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Report of meeting with WIPO, SCP

11-15 December 2017

Alexander Wyrwoll represented FICPI at the above SCP meeting at WIPO’s headquarters in Geneva

when the topics “Quality of patents, including opposition systems” and “Confidentiality of

Communications between clients and their patent advisors” were discussed, specifically on 12, 13 and

14 December 2017.

Quality of Patents

On December 12, 2017 the session on “Quality” began with the representatives of Georgia and Senegal

bringing forward their point of view as regional coordinators, for the central European and Baltic states

on the one hand and the African Group on the other. The importance of quality of patents was

acknowledged and differences in the approach to cope with this topic were recognised. It was pointed

out that the criteria had to be further finessed and different approaches for this issue are necessary.

However, harmonization was seen as to be desired, whereas different evolvement of systems made it

difficult to come to a harmonisation. The level of the development in each country had to be kept in

mind regarding the respective countries.

Estonia took the floor for the EU member states and gave thanks for the 20 new contributions to the

questionnaire. From the Estonian view, it was important to understand what “quality” of patent

comprised. Estonia urged the president to schedule a half-day session on this item. The WIPO-Case-

Platform was seen as to be beneficial for work sharing. Further, it was highlighted that the inventive

step assessment was important for said quality.

Switzerland took the floor for group B and focused on the inventive step approach which was seen as

to be crucial for the patent quality as such and the system quality. The work, as conducted in SCP

documents 23/4 and 24/3 should be continued. It was recognised that timelines are tied to the level of

quality and the respective training degree of personnel in Patent Offices.

China highlighted difficulty to discern quality as such. It was explained that many countries had

different understanding of this issue. The use of more common IT-capabilities was desired. China

wished to help developing countries with their IT systems, especially in view of searches conducted.

For example, China was training about 100 Examiners from 40 countries at SIPO.

Iran pointed to the fact that quality should not be used to harmonise patent laws. However, the concept

of allowing oppositions as such was seen as important and should be more detailed in many countries,

according to Iran’s view.

Brazil pointed to SCP documents 24/3, 27/4 rev and 27/5 rev. High quality patents were seen by Brazil

to be the key of the future. Different meanings and different factors however were included. Brazil

wanted the discussed quality issues to be aligned with TRIPS. A common definition for “quality” was

seen as to be needed. TRIPS should be kept more in mind when discussing this issue. An electronic

platform at the Brazilian Patent Office was highlighted as the goal to speed up the patent prosecution

process. In view of this, more than 200 new examiners had been hired.

Korea referred to the SCP documents 27/4 rev and 27/5 rev. Quality of patent was seen by Korea to be

a key factor for technological advancement. According to Korea, every patent office should remain

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independent to grant patents. At this time SCP document 24/3 was referred to. Work sharing, which was

done by KIPO, resulted in cheaper patents, which was seen as to be beneficial.

The Dominican Republic pointed to the important work already done; it wished to continue this work.

Colombia pointed to SCP documents 27/4 rev and 27/5 rev which it rated as very interesting. Colombia

saw the quality of patents to be linked to the respective law of each country. The wish was expressed

that examiners throughout the world should use the result of the ISA’s. PPH was seen as to be beneficial

to the applicant.

Chile pointed out that “quality of patents”, had two factors, one being the grant document in line with

the respective laws and the other being the certainty of scope of protection. On the other hand, Chile

saw the quality of the patent system to be of higher importance, i.e. the efficiency of the system with

regard to speediness and other factors. Chile pointed to the LATIpat Platform allowing to share patent

documents. Further use of the ePCT-Platform was propagated.

Thailand also recognised the fact that quality was important and wishes that this be further discussed.

The US representative declared that improving patent quality was a top priority for the USPTO. Items

were:

• improving search/prosecution,

• timelines,

• training, and

• communication to the applicant.

Work sharing programs had been seen as to be beneficial. Widespread regional work sharing

arrangements were also seen to be beneficial. Hope was expressed to continue on this road.

Japan appreciated SCP documents 27/4 rev and 27/5 rev. Japan saw quality for patents to be important

and a necessity to achieve the same goal for any functioning patent system. In this context the inventive

step also had to be appreciated. The respective paragraph 19 in the previously referenced documents

was highlighted.

South Africa and Senegal did not see common definitions but saw the quality of the patent to be of

importance. These delegations were of the opinion that “good quality” existed, if said patent survived

a validity attack. Further necessities for appeal and opposition were important and should be kept in

mind when discussing this issue. Simply adopting practices from one patent office to another was not

seen as being helpful.

