Intellectual Property and Exhibition Priority

Resume of interviewing Vladislav L. Malkevich, General Director of EXPOCENTRE on the output of Intellectual Property Forum ‘ExproPriority-2009’. Published in business journal ‘Expert. Equipment’, No. 1(155)2010.

‘ExproPriority-2009’ Forum was held towards the very end of last year. It was the first time ever an exhibition organization took upon itself a challenging task of settling the conflict between two international conventions – Paris Convention for the Protection of Industrial Property of 20 March 1883 and Convention on International Exhibitions of 22 November 1928, on one side and nowaday realities, on the other side.

I would say in all fairness that exhibitions of that kind did take place before in our country, but intellectual property rights protection, patenting issues were not adequately represented, if at all. To-day those are issues, which are elevated to the highest level of Government Policies. Without addressing those in a very practical way any high powered declarations of modernizing economy and creating pivotal points for innovative growth risk to remain idle talk not destined to materialize. True, it is not our place to bear full responsibility for upgrading the country’s economic system, but we feel it is our duty to contribute what we can and do it in full appreciation of issues involved.

What are the inadequacies which are there in some provisions of the Conventions?

One deterrent to innovation that the Documents create is the length of the process for patenting a novelty which is implied. In this situation to exhibit an unpatented innovation, without an adequate interim protective measure in place, would threaten patentability through premature disclosure of the invention. A point in case: World Exhibition in Shanghai is scheduled for 2010. It is a major event for the Exhibition Industry. China will do its best to show its achievements and potential. And it has a lot to show. I don’t want to offend anybody, but I would think it appropriate to mention here that copying is at the core of the boost in the development of South East Asia to a great degree.So issues of protecting inventions, utility models, industrial designs and even trade marks are very important in that regard. Russia also has things to show, given the universal nature of the Event, but some realities of current situation with intellectual property right protection do create some obstacles. A practical issue: the Paris Convention for the Protection of Industrial Property sets the starting point for priority right to an innovation at one year from submission of the first patent application, whereas exhibition priority is set at 6 months from putting an item on display. The two periods cannot be merged. And an applicant finds himself at a crossroads… The above mentioned Paris Convention and the Convention on International Exhibitions contain definitions of events which are eligible for temporary protection of rights to be arranged for items of industrial property as: “official and officially recognized international exhibitions”. Same documents also contain rather discriminatory clauses! Firstly, the definition does not apply to events shorter than three weeks. And current practice is five, four, three days even. Secondly, the requirement is for exhibitions to be non-commercial. Thirdly, convention type events are not counted at all, neither are the accompanying exhibitions. Much water has passed under the bridge since the inception of that Document in 1928. These days all exhibition activities consist of mixed exhibition/convention events. For exhibition professionals the whole issue has become the key one calling for immediate solution in light of modernization of the country and the innovation course it has embarked on. That explains why we have gone so deep down into the documentation connected with the problem for over three months now.

The National Standard (based on ISO standards): “Exhibitions/Fairs Activities. Terms and Definitions” came into force from 1 January of this year. The Standard identifies international exhibition as an “exhibition/fair event where at least 10% of all exhibitors are non-resident organizations or at least 5% of all visitors are foreigners and the range of services rendered on the ground complies with internationally accepted standards of services”.

From world exhibitions (EXPO) perspective (as Para 2 of Article 1 of the Convention on International Exhibitions stipulates in its edition of 30 November, 1972) international exhibition is identified as one which has more than one nation exhibitor. That puts virtually all exhibitions in the business where at least 10% of all participants are foreign to satisfy “international” criteria on the same level with those (i.e. EXPO) which might have only a host + one state. We think that such inequality whereby virtually all global exhibition business has been left outside should be removed.

