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ASSOCIATION INTERNATIONALE INTERNATIONAL ASSOCIATION POUR LA PROTECTION FOR THE PROTECTION DE LA PROPRIETE INTELLECTUELLE OF INTELLECTUAL PROPERTY AIPPI EESTI Lp kultuuriminister Pr Piret Hartman Kultuuriministeerium Suur-Karja 23 15076 Tallinn 3. oktoober 2022. a. AIPPI soovitused intellektuaalomandi õiguskaitse valdkonnas Austatud justiitsminister pr Piret Hartman Intellektuaalomandi Kaitse Rahvusvaheline Assotsiatsioon (International Association for the Protection of Intellectual Property, lühidalt AIPPI) on rahvusvaheline organisatsioon, mis on pühendunud intellektuaalomandi õiguskaitse arendamisele ja parendamisele, uurides olemasolevaid siseriiklikke seadusi ning tehes ettepanekuid nende seaduste ühtlustamiseks rahvusvaheliselt tasandil. AIPPI-l on umbes 8000 liiget üle maailma enam kui 131 riigist, sh Eestist. AIPPI Eesti Rahvuslik Töörühm on tegev alates 1992. aastast. Iga-aastaselt korraldab AIPPI maailmakongressi, millel on tavaliselt umbes 2000 osavõtjat. Erinevalt 2020. ja 2021. aastast sai tänavune AIPPI 2022 maailmakongress toimuda 10.-13 septembril USAs, San Franciscos, kohapealse osavõtuga, mille käigus võeti vastu viis resolutsiooni erinevatel intellektuaalomandit puudutavatel teemadel, sh tööstusomandiõiguse valdkonnas. AIPPI peasekretariaadi ülesandel edastame käesolevaga AIPPI resolutsioonid järgnevatel teemadel:  Patentability of Diagnostic Methods (Diagnostiliste meetodite patenteeritavus)  Trade Marks and the Internet and Social Media (Kaubamärgid ja internet ning sotsiaalmeedia)  Moral Rights (Isiklikud õigused)  Protection of trade secrets during civil proceedings (Ärisaladuste kaitse tsiviilmenetluses)  Privileges relating to Settlement Negotiations and Compromise Offers (Privileegid, mis on seotud kokkuleppeläbirääkimistega ning kompromissipakkumistega)  2 Osundatud resolutsioonide alusmaterjalid (Study Guidelines, Summary reports and Group Reports) on täiendavaks tutvumiseks kättesaadavad AIPPI veebilehel (https://aippi.soutron.net/Portal/Default/en-GB/Search/AdvancedSearch?userSearchId=2). Lisad: Vastu võetud resolutsioonid. Lugupidamisega (allkirjastatud digitaalselt) (allkirjastatud digitaalselt) Urmas Kauler Katri Treufeldt AIPPI Eesti Rahvusliku Töörühma juhataja sekretär Cc: Peaminister Ettevõtlus- ja infotehnoloogiaminister Justiitsminister Patendiameti peadirektor Tallinna linnapea 2022 AIPPI World Congress – San Francisco Adopted Resolution 13 September 2022 Resolution Standing Committee on Alternative Dispute Resolution Privileges relating to Settlement Negotiations and Compromise Offers Background: 1) This Resolution is directed to the existence and extent of privileges or immunities relating to documents written for, and oral and written communications made by, parties in dispute for purposes of settlement negotiations and/or offers to compromise. This Resolution also examines mechanisms used to safeguard such privileges. By “privilege" we mean specifically “without prejudice privilege”, namely that any statement or document exchanged during the course of settlement negotiations between the parties to those negotiations may not be used in court or for any other purpose without the express permission of both parties. Thus, the document and communication become inadmissible and are immune from obligations (such as discovery obligations) to produce documents. 2) This Resolution is directed towards communications between parties in a dispute and therefore does not address issues relating to “client attorney/IP professional privileges”. Furthermore, use of potentially privileged information in criminal proceedings is not within the scope of this Resolution. 3) This Resolution was proposed by AIPPI’s Standing Committee on Alternative Dispute Resolution (“ADR”), as a result of discussions on the public policy of promoting out-of-court settlement of legal disputes. It was also prepared based on 16 reports received from AIPPI’s National and Regional Groups and Independent Members providing detailed information and analysis regarding national and regional laws relating to this Resolution. These reports were reviewed by the members of the Standing Committee on ADR and distilled into a Summary Report (see link below). 1 4) For the purpose of this Resolution: • A reference to international and cross-border disputes means disputes between at least two parties which have their places of business in different jurisdictions. • A reference to labels means any marks, words or expressions, in any language, used in documents or communications conveying that these have been produced or made “without prejudice” to the parties’ primary positions in a dispute for the purposes of bona fide negotiations. 5) At the AIPPI World Congress in San Francisco in September 2022, the subject-matter of this Resolution was further discussed within a full Plenary Session, following which the present Resolution was adopted by the Executive Committee of AIPPI. AIPPI resolves that: 1) Documents created for, and oral and written communications made in the course of, bona fide negotiations for the settlement of a dispute or offer to compromise should be subject to privilege and should be inadmissible evidence in legal proceedings. 