AIPLA Attends Meetings of the Industry IP5

AIPLA attended meetings of the Industry IP5, IP5 Heads of Offices, and the Industry Trilateral in Incheon, Korea June 10-13, 2019. 

The Industry IP5 Group members are AIPLA, Intellectual Property Owners, Inc. (IPO), Japan Intellectual Property Association (JIPA), Korean Intellectual Property Association (KINPA), and the Patent Protection Association of China (PPAC).  On June 11, 2019, the Industry IP5 met in preparation for the meeting with the IP5 Heads of Offices the next day.  

On June 12, 2019 AIPLA representatives, and other members of the Industry IP5 Group, attended the IP5 Heads of Offices with Industry IP5 Meeting in Incheon Korea.  The IP5 Offices are the European Patent Office (EPO), Korean Intellectual Property Office (KIPO), Japan Patent Office (JPO), and the United States Patent and Trademark Office (USPTO).

Representing the IP5 Heads of Offices at the IP5 Meeting were the following:

• Mr. Antonio Campinos President of the EPO
• Ms. Naoko Munakata Commissioner of KIPO
• Dr. Wonjoo Park Commissioner of the JPO
• Dr. Changyu Shen Commissioner of the CNIPA
• Mr. Andre Iancu the Under Secretary of Commerce for Intellectual Property and Director of the USPTO

Representing WIPO as an Observer at the IP5 Meeting was:

• Mr. John Sandage Deputy Director General, Patents and Technology Sector of WIPO

Representing AIPLA at the IP5 Meeting and Industry Trilateral Meeting were the following:

• Ms. Lisa Jorgenson, AIPLA Executive Director
• Mr. Jonathan Osha, AIPLA Board Member
• Mr. Anthony P. Venturino, Co-Chair Harmonization Committee (Vorys, Sater, Seymour and Pease)
• Mr. Alan Kasper, Past AIPLA President, Member, Harmonization Committee (Sughrue Mion)
• Mr. Salvatore Anastasi, Member, Harmonization Committee (Barley Snyder)
• Ms. Chen Wang, AIPLA Deputy Executive Director for Regulatory Affairs

During the IP5 Heads meeting with the Industry IP5, the Patent Offices reported on the efforts of the five offices for the past year on efforts by the Global Dossier Task Force in areas of access to non-patent literature, promoting alerting of office actions to users by email or RSS, efforts to adopt XML for patent prosecution, and advance name standardization, availability of legal status information, and promote inter office document exchange, and streamlining IDS practice.

The Patent Offices reported on the efforts of the five offices for the past year by the Industry Consultation Group, efforts to reduce pendency, work sharing, improvement of IP5 cooperation mechanism and procedures, emerging technology and the Patent Harmonization Experts Panel. The Offices and Industry IP5 also exchanged views on the influence of and preparation for emerging technology/artificial intelligence and the future of IP5 cooperation. 

The Industry IP5 requested the Offices harmonize procedural requirements to make the user experience faster, better and cheaper. For example, Industry IP5 presented on the need to permit one-stop global patent assignment recordation to counteract the high cost of assigning individual patent family members in respective individual countries. Industry IP5 presented on the need to harmonize claim structures and claim fees to eliminate the expense, and potential loss of rights, caused by requiring applicants to amend claims differently for different Offices.

Anthony Venturino of AIPLA gave a presentation encouraging the IP5 Offices to uniformly make it easier for applicants to correct mistakes, revive applications, and restore lost priority claims.  Salvatore Anastasi of AIPLA gave a presentation on the impact of Artificial Intelligence (AI) and other New and Emerging Technologies (NET) on patent practice.  Lisa Jorgenson of AIPLA gave a presentation explaining the protocol the IP5 Offices and the IP5 Industry should use for interacting such that the IP5 Industry has the opportunity to provide unified feedback and suggestions to the IP5 Offices. 

The IP5 Heads meeting with the Industry IP5 ended with a discussion of plans for next year’s meeting of the IP5 Heads of Office with IP5 Industry in China. 

On June 10, 11 and 13, 2019 AIPLA representatives, and other members of the Industry Trilateral met in Incheon Korea.  The Industry Trilateral members are AIPLA, IPO, and JIPA.

During the meeting the attendees engaged in negotiation discussions seeking to harmonize the substantive patent harmonization topics of grace period, conflicting applications (use of patent applications as prior art against applicant’s own later application or a third party’s later application), and prior user rights. This being done as part of preparing a package of suggestions for patent harmonization for the Subgroup B+.

This is being done as part of preparing a package of suggestions for patent harmonization the Subgroup B+. The Group B+ was established by WIPO to move forward on substantive patent law harmonization. Its members are all members of WIPO's Group B, EU member states, the European Commission, EPO member states, the EPO, and South Korea. The Sub-Group B+ consists of representatives from Australia, Canada, Denmark, Germany, Hungary, Japan, South Korea, Spain, the UK, the USA and the EPO. The Industry Trilateral meeting ended with meaningful progress, but there still is more work to be done.