General Notes Flashcards

Question

What is the History ofWiPO?

Answer 1

WIPO, a specialized agency is dedicated to the promotion of innovation and creativity for the economic, social and cultural development of all countries through a balanced and effective international IP system. This first section of the course will discuss the mandate, structure, financing and activities of WIPO.

Answer 2

To enable governments, businesses and individuals in all member states to realize the potential benefits of IP as a driver of innovation and creativity. In the ART.1 of agreement WIPO- UN is established its objectives: 1- Promoting creative intellectual activity 2- Facilitate the transfer of technology related to industrial property to developing countries in order to accelerate economic, social and cultural development.

Answer 3

A global forum for IP policy, services, information and cooperation: - Services to Industry - Global IP Infrastructure - Norm-Setting - Economic Development

Answer 4

To regulate IP has used the multilateral treaty-making process that is slow and time-consuming. It also could be delayed further by the fact that both international and domestic requirements need to be fulfilled before a treaty comes into force in the states concerned. Most disappointed is the fact that certain treaties may never enter force (e.g. the Treaty of Protection of Intellectual Property in respect to integrated circuits) A further difficulty arises with respect to rulemaking when the initial problems or interest change in the negotiation period. (E.g. the WIPO draft treaty about dispute resolution. When WTO was created, States preferred to settle IP disputes under WTO dispute settlement body). Other rulemaking process is the non-binding agreements, like declarations of the UNGA. Since WIPO has only used the traditional treaty method however, in the last few years, the Secretariat of WIPO is exploring other means. In 2000 WIPO’s assemblies approved Recommendation concerning trademark licenses and in 2001, a Recommendation concerning provision on the protection of Marks, and other Industrial Property rights in signs, on the Internet. Finally, another important aspect is the changing nature of participants in international legal regulation, e.g. in Internet, where most active player is ICANN (internet corporation for assigned names and numbers). ICANN has adopted the WIPO proposal of Uniform Domain Name Dispute Resolution Policy (UDRP) a mechanism for resolving domain names dispute

Answer 5

In 2007 WIPO MS adopted the WIPO development agenda, including 45 recommendations focused in the needs of its developing country MS. It put emphasis on use of IP for development. The art. 3 of WIPO convention changed to include the development objectives. * To place development as the ultimate objective of the global IP system. * To make the IP system development friendly. * To take into consideration the specific needs and interests of developing countries and LDCs. * To ensure a balance between the rights of IP right holders and public interests. * To make development considerations integral to WIPO’s work. The challenge was to facilitate use of IP by developing countries for economic, social, cultural development. The 45 agreed proposals were classified in 6 clusters of activities. 1. Technical Assistance and Capacity Building; 2. Norm-setting, Flexibilities, Public Policy and Public Knowledge; 3. Technology Transfer, Information and Communication Technology (ICT) and Access to Knowledge; 4. Assessments, Evaluation and Impact Studies; 5. Institutional Matters including Mandate and Governance 6. Other issues It was established a Committee on Development and Intellectual Property to monitor, assess, discuss and report on implementation of recommendations and discuss IP and development issues and a Development Agenda Coordination Division to ensure agreed outcomes reflected in relevant programs. Now there are the SDGS in UN and the development objectives in WTO.

Answer 6

Provides a range of services for users of the IP System. The Secretariat offers treaty-related services that help fee-paying applicants and holders of IP rights to protect IP across borders. Enables applicants to seek patent protection, facilitates registration of industrial designs in multiple countries with minimum facilities and expenses and offers an alternative dispute resolution procedure.

Answer 7

Support global IP infrastructure through services to patent offices and copyright agencies. Provides information services through a series of global database of patents documents, brands, marks and law and treaties as well as statistic and research. Provides assistance to developing countries and host a number or multi-stakeholder platform and public-private partnership.

Answer 8

WIPO has 189 member states and more than 350 observers. The Headquarters are situated in Geneva and had premises in New York, Rio, Moscow, Beijing, Singapore and Tokyo. Is the administrator of 26 treaties and boast a biennial budget of 756 millions of CHF. WIPO earns over 95 per cent of its incomes through fees paid in exchange for IP registration services, where the patent services represents the 75 of the incomes The main policy and decision-making bodies of WIPO are the General Assembly, the Coordination Committee and WIPO conference. 1. General Assembly composed of the member states of WIPO, which are members of any of the unions 2. Conference composed by the parties of the WIPO convention 3. Coordination Committee composed of members elected from among the members of the Executive Committee of the Paris and Berne Union (meetings every year, main function: give advise to the organs of the unions ``` The internal organization is divided in seven organisational Sectors: 1- Development 2- Brands and designs 3- Global Issues 4- Patents and Technology 5- Culture and Creative Industries 6- Administration and Management 7- Global infrastructure. ```

Answer 9

The origins of WIPO date back to 1883 Paris Convention for the Protection of Industrial Property and the 1886 Berne Convention for protection of Literary and Artistic works. In 1967 entry to force the Convention establishing the WIPO and in 1974 signed the agreement with United Nations to become a Specialized Agency of the UN system.

Answer 10

The WIPO is the specialized agency o the United Nations charged with Intellectual Property. Concept of specialized agency: The UN specialized agencies are autonomous organizations working with the UN. It’s funded by both voluntary and assessed contribution. It was brought into relationship with the UN through a negotiate agreement in 1974. In the article 1 of this agreement United Nation recognized WIPO as “being responsible for taking appropriate action in accordance with its basic instrument, treaties and agreements administered by it, inter alia, for promoting creative intellectual activity and for facilitating the transfer of technology related to industrial property to the developing countries in order to accelerate economic, social and cultural development, subject to the competence and responsibilities of the United Nations and its organs, particularly the United Nations Conference on Trade and Development, the United Nations Development Programme and the United Nations Industrial Development Organization, as well as of the United Nations Educational, Scientific and Cultural Organization and of other agencies within the United Nations system.”

Answer 11

Administers 26 treaties: - WIPO convention: - 15 IP protection- define international substantive standards on IP. - 4 Classification- Organise information concerning inventions, trademarks and industrial designs through an indexed classification system. - 6 Global protection system, which establish procedural rules mainly aimed at ensuring that one international registration or filing of an industrial property will have effect in all the countries signatory to the relevant treaties. More relevant treaties are: 1- Paris Convention- Industrial property. 2- Bern Convention- Literary and artistic works. 3- Rome Convention- Phonograms and broadcasting organisations. 4- Madrid agreement-Copyrights. 5- Lisbon agreement- Geographical indications 6- TRIPS agreement –Trade related aspect of intellectual property rights.

Answer 12

When you enter into national phase you chose where you want the patent protection (in how many countries do you want protection). The countries can decline the protection. Before you can file an optional demand of preliminary examination from the following countries that belongs to the PCT International Searching Authorities (Australia, Austria, Brazil, Canada, Chile, China, Egypt, Finland, India, Israel, Japan, Republic of Korea, Russian Federation, Singapore, Spain, Sweden, Turkey, Ukraine, United States of America, European Patent Office, Nordic Patent Institute, Visegrad Patent Institute). * The PCT system is a patent “filing” system, not a patent “granting” system. There is no “PCT patent” or “global patent”. * The decision on granting patents is made exclusively by national or regional Offices in the national phase. * Only inventions may be protected via the PCT by applying for patents, utility models and similar titles * Design and trademark protection cannot be obtained via the PCT. There are separate international conventions dealing with these types of industrial property protection (the Hague Agreement and the Madrid Agreement and Protocol, respectively) The Madrid system protects trademarks and the Hague system is industrial designs. Certain PCT Advantages The PCT, as the cornerstone of the international patent system, provides a worldwide system for simplified filing and processing of patent applications, which: 1. Postpones the major costs associated with internationalizing a patent application 2. Provides a strong basis for patenting decisions 3. Harmonizes formal requirements 4. Protects applicant from certain inadvertent errors 5. Evolves to meet user needs 6. Is used by the world’s major corporations, universities and research institutions when they seek international patent protection PCT Challenges • Trying to keep PCT from being politicized like certain other parts of WIPO’s work • Quality of international work products • Building trust between patent offices, so duplicative international phase and national phase processing can be reduced • Language issues Helping developing countries benefit from PCT • Top 15 countries responsible for 92.7% of IAs published in 2014 • Top 32 countries filed approx. 96% of IAs • The other 4% of filings are spread across 110 countries

Answer 13

This section will take a more detailed look at the cooperation between WIPO and WTO. WTO is one of WIPO’s principal institutional partners. The framework of WIPO-WTO cooperation is based on a 1995 Agreement between WIPO and WTO that entered into force in 1996. It provides, in particular, for cooperation in the implementation of the TRIPS Agreement, which is officially administered by WTO. Such cooperation includes notification of laws and regulations, legal-technical assistance and technical cooperation in favor of developing countries. Among others, we will take a detailed look at what it means for WIPO to be a specialized agency of the United Nations, and the practical aspects of cooperation between WIPO and WTO, as well as other IGOs.

