interview: thierry sueur, congress co-chair: … · noriyasu ikeda, aspire international patent...

“We are living a paradox” saidWIPO Director GeneralFrancis Gurry at the

Opening Ceremony of the AIPPI World IPCongress last night.

“Never have there been so many questionsthat are international in nature and arebeyond the power of one country to solve.But never have we experienced so much diffi-culty in getting international agreement,” headded.

Gurry was speaking as part of a roundtablethat included EPO President BenoîtBattistelli and new INPI Director GeneralYves Lapierre.

Thierry Sueur, director of IP for AirLiquide and AIPPI Congress co-chair, mod-

erated the discussion and pressed Gurry onwhether WIPO would be able to keep playinga role in harmonising IP laws.

Gurry admitted that there was a seriouschallenge to multilateralism but pointed tothe “growing consensus that solutions topatent workloads should be built on thePCT”. “We are seeing the fusion of the PPHand PCT,” he added.

In an interview with the AIPPI CongressNews earlier in the day, Gurry had highlight-ed the importance of using technology to cre-ate platforms, rather than negotiating treaties:“Treaties create the possibility of action; plat-forms can actually perform the action.”

For example, Gurry cited the negotiationsto create an instrument to ensure that visually

impaired people can have access to copyrightwork and use platforms to ensure that thoseworks are made accessible in different coun-tries. “This is a confidence-building exercisefor the world of IP,” he said. “If we can do thatthen we can do other things too.”

Gurry conceded that patents remained thearea where progress was slowest. He said thatthe issue of client-attorney privilege (see arti-cle on page 12) could serve as a non-contro-versial question for the Standing Committeeon Patents to focus on. “The problem at themoment is that the project does not have apolitical sponsor,” he said.

Both Lapierre and Battistelli spoke of theimportance of developing IT infrastructure toimprove the efficiency of their offices.Lapierre said that one of his aims as the newhead of INPI was to “collectively improvedecision making and efficiency”.

Battistelli said that the EPO has alsolaunched a tender for an IT audit at the EPOto see how the Office could increase efficiency.

“Our strategy debates are behind us,” saidBattistelli, who has just finished his first 100days at the Office. He said that the Office wasnow ready to implement the European PatentNetwork.

He also said that trends for applicationsare now positive again, with an increase inapplications of 0.5% compared with last year,which means that the EPO “should be close”to 2008 levels. At WIPO, Gurry said patentapplications are up by 2.8%, but have not yetreached 2008 levels: “Certainly there is arecovery, but it’s weaker and more fragile thanwe would have expected 12 months ago.” ■

Patenting of clean energy technologieshas increased by about 20% a yearsince the Kyoto Protocol in 1997,

according to a study published on Thursday.The growth has outpaced patenting in tradi-tional energy sources.

But the study also found that just six coun-tries (Japan, the US, Germany, Republic ofKorea, France and the UK) are the source ofalmost 80% of all clean tech innovations, andthat there is limited licensing activity to devel-oping countries.

The study was conducted by the EuropeanPatent Office, the United NationsEnvironment Programme (UNEP) and theInternational Centre for Trade and SustainableDevelopment (ICTSD). It examined the roleof patents on clean tech transfer and looked atsome 400,000 patent documents.Technologies covered included solar photo-voltaic, geothermal, wind and carbon capture.

The study included a survey of technologyowners. This found that 70% of respondentswere prepared to offer more flexible termswhen licensing to entities in developing coun-tries with limited financial capacity. The major-ity of organisations prefer collaborative R&Dactivities, patent out-licensing and joint ven-tures to patent pooling and cross-licensing.

A workshop at the AIPPI Congress todaywill look at patents and green technologies.Speaking before the publication of the study,workshop moderator Bertram Huber saidthere is a “tremendous need for collaboration”between developed and developing countries.He said a Licensing Executives Society surveyhad also found that 77% of licensors wouldlicense clean tech inventions to parties indeveloping countries at a preferential rate.

Huber described clean tech as “the hottesttopic in IP in our time”. He added: “We have toaddress whether the IP system as such is ade-quate and appropriate for taking care of whatwe need for environmental technologies.”

Today’s workshop will cover issues includ-ing incentives for clean tech patenting, therole of public and private organisations andtech transfer initiatives, including the Eco-Patent Commons.

In collecting data for the study, the EPO cre-ated a tagging system that provides simplifiedaccess to clean energy technologies worldwide.It is now available for free on esp@cenet. ■

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managingip.com

AIPPI CONGRESSNEWS

42 ND WORLD IP CONGRESS, PARIS, MONDAY 4 OCTOBER 2010

INTERVIEW: THIERRY SUEUR,CONGRESS CO-CHAIR: WHY KNOW-HOW AND TRADE SECRETS IS A HOT TOPIC PAGE 10

INTERVIEW: THIERRYMOLLET-VIÉVILLE, AIPPI PRESIDENT: OUR BIGGEST EVER MEETINGPAGE 4

Clean techpatents boom

NEWS

CONGRESS NEWS

PAGES 2-3

FEATURE

BUSINESS METHODS

PAGE 6

PREVIEW

PERSON SKILLED IN

THE ART PAGE 8

FEATURE

PRIVILEGE

PAGE 12

PREVIEW

CONTRIBUTORY

INFRINGEMENT

PAGE 15

SCHEDULE

WHAT’S ON

TODAY

PAGE 16

TODAY’S WEATHER

HEAVY

SHOWERS

12-19°C

The multilateral challenge

Intellect, sensibility and stomach The intellectual content of last night’s OpeningCeremony was followed by delights for the senses and the stomach, said Congressco-chair Thierry Sueur. The sensory experiences consisted of speed painting accom-panied by classical piano. Then came the culinary pleasures of traditional French cui-sine such as paté and foie gras, complemented by international fare including sushi.

Guillaume Henrylast night wonthe AIPPI

Academic Prize 2010 forhis work “Intellectualproperty rights and greentechnologies”. TheFrenchman was delightedwith his prize – a chequeworth €10,000.

“I will take my wife ona holiday,” he told AIPPICongress News, “becauseI worked fulltime on theacademic work during aweek in July when wewere on vacation in StTropez – it will be smallcompensation.”

Second prize, worth €6,000, went to thetrio of Yann Meniere, Arnaud De la Tourand Matthieu Glachant for their work titled“Innovation and technology transfers: studyof the Chinese photovoltaic industry”.

In third place was the duo of MichelAbello and Vincent Cassiers. Their work wascalled “Seizure (saisie-contrefaçon): compar-ative analysis of French and Belgian laws”.

The keenly contested competitionreceived a large number of contributions,

but only 16 met the com-petition rules. The 16entrants spanned eightcountries in total:Argentina, Belgium,Brazil, Colombia, France,Hungary, Mexico andPoland.

The contributors hadthree topics on which tobase their work. The firsthad a European theme:Europe and intellectualproperty, from a legal oreconomic point of view.The second topic had agreen theme: intellectualproperty rights and

green technologies. A final theme was:counterfeit seizure (saisie-contrefaçon):comparative analysis of at least twoEuropean countries.

This year the Academic Prize wasplanned by two members of the OrganisingCommittee Paris 2010: Denis Monegier duSorbier and Béatrice Thomas. The jury waschaired by Professor Michel Vivant.