2) Such privilege should be harmonised across jurisdictions, so that it applies uniformly, particularly in international and cross-border disputes. 3) Exceptions to such privilege should be limited, but should be available in the following circumstances: a) Proving bias or prejudice (e.g. by a witness, expert, arbitrator, etc.); b) proving actual threats or bad faith; c) negating a contention of undue delay, by permitting evidence of the fact or existence of settlement discussions, but without admitting the substance of any such discussions; or a) proving the existence, the extent and/or scope of the settlement agreement. An exceptional use in accordance with this paragraph can only be made if reasonable advance notice of a proposal for an exceptional use is given, which gives reasonable opportunities for any person opposing such use to seek remedies to prevent the exceptional use. 4) This privilege should be available for communications and documents made by anyone taking part in the negotiations, and should not be restricted to certain type of professionals, such as lawyers or outside IP counsel. 2 5) The existence of privilege should be based on the purpose and content of the relevant document or communication, regardless of the use of a particular label. 6) Effective remedies should be available against the wrongful disclosure and use of privileged information in legal proceedings, including injunctive relief prohibiting such use or disclosure, and/or making such documents or communications inadmissible. Link: • Summary Report 3 Q281-RES-2022 2022 AIPPI World Congress – San Francisco Adopted Resolution 13 September 2022 Resolution 2022 – Study Question – Trade Marks Trade Marks and the Internet and Social Media Background: 1) This Resolution concerns the use and protection of trade marks on the internet and social media. This includes websites and online platforms (including online marketplaces). 2) This Resolution concerns issues related to trade mark infringement. It does not address any use requirements for trade mark registration or maintenance, nor other trade mark invalidity grounds. 3) The issue of conflicts between trade marks and domain names (addressed in the Resolution for Q143) is not addressed in this Resolution. Additionally, the use of the trade mark and issues related to trade mark infringement in the Metaverse and NFTs are not addressed in this Resolution. 3) 44 Reports were received from AIPPI’s National and Regional Groups and Independent Members providing detailed information and analysis regarding national and regional laws relating to this Resolution. These Reports were reviewed by the Reporter General Team of AIPPI and distilled into a Summary Report (see link below). 4) At the AIPPI World Congress in San Francisco in 2022, the subject matter of this Resolution was further discussed within a dedicated Study Committee, and again in a full Plenary Session, following which the present Resolution was adopted by the Executive Committee of AIPPI. 1 AIPPI resolves that: 1) Use of a trade mark on the internet or social media should constitute a use which can be infringing, so long as the necessary elements of infringing use under national law are met. 2) Providing that any other requirements for infringement are met, infringement of a trade mark will arise where, inter alia, the following acts on the internet or social media occur without the permission of the trade mark owner: a. use of the trade mark to offer, sell, promote or advertise a product or service online; b. use of the trade mark as the name of a social media account or an online shop name; c. use of the trade mark as a keyword; d. use of the trade mark as a metatag; e. use of the trade mark as a hashtag; f. use of the trade mark to endorse or promote another party's product or service. 3) A court, tribunal or competent authority shall have jurisdiction to determine whether any uses on the internet or social media infringe a trade mark enjoying protection in that jurisdiction, if that website, online platform or social media is accessible in that jurisdiction and there are other factors, indicated in paragraph 4 below, liable to have an effect in that jurisdiction, making that jurisdiction the appropriate forum. 4) The following factors in particular shall be regarded as relevant to determine jurisdiction pursuant to para. 3: a. whether goods/services/content are supplied to consumers in that jurisdiction by the unauthorised user of the trade mark on that website, online platform or social media; b. whether there is any content targeting consumers in that jurisdiction by the unauthorised use of the trade mark on that website, online platform or social media; c. whether the website, online platform or social media allows payment in the local currency of that jurisdiction; d. whether the website, online platform or social media uses local contact details such as telephone numbers, addresses etc.; e. whether the unauthorised user of the trade mark on the website, online platform or social media has any presence or place of business or uses any logistical services in that jurisdiction; and/or f. whether the website, online platform or social media uses a local language of the jurisdiction, including use of call centers using local language of that jurisdiction. 