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Q272-RES-2020 2020 AIPPI World Congress – Online Adopted Resolution 14 October 2020 Resolution 2020 – Study Question – Patents Inventorship of inventions made using Artificial Intelligence Background: 1) This Resolution concerns the question of inventorship of inventions made using Artificial Intelligence (“AI”). In particular, this Resolution considers the various roles humans play in the creation, training and use of AI systems and examines how the standards of inventorship should apply when considering an invention made using such a system. 2) As of today, in a typical AI application, humans may be involved at various stages including creation of an AI algorithm, designing an AI system to suit a particular purpose, curating data and training the system with that data, and applying the trained system to a particular task. Already, given the ability of AI systems to “learn”, traditional notions of inventorship may be challenged when dealing with inventing processes. In the future, if not already, human involvement in the inventing process may be minimized or disappear altogether. Whether the current law of inventorship is adequate to address these scenarios, or whether something new or different is needed, is the focus of this Resolution. 3) For the purposes of this Resolution: a. The definition of "inventor" follows the AIPPI Resolution Q244 “Inventorship of Multinational Inventions“ (Rio de Janeiro, 2015) noting that: “A person should be considered a (co-)inventor if they have made an intellectual contribution to the inventive concept. The inventive concept shall be determined on the basis of the entire content of a patent application or patent, including the description, claims and drawings.“ Q272-RES-2020 and further continuing that: “[t]he rule to determine intellectual contribution of an inventor should be consistent regardless of the residency or location of the inventor, their citizenship, the governing law of the employment, or the country in which the intellectual contribution was made,“ and b. "Invention" means a patentable invention for which a patent would be granted under the current patent system if the invention was made by a natural person(s). 4) 39 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 links below). 5) At the online AIPPI World Congress in October 2020, 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) International harmonization regarding inventorship of inventions made using AI is desirable. 2) An invention should not be excluded from patent protection merely because an AI contributed to the invention. 3) The requirements for a natural person to be considered an inventor or a co-inventor of an invention made using AI should not be different compared to the requirements for being considered an inventor of an invention made without using AI. 4) Irrespective of whether or not AI was used in making the invention, a natural person should be considered an inventor or a co-inventor, if they have made an intellectual contribution to the inventive concept. By way of non- limiting examples, and assuming the other requirements of invention are met with respect to inventions made using AI, the following may be considered inventors: a. A natural person who uses an AI algorithm to design a particular type of product or process should be considered to be an inventor or a co- inventor when the resulting invention is of the type of product or process intended by the natural person. Q272-RES-2020 b. A natural person who designs an AI algorithm used in the making of an invention should be considered to be an inventor or a co-inventor depending on the person’s level of contribution to the invention. If a natural person designed the AI algorithm to solve a predetermined problem which is effectively solved by the invention, such natural person should be considered to be an inventor of the invention. If the AI algorithm was a generic AI algorithm designed without a specific problem in mind, the natural person who designed the AI algorithm should not be considered an inventor absent another intellectual contribution to the inventive concept. c. A natural person who selects data or a data source for training an AI algorithm should be considered to be an inventor or a co-inventor of an invention made using that AI algorithm if the data or data source are selected with the purpose of solving a predetermined problem which is effectively solved by the invention. d. A natural person who selects or generates data or selects a data source for input to a trained AI algorithm should be considered to be an inventor or a co-inventor of an invention made using that AI algorithm if the data or data source are generated or selected with the purpose of solving a predetermined problem and the invention effectively solves the problem. e. A natural person who recognizes that an output of an AI algorithm constitutes an invention should be considered to be an inventor or a co-inventor of such invention. 