The competition is open to both stu-dents and professionals working on IPmatters. ■

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News

2 AIPPI CONGRESS NEWS Monday 4 October 2010

Green tech paper winsAcademic PrizeQUESTION: WHAT DO YOU HOPE TO

ACHIEVE AT THIS YEAR’S CONGRESS?Coming from the US, Ihope to get an update onthe international IP world.We don’t necessarily getinformation about what’sgoing on in Europe andAsia on a regular basis,

so it’s a good way to catch up. Talivaldis Cepuritis, Olson & Cepuritis, US

This is my first timeattending the Congress – Iwas part of the workinggroup on the protection oftrade secrets, so I’mattending to get an idea ofhow the issues are debated

and how the resolution process works.Banu Barbur, Deris Attorney at LawPartnership, Turkey

I came to learn about theefforts being made in theinternational forum toachieve unification of thepatent systems. Patentsystems are very polarisedright now, particularly with

respect to issues such as protectingtraditional knowledge. D Calab Gabriel, K&S Partners, India

I’ve been nominated to bevice president of AIPPI US,so I hope to get to knowpeople while I’m here, andthat I’ll be able to carryforward the experience I’vegained from my presidency

with AIPLA to help grow the Association.Alan Kasper, Sughrue Mion, US

I’m hoping to gain insightinto how European IPlawyers are dealing with the protection of brands on social networking siteslike Facebook, Twitter andLinkedIn. There are so many

trade mark issues devloping so quickly.Mila Federis, Federis & Associates,Philippines

I hope to expand mycontacts and meetcolleagues, but also todiscuss issues surroundingmicro and nanotechnologies, which areintegral to the future of

business. Noriyasu Ikeda, Aspire InternationalPatent Firm, Japan

This is my first time hereand my objective is tomeet as many foreigncolleagues as possible -and of course, the locationwas part of the draw. Martin Szczepaniak,

McFadden Fincham, Canada

As a first-time attendee,my goal is to meet withcolleagues and to learntheir views on issues suchas patent and trade markprosecution Deborah Camargo

Mariano, Nascimento Advogados, Brazil

I am looking forward tomeeting people and making new contacts. I am interested in pharma,chemical and biotech IPissues so I would like to get some more information

on these topics over the next few days.Wolfgang Ritthaler, Winter Brandl &Partner, Germany

The priority for me is tomake more businessrelationships and to findout what’s new in the fieldof patents in particular. I amaiming to attend all thepatent sessions. I would

also like to see a bit of Paris while I’m here. Abdelhafeez Ali, SMAS IntellectualProperty, Saudi Arabia

VVOOXXPOP

On the sun-soaked terrace of Café de l’Homme guests sipped champagne at a receptionhosted by Bristows, Hengeler Mueller, Trevisan & Cuonzo and Rospatt Osten Pross

New AIPPI members wasted no time in getting down to networking at yesterday’sFirst -Time Attendees meeting in the Maillot room

The questions to be discussed at next year’s Forum & Executive Committee Meetingin Hyderabad were presented and summarised by the reporters in charge during yes-terday’s Executive Committee session.

Thierry Calame, AIPPI deputy reporter general, explained that the questions are normallyintroduced one year early in order to give participants plenty of time to provide comments. Heurged everyone present to answer the questions.

The four questions to be discussed are:1) Q 216(b) – Exceptions to copyright infringement, specifically transient copying, private

copying and levies, hypertext links, search engines and user generated content.2) Q 217 – A continuation of the inventive step discussion, with respect to patent office crite-

rion for a finding of non-obviousness.3) Q 218 – Genuine use requirements for trade marks.4) Q 219 – The role of injunctions in infringement of IPRs. The meeting in Hyderabad, India will take place October 13 – 19 next year.

Hyderabad questions introduced

AIPPI CONGRESS NEWS Monday 4 October 2010 3

News

■■ EUROPEAN PATENT OFFICEFriday was the deadline forfiling divisional applicationsfor many older EPO patents,as a result of changes intro-duced with effect from April1 this year that mean divi-sionals can only be filed with-in two years of the first com-munication from the Office.In the run up to Friday’sdeadline the EPO wasbelieved to be receiving two

to three times the normalnumber of applications eachday. However, apart from abrief period on Thursdayafternoon, its systemsremained robust.

■ JAPAN The 11th round ofnegotiations over the Anti-Counterfeiting TradeAgreement ended in Tokyo onOctober 2. A joint statementfrom all the negotiators statesthat they have “constructively

resolved nearly all substantiveissues and produced a consol-idated and largely finalisedtext of the proposed agree-ment”. They have agreed towork “expeditiously” toresolve the issues that remain.

■■ RUSSIA After a phone callbetween US President BarackObama and Russian PresidentDmitry Medvedev on Friday,the US said that Russia hadmet a number of the require-

ments necessary to join theWorld Trade Organization,including introducing effectiveIP protection. The movebrings Russian membership ofthe WTO closer.

■■ UNITED KINGDOM Newrules for the Patents CountyCourt came into force onFriday. The rules aim toimprove case managementand introduce a cap on feesthat can be recovered. Colin

Birss QC has been appointedas the Court’s new judge,succeeding Michael Fysh.

■■ UNITED STATES On FridayMicrosoft sued Motorola inthe US International TradeCommission and in a federalcourt in Seattle, alleging thatits Android phones infringenine patents. Both Motorolaand Google (which developedthe Android operating system)refuted the allegations.

IP news in brief

Are you pleased with how the membership hasdeveloped over your presidency?Yes, I’m particularly pleased that this meeting in Paris will bethe most successful we’ve ever had in terms of attendees, withover 2000 people coming. It is the biggest in 40 years. Is itbecause we have the opening ceremony at the Palais desCongrès and the Gala Dinner at the Versailles Orangery?Perhaps, but I don’t mind.

Overall membership of AIPPI has been pretty static ataround 9,000 members. That’s below the 10,000 or 12,000we would like to aim for, but then again AIPPI is not the kindof association that needs to grow like others – its strength isin the quality of the resolutions and its more academic work.AIPPI is still the largest IP organisation in the world, repre-senting over 100 countries, and yet it can create consensusaround tricky issues.

Is it a balance that is hard to maintain?Absolutely, but we feel that the open discussion goes someway to achieve that. In particular, it is difficult to keep bothsides of the IP holders and users in alignment. Free marketsand free competition are our focus.

We have also grown a little geographically, which helps.Japan is our largest country in terms of members and Chinais number five, so representation there is strong.

When you started your term two years ago youmentioned that one of your priorities would betrying to get more young people involved. Howhas that gone?I think our new participants are younger than ever before,especially in Europe and in France, given that the conferenceis in Paris this year. Getting people involved is very much amatter of communication, of making sure people know whatwe do and what the benefits are of being involved. So work-ing harder from our point of view!

We’ve also improved communication through ournewsletters, which go out every two months usually. Thewebsite has not been developed quite as fast as I would haveliked; it could certainly be more attractive. But the regularcontact through e-mail is important.

You also mentioned two years ago that you werelooking forward to working closely with the newWIPO director general. Progress there has perhaps been a little slow, but FrancisGurry is very open-minded to input from IP professionals likeourselves. He will also be a speaker at our opening ceremony.

Hopefully a highlight of the Congress will also be theinternational judges’ panel that I am chairing this afternoon.This was first done in Boston in 2008 and proved very popu-lar. This year we have so far Chief Judge R Rader from theUS, M Numann of the Dutch Supreme Court, Dr Grabinskiof the Bundesgerichtshof, Mme S Mandel of the Cour de cas-sation and M A Girardet, the President of the Paris Court ofAppeals. We hope to add someone from Asia as well.

I was told over 800 people had already signed upfor the event in early September.Yes, I think this year’s event is going to build on the success inBoston. The discussion itself will be structured around three

questions on patents: can everything be patented? What ismeant by “the same invention”? And what are the conse-quences of revocation by an Office, or of the judiciary invalidat-ing a patent? I’ve sent out a questionnaire to the judges so theyare aware of the topics in advance, though we plan to discussthese questions at a philosophical rather than technical level.We will also touch on the role of a judge during these issues, the

role of the court, how the judge balances rights and obligations. Another big panel will be on patent litigation in Europe –

in fact I think this is likely to be the biggest session at theCongress. It is on the Wednesday morning.

