Chair’s Report

on the Intellectual Property Rights Experts Group XII

Sydney, March 20-21 2001

Introduction

  1. The twelfth meeting of the APEC Intellectual Property Rights Experts Group (IPEG XII) was held in Sydney, Australia from 20-21 March 2001.
  1. The meeting was attended by representatives from: Australia; Canada; Chile; thePeople’s Republic of China; Hong Kong, China; Indonesia; Japan; theRepublic of Korea; Mexico; New Zealand; Philippines; Singapore; Chinese Taipei; Thailand; theUnited States of America; and Vietnam. The APEC Secretariat also participated. The list of participants appears as the Document IPEG XII-Participants.

Agenda Item 1.Opening

  1. The Chair welcomed the participants, and thanked Australia for hosting the meeting.
  1. The Chair noted that this was the first IPEG meeting since the new Collective Action Plans were adopted by the CTI, and asked IPEG members to tackle new issues in an active, ambitious and cooperative way in order to embark upon the new activities under the new CAP.

Agenda Item 2.Adoption of the Agenda

  1. The draft annotated agenda (see Document IPEG XII-2) was adopted by all economies.

Agenda Item 3.Report to and Instructions from the CTI

  1. The Chair briefed the member economies on the IPEG report submitted to the CTI meeting in Bandar Seri Begawan, Brunei Darussalam, September 2000 (see Document IPEG XII-3-1 and XII-3-2).
  1. The Chair reported on the CTI meeting in Beijing, People’s Republic of China, 2001 (see Document IPEG XII-3-3 and XII-3-4) where the CTI gave their endorsement to IPEG’s proposal on the new Collective Actions in the area of IPR (see Document IPEG XII-3-5). It was reported, on the other hand, that the proposed Objectives and Guidelines were only preliminarily endorsed by the CTI, being subject to possible future comments and proposals which might be provided by CTI members and economies in the course of the broader review process of the CTI on OAA Guidelines. The Chair in advance asked for members’ cooperation to review the possible future comments and proposals.
  1. The APEC Secretariat supplemented that the IPEG is one of the few sub-fora which had completed the review work of OAA Guidelines (see Document IPEG XII-3-6 and XII-3-7). He briefed the members that the Informal Group on Implementation of WTO Obligation and Rules of Origin had started to work on intersessional consideration of project proposals to be funded under TILF funds on an urgent basis. He also noted that the IPEG was honoured to have present MrGerman King, who is the newly elected vice-chair to the CTI.

Agenda Item 4.Report on the Result of the APEC Copyright Seminar

  1. Japan reported on a copyright seminar held by the Japanese Copyright Office, in Tokyo, March 2001 (see Document IPEG XII-4). It was attended by 20 economies and the APEC Secretariat and provided an opportunity for an exchange of information and views on four main topics: e-commerce, WIPO treaties, emerging issues and new technologies. It was noted that there is a continuing need for policy dialogue on copyright e-commerce issues in the IPEG.

Agenda Item 5.New collective actions

  1. Noting that this is the first meeting under the new CAP, the Chair encouraged members to discuss how to proceed with each of the new CAP items.

(1)item a: Deepening the Dialogue on Intellectual Property Policy
(Lead Economy: Convenor)