Cuba pointed to the fact that new young Examiners had now been hired and quality was vital for the

system. Cuba wished to be more connected to other IP-Offices and highlighted the benefit of being

docked under the LATIpat-Platform which was shared with Mexico for instance.

Mexico then took the floor and pointed to the fact that accelerated examination led to better quality

patents. The initial search was quicker if work of the Offices was shared and then an own in-depth-

search could be added thereon.

Australia then took the floor and expressed the view that work sharing was helpful and noted that

sharing work results maximised IP-Australia´s capabilities. Sharing was seen to be beneficial and

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showed where to start the search and also how to conduct the search. Australia wished not to directly

accept results but to value previous results of other IP-Offices with regard to their own law.

Estonia pointed to the fact that there were only twelve Examiners at the Estonian IP-Office and part of

the Estonian quality program was done by the EPO - most Estonian patents were validated European

patents, granted by the European Patent Office. Consequently the EPO guaranteed quality. However,

quality was also important for the national Office and their patents.

Argentina recognised the importance of the issue and pointed to the fact that 915 equivalent patents had

been studied which resulted in more than 800 expedited patents granted in Argentina.

India briefly recognised the importance of the issue.

Thereafter “Cooperation of search and examination” was highlighted in different presentations by

Spain, Japan, the Dominican Republic, the UK, Singapore, the US, Germany, Australia, Mexico. Those

presentations can be found here:

http://www.wipo.int/meetings/en/details.jsp?meeting_id=42307&la=EN#docs

On the next day during a short open discussion of quality the UK pointed out that a clear definition of

quality should be found and that further work should be done to find all respective criteria to define

said quality. When those criteria had been found, more work and discussion would be conducted.

Alexander Wyrwoll put forward a notion on FICPI´s position, as follows:

Ladies and gentlemen, delegates, Mr. President and Secretariat,

I am Alexander Wyrwoll, President of the Communications Commission of FICPI, which

is the International Federation of Intellectual Property Attorneys. I - first of all - would

like to congratulate the President and the Secretariat- and also thank you for the

opportunity to bring forward the view of the thousands of Attorneys in private practice,

which FICPI represents. We would also like to thank all delegates for the presentations

given so far and the interest shown in this topic.

FICPI, the International Federation of Intellectual Property Attorneys, broadly

representative of the free profession throughout the world, recognises the fact that

“quality of patent” is most important for a functioning system, advancing technological

improvement and being beneficial for all societies.

This quality concerns the quality of the patent itself, i.e. a robust patent, but also the

quality, including the cost and time efficiency of the granting process.

Diverse Workgroups within FICPI, e.g. CET3, CET7 and others focus on diverse issues

of said quality.

For instance one aspect is the unity requirement which is handled worldwide mainly

diversely and not in the same manner but an aspect is also the evaluation of an inventive

step. Another aspect is a legitimate interest in obtaining adequate patent protection.

FICPI assembled at its Executive Committee meeting (ExCo) held in Hangzhou, China

from 26 to 30 March 2017, prepared a Resolution focusing on one aspect of patent

quality:

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Observing that in the examination of patent applications, despite the continuing

development of their document databases, Patent Offices do not have the resources to

access all relevant disclosures that may have been made available to the public;

Noting that a patent grant procedure should be of reasonable duration and without undue

delay;

Further noting that there should be a balance between the interests of an IP right holder

and third parties;

Acknowledging that numerous Patent Offices provide cost-effective administrative

proceedings allowing a third party to file observations on the patentability of a pending

patent application and/or an opposition against a patent application or recently granted

patent utilizing the Offices’ expertise; and

Urges and encourages Authorities

i) to provide inter-partes opposition proceedings against a patent application or

recently granted patent, including at least on the grounds of novelty, inventive

step and lack of industrial applicability;

ii) to provide balanced procedural treatment of the parties in the opposition

proceedings;

iii) to ensure that official fees for such opposition proceedings are kept on a

reasonable level and that the parties should usually bear their own costs;

iv) to ensure that the time for completing such opposition proceedings is sufficient

for resolving them with careful consideration of the issues, without an undue

delay; and

v) to ensure that such administrative proceedings should not preclude a subsequent

nullity or revocation action between the same parties before a Court or other

relevant authority;

Further urges and encourages Authorities

to implement or retain existing pre-grant ex parte observation proceedings in addition

to such opposition proceedings and to retain existing re-examination proceedings in

addition to such opposition proceedings.

FICPI is momentarily working on this resolution and – due to the fact of the importance

of “quality of patent” strongly urges to keep this subject on the agenda for the future and

to thoroughly focus on its facettes; FICPI will, if allowed, bring forward this Resolution

later.

