Stephan Freischem

In this episode we will talk about Amazon Prime and issues with trademarks and FAAs, we have an interview with Stephan Freischem, who served as Secretary General of AIPPI and is currently serving as Deputy Secretary General of GRUR. And we will also tell you about a company from China that is launching a generic version of Viagra after the patents have expired earlier this year.

IP FRIDAYS

Co-Presenters:

Rolf Claessen and Kenneth Suzan

Episode 16 – November 28, 2014

RC =   Rolf Claessen

KS =    Kenneth Suzan

Hi.  This is Stephan Freischem.  I am Deputy Secretary General of the German IP Association GRUR and you are listening to IP Fridays.

KS:      Hello and welcome to this episode of IP Fridays.  Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property.  It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

RC:      Welcome to Episode 16.  Today we have an interview with Stephan Freischem, former Secretary General of AIPPI and now Deputy Secretary General of GRUR.  I will tell you about a Chinese company that developed a generic version of Viagra and before we jump into the interview, Ken has a story about Amazon Prime Air and issues with the FAA and trademark issues.

KS:      Amazon.com, headquartered in Seattle, Washington is turning what seems to be science fiction, into reality.  Rather than waiting the standard 5 to7 business days to receive a package, Amazon’s goal is to have the package delivered to the consumer in 30 minutes or less.  Amazon plans to use new technology for their delivery method, often referred to as a drone or unmanned aerial vehicle, or UAV under the mark PRIME AIR.

The idea of having a drone deliver a package may raise some questions, both being good and bad.  What standards and regulations will be created in order to ensure safety?  When will consumers start seeing Prime Air as a delivery option?  How long will it take to develop such technology?  Amazon seems to have the answers to the many questions that have been asked. The company claims that the technology is ready for use – but the company must gain FAA approval.  The public’s concerns include issues such as safety, the privacy of the package, theft, and damage risks to the drones.

Many consumers believe that Prime Air has too much hype to it, and will not become a reality in the near future.  One of Amazon’s many responses to criticism is hiring a team of individuals to create and perfect the drone such as scientists, aeronautical engineers, and a former NASA astronaut.  Names include Paul Viola, who is an MIT Ph.D. and has worked with Microsoft, Avi Bar-Zeev, who sold Keyhole, Inc. which was turned into Google Earth, NASA Astronaut Neil Woodward, and many more noteworthy names.

Alongside with Amazon, Google has also been working on a drone-type delivery system. Their program is named Project Wing.  Project Wing’s drones physically look very different than Amazon’s, but in regards towards what they’ll be delivering, Google has different plans.  As of now, Google plans on delivering packages in disaster relief situations versus Amazon’s product delivery to consumers.

And if concerns with the FAA aren’t enough, Amazon is also facing multiple 2(d) likelihood of confusion refusals in their trademark and service mark application for PRIME AIR, filed on May 21, 2014.  Registrations for PRIME and PRIMAIR are just a few of the federal registrations that were cited in an Office Action issued to Amazon Technologies, Inc., the applicant of PRIME AIR.

Amazon states that the drones will have the Prime Air delivery options within 10 miles of a warehouse, delivering the package at speeds over 50 miles per hour.  Once the FAA grants Amazon permission to begin using the drones, Amazon will likely begin to deliver packages that weigh less than 5 pounds, which covers 86% of products sold.  Amazon hopes that the FAA’s regulations will be in place in early 2015, and consumers may regularly see Prime Air vehicles in the sky – making Amazon Prime drones “as normal as seeing mail trucks on the road today.â€

RC:      Thank you Ken for this cool story about the drones of Amazon.  Next up is the interview with Stephan Freischem.

ROLF CLAESSEN’S INTERVIEW WITH STEPHAN FREISCHEM

RC:      I am very excited today to be joined by Stephan Freischem.  Stephan Freischem is a partner in my law firm, Patent Attorneys Freischem, and as you may have guessed from his name, his father founded the firm.  Stephan has had quite an illustrious career so far.  The last four years he has spent as the Secretary General of AIPPI and, since he is not lazy after this stint, he is now Deputy Secretary General of GRUR, a German IP association.  Thank you for being on the show, Stephan.

SF:       Thanks for inviting me.  I’m glad to be here.

RC:      Do you want to tell our listeners a little bit more about yourself?

SF:       Well, I joined the profession officially about 20 years ago but if both your parents are IP attorneys, I joined the profession shortly after my birth.  I have been in this firm for about 20 years now.  Before joining the firm, I studied mechanical engineering in Aachen which is a city very close to Cologne and during my technical studies I focused very much on IP systems in mechanical engineering, engine control and engine simulation.  So, on top of the mechanical stuff, I picked up some IP IT know-how which is very useful for my professional work right now.