  1. The Chair noted that, while this CAP item is flexible enough to take up new issues, the annotation in the CAP gave guidance that a shared understanding of the latest trends in IP policies should be achieved. The Chair commented that this agenda item would be appropriate for discussion of emerging issues that did not readily fall under other agenda items.
  1. Possible emerging issues member economies noted that IPEG may want to consider at some future stage included: traditional knowledge, trends that could affect filings, internet IP issues (including IP infringement in the context of internet or conflicts between IDN and trademark, international jurisdiction in the context of IP systems), competition policy and IP (including measures to counter anti-competitive use of IP rights), compulsory licensing, and new policy ideas.
  1. Hong Kong, China suggested and Singapore and other economies supported to use this CAP item as a “clearing house” by which members could examine whether the emerging issues raised and discussed under this CAP item should be in depth dealt with in which of the other CAP items.
  1. The Chair made a presentation on changes in world patenting activity noting the rapid and large increase in patent applications filed to overseas (see Document IPEG XII-5(1)-1). This increase is leading to added pressures on worldwide patent obtaining systems to become more efficient. It also leads to stronger needs of more harmonized patent systems, reduction of costs on the part of applicants, and reduction of duplicated workload on the part of patent offices. Solutions to these pressures could form the basis of future IPEG discussions under CAP item (b-2) and item (b-3) as well as this CAP item.
  1. The USA and other members shared the view of the Chair regarding the trends in patent filings and their impact. The USA also noted a counter trend in trademark application where it is projected that filings will fall by up to 40%, as opposed to increase in patent filings. The exchange of trends in filings among member economies was encouraged to enable member economies to plan appropriate measures to manage changing trends.
  1. Hong Kong, China reported on two new policy measures; the ban of taking recording equipment in cinemas, and criminal sanctions against end users of infringing copyright articles.

Possible follow-up:

Members to circulate specific proposals and issues papers on new policy dialogue items in advance of the next IPEG meeting

(2)item b: Support for Easy and Prompt Acquisition of rights

(i)(item b-1) Participation in International IP-related Systems
(Lead Economy: the USA)

  1. The USA outlined its perspective on recent international processes aimed at streamlining and harmonising IP protection, especially the conclusion of the Patent Law Treaty, reform of the Patent Cooperation Treaty, the resumed Substantive Patent Harmonization Treaty, WIPO’s draft Audiovisual Treaty, the Madrid Protocol, and WIPONET.
  1. The USA also described an enforcement training package USPTO had developed with WIPO that would be suitable for delivery in other regions. The USA was willing to share this training material with member economies.
  1. In the subsequent discussions, Australia drew attention to possible burden on users caused by mutual incompatibility of electronic filing systems and intellectual property databases among economies, and suggested that concrete steps be taken to consider this matter.
  1. Singapore called for more systematic way of dealing with various issues covered in the deliberation, and remarked that it would be desirable to address some of the above issues such as the WIPONET, US-WIPO collaboration in enforcement training, and the audiovidual issue, under the relevant agenda items in future IPEG meetings. The Chair requested that this matter be considered by the lead economy towards the next IPEG meeting.
  1. Responding to an inquiry, the USA clarified its explanation on US-WIPO collaboration in enforcement training and mentioned that half of the participants were selected by USPTO and the rest by WIPO.
  1. Australia made a presentation on its participation in the PLT Diplomatic Conference noting that its legislation almost complies with the PLT though its government has not yet taken a decision on acceding to the treaty. Australia is committed to the simplification and harmonisation of international IP systems and supports reform of the PCT. Australia advised that its instrument of accession to the Madrid Protocol was expected to be deposited with WIPO by the end of March 2001.
  1. Mexico gave a presentation on its experiences in relation to the PCT (see Document IPEG XII-5(2)(i)). The experiences of IMPI were discussed including aspects of human resource training and administration changes. The presentation also covered statistical information on the implications of Mexico’s accession to the PCT upon patent filing in the economy.

Possible follow-up:

At or before the next IPEG meeting, Members to provide detailed information on:

  • specific experiences in implementing international IP systems such as the PCT and Madrid
  • policy and positions taken on further development of such systems
  • proposals for coordinated IPEG work in this area

(ii)(item b-2-1) Establishing Internationally Harmonized IPR Systems
(Lead Economy: Japan)

  1. Japan outlined its views on WIPO's current activities concerning substantive patent harmonization (see Document IPEG XII-5(2)(ii)). While the number of filings in national patent offices was rising rapidly, much of this activity was accounted for by an increasing tendency for patent applications for the same underlying invention to be filed in more national patent offices. As a result, there is an increasing need to consider measures to implement cost reduction and to decrease the duplication of work in the areas of search and examination. This could be achieved through measures to decrease differences in procedures for obtaining patents between offices and to increase efforts for substantive harmonisation so that there is increased predictability of the outcomes of patent examination. Japan proposed to encourage IPEG members to exchange information and views in order to deepen mutual understandings of their patentlaws/practices, thereby contributing to the international rule-making efforts at WIPO.
  1. Hong Kong, China also suggested that harmonisation and decreased costs to patent applicants had increased demand for protection but this had not necessarily made it easier for national offices with demand leading to bottlenecks.
  1. The USA announced that USPTO had just began a public hearing procedure on the effort to harmonize substantive requirements of patent laws resumed at WIPO, including “first-to-invent” principle, and stressed the importance of the substantive patent law harmonization.