Due to lack of time during FICPI's ExCo meeting in Hangzhou, a resolution focusing on

entering the national/regional phase prerequisites - deadlines for fees, translations,

formal requirements - could not be finalised. The focus was on a user-friendly system,

where it remains possible to adapt claims when it comes to the deadline for entering the

national / regional phase as in some countries it is made difficult or impossible to amend

the claims to save claim fees.

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This notion was welcomed, after which a presentation of WIPO was conducted to explain what was

shown on the website. The discussion on quality at the current SCP session was then closed at 10:45

am on Thursday, December 14, 2017.

Confidentiality of Communications between clients and their patent advisors

Iran pointed to their view that “confidentiality” is not a substantive patent law issue but concerns “only

private law”, which is in the sole sovereignty of each nation concerned. They requested not to discuss

this any further.

The Central Europe and Baltic States did not share this view but thought discussion would be beneficial

for all the users.

Group B put forward that high importance should be given to this topic. Client and attorney privilege

was seen as to be important for cross border advisors. They pointed to the fact that cross border

international harmonization should be intended.

Senegal, however, shared the view of Iran and pointed to the fact that confidentiality was much more

relevant to national civil law and concerned only private law. This would not be discussed any further,

as “everybody shall deal with it on its own”.

Thereafter Denmark, Germany, Japan, China and Switzerland took the floor and highlighted that said

issue was in fact of great importance and had cross border implications. IP advisors constantly have to

work around that issue.

Switzerland especially highlighted problems and was of the opinion that it was desirable to have more

certainty and predictability. Full and frank communication between the attorney and the client was so

far not to be seen as to be possible, which resulted in bad quality of the service of attorneys and therefore

in bad quality for the system.

UK, India, Australia subsequently shared this view.

Union submitted the following notion:

UNION -IP is an association of practitioners from different European countries in the field of

IP, that is of individuals whose principal professional occupation is concerned with patents,

trademarks or designs and related questions and who carry on their profession independently

or as employees.

UNION-IP was asked to produce a position paper on client-attorney privilege for patent

advisers. Client-attorney Privilege in the IP context should be considered as the right to resist

requests from authorities or other parties to disclose communications between a person and

that person's IP advisor. We find that it is unacceptable that IP professionals, who are obliged

to keep information confidential under one national law, may face criminal prosecution in other

countries for complying with this obligation.

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With regard to the WIPO study on Patent Attorney privilege, the agreed position between the

Patents and the Litigation Commissions of the UNION- IP is that we endorsed the position

taken by the AIPPI and we wished to continue as an interested observer. We refer to the Joint

Proposal of the AIPLA, AIPPI and FICPI, reproduced below (completed with our comments):

IN ORDER to give effect to the statements recited above, the nations cited in the Schedule to

this Agreement have executed this Agreement on the dates stated respectively in that Schedule.

The nations so cited AGREE as follows.

1. In this Agreement,

'intellectual property advisor' means a lawyer, patent attorney or patent agent, or trade mark

attorney or trade mark agent, or other person, where such advisor is officially recognised as

eligible to give professional advice concerning intellectual property rights.

Comment: we noted that the qualification of "IP advisor" is unclear and the following must be

taken into account:

• Contrary to common law countries, in many civil law countries, there is generally no

protection for in-house counsels since they are considered to be a separate profession and

do not enjoy the same status as attorneys.

• In some countries it could be unclear whether "patent attorney" is a qualified professional

or not. For instance, in Sweden, the title "patent attorney" is not protected, thus any one

may say that they are a patent attorney even though they do not possess any relevant

education at all.

• In other countries, even communications with third parties can be covered by privilege.

For instance, in the UK, the protection by privilege covers communications between lawyer

or client and a third party which come into existence for the dominant purpose of being

used in connection with actual or pending litigation ("litigation privilege").

Our position is that the IP advisor should be a qualified professional, duly authorised in

accordance with domestic law and to whom exist adequate regulation. In this respect, we find

beneficial if each country should provide to WIPO with the specific categories of advisers

whose clients benefit from privilege under this standard.

'intellectual property rights' includes all categories of intellectual property that are the subject

of the TRIPS agreement, and any matters relating to such rights.

Comment: we find that the use of the expression "any matters relating to such rights" is unclear

and could be enhanced by including some examples that would allow the reader to understand

the full scope of this definition.

'communication' includes any oral, written, or electronic record whether it is transmitted to

another person, or not.

