Tafas v. Dudas et al

Filing 217

MOTION for Leave to File a Brief in Support of The Plaintiffs' Anticipated Motions for Summary Judgment by Federation Internationale Des Conseils En Proprit Industrielle. (Attachments: # 1 Proposed Order # 2 Proposed Amicus Brief# 3 Exhibit A# 4 Exhibit B)(rban, )

Tafas v. Dudas et al

Doc. 217 Att. 3

Case 1:07-cv-00846-JCC-TRJ

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EXHIBIT A

Dockets.Justia.com

Case 1:07-cv-00846-JCC-TRJ

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EXCO/ES07/RES/003

Divisional Patent Applications

FICPI,

the

International

Federation

of

Intellectual

Property

Attorneys,

broadly

representative of the free profession throughout the world, assembled at its Executive Committee in Seville, Spain, from 4-7 November 2007,

Having in mind that a divisional patent application is a later application claiming

subject matter present in an earlier application and benefiting from the filing or priority
date of the earlier application,

Noting that Article 4G of the Paris Convention states :

(1) "if the examination reveals that an application for a patent contains more than one invention, the applicant may divide the application into a
certain number of divisional applications and preserve as the date of each

the date of the initial application and the benefit of the right or priority, if
any" (London, 1934)

(2) "The applicant may also, on his own initiative, divide a patent application and preserve as the date of each divisional application the

date of the initial application and the benefit of the right of priority, if any.
Each country of the Union shall have the right to determine the conditions

under which such division shall be authorized" (Lisbon, 1958)

Considering that the principle of dividing a patent application, including an existing divisional application, must be maintained in order to allow applicants to obtain appropriate protection covering all the aspects of the innovation disclosed in said
patent application; including the situation where an examiner refuses further

consideration of a patent application;

Recognising

that divisional

applications

and

especially

cascades

of

divisional

applications may increase legal uncertainty for third parties;

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Case 1:07-cv-00846-JCC-TRJ

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But noting that an applicant who seeks protection by way of a divisional application
cannot extend the term of protection beyond that of the parent, cannot enforce his

rights until grant of the divisional application, and may suffer a reduction of the recovery of damages for past infringement; and

Recognizing that procedures implemented by a Patent Office may inhibit the applicant from indicating in his claims every aspect of the innovation to be protected;

Resolves that Patent Offices should :

*

recognize and respect the broad character of the right to file divisional
applications provided by the Paris Convention;

*

promptly check that any divisional application does not contain subject
matter that is not permitted in the country or region in question; expedite publication of the divisional application and immediately update the public patent office records to show clearly the relationship between all applications and patents of the same family in the same country or region;

*
*

accelerate the examination of the divisional application;
ensure transparency and consistency in handling the divisional application
and all applications of the same family in the same country or region;

*

not attempt to solve technical or organisational problems at the Patent

Office, including the backlog of patent applications awaiting examination, by
implementing rules limiting the right to file as many divisional applications

from any member of the family during its pendency as necessary to allow the applicant to obtain appropriate protection covering all the aspects of the innovation disclosed, or by imposing arbitrary deadlines for filing divisional
applications; and

*

not make any new rule concerning divisional applications retroactive.

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