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No. 26
September 2012
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Contents
AIPPI Congress 2012 Our latest news and information on the extended registration deadline, scientific programme and social evenings can be found here AIPPI CONGRESS SEOUL – NEWSFLASH
(AIPPI General Secretariat)

Spotlight on some of the activities of the AIPPI Korea Group in the lead up to the Congress
The AIPPI Korea Group has been very busy in the lead up to the forthcoming AIPPI Congress in Seoul. Seong–Ki Kim, Chair of the Congress Organising Committee, outlines some of the activities of the Korea Group and Organising Committee in preparation for the Congress and takes the opportunity say a bit about some of the Korea Group's general activities
(Article by Seong-Ki Kim of the Seoul Organising Committee, AIPPI)
AIPPI Forum & ExCo meeting 2013 Sponsorship opportunity at AIPPI Forum & ExCo meeting in Helsinki, Finland
After this year's World Congress in Seoul, Republic of Korea, the next AIPPI meeting will be AIPPI's Forum & Executive Committee Meeting in Helsinki, Finland, on September 5-11, 2013. We expect to welcome more than 600 participants from all over the world, having their area of practice in all fields of intellectual property. Take advantage of this unique opportunity to reach a wide audience and become a sponsor, an exhibitor or a media partner for this event.
(AIPPI General Secretariat)

Helsinki Working Questions
The Working Questions for Helsinki 2013 are:

Q233 Grace period for patents

Q234 Relevant public for determining the degree of recognition of famous marks, well-known marks and marks with reputation

Q235 Term of copyright protection

Q236 Relief in IP proceedings other than injunctions or damages

Here is a description of the Helsinki Working Questions

(AIPPI General Secretariat)
Forthcoming Events GRUR Annual Meeting
Traditionally, the German Association for the Protection of Intellectual Property (GRUR) and AIPPI's largest European Group conduct their Annual General Meetings during the GRUR Annual Meeting. GRUR's Annual Meeting is the most popular and constant German IP event, bringing together over 700 German and international IP experts from the courts, governments, industry and private practice. The event covers all areas of intellectual property with particular focus on scientific, in-depth discussions of topical IP-related issues.

Frankfurt am Main, Germany, 26 to 29 September 2012

(GRUR)

2013 Israeli Group of AIPPI
The Israeli National Group of the International Association for the Protection of Intellectual Property (AIPPI), in collaboration with the Faculty of Law at the Tel-Aviv University, is happy to announce the forthcoming international conference on Intellectual Property, to be held in Tel-Aviv, Israel between March 19 and 21, 2013
(Israeli Group of AIPPI Group of AIPPI)

INTA Trademark Forum
Join INTA and KOTA for the 2012 Seoul International Trademark Forum on October 19.

Network with Korean and international colleagues in the 2012 Seould International Trademark Forum on October 19.

(INTA)
AIPPI Bureau AIPPI Strategy Project
The Report and Recommendations of Robin Rolfe have just been sent to the Bureau last week. Robin Rolfe will be attending the Congress in Seoul and will present the Report to the Executive Committee on Sunday, October 21, 2012. This comprehensive Report and the Recommendations are based upon many months of intense work on the part of Robin Rolfe and her team. It now needs a dedicated and intense review by AIPPI members.

In order that the discussion at the Seoul meeting can be more meaningful and oriented to taking further action, the Bureau believes it is important that all Groups review the Report and Recommendations as soon as possible. It is recommended, where possible, that a Group designate one or more individuals who will have the specific responsibility of becoming very familiar with the contents of the Report and Recommendations.

The Secretariat of AIPPI would be pleased to receive comments from the Groups and the members as early as possible prior to the Congress in Seoul. Please forward these to Cinzia Petruzzello at the General Secretariat (c.petruzzello@aippi.org).
(Article by John Bochnovic, Vice-President of AIPPI)
National Groups News from the AIPPI UK Group
Tobacco plain packaging proposals in the UK: speaking event: the UK Group of AIPPI organized an evening speaking event on this topical issue for its members in London on 29th May 2012 (kindly hosted by Edwards Wildman Palmer UK LLP at their offices). Speakers were: Christopher Morcom Q.C. a barrister of Hogarth Chambers and Professor Spyros Maniatis, Director, Centre for Commercial Law Studies, Queen Mary University of London and a consultant at Edwards Wildman Palmer UK LLP. The UK Government's consultation document may be found at the UK Government Department of Health website. The meeting was attended by about 55 people many of whom had comments to make during the meeting.

UK Group submits paper on plain packaging of tobacco products to the UK Government, Department of Health which has been holding a Consultation on Standardised Packaging of tobacco products : on 8 August, AIPPI UK Group submitted a paper to the Department of Health dealing with the legal complications of such proposals.

