“We leave something of ourselves behind when we leave a place, we stay there, even though we go away. And there are things in us that we can find again only by going back there.”
― Pascal Mercier, Night Train to Lisbon
In mid-September, I had the opportunity to attend together with my colleagues Karri Leskinen and Tomi Salter the World Congress of AIPPI (The International Association for the Protection of Intellectual Property). This year’s congress, with the record-breaking number of more than 2,400 participants from all over the world as well as the highest number of young IP Professionals in AIPPI’s history, took place in the heart of London in the Queen Elizabeth II Congress Centre next to the Supreme Court and Westminster Abbey.
The Congress was formally kicked-off at the Opening Ceremony at the Central Hall Westminster. The keynote speeches were held by former UK IP Minister Jo Johnson, emphasising the importance of IP to pharma, technology, creative and financial sectors, and Sir Robin Jacob, addressing the key problems in IP Law and the crucial role played by IP Lawyers in maintaining strong IP rights. Most importantly, we also learned from his speech that a collective of IP Lawyers, is known as the cornerstone of IP Law.
During the following days we enjoyed numerous presentations and panel discussions on a broad variety of topics ranging from In-house Perspectives on IP Enforcement, Fashion law, Patenting of Antibodies, the latest developments concerning SPCs for Pharmaceuticals, Protecting Trade Secrets in the EU, The Art of IP: Museums and Architecture, Forming portfolios for FRAND licensing, the challenges faced by US patent applications and trademarks for cannabis-related products, to Brexit. As always, it was difficult to decide which sessions to attend.
The Quest for International Harmonisation of IP Law
Committee work with the aim of international harmonisation lies at the heart of the activities of the AIPPI. This year, thousands of IP experts gathered in London to discuss various topics in the field of IP Law. In London, resolutions concerning topics such as Use of Consumer Survey Evidence in Trademark Proceedings, Copyright in AI-Generated Works, Plausibility in Patent Law and IP Damages for Acts other than Sales were adopted based upon the reports that had been prepared before the conference by the national groups of AIPPI. In addition, a resolution concerning Client-Attorney-Privilege was adopted.
There was broad consensus among the national groups on the study question on the Use of consumer survey evidence in trademark proceedings, and the resolution was adopted very quickly. It was agreed that consumer survey evidence should be admissible but not mandatory in any type of trademark proceedings, including administrative and court proceedings, to prove or help prove any facts or circumstances relevant in trademark proceedings, in particular reputation, distinctiveness and confusion. It was also agreed that there should be non-binding guidelines for the setup of consumer surveys that should address items such as the aim of the survey, methodology, number and selection of respondents, and form and order of the questions. It will be interesting to see how the work on drafting these guidelines will proceed.
According to the resolution on the study question on Copyright in AI-generated works any work of art generated by AI must involve human intervention. The adopted resolution outlined specific criteria for where and how a human must intervene for the work to receive protection. It was agreed that it is not enough for a human being to be simply the creator of the AI. However, if a human being feeds data into the AI, the produced work can receive copyright protection, provided that the data used was of human origin. Neither a human nor a non-human can select one work among many AI-generated outputs for copyright protection. Originality is an important and necessary requirement for AI-created copyright eligibility. The right to copyright extends to all AI-generated works that fulfil the necessary requirements of human intervention and originality. Finally, it was stressed in the resolution that AI-generated outputs may be eligible for rights other than copyright protection, even without human intervention.
In the resolution on the study question on Plausibility it was emphasised that the already existing patentability (novelty, inventive step, industrial application and/or utility) and validity (e.g. sufficiency, right to priority, added matter) requirements are sufficient to ensure that the invention protected by the claims is commensurate with the technical contribution made by the specification to the state of the art. There should be no stand-alone ground of patentability or validity based on plausibility. The introduction of a new separate requirement would create legal uncertainty. It was also stated that if plausibility is to be examined (in any of its possible aspects, notably as a requirement of credibility of the technical effect, as a prohibition of speculative patent or as condition of use of prophetic examples), it should be considered as one of many elements of the examination of the already existing patentability and validity requirements.
As regards the study question on IP damages for infringing acts other than sales, it was decided that regardless of whether injunctive relief is available, damages should be available as a potential remedy, and that damages for all types of infringing acts should be determined using the same principles. The owner should receive full compensation for all damage caused by the infringing acts, provided that a causal nexus between such acts and the damage is established. In addition, it was resolved that the principles outlined in the Sydney Resolution on the Quantification of Monetary Relief, relating to the quantification of damages by reference to sales of products by the infringer and/or the rights holder, should be followed. When quantifying damages for infringing non-sales acts relating to specific products, any potential subsequent sales of the same specific products could be used as a benchmark for the quantification. Moreover, it was decided that without prejudice to any rules in relation to exhaustion and res judicata, there should be no franking.
The final adopted resolutions on the study questions will be given to lawmakers and IP authorities around the world to better inform them about IP rights.
Building a Strong Network of International Partners
As IP Professionals we are working in a fast-paced and ever-changing global world. New technology is developed, and new legislation is introduced. In such a complex environment, it is important to have a global and reliable collaborative network that you can turn to, in particular, when surprising and unexpected things happen. When attending international conferences, a priority for us is to meet new foreign IP professionals and to meet in person with our existing foreign partners.
After the long and busy conference days, we were able to socialize more freely with old acquaintances and to meet new international colleagues, many of whom have already become good friends. During the Women in AIPPI -event and the Cultural Evening we were able to enjoy the permanent exhibitions including the exhibition on London fashion for modern women at the Victoria and Albert Museum. The 007 -themed Closing Dinner took place in the beautiful Alexandra Palace, named after Princess Alexandra of Denmark. The Alexandra Palace is also known as the birthplace of television in 1936, when the first high-definition television service was broadcasted from the palace.
Undoubtedly, these beautifully organised evening networking events contributed to the wonderful and relaxed atmosphere at the Congress. Honoured and happy to be a small part of the cornerstone of IP Law.
Next year the AIPPI World Congress will take place in Hangzhou in China.
The author is an IP Lawyer at Boco IP and the Treasurer of AIPPI Finland.