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Comment: we find that such wording could be enhanced if redrafted the definition as following:

"communication includes any communication made by any means (for example, oral, written,

or electronic record) irrespective of the country of origin of that communication, whether it is

transmitted to another person authorised to receive such communication or not", as doubt to

the application of the agreement may arise in relation to cross-border communications.

'professional advice' means information relating to and including the subjective or analytical

views or opinions of an intellectual property advisor but not facts including mere statements of

fact which are objectively relevant to determining issues relating to intellectual property rights

(for example, the existence of relevant prior art).

Comment: we suggest that the reference to "facts including mere statements of fact'' could be

further explained in order to avoid misinterpretations of the scope of the exception.

2. Subject to the following clause, a communication made for the purpose of, or in relation to,

an intellectual property advisor providing advice an or relating to intellectual property rights

to a client, shall be confidential to the client and shall be protected from disclosure to third

parties, unless it is or has been made public with the authority of that client.

3. Nations may have and apply specific limitations, exceptions and variations and the scope or

effect of the provision in clause 2 provided that such limitations and exceptions individually

and in overall effect do not negate or substantially reduce the objective effect of clause 2 having

due regard to the need to support the public and private interests described in the recitals to

this Agreement which the effect of the provision in clause 2 is intended to support, and the need

which clients have for the protection to apply with certainty.

Comment: we highlight that there are already specific limitations which cover communications

from patent attorneys. For instance, in the context of the future Unified Patent Court (UPC),

the Proposed Rule 287 provides that advice from lawyers and non-lawyer patent attorneys are

privileged from proceedings before UPC. Also, Rule 153 of the European Patent Convention

(EPC) provides that advice from "professional representatives" to client are privileged from

disclosure in proceedings before European Patent Office. However, there are two specific issues

regarding the application of this specific rule:

• Article 64-3 of the EPC made reference to the national law in case of infringement of a

European patent, so it expands significantly the scope of such protection by national laws;

and

• Rule 153 was amended under French law on 21 October 2008 and the amended version

entered into force on 01 April 2009, so it is unclear if the privilege applied to

communications/advice before this date

Considering the above, UNION -IP thinks that it will be very difficult to implement a system

which prevents States from limiting, excepting or varying the scope of the effect of the provisions

in clause 2. We tend to believe that the "weakest protection", which cannot be abolished by the

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State in any circumstance, would be the best solution, provided that it does not reduce the

protection provided for by clause 2.

FICPI and JIPA were then supporting the notion in general, whereas for FICPI the following was

brought forward:

FICPI would like to refer back to the joint position brought forward by AIPLA, AIPPI and

UNION and strongly urges to review this position and strongly urges to value the intervention

brought forward now again by UNION. FICPI clearly sees the cross border impact on legal

advisors in every day practice, especially patent attorneys and their clients, i.e. any applicant

wherever the applicant is located. Same applies for any patent proprietor. The results are very

grave and should therefor stay on the agenda if possible. FICPI would be grateful to bring its

position forward again in writing.

Dr. Alexander J. Wyrwoll

President – Communications Commission

[End of document]

UNION OF EUROPEAN PRACTITIONERS IN INTELLECTUAL PROPERTY

UNION EUROPÄISCHER BERATER FÜR GEISTIGES EIGENTUM

UNION DES PRATICIENS EUROPEENS EN PROPRIETE INTELLECTUELLE un1on

Position paper on Client-Attorney Privilege in IP advice

UNION -IP is an association of practitioners from different European countries in the field of IP, that is of individuals whose principal professional occupation is concerned with patents, trademarks or designs and related questions and who carry on their profession independently or as employees.

UNION-IP was asked to produce a position paper on client-attorney privilege for patent advisers. Client-attorney Privilege in the IP context should be considered as the right to resist requests from authorities or other parties to disclose communications between a person and that person's IP advisor. We find that it is unacceptable that IP professionals, who are obliged to keep information confidential und er one national law, may face criminal prosecution in other countries for complying with this obligation.

With regard to the WIPO study on Patent Attorney privilege, the agreed position between the Patentsand the Litigation Commissions of the UNION-IP is that we endorsed the position taken by the AIPPI and we wished to continue as an interested observer. We refer to the Joint Proposal of the AIPLA, AIPPI and FICPI, reproduced below (completed with our comments):

IN ORDER to give effect to the statements recited above, the nations cited in the Schedule to this Agreement have executed this Agreement on the dates stated respectively in that Schedu/e. The nations so cited AGREE as fo!lows. 1. In this Agreement,

'inte/lectual property advisor' means a lawyer, patent attorney or patent agent, or trade mark attorney or trade mark agent, or other person, where such advisor is officially recognized as eligib/e to give professional advice concerning intellectua/ property rights.