Possible follow-up:

At or before the next IPEG meeting, Members to provide views and information on measures to promote harmonised international IP systems, including updates on activities in other multilateral fora

(iii)(item b-2-2) Standardization of Trademark Application Form
(proposed by Singapore)

  1. Singapore made a presentation regarding their further work on standardization of trademark application forms since the IPEG XI meeting (see Document IPEG XII-5(2)(iii)). The common application form could be used as a guide to increase commonality and as a user-friendly means of assisting practitioners. Differences amongst economies could be highlighted in an annex for users and practitioners. It was suggested that any differences be included under agreed headings, including a ‘nil’ where there was no difference. Member economies were asked to forward their inputs for the annex and to identify and advise Singapore of any changes to their previous responses before the annex was updated.

Possible follow-up:

Members to update responses to Singapore

(iv)(item b-2-3) Well-known Trademarks (Lead Economy: Thailand)

  1. Lead economy Thailand will report on the consolidated survey on practices concerning the protection of well-known marks at the next IPEG meeting.

Possible follow-up:

Thailand to report on the consolidated survey on practices concerning the protection of well known marks at or before the next meeting

(v)(item b-3) Cooperation on Searches and Examinations
(Lead Economy: Japan)

  1. Japan presented a comparative study on the modes of search and examination cooperation in patents as outlined in their paper (see Document IPEG XII-5(2)(v)). In the presentation,the following five possible modes of cooperation were analyzed and compared with each other: (i) provision of search and examination results directly between offices; (ii) arrangements to require applicants to submit search and examination results of other offices; (iii) utilization of ISRs and IPERs under the PCT system; (iv) Modified Substantive Examination (MSE) system; and (v) legally binding recognition of a foreign patent. Specific issues addressed in the presentation included the advantages and disadvantages of each of the cooperation possibilities, factors to be taken into account upon the choice among the possibilities, and measures to minimize the disadvantages of each mode of cooperation.
  1. Following the presentation, Hong Kong, China drew attention to the possibility of restriction on the use of cited documents, including those obtained through the Internet, for the purpose of cooperation due to the existence of copyright on such documents.
  1. Australia enumerated various points of view relevant to cooperation in search and examination, including: the cost issue and its implications on users, in particular, SMEs; mechanisms such as a bilateral agreement to implement cooperation; synergy between patent offices and judicial authorities; transmission of information on examination under way; arrangements to furnish translation; implications upon cooperation of difference among economies in patenting policies and practices as well as degree of presumption of patent validity; and the possibility of work-sharing among patent offices in accordance with technological fields.
  1. Regarding the last point made by Australia, it was acknowledged that it would be a challenge to find and retain staff with some technological backgrounds such as business methods, and that economies might need to consider where expertise might be clustered for possible assistance.
  1. Responding to the Australia’s comments, Japan made some remarks concerning the expanding opportunity to utilize computer networks as a mechanism to facilitate transmission of examination results as well as the possibility that wider choices of applicants among PCT ISAs might lead to more frequent choices made by applicants according to technical fields.
  1. In the subsequent discussions, the usefulness of the study was recognized and further exchange of members’ experiences in cooperation in search and examination was called for.

