AIPLA Committee Report and Workplan
DATE: January 25, 2017 MEETING: Mid-Winter
COMMITTEE NAME: Harmonization Task Force
COMMITTEE LEADERSHIP: chair Tony Venturino, vice-chair Dave Hill, Board Liaison Nick Godici
DISCUSS THE OVERALL MISSION OF THE COMMITTEE AS IT RELATES TO AIPLA’s VISION, MISSION, and VALUES:
Promote international patent law harmonization and uniform adoption of best practices for patent prosecution and cooperation amongst patent offices worldwide to benefit AIPLA stakeholders.
PROJECTS:
Plans for stated meetings: The Patent Harmonization Task Force has scheduled a CLE session at the AIPLA Spring Meeting. This session is expected to review the history of AIPLA Harmonization efforts, and give updates on the current status of these efforts, including specific progress on conflicting applications, prior user rights, and grace period.
Plans for coordination between stated meetings: Numerous emails and phone calls as well as phone and in person meetings with USPTO personnel.
Plans for communication with the committee clusters/board liaisons: Task Force leadership attends the monthly Global Sector Leadership conference calls.
ADVOCACY: Recent events
• Munich, 15-19 January 2017: Industry trilateral meetings, IP5 Global Dossier Task Force Meeting, and IP5 Industry Consultation Group Meeting.
• Members of AIPLA leadership participated in various international meetings from January 15-19 at the European Patent Office in Munich. Executive Director, Lisa Jorgenson, Deputy Executive Director, Chen Wang, and members of the AIPLA Harmonization Task Force (Tony Venturino, David Hill and Alan Kasper) attended all of these meetings. On January 15 and 16, the Industry Trilateral organization (AIPLA, IPO, Japan Intellectual Property Association (JIPA), and Business Europe (BE)) met to continue efforts and discussions on substantive patent harmonization topics. Discussions primarily centered on non-prejudicial prior art (grace period), conflicting applications, and prior user rights issues.
• On January 17, a meeting of the IP5 Industry organizations (industry trilateral members identified above plus Korea Intellectual Property Association (KINPA) and Patent Protection Association of China (PPAC)) was held to prepare for a meeting of the Global Dossier Task Force to take place on the following day. The Task Force includes relevant personnel of the five IP5 Patent Offices, as well as the members of the IP5 Industry organizations. That IP5 Global Dossier Task Force meeting on January 18 reviewed the status and usage of the Global Dossier to date, and discussions were held on the future needs and priorities for further development of this important IP5 project.
• Finally, a meeting on January 19 was held of the newly established IP5 Industry Consultation Group (ICG). This group recently was formed by the IP5 Offices in order to address a wide range of IP5 topics and projects going beyond the scope of the Global Dossier.
2017 future plans:
• Arlington, VA - AIPLA HQ 10 March 2017: EPO Partnership on Quality Meeting with AIPLA, IPO and ABA IPL
• Seville 30-31 March 2017: Trilateral Heads and Industry meeting.
→ 30 March 2017: Industry and Trilateral Heads meeting (all day);
• May 16-17 2016 - Industry Trilateral Preparation Meeting May 16, 2016.
Industry/B+ Subgroup on Harmonization Meeting May 17, 2016 London, UK
• Valetta/Malta 30 May – 1 June 2017: IP5 Heads meeting
→ 31 May 2017: IP5 Heads/Industry meeting (all day);
• Munich 20 June 2017: Symposium for major IP groups on Harmonization and Global Dossier
It is anticipated that the IT3 and Industry IP5 groups will meet on a day prior to each of the above meetings.
Past Events in 2016
October 2-3 2016 - Represented AIPLA at meetings in Geneva with IT3 and with B+ workstream leadership to discuss ongoing efforts toward reaching consensus and further progress on harmonization issues and future planning.
July-September, 2016 - Prepared AIPLA responses to B+ workstream draft papers and reviewed and coordinated comments of IT3 on these papers. Prepared detailed Survey Monkey survey on various harmonization scenarios and circulated to Task Force, and to substantive AIPLA Committees.
May 16-17 2016 - Industry Trilateral Preparation Meeting May 16, 2016.
Industry/B+ Offices May 17, 2016 London, UK
May 31-June 2 2016 - Industry IP5 Meeting, May 31, 2016. Industry/Heads, June 1-2 ,
Japan
April-May 2016 - Assisted AIPLA in preparing a response to the B+ procedural questions on harmonization and supplemental comments on substantive issues in the B+ paper regarding potential areas for harmonization namely Grace period, Publication of Applications, Conflicting applications and double patenting, as well as Prior User Rights. Assisted AIPLA in preparing a response to JPO case hypotheticals regarding written description/sufficiency of disclosure.
Feb. 2016 - Lisa Jorgenson, Chen Wang of AIPLA and AIPLA Harmonization Task Force representatives Dave Hill, Alan Kasper, Sam Helfgott and Tony Venturino attended the Industry Trilateral meeting in Alexandria, VA and the Industry/Offices meeting in Alexandria, VA. Addressed at the Alexandria meetings. The meetings addressed the following topics: 1. Non-Prejudicial Disclosures/Grace Period, 2. Conflicting Applications, 3. Prior User Rights, 4. 18 Month Publication
Feb. 2016 - Lisa Jorgenson, Chen Wang of AIPLA and AIPLA Harmonization Task Force representatives Dave Hill, Alan Kasper, Sam Helfgott and Tony Venturino attended the Global Dossier Task Force Meeting in Alexandria, VA and the Industry Five meeting in preparation for the Global Dossier Task Force Meeting. The Five Short Term Priorities (Short List) discussed at the meetings were as follows:
1. Provide LEGAL STATUS information, including up to date and real time access to the legal status of applications and patents in the Global Dossier
2. Provide real time ALERT service when important events occur, e.g. changes are made in an application or patent file
3. Provide applicants with XML of all of the documents related to patent application
4. Implement “Patent Prosecution Highway (PPH) request” as a PROOF OF CONCEPT trial
5. Standardize APPLICANT NAME
Other Harmonization Task Force Activities:
-The Task Force prepared comments for AIPLA regarding a Summary of Proposed Amendment to the Thai Patent Act.
-Tony Venturino spoke at the USPTO Biotechnology Pharmaceuticals Chemicals Customer Partnership meeting during April 2016.
PUBLIC EDUCATION: The Task Force will set up a program for coordinating the process of a broader discussion on the Industry Trilateral Patent Harmonization Policy and Element Paper, which is now made public. This will be a subject of the Munich Symposium in June, described above. The Task Force will also continue to promote the development of the Global Dossier.
MEMBER SERVICE: Assisting in further negotiating positions regarding issues in the 2015 Industry Trilateral Patent Harmonization Policy and Elements Paper.
GLOBAL OUTREACH: Everything we do.
SUBCOMMITTEES: Global Dossier Task Force
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