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International Education Subcommittee

The International Education Subcommittee aims to foster education and greater understanding of IP in the chemical arts in jurisdictions outside the USA. We will keep members up-to-date with the latest developments in international law, especially relating to chemical inventions and we will interact with members through regular newsletter articles and email updates, as well as sessions at the AIPLA meetings throughout the year. In 2018 we hope to expand our efforts, with contributions from more jurisdictions. If you are interested in getting involved, we would greatly appreciate your input. Please contact the subcommittee chair using the details given below.

International Education Subcommittee Chairs
Phone: +49 (0) 89 2441 299 0 ​
Email: mbarton@forresters.co.uk
Forresters
Munich, Germany


Wallinger Ricker Schlotter Tostmann
Munich, Germany

China Correspondent of Chemical Practice Committee’s International Subcommittee:
Tee & Howe Intellectual Property Attorneys​
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Japanese Law Update -- provided by Kawaguti & Partners, Japan

Patent Law Amendment in 2018

A bill of an amendment of the Japanese Patent Law was passed on May 23, 2018, and the Amended Patent Law was promulgated on May 30, 2018.

The Amendment includes (i) that an exception term to lack of novelty (grace period) is extended from 6 months to 1 year; (ii) that a fee for request for examination and annuities from the 1st to the 10th years are reduced by half for all of small and mid-size enterprises; and (iii) that so-called an “in-camera” procedure is introduced for evaluating a document whether it is necessary for proving an infringement under a patent infringement suit.

The 1st Amendment will become effective on June 9, 2018, and the other Amendments will become effective within one and a half years from the promulgation date.

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2018 AIPLA Mid-Winter Institute: Thursday, January 25, 2018, 3:45PM-4:45PM
Chemical Practice CLE Educational Session

Salon de Flores 4-5, La Quinta Resort & Club, La Quinta CA

Panel Discussion: "How to Win-Win with a Unitary Patent System and Innovation In Europe"

Speakers:
Patentanwalt (German patent attorney)
European patent attorney
Wallinger Ricker Schlotter Tostmann -- Munich, Germany

Dr. Holger Tostmann is a partner at the Law Firm of Wallinger, Ricker, Schlotter, Tostmann (WRST) in Munich, Germany. He holds a PhD in chemistry from the University of Karlsruhe and is admitted as German and as European Patent Attorney since 2004 and 2005, respectively. Dr.Tostmann’s IP expertise includes Patent prosecution before the EPO / German Patent Office, attacking and defending patents in Opposition Proceedings (European Patent Office, German Federal Patent Court) including Appeal Proceedings, as well as generating  IP opinion work products (validity analysis, due diligence, legal opinion and infringement/ FTO analysis, the latter also in a cross-border context).

Dr.Tostmann spent a significant part of his scientific career in the US, first as a postdoctoral fellow at Harvard
University in Cambridge, MA (USA), then as a research scientist at Argonne National Laboratory in Chicago, IL (USA), gaining extensive experience in key technologies such as pharmaceuticals, new materials, soft condensed matter, polymers and biophysical chemistry.

and
UK chartered patent attorney
European patent attorney
Forresters -- Munich, Germany

Dr. Matthew Barton studied chemistry at undergraduate and postgraduate level at the University of Birmingham, UK. He joined Forresters, a UK-based firm of patent and trademark attorneys in 2001 and has been a partner with the firm since 2008. He now leads Forresters’ office in Munich, Germany and specialises in drafting, filing and prosecuting patent applications at the European patent office, UK IPO and WIPO. He is particularly involved with opposition and appeal proceedings at the European patent office.

He is a Chartered (UK) Patent Attorney, European Patent Attorney and a member of the Royal Society of Chemistry and FICPI, as well as being foreign member of the American Intellectual Property Law Association (AIPLA) where he leads the International Patent Practice Subcommittee of AIPLA's Chemical Practice Committee.