2  5) Online platforms should provide expedited and efficient mechanisms to enforce trade mark rights on their platforms, including notice and take-down procedures and at least three of the following as a minimum: a. stay-down procedures; b. shut down of a seller, an online shop or marketplace; c. a list of registered trade marks that are in use notified to the online platform; d. the ability for a user of a trade mark in an online platform to indicate authentic product verification; and e. a mechanism for investigating and informing the trade mark owner of any potential infringement on their platform and supplying the contact details of any potential infringer. 6) Social media influencers should be liable for their endorsement, undertaken in a commercial context, of a product or service which infringes another party’s trade mark. Link: • Summary Report 3 Q282-RES-2022 2022 AIPPI World Congress – San Francisco Adpoted Resolution 13 September 2022 Resolution 2022 – Study Question – Copyright Moral Rights Background: 1) This Resolution concerns moral rights in copyright law. For the purposes of this Resolution, the term “moral rights” is used to encompass all legal rights and concepts used to provide protection to the non-economic rights of authors, regardless of whether they are referred to as “moral rights”. In this Resolution, the term “author” refers to the natural person who created the work, including under circumstances where the legal author is not the creator. 2) All types of copyright protected works are within the scope of this Resolution. 3) This Resolution is limited to civil (private) law issues of moral rights. Criminal law issues are outside the scope of this Resolution. This Resolution does not address international private law issues. 4) 37 Reports were received from AIPPI’s National and Regional Groups and Independent Members providing detailed information and analysis regarding national and regional laws relating to this Resolution. These Reports were reviewed by the Reporter General Team of AIPPI and distilled into a Summary Report (see link below). 5) At the AIPPI World Congress in San Francisco in 2022, the subject matter of this Resolution was further discussed within a dedicated Study Committee, and again in a full Plenary Session, following which the present Resolution was adopted by the Executive Committee of AIPPI. 1 Q282-RES-2022 AIPPI resolves that: 1) Harmonisation is desirable in relation to moral rights. 2) Moral rights should be recognized in copyright law. 3) Moral rights should be provided for all types of works. 4) a) At least the following categories of moral rights should be recognized: o right of attribution, including: ▪ the right to be recognized as the author of the work, ▪ conversely, the right to publish a work anonymously or under a pseudonym; o right of integrity, defined as the right to object to a distortion, mutilation or other modification of the work provided it is prejudicial to the author; o right of disclosure, defined as the right to decide whether or not to disclose a work, as well as the conditions of such disclosure, understood as the decision to make the work known to the public for the first time. b) Additionally, at least the following moral rights could be recognized: o the right to object to contextual modifications prejudicial to the author; o the right to object to use in association e.g. with a product, service, cause or institution, prejudicial to the author; o right of withdrawal, defined as the prerogative for the author to cease further circulation of his/her work (including by terminating a contract for reasons of changed conviction) subject to compensating the other party/parties affected, if any. 5) Moral rights should be subject to exceptions and limitations, including, but not limited to: o for specific categories of works, such as ▪ software or databases ▪ architectural works ▪ audio-visual works ▪ works of applied art, utilitarian and technical works in order to limit the scope of protection under certain circumstances; o as regards the right of integrity, in case of minor modifications of the work, unless these are prejudicial to the honor or reputation of the author; 2 Q282-RES-2022 o in case of abuse of rights; o use for the purposes of criticism, comment, teaching, research, scholarship, parody and news-reporting. 6) The owner of the moral rights should be the natural person who is the author. 7) Legal entities should not be the owner of moral rights. 8) After the death of the author, their heirs or a person designated by testament should be authorised to exercise the moral rights. 9) Duration of moral rights should not be less than the duration of economic rights. 