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PTMG 90th conference, Venice 2015 Alan Cox Memorial Lecture
IS HARMONY POSSIBLE WITHOUT
HARMONIZATION?
avv. Domenico de Simone 23rd of March 2015
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… the first “IP city” of the world: q A.D. 1474: first Patent law in Europe – the “Statuto dei Brevetti” which grants a privilege valid through the entire extension of the Repubblica Serenissima
q "We have among us men of great genius, able to invent and discover ingenious devices: and it is in view of the magnitude and virtue of our city that we will try to get here more and more men of this kind every day” – Senato Terra reg.7, c.32
Welcome to Venice… avv. Giovanni Orsoni
23rd of March 2015 DE SIMONE & PARTNERS INTELLECTUAL PROPERTY ATTORNEYS
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q The first “constitutionalization” of a Patent system, with all the modern features:
§ utilitarian purpose of encouraging innovation; § inventions had to be novel and non-obvious, and “reduced to practice”; § it required full disclosure of the invention; § limited the monopoly both by geography and by time; § provided an enforcement mechanism and remedy.
q More than two thousands patents granted in the period 1474-1797:
q A Renaissance accomplishment: 150 years had to pass before the enacting of the English Statute of Monopolies of 1624
Statuto dei Brevetti
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§ 1474-1500: 43 § 1501-1550: 126 § 1551-1600: 471
§ 1601-1650: 283 § 1651-1700: 317 § 1701-1750: 234
§ 1751-1797: 530
Index
o I. Harmonisation o II. Procedural vices
o III. Trademark Offices errors o IV. Register of Companies vs. Register of TMs o V. Priority claim also for Recordals
o VI. Re-filed Trademarks o VII. A Presidents’ conference
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I. Harmonisation
o Since ever, working to harmonise procedures and effects of Industrial Laws and Procedures
o … through Treaties and Associations
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Treaties and Conventions
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o Paris Convention
o International Classification Of Goods & Services (Nice Agreement)
o Appellations Of Origin (Lisbon Agreement)
o Protection Of New Varieties Of Plants (Upov)
o International Classification For Industrial Designs (Locarno Agreement)
o Patent Cooperation Treaty
o International Patent Classification (Strasbourg Agreement)
o Deposits Of Microorganisms (Budapest Treaty)
o The Hague Convention (Apostille)
o Eurasian Patent Convention
o European Patent Convention
o European Community Trademark / Design Regulation
o The Cartagena Agreement
o Oapi Office Africain De La Propriete’ Industrielle
o Aripo African Regional Industrial Property Organisation
o Andean Community (A Custom Union Or Trade Bloc) [Bolivia, Columbia Ecuador Peru Brazil Paraguay Uruguay]
o Asean Economic Community [Brunei Indonesia Malaysia Philippines Singapore Thailand Cambodia Laos Myanmar Vietnam]
o Mercosur (Custom Union) [Brazil Argentina Uruguay Paraguay Venezuela]
o …
Associations
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o Source: Robin Wolfe report et al
AIPPI AIPLA APAA FICPI INTA LESI PTMG
Est. 1897 1897 1969 1906 1878 1972 1970
HQ Zurich, CH
Virginia, US
Tokyo, JP
Basel, CH
New York, US
Washington DC,
US
London, UK
Members ~ 9’000 ~ 16’000 ~ 2’400 ~ 5’000 ~ 6’700 ~ 11’000 ~ 1’600
Committees
9 active working committees 22 special committees 5 statutory committees
53 committees
6 standing committees
11 committees
6 board committees 29 non-board committees
13 managemt. committees
1 managemt committee
Harmonisation /2
o What is and what isn’t harmonisation?
n Harmonization is to create soft connections between differences n Harmonisation is not suppression n Harmonisation is education and respect for the history behind each
harmonised party
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Harmonisation /3
o Offer or demand to trigger purchase of IP services?
n In the past the offer was the trigger n Now the demand looks to be the trigger
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Harmonisation /4
o How did we survive in a pre-harmonised world ?
o How had we lived and worked throughout all countries and dealing with their individual rules and methods?
o Anybody here working in trademarks in the ‘70ies? With German examiners?
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Harmonisation /5
o IP was for Alan Intellectual Proficiency and Intellectual Personality
o What else?
o My wish is that each IP association is able to realise and sustain a common position any time is requested
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II. Procedural vices
o We are the NGOs in IP
o We cannot accept to be forced to spend our Client’s resources to overcome complications due to procedural vices, defects or ungrounded decisions
o How the software of non-latin alphabet countries treats combination like CA KA GA CKA GKA?
o Less qualitative countries cost more (when they have to protect us) and spend less (when they have to be protected by us)
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Procedural vices /2
o We can be more
o Set up a super association of associations (or an equivalent ombudsmanship)…
o … to deal with IP authorities around the world
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III. TM Offices errors
o Bad practice and mistakes by the receiving TMO
o Mistakes are mistakes, whoever made it: corrections should follow the same rules n i.e. examiners should be available to receive by the applicant a free
of charge / free of fees notice of correction, and to revoke the erroneous decision in case of internal error
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IV. Register of Companies vs. Register of TMs
o Why do we accept dichotomy between the Registers of (new) Companies and the Registers of Trademarks?
o A “missed harmonisation”
o Which one should prevail in case of non-perfect coincidence of wordings and contents?
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V. Priority claim also for Recordals?
o A new application of the Paris Convention principle of priority n The case where you have to file recordals in several countries together n Should the Paris Convention be updated to allow priority claim also for
recordals? n This would allow to set a date and then draft all other versions country by
country
o By the way, do we have checked why recordals (apparently one of the easiest performance) may take so much time?
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VI. Re-filed Trademarks
o How to deal with re-filed non-used trademarks?
o Use and ab-use
o If we accept that no refiling is allowed, we must prepared to argue in Courts the justifications for non use
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Re-filed Trademarks /2
o What else? n If any jurisdiction had ever been willing to avoid refiling, then they
would have added a specific provision forbidding it in the law.
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VII. A Presidents’ Conference
q None of us is as good as all of us
q Harmonizing more global initiatives
q Set up a President’s Conference, where the associations would be equally represented
q Our additional quality: together our harmonised forces do multiply and not only sum up
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DE SIMONE & PARTNERS INTELLECTUAL PROPERTY ATTORNEYS
23rd of March 2015
Via Vincenzo Bellini 20
00198 Roma
Tel +39 06 853361 Fax +39 06 85331764
avv. Domenico de Simone [email protected]
Grazie!