What work by AIPPI in the past two years are youparticularly proud of?It was satisfying to be able to file an amicus brief with the USSupreme Court over the patentability of software and thesame with the Enlarged Board of Appeal at the EPO, eachtime within a month. Our special committee was able to putsomething together summarising previous resolutions on thequestions, and to meet people involved with both cases.

Were you able to be involved personally withthose briefs?Unfortunately not, the role of the President means that I only seea lot of these issues from a high level. But I was involved morewith our work on legal privilege. WIPO led that work, engagingin discussions around the world with politicians and local indus-try associations. Many countries don’t have the principle of legalprivilege in their profession, so there was a fair amount ofexplaining to do as well as compromises to be found where intro-ducing privilege outright was obviously not going to work.

We have been supporting WIPO in this work and contin-ue to do so, through for example talking to our membersabout privilege in their countries, how it works and what wemight learn for this global project. For WIPO, and the WTOas well, objective information from AIPPI and its members isextremely useful and a cost-efficient way to gather data quick-ly and easily. Both organisations also tend to be more bound-up by political concerns, so an independent view from practi-tioners is something they can’t easily access.

How many air miles did you accumulate cover inyour two years?A lot. At the beginning of my term I was focused on LatinAmerica and did a roadshow down there, trying to increaseawareness of AIPPI. Later on I did a fair amount of travellingacross Europe, including Poland and central Europe, strength-ening ties between countries in particular. But I got almosteverywhere in the end, including China and the rest of Asia.

Are you looking forward to the end of your term?I have to say I am rather looking forward to the last eveningof the last day of the conference, when I hand over to the newpresident, Yoon Bae Kim. It’s been a great two years but it israther a lot of work.

What advice would you have for the incomingpresident?I’m sure he will be able to pursue the engagement of AIPPI inAsia, which will be great for the organisation. After all organ-ising events and communication with Asia from Europe isnot that easy so this will be a big help.

What do you plan to do when you leave?Well, first I need a vacation. Then I will get back to servingmy clients. I have very supportive partners – AIPPI alwaysseems to take up at least half of the president’s time, so thatkind of support can be difficult. ■

A younger, more active assocationAt the end of his term as president, Thierry Mollet-Viéville tells Simon Crompton how proud he is of AIPPI’sdevelopment among younger practitioners and its involvement with both WIPO and the US Supreme Court

Interview Thierry Mollet-Viéville, AIPPI President


Thierry is a patent litigator in Paris. At the beginningof his career, from 1970 to 1984, he worked with thefamous French litigator Paul Mathély before establish-ing Duclos, Thorne, Mollet-Viéville & associés withseveral colleagues in 1984.

He was a rapporteur with AIPPI for 12 years, from1980 to 1992, became vice-president in 2006 and presi-dent in 2008. He has also been editor of Les Annalesde la Propriété Industrielle, Littéraire et Artistique(1973-1984) and secretary (1994), vice-president (1999)and president (2006) of the French Association for theProtection of Industrial Property (AFPPI).

He says his partners have been very understandingduring his AIPPI presidency: “I haven’t been involvedin many big cases in the past two years, but I alreadyhave several cases to be tried before the court nextmonth.” He adds: “While it will be nice to get back toprivate practice, I will also miss working with an asso-ciation that I love.”

Thierry Mollet-Vieville: a life in IP

“Objective information from AIPPI and its members is extremely useful and a cost-efficient way to gather data quickly and easily”

Win tickets to the must-see Claude Monet exhibition! AIPPI Congress News is offering readers the chance to win two tickets to the Monet exhibition at the Grand Palais. To be enteredinto the draw, answer the following question by 5pm Tuesday: In which village west of Paris did Monet live and work?

Please email your answer, with your name and contact details, to [email protected] or bring your business card toexhibition stand 14. Tickets are for Wednesday afternoon, entry at 4.30 pm.

When it comes to the scope of patentable subjectmatter, 2010 has been a milestone year. In theUS, the Supreme Court issued its eleventh-hour

decision in Bilski v Kappos on June 28, clarifying that businessmethods remain patentable in the US – but leaving muchmore complex questions to be ironed out by the lower courts.Earlier in the year, the EU Enlarged Board of Appeal (EBA)was similarly elusive in its March decision G3/08, which wasissued in response to four questions referred in 2008 by then-President Alison Brimelow about the patentability of comput-er-implemented inventions (CII). Brimelow felt there wasconflicting jurisprudence among the EU Technical Boards ofAppeal, but in a 61-page decision the seven-member EnlargedBoard disagreed, deeming Brimelow’s questions inadmissible.Now, with the highest powers in each jurisdiction havingruled on the matter, both the EU and US patent communitiescan only stand by and hope for clarity as these issues continueto percolate through their respective judicial systems.

Business as usualFor all of the commotion, many practitioners view bothdecisions as having changed very little in the end. In Bilski,the Supreme Court affirmed the US Court of Appeals forthe Federal Circuit’s view that the invention at issue – abusiness method (see box) – did not constitute patent-eli-gible subject matter because it was geared to an abstractidea. However, it also struck down the Federal Circuit’smachine-or-transformation test as the sole test for deter-mining patent eligibility and reprimanded the lower courtfor creating a too-restrictive test. The opinion did not cre-ate a new test for determining patent eligibility, but encour-aged the Federal Circuit to develop “other limiting criteriathat further the purposes of the Patent Act and are notinconsistent with its text”. While some were frustrated bythe ambiguity of the decision, most were relieved to discov-er software and business methods still patentable after avery long wait.

“It’s business as usual for us,” says Tanguy deCarbonnières, who is associate general counsel at FannieMae and one of two panellists who will be speaking intoday’s Workshop I: “Recent developments regarding thepatentability of business methods”. De Carbonnières willbe discussing the Bilski decision from an in-house perspec-tive, as well as providing insight into Fannie Mae’sapproach to patenting and its portfolio (which he says isfewer than 30 patents). All in all, de Carbonnières says

that the Bilski decision was somewhat expected, and theelimination of the machine-or-transformation (MOT)test as the sole test for determining patent-eligible subjectmatter will mean very little for most in his industry. “Thisis where it becomes very partial,” says de Carbonnières.“It’s a matter of whether or not you believe in businessmethods to begin with. If you’re a patent aggregator, yes,you want the MOT test to be gone. But financial servicescompanies are not strong believers in business methodspatents in the first place.”

For that reason, although he is tracking related cases suchas Mayo v Prometheus (see box) at the Federal Circuit out ofpersonal interest, de Carbonnières says that “it will have verylittle impact” for many financial services companies.

Doubt remains over business methodsToday’s workshop on business method patentability will focus on twoblockbuster decisions in the US and EU. Eileen McDermott previews thetopics to be discussed

Feature Business methods


A method for managing the consumption risk costs ofa commodity sold by a commodity provider at a fixedprice comprising the steps of:a) initiating a series of transactions between said com-

modity provider and consumers of said commoditywherein said consumers purchase said commodity at afixed rate based upon historical averages, said fixedrate corresponding to a risk position of said consumer;

b) identifying market participants for said commodityhaving a counter-risk position to said consumers; and

c) initiating a series of transactions between saidcommodity provider and said market participantsat a second fixed rate such that said series of mar-ket participant transactions balances.

The Bilski claim

“Financial services companies arenot strong believers in businessmethods patents in the firstplace”

Getting technicalIn its decision G3/08, the EBA dismissed Brimelow’s fourquestions (see box) as inadmissible, but set out its views in a61-page opinion nonetheless. While the opinion clarified theEBA’s position, it did little to resolve Brimelow’s questions,which many EU patent practitioners have long shared.

