AIPPI FORUM BUENOS AIRES. Session I

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1 AIPPI FORUM BUENOS AIRES October 11 and 12, 2009 Session I Recent developments in the criterion of inventive step / nonobviousness and the outlook for the future Sunday, October 11, to h and to h Moderator: Jorge Otamendi (Argentina) Speakers: Dan Altman Koen Bijvank Seong Ki Kim Eleni Kossonakou Gabriel Leonardos (USA) (Netherlands) (Korea) (Germany) (Brazil)

2 Short description The inventive step criterion is the criterion for patentability which has been under debate for quite some time now. Patent offices around the world as well as courts and practitioners are discussing whether the definition and the standards which have been used in the past are still valid or need to be adapted to new circumstances. Some patent offices may be inclined to apply a higher standard in order to cope with the significant backlog of applications which they have been facing over the past years. Also, critical voices are repeatedly raised in public claiming that too many patents of low quality are granted and that in particular those patents are being misused to create unjustified monopolies. Raising the bar and Trivial patents are among popular phrases often used in the public debates. The European Patent Office is currently conducting a study collecting opinions of the interested circles with regard to issues of inventive step. The ultimate goal of this study is to find practical solutions to guarantee a quality of granted patents which is accepted by the public and which also supports the patent system as such. Also AIPPI will contribute to this study. The session in Buenos Aires will consider the inventive step criterion from different angles. It will analyse the current situation in different parts of the world and highlight the latest developments as to how this criterion is applied in practice. It will at the same time try to give an outlook into the future and to provide proposals how to maintain a high quality standard of granted patents. The panel will feature practitioners, applicants and representatives of patent offices.

3 Curriculum Vitae Jorge Otamendi Jorge Otamendi was born in Buenos Aires, Argentina, May 19, Lawyer, Argentine Catholic University (UCA, Buenos Aires, Argentina), 1971; Doctor in Law and Social Sciences, National University of Buenos Aires, 1978; Master in Comparative Law, University of Illinois at Urbana Champaign, Patent and Trademark Agent, Academic Activities: Invited professor in post-graduate courses at the Austral University, School of Law, 1996-present (Buenos Aires); invited professor in the Master of Intellectual Property at the Palermo University, School of Law, (Buenos Aires); professor of Court Regulation of Competition at the Universidad Argentina de la Empresa (UADE), School of Law, (Buenos Aires); assistant professor of Economic Law at the UCA, School of Economics, ; professor of Industrial Law at the UCA, 2000-presente. Advisor to the Undersecretary of State of Economy, Advisor to the Secretary of State of Industrial Development, Publicacions: Author of Derecho de marcas ("Trademark law") Buenos Aires, Abeledo-Perrot, sixth edition, 2006; Chapter II, Obligations, sections 27, 28, 29 and 30 of the Commercial Code and complementary provisions. Case law and jurisprudence analysis (Raúl A. Etcheverry, direction; Héctor O. Chomer, coordination), Hammurabi, Buenos Aires, 2006; and Las relaciones comerciales y las restricciones a la competencia ("Business relationships and restrictions to competition") Buenos Aires, Abeledo-Perrot, Also published several articles and papers in Argentina and other countries. Moreover, he was lecturer in different forums and national and international congresses. Member: Buenos Aires Bar Association; Argentine Association for Industrial Property Protection; Inter-American Association of Industrial Property (Permanent Secretary, ); Argentine Association of Industrial Property Agents (President, ); London Trademark Agents Institute; Licensing Executive Society (Secretary of the Section Argentina, ); Federation Internationale des Conseils en Propriete Industrielle (FICPI); European Communities Trademark Practitioners Association (ECTA); International Association for the Protection of Intellectual Property (AIPPI, President of the Argentine Group, 2004-present; Member of the Program Committee, ); Institute of Legislative Studies of the Argentine Federation of Bar Associations (Director of the Industrial Property Division, 1980-present); Industrial Property Institute of the Bar Association (Secretary, 1988-present). Practice Areas: Trademarks, Litigation, Competition Law, Transfer of Technology, Antitrust, Licensing, Foreign Investment. Languages: Spanish, English and French.