Rapid response speaking event held in London on 2 August 2012 to consider implications for SPCs of important Court of Justice decision in Neurim Pharmaceuticals case (C-130/11) (AIPPI UK GROUP)

AIPPI - Turkish Seminar 2012 report
The Second Intellectual Property Law Seminar from a Turkish and International Perspective, including mock patent trial and mock WIPO Case – UDRP Arbitration on Domain Name Dispute, was successfully held on June 28 & 29 in Istanbul. This was the second international seminar organized by the young Turkish AIPPI Group. Turkish and foreign judges, arbitrators, speakers participated and attendees were welcomed from other countries such as Italy, Switzerland, Sweden, Germany, Bulgaria, Hong Kong, Austria, France, The Netherlands. (Article by Nazli T. Korkut, Deris Patents & Trademarks Agency A.S. Istanbul, Turkey)
Articles and notes Improvements to the Notice of Objection Scheme resulting from the IP Laws Amendment (Raising the Bar) Act 2012
Deficiencies in the protection and enforcement of Intellectual Property rights (IPRs) at the border have been the subject of recent Australian law reforms. These reforms are part of a wider revision of Australia's intellectual property laws, culminating in the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act).

The Australian Customs and Border Protection Service (Customs) plays a vital role with respect to the border enforcement of IPRs. In particular, Customs has specific powers to detain and deal with imported goods that are suspected of infringing registered trade marks and copyrights. These powers are contained within the Trade Marks Act 1995, the Copyright Act 1968 and the Olympic Insignia Protection Act 1987. This legislative framework is intended to strike an appropriate balance between the facilitation of trade in legitimate goods and the protection of IPRs, and provides the foundation for Australia's Notice of Objection Scheme.

(Article by Melanie Jose, The Australian Customs and Border Protection Service, Canberra, Australia)

“ANVISA” examining patent applications in Brazil
The Brazilian National Agency for Sanitary Vigilance “ANVISA” will now examine all pharmaceutical patent applications before the INPI (the Brazilian Patent Office). According to a communication by the “AGU” (office of the Brazilian Solicitor General) in January 2011, ANVISA's role should be restricted to only examining risks to public health, but the short experience with the new rulings indicates that ANVISA “transubstantiates” any objection (like insufficient disclosure or lack of inventive step) to a risk to public health. By this systematic misinterpretation of their new task, there is a huge risk that a large amount of pharmaceutical patent applications will accumulate with ANVISA and the Brazilian backlog become even larger.
(Article by Magnus Aspeby, ASPEBY & SZABAS Industrial Property, Rio de Janeiro, Brazil)

Five Copyright Decisions from the Supreme Court of Canada
The Supreme Court of Canada rules on five appeals dealing with copyright issues. The decisions address the communication of musical works online; the rights of performers in soundtracks; and, the application of fair dealing exceptions to classroom photocopies and to musical previews by Internet retailers.
(Article by Stéphane E. Caron, Gowling Lafleur Henderson LLP, Ottawa, Canada)

Resale of used software licenses
Judgment of the Court of Justice of the European Union in Case C-128/11 (UsedSoft GmbH v Oracle International Corp.) – Exhaustion of the exclusive right of distribution of a copy of a computer program

The Court of Justice of the European Union (“CJ”) handed down a landmark decision concerning the resale of software licenses that will open the market for used software licenses. The CJ held that the sale of “used” software is permissible. The reseller must, however, make his own copy downloaded onto his computer unusable at the time of the resale.

(Article by Karolina Schöle, HARTE-BAVENDAMM Rechtsanwälte, Hamburg, Germany)

Israel to reform Patents Law: patent applications are now published 18 months after filing
Following an extensive debate by the legislature, the Israeli Patents Law, 1967 (“the Patents Law”) was recently amended with respect to issues touching on, inter alia, the timeframe for the publication of patent applications, reasonable royalties, the filing of publications by third parties, and the right to apply for the immediate and accelerated examination of patent applications (“the Amendment”).
(Article by Tal Band, President, Israeli National Group of AIPPI, S. Horowitz & Co., Tel Aviv, Israel)

No copyright for football fixture lists
A painful setback occurred for the Sport Leagues that are seeking a legal basis for demanding royalties for the exploitation of their fixture lists.

On 1st March 2012 the European Court of Justice delivered a decision which will likely mark the end to discussions concerning the protection afforded to fixture lists under the database copyright protections that are established by Art. 3(1) EU Directive 96/9.

