AIPPI FORUM SINGAPORE October 4 6, 2007 Session IV Do Patent Prosecution Rules and Practices lead to Legal and Commercial Uncertainty? Friday, October 5, 2007 02.00 to 03.30 p.m. Moderator: Shoichi Okuyama (Assistant Reporter General of AIPPI) Speakers: Luis Alfonso Durán (Spain) Seong-Ki Kim (Rep. of Korea) Richard Beem (USA) 1/5
Short description Legal Certainty for third parties in patent granting procedures is an important factor when weighing the interests of the patentee or the applicant on the one hand and the public on the other hand. The legal certainty is in particular at stake when it is not clear to what extent a patent will be granted and which scope of protection it will convey to the patentee. Any delay in the process will lead Inevitably to a loss of certainty to some degree. Such delays may occur as a result of the massive workload in the offices. Other reasons my be immanent in the system. E.g. the PCT system allows applicants a period of no less than 30 months to determine whether protection should be sought in a specific country. It is the goal of this session to investigate the impact on legal certainty especially for third parties which certain rules and practices in international and national granting procedures may have. Practitioners from various jurisdictions will give their insight into the different issues related to this topic and will try to make proposals how problems of legal certainty could be resolved in the future. 2/5
Curriculum Vitae Luis Alfonso Durán Born on June 7, 1950. Spanish and European Patent, Design and Trade Mark Attorney. Senior partner of Duran-Corretjer. Reporter General of AIPPI (International Association for the Protection of Intellectual Property). Council Member of ECTA (European Communities Trade Mark Association) and past President. Council Member of EPI (European Patent Institute) and past Vice-President. Vice-President of EUCOF (European Union Committee of FICPI). Vice-President of AGESORPI (Association of Spanish Attorneys recognized before IP International Organizations). Member of the Board of the Spanish Association of Patent and Trade Mark Attorneys (COAPI). Professor on Intellectual Property law at the Magister Lucentinus (Alicante University) and at ESADE (Ramon Llull University, Barcelona). 3/5
Seong-Ki Kim Mr. Seong-Ki Kim studied chemistry at Seoul National University (SNU) and got a B.S. in 1978. He further studied at the Korea Advanced Institute of Science and Technology (KAIST) and got a M.S. in 1980. Mr. Kim also got a MPA (Master of Public Administration) at SNU in 1984. He got a J.D. from Cornell Law School in 1990 and is admitted to New York and D.C. as well as the Korean Patent Bar. Mr. Kim began to work as a Patent Examiner at the Korean Intellectual Property Office (KIPO) in 1980. During his service at KIPO, he worked as a negotiator for Korea s accession to the PCT in 1982 and WTO/TRIPS Agreements in 1990-91 as well as Korea-US negotiations for protection of pharmaceutical products in 1986-87. Mr. Kim began his private practice of law in 1991. He concentrates his law practice on IP matters. He represents multinational companies as well as Korean clients in patent and trademark prosecution, litigation, and licensing. He is also active in providing patent and trademark validity and infringement opinions. Since 2003, Mr. Kim serves as the Secretary of AIPPI Korea. He is a Vice President of APAA (Asian Patent Attorneys Association) Korea. Mr. Kim was active in advocating establishments of the Korean Patent Court as well as introduction of jury system for criminal cases. He taught patent law at Yonsei University 1994-2000. He serves as a moderator of the Central Seoul District Court since 2002. During the negotiations of the Free Trade Agreements between Korea and US, he worked as an advisor for the Korean Government.(*) 4/5
Richard Beem In 2001, Richard Beem established Beem Patent Law Firm after 20 years of experience in engineering and patent law. The firm represents Fortune 500 and other leading companies in many industries and technologies, obtaining patents and resolving patent infringement disputes. Richard is Secretary of the U.S. National Group of AIPPI. He has published and lectured on patent law and practice in the U.S. and Europe and conducts patent training workshops for engineers and scientists in the U.S. Army and in the American Society of Mechanical Engineers (ASME). For Iowa State University he is Chair of the Engineering College Industrial Advisory Council and he served as a member of the Provost s Intellectual Property Task Force. Richard has served as co-chair of several American Bar Association (ABA) Intellectual Property Law Committees, including Committees on Intellectual Property Rights of Individuals and Small Businesses, Amicus Curiae Briefs, Patent Legislation, and International Patent Laws & Treaties. Born in Chicago, Beem grew up in Wisconsin where he was a state champion wrestler. After receiving his B.S. in chemical engineering from Iowa State University in 1979, he worked in refinery operations for BP-Amoco and technical sales for Nalco Chemical. He received his J.D. with honors from the University of Houston in 1985, where he was elected to the Order of the Coif and served as an Editor of the Houston Law Review. He served two years in a judicial clerkship with the Honorable Edward S. Smith, U.S. Court of Appeals for the Federal Circuit, Washington, D.C., before commencing the practice of patent law. 5/5