André Klein of the EPO will provide background on theEBA decision in today’s workshop, as well as weigh in on itsimplications beyond CII. Klein says that the EBA clarified inits opinion that a computer program must have had “furthertechnical considerations” beyond merely finding a computeralgorithm to carry out some procedure in order to have tech-nical character, as required to be patentable.

Articles 52 (2) (c) and (3) of the European Patent

Convention say that computer programs “as such” areexcluded from patentability. However, programs arepatentable if they bring about a “technical effect”.

“What exactly constitutes that technical effect remains tobe seen,” says JA Faria Correa of Dannemann Siemsen inBrazil, who will chair today’s workshop.

While the questions considered by the EBA were confined toCII, Klein says that “the same principles are at present consis-tently applied by the Boards of Appeal in connection with inven-tions involving other excluded subject matter”, including busi-ness methods. So, as European patentees wait for the case law todevelop toward a better definition of technical effect, non-obvi-ousness – or inventive step – for now seems to remain the chiefconsideration for getting a patent on CII and related inventions.

In light of these two decisions, many European patentattorneys are advising businesses to start seeking patent pro-tection for business methods and software in the US, wherethe standards for patentability remain much more lenientthan in the EU after Bilski. In testament to this, following theBilski decision, the rate of business method patents beinggranted has skyrocketed.

And while de Carbonnières says that the SupremeCourt’s decision may make it slightly more difficult for“pure business methods” to get past the USPTO, the num-ber of business method patents being allowed certainlysuggests companies will at least have better odds in the USthan the EU. Says de Carbonnières: “The floodgates havebeen opened.” ■

FeatureBusiness methods


Two cases were remanded back tothe Federal Circuit following the Bilskidecision: Prometheus v Mayo andClassen v Biogen. Last month, theFederal Circuit asked the parties inPrometheus to file briefs consideringhow the Bilski decision has an impacton their case. These two cases, plusanother case on gene patents(Association for Molecular Pathologyet al v Myriad Genetics) also pendingbefore the Federal Circuit could fur-ther clarify some of the loomingquestions left post-Bilski, specifically

with respect to how the SupremeCourt’s judgment should be appliedto so-called unpredictable arts suchas life sciences.

Prometheus v Mayo A US districtcourt agreed with Mayo’s argumentin the claim construction hearing thatPrometheus’s patents attempted toclaim “the correlations between cer-tain thiopurine drug metabolite levelsand therapeutic efficacy and toxicity”,and that these correlations constitut-ed natural phenomena. But, after theFederal Circuit’s 2008 decision in

Bilski, Prometheus argued in itsappeal that its claims satisfied bothprongs of the machine-or-transforma-tion test, as they relied on numerousmachines and also resulted in severaltransformations. The Federal Circuitagreed, but now must reconsider thecase in light of the Supreme Court’sruling.

In Classen v Biogen, a patent cov-ering diagnostic method claims wasrejected by the Federal Circuit inDecember 2008 based on themachine-or-transformation test.

All eyes on the Federal Circuit

1. Can a computer program only be excluded as acomputer program as such if it is explicitlyclaimed as a computer program?

2. Can a claim in the area of computer programsavoid exclusion under Art. 52(2)(c) and (3)merely by explicitly mentioning the use of acomputer or a computer-readable data storagemedium?

3. Must a claimed feature cause a technical effecton a physical entity in the real world in order tocontribute to the technical character of theclaim?

4. Does the activity of programming a computernecessarily involve technical considerations?

Brimelow’s questions

The question of inventive step in patent law is not aneasy one, and to an extent the AIPPI has been avoid-ing it in recent years. “We had to deal with perhaps

simpler but also more urgent issues,” says Dariusz Szleper ofGaultier Lakits Szleper, the reporter for Question 213 at thisyear’s Congress: “The person skilled in the art in the con-text of the inventive step”. “This question is a horribly dif-ficult one,” Szleper adds. “The diversity of the answersmakes the attempt to present a summary particularlycomplex, even perilous.”

Question 35, posed at the London Congress in 1960and producing a resolution at the 1963 Berlin Congress,dealt with some aspects of inventive step when it pro-posed the “method and preparation of a study on theunification of law on patents for invention”. Then therewas Question 126, concerning the methods and princi-ples of novelty evaluation in patent law, which was debat-ed during the Montreal Congress in 1995.

And more recently, during the Geneva Congress in2004, Berlin executive committee meeting in 2005 andGothenburg Congress in 2006, AIPPI worked on the reso-lutions related to Question 180: “Content and relevance ofindustrial applicability and/or utility requirements forpatentability”. But the working guidelines this year admit itis surprising that inventive step and, more specifically, thedefinition of the person skilled in the art, has not been stud-ied.

Having finally decided last year in Buenos Aires to tacklethe topic, the AIPPI executive committee decided to break itinto several parts. The question this year focuses on the roleof the person skilled in the art; next year it is hoped to look atthe question of obviousness. The decision by the committeewas also driven by international events: “There was no specif-ic trigger, but we felt generally that the issue of patentabilityhad assumed greater importance over the past few years,”says Szleper.

When AIPPI Congress News spoke to Szleper, he had justgiven over his weekend to finishing off the summary reportfor Question 213. He estimates that it took six full days ofwork to complete the summary. “When I started doing this10 years ago, there were usually 26 submissions from the var-ious countries; this year there were 41 for my question. It’sgreat for AIPPI and our mission to create global consensusaround these issues, but it does mean the work takes a bitlonger,” he says.

The bones of contentionOne of the most difficult issues will be the personal capacitiesand attributes of the person skilled in the art. Does the personhave reasoning and/or creative capacities, or merely thecapacity to perform the orders or instructions of others? Arethe person’s attributes the same in other circumstanceswhere he has a role, such as the construction of the patent orthe consideration of the sufficiency of the disclosure? Andfinally, are his attributes the same for different IP rights cov-ering technical creations, like patents or utility models?

The working guidelines admit that the second of these ques-tions might be beyond the capacity of this particular study. Andit looks likely that the first will be the biggest talking point. “Thequestion of whether the person skilled in the art has creativeability or just executes the orders of others is one on which itlooks unlikely we will achieve any consensus,” says Szleper. The

group in favour of not assuming any creative abilities is in theslight majority, including China, Sweden, Switzerland and UK.But Japan, Israel and several others disagree, each specifying dif-ferent examples of creative activities.

One point where consensus may be found after discussionis the question of whether the person skilled in the art has tobe one person, or can be a group of people. Looking throughthe national reports, it seems that those that say their coun-try’s law is interpreted literally, as just one person, are alsothose with relatively little case law on the subject. Theseincluded South Korea, Poland, Panama, Chile, Bulgaria andAustria. In those countries there has been little discussion onthe subject domestically and perhaps less realisation of how itcould be considered to describe a group of people. Withoutsuch case law it also means the multi-person interpretationhas not been ruled out, just simply not considered. “Generallywhen people explain what does and doesn’t work with theirnational law it creates a good basis for mutual understandingand then to reach consensus,” comments Szleper.

There is of course a follow-up question, which may be toospecific for the final resolution, given the international dis-parity on the first point, which is: “If a skilled person is a teamof people, then are the team members all the same or maythey be different in their various attributes, specifically if sucha team may comprise persons from various disciplines or hav-ing different levels of qualifications?” While most countriesreport that the team can be multi-disciplinary, Indonesia andSwitzerland disagree.

A less divisive issue will be the nature of the knowledgethat the person skilled in the art is assumed to have. Thisdivides into two parts: the level of qualifications and thescope of his knowledge. The latter, more precisely, considershis capacity to understand and analyse the documents he hasaccess to, referred to as his “general knowledge”. And thequestion refines that further to four areas: the scope ofknowledge generally; whether the knowledge is limited to

general technical training; to what extent access to articles orprior patents is included; and whether the knowledgeincludes information the person can readily look up.

