Newsletter Edition 19 - November 2020


AIPPI Resolution Highlights Artificial Intelligence

The quality of inventor for inventions made using Artificial Intelligence (AI), the descriptive use of a sign as a defense in trademark processes, IP rights over data and the legitimacy to litigate, and effect on judicial measures were the four study questions discussed virtually at the last AIPPI 2020 Congress in October. Below, a summary of the Resolutions approved by the association, with the support of ABPI, the Brazilian National Group of AIPPI.

Q272: Inventorship of inventions made using AI

The Resolution addresses the various roles of humans in the creation, training, and use of AI systems, and, in summary, concludes that there is a need for international harmonization on the issue.

The document considers that the invention with AI contribution should not be excluded from patent protection, “regardless of whether or not there is sufficient contribution from a natural person to be identified as an inventor and as long as there is a natural person or legal entity identified as an applicant”.

The Resolution also concludes that the natural person must be considered an inventor or co-inventor provided he has contributed intellectually to the “inventive concept”. The document does not recognize AI systems as inventors or co-inventors, “even if no contribution to the invention by a natural person is identifiable”.

Q273: Descriptive use as a defense in trademark proceedings

Referring to the use of a sign that is related to the characteristic of the products or services, the Resolution points out that the descriptive use of the trademark or part of it should be available as an exception in the face of a claim of trademark infringement by the owner in any infringement process.

The document notes that the “descriptive use must be under the principles of ‘honesty’, ‘fairness’ or an equivalent thereof”, and considers that the contested use would not fulfill these requirements if it unfairly took advantage of the distinctive character or reputation of the trademark, giving the impression that there is a commercial connection with the trademark owner if it was presented as an imitation or replica of the product or service bearing the trademark of the owner if it discredited or denigrated the trademark, or was harmful to its reputation.

 Q274: Rights in data

In addressing the issue of data rights, in particular IP rights in structured and unstructured data and new possible forms of protection, the Resolution considers the harmonization of legislation on the protection of mere data and databases to be “desirable”.

The document points out that “without prejudice to existing rights, mere data should not be eligible for protection under a new specific IP right, such as a new sui generis right”. Databases, on the other hand, should be subject to protection under a sui generis right, “without prejudice to any protections that may arise under copyright and the laws concerning confidential information, unfair competition and contracts”.

According to the document, it is up to each country to provide adequate legislation to protect and allow access and use of Health Data and Information from the public sector to enable research, development, and innovation.

Q275: Standing to litigate and effect on remedies

In addressing the locus standi/standing requirements for parties in specific types of intellectual property cases, the Resolution recognizes the legitimacy of “anyone” to bring an action for infringement of an IP right as long as it is the exclusive owner, co-owner, or licensee of this right. It also admits the possibility of “anyone” filing a nullity action on an IP right with an in rem effect, taking into account legitimacy requirements related to the specific nullity foundation and, in this case, against all owners of the registry. An action for a declaration of nullity inter partes for an IP right can be filed if the claimant is effectively affected by the IP right or by a defendant accused of an IP infringement, and must be notified to all of its owners.

You can access the full AIPPI resolutions on ABPI’s website.