Answer 14

In 1974 was signed the Agreement between UN and WIPO and WIPO become a specialized agency of the UN. WIPO is responsible: 1. For taking appropriate action in accordance with its basic instrument, treaties and agreements administered by it 1- WIPO co-ordinate with UN to make the UN system fully effective 2- Representatives of the UN shall be invited to attend to the sessions of all bodies of the organization, but they have no right to vote 3- Representatives of the Organisation shall be invited to attend meetings from the General Assembly (for purposes of consultations) 4- Exchange of information 5- Yearly there is a report due by the organization 6- Cooperation in the provision of technical assistance for developing countries and LDC 7- To enter into relations with other intergovernmental organizations the Organization has to inform the Economic and Social Council of the nature and scope of the intentioned agreement

Answer 15

Prior to the Uruguay Round, WIPO was the multilateral institution primarily responsible for regulating the field of intellectual property rights. The TRIPS agreement establishes minimum substantive standards or IPRs protection and minimum enforcement standards and was adopted as part of the Uruguay Round package in 1995. It expressly contemplates cooperation between the WTO and WIPO in the preamble. The most common linkage between WTO and the WIPO is the IP. Although each of the WIPO treaties focuses on a particular sector of IP, TRIPS focus in trade related aspects. There are 95 WIPO – WTO Agreement (1996). The cooperation between both entities is developed mainly in 3 areas 1- Deposit of Law and Regulations – The WIPO deposit the entire legal instrument and send to WIPO and WTO members. 2- Implementation of 6ter of Paris TRIPS - When you are a country you register your signs and emblems (e.g. South Africa has registered Nelson Mandela as a emblem). For WIPO and WTO member states. Incorporation of WIPO treaties in TRIPS- Practical application of WIPO treaty. E.g. Appendix to Berne convention (there is a political problem about the communication of the adhesion to this appendix, because the norms said that has to be communicated to the General Secretary of the WIPO and there are members to WTO not members to the WIPO. The solution is to communicate to both). 3- Legal- Technical Assistance to WIPO/WTO. Assists WTO in IP. Another linkage is the area of legal and technical assistance. The WTO has highly specialized staff in intellectual property since WTO is excellent but it’s small in number. Lacks the infrastructure necessary for large-scale area management requiring personnel and technical resources. IPRs (WTO staff for IPRs: 5, WIPO staff of 1000 people) ♣ Advice to Panels and training program to develop in depth knowledge of trade-related IP. ♣ Joint Symposia - There is a lot of informal activity between WIPO and WTO and they work together very often. They also have mutual observer status and in addition there is an exchange of information. ♣ Joint Initiatives (1998 &2001). 1998 for developing countries. 2001 for least developed countries.

Answer 16

Paris and Bern Convention require disputes between countries to be settled by ICJ, but not all countries accepts ICJ’s jurisdiction. In the other way, WIPO has no enforcement or dispute settlement system, so that it’s only through moral persuasion in the General Assembly of WIPO that pressure is exerted on members to implement their treaty obligations. This lack of enforcement led developed countries to the discussion. Other factors: 1- Desire to include IPR into the system of the WTO 2- A lot of developing countries wanted a weaker protection of IPRs desire to get out od the so called unilateralism of certain countries: US for instance, since the 1970s, had been pressuring countries to improve their protection of intellectual property, linking intellectual property protection in trade statutes to the extension of benefits (compare Special 301 provisions of US trade law) this resulted inter alia in a list of countries failing to provide adequate and effective intellectual property protection 3- TRIPS incorporated the two treaties, on which the WIPO was based as well 4- WIPO has the special knowledge and a lot of professionals relating 5- Each country is responsible to fulfill its obligations under the TRIPS agreement subject to the WTO dispute settlement system more help for developing countries 6- Relevance of WIPO was proved by the Internet Treaties large support by a lot of countries! This is why the IP disputes between states in IPR is established in WTO. WIPO offers dispute resolution for person or entities wishing to resolve a commercial dispute related to IPR, using the procedures of arbitration, mediation or expert determination in its Arbitration and Mediation Centre

Answer 17

The TRIPS Agreement is arguably the most debated and the most controversial of all the WTO Agreements. It also happens to be the only Agreement in the set of WTO multilateral Agreements that has been amended since the WTO came into existence in 1995. This section will take a detailed look at the TRIPS Agreement. Among topics to be discussed are the following: General Provisions, Basic Principles and Final Provisions (including the Concept of Intellectual Property: Patents, Copyright and Related Rights, Trademarks, Industrial Designs, Geographical Indications); Standards Concerning the Availability, Scope and Use of IP Rights; Transitional Arrangements; Institutional Arrangements & Final Provisions. The discussion will also cover the IP and Public Health interface, including the Doha Declaration, Compulsory Licensing and the WTO cases relating to the Australian Tobacco Plain Packaging Act 2011. There will be a simulated panel hearing of the Plain Packaging cases, on which a ruling is expected from the WTO Panel sometime in 2017.

Answer 18

Intellectual property is a defined set of the intangible products of human creative activity. Unlike real property and personal property, which is often protected by means of physical security devices (such as fences and other enclosures), intellectual property is mainly protected by sets of enforceable legal rights granted to "owners" or "holders."

Answer 19

1. Intangible Property/Private Rights 2. They are rights given to persons over the creation of their minds. They usually give creator/inventor an exclusive right over the use of his/her creations/inventions for a certain period of time. 3. Broadly divided into two categories: copyright and related rights, and industrial property.

Answer 20

There are several compelling reasons. 1- The progress and well being of humanity rest on its capacity to create and invent new works in the areas of technology and cultures. 2- The legal protection of new creations encourages the commitment of additional resources for further innovation. 3- The promotion and protection of intellectual property rights spurs economic growth, creates new jobs and industries, and enhances the quality and enjoyment of life. An efficient and equitable IP system can help all countries to realize intellectual property’s potential as a catalyst for economic development and social and cultural well being. The IP system help strike a balance between the interest of innovators and the public interest, providing an environment in which creativity and invention can flourish, for the benefit of all.

Answer 21

1. Patent- The "patent" is a set of rights granted to the inventor of a product or process that is "new" (or "novel"), involves an "inventive step" (or is "nonobvious") and is "capable of industrial application" (or "useful"). The inventor must disclose the invention in the patent application in a way that enables others to make the invention without undue experimentation. The minimum term of a patent under the TRIPS Agreement is 20 years from the filing of the application. The holder of a patent may prevent others from making, using, offering for sale, selling or importing the invention during the patent term. As with other IPRs, the rights of the patent holder are qualified by certain important exceptions. The patent is typically referred to as a "hard" form of intellectual property because it generally excludes another person from using the invention without the consent of the patent holder even if the other person independently found the same invention. The patent is intended to perform three functions: (1) to stimulate inventive activity; (2) to encourage investment in the products of inventive activity, and (3) to disseminate technical information to the public. 2. Trademark - The "trademark" is a sign or symbol that distinguishes the goods or services of one enterprise from another in commerce. Trademarks may consist of virtually any form of sign, including letters and words, designs, colours, shapes, sounds and scents. A trademark allows its holder to prevent others from using an identical or confusingly similar sign to identify its goods or services in commerce. Trademark rights may last as long as the right holder continues to use the mark in commerce. In civil law jurisdictions, trademark rights are typically based on registration. In common law jurisdictions, trademark rights may be based either on registration or on use in commerce (the latter referred to as "common law" trademarks). In some jurisdictions, trademark rights may extend beyond the prevention of consumer confusion to encompass the prevention of "dilution" of the trademark holder's interests, that is, third parties may be prevented from "tarnishing" or "blurring" the trademark. 3- Copyright - "Copyright" is granted to authors and artists to protect expressive works against unauthorized reproduction or distribution by third parties. Expressive works are broadly defined, and include such things as books, films, music recordings and computer software. There is, in fact, no express limit on what material might be considered to embody protectable artistic expression. Under the TRIPS Agreement, the minimum term of copyright protection is the life of the author plus 50 years. However, in a number of places, including the United States and the European Union, the duration of copyright has been extended to the life of the author plus 70 years. Copyright also extends to the rights of performers in the fixation of their unfixed performances, and to rights of producers of sound recordings and broadcasters. Copyright is considered a "soft" form of IPR because it does not preclude independent creation by third parties. 4. Design Protection - Designs are covered by various forms of IPR, including design patent, copyright, trademark and trade dress, and sui generis registration systems. The protection of non-utilitarian designs has long been a problematic area for intellectual property law. 5. Geographical Indication -Geographical indications (GIs) are identifiers that associate a product with a place based on the duality or characteristics of the product or goodwill associated with the place. The classic illustrative GI is "Champagne," that is, the name of a region in France known for producing quality sparkling wines by a specific method. 6. Protection of Layout-Design of Integrated Circuits - Integrated circuits (or semiconductors) are produced on the basis of three dimensional maps or "mask works" that are used to direct sophisticated equipment that etches circuits on semiconductor materials. There has been little enforcement activity based on sui generis IC layout-design protection, but it is the subject of TRIPS Agreement rules. 7. Protection of Undisclosed Information - Undisclosed information is generally protectable if it is commercially valuable, undisclosed and the business claiming rights takes reasonable steps to protect it. Protection of undisclosed information is generally (but not exclusively) synonymous with "trade secret" protection. Such protection is provided in a variety of ways, including by specific statute or by unfair competition law. Trade secret protection generally lasts as long as the relevant information remains secret. The TRIPS Agreement specifically requires protection of undisclosed data with respect to new chemical entities in pharmaceutical and agricultural chemical products that is submitted for government regulatory purposes, requiring protection against "unfair commercial use."

Answer 22

The TRIPs is the most controversial agreement. Introduce the IPR in the trade agreements. The amendment of TRIPs entry intro force next month The TRIPS Agreement covers seven types of IPRs Before the TRIPS Agreement, WIPO-Administered the following Agreements: ¥ Berne Convention for the Protection of Literary and Artistic Works ¥ Paris Convention for the Protection of Industrial Property ¥ Several Others – about 18 ¥ Also, numerous other regional and bilateral IP protection agreements (...)

Answer 23

• In the preamble: Ð Reduction of distortions and impediments to trade Ð Promotion of effective and adequate IPR protection Ð Enforcement should not lead to barriers to trade Ð Cater to the special needs of Developing and Least-Developed countries. • Art. 7 protection and enforcement of IPRS to contribute to: Ð promotion of technological innovation Ð transfer and dissemination of technology Ð to mutual advantage of producers and users of technological knowledge Ð in manner conducive to social and economic welfare Ð to balance rights and obligations ¥ Art. 8 members may adopt measures necessary to: Ð protect public health and nutrition Ð promote the public interest in sectors of vital importance to socio-economic and technological development Ð prevent abuse of IPRS or practices which unreasonably restrain trade or Ð adversely affect international transfer of technology

Answer 24

Article 1: ¥ Members MAY provide greater protection ¥ Members free to determine appropriate method of implementation ¥ “Intellectual Property” refers to types of IP referred to in the Agreement

Answer 25

Approach Relating to acquisition or maintenance of IPRS ¥ Minimal requirements/Minimum standards: Members can provide higher protection ¥ “Shall provisions” and “may provisions” ¥ TRIPS to be read in conjunction with certain Treaties ¥ Each section dealing with a particular type of IP right: Ð Definition (if possible) Ð Conditions for protection Ð Exclusive rights Ð Exceptions and limitations to exclusive rights Ð Minimum duration of protection Structure • Basic principles and general obligations • Minimum standards of protection covering (i) the subject-matter to be protected, (ii) rights conferred; and (iii) term of protection • Domestic procedures and remedies for the enforcement of IPRs • Transitional provisions

Answer 26

The cornerstone of the TRIPS Agreement is the non-discrimination principle. Article 3 provides for national treatment: “[e] ach Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals …” Article 4 provides for most-favoured-nation treatment: “[w]ith regard to the protection of intellectual property, any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members…”. Exemptions: Ð Treaties on judicial assistance or law enforcement of a general nature Ð Berne/Rome Convention advantages granted on basis of treatment granted in another country Ð “Related rights” not provided for under Agreement Ð Rights under international agreements entered into before TRIPS Agreement came into force Article 5: Multilateral Agreements on Acquisition or Maintenance of Protection Arts. 3 and 4 do NOT apply to: Exceptions provided for in multilateral WIPO agreements

Answer 27

a- Copyright Was recognized in the Berne Convention for the Protection of Literary and Artistic Works was concluded in 1886, but has been revised several times. 173 States party. Moral rights (right to not to be modificated) - shall have the right to claim authorship of the work and to object to any distortion, modification of, or other derogatory action in relation to the said work, which would be prejudicial to the author's honor or reputation. The Article 9(1) of the TRIPS Agreement incorporates Articles 1-21 of the Berne Convention (Paris Act 1971) and the Appendix thereto by reference. The exception is Article 6bis dealing with moral rights on which there was no consensus among WTO Members. It has three basic principles: • National Treatment: No discrimination between nationals and foreigners • Automatic protection: Protection should not be made subject to any formality of registration, deposit or the like. You don’t need to register. • Independence of Protection: Enjoyment and exercise of rights granted is independent of the existence of protection in the country of origin

Answer 28

• Art. 9(2) TRIPS and Article 2 Berne Convention o All forms of “expressions ” o Every production in the literary, scientific and artistic domain, whatever the mode or form of its expression • Article 10 TRIPS o Computer programs ♣ Source or object code o Compilations of data - ♣ Machine-readable or other form which by reason of selection or arrangement ♣ Involve intellectual creation

Answer 29

• Article 9(2) TRIPS- Ideas, procedures, methods of operation or mathematical concepts.

Answer 30

the fundamental criterion is originality.

Answer 31

1. Right of translation 2. Right of reproduction 3. Right of public performance, including communication to public 4. Right of broadcasting, including communication to public 5. Right of public recitation 6. Right of adaptation, arrangement and other alteration Exceptions: 1. Reproduction in special cases 2. Quotations and use of works by way of illustration for teaching purposes 3. Reproduction of newspapers to report current events 4. Ephemeral recordings TRIPS Agreement, Art. 13: Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.

Answer 32

o Art. 7 of Berne Convention- Life of author + 50 years after death o Art. 12 of TRIPS Agreement- If term of protection calculated on basis OTHER than life of natural person • >= 50 years from end of calendar year of authorised publication • If no authorised publication within 50 years from making of work, 50 years from end of calendar year of making.

Answer 33

Art. 14.1 TRIPS agreement- Protection of Performs, producers of phonograms (sound recordings) and Broadcasting Organizations.

Answer 34

Refer to Paris Convention (1967) including Articles 1. 4 : Priority 2. 5.C: Use 3. 6bis: Well-known Marks 4. 6quinquies: Registration & eligibility for protection in countries other than country of origin 5. 6sexies: Protection of service marks 6. 7: Nature of goods not obstacle to registration 7. 7bis: Registration of collective marks Subject matter: The art. 15 includes a SHALL obligations: “Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark “ Distinctiveness is the most important factor regarding TM registrability, but Art. 15(2) of TRIPs, Members not prevented from denying registrations of TMs on other grounds (eg against morality/public order (my own example), provided they do not derogate from provisions of Paris Convention.

Answer 35

¥ Art. 15.1 : MAY Provision Ð Where signs are not inherently capable of such distinction, registrability may be made dependent on distinctiveness acquired through use Ð Members may require, as a condition of registration, that signs be visually perceptible. ¥ Art. 15.3: MAY Provision Ð Where registrability is made dependent on use, actual use of a trademark shall not be a condition for filing an application for registration Note that Service marks must be protected in same way as marks distinguishing goods

Answer 36

• Prevent 3rd parties Ð Using Ð In course of trade Ð Identical/similar signs Ð For goods/services Ð Identical/similar to registered trademark Ð Likelihood of confusion • Likelihood of confusion PRESUMED in case of Ð Identical sign for identical goods/services

Answer 37

Limited exceptions to exclusive rights such as: Fair use of descriptive terms Provided that: Take into account of legitimate interests of: Owner and 3rd Parties

Answer 38

Art. 19: If use is required to maintain registration, cancellation cannot take place before three years of uninterrupted non-use. Circumstances beyond control of owner are recognised as legitimate, e.g. import or other government restrictions Art 20: Use of the trademark shall not be unjustifiably encumbered by special requirements, such as use with another trademark, in special form, or in a manner detrimental to its capability of being distinguished from other goods or services

Answer 39

Art 18: Initial registration and renewal each 7 years. Renewable indefinitely.

Answer 40

Art. 22.1 TRIPS -Indications, which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. E.g. Champagne. This definition is relatively wide and is reflected in great majority of WTO member’s laws.

Answer 41

Applies to ALL goods and is a SHALL provision: ¥ Prevent use of any means (any use) ¥ In designation or presentation of a good ¥ Indicates/suggests ¥ Good in question originates in a geographical area ¥ Other than true place of origin ¥ Manner which misleads the public as to geographical origin of the good Constitutes an “act of unfair competition” under Article 10bis Paris Convention (1967): “Act of competition contrary to honest practices in industrial or commercial matters” Art. 23 – Provides additional protection to wines and spirits.

Answer 42

¥ 24.4: Continuous use ¥ 24.5: Prior trademark rights ¥ 24.6: Generic terms (ex. China) ¥ 24.8: Use of person’s name or name of person’s predecessor in business ¥ 24.9: No/cessation of protection in country of origin OR fallen into disuse

Answer 43

Article 23.3 & 4: ¥ Facilitate protection of GIs for wines ¥ Art. 23.4: Establishment of a multilateral system of notification and registration of Ð Geographical Indications for wines Ð Eligible for protection in participating Members

Answer 44

TRIPS provisions on GIs: delicate compromise, heavily negotiated. ¥ High economic/commercial stakes but also highly emotional social/cultural aspects ¥ Lack of harmonization at national and international levels ¥ Linkages - Within GI sector (for the GI issues) - Outside GI sector but within TRIPS context (eg TRIPS-CBD) - With other WTO discussions or negotiations, in particular Agriculture

Answer 45

The Article 25.1don’t provide a definition but ¥ Members SHALL provide protection: ¥ “Independently created industrial designs” ¥ Members MAY provide that NO protection: ¥ Designs dictated essentially by technical OR functional considerations

Answer 46

- Independently created - New or original - Significantly differ from known designs or combinations of known designs.

Answer 47

Art. 25.2 - Each Member shall ensure that requirements for securing protection for textile designs, in particular in regard to any cost, examination or publication, do not unreasonably impair the opportunity to seek and obtain such protection. Members shall be free to meet this obligation through industrial design law or through copyright law.

Answer 48

The owner of a protected industrial design shall have the right to prevent third parties not having the owner’s consent from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.

Answer 49

Members may provide limited exceptions to the protection of industrial designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties.

Answer 50

At least 10 years.

Answer 51

Art. 35- layout-designs (topographies) of integrated circuits (referred to in this Agreement as "layout-designs") in accordance with Articles 2 through 7 (other than paragraph 3 of Article 6), Article 12 and paragraph 3 of Article 16 of the Treaty on Intellectual Property in Respect of Integrated Circuits and, in addition, to comply with the following provisions.

Answer 52

Inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application Conditions for patentability: ¥ New (i.e. novelty) ¥ Involve an inventive step (non-obvious) ¥ Capable of industrial application (useful) Countries can add other requirements. E.g. they have to get the material from a specific community or with it consent. Patents must be available and patent rights enjoyable without discrimination as to: ¥ place of invention ¥ field of technology ¥ whether products are imported or locally produced

Answer 53

1. Order Public or Morality- Inventions may be excluded from patentability if: ¥ Prevention of commercial exploitation of invention is necessary within Member´s territory ¥ To protect order public or morality, including to: - Protect human, animal or plant life or health - Avoid serious prejudice to the environment 2. Others- Members may exclude from patentability: o Diagnostic, therapeutic and surgical methods for the treatment of humans and animals. May not exclude products used in such methods o Plants and animals other than microorganisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. Recent progress in biotechnology and genetic engineering has raised many issues including whether compensation should be provided to traditional communities when inventions draw on knowledge existing in these communities. For centuries, parts of plants (roots, barks, leaves, flowers and fruits) have been used in some traditional communities to treat certain sicknesses such as malaria and arthritis, etc.

Answer 54

1. Products: to prevent third parties not having the owner´s consent from the acts of making, using, offering for sale, selling, or importing for these purposes that product; 2. Processes: to prevent third parties not having the owner´s consent from the acts of using the process, and from the acts of using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process. Nature of exclusive rights ¥ NEGATIVE right of the patentee to PREVENT third parties from engaging in acts without patent-holder´s authorization ¥ The patent-holder does NOT have a right to do anything he or she wants in relation to the patent! Article 29: Conditions on patent applications ¥ Members shall require patent applicants to disclose invention: Ð Manner sufficiently clear and complete for invention to be carried out by man skilled in the art AND ¥ Members may require patent applicants to indicate: Ð Best mode for carrying out the invention known to inventor

Answer 55

Members may provide limited exceptions to exclusive rights Exceptions cannot unreasonably conflict ¥ with normal exploitation of patent ¥ do not unreasonably prejudice the legitimate interests of the patent owner ¥ taking account of the legitimate interests of third parties.

Answer 56

Requires Compulsory Licensing (You have to fulfill this requirements before licensing) 1. Without discrimination 2. Applications to be considered on their individual merits 3. First, an unsuccessful attempt to reach agreement... 4. Scope and duration to be limited to purposes for which granted 5. Licenses to be non-exclusive 6. Predominantly for supply of domestic market (F) has been interpreted as exclusive. 7. Right holder: adequate remuneration 8. Decisions on grant and remuneration to be subject to judicial or other independent review

Answer 57

Two types of “Enforcement” available under TRIPs ¥ National procedures and remedies for effective enforcement of IPRs (“Enforcement”) ¥ Mechanism for settlement of disputes between WTO Members about compliance with TRIPS obligations (“Dispute settlement”) Five sections 1. General obligations a. Members are obliged to have procedures that permit effective action against infringement, but should ensure that such procedures do not impede legitimate trade b. They must meet basic requirements of due process, such as being fair and equitable c. They should not be unduly complicated or costly, nor operating without unreasonable time-limits or delays d. Members must provide for judicial review 2. Civil and administrative procedures and remedies- to be made available to rights owners to enforce their legitimate rights a. Requiring the opposing party to produce relevant evidence b. Injunctions to prevent infringement of rights c. Damages to be awarded against infringers to compensate for injury as well as legal costs Forfeiture of infringing goods, and of materials and instruments used to produce a. them, and to their disposal or destruction 2. Provisional measures- Judicial authorities should be able to order prompt and effective judicial measures to prevent: a. Any intellectual property right being infringed b. The preservation of evidence relating to the alleged infringement c. Under certain circumstances (irreparable damage to the interests of the rights holder, the imminent destruction of evidence), measures could be taken without a prior hearing of the views of the infringer d. Prompt notice of action to be given thereafter to the infringer e. The revocation of the provisional measures if action not commenced by the rights owner at the request of the infringer f. Payment of compensation when provisional measures are revoked or no infringement found 3. Border Measures- Rights owners must be capable of obtaining the cooperation of customs authorities to suspend release of infringing goods into free circulation a. Application must be in writing and prima facie evidence of infringement provided to customs. Information about the subject goods to permit identification must also be provided b. Customs must inform the right-holder if application has been accepted and how long the measures will be taken c. Remedies should include destruction or disposal of the infringing goods in a way that avoids harm to the right-holder, e.g., goods may not be re-exported unaltered d. De minimis provision e. Right-owner may be required to lodge security and provide compensation when infringement is not found f. Alleged infringers to be promptly informed of the decision to suspend circulation of goods and provision to be made for the review of the decision g. Goods to be released if no follow-up action taken to the original application within 10-20 working days 4. Criminal procedures and penalties should be available to deal with wilful trademark counterfeiting or copyright piracy on a commercial scale. Remedies should include imprisonment and fines sufficient to provide a deterrent ¥ Forfeiture of infringing goods, and of materials and instruments used to produce them, and to their disposal or destruction ¥ Note that under Art. 69 of the TRIPS Agreement, contact points are required to be established by Members to exchange information on trade in infringing goods, and generally promote cooperation between customs on trade in counterfeit and pirated goods

Answer 58

In 2001, WTO Members adopted a special Ministerial Declaration at the WTO Ministerial Conference in Doha to clarify ambiguities between the need for governments to apply the principles of public health and the terms of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). In particular, concerns had been growing that patent rules might restrict access to affordable medicines for populations in developing countries in their efforts to control diseases of public health importance, including HIV, tuberculosis and malaria. The Declaration responds to the concerns of developing countries about the obstacles they faced when seeking to implement measures to promote access to affordable medicines in the interest of public health in general, without limitation to certain diseases. While acknowledging the role of intellectual property protection "for the development of new medicines", the Declaration specifically recognizes concerns about its effects on prices. The Doha Declaration affirms "the TRIPS Agreement does not and should not prevent Members from taking measures to protect public health". In this regard, the DOHA Declaration reaffirms of the right of WTO Members to make full use of the safeguard provisions of the TRIPS Agreement in order to protect public health and enhance access to medicines for poor countries. The Doha Declaration refers to several aspects of TRIPS, including the right to grant compulsory licenses and the freedom to determine the grounds upon which licences are granted, the right to determine what constitutes a national emergency and circumstances of extreme urgency, and the freedom to establish the regime of exhaustion of intellectual property rights.

Answer 59

The TRIPS Agreement allows the use of compulsory licences that enables a competent government authority to license the use of a patented invention to a third party or government agency without the consent of the patent-holder. Article 31 of the Agreement sets forth a number of conditions for the granting of compulsory licences. These include a case-by-case determination of compulsory licence applications, the need to demonstrate prior (unsuccessful) negotiations with the patent owner for a voluntary licence and the payment of adequate remuneration to the patent holder. Where compulsory licences are granted to address a national emergency or other circumstances of extreme urgency, certain requirements are waived in order to hasten the process, such as that for the need to have had prior negotiations obtain a voluntary licence from the patent holder. Although the Agreement refers to some of the possible grounds (such as emergency and anticompetitive practices) for issuing compulsory licences, it leaves Members full freedom to stipulate other grounds, such as those related to non-working of patents, public health or public interest. The Doha Declaration states that each Member has the right to grant compulsory licences and the freedom to determine the grounds upon which such licences are granted.

Answer 60

Parallel importation is importation without the consent of the patent-holder of a patented product marketed in another country either by the patent holder or with the patent-holder’s consent. The principle of exhaustion states that once patent holders, or any party authorized by him, have sold a patented product, they cannot prohibit the subsequent resale of that product since their rights in respect of that market have been exhausted by the act of selling the product. Article 6 of the TRIPS Agreement explicitly states that practices relating to parallel importation cannot be challenged under the WTO dispute settlement system. The Doha Declaration has reaffirmed that Members do have this right, stating that each Member is free to establish its own regime for such exhaustion without challenge. Since many patented products are sold at different prices in different markets, the rationale for parallel importation is to enable the import of lower priced patented products. Parallel importing can be an important tool enabling access to affordable medicines because there are substantial price differences between the same pharmaceutical products sold in different markets.

Answer 61

The Doha Declaration also extended the transition period for LDCs for implementation of the TRIPS obligations from 2006 to 2016. However, the extension is limited to the obligations under provisions in the TRIPS Agreement relating to patents and marketing rights, and data protection for pharmaceutical products. Thus, LDCs are still obliged to implement the rest of their obligations under the TRIPS Agreement as of 2006. From a public health perspective, this extension of the transition period for LDCs is of significant importance. It is recognition of the implications of patent protection on public health, and thus, it is recommended that all LDCs adopt the necessary measures to use the 2016 transition period in relation to pharmaceutical patents and test data protection.

Answer 62

* 1 January 1995: Entry into force * 1 January 1996: Developed countries * 1 January 2000: Developing countries & Economies in Transition * 1 January 2006: Least-developed countries (possibility of extension). For pharmaceutical patents, extended to (new 2033) 2016. For others, to 2013 * June 2013, extended to “July 2021, or until such a date on which they cease to be LDC, whichever is earlier” The TRIPS Agreement gives all WTO Members transitional periods so that they can meet their obligations under it. The transitional periods, which depend on the level of development of the country concerned, are contained in Articles 65 and 66. Developed country Members have had to comply with all of the provisions of the TRIPS Agreement since 1 January 1996. However, all Members, even those availing themselves of the longer transitional periods, have had to comply with the national treatment and MFN treatment obligation as of 1 January 1996. For developing countries, the general transitional period was five years. In addition, the Agreement allowed countries in transition from a centrally planned into a market economy to delay application until 2000, if they met certain conditions. For those countries on the United Nations list of least-developed countries, the transitional period is eleven years. The Agreement provides a possibility to extend the transitional period upon duly motivated request. There are two important substantive obligations that have been effective from the entry into force of the TRIPS Agreement on 1 January 1995. One is the so-called “non-backsliding” clause in Article 65.5 which concerns changes made during the transitional period, and the other the so-called “mail-box” provision in Article 70.8 for filing patent applications for pharmaceutical and agricultural chemical products during the transitional period. The “non-backsliding” clause in Article 65.5 forbids countries from using the transition period to reduce the level of protection of intellectual property in a way which would result in a lesser degree of consistency with the requirements of the Agreement. Special transition rules apply in the situation where a developing country did not provide product patent protection in a given area of technology, especially to pharmaceutical or agricultural chemical inventions, on the general date of application of the Agreement for that Member, i.e. in the year 2000. According to Article 65.4, such a developing country may delay the application of the TRIPS obligations on product patents to that area of technology for an additional five years (i.e. to the year 2005). However, the Agreement includes additional transitional arrangements in the situation where a country does not provide, as of the date of entry into force of the WTO Agreement, patent protection for pharmaceutical and agricultural chemical products commensurate with the TRIPS provisions. In accordance with the “mail-box” provision contained in Article 70.8, the country concerned must provide, as from the date of entry into force of the WTO Agreement, a means by which patent applications for such inventions can be filed. These applications will not need to be examined for their patentability until the country starts applying product patent protection in that area, i.e. for a developing country, at the end of the ten-year transition period. However, at that time, the application must be examined by reference to the prior art as it existed at the time the application was made. If the application is successful, product patent protection would then have to be granted for the remainder of the patent term counted from the filing date of the application. If a product that has been the subject of such a patent application obtains marketing approval before the decision on the grant of the patent is taken, there is an obligation under Article 70.9 to grant exclusive marketing rights for a period of up to five years to tide over the gap. This is subject to a number of safeguards to ensure that the product concerned is a genuine invention: subsequent to the entry into force of the WTO Agreement, a patent application must have been filed, a patent granted and marketing approval obtained in another Member for the product in question.

Answer 63

There is a growing need for quick and inexpensive ways of settling commercial disputes involving IP rights, and providing private parties with an alternative to often lengthy and costly court proceedings. Alternative Dispute Resolution (ADR) is widely perceived to be one of the most appropriate means of resolving IP disputes because it (a) is appropriate for most IP disputes, (b) enhances party control/autonomy, (c) is time/cost-effective, and (d) is often less adversarial than court litigation. Among topics to be discussed are: The WIPO Arbitration and Mediation Center as the world’s leading provider of Internet domain name dispute resolution services; and Alternative Dispute Resolution of IP disputes.

Answer 64

Based in Geneva, Switzerland, the WIPO Arbitration and Mediation Center was established in 1994 to promote the resolution of IP and related disputes through alternative dispute resolution (ADR). To achieve this objective, it developed – with the active involvement of ADR and IP practitioners and scholars – the WIPO Mediation, Arbitration, Expedited Arbitration and Expert Determination Rules and Clauses. Established in 1994 to provide alternative dispute resolution (ADR) services for the time and cost effective resolution of intellectual property (IP) disputes between private parties outside of court. 1. Classical Arbitration & Mediation Services 2. Tailor-Made Dispute Resolution Procedures. 3. Leading provider of domain name dispute resolution services under the Uniform Domain Name Dispute Resolution Policy on a not-for-profit basis.

Answer 65

``` • 300+ mediations and arbitrations • Contractual: o Research & development agreements. o Joint-ventures o Financing agreements o Merchandising/licensing agreements o Insurance agreements o New media agreements o Copyright related agreements • Cases referred by courts to mediation ``` Specialized schemes (e.g. WIPO Expedited Mediation and Expedited Arbitration for Film and Media, Mediations for International Trademark Oppositions (e.g. Singapore, Brazil) AMC offers a 25% reduction in the Center’s registration and administration fees where at least one party to the dispute has been named as an applicant or inventor in a published PCT application

Answer 66

Alternative dispute resolution (ADR) procedures offer several advantages: • A single procedure. Through ADR, the parties can agree to resolve in a single procedure a dispute involving intellectual property that is protected in a number of different countries, thereby avoiding the expense and complexity of multi-jurisdictional litigation, and the risk of inconsistent results. • Party autonomy. Because of its private nature, ADR affords parties the opportunity to exercise greater control over the way their dispute is resolved than would be the case in court litigation. In contrast to court litigation, the parties themselves may select the most appropriate decision-makers for their dispute. In addition, they may choose the applicable law, place and language of the proceedings. Increased party autonomy can also result in a faster process, as parties are free to devise the most efficient procedures for their dispute. This can result in material cost savings. • Neutrality. ADR can be neutral to the law, language and institutional culture of the parties, thereby avoiding any home court advantage that one of the parties may enjoy in court-based litigation, where familiarity with the applicable law and local processes can offer significant strategic advantages. • Confidentiality. ADR proceedings are private. Accordingly, the parties can agree to keep the proceedings and any results confidential. This allows them to focus on the merits of the dispute without concern about its public impact, and may be of special importance where commercial reputations and trade secrets are involved. • Finality of Awards. Unlike court decisions, which can generally be contested through one or more rounds of litigation, arbitral awards are not normally subject to appeal. • Enforceability of Awards. The United Nations Convention for the Recognition and Enforcement of Foreign Arbitral Awards of 1958, known as the New York Convention, generally provides for the recognition of arbitral awards on par with domestic court judgments without review on the merits. This greatly facilitates the enforcement of awards across borders. There are, of course, circumstances in which court litigation is preferable to ADR. For example, ADR's consensual nature makes it less appropriate if one of the two parties is extremely uncooperative, which may occur in the context of an extra-contractual infringement dispute. In addition, a court judgment will be preferable if, in order to clarify its rights, a party seeks to establish a public legal precedent rather than an award that is limited to the relationship between the parties. In any event, it is important that potential parties, and their advisors are aware of their dispute resolution options in order to be able to choose the procedure that best fits their needs.

Answer 67

The WIPO Arbitration and Mediation Center offers four main dispute-resolution procedures which can be adopted, on a voluntary and consensual basis, by any parties (individuals or enterprises) that wish to avail themselves of WIPO's dispute-resolution services: mediation; arbitration, expedited arbitration and expert determination. There are three general principles that characterize WIPO mediation and arbitration. 1. Preservation of party autonomy in arbitration and party control in mediation. The appointment of arbitrators and mediators is the best example. The Arbitration Rules provide that the center have the power of appointment only in a default role. In the case of mediations, the WIPO Mediation Rules provide for the par- ties to appoint jointly the mediator. 2. Provide a procedure which gives the parties and the mediator or arbitrators the maximum possible flexibility to adapt the procedure to the particular requirements of the parties in question. 3. A style of administration which places emphasis on the importance of the appointment procedure as the pre-eminent assurance of the quality of the ensuing procedure

Answer 68

Arbitration is a procedure in which a dispute is submitted, by agreement of the parties, to an arbitrator, who gives a decision on the dispute that is binding on the parties. In contrast to mediation, once the parties have freely agreed to submit a dispute to arbitration, a party cannot unilaterally withdraw from the arbitration. General objectives: • To provide for an expeditious and efficient procedure- The WIPO Arbitration Rules seek to address the problem of length in international commercial arbitration by imposing obligations on both counsel and the arbitrators and to ensure that they have available sufficient time to enable the arbitration to be conducted expeditiously. In addition, the Rules lay down time limits for all stages of the procedure and seek to bring about a closure of the proceedings within a period of nine months from either the delivery of the Statement of Defense or the establishment of the tribunal. The tribunal should deliver the final award within the three months following the closure of the proceedings. • To take account of the latest approaches and developments in international commercial arbitration- there are a number of provisions in the WIPO Arbitration Rules which seek to take account of the latest developments in arbitration. • To be particularly sensitive to the specific requirements of intellectual property disputes- contain provisions in various parts that seek to address the specific requirements of intellectual property disputes. E.g. relating to technical and experimental evidence or confidentiality • To provide some certainty in relation to cost exposure on the part of potential disputants. The determination of arbitrators' fees and the administrative are on the basis by reference to the amount in dispute.

Answer 69

Mediation is an informal procedure in which a neutral intermediary, the mediator, assists the parties in reaching a settlement of the dispute. • The mediator does not have any power to impose a decision on the parties • Mediation is also voluntary in the sense that either party may, if it so chooses, abandon the mediation at any stage prior to the signing of an agreed resolution • Many IP disputes have characteristics that favor mediation. E.g. in disputes in context of existing business relationship. • Time and Cost-effective, and low-risk, therefore more IP lawyers/clients including mediation in contracts as pre-condition to resorting to arbitration/litigation Because mediation is a non-binding procedure, the rules governing must be particularly flexible. There are two models of mediation. The evaluative model, where the mediator offer an evaluation of the dispute and suggest an appropriate outcome and the facilitative model, in which mediator seeks to facilitate communication between the parties and to help each of them to understand the other's viewpoint in relation to the dispute. The WIPO Mediation Rules provide this flexibility to accommodate both models they also contain detailed provisions on confidentiality. The WIPO Mediation Rules similarly accommodate both the practice of the mediator meeting separately with each of the parties in so-called caucuses and the style of mediation whereby the mediator conducts all meetings with parties in the presence of both parties. Mediation will generally comprise seven main stages: (1) Following the appointment of the mediator, initial contacts will take place between the mediator and the parties during which the arrangements for the first meeting of the mediator with the parties will be established and the mediator will suggest what he or she would like each party to provide prior to that meeting. (2) At the second stage, the mediator and the parties will establish the ground rules that are to be followed in the process. The mediator will, thus, at this stage agree with the parties whether the mediator's role is to be evaluative or facilitative and whether or not separate caucuses will be held. (3) Once the ground rules of the process are clear, the third stage of gathering information and identifying the issues will proceed. (4) Once the issues have been identified and the positions that each party is adopting in relation to those issues are clarified, the mediator will attempt, with the parties, to uncover the real interests that underlie the positions that are being adopted by the parties. The advantage of uncovering these interests is that there is generally more than one way in which an interest can be satisfied, while there is often only one way in which a position can be satisfied. (5) Following the identification of the interests that lie beneath the parties' positions, the mediator will endeavor to develop with the parties a range of options for satisfying those interests. (6) The mediator will then embark with the parties upon an evaluation of the various options that have been developed and endeavour to establish with the parties which of the options best satisfies both parties' interests. (7) Finally, in a successful mediation, there will be a concluding stage, which will usually involve the parties retiring to consider independently whether or not they are able to conclude on the basis of one of the options that has been developed and evaluated.

Answer 70

In the case of disputes where the amount in question is relatively low They introduce four main modifications to the conventional rules: 1. There is always a sole arbitrator; 2. Pleadings are consolidated so that the Statement of Claim must accompany the Request for Arbitration and the Statement of Defense must accompany the Answer to the Request; 3. The time limits applicable to the various stages of the procedure are shortened; 4. Hearings are condensed so that, save in exceptional circumstances, they should be no longer than 3 days at a maximum.

Answer 71

Is a procedure in which a dispute or a difference between the parties is submitted, by agreement of the parties, to one [or more] experts who make a determination on the matter referred to it [them]. The determination is binding, unless the parties agreed otherwise. Notable features of expert determination are: 1. Expert determination is consensual - It can only take place if both parties have agreed to it. In the case of future disputes/differences arising under a contract, the parties insert an expert determination clause in the relevant contract. An existing dispute/difference can be referred to expert determination by means of a submission agreement between the parties. In contrast to mediation, a party cannot unilaterally withdraw from expert determination. 2. The parties choose the expert(s) with relevant expertise- if the parties have not agreed on the person of the expert or on a different procedure for appointing the expert; the expert will be appointed by the Center after consultation with the parties. The Center has access to experts with specialized knowledge relevant to intellectual property issues in a broad range of technical and business areas. This allows the Center to propose and appoint the appropriate experts for the matter referred to. 3. Expert determination is neutral and flexible- In addition to their selection of an expert with appropriate qualifications, the parties are able to choose such important elements as the language of the expert determination or the place of any meeting. 4. Expert determination is a confidential procedure- Subject to specifically defined exceptions, the WIPO Rules specifically protect the confidentiality of the existence of the expert determination, any disclosures made during that procedure, and the resulting determination. 5. The determination of an expert is binding, unless the parties agree otherwise- In principle, the determination of an expert is binding and as such it has contractual effect between the parties. Alternatively, by party agreement, the determination may have effect as a recommendation to the parties. 6. Expert determination is a flexible procedure- Expert determination can operate on a more informal and expeditious manner than broader processes such as arbitration. Expert determination may be used on a stand-alone basis or in connection with an arbitration, mediation or court case.

Answer 72

In December 1999, the WIPO Arbitration and Mediation Center began offering domain name dispute resolution services under the Uniform Domain Name Dispute Resolution Policy (UDRP). The Center’s services include administering second-level domain name disputes for generic Top-Level Domains (gTLDs) to which the UDRP applies. The Center is the leading provider of dispute resolution services under the WIPO-initiated, ICANN-mandated UDRP. The Center also administers disputes under a number of specific policies, adopted by individual gTLD registries as discussed further below. The UDRP is applicable to second-level domain name registrations in the following gTLDs: .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel and travel. The UDRP also applies to all New gTLDs. Of the approx. 250 country code Top Level Domains (ccTLDs), WIPO is accredited dispute resolution service provider for 74

Answer 73

• July 1997 – President Clinton directs Secretary of Commerce to privatize management of the DNS • January 1998 – Dept. of Commerce issues proposal to empower non-profit entity to control the Internet and DNS • June 1998 – WIPO begins process to develop recommendations concerning IP/DN issues • November 1998 – Dept. of Commerce and ICANN enter into a Memorandum of Understanding, officially recognizing ICANN ⎫ Cybersquatting identified as immediate concern • April 1999 – WIPO issues Final Report of the WIPO Internet Domain Name Process ⎫ Advocating for uniform dispute resolution mechanism for domain name disputes • November 1999 – UDRP adopted

Answer 74

The domain name system (DNS) is part of what makes the Internet accessible to users on a day-to-day basis. A domain name is a human-friendly form of an Internet address that is both easy to identify and to remember, such as or . The domain name system operates on the basis of a hierarchy of names. The Internet is comprised of millions of individual alphanumeric strings, which serve as textual identifiers of a given IP address on the Internet - these are domain names (e.g. ) Domain names are generally available for registration on a first come, first served basis for a fee through a registrar

Answer 75

• Domain names used to navigate on Internet ⎫ Principal system for routing traffic on the Net ⎫ Facilitate ease of use for individuals, consumers, business • Domain names used by enterprises ⎫ serve to identify and distinguish businesses and their goods and services: specify the on-line, Internet location • Businesses use names corresponding to trading name or registered trademark ⎫ Branding on the Internet is increasingly important ⎫ Promote easy-to-remember name or word ⎫ Corresponds to trademark investments made in the physical world

Answer 76