“The consensus seems to be that the person’s knowledgein his field is assumed to be very broad, very general,” saysSzleper. “And what is interesting is that people accept the linkbetween the knowledge of the person and the knowledge thatperson has access to through modern means of communica-tion.” Britain, Israel and Argentina hold this position, forexample, though Singapore and Canada both have exceptions– for existing patents and industry publications respectively.

This is “probably the most complicated area”, admitsSzleper, as several other issues branch off from it – the tech-nical domain or art in which the skills are performed; whetherit’s concentrated in one or several areas; and whether the skillhas to be practical or can be theoretical.

One conclusion from the country submissions was adesire that in treating patentability questions, the courts andpatent offices give a very clear and complete definition of theskilled person in the art. Some countries report that they suf-fer because this concept remains at a very theoretical level,and there is a refusal to tackle it specifically in cases wherepatentability is considered. “There is a universal recognition

of the importance of the precise definition of skills, attrib-utes, knowledge of the skilled person in each case wherea decision on patentability is needed,” says Szleper.

Other areas that will be discussed are the moment atwhich a person’s skills are evaluated: when the validity of

the patent is considered (so the priority date) or when it isassessed by a judge, for example in infringement proceedings.Also to be considered is who assesses the person’s skills –what role does the opinion of experts have?

An important beastQuestion 213 is clearly a many-headed beast. But the execu-tive board of AIPPI is unequivocal in its opinion of the issue’simportance. Over time economic development calls intoquestion the adequacy of patent systems; at the same time,technology advance commands the re-evaluation of patentlaw. Central to this evaluation is the notion of inventive step,and key to that notion is the person whose attitude and behav-iour establishes the standard to determine an inventive step.

“There has been a real concern in the past few years aboutthe acceptable level of patentability of inventions. That leadsinevitably to discussions about inventive step and then to astudy of the person skilled in the art. There was a feeling thatwe needed to harmonise thinking on this point,” says Szleper.

The fictitious person is used at several stages of assessing apatent: during the examination of the application, in post-grantproceedings if the patent is challenged, in the context of claimconstruction and in assessing the sufficiency of disclosure.

The practice of research and innovation can also changeover time, in the same way as technological development.Today inventions are rarely the fruit of a single person’sefforts, but more often the work of a team: joint researchbetween companies and universities, research teams com-missioned by private investors collaborating with companiesin other fields of technology.

So the question of whether the person skilled in the art has tobe just one person has become more important. Indeed,although only Estonia and Indonesia fully support this position,it could be argued that the appreciation of the inventive stepshould be done in concreto, assessing the factual situation inwhich the inventor puts himself. The Belgian and Finnishreports, while accepting that the person is fictitious, suggest thatthe image of him should be influenced by his “economic reality”.

Given the complexity of the issue, is Szleper optimisticthat he and his colleagues will be able to vote through astrong resolution? “Yes, I am. This is my eleventh summaryreport for a question and the previous 10 all led to the adop-tion of a resolution. And I was pleased with the substance ofall of them.” ■

Who is the person skilled in the art?Visions of the “person skilled in the art” in questions of inventive step vary considerably around the world. SimonCrompton explains the difficult job today’s session on the subject will have in producing a meaningful resolution

Preview Person skilled in the art


“We felt generally that the issue of patentability had assumed greater importance over the past few years”

As one of the co-chairs of the Congress organis-ing committee, what do you think the highlightsof the week will be? The main theme of this Congress is “France in Europe”. Weinvited many of the heads of AIPPI national groups in Europe tocontribute ideas and we had a lot of input from them about whatwe should include to make this a truly European event.

Of course intellectual property covers a wide range of top-ics from patents to trade secrets and from trade marks todesigns and our members have a wide range of interests so wehave tried to reflect that in the programme. Some of the ses-sions deal with quite specialist issues related to technology,while some deal with very legal issues. We have tried to coverthe full spectrum.

Personally, I am looking forward to two sessions on litiga-tion. The first is looking at the issue from an international per-spective and the participants include the new chief judge of theCourt of Appeals for the Federal Circuit in the US, RandallRader; Klaus Grabinski, presiding judge of one of the twopatent litigation divisions of the District Court in Düsseldorf;and Lord Justice Jacob of the Court of Appeal in the UK. We’realso set to have judges from India and China on the panel too,which should make for a really interesting discussion.

The second is a panel discussion between a group ofEuropean attorneys. The workshop will be co-chaired by aFrench judge and myself. It is good timing, given the propos-als that are on the table for a European patent litigation sys-

tem. I am looking forward to hearing how European judgesapproach the same problems.

What do you particularly like about the AIPPI? I’ve been involved in a number of groups considering IP poli-cy and each of them has a different focus. The LES, for exam-ple, obviously focuses most of its attention on licensing issues.The AIPPI takes a more legal approach. By that, I mean that ittries to find legal solutions to improve harmonisation.

Are there any hot topics that that Congress willaddress this year?For me, one really hot topic is the issue of know-how andtrade secrets. This is most often addressed in the context ofpatents. Within companies, much of our business relates totrade secrets but I believe that they are rarely valued highlyenough by companies. The protection that national lawsoffer trade secrets differs quite widely: some offer a goodamount of protection while others offer very little. I hope thatthe AIPPI can reach a resolution on this issue after studyingnational reports prepared by representatives from our mem-ber states. We can then take it forward to bodies such asWIPO and try and persuade them to do more to harmoniserules in this area.

It is a topic that has a great deal of relevance for business.When one company starts talks with another about a poten-tial project, they usually sign confidentiality agreements and

hope that they can share enough information to make theproject viable. But what happens when one side reveals ormisuses secret information about the other? If businesses feelthat they cannot share information because there are nogood, enforceable remedies for a breach of a confidentialityagreement then it can really chill business.

As a long-time Paris resident, what recommenda-tions do you have for those attending theCongress? There are lots of exhibitions in Paris, including the biggestexhibition of Monet ever organised in the world and gettingaround the city by public transport is very easy, at least whenthere are no strikes – and we aren’t expecting any during theCongress! The AIPPI will be hosting a fantastic dinner inVersailles – it has proved so popular that we have had toarrange to change the room we will hold it in to accommo-date everyone. Christine Lagarde, the French economicsminister, has told us that she very much hopes to attend. Shewill be flying into Paris between meetings in Moscow andWashington DC, so I hope that she can make it.

We have Francis Gurry of WIPO, Benoît Battistelli andthe new head of the French IP office, Yves Lapierre, speakingon a panel at the opening ceremony. Lapierre is from indus-try and not an IP specialist, so I think it will be very interest-ing to hear his plans for the Office. I think this is a session thateveryone really should attend.

Improving harmonisation through Congress co-chair Thierry Sueur is one of the most familiar faces in IP in Europe, thanks to his work on behalf ofpatent owners in France and beyond. Emma Barraclough spoke to him about topics including trade secrets, patentlitigation, competition – and how to have a good time in Paris

Interview Thierry Sueur


What are some of the big IP topics in Europethat practitioners should watch out for? There have been some recent developments related to theproposed EU patent and the European patent litigation sys-tem. The views of the Advocates General [who provide legaladvice in the form of an opinion] of the Court of Justice ofthe EU were published recently. The first reaction to theiropinion was quite negative, because the Advocates General(AG) said that some of the proposals were not in line withthe EU treaties. But I think that was a very negative interpre-tation. They didn’t say no. Instead, they said that the propos-als did not pay enough attention to the need for EU law to beparamount. Those are rather technical concerns that couldbe resolved relatively easily. The AG also had some concernsabout the accountability of the European Patent Office.Resolving those should not require a change to the EuropeanPatent Convention, but again, that is something that is possi-ble to achieve. I believe that even if the Court of Justice doesfollow the AG’s opinion, then the EPO would be able torespond to its concerns. We had expected a “yes but”, butnow it looks like the Court may say “no, unless”. The Courtis expected to issue its decision by the end of the year, so wemay get an answer very shortly.