RC:      Alright.  So, since you have been in the AIPPI Association for quite a long time and served on the Board over the last eight years, maybe you can tell our listeners what AIPPI is?

SF:       Certainly.  AIPPI is the oldest international IP association.  It’s the only IP association that includes all forms of industrial property and copyright.  It has been founded in 1897 by a number of European groups and now it stretches over all of Europe, over all of North America, most of South America, Asia, and a couple of African countries, and of course Australia and New Zealand.  AIPPI has almost 9,000 members around the globe and they represent more than 100 countries.

RC:      What do you think AIPPI is currently aiming for?  What are the current issues?  What are your aims?

SF:       I have to admit that the current issues do not differ too much from the original issues 100 years ago.  AIPPI’s objective has always been to promote the understanding of the need of a balanced IP protection system and of international harmonization of the IP protection systems around the world.  AIPPI has been founded in the wake of the Paris Convention and the Madrid Trademark System and AIPPI has accompanied the founding and installation of most international IP protection systems including the PCT System, including the European Patent System, so as long as we have the international harmonization of IP protection, AIPPI has always strived to improve the existing mechanisms and to make IP protection accessible and reliable for all players.

RC:      That’s really interesting to hear for our listeners what AIPPI is about since most of our listeners are from the U.S. and might not be too familiar with the AIPPI and I hope we can raise awareness among the American intellectual property professionals for this fine organization.  So, what have been the most gratifying moments in your time as the Secretary General for AIPPI?

SF:       Before coming to these special moments, I would like to comment on the listeners from the United States.  They are not that far from the AIPPI as one would think because for a number of years now the U.S. group of AIPPI is actually an integral group of AIPLA and most IP experts in the States are very well aware of AIPLA and are members of that organization so the aim of harmonizing IP law around the world through AIPPI is pursued by first investigating the status quo in the different jurisdictions and then drawing conclusions and making proposals for harmonization.  In order to do that, you have to have the correct representation from the different jurisdictions in your association.  So, AIPPI is very proud to have the strongest player in IP, which is AIPLA, closely linked to the national group in the United States so that we know, we get first-hand information of one of the most active players in IP from the United States into our association.  And I have to tell you that this close liaison between AIPLA and AIPPI in the U.S. is part of one of the most interesting parts of AIPPI’s activities that is our amicus briefs activities.  Ever since I joined the bureau, AIPPI has significantly increased its activities in filing amicus briefs statements and observations with courts and other authorities in relevant IP cases.  In the U.S. Supreme Court, AIPPI has filed amicus briefs on the Bilski case, the Mayo case and the Alice case.  AIPPI submitted observations to the enlarged board of appeal of the European Patent Office in a biotech case and in the famous G3/08 case on the rules for patent protection for computer implemented inventions.  AIPLA’s experience in drafting and submitting amicus briefs have been a great help and we very actively interact with our members from the United States in the sector of filing amicus briefs.

Another very important aspect was AIPPI’s initiative in the standing committee of patents of WIPO.  AIPPI is one of the oldest observers to all activities of WIPO and participates in the committee meetings.  We started, about a decade ago, or one and a half decades ago, to closely investigate the issue of privilege for IP advisors.  Everybody knows if they go to a lawyer, that the legal advice is privileged.  The situation for legal advice, or advice in patent law from a non-lawyer, is completely diverse around the globe and international companies often lose their privilege nowadays because they contact a non-lawyer who is not privileged in their international activities.  So, AIPPI’s work was thankfully supported by WIPO and integrated into the work of WIPO’s standing committee.  There were long discussions and the issue was well-shaped in this framework but it seemed impossible to obtain a decision of WIPO and its standing committee on patents on the privilege issue so currently AIPPI is supporting a multi-lateral initiative outside of WIPO for moving the industrial countries of North America, Europe and Australia to come to a solution of this aspect.  We have been successful in Australia and New Zealand.  They did adopt laws that got rid of the privilege problems for patent attorneys and are certainly hopeful to see a similar success in other common law countries.

RC:      So these were kind of your most important achievements within the last years and, of course, they are still ongoing.  Are there any other aspects that might have been important in the last couple of years?  For example, there is discussion about a grace period and other issues.  What is your stance on this?