5) An AI should not be considered an inventor or a co-inventor of an invention, nor be permitted to be named as such, even if no contribution to the invention by a natural person is identifiable. 6) In order to foster innovation, inventions made using AI should not be excluded from patent protection per se, regardless of whether or not there is sufficient contribution by a natural person to be named as an inventor and provided that there is a natural or a legal person named as an applicant. Links:  Study Guidelines  Summary Report  Group Reports Q273-RES-2020 2020 AIPPI World Congress – Online Adopted Resolution 14 October 2020 Resolution 2020 – Study Question – Trademarks Descriptive use as a defence in trade mark proceedings Background: 1) This Resolution concerns whether and under what conditions a descriptive use of another party’s trade mark may act as a defence to an allegation of trade mark infringement by that party. In this Resolution, “descriptive use” refers to the use of a sign that relates to the characteristic of the goods or services. 2) This Resolution is limited to the descriptive use defence in the context of trade mark infringement proceedings, whether before a court or an administrative office (hereafter a “tribunal”). Actions based on other grounds (e.g. unfair competition) are outside the scope of this Resolution, as are trade mark invalidity actions. 3) 41 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 links below). 4) At the online AIPPI World Congress in October 2020, 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: Descriptive use as a defence in trade mark proceedings against an allegation of trade mark infringement 1) A descriptive use of a proprietor’s trade mark or part of such trade mark should be available as a defence against an allegation of trade mark infringement by that proprietor. 1 Q273-RES-2020 2) Such descriptive use as a defence may concern descriptive use of any type of trade marks. 3) The principles set out in the 1st and 2nd paragraphs do not mean that the prior trade mark should be deemed invalid if the descriptive use defence is successfully argued. Conditions for descriptive use to act as a defence in trade mark proceedings against an allegation of trade mark infringement 4) The descriptive use must be in accordance with the principles of honest and/or fair use or equivalent use. 5) The use of the proprietor’s trade mark should not be considered as honest and/or fair use or equivalent use thereof in particular when: - The use takes unfair advantage of the distinctive character or repute of the proprietor’s trade mark, or - The use gives the impression that there is a commercial connection with the proprietor, or - The product or the service is presented as an imitation or replica of the product or service bearing the proprietor’s trade mark, or - The use discredits or denigrates the proprietor’s trade mark or is detrimental to its reputation. 6) In considering whether the descriptive use defence is to be allowed, a tribunal can take the following factors, in particular, into account: a. The reputation of the proprietor’s trade mark, if any; b. Whether the alleged infringing sign can be considered to be functioning as a source or origin identifier; c. The context in which the third party uses the sign. Rules of evidence 7) There should be no restrictions on the type of acceptable evidence. Types of proceedings 8) It should be possible to invoke the descriptive use as a defence in any trade mark infringement proceedings. Links:  Study Guidelines  Summary Report  Group Reports 2 Q274-RES-2020 2020 AIPPI World Congress – Online Adopted Resolution 14 October 2020 Resolution 2020 – Study Question – Copyright IP rights in data Background: 1) This Resolution addresses the issue of rights in data, in particular IP rights in structured and unstructured data under existing or possible new forms of protection. 2) In the context of this resolution, (i) “mere data” or “unstructured data”, means any information of any kind, not structured and not arranged in a systematic or methodical way; (ii) “Database” or “structured data” refers to a collection of information arranged in a systematic or methodical way and individually accessible by electronic or other means, (iii) “Health Data” refers to data created and/or collected in the health care and medical sectors; and (iv) “Public Sector Information” refers to data held by public bodies. 3) This Resolution does not address legal issues of privacy and personal data. Nor does this Resolution address legal issues concerning data used in procedures for obtaining approval for products or procedures, such as marketing approvals for medicinal products. 4) Rapid technical developments in information technology are likely to continue, and to impact on the appropriate approach to the protection of mere data. Such future change is beyond the scope of this Resolution. 