In a case related to the English and Scottish football fixture lists, the ECJ decided that, as a requirement for that protection to be granted, there must be originality of expression reflecting the author's creative freedom. Given this decision, even if the last word is left to the national judge, a requirement for originality seems difficult to satisfy where the mere selection and arrangement of matches and dates are concerned

(Article by Barbara Sartori, Luca Ferrari, with the cooperation of Anna Bonan, CBA Studio Legale e Tributario, Padova, Italy)

What are the consequences of the IP Translator case?
The European Court of Justice's decision in the IP Translator case on classification of goods and services for trade marks leaves many questions. OHIM immediately changed its practice as a result of this decision, but was it the right response? And how will national offices respond? What will happen to existing registrations?
(Article by Charles Gielen and Boudewijn van Vondelen, NautaDutilh, Amsterdam, Netherlands)

EU Court confirms Dutch approach to cross-border injunctions
In its judgment of July 12, 2012 in the Solvay/Honeywell-case, the Court of Justice of the European Union approves the current Dutch approach to cross-border injunctions in patent infringement cases.
(Article by John Allen, NautaDutilh, Amsterdam, Netherlands)

Liability of an online marketplace
Liability of an online marketplace for copyright infringements: Dutch appeals court applies the ECJ L'Oréal/eBay judgment.
(Article by Micheline Don and Emma de Groot, NautaDutilh, Amsterdam, Netherlands)

Neurim judgment of European Court of Justice liberalises SPC system
In case C-130/11 Neurim Pharmaceuticals, the Court of Justice of the European Union (the “CJEU”, Europe's highest court), following a reference from the Court of Appeal of England & Wales, issued an eagerly anticipated judgment concerning the availability of supplementary protection certificates (SPCs). SPCs are European intellectual property rights that provide extended protection to patent holders following regulatory delays for medicinal and plant protection products. The Neurim judgment has a liberalising effect on SPC law and presents new opportunities for extending patents through SPC filings, although the question as to precisely how widely the Neurim ruling should be applied is likely to be explored in future disputes.
(Article by Edward Oates, Carpmaels & Ransford, London, United Kingdom)

“Austin used in 1833 & ever since” trademark deemed misleading in Switzerland for goods not originating from the United States
On 31 July 2012, the Swiss Federal Administrative Court (the “Court”) upheld a decision to refuse the registration in Switzerland of the “Austin used in 1833 & ever since” trademark in relation with industrial explosives (class 13), on the ground that it was misleading for goods not originating from the USA (Case B-6402/2011).
(Article by Thomas Widmer, LALIVE, Geneva, Switzerland)

A new copyright work plan for educational purposes at WIPO
On July 25th, 2012, the 24th Session of the Standing Committee on Copyright and Related Rights (SCCR), held at WIPO Headquarters in Geneva, Switzerland, was concluded. The SCCR-members agreed on a comprehensive work plan for the next three years to further discuss steps towards an international approach regarding the following subjects: limitations and exceptions for visually impaired persons and persons with print disabilities (scheduled for 2013); protection of Broadcasting Organizations (2014); limitations and exceptions for libraries and archives (2014); and, limitations and exceptions for education and research institutions (2015). No agreement has yet been reached regarding the appropriate legal instrument.
(Article by Matthias Gottschalk, Secretary, Copyright Committee (Q226), Zürich, Switzerland)

Transitioning from Inter Partes Reexamination (IPX) to Inter Partes Review (IPR) Under the AIA: Highlights of the USPTO IPR Final Rules
The new Inter Partes Review provision of the America Invents Act becomes effective September 16, 2012, applying to patents issued before, on, or after said date. The USPTO recently published final rules for these proceedings, including setting an IPR petition filing fee of $27,200 for up to the first 20 claims. The threshold for institution of IPR proceedings will be establishment of a “reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition,” requiring a showing that the claims lack novelty or are obvious over patents or printed publications only.
(Article by Anne L. St. Martin, Oblon, Spivak, McClelland, Maier & Neustadt, LLP, Alexandria, U.S.)
Feedback The AIPPI Yearbook 2011 has been published.
AIPPI publishes the results of its substantive work in a Yearbook. It includes Summary Reports, Working Guidelines, Working Questions, Resolutions and Special Committee Reports as well as a CD with digital versions of the Yearbook + a digital version of our current membership directory.

The Yearbook 2011 has been published and mailed in August. You can find the electronic files online at https://www.aippi.org/?sel=publications&sub=onlinePub&cf=yearbooks. If you want to request a hard copy please contact the General Secretariat.

(AIPPI General Secretariat)

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AIPPI General Secretariat |Toedistrasse 16 |P.O.BOX | CH-8027 Zurich | Tel. 44 280 58 80 | Fax 44 280 58 85 | enews@aippi.org | www.aippi.org

This issue was prepared by Ching-Ying Chen, AIPPI General Secretariat
In co-operation with Stephan Freischem, Secretary General of AIPPI

Communications Committee:
Chair:Charters Macdonald-Brown
Members:Raffaella Arista
Johnny Fiandeiro
Kristian Fredrikson
Carolyn Harris
Klaus Haft
Alan J. Kasper
Jehyun Kim
Emmanuel Larere
Martin Michaus
Bill Mayo
Gaston Richelet
Petri Rinkinen

Disclaimer:
While AIPPI makes every effort to be accurate in the information it transmits, such information is not to be considered as substitute for specific and qualified professional advice. AIPPI accepts no responsibility for opinions expressed in interviews or for the information provided through external web links.
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