4 Dan Altman Legal Areas of Emphasis: Copyrights, Intellectual Property Due Diligence, Interferences Practice, International Intellectual Property Matters, Licensing, Patents, Right-to-Practice Opinions, Trade Secrets Technical Areas of Emphasis: Biotech, Chemical, Medical Devices and Procedures, Pharmaceuticals, Plants Professional Profile: Daniel E. Altman is a partner in Kobe Marten s Orange County office. He specializes in patent protection and related licensing issues for the biotechnology, pharmaceutical and chemical industries. A particular specialty of Mr. Altman s relates to foreign patent protection for these industries. Prior to joining the firm, Mr. Altman was a teacher for the Los Angeles Unified School District, where he taught physical science to seventh and eighth grade students. During law school, Mr. Altman was an editor for the High Technology Law Journal (now the Berkeley Technology Law Journal). He completed an externship with the Honorable Terry J. Hatter, now Chief Judge, U.S. District Court for the Central District of California. Mr. Altman joined the firm in 1989 and became a partner in Education: University of California at Berkeley, Boalt Hall School of Law (J.D. 1989) University of California, Los Angeles (M.A. Biology, Molecular Biology 1984) University of Illinois at Urbana-Champaign (B.S. Biology 1980) Representative Patents: 6,110,895 Method of promoting healing in skin grafts 5,853,724 Dampening of an immunodominant epitope of an antigen for use in plant, animal and human vaccines and immunotherapies 6,495,100 METHOD FOR STERILIZING DEVICES IN A CONTAINER Admissions/Qualifications: State of California Registered to practice before the U.S. Patent and Trademark Office Professional Memberships & Affiliations: Orange County Patent Law Association American Intellectual Property Law Association (AIPLA) Biotechnology Industrial Organization International Bar Association Licensing Executive Society

5 Teaching/Adjunct Professor: University of San Diego School of Law "Biotechnology Law" (1996 to the present) Articles, Speeches & Seminars: Mr. Altman has spoken extensively in the field of patent law both in the United States and abroad. His recent speaking credits include lectures for the AIPPI-Japan, Orange County Patent Law Association, Licensing Executives Society, American Intellectual Property Lawyers Association, KTK (Osaka), and the Australasian Biotechnology. Mr. Altman has also published articles in the Orange County Business Journal, ILS magazine, and Managing Intellectual Property magazine. Language Proficiency: Spanish Koen Bijvank Koen Bijvank graduated in organic chemistry (1995) at the University of Groningen. As patent attorney with VEREENIGDE, Koen has gained experience in numerous aspects of creating and successfully defending patent portfolios, including the shaping of patent strategies for both small and large sized companies. His main expertise is in the fields of bio-organic chemistry, agrochemistry, medical technology and pharmaceuticals. For a number of years, he has spent a large part of his time on international law suits in these fields. Koen is a tutor for CEIPI in Strasbourg, training candidates for the legal part of the examination to qualify as a European Patent Attorney. He is also a member of the editorial board of Het Bijblad bij de Industriële Eigendom, the official journal of the Dutch Patent Office, and of the Executive Committee of the Dutch chapter of AIPPI. Seong-Ki Kim Practice Mr. Kim served as a Patent Examiner at the Korean Intellectual Property Office ("KIPO") in the organic chemistry division. Mr. Kim also served as a KIPO delegate to the Uruguay Round Negotiations, which resulted in the conclusion of the World Trade Organization's Agreement on Trade-Related Aspects of Intellectual Property Rights, commonly known as the "TRIPS" Agreement. As an attorney in private practice, Mr. Kim prosecutes patents and has extensive experience in patent appeals. Mr. Kim is fluent in Korean and English. Professional Experience Mediator, Seoul District Court (2002-present); Member, Advisory Council for Technology Policy, Ministry of Commerce and Industry ( ); Mediator, Korean Intellectual Property Office (1995-present); Associate Attorney-in-Training, Baker Botts LLP, New York City (1989); Associate Attorney-in-Training, Lieberman & Nowak, New York City (1988)