5) This Resolution does not consider whether the sui generis right set out at paragraph 3 should arise solely from a substantial investment in creating the contents of a database. 6) 33 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 links below). 7) At the online AIPPI World Congress in October 2020, the subject matter of this Resolution was further discussed within a dedicated Study Committee, and again 1 Q274-RES-2020 in a full Plenary Session, following which the present Resolution was adopted by the Executive Committee of AIPPI. AIPPI resolves that: 1) Harmonization of the law relating to the protection of mere data and databases is desirable. Harmonization should specifically include legal definitions of mere data or unstructured data and databases or structured data. Mere data 2) Without prejudice to existing rights, mere data should not be eligible for protection by a new specific IP right such as a new sui generis right. Databases 3) Without prejudice to any protections which may arise under copyright and under laws relating to undisclosed information, unfair competition and contracts, databases should be eligible for protection by a sui generis right, according to A-D below. A) Sui generis IP protection should arise where there has been a substantial investment (financial or otherwise) in either the obtaining, verification or presentation of the contents of the database. B) The original owner(s) of the sui generis IP right should be the individual person(s) or entity or entities that made the investment(s) which result(s) in the database. C) The scope of the protection of the sui generis IP right covering a database should prohibit unauthorized third parties from certain acts, e.g. of extraction and re-utilisation, of the whole or a substantial part of the contents of the database, including repeated acts that individually do not involve extraction or re-utilisation of a substantial part of the contents, but that cumulatively constitute extraction or re-utilisation of a substantial part of the contents of the database. D) Exceptions and limitiations to the sui generis IP right should provide a reasonable balance between IP protection and the interests of third parties, including freedom of expression and freedom of speech, public health and safety, privacy, research and development in all sorts of industries and fair use. 4) Each country should provide appropriate legislation to protect and permit access to and use of Health Data and Public Sector Information to facilitate (1) research, development and innovation based on such data; and (2) public accountability and comment. 2 Q274-RES-2020 Links:  Study Guidelines  Summary Report  Group Reports 3 Q275-RES-2020 2020 AIPPI World Congress – Online Adopted Resolution 14 October 2020 Resolution 2020 – Study Question – General Standing to litigate and effect on remedies Background: 1) This Resolution addresses the locus standi / standing requirements for parties in specific types of intellectual property cases. 2) This Resolution is without prejudice to any possibilities under national law of representation ad litem whereby the interests of a party (the principal or mandator) are represented in proceedings by another entity (an agent, proxy or any equivalent thereof). 3) Furthermore, this Resolution is without prejudice to any additional standing requirements under national law for a claim for declaratory relief such as that the declaration should have a useful purpose, not be hypothetical or be of actual and concrete benefit to the party seeking the declaratory relief. 4) In paragraph 1(c) below, “exclusive rights of the owner” does not include a bare right to claim infringement of the IP right. 5) This Resolution does not require the introduction of new procedures. Specifically, if it is not possible under national law to seek an inter partes declaration of invalidity or non-infringement, this Resolution is not intended to mandate the introduction of such a procedure. 6) 36 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 links below). 7) At the online AIPPI World Congress in October 2020, 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 Q275-RES-2020 AIPPI resolves that: Infringement actions 1) Any person should have standing to bring a claim for infringement of an IP right if: (a) the person is the owner or a co-owner, of the IP right; or (b) the person is the exclusive licensee of the IP right; or (c) the person is otherwise exclusively authorised (whether directly or indirectly, including by sublicence) to exercise those of the exclusive rights of the owner comprised in the IP right that the person alleges to have been infringed. 2) If an IP right is subject to co-ownership, and unless an agreement of co- ownership provides otherwise, each co-owner should have standing to bring a claim for infringement individually, provided that the other co-owner(s) is/are informed of the claim before the proceedings are initiated in order for them to have the opportunity to join the proceedings. A co-owner that chooses not to join the proceeding should no longer have standing to bring the same claim against the same defendant(s) in relation to the same act(s) of infringement afterwards. 