Possible follow-up:

Members to consider possible APEC IPEG models for cooperation in search and examination based upon their experiences, taking into account measures to overcome disadvantages, and make the best use, of each mode of cooperation

(3)item c: Electronic Processing of IPR-related Procedures

(i)(item c-1) Electronic Filing Systems (Lead Economy: USA)

  1. The USA presented a paper on the current situation with electronic filing and indicated that up to 30% of trademarks are filed this way (see Document IPEG XII-5(3)(i)-1 and XII-5(3)(i)-2). The comparative figure for patents is less since the recent introduction of e-filing for patents.
  1. The presentation led to discussion on concern about the low rate of e-filing utilization. The USA pointed out that the prospects of less late e-filing could cause backwardness in investment in establishment of national e-filing system. Some economies shared that concern. Japan and Korea indicated fee differentiation in favour of the e-filer. Korea was suggested that one advantage of e-filing was the automatic check of formalities available. USA indicated that law firms were less likely to e-file because of the need to change internal systems. This observation was supported by other members economies. Members agreed to discuss strategies to settle users’ resistance and encourage applicants to utilize e-filing.
  1. Australia also made a short presentation on its Patents – Electronic Customer Communication System (ECCS) focussing on the use of electronic filing systems for the Innovation Patent which is set to be implemented in May 2001 (see Document IPEG XII-5(3)(i)-3). The electronic customer communication system (ECCS) will be a 24 -hour service for IP Australia customers and accessible worldwide. Customers will still be able to choose to use this service or paper forms for any Innovation Patent related action. Mention was made of the Government’s commitment to ensure that access to all its services could be made online by July 2001.
  1. Mexico made a presentation on the use of electronic filing by IMPI showing current trends, discussing benefits provided as a result of e-filing of applications and touched briefly on issues such as legal aspects, procedure definitions, cultural differences which may impact on use of e-filing (see Document IPEG XII-5(3)(i)-4). The use of two schemes, one for high volume users and one for low volume users was highlighted.
  1. Korea made a presentation titled KIPOnet Challenge for the New Millenium as outlined in more detail in the resource booklet “Introduction of KIPOnet System” (see Document IPEG XII-5(3)(i)-5). The presentation guided delegates through the project from inception, preparation of applications, filing, examination and publication. The presentation discussed issues such as stability of the system, benefits (including cost savings) and user support.
  1. Following the final presentation, delegates discussed the possibility of an APEC forum where IP offices could raise e-filing issues and discuss these with users of the IP system. The Chair suggested that there could be an IPEG initiative on utilization of e-filing. Hong Kong, China offered to prepare an informal paper on a suitable strategy for dialogue.

Possible follow-up:

Members to consider possible forms of technical cooperation on electronic filing, such as:

  • technical exchange and training forum
  • advice on technical requirements of systems used and availability of software for other IP offices

Hong Kong, China to prepare an informal paper on a suitable strategy for promoting use of e-filing and Members to discuss further developments of the strategy

(ii)(item c-2) Dissemination of Information by Electronic Means
(Lead Economy: Australia)

  1. Australia presented the latest developments pertaining to the development of the APEC IPEG web site and demonstrated a number of linkages to IP offices, calendars, comparisons of data between members and other general IP information (see Document IPEG XII-5(3)(ii)). Australia sought agreement from delegates to continue the project along the current lines as displayed.
  1. The APEC Secretariat reminded the lead economy to ensure that the nomenclature and terminology to be used are in conformance with relevant APEC guidelines and practices. As required by the Guidelines on APEC database projects and Intenet Websites, the lead economy needs to develop a maintenance plan that shows the schedule of dates for reviewing the database, and a financial plan that shows how the cost of building the database and its ongoing maintenance will be paid.
  1. Member economies agreed that Australia would continue to develop and maintain the site for a period of two years. During this time they would keep detailed records on the resources required to maintain the site and IPEG would consider the most efficient way to maintain the site after that time.
  1. Australia also agreed to measure traffic on the site and would provide statistics to IPEG. Australia encouraged member economies to provide updates on information for the site and to provide details in areas where economy specific data was missing.
  1. Australia also reported on the finalisation of the IPEG survey of laws (a TILF-funded project) and agreed to circulate the final draft before publication. It suggested that the information could be incorporated onto the website. The economies of Vietnam, Malaysia and Indonesia were thanked for their input into the project and it was noted that the project also served to prepare necessary notification documentation in the context of TRIPS.

Possible follow-up: