Enforcement & TRIPS

Question 1

What is Enforcement and why is it useful?

Answer 1

Without a proper system for both enforcing rights and enabling the grant of rights to others to be resisted, an intellectual property system will have no value.

Question 2

How are IP rights enforced?

Answer 2

IP owner is her own policewoman.

1. at the Patent and Trademark Offices, with the Opposition (and Appeal)procedures.
   quasi-judicial functions.
   substantive examination vs opposition.
2. Civil court procedures
3. Criminal Action.
   e. g. Counterfeiting. Police is an enforcement authority.

Question 3

How does the procedure of patent rights opposition/enforcement work?

Answer 3

1. Assessing the scope of Patent rights.
   Claim + description.
2. Evaluating Validity and Infringement of a Patent.
   If a patent is shown to be invalid it is not enforceable. No patent system guarantees the validity of a patent.
3. Court decision.

Question 4

How does enforcement of copyright and related rights work?

Answer 4

National Legislation

1. preliminary measures
2. civil sanctions
3. criminal sanctions

Beyond national.

4. measures at the boarder
5. measures against abuse of technical means. Including Anti-piracy measures.

Court procedure:

• court examines the degree of resemblance
• a causal connection between the copyrighted work and the alleged infringement is essential and a major distinction between protection afforded by patents and registered designs
• there must be substantial reproduction
• decision

Question 5

What are Counterfeits, Bootlegs and Pirate copies? Why is piracy bad?

Answer 5

Counterfeits = exact copies of a sound or video that attempt to seem original.
Bootlegs = copies or recording of a live performance done without authorisation.
Pirate copies = unauthorised copies that do not attempt to be the original.

• piracy hampers creativity
• creates economic loss
• reduce the incentive for producing high quality work

Question 6

What types of Trademark infringement exist?

Answer 6

Trademark infringement, tort arising by virtue of registration of the trademark in issue at a National Trademark Registry.
Enforced similarly to patents.

Passing Off. The mark was not registered, but there was a wrongful appropriation of reputation or goodwill.

Question 7

What is the typical appeal procedure at an office?

Answer 7

• pre-grant appeals
• post-grant appeals

1. Pre-hearing conference.
2. Evidence. direct/indirect
   Documentary/Real/Expert/Market survey
3. Final Disposition

Question 8

What kind of court remedies are available to complainants by courts?

Answer 8

a. Injunctions. Preliminary/ Final.

b. Damages or Account of profits.

Question 9

Alternative modes of Dispute resolution?

Answer 9

1. Arbitration.
   The parties usually do this by including in their agreement a clause providing for the submission of disputes to arbitration.
   Faster, Cheaper, Informal. The arbitral award is final.
2. Mediation. Each party may terminate its participation at any stage.
3. Expert Determination.
   Technical disputes.

WIPO Arbitration and Mediation Center, offers services for the resolution of intellectual property disputes between private parties through arbitration and mediation.

Question 10

What is the TRIPS agreement?

Answer 10

TRIPS Agreement, is an Annex of the WTO Treaty.
A trade agreement, not an IP Agreement. Establishes minimum IP rules for trade, and not full uniform standards. Reinforces the principles of the Paris and Berne Conventions, less emphasis on moral and more on economic because it’s about trade.

The Aim of the WTO is to liberalise trade and TRIPS enables to establish new IP standards enforceable at the WTO and WIPO level.

Question 11

What is the structure and content of the TRIPS Agreement?

Answer 11

Structure of the Agreement:

1. International Trade Law
2. Minimum Standards
3. Enforcement

Contents of the Agreement:

• IP Standards in the Agreement and are based on Paris and Berne.
• minimum standard and regime for each category of IP right in a very specific order.

Major points:
Article 27 – Patentable Subject Matter.
Software is protected by copyright.
States may NOT recognise moral rights (compliant with field of trade)

Enforcement:
Civil, admin, criminal measures in the agreement
Need for implementing laws (deadlines)
WIPO inspects member’s laws for compliance.

Question 12

What are issues connected to the UN about the TRIPS?

Answer 12

• Agreement on development.
Harmonisation of IP laws (mission of WIPO) vs Different needs in IP of developing countries (imitation vs innovation).

• TRIPS Council: active on tech transfer issues. Each year, one country is under scrutiny, and has to comply with tech transfer to developing countries. USA “open skies” is it really tech transfer?
• EU Free Trade Agreement, Bilateral Agreements between countries reinforce conservative approached on Tech Transfer.
• Flexibility of Article 31 on Compulsory licensing.

Question 13

What has been the issue with TRIPS and Public Health?

Answer 13

Public Health is the symbolic issue for TRIPS.

Article 31. compulsory licenses can be granted if there are restrictive procedure

7years of polemics.
Background: AIDS
1. South Africa allows parallel imports.
2. Brazil issues compulsory license for medicines produced in US and China.
US Pharma is furious.
3. India, Africa and other Developing Cs.

2001, Twin towers.
Needed antibiotics from German BAYER, whom rejected and US issued a compulsory license. Debate collapsed.

• -> Doha Decisions. Developing countries won support of US:
  1. Reaffirmed flexibility on article 31 on compulsory licenses, and countries can issue compulsory licenses if needed.
  2. Requesting mechanisms for helping developing countries without pharmaceutical production facilities.

Implementation of decision in 2003, broken unity.

• Genesis of decision: pressure from DCs and pharmaceutical companies.
• Results: a provisional, complicated and ineffective mechanism.
• Unfair balance likely to be broken by the current crisis.