There are still concerns relating to language that are hold-ing up developments on the proposals for a European patent.Most EU member states support it, but not all. Having a sin-gle patent right covering the whole of Europe is still a priori-ty for business. The European Commissioner in charge ofthis project, Michel Barnier, has said that the Europeanpatent is an important goal to achieve. When he says some-thing he is very serious about it, so I remain optimistic, butrealistic.

What about developments in trade marks? The Commission is now reviewing the EU enforcementdirective by looking at how member states have been imple-menting the rules nationally. It is a good idea to checkwhether the directive is delivering what it promised. It will bevery interesting to see what the Commission will ultimatelydo: whether it proposes to modify the directive.

Is there anything else we should be following? Of course these are also interesting times for Europe becauseour two regional IP offices have new leaders: BenoîtBattistelli took over at the EPO in July, and AntonioCampinos, the head of the Portuguese IP office, became thenew president of OHIM at the start of October.

I think practitioners should also follow developments onthe European rules on licences and standards setting.Speaking frankly, this is something that makes me a littlenervous. European officials are looking at the relationshipbetween IP and competition in these areas. The Europeanapproach to this question is rather different to that in the US.To give you an example, a few years ago I attended a meetingat which the then European competition commissionerMario Monti and the then head of antitrust at the USDepartment of Justice, Charles James, spoke. When askedabout IP and competition, James said that IP was generallygood for competition but could occasionally be a problem.Monti said that IP was generally a problem for competitionbut could occasionally be good. I think that is a good summa-ry of the different approaches on each side of the Atlantic. Iwould really like to see policy makers in Europe take a moreeconomic approach to the issue, to see how intellectual prop-erty actually benefits competition. ■

legal solutions


Thierry Sueur Interview

Thierry SueurVice-president, intellectual propertyand vice-president,European andInternational Affairs,Air LiquideThierry Sueur studied chemi-cal engineering before qualify-ing as a European patent attorney. After a nine-yearstint in private practice, he joined Thomson in 1984 asvice-president of intellectual property before movingto industrial gas company Air Liquide in 1992.

In addition to his in-house work, Sueur has beenactive in a range of French, European and internation-al patent policy debates through his work in a numberof IP and business organisations. He was president ofLES International in 2002, chairs the IP committee ofthe French industry federation MEDEF, is vice-chair ofthe patent working group of BusinessEurope, is vice-chair of the board of the French Patent office, a mem-ber of a body that advises the French Industry Ministeron IP issues and a member of the board of directorsof US IP owners’ association IPO.

Thierry Sueur has served as chair of the AIPPI’sprogramme committee and this year he is presidentof the French group of AIPPI as well as one of theco-chairs (along with Denis Monégier du Sorbier) ofthe Congress organising committee.

From The Wire to the West Wing, any fan of TV dra-mas will be able to tell you that communicationsbetween a client and their lawyer should remain priv-

ileged. But in the international world of IP litigation, thingsare never that simple. The rules around when privilegeapplies and when it doesn’t are complex enough to have con-fused a (fictional) US president (see box) and many lawyersoperating in the real world.

In IP the issue is complicated further by the existenceof patent and trade mark attorneys who may belong to aprofessional organisation but are not lawyers. Add to thisthe uniquely international nature of IP, with many dis-putes being fought in numerous jurisdictions at the sametime, and you have a serious headache for IP owners andpractitioners.

The result is confusion, uncertainty and limitations on thelevel of international IP advice that clients are prepared to askfor and lawyers are prepared to give. “Lawyers are saying to

the boardroom: ‘We can’t put advice in writing, we can onlycome and tell you something,’” says Michael Dowling, AIPPImember of honour and chairman of Question 199 on privi-lege. Dowling will be updating members on AIPPI’s efforts toresearch this complex problem and to push for a universalsolution at WIPO during the Congress this year.

Why privilege matters The concept of privilege was developed to ensure that lawyerscould give full and frank advice to their clients without prejudic-ing any future litigation. In common law countries it generallytakes two forms: litigation privilege, which covers all communi-cations between a legal advisor and client relating to litigation,and legal advice privilege, which covers communications for thedominant purpose of giving legal advice. In civil law countries,communications between a lawyer and client are covered byprofessional secrecy laws. Civil law countries also generally donot have such a demanding process of discovery.

Some countries have extended privilege to other advisorssuch as patent attorneys or trade mark agents, while othershave kept a narrow definition. Some countries have alsoextended the definition to cover advice provided by in-housecounsel, while others have not.

The differences between systems create a number of prob-lems for IP owners. First, the Court of Justice of the EuropeanUnion ruled last month that, in the field of competition law,internal communications with in-house lawyers are not cov-

ered by legal professional privilege (see box) as part of aEuropean Commission investigation into Akzo NobelChemicals. Although the decision refers only to competitioncases, these often involve IP, especially patent licensing agree-ments, and the threat this decision poses to IP owners is clear.

In addition to the problem of in-house legal advice beingdenied privilege, there is the problem that courts are often

Why privilege rules need reformAIPPI is presenting the results of a survey it has carried out on the positionof privilege in different countries as part of a push to move the matter up theagenda at WIPO. Peter Ollier reports

Feature Privilege


�White House Counsel Oliver Babish: Okaysir, uh... before we go any further, there’ssomething I want to make sure is absolutelyclear. �US President Josiah Bartlet: What’s that? Babish: You and I don’t enjoy attorney-clientprivilege. Bartlet: [to Leo] What’s he talking about? �Leo McGarry: He’s a government lawyer. Theprivilege doesn’t exist. Babish: So you want to be very careful aboutwhat you say in this room right now, MrPresident, because if subpoenaed to give adeposition, I’m not going to lie under oath. Bartlet: I don’t want to be careful about what Isay in this room. Babish: Well, then we should end this meetingand you should retain private counsel.

From Bad Moon Rising, season two, episode 19 ofThe West Wing. Teleplay by Aaron Sorkin, story byFelicia Willson, directed by Bill Johnson

Presidential privilege in the West Wing

“Lawyers are sayingto the boardroom:‘We can’t putadvice in writing” Michael Dowling

13th Fl., 27 Sec. 3, Chung San N. Rd., Taipei 104, Taiwan, R.O.C.Tel: 886-2-25856688 Fax: 886-2-25989900/25978989Email: [email protected] www.deepnfar.com.tw

ProsecutionInfringementLitigationIP

happy to award privilege to communications with patentattorneys in their own country, but are far less likely to do sofor communication with overseas patent attorneys.

The problem is not going to go away by itself. In the lasttwo months Managing IP has published articles by Australianand Canadian lawyers highlighting the difficulty of maintain-ing privilege in IP litigation. In Australia, in the case of EliLilly v Pfizer the judge ruled that the section of Australia’sPatent Act granting privilege to communications with regis-tered patent attorneys only applies to Australian patent attor-neys and ordered Pfizer to produce two documents providedby the inventor to Pfizer’s in-house attorney in the UK. InCanada, there has even been confusion over whether privi-lege should be awarded to communications from domesticpatent agents and, as Dowling says: “The chain is only asstrong as its weakest link.”

Towards a solution – AIPPI’s effortsWhile the problem is easy to define, the solution is far lessclear cut. As expressed previously, IP practitioners in differ-ent jurisdictions experience the problem in various ways. Forexample, in civil law jurisdictions, which don’t have the samecomprehensive system of discovery during litigation, theproblem is less acute, although uncertainty over communica-tions with in-house counsel remains.

AIPPI has been working hard to try and push for a solu-tion on this issue. Question 199 – the Privilege Task Force –has sent out a special questionnaire to national and regionalgroups and obtained responses from 47 working groups. Itwill provide a summary of responses during this Congress.