Summary of the Panel by Carol Nielsen
The goal and purpose of the proposed Unitary Patent (UP) and Unified Patent Court (UPC) is to strengthen and simplify the patenting procedure in Europe, thereby benefitting innovators seeking protection for their inventions. The Unitary Patent is designed to provide blanket protection across up to 26 EU member states – a unified market of around 400 million people. The Unified Patent Court will handle validity and infringement of these Unitary Patents and ultimately European patents too, in a single forum providing legal certainty and avoiding costly parallel litigation. Each of our presenters deliberated on the proposed operation of these new systems as well as provided an update of the latest status, including an explanation of the delays caused by Brexit in the UK and the constitutional complaint filed in Germany. Speakers discussed the benefits to innovation in the chemical industry and whether the aims of the systems are achievable. Finally, speakers addressed the different problems that could arise with a unified patent regime. The presentation was well received by attendees.

Presentation and Written Materials:
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2017 AIPLA Annual Meeting: Friday, October 20, 2017
Chemical Practice/IP Practice in Latin America (Joint Meeting)

Panel Discussion: “Speed of Prosecution: For When You Need (or Don’t Need) Patent Rights”

Speakers: 
Ignacio Sanchez, Marval, O'Farrell & Mairal – Buenos Aires, Argentina
Gustavo Morais, Danneman Siemsen – Sao Paulo, Brazil
Oscar Isler, Estudio Villaseca – Santiago, Chile 
Andy Harding, Forresters  London, United Kingdom
Dr. Manuel Lopez, Uhthoff  – Mexico City, Mexico

Moderator: 

Summary:
The Chemical Practice Committee was pleased to convene a joint committee meeting with the IP Practice in Latin America Committee, at this year’s Annual Meeting of AIPLA. The meeting took the form of a panel discussion, moderated by Dr. Matthew Barton (Forresters – Germany) on the topic of “Speed of Prosecution: For When You Need (or Don’t Need) Patent Rights” focusing on the opportunities to speed up or slow down patent prosecution in various jurisdictions. Ignacio Sanchez  (Marval) firstly looked at the modernization of patent procedures in Argentina and the drive to sign new agreements such as PPH. Gustavo Morais (Danneman) focused on solving the problem of the patent prosecution Backlog in Brazil and the future prospects for faster grant. Oscar Isler (Estudio Villaseca) explored the prosecution times in Chile along with the possibilities to expedite; he explained that the PPH procedure in Chile is not guaranteed to lead to quick grant. Andy Harding (Forresters – United Kingdom) explained the particular PACE expedited procedures of the European Patent Office, where PPH is also not always the best route to fast grant. Finally Dr. Manuel Lopez (Uhthoff) discussed expedited procedures and the problems of excluded subject matter in Mexico. The session was rounded off by a lively question and answer session with the panel, and a happy hour sponsored by EAG Laboratories.​

Speaker Presentations:
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2016 AIPLA Annual Meeting
Panel Discussion: "Now is the Time! Align Your Strategies for International Patent Application Filings"

AIPLA Chemical Practice Committee, along with the Education, Law Students and Patent Agents Committees, hosted a panel of seasoned practitioners who offered recommendations and practice tips for preparing patent application to be filed in multiple jurisdictions in the chemical and related arts. The panel featured panelists from from Canada, China, Europe, India and Japan and proposed considerations for attaining patentable subject matter, written description, and enablement in light of country laws and rules of procedure. The panel also discussed patent harmonization efforts.

Moderator:
Kimberly Braslow, AstraZeneca Global IP, Gaithersburg, MD

Panelists:
Matthew Barton​, Forresters, Munich, Germany
John Norman, Gowling WLG, Ottowa, Ontario
Sharad Vadehra, Kan and Krishme, New Delhi, India
Hiroshi Sato, Kawaguti & Partners, Japan
Shanqiang Xiao​, Beijing East IP Ltd. / Beijing East IP Law Firm, Beijing, China
Rachel Kahler, General Mills, Minneapolis, MN 

Written Materials:
European Law and Best Practices for Application Drafting -- Barton
     Slides     Paper
Canadian Law and Best Practices for Application Drafting​ -- Norman
     Paper
Indian Law and Best Practices for Application Drafting​ -- Vadehra
     Bio     Paper​
Japan Law and Best Practices for Application Drafting​ -- Sato
China Law and Best Practices for Application Drafting​ -- Xiao
Patent Harmonization -- Kahler
     Bio     Slides     Paper​
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