Draft IPTF Meeting Minutes 23 February 2011
Minutes of 20th Meeting of JSTC IP Task Force
23 February 2011, Shanghai, China
1. Welcome
Chair:
The Chair, Dr. Yasushi Matsui, welcomed IPTF members and thanked Semiconductor Industry Association in China for hosting the meeting. Each of the members introduced themselves and their affiliations. After discussion, all members agreed to the revised agenda.
2. Summary of Previous Meeting
Semiconductor Industry Association in Japan gave a brief summary of the previous meeting held in Kobe, reiterating agreed action items.
3. Regional Updates on IP Developments/Cases/Issues
a. Europe IP Update: Semiconductor Industry Association in Europe reported on its Unified Patent System, noting that the Advocates General had raised doubts about the draft regulations in relation to rights of defence. The European Court will publish its opinion on 8 March 2011. Due to the failure to achieve the required unanimity on the translation arrangement proposed in July 2010, EU members proposed adopting a compromise under the ‘Enhanced Cooperation’ provisions of the Lisbon Treaty. The EU Parliament gave its consent to ‘Enhanced Cooperation’ on 15 February 2011. SIA in Europe also outlined the different translation requirements of the various EU members under the London Agreement.
b. Chinese Taipei IP Update: Semiconductor Industry Association in Chinese Taipei reported that as of 22 November 2010, Chinese Taipei began accepting priority claims based on applications filed with the SIPO and China began accepting priority claims based on applications filed with TIPO. Since 16 December 2010, the Taiwan Association for Copyright Protection and the National Copyright Administration in China have been recognized by SIPO and TIPO respectively. Progress has been made in clearing the backlog of patent applications by boosting the number of examiners. Patent approval time has been shortened. In 2010, 1,437 cases were put to the Accelerated Examination Program (AEP). Changes have been made to rules concerning copyright collective management organizations (CMOs).
c. China IP Update: Semiconductor Industry Association in China noted that it has become one of the global top four PCT filers. The State Council has revised copyright rules and China has released strategies on patent development. A new campaign has been launched against IPR violations, including increasing violation control at production sources, enhancing market administration, intensifying crackdowns and enforcing laws. The total number of resolved patent disputes in the two months following the launch of this special action increased by more than 70 percent.
d. Japan IP Update: Semiconductor Industry Association in Japan reported on the anti-counterfeiting and anti-pirating campaign including a web-based simulator of the damage caused by counterfeiting, such as health hazards. The Third Working-Level Consultations of the Multilateral Meeting on the Patent Prosecution Highway was held in Tokyo in January 2011, discussing common technical documents concerning applications/procedures and notification to users. A new JPO logo was adopted, commemorating the 125th anniversary of the institution of industrial property rights.
e. Korea IP Update: Semiconductor Industry Association in Korea presented on compulsory licensing requirements, amendments to which came into force as of 1 January 2010, focusing on relaxation of compulsory license requirements for government use. Amendments were also made to the Design Patent Act, making drawing requirements simpler and more flexible. Amendments to the KIPO fee schedule include the introduction of instalment payments for the trademark registration fee as well as hikes in other types of fees.
f. US IP Update: Semiconductor Industry in US reported on patent reform, noting that the Senate will very shortly move their bill to the floor. Some significant amendments are anticipated, such as in relation to first-to-file. There seems to be general agreement that the USPTO needs to keep the funds it gets from its fees rather than these going to Congress, and legislation may be proposed in that regard. On the case law side, the US Supreme Court has decided to take up the I4I v. Microsoft case in relation to the burden of proof. Depending on the outcome of the case, the standard of proof for invalidating patents in the court could be changed from “clear and convincing to “preponderance of the evidence” for prior art not previously considered by the USPTO during examination of the patent application.
4. Improving Patent Quality:
a. Europe Update: Reporting on its meeting with the EPO, SIA in Europe referred to a quantitative survey encompassing ten major areas, in which an overall comparison was made, with the EPO/GPO faring well in a global comparison of patent quality. The EPO is quite transparent in terms of keeping standardized and transparent metrics. Significant effort is put into examiner training, and the examiner turnover ratio is low. More needs to be done to improve the speed of patent examinations. Translation costs push up the overall examination cost.
b. China Update: SIA in China noted that it had nothing to report.
c. Japan Update: SIA in Japan noted that it had met with the JPO on 2 August 2010, with the JPO welcoming the suggestion chart and expressing its willingness to continue to hold internal meetings with SIA in Japan. In relation to the metrics in the suggestion chart, statistics are already published annually on the JPO website. As for more detail for rejections relating to lack of inventive step, the JPO offered no specific comment.
d. Korea Update: SIA in Korea had follow-on discussions with the Korean Patent Office shortly following the previous GAMS, including specific areas of improvement. The KPO welcomed the input and noted that it would look carefully at the suggestions. The KPO also noted that it was taking steps to improve transparency, including putting up more information on its website.
e. US Update: SIA in US met with the USPTO Patent Commissioner on 23 July 2010, discussing the chart and also the patent reform bill, with the SIA in US noting that it must be neutral on the latter issue due to different views amongst its members. Technology Center 2800 will hold a tech fair at USPTO headquarters in May 2011 as an opportunity for industry to educate examiners and share ideas. The fair, which is open to participation by all interested parties, will include semiconductor patent applications and cover a wide range of training topics. SIA in China noted that it would like more information about such patent training mechanisms. The USPTO and the Public Patent Advisory Council have developed seven quality metrics for self-assessment which may be useful for other industry associations in discussions with their own patent offices.
f. WIPO Letter: SIA in Chinese Taipei reported on its communication with WIPO, noting that a letter had been sent by the JSTC Chairs in September 2010, with a response received from WIPO dated 19 October 2010, thanking JSTC for its contribution in this important area. SIA in Korea suggested that more contact could be developed with WIPO in relation to, for example, patent highways and prior art assistance.