SF:       Thanks for this question.  Of course, AIPPI has closely followed and participated in the so-called Tegernsee Process, a joint initiative of the EPO, the JPO and the USPTO with a number of national European patent offices in order to study the most pressing substantive patent law harmonization issues after the American Invents Act has solved the first to file question.  Grace period is very much on top of the list.  Prior user rights is an issue that is closely linked to grace periods and therefore makes sense to be investigated in the same context.  The third issue is on published prior art and the fourth issue is the publication of patent applications which is not yet 18 months for all inventions.  AIPPI has investigated the grace period question and the prior user rights in parallel with the IP office studies and AIPPI has come to even stronger statements, in particular, in support of the grace period, than most of the offices.  AIPPI is very honored to be acknowledged by the IP authorities around the world in its initiatives.  For example, in Japan we have been invited this year to co-organize a joint seminar with the Japan Patent Office on the issues of substantive harmonization focusing on grace period and AIPPI will certainly continue to work in this field.  These substantive patent law questions have been around for decades and it will take patience and a lot of effort to really come to a conclusion in this field.

RC:      In the very beginning, I promised our listeners to also have you tell a little bit more about GRUR, which is the German Intellectual Property Association spelled GRUR.  So, what is GRUR exactly all about?

SF:       GRUR is very similar to AIPPI.  I had met with a delegation from Korea about two or three years ago at a GRUR meeting and I considered how to introduce GRUR to the people from Korea.  Of course, they did know the AIPPI because the Korean group of AIPPI is a strong one.  I was tempted to say that GRUR is the German sister of AIPPI and I found out that GRUR is more of a parent of AIPPI because GRUR is six years older.  It was founded in 1891 and the first Secretary General of GRUR is actually the founding Secretary General of AIPPI and one of the initiators of this international association.  So, in a nutshell, GRUR is the German equivalent to AIPPI.  If you look at it more closely, you will find a lot of differences.  While AIPPI strives to include all players in the field of IP – that includes the judges, the universities, industry and, of course, the profession and the authorities and government, GRUR is already there.  One of the reasons why GRUR is so successful in having very strong and very active contributions from the courts, from the government, is that GRUR has always been the most significant force in the education of IP matters.  GRUR considers itself a scientific association dedicated to law research, to law institutes.  At universities, GRUR has historically sponsored students and professors in the field of IP law.  GRUR is very closely linked to the Max Planck Institute which in Germany, Europe, and even globally is one of the most influential educating entities in the field of IP protection.  So, as a result of this strong involvement in the education, everybody who joins the profession, be it in the court, be it in a ministry of justice or another IP authority, has along its way been equated to GRUR and we are proud to say that most IP experts are thrilled and enthusiastic about being active in this association.

RC:      So, after eight years in a very international organization like AIPPI, what challenges do you see joining the executive committee of GRUR?

SF:       The challenges are that GRUR is very close to implementation where AIPPI was working on an international level, which is a bit remote from the actual changes.  GRUR is commenting on current law projects.  GRUR is in a constant dialogue with our national and our regional European IP authorities.  GRUR really participates in the day-to-day business of developing the IP system; that is one thing.  The second thing is GRUR is the strongest publisher in IP literature in Germany.  GRUR publishes, I think it is now four different monthly journals focusing on IP and, to my knowledge, the GRUR journals are the most relevant publications, are the publications that are always cited in court decisions and this strong publication activity was not observed at AIPPI, only on a lower level, so that will be a new field of experience.  Then, of course, the direct cooperation with our universities and the association’s activities in supporting the scientific branch of IP law.  That will be new to me.

RC:      Well, thank you very much for spending so much of your valuable time with our listeners.  I hope you will find IP Fridays useful in your future career and thank you very much for being on the show.

SF:       Thanks for having me and I wish you a lot of success and your listeners a lot of fun with the next IP Fridays sessions.

RC:      Thank you Stephan.

VIAGRA PATENTS

So, in the beginning, I promised to tell you more about Viagra and the expired patent of Viagra.  In fact, a Chinese company called Guangzhou Baiyunshan Pharmaceutical Company, has launched a generic erectile dysfunction drug based on Viagra, the molecule of Viagra at least, and is planning to sell the drug at half the price of Viagra.  The patent on the molecule of Viagra expired in May of this year so anyone, in theory, is free to develop a drug or bring a drug to the market.  So, this particular Chinese company developed the drug within the last ten years and had it approved by the China Food and Drug Administration and they just issued a press release where Deputy Director Wang Wenchu was really excited to tell us about the launch of this new drug.  Just as a recap, Pfizer has made around $10 billion in the last eleven years with this drug and of course the Chinese company wants to take a share of this.  Just to give you an idea of the market of these kids of drugs in China, the market share for Viagra was $145 million in 2013 compared to $15 million for Cialis and $13 million for Levitra.  It is expected that Guangzhou Baiyunshan Pharmaceutical Company will launch several similar products in the near future to quickly seize a place in the market.  If you want to read more about this, just go to http://www.ipfridays.com/viagra.

Thank you for listening and keep in touch until next time when we will tell you about how you will be able to get the original Christmas Market mugs from the original Christmas Market in Cologne.

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