The results make for interesting reading. In total, 96% of

Feature Privilege


Lawyers and business leaders haveexpressed their disappointment afterEurope’s top court ruled that only com-munications from outside counselshould be privileged in competitioncases. The Court of Justice of the EUruled last month that legal professionalprivilege does not extend to internalcompany communications with in-houselawyers in the area of European competi-tion law.

The decision in Akzo Nobel ChemicalsLtd v Commission means that legal adviceprovided by in-house lawyers employedby companies being investigated byCommission officials for breaching EUantitrust rules could be used against thebusiness.

The ruling could affect companieswhose patent licensing policies give riseto accusations that they amount to anabuse of a dominant position, or tocompanies targeted in so-called sec-toral enquiries, such as the one directedat the pharmaceutical industry in 2008.

“Although the decision will come asno particular surprise after theAdvocate General’s opinion, in-houselawyers and the businesses whichemploy them will no doubt be disap-pointed by the Court’s ruling,” said JoelSmith of the City of London LawSociety and a partner at Herbert Smith.“Unhelpfully, the decision questionsthe independence of in-house lawyers.”

Matthew Fell, director for competi-tive markets at the CBI, a UK industrylobby group, said: “We are very disap-pointed that the Court has not taken theopportunity to bring the 30-year-oldcase law up to date and recognise thefundamental role that in-house lawyersplay in competition law compliance.”

The Court reached its conclusionafter assessing whether advice fromlawyers on the payroll of companiescould be treated the same as advicefrom lawyers in private practice. Itdecided that in-house lawyers, despitebeing subject to professional ethical

obligations, do not enjoy the samedegree of independence from theiremployers as external lawyers.

But the decision only affects privilegein the context of an EU competition lawinvestigation led by the Commissionand does not affect the national laws ofprivilege that apply in litigation before amember state’s courts.

That means that in the UK, commu-nications from in-house lawyers aretreated the same as those from theircounterparts in private practice, as longas they are acting in their capacity aslawyers. Lawyers say that the Court’sdecision means that companies shouldconsider keeping internal legal adviceon competition law issues to a mini-mum. They should also decide whetherin-house counsel should avoid puttingany of the advice that they do provideinto writing. “The approach taken byEU law seems outmoded and many in-house lawyers will find it troubling andincomprehensible,” added Smith.

Lawyers criticise “troubling and incomprehensible” EU privilege rulingBy Emma Barraclough

Continued on page 14

respondents have stated that their jurisdiction has some kindof protection against the forcible disclosure of IP profession-al advice. But when it comes to extending this protection tooverseas IP professionals, 57% do to lawyers, 18% to lawyersand non-lawyer IP professionals and 25% do not extend theprotection at all. Asked whether the national protection pro-vided is adequate (not taking overseas protection intoaccount), 72% answered no.

The working groups were also asked about an AIPPI propos-al for an agreement on a minimum standards principle and a pro-posal that concentrated more on bringing European patentattorneys under privilege. For this question, 24% did not answer,53% supported the AIPPI proposal and 15% the alternative.

All eyes on WIPOGiven the international nature of the problem of loss of priv-ilege, a cross-border solution would be the most effectivesolution. AIPPI and other IP organisations have been work-ing with WIPO to try and find that solution.

They have made some progress. Privilege is one of sixitems that will be discussed at the next meeting of theStanding Committee on the law of Patents (SCP), which willtake place in Geneva from October 11 to October 15. Butobtaining agreement in WIPO is a long, drawn out and, somewould argue, futile process that is hindered by disputesbetween developed and developing countries. The SCP has aparticularly troubled history (see box).

During the previous discussions in January this year,India, Pakistan, Argentina and Venezuela all raised concerns.“Some are saying that this is an issue that needs to beaddressed at the national level,” says Tomoko Miyamoto,

head of the patent law section in WIPO’s Patents andInnovation Division. However, only Argentina stated that itwas against further studies and Dowling believes that moreeducation is needed to show how universal the problem is.“We are trying to get the developing countries to understandthat this is not an issue about which you should be trying toget something else on the agenda. They have the same prob-lem,” says Dowling, who admits that some developing coun-tries are “suspicious” of the issue.

This is shown by the response of India’s working group tothe latest AIPPI questionnaire, which stated that it is likelythat privilege does not apply to in-house lawyers or for com-munications involving non-lawyer patent attorneys, except

when the communication is made about current or pendinglitigation. Protection for non-lawyer overseas IP practitionersis also uncertain. Miyamoto says that at the next meeting thesix items on the agenda will be discussed “on an equal footingwithout any priority”.

A full WIPO treaty on the issue of privilege is unlikely.“Ultimately I would like them to pass some sort of resolutionthat recommends that countries adopt in their law a mecha-nism to prevent the forcible disclosure of IP professionaladvice,” says Dowling. Miyamoto points to previous examplesof these resolutions, such as three WIPO joint recommenda-tions on the protection of well-known trade marks, trade marklicences and the protection of marks on the internet. ■

Feature Privilege


WIPO’s Standing Committee on theLaw of Patents was founded in1998. Its main achievement so farhas been the Patent Law Treaty andits regulations on patent formalitiesand procedures. This was adoptedby a diplomatic conference on June1 2000 and entered into force onApril 28 2005. It has 25 contractingparties.

In May 2001 the SCP started dis-cussions on the Substantive PatentLaw Treaty, which looked at issuessuch as the definition of prior art,inventive step/non-obviousness and

the drafting of interpreta-tion of claims.Disagreement betweendeveloped and develop-ing countries over thistreaty was so acute thatthe SCP did not evenmeet between June 2005and June 2008, althoughan informal session washeld in June 2006.

At the meeting in January thisyear client-attorney privilege wasone of six items discussed, but noagreement was reached on how to

move forward and no fur-ther study of the issue willplace between now andthe next meeting.

The agenda for SCP 15includes “preliminarystudies” on client-attor-ney privilege as well as:standards and patents;exclusions frompatentable subject matter

and exceptions and limitations tothe rights; dissemination of patentinformation; and transfer of tech-nology.

WIPO’s Standing Committee on Patents – still standingContinued from page 13

Imagine that your client is a widget maker and secures abig order to manufacture a special kind of widget that isgoing to be used by another business as a component in

a much larger product. Your client cracks open theChampagne, cranks up the production lines and starts ship-ping thousands of widgets.

A year later, a rival company alleges that the new producton sale in the shops infringes its patents. So where does thatleave your client? Does it face an injunction? Will it be forcedto pay damages? The answer depends, of course, on thedetails of the case, but also, crucially, on where your client isbased, a fact that highlights the lack of harmonisation innational laws on contributory infringement for patents.

Now the AIPPI is working to reach a resolution on thesubject that should lead to more focused efforts to standard-ise national laws. Members first began work on the issue ofcontributory negligence some years ago and the reports theyreceived from national groups highlighted the widely varyingapproaches that legislators take around the world. Whilesome jurisdictions have no concept of contributory negli-gence for IP infringement at all, others apply it differently

depending on the type of intellectual property at the centre ofthe dispute.

That work resulted in the AIPPI Congress passing abroadly drawn resolution two years ago in Boston. Sincethen, national groups have narrowed their focus on the ruleson contributory infringement in the area of patents, an areawhere the law is most advanced and AIPPI felt it was worth-while to do follow-up work, says reporter Sarah Matheson ofAllens Arthur Robinson. The new study concentrated on theconditions for an act to qualify as a contributory infringe-ment; the relief available against contributory infringement;and issues of territoriality and applicable law. Nationalgroups were asked two sets of questions: one relating to thelaw in their own jurisdiction, and one about the kind of har-monisation they believe the AIPPI should press for.

