliament, included the direct and indi-rect revenues and benefits derived from theexploitation of works and a right of revoca-tion in cases of an exclusive licence or trans-fer and the absence of exploitation.

“It looks like these will apply to trademarks, but we will have to see how it isimplemented,” he said.

United Kingdom

Gilead’s supplementary protection certifi-cate (SPC) for antiretroviral productTruvada has been revoked by the EnglishHigh Court.

Handing down his judgment in Teva vGilead, Mr Justice Arnold held that Gilead’sSPC did not satisfy Article 3A of the EU’sSPC Regulation because it could not be con-sidered to be protected by a basic patent inforce.

The decision was made in light of the rulingmade by the CJEU on the matter, which set outthat (i) the combination of active ingredientsmust, in light of the description and drawings,fall under the “invention” covered by thatpatent and (ii) that each active ingredient mustbe specifically identifiable in light of all theinformation disclosed by that patent.

The court followed the CJEU in its rulingthat held that Gilead’s SPC had been grant-ed contrary to the policies and regulationsthat govern the granting of SPCs and thatthe manufacturer’s protection was thusinvalid and should be revoked.

Cenote Dos Ojos

Temple of the Frescoes and Descending God

IP news you may have missed

There is much more available outside of the Congressthan just lying on the beach

Chichen Itza

What have been some of thehighlights of your tenure?2017 and 2018 were very successful years inwhich AIPPI brought together membersfrom around the world, providing profes-sional development and networking oppor-tunities at various meetings. Our nationaland regional groups and our independentmembers have increased their internationaland national influence by organising a largenumber of events and activities. Manynational groups shared their success storiesin our AIPPI e-News, including the BrazilianGroup, Chinese Group, Israeli Group,Italian Group, Turkish Group and UKGroup.

One particular highlight is the privilegeAIPPI has enjoyed in being an invitedobserver at recent meetings on the project ofthe Hague Conference on PrivateInternational Law to develop a conventionon the recognition and enforcement of for-eign judgments.

AIPPI contributed to various externalconsultations including the EUIPO consul-tation on draft design guidelines, variousWIPO consultations on the PCT system, theEuropean Commission consultation onmeasures to improve the effectiveness of thefight against illegal content online, and theconsultation of the Supreme People’s Courtof China on its guidelines concerning patentcases.

In 2017, AIPPI welcomed the formationof a new National Group from the UnitedArab Emirates. Formed by members of theRegional Group known as APPIMAF, theUAE Group follows in the footsteps of theJordanian Group which was founded in2016.

The AIPPI World Congress was heldfrom October 13-17 2017 in the beautifuland vibrant city of Sydney and attracted over1,300 delegates from all over the world.

This August, we were very pleased toannounce the appointment of Dr ArnoHold as our new Executive Director. Arnohas experience in inter-governmental rela-tions in the IP field, cross-cultural leader-ship capabilities, and international projectsand policy development for innovationsand IP. We are confident that Arno’sexpertise and experience will greatly assistAIPPI in pursuing its core objective and welook forward to working with Arno for thebenefit of all AIPPI members and theAssociation.

Last year marked the 120th Anniversaryof AIPPI. With the collaboration of its mem-bers, AIPPI remains the world’s leadinginternational organisation dedicated to thedevelopment and improvement of legalregimes for the protection of all types ofintellectual property.

To keep pace with today’s fast changingworld, measures for the improvement ofour future work should be taken so thatAIPPI will be more relevant to IP stake-

holders and to all the related parties in thearea of IP.

AIPPI needs to increase the internationalinfluence, so that the voice of AIPPI can bemore broadly heard by inter-governmentalorganisations, government organisations,intellectual property offices, relevant tradeand business organisations and other non-government organisations.

AIPPI needs to continually improve thecoordination, support and communicationbetween AIPPI International and theNRGs/IMs.

AIPPI needs to ensure that all AIPPImembers could individually feel valued,empowered – and above all – proud to bepart of the AIPPI family.

AIPPI needs to remain active, improveefficiency and be more influential in the IPfield while maintaining its academic andeducational functions, such as organising IPresearch and high quality educational pro-grammes. We need to continuously provideimproved services to our members. We aimto strongly support our national and regionalgroups and more actively strengthen theconnection with national, regional and inter-national institutions.