Action: It was agreed that SIA in Korea would send out information and proposals for contact with WIPO to the TF members a few weeks before the September GAMS meeting.
SIA in Chinese Taipei also raised the issue of ongoing regular dialogue with members’ respective PTOs, in relation to which it was agreed that associations would periodically review the chart to check on improvements and problems in patent review, other ideas on enhancing patent quality, and then to update the chart and share it with the PTOs if appropriate.
Action: It was agreed that SIA in Chinese Taipei would send out before September a reminder to members about what actions were required to review and update the chart so that SIA in Chinese Taipei could pull this information together before the meeting.
SIA in US noted that the USPTO has a paper titled “Adoption of metrics for the enhancement of patent quality – Fiscal Year 2011.”
Action: IPTF members to review the paper and encourage their PTOs to consider similar metrics for self-assessment of patent quality. The paper is available at http://www.uspto.gov/patents/init_events/qual_comp_metric.pdf.
5. Semiconductor Counterfeiting:
Updates and Additional Information:
a. SIA in Europe reminded members of the collaboration between French Customs and one of the ESIA-ACTF member companies in a successful raid on counterfeiters that was, however, unable to seize some products because the companies had not recorded their trademarks. There has subsequently been another case of cooperation enabling the seizure of a very large amount of counterfeited ICs in Hong Kong. SIA in Europe plans to further develop such international cooperation through the five multilateral actions agreed by the IPTF/JSTC. SIA in Europe suggested showing the WSC and the GAMS the progress made and difficulties faced in each region along the lines of the five points emerging from the 2009 Customs Experts Workshop.
b. SIA in Japan noted that it had been active in anti-counterfeiting activities and also actively encouraged its member companies to register and record their trademarks with customs authorities. SIA in Japan has contacted the Japanese government concerning the attendance of customs officials at the 2011 Anti-Counterfeiting Workshop, but has yet to receive a concrete response. The SIA in Japan Board has approved an ‘Alert on Semiconductor Counterfeits’, which is posted on the JEITA website in Japanese and English to promote awareness of the risks of counterfeiting.
c. SIA in Korea raised one anti-counterfeiting case in which one company’s website was illegally used by other smaller companies and a shutdown order was issued.
d. SIA in US noted little success since the last meeting, although there has been progress on the Florida case. In terms of customs, the main issue is organizing the September meeting and working out how to pay for the event.
6. Non-Practising Entities (NPEs)
SIA in Korea gave a presentation on NPEs, noting that the IPTF and the JSTC have an obligation to prepare a report for the May WSC meeting and suggesting that considerable input had already been obtained from each member association which can be provided as a report. SIA in Korea reminded members of its proposal for the Joint Statement language on NPEs and also provided additional language from SIA in Europe. SIA in Korea outlined its plan for commissioning a detailed and objective study by a third party.
SIA in Chinese Taipei supported SIA in Korea’s proposal and pointed out that the narrow definition provided should not apply to any WSC member companies.
SIA in US strongly objected to the draft joint statement language distributed prior to the meeting as completely ignoring the fact that the IPTF has been unable to reach consensus on the NPE issue despite years of considerable discussion. SIA again underscored that, because the SIA has different views within the SIA, SIA cannot agree to any position that would advantage one side or the other in discussions in the U.S. on patent reform, and the IPTF could better focus on the more productive issue of patent quality.
SIA in China concurred with SIA in Korea that some report had to be made and suggested that, while consensus certainly seemed out of reach at the moment, SIA in Korea should conduct its study.
SIA in Japan noted that it had stated from the outset that it would be difficult to reach consensus on a definition. Without an agreed definition, no progress was going to be made in discussion, and consequently further discussion would not be productive.
In terms of reporting to the JSTC, SIA in US proposed that the IPTF inform the JSTC that no consensus had been reached and propose that the JSTC strike out this agenda item so the IPTF could focus on the more productive issue of patent quality. Associations that wanted to pursue further work on the issue could do so outside the WSC framework, as was agreed at the last JSTC meeting. SIA in Europe felt that the tradition was to report on the process, not just the results of discussion, and that it would then be up to the JSTC to decide whether to stop the issue and what was to be reported to the WSC. SIA in Korea suggested that as the IPTF was under obligation to provide a report to the JSTC, the chart should be tabled to the JSTC as an accurate representation of the divergence of views within the IPTF. This was supported by most other members.
Action: The Chair concluded that the chart outlining members’ views on NPEs would be tabled to the JSTC to fulfil the obligation to make a report to the JSTC while also providing an accurate representation of the divergence of views within the IPTF.
7. Draft Joint Statement
Action: The Chair presented a draft IP Joint Statement and asked member associations to comment via e-mail.
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