10) Property rights of the owner of tangible asset integrating a work (e.g., a painting, sculpture, architecture) can be limited by moral rights, subject to a balance of interests. 11) It should be possible to contract on moral rights, subject to the following limits: o it should not be possible to transfer contractually moral rights to third parties; o it should not be possible to renounce or waive any moral right entirely. For instance, the author should be able contractually to: o authorize certain specific types of exercise of moral rights; o authorize certain modifications to their works; o authorize modifications, inherent to assigned economic rights, such as adaptation rights; o settle ex post facto disputes relating to moral rights. 12) Infringement of moral rights constitutes copyright infringement. The condition for an infringement of moral rights should be a breach of the moral rights as defined by statutory law and case law and taking into account a balance of interests. In the case of the right of integrity, the plaintiff must prove that the modifications are prejudicial to the author. Link: • Summary Report 3 Q282-RES-2022 4 Q283-RES-2022 2022 AIPPI World Congress – San Francisco Adopted Resolution 13 September 2022 Resolution 2022 – Study Question – General Protection of trade secrets during civil proceedings Background: 1) This Resolution concerns the protection of trade secrets in civil court proceedings, in particular with respect to cases involving the protection or violation of trade secrets as their main subject matter or cases involving trade secrets in the context of the enforcement and protection of IP rights as their main subject matter. 2) This Resolution does not aim to re-examine trade secret issues already considered in Q215 – “Protection of trade secrets through IPR and unfair competition law” (Paris, 2010) or Q247 – “Trade Secrets: Overlap with restraint of trade, aspects of enforcement” (Rio de Janeiro, 2015). This Resolution addresses: a) specific measures that could and/or should be taken to protect, preserve and/or limit the disclosure of trade secrets in civil proceedings; and b) the right of a party to know the case made against it and, consequently, the potential for conflicts between the requirement to protect trade secrets against disclosure on the one hand and the right to a fair defense of the party on the other hand. 3) The term “party” as used in this Resolution also covers third parties or intervenors who are not necessarily formally a party to the proceedings, but whose trade secrets are involved or who are involved in the proceedings where this is allowed by the civil procedure rules in a given jurisdiction. 4) Civil procedure rules in the various jurisdictions are based on different legal cultures and traditions and have their own concepts. At the same time, there is only a very small degree of international harmonization of civil procedure rules in general throughout the jurisdictions. 1 Q283-RES-2022 5) Civil proceedings in which trade secrets and their protection are involved cover a broad range of different legal fields and actions. Commercial litigation is increasingly global in scope and thus would benefit from enhanced harmonization. 6) This Resolution does not concern criminal proceedings, patent office proceedings, arbitration and administrative proceedings. However, disputes in the US International Trade Commission are within the scope of this Resolution. 7) This resolution addresses the protection of trade secrets in civil court proceedings while observing the principle of open justice to be applied by the courts in their respective jurisdictions. 8) 34 Reports were received from AIPPI’s National and Regional Groups and Independent Members providing detailed information and analysis regarding national and regional laws relating to this Resolution. These Reports were reviewed by the Reporter General Team of AIPPI and distilled into a Summary Report (see link below). 9) At the AIPPI World Congress in San Francisco in 2022, the subject matter of this Resolution was further discussed within a dedicated Study Committee, and again in a full Plenary Session, following which the present Resolution was adopted by the Executive Committee of AIPPI. AIPPI Resolves that: 1. There is interest in improving current law and practice relating to the protection of trade secrets during civil proceedings and development of best practices in order to enable and promote the fair protection of trade secrets, while seeking to reduce costs and increase efficiency. 2. While most countries have rules for managing access to trade secrets during litigation, the rules are limited and not consistent across all jurisdictions with respect to controlling access to trade secrets and while there should be flexibility for case-by-case determinations, additional specificity is desirable. Minimum level harmonization of trade secret protection in civil proceedings 3. Trade secrets should be protected at every stage of civil proceedings. Measures that are appropriate to maintain and protect the secret nature should be available prior to, during and after the proceedings. 