What do you see as the IPworld’s biggest challenges? During the past few years, we have witnessedmany dramatic changes and much progressin the political, economic as well as intellec-tual property fields around the world. Boththe role and the importance of IP have neverbeen greater. The challenges in advancingand harmonising IP protection through mul-tilateral or bilateral agreements have neverbeen more formidable.

We are in the era of the Fourth IndustrialRevolution, marked by emerging technologybreakthroughs in a number of fields, includ-ing robotics, artificial intelligence,blockchain, nanotechnology, quantum com-puting, biotechnology, Internet of Things,3D printing and autonomous vehicles.History will be re-written through innova-tion and new technologies. Intellectualproperty protection will help these newtechnologies grow from little sprouts tocolossal giants. The intellectual property sys-tem and its global harmonisation fundamen-tally support and profoundly impact innova-tion. Intellectual property rights are at theroot of the new competitiveness.

New technologies also bring new chal-lenges to the IP system and practice. Forexample, questions include: How to protectgraphical user interface? How to protect arti-ficial intelligence (AI) related software tech-nology? When AI creates a design, is it theobject of protection under existing copyrightlaw? Can something made by or using an AIsystem be a copyrighted work?  Does ahuman who programmes or operates an AIapplication qualify for authorship?  How isany term of copyright protection measured if

the author is amachine? Are theclassic principlesof copyright appli-cable to artificiallygenerated works, oris something new anddifferent required?

We are still at an earlystage in the evolution of AI. Butit already plays a far larger role in every-day life than most people appreciate. The IPlaws system will need to adapt to keep upwith the development of technology.

What might be the role ofAIPPI to help with theseissues?AIPPI has been working on the emerging IPissues in relation with the up-to-date tech-nologies. AIPPI contributes its user associa-tion perspective to external consultations byundertaking studies and preparing positionpapers. Through Standing Committees, the

annual work pro-gramme of StudyQuestions and

the ProfessionalD e v e l o p m e n t

Programme atCongresses, AIPPI

will continuously aim forimproved quality and

impact. With the joint effort ofour members covering various jurisdic-

tions, we look forward with confidence toaddressing those challenges and makingAIPPI a major reference point for theimprovement of IP systems worldwide. 

AIPPI will constantly monitor thechanges, conduct research and provideconsultations and resolutions to help for-mulate IP policy, to help enterprises – fromstart-ups to MNCs – realise their businessstrategy through innovation and IP, and tohelp enterprises utilise IP as a tool to drivetheir business development at home andabroad.

Keeping up with emerging IP issuesInterview

AIPPI CONGRESS NEWS Monday 24 September 2018 7

Hao Ma of CCPIT Patent and Trademark Law Office is stepping downas AIPPI President at this year’s Congress, after serving his two-yearterm. He tells Karry Lai about his biggest challenges andachievements in that time

07.30-08:30 RGT, PC Breakfast Tulum 309:00-10:30 Plenary Session: Standing Committee on Pharma & Biotechnology Cozumel09:00-12:30 Panel Session I: Artificial Intelligence - the real IP issues Gran Cancun 3 & 409:00-10:30 Panel Session IV: Criminal protection of IP Gran Cancun 1 & 211:00-12:30 Plenary Session: Standing Committee on Enforcement: HCCH - Judgements Project Cozumel11:00-12:30 Panel Session V: A balancing act - copyright versus other rights Gran Cancun 1 & 212:30-14:00 Lunch 1: Trademarks and morality - The Slants Coral Gallery Ballroom14:00-17:30 Study Question: Joint liability for IP infringement Cozumel14:00-15:30 Panel Session II: Focus on SEPs Gran Cancun 1 & 214:00-15:30 Panel Session VI: Harvesting innovation in agriculture – patents and more Gran Cancun 3 & 414:00-16:00 Secretaries & Treasurers meeting Xcaret16:00-17:30 Panel Session III: Doctrine of equivalents Gran Cancun 1 & 216:00-17:30 Panel Session VII: Personality rights Gran Cancun 3 & 416:30-15:30 Independent Members Meeting Xcaret18:00-19:00 Women in AIPPI Coral Beach Gem Spa20:00-22:30 Taste of Mexico Coral Beach Grand Ballroom

TODAY’SSCHEDULE

MONDAY 24SEPTEMBER 2018