3) A person with standing to bring a claim for infringement of an IP right should be entitled to seek all available remedies in relation to infringement according to national law. In rem revocation actions 4) Anyone may bring a claim for revocation of an IP right with in rem effect generally without any standing requirements taking, however, into account specific standing requirements related to the specific ground for revocation (such as the so-called relative grounds for revocation under trade mark law). 5) A claim for revocation of an IP right with in rem effect must be brought against at least all owners of record, i.e. including all co-owners, of said IP right, without regard to actual participation by any owner or co-owner. Inter partes declarations of invalidity 6) A claim for an inter partes declaration of invalidity of an IP right may be brought: (a) if the claimant is affected by the IP right in some sufficiently actual and concrete way warranting the declaration sought, or 2 Q275-RES-2020 (b) by a defendant accused of IP infringement. Such a defendant has the right to invoke the invalidity of the IP right as a defence, irrespective of whether the claimant is the IP right owner or not. 7) Subject to the conditions in paragraph 6 above being fulfilled, a claim for an inter partes declaration of invalidity may be brought against any person with standing to claim infringement of the IP right as specified in paragraph 1) above. A claim for an inter partes declaration of invalidity of an IP right must be notified to all owners of record of that IP right, and each owner of the IP right should have the right to join or intervene in the proceedings in which the declaration of invalidity is sought. Inter partes declarations of non-infringement 8) A claim for an inter partes declaration of non-infringement may only be brought if the claimant is affected by the IP right in some sufficiently actual and concrete way warranting the declaration sought. For a claim for a declaration of non- infringement relating to some proposed subject matter such as a proposed product or process or mark, this principle would require a sufficiently defined and concrete description of the proposed subject matter. 9) Subject to the conditions in paragraph 8 above being fulfilled, a claim for an inter partes declaration of non-infringement of an IP right may be brought against anyone with standing to claim infringement of the IP right as specified in paragraph 1) above. Administrative tribunals 10) The standing requirements should be the same for the same processes in courts and administrative tribunals (such as IP offices). Links:  Study Guidelines  Summary Report  Group Reports 3 ASSOCIATION INTERNATIONALE INTERNATIONAL ASSOCIATION POUR LA PROTECTION FOR THE PROTECTION DE LA PROPRIETE INTELLECTUELLE OF INTELLECTUAL PROPERTY AIPPI EESTI Lp kultuuriminister Hr Tõnis Lukas Suur-Karja 23, 15076 Tallinn 6. november 2020. a. AIPPI soovitused intellektuaalomandi õiguskaitse valdkonnas Austatud kultuuriminister hr Tõnis Lukas 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 ning millel on üle 9000 liikme, kes esindavad enamat kui 125 riiki. AIPPI Eesti Rahvuslik Töörühm on tegev alates 1992 aastast. AIPPI 2020 maailmakongress pidi toimuma Hangzhous Hiinas, kuid COVID-19 pandeemia tõttu toimus kongress online, võimaldades osaleda kõigil liikmetel ning mille käigus toimus 25 paneeldiskussiooni ja 38 ümarlauda 150 esinejaga ajavahemikus 5.-14.10.2020. AIPPI 2020 maailmakongress võttis oktoobris vastu neli resolutsiooni erinevatel intellektuaalomandi teemadel, mis katsid valdkondi alates patendi- ja kaubamärgiõigusest ning muudest üldisematest intellektuaalomandi teemadest. AIPPI peasekretariaadi ülesandel edastame käesolevaga alljärgnevad AIPPI resolutsioonid: Patendid: Tehisintellekti kasutamisega loodud leiutiste leiutajad Inventorship of inventions made using Artificial Intelligence Kaubamärgid: Kirjeldav kasutus kui kaitse kaubamärgimenetlustes Descriptive use as a defence in trademark proceedings Autoriõigus: Intellektuaalomandi õigused andmetes IP rights in data Üldine: Vaidlustamine ja tõhusad õiguskaitsemeetmed Standing to litigate and effect on remedies Osundatud resolutsioonide alusmaterjalid (Working Guidelines, National and Regional Reports and Summary Reports) on täiendavaks tutvumiseks kättesaadavad AIPPI veebilehel (https://aippi.soutron.net/Portal/Default/en-GB/Search/AdvancedSearch?userSearchId=2).  2 Lisad: Vastu võetud resolutsioonid. Lugupidamisega (allkirjastatud digitaalselt) (allkirjastatud digitaalselt) Urmas Kauler Reet Saks AIPPI Eesti Rahvusliku Töörühma juhataja sekretär Cc: Peaminister Väliskaubandus- ja infotehnoloogiaminister Justiitsminister Patendiameti peadirektor Tallinna Linnapea