Comment: we noted that the qualification of "IP advisor" is unclear and the followings must be taken into account:

• Contrary to common law countries, in many civil law countries, there is generally no protection for in-house counsels since they are considered to be a separate profession and do not enjoy the same status as attorneys.

• In some countries it could be unclear whether "patent attorney" is a qualified professional or not. For instance, in Sweden, the title "patent attorney" is not protected, thus any one may say that they are a patent attorney even though they do not possess any relevant education at all.

• In other countries, even communications with third parties can be covered by privilege. For instance, in the UK, the protection by privilege covers communications between lawyer or client and a third party which come into existence for the dominant purpose of being used in connection with actual or pending litigation ("litigation privilege").

Our position is that the IP advisor should be a qualified professional, duly authorized in accordance with domestic law and to whom exist adequate regulation. In this respect, we find beneficial if each country should provide to WI PO with the specific categories of advisers whose clients benefit from privilege under this standard.

'inte/lectual property rights' includes all categories of inte/lectual property that are the subject of the TRIPS agreement, and any matters relating to such rights.

Reinier Wijnstra - Patents Commission President www.union-ip.org UNION OF EUROPEAN PRACnTIONERS IN INTELLECTUAL PROPERTY, AISBL (ENT. N0.0648.830.067), BOULEVARD GENERAL WAHIS 16, 1030 BRUSSELS (BE)

Email: patcom.union-ip@wijnstrawise.nl Tel. : ++31 6 42 75 62 92 Fax.:

UNION-IP c/o WijnstraWise Patents Talbotstraat 166

1087 DM AMSTERDAM , Netherlands

Comment: we find that the use of the expression "any matters relating to such rights" is unclear and could be enhanced by including some examples that would allow the reader to understand the full scope of this definition.

'communication ' inc!udes any oral, written, or electronic record whether it is transmitted to another person, or not.

Comment: we find that such wording could be enhanced if redrafted the definition as following: "communication includes any communication made by any means (for example, oral, written, or electronic record) irrespective of the country of origin of that communication, whether it is transmitted to another person authorized to receive such communication or not", as doubt to the application of the agreement may arise in relation to cross-border communications.

'professional advice' means information relating to and inc!uding the subjective or analytical views or opinions of an intellectual property advisor but not facts inc!uding mere statements of fact which are objectively relevant to determining issues relating to intellectual property rights (for example, the existence of relevant prior art).

Comment: we suggest that the reference to "facts including mere statements of fact'' could be further explained in order to avoid misinterpretations of the scope of the exception.

2. Subject to the following c!ause, a communication made for the purpose of, or in relation to, an intellectual property advisor providing advice an or relating to intellectual property rights to a c/ient, shall be confidential to the c!ient and sha// be protected from disc!osure to third parties, unless it is or has been made public with the authority of that c!ient.

3. Nations may have and apply specific limitations, exceptions and variations an the scope or effect of the provision in c/ause 2 provided that such limitations and exceptions individually andin overall effect do not negate or substantially reduce the objective effect of c!ause 2 having due regard to the need to support the public and private interests described in the recitals to this Agreement which the effect of

the provision in c/ause 2 is intended to support, and the need which c!ients have for the protection to apply with certainty.

Comment: we highlight that there are already specific limitations which cover communications from patent attorneys. For instance, in the context of the future Unified Patent Court (UPC), the Proposed Rule 287 provides that advice from lawyers and non-lawyer patent attorneys are privileged from proceedings before UPC. Also, Rule 153 of the European Patent Convention (EPC) provides that advice from "professional representatives" to dient are privileged from disclosure in proceedings before European Patent Office. However, there are two specific issues regarding the application of this specific rule:

• Article 64-3 of the EPC made reference to the national law in case of infringement of a European patent, so it expands significantly the scope of such protection by national laws ; and

• Rule 153 was amended under French law on 21 October 2008 and the amended version entered into force on 01 April 2009, so it is unclear if the privilege applied to communications/advice before this date.

Considering the above, UNlON-IP thinks that it will be very difficult to implement a system which prevents States from limiting, excepting or varying the scope of the effect of the provisions in clause 2. We tend to believe that the "weakest protection", which cannot be abolished by the State in any circumstance, would be the best solution, provided that it does not reduce the protection provided for by clause 2.

Done on 10 December 2017 at Amsterdam.

J(Y/ ~. Wijnstra ~-!~~

President of Patents Commission of UNION-IP President of IP Litigation Commission of UNION-IP

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