Contributory infringement rules aroundthe worldThe responses the reporters received revealed the key differ-ences in approach to the concept of contributory infringe-ment of patents around the world. While there is some

degree of harmonisation within the European Union, forexample, the rules in Japan are very different. Some of the keyelements of different national laws are set out below.

United StatesSection 271 of the US patent law (35 USC) sets out thecountry’s rules on patent infringement, and includes provi-sions for determining whether an act should be treated as acontributory infringement, including where the act tookplace, whether the person alleged to have contributed to theinfringement knew that their act was infringing, and the sub-stantial non-infringing use of the component. The law saysthat someone who sells or supplies a “staple item or com-modity” that is suitable for substantial non-infringing usecannot be held liable for contributory infringement even ifthey knew of the intended infringing use.

In general, it does not matter whether the person accused ofcontributing to the infringement intended the invention to beput into effect. Instead, the courts will only consider whetherthe invention was, or might be, practised in the US. However,someone can be held liable for contributory infringement forsupplying a component which is intended to be combined out-side the US in a way that would put into effect the invention.But in a recent high-profile case, Microsoft v AT&T, the courtsaid that computer programs located outside the US that arecopied abroad from a master copy exported from the US arenot deemed to be components of a patented invention.

United KingdomThe rules in the UK on what constitutes contributory infringe-ment of a patent follow many of those set out in theCommunity Patent Convention. Although this is not in force inthe country, it does provide a framework that many EU mem-ber states have used as a basis for their own laws. Before an actcan be considered to be one of contributory infringement, itmust meet a so-called double territory test, which means thatthe product must have been supplied or offered in the UK sothat the invention can be put into effect there – a condition thatmany lawyers say provides a good level of legal certainty.

JapanJapanese patent law uses a concept of indirect infringement,and says that there are two theories about how it can be appliedin practice to third parties. The first is that a direct infringe-ment is necessary before there can be an indirect infringement(which is known as dependence theory). The second is thatthere can be an indirect infringement even if there has been nodirect infringement of a patent (known as independence theo-ry). The courts usually apply the first approach.

CanadaLike Japanese law, Canadian law does not share the sameconcept of contributory infringement of patents as thatadopted by many other jurisdictions. The country’s PatentAct does not expressly make parties liable for contributoryinfringement if they offer or supply a means for working aninvention. A party could be liable, however, under the doc-trine of inducing and procuring infringement. For this to hap-pen, three conditions must be met: first, the act of infringe-ment must be completed by the direct infringer; second, thecompleted act of infringement must have been influenced bythe seller; and third, the influence must knowingly be exer-cised by the seller, such that the seller knows that this influ-ence will result in the completion of the act of infringement.In addition, infringement can occur even if the third party didnot know about the patent in dispute because the party’sintention is irrelevant when determining whether there hasbeen any induced infringement. ■

Laws diverge over contributorypatent infringement

PreviewContributory infringement


Can a third party be found liable for helping to infringe a patent? That alldepends on where the infringement takes place, says Emma Barraclough

Now that national groups havereported the legal situation in theirown jurisdictions, the AIPPICongress will consider what form ofwording to include in a resolutiondesigned to increase harmonisationin the area of contributory infringe-ment of patents.

The rapporteurs for questionQ204P have suggested that theWorking Committee for this ques-tion consider whether members canreach consensus on the followingpoints, which have already receivedbacking from a number of nationalgroups: 1) It should be a condition for the

supply or offering of means toqualify as contributory patentinfringement that the means sup-plied or offered were suitable tobe put to a use that would putthe invention into effect.

2) If the means are also suitable tobe put to other uses not relatedto the invention, the intention ofthe supplier should be relevantto determining whether any rem-edy for contributory patentinfringement should be available,and the scope of such remedy.

3) It should be a condition for thesupply or offering of supply ofmeans to qualify as contributorypatent infringement that the per-son supplied intended, at thetime of being offered or receiv-ing the supply, to put the meansto an infringing use.

4) The test for determining whetheran element is essential, valuableor central should take as its start-ing point the ordinary principles

of claims construction andpatent infringement, such thatthe means must relate to thoseessential integers by which theinvention is realised or put intoeffect.

5) To the extent that the meanssupplied or offered are staplecommercial products, suchmeans should be treated differ-ently to means which are not sta-ple commercial products – possi-bilities include excluding suchmeans from providing the basisfor contributory patent infringe-ment at all, or requiring, as anadditional condition for the sup-ply or offering of means to quali-fy as contributory patentinfringement, that the supplierprovides instruction, recommen-dation or other inducement tothe person supplied to put thegoods supplied or offered to aninfringing use.

6) Injunctive relief should be avail-able against acts of contributoryinfringement. Should such reliefbe limited to the supply of themeans? If relief is to extend tomanufacture, in what circum-stances should it be available (ifat all)?

7) Should there be a ‘doubledomestic nexus’ or ‘double terri-toriality’ requirement such thatthe intended use of means foractual infringement is intendedto take place in the countrywhere the means is supplied oroffered?

8) If means suitable for being incor-porated into a patented product

are supplied by supplier X incountry A to person Y, where itwas known or obvious in the cir-cumstances to X that:

i) Y intended to export the meansto country B and complete theproduct in country B; and

ii) Y intended to export the com-pleted product into country A, Y should be regarded as havingintended to put the means to aninfringing use in country A byimporting and selling their prod-uct in country A, with the conse-quence that X is held liable forcontributory infringement incountry A by supplying themeans to Y.

9) In relation to determining wheremeans are supplied or offered,the considerations referred to inparagraph 3 of Part II) abovemight form the basis for a set ofnon-limiting factors to be takeninto account.

10)There should be no special rulesapplying to offers transmitted byelectronic devices or placed onthe internet.

The rapporteurs have recommend-ed the Working Committee formu-late a resolution that could helpthose countries that do not alreadyhave a law relating to contributoryinfringement of patents to intro-duce one by providing a frameworkfor doing so. They also suggestthat any resolution sets out whoselaw should apply in cases wheregoods that may contribute to theinfringement of a patent areexported from one country toanother.

The search for a solution

07:30 – 08:30 Breakfast RGT with Programme Committee 223M, Level 2.5

09:00 – 10:30 Plenary Session I - WQ204P Liability for contributory infringement of IPRs – certain aspects of Concorde, Level 4

patent infringement

09:00 – 10:30 Workshop I : Recent developments regarding the patentability of business methods Blue Amphitheatre, Level 2

09:00 – 10:30 Workshop II: Non-traditional trademarks, in particular 3D trademarks Maillot room, Level 2

10:30 – 11:00 Coffee break

11:00 – 12:30 Plenary Session I - WQ204P (continued) Concorde, Level 4

11:00 – 12:30 Workshop III: Patents and green technologies Blue Amphitheatre, Level 2

11:00 – 12:30 Workshop IV: The use of ADR in IP disputes Maillot room, Level 2

12:30 – 14:00 Working Lunch

12:30 – 14:00 Lunch Bureau with Guests Petite Étoile d’Or, Concorde Level 4

14:00 – 15:30 Plenary Session II - WQ213 The role of the skilled person in the context of the inventive step Concorde, Level 4

requirement regarding validity and infringement in patent law

14:00 – 15:30 Workshop V: International Judges Panel on selected patent law issues Blue Amphitheatre, Level 2

15:30 – 16:00 Coffee break

16:00 – 17:30 Plenary Session II - WQ213 (continued) Concorde, Level 4

16:00 – 17:30 Workshop V: (continued) International Judges Panel on selected patent law issues Blue Amphitheatre, Level 2

17:30 – 19:00 Women in IP 243, Level 2

19:00 – 21:30 Cultural evening at the Louvre Museum

TODAY’SSCHEDULE:

MONDAY 4 OCTOBER 2010

interview: thierry sueur, congress co-chair: … · noriyasu ikeda, aspire international patent...

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