``` • Organized as hierarchy: ⎫ top-level domains: www.wipo.int ⎫ second-level domains: www.wipo.int • Two categories of top-level domains: ⎫ generic top-level domains (gTLDs): o .com, .org, .net, .int, .mil, .gov, .edu, .aero, .museum, .coop, .name, .biz, .pro, .info ⎫ country code top-level domains (ccTLDs): o eg .ch, .de, .it, .us, .es, .gh ```

Answer 77

Domain names can be valuable virtual real estate. Eg, sex.com sold for 14 million; porn.com for 9.5 million; and beer.com for 7 million Domain names are not protected as IP rights per se – but sometimes they can come into conflict with existing IP rights, such as trademarks As a result, disputes between domain name registrants and trademark owners can, and do occur. One method of resolving these may be provided by the WIPO-recommended UDRP

Answer 78

* WIPO advice to ICANN - 1998-1999 * Need for a procedure permitting trademark owners to resolve clear cases of abusive domain name registration (‘cybersquatting’) without going to court * UDRP adopted by ICANN and took effect in 1999 * UDRP has proven to be an effective expedient & alternative to court action, while preserving court options * Unique in the sense that it is made possible by a contract web of global scope – all gTLD domain name registrants must agree in their registration agreement to be bound by the UDRP

Answer 79

* Efficient - Time and Cost Effective (filing fee US$ 1,500) * Predictable means of resolving clear cases of cybersquatting * International – enforceable across jurisdictions and effectively

Answer 80

It’s an international administrative procedure based on a mandatory ‘contract web’ between ICANN, DN registrars, and DN registrants and designed to allow trademark owners to resolve clear cases of abusive domain name registration and use (‘cyber squatting’) and allowing direct enforcement through registrars (‘10-b/day rule’) without going to court - but preserving court options (not Arbitration per se)

Answer 81

• Applicable to all gTLDs: .com, .net, .org., aero, .biz, .coop, .info, .museum, .name, .pro. (& some ccTLDs) • Standing – requires trademark rights • Remedies – limited to transfer or cancellation ⎫ no costs or damages • Source of law: contract ⎫ domain name registrants are bound to the UDRP through their registration agreement

Answer 82

Trademark must be identical or confusingly similar to the domain name (Policy, s. 4.(a)(i)); Trademark rights are a threshold requirement under the UDRP (paragraph 4(a)(i)). 1. It could be registered or unregistered. Other rights not covered. Geographic location of mark generally irrelevant for the purpose of standing. Unregistered or common law rights may be established where a complainant can show that the claimed mark has become a ‘distinctive identifier’ associated with the complainant or its goods and services E.g. Tom Cruise found to be a distinctive identifier of acting services provided by that individual 2. The registrant of the domain name must have no rights or legitimate interests in the domain name (Policy, s. 4.(a)(ii)); Before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. • You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights. • You are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue 3. The domain name must have been registered and used in bad faith (Policy, s. 4.(a)(iii)). Paragraph 4(b) of the UDRP Policy sets out the following examples of circumstances that will be considered by an Administrative Panel to be evidence of the bad faith registration and use of a domain name: ♣ Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant's out-of-pocket costs directly related to the domain name; or ♣ The domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or ♣ The domain name was registered primarily for the purpose of disrupting the business of a competitor; or ♣ By using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. The above examples are not exclusive and other circumstances may exist that demonstrate the registration and use of a domain name in bad faith.

Answer 83

1. The Complaint is filed by the Complainant- Since December 2009, filing may be done by simple email (attaching the Complaint and supporting annexes) sent to WIPO at domain.disputes@wipo.int 2. The Center requests domain name lock by Registrar, reviews Complaint for administrative compliance with the UDRP Rules, and notifies to the Respondent. The Respondent is given 20 days to respond to the notified Complaint 3. An independent panel is appointed from the Center’s list (1- or 3-member Panels) ⎫ Intellectual property and Internet specialists ⎫ Some 450 members from more than 50 countries in all regions 4. Independent Panel issues a decision within 14 days- Based on written evidence (ie, Complaint, Response), no in-person hearings 5. The Registrar implements the Panel’s decision- At the end of 10 calendar days, if no court challenge

Answer 84

The main advantage of the UDRP Administrative Procedure is that it typically provides a faster and cheaper way to resolve a dispute regarding the registration and use of an Internet domain name than going to court. In addition, the procedures are considerably more informal than litigation and the decision-makers are experts in such areas as international trademark law, domain name issues, electronic commerce, the Internet and dispute resolution. It is also international in scope: it provides a single mechanism for resolving a domain name dispute regardless of where the registrar or the domain name holder or the complainant is located

Answer 85

Decisions not binding per se, but consensus and majority panel positions on many common issues have developed.

Answer 86

♣ Policy does not contain detailed rules of evidence - case precedent particularly important. ♣ Panels typically adopt a common sense approach, having regard to the particular circumstances of each case. ♣ For example, internet savvy and history of the domain name registrant, and the fame (or otherwise) of Complainant’s mark. ♣ Evidence in UDRP proceedings may not always be extensive, and reasonable inferences can play a role (e.g. where Resp. chooses not to respond). ♣ Panel may also issue Panel Orders – having regard to procedural fairness & need for due expedition. ♣ The onus is however squarely on the Complainant to make its case (whether or not there is a Response). ♣ Mere statements, assertions or conclusions of law are not enough - some form of proof is required. ♣ The standard is typically balance of probabilities.

Answer 87

“Development” has become one of the most debated issues in the international arena. In the UN context, there is the UN Sustainable Development Goals (SDGs). In the WTO context, there is the Doha Development Agenda: and in the WIPO context, there is the WIPO Development Agenda. A Fundamental premise underlying IP throughout its history has been that the recognition and rewards associated with ownership of inventions and creative works stimulate further inventive and creative activity that, in turn, stimulates economic development. It is today widely accepted that knowledge and inventions play an important role in economic growth. Over 75% of WIPO and WTO’s Members are developing or least-developed countries. There are several provisions in the WIPO and WTO Agreements that speak to the special position of these countries. What specific role does IP play in development and vice versa? Why has development become such a buzzword in IOs today? What is the likely impact of the development agenda in WIPO?