The other day I had a meeting with Boris Petrovich Simonov, Head of the Federal Service on Intellectual Property, Patents and Trade marks (ROSPATENT). He treated issues we raised with great understanding and agreed to personally participate in the organizational committee of the next IP Congress, allocate his personnel to man the working groups, which we are to set up under the terms of the Forum. We are determined to canvass international organizations to change the wording of the said Conventions.

The Head of ROSPATENT gave us a few leads on preparation of the Agreement on priority we intend to sign in Shanghai. That would be one practical step towards achieving the same goal. Mr. Vladimir Petrovich Strashko, Vice President of the Chamber of Commerce and Industry of the Russian Federation, Chief Commissioner for the Russian Section of the Exhibition at , together with a representative of ROSPATENT, will be signing the Agreement with the coordinating bureau to prepare EXPO-2010 in Shanghai attaching catalogue of items to be exhibited there, which can be protected by exhibition priority concept. In that case temporary protection will certainly be granted not only to trade marks, but other items of industrial property, i.e. inventions, utility models and industrial designs. The required “status” of the event is fully met in this case – 100%!

Preparing for the IP Congress we focused on the gray area between exhibition business and patent law, and on that junction of the two distinct fields some interesting issues were unveiled. Had anyone done any digging in that domain, a need to change some wording would have come obvious as well. Almost straight after we have taken decision on organizing and holding the Forum, the Federal Law No. 217-FZ dated 2 August 2009 on setting up small size innovative venture entities with Government financed tertiary institutions and Research Institutes was enacted. Our President expressed an optimistic view that graduates would come to those entities with their ideas, develop them to maturity and the active phase of putting them into practice should begin. We thought we would be the first on route with opportunities that our Forum offered. In reality though it became clear that the entities in question could only be set up based on an asset paid in as a valid patent. A by-law killed the constructive idea of the President.

Obviously it is not possible to patent things left, right and center from what those entities would have created. One should carefully sift through what is available, assess, separate the valuable and decide. That was our intention from the very beginning! ROSPATENT agreed to become party to the panel of judges for an international contest within the Forum (an expert commission in effect). ROSPATENT experts would assess and decide on the usefulness and novelty of what was created. That would mean that preliminary assessment has been completed by researches and patent experts.

We did not get applications for unprotected trade marks’ exposition, but we issued 11 ‘Certificates of exhibiting’ for the other categories of IP items. The beneficiary inventors would enjoy 6 months grace period protecting novelty within which period they can apply for a patent. There is another danger, however, which our patent experts warned us against where we would agree with them as to the validity of their concern. If, after a patent application for an invention, utility model or an industrial design has been filed with ROSPATENT, they would want to use the conventional priority concept and apply in several countries-members of the Paris Convention? A patent assessment process would start anew. The foreign patent expert would research the application and discover that the item in question was exhibited at one of our exhibitions. His verdict may then be negative as novelty might be destroyed.

Our Law maintains that the incidence of exhibiting would not harm the novelty, though some foreign patenting systems are of the opposite view. I would like to remind you that we are also members of Paris convention of 1883 as European states. But there is no unified approach within the EC territory. In some countries it may be acknowledged, in others – not. That is the reason why we intend to have changes made at international level. Harmonization of patent laws is what is required to speed up registration and boost the importance of exhibition priority provisions.

The thing is that the Standard enacted in Russia identifies an international exhibition, but we don’t define “official and officially recognized international exhibition” anywhere. Recently ROSPATENT defined “official or officially recognized exhibition” as an exhibition which was supported by the Government or other body of the Executive. It appears that the Chamber of Commerce and Industry of the Russian Federation, the Global Association of the Exhibition Industry (UFI), the Russian Union of Exhibitions and Fairs are not counted as institutions whose support is acknowledged. What is left is only governmental structures. That is another venue to labor on. As for official recognition of our ‘ExpoPriority’ Project, we sought approval of ROSPATENT and the Russian Federal Service on Science and Innovations ( ROSNAUKA). Should we secure their support, we would have no ‘status originated’ obstacles within our country.