6 Selected Publications "The Impact of Multilateral Trade Negotiations on Intellectual Property Laws in Korea," UCLA Pacific Basin Law Journal (1994); "Patent Law of China," Korean Journal of Comparative Law (1990). Education Cornell Law School (J.D., 1990); Seoul National University (Masters of Public Administration, 1984); Korea Advanced Institute of Science and Technology (M.S., Chemistry, 1980); Seoul National University (B.S., Chemistry, 1978). Eleni Kossonakou Eleni Kossonakou holds a law degree from the Athens' University Law School. She specialised in industrial property law at the Law School of Strasbourg University Robert Schumann, where she obtained the Diplôme d'études supérieures spécialisées (D.E.S.S.) "Accords et Propriété Industrielle" at the C.E.I.P.I. (Centre d'études Internationales de la Propriété Industrielle). Eleni Kossonakou joined the European Patent Office in 1988 as a lawyer in Directorate Patent Law, where she still is today. This means providing internal assistance on EPC- and PCT-related procedural and/or substantive legal issues but also answering external legal enquiries; being member of an examining or an opposition division; participating in working groups, such as those set up in the last couple of years in the framework of Raising the Bar within the Strategic Renewal Process, but also EPO delegations in Trilateral and international (WIPO- convened) meetings; providing legal training both in house and externally. Legislative drafting (amended Implementing Regulations to the European Patent Convention, legal framework for the electronic filing of European patent applications etc) is also an important part of past and present activities. Gabriel Leonardos is a Brazilian lawyer, partner of Momsen, Leonardos & Cia., a professional firm founded in 1919 with offices in Rio de Janeiro and São Paulo, specialized in patents, trademarks, technology licensing and copyright law. In his firm, he is involved in negotiating licensing agreements and in litigation in intellectual property cases. After completing his Law studies at the State University of Rio de Janeiro (UERJ) he took a postgraduation in German Law from the Ludwig-Maximilian University, in Munich, Germany, and was a guest research fellow of the Max-Planck-Institute, in Munich, from 1988 through He has a LLM degree from the University of São Paulo, completed in His Masters thesis named "International Tax Law and the Taxation of Technology Transfer" was published as a book in Brazil. Gabriel is currently Honorary President of the Brazilian-German Chamber of Commerce of Rio de Janeiro, and a Member of the Board of Directors of the Rio de Janeiro State Bar, where he is the Chairman of the Industrial Property & Piracy Committee. Gabriel is also licensed in Brazil as a Patent & Trademark Attorney and is currently Vice-President of the Brazilian Association of Patent & Trademark Attorneys. Gabriel is also commonly called to work as an arbitrator and mediator, being a member of the International Trademark Association - INTA Panel of Neutrals and several Arbitration Chambers. He often publishes articles in the leading Brazilian and international law journals covering subjects of intellectual property. Gabriel is a guest Professor in post-graduation courses, and a frequent lecturer in seminars and meetings.

7 Gabriel is a member of the Editorial Board of the prestigious ABPI Gazette, the journal of the Brazilian Intellectual Property Association (the Brazilian branch of AIPPI) where in the recent commemorative edition No. 100 (May-June/2009) he published an article (written in collaboration with Rafael Lacaz Amaral, a colleague attorney in his firm) called Inventive Step and Sufficiency of Description The Court-Appointed Expert as a Technician in the Matter. Short summay of presentation The inventive step requirement is still under construction in Brazilian law as only in 1996 it has been expressly adopted in Brazil as a patentability requirement. This requirement aims to verify whether or not an invention makes a substantial contribution to the state of the art. According to the Brazilian Patent Act, the person skilled in the art is the hypothetical technician who will verify whether or not an invention meets the inventive step requirement. In order to avoid subjective approaches to the finding of inventive step, it is important to establish objective criteria for the application of such requirement, including who the person to judge the fulfillment thereof might be.