Answer 88

Brazil and Argentina proposed the development agenda. They wanted to change the WIPO convention to reflect the development agenda. To use the WIPO UN agreement was signed by two Secretary General and is not is a treaty. So you can’t change it. No one think in IP related to development. But this is changing. What are we talking about? Copyright is about 10% gross domestic product. Now in WIPO there is a whole division to insure that development is reflected in all the policies and contribute to UN development goals. How IP can impact development? An “upward harmonization of intellectual property laws” has long been favored by WIPO so a greater intellectual property protection and enforcement in developing and developed countries was strengthened alike the WIPO DA states that strong intellectual property protection does not consistently promote creative activity, facilitate technology transfer nor accelerate development The DA focuses on the benefits of: 1. A rich and accessible public domain 2. National flexibilities in implementing IP treaty norms 3. Access to knowledge 4. The UN development goals 5. Curbing of IP-related anti-competitive practices 6. The need to balance the costs and benefits of intellectual property protection That does not mean that the DA abandons the idea that IP rights can push innovation and development under some local conditions but WIPO sees the need for balance, flexibility and a robust public domain at the same time as promoting IP protection in all WIPO matters affecting developing countries The DA can not only be seen as a criticism of WIPO’s uncritical promotion of intellectual property rights before, it also reflects the developing countries’ growing resistance to the upward harmonization of IP protection required by the TRIPS and TRIPS-plus bilateral free trade agreements The DA removes the neoliberal belief, which has been a motive power behind TRIPS as well WIPO treaty initiatives It is no longer WIPO’s mission to serve IP producers’ interest in achieving uniformly high levels of protection throughout the world but rather WIPO must be lead by distinct, country specific understandings, e.g. patent law norms maybe serve pharmaceutical industries and innovation in the US and Europe, might be less optimal in China and ill-suited to India But nevertheless IP protection is not always harmful to developing countries and industries in the book are a few contributors who point out that robust IP protection can also stimulate economic growth in developing countries with large domestic markets and may increase cultural industries even in LDCs To determine how the DA should be implemented, WIPO officials, national governments, NGOs and scholars need to focus on empirical study

Answer 89

WIPO must assist MS in making national IP institutions more efficient and promote a fair balance between IP protection and the public interest Technical assistance is important because developing countries often lack the resources and expertise required to evaluate and implement IP treaty obligations in a manner that best serves their national interests

Answer 90

The DA requires WIPO to take into account different levels of development Developing countries are formally represented on the standing committees but their impact on treaty preparation remains limited because of a lack of resources and expertise Imbalance between delegations of developed countries and developing countries

Answer 91

The DA also aims to further integrate WIPO within a framework of agencies dedicated to development

Answer 92

The DA enables developing countries to fully understand and benefit from flexibilities provided for in int. agreements including compulsory licensing The DA instructs WIPO to advise LDCs on how to gain access to and make use of IP-related technology and to undertake initiatives agreed by MS which contribute to transfer of technology to developing countries such as requesting WIPO to facilitate better access to publicly available patent information Although the DA promotes technology transfer through limitations on IP rights, it stops far short of supporting wholesale compulsory licensing to bring technology and know-how to developing countries

Answer 93

The DA contains a number of items regarding the potential conflicts between IP and competition policy The DA commits WIPO to raising awareness of possibilities for crafting competition law and policy to better serve developing country interests in delimiting exclusive IP rights

Answer 94

The protection of genetic resources, traditional knowledge and folklore has been a high priority for developing countries for a number of years Although developing countries generally oppose the upward harmonization of patent, copyright and trademark, they regard int. treaty recognition of proprietary rights in genetic resources, traditional knowledge and folklore as an opportunity for requiring protection of resources they extensively have

Answer 95

Several proposed action items that would have promoted exceptions and limitations to IP rights were not included in the DA e.g. a “Treaty on Access to Knowledge and Technology” or a requirement that WIPO maintain "a list of essential technologies, know-how, processes, and methods that are necessary to meet the basic development needs of African countries”

Answer 96

A significant value of IP lies in the ability to enforce those IP rights. The evidence suggests, however, that developing countries generally tend to be less able/willing to enforce IP rights. The session will look at the pros and cons of enforcement. Enforcement of IPR involves legal proceedings initiated by the right holder in a civil or administrative court in the country where the infringement is alleged to be taking place. IPRs holders concerned with cross-border trade have a strong preference for enforcement of Border measures. Building respect for IP means helping create an environment in which IP can fulfill its role to stimulate innovation and creation. It also means fostering an environment in which the system of protection provides equitable benefits for both owners and users of IP. Through our activities in this area, WIPO aim to facilitate social and economic development and welfare, in accordance with the WIPO Development Agenda (Recommendation 45). Building respect for IP requires integrating elements encompassing developments in legislation, awareness and cultural change, business and technology solutions, and institutional collaboration.

Answer 97

A- The TRIPS Agreement 1. Enforcement obligations- The TRIPS agreement requires Members to establish effective procedures for the enforcement of IPRs that must to be fair and equitable. Members are obligated to provide: o Access to civil judicial procedures to enforce their rights. o Damage and injunctions o Provisional measures o Criminal procedures and penalties 2- Enforcement in WTO Dispute Settlement- The TRIPS agreement entered new international legal ground when it imposed obligations on WTO Members to adequately and effectively enforce IPRs. The art. 4.1 of TRIPS provides that governments are obligated to provide fair and equitable procedures pursuant to which IPRs holders may obtain redress. The preamble to the TRIPS agreement indicates that rights granted to holders under TRIPS are private rights. On the other hand, art. 61 provides that member shall provide for criminal procedures and penalties to be applied in cases of willful trademark counterfeiting or copyright piracy on a commercial scale. 3- Violation and non-violation Complains – There are two ways of dispute settlement mechanism in state-state WTO disputes on IPRs: ¥ Claim for violation- when one member claim against other member alleging a failure to comply with an obligation expressly imposed by the WTO TRIPS. E.g. Australia Plain packaging case. ¥ Claim for non-violation nullification or impairment – When a country introduces a measure that complies with TRIPS but damage expectation on another country. E.g. A grant to home producers compatible with TRIPS but harm host producers.

Answer 98

In the UE there are border measures regulation, because this measure concerned international trade and European Union has exclusive competence in that area. In 2004 the European Union adopted a directive on the enforcement of IPRs.

Answer 99

The Traditional Knowledge, Traditional Cultural Expressions and Genetic Resources are handed down from generation to generation, either orally or by imitation. Reflect a community’s cultural and social identity. Are often made by “authors unknown” and are regarded as “belonging” to a community under customary laws. Are constantly evolving, developing and being recreated within a community.

Answer 100

TK is a living body of knowledge that is developed, sustained and passed on from generation to generation within a community, often forming part of its cultural or spiritual identity. 1. Content or substance of knowledge, which results from intellectual activity in a traditional context. 2. Includes know-how, skills, innovations, practice and learning. 3. Not limited to a specific technical field and may include, for example, traditional agricultural, environmental, medicinal knowledge, and any traditional knowledge associated with cultural expressions and genetic resources E.g. Knowledge about traditional medicines, traditional hunting or fishing techniques or about animal migration patterns or water management.

Answer 101

Forms in which traditional knowledge and culture are expressed, communicated and manifested. They can be dances, songs, designs, etc. Are seen as integral to the cultural and social identities and heritage of indigenous and local communities. May be tangible, intangible or mixed. In any material object, there is often a symbolic or religious element from which it cannot be separated.

Answer 102

GRs are defined in the Convention on Biological Diversity (CBD). They are parts of biological materials that: 1. Contain genetic information of value. 2. Are capable of reproduction or being reproduced. GRs are subject to regulations on access and benefit sharing set by: ♣ The Convention on Biological Diversity (CBD) ♣ The Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization to the CBD (Nagoya Protocol) ♣ The International Treaty on Genetic Resources for Food and Agriculture (ITPGRFA) of the FAO ♣ And all as implemented by regional and national systems Two IP-related questions/issues Inventions based on or derived from GRS may be patentable (or subject to other forms of IP rights). Preventing the grant of erroneous patents over GRs that do not fulfill the requirements of novelty and non-obviousness • “quality of patent examination” issue Using the patent/IP system to ensure and track compliance with ABS systems in national laws established pursuant to the CBD, Nagoya, FAO Treaty • “transparency/mutual supportiveness” issue Proposed responses/solutions include: • databases