4. Since the very definition of a trade secret, as well as the principle of open justice, procedural rules in civil proceedings and notably the rules of evidence, differ between jurisdictions, harmonization should concern the principles of available protection and, where practicable, the particular concrete measures suitable to ensure said protection. Specifically, courts should have the authority to apply appropriate protection measures depending on the facts and circumstances of each proceeding. 2 Q283-RES-2022 Balancing trade secret protection and due process in civil proceedings 5. The protection of the parties’ trade secrets in civil proceedings must be balanced with safeguarding the right of all parties to fairly prepare their case, including the right to know the case made against them (“the Fair Balance”). The Fair Balance should also, in turn, be balanced with the principle of open justice which seeks to ensure that court proceedings are conducted in a transparent and fair manner. 6. Provided that the Fair Balance is reached, and depending on a number of factors, courts should have the possibility to restrict access to the trade secret to a limited number of individuals, especially if the parties agree, for example to: a. a limited number of identified relevant in-house individuals from a given party to the civil proceedings, expert(s) and outside counsels; or b. expert(s) and outside counsels only; or c. outside counsels only. 7. Such factors to be considered by the courts should include without limitation: a. the exact nature of the trade secret at stake; b. the value of the trade secret at stake; c. the stage of the proceedings concerned (prior to, during or after the proceedings); d. the relevance of the trade secret for ruling on a particular issue at said stage of the proceedings; e. the parties’ interests, including any possible impact on the party against whom a claim is made and the legitimate holder of the trade secret in the event of a disclosure of said trade secret within the proceedings; f. the role (e.g. lawyer, technical, or commercial) of any in-house individuals proposed to get access to the trade secret; g. whether and to what extent sanctions against an individual who is granted access can be successfully enforced in cases of violations of the court orders to protect the trade secret; h. the willingness of an individual recipient to agree to restrictions on his or her subsequent activities (e.g. the prosecution of patents or involvement in licensing negotiations), and i. more generally the circumstances of the case. 8. At least during the proceedings, any party should be entitled to challenge whether or not information alleged to be a trade secret is eligible for protection. Protection of trade secrets at various stages of civil proceedings, including disclosure actions 9. Trade secrets should be protected at every stage of civil proceedings and in the corresponding materials, including at least: a. pre-action processes; b. complaints/pleadings/writ of summons initiating a proceeding; c. any other pleadings or submissions filed in the context of a proceeding; 3 Q283-RES-2022 d. production of documents during a disclosure phase or court-ordered production of evidence; e. evidence seizure; f. prepared-for-litigation technical description/declaration or any other exhibits; g. witness statements made outside the hearings (e.g. deposition); h. oral hearings; i. hearing transcripts; j. court decisions; k. public and/or third party access to court documents. 10. Measures applied by a court to protect trade secrets during each stage of a proceeding should ensure that trade secrets that are obtained from any party during the proceeding are protected from future misuse, whether that may occur during or after the proceeding. 11. The onus is on the parties to inform the court what information they believe to be a trade secret and, where there is a dispute as to whether certain information is a trade secret, a mechanism should be agreed by the parties and/or set by the court to resolve that dispute. Such a mechanism should include timing requirements for requesting the resolution and resolving the dispute. Pending the resolution of the dispute, the information should continue to be protected as a trade secret. 12. During disclosure actions and/or other evidence collection procedures, protections should be put in place to limit the unnecessary production of trade secrets in order to reduce the risk of unnecessary disclosure to those involved in the proceeding and to the public. Such protection should include without limitation the following: a. where a court bailiff or other court-authorized person is conducting a seizure of evidence, such seizure should be conducted under a confidentiality regime that protects the information seized as a trade secret until the parties can make representations as to the status of the information seized and any dispute resolved under an appropriate mechanism. This may include the presence of a lawyer for the party subject to the seizure order who, at or following the seizure, can identify and designate the information which has been seized as a trade secret; b. the hearing of a person testifying on the substance of a trade secret should be conducted in a private/closed hearing with restrictions on who can attend that hearing, as far as it deals with the substance of a trade secret; c. effective protective measures prohibiting the unauthorized use of a disclosed trade secret. d. the possibility of a party producing a document to redact certain sections, at least with regards to trade secrets that are unrelated to the dispute. 4 Q283-RES-2022 13. A trade secret that is disclosed during a proceeding without being under a confidentiality order may retain its secret character, provided that a party makes a respective request to the court, depending on the circumstances of the disclosure including without limitation: a. the person who disclosed the trade secret; b. the method/manner of disclosure; c. whether the trade secret was disclosed intentionally; d. the number and role/function of individuals who had access to the trade secret and the nature of the entity to which those individuals belong; e. whether the recipients of the trade secret were subsequently subject to a protective or other court order; and f. the time frame over which the trade secret was available. Requirement to redact trade secrets in court documents 14. Details of trade secrets should be redacted in hearing transcripts, audio, visual, or av recordings, court decisions or any other materials before disclosure to the public. The public should be excluded from hearings or parts thereof in so far as they are expected to deal with the substance of trade secrets. Preserving trade secrets after the conclusion of court proceedings by the Court 15. Trade secrets should be preserved as such by the Court after a proceeding has concluded. Protecting trade secrets obtained in civil proceedings in other jurisdictions 16. Decisions ordering protective measures for a trade secret obtained in civil proceedings before one court should be considered by courts involved in civil proceedings between the same parties involving the same trade secret in other jurisdictions. 17. It should be considered further whether decisions ordering protective measures for a trade secret obtained in civil proceedings in a jurisdiction are also given temporary effect by courts involved in civil proceedings between the same parties involving the same trade secret in other jurisdictions until those courts have determined the appropriateness of the protective measures. 18. Without prejudice to other courts’ evidence gathering powers, a party bound by a court order prohibiting disclosure of information which they obtained in civil proceedings in one jurisdiction should not be able to use or disclose that information in other court proceedings or in other jurisdictions without obtaining the consent of the trade secret holder or obtaining an order from the original court permitting such use or disclosure. Link: • Summary Report 5 Q280-RES-2022 2022 AIPPI World Congress - San Francisco Adopted Resolution 13 September 2022 Resolution 2022 – Study Question – Patents Patentability of Diagnostic Methods Background: 1) This Resolution concerns the issues of patentability of inventions regarding the diagnosis of any medical conditions, diseases and disorders (further referred to in this Resolution as "Diagnostic Methods"). 2) Diagnostic Methods as used herein can be expressed in the form of a claim to a method, use or product that is intended for a diagnostic use. 3) 36 Reports were received from AIPPI's National and Regional Groups and Independent Members providing detailed information and a comprehensive overview of national and regional laws, practices, and policies relating to issues of patentability of Diagnostic Methods. These Reports were reviewed by the Reporter General Team of AIPPI and distilled into a Summary Report (see link below). AIPPI resolves that: 1) As a matter of principle, patents should be granted without discrimination for any inventions in all fields of technology, including inventions relating to Diagnostic Methods. 2) Harmonisation of the laws and regulations concerning the patentability of Diagnostic Methods is desirable as a clear and consistent patentability position 1  across jurisdictions regarding this issue would simplify the pursuit of patent protection of Diagnostic Methods. 3) Such harmonisation would furthermore enhance legal certainty for medical technologies. 4) With the aim to incentivise investment in research and development, Diagnostic Methods shall be patent eligible subject-matter. In particular: a) Products and kits shall not be excluded from patent eligibility merely due to the fact that they are intended for applications in Diagnostic Methods. b) Methods and uses involving diagnostic decisions based on one or more biological parameters shall not be excluded from patent eligibility. 5) Countries may exempt actions by medical and/or veterinary practitioners in the course of their professional duties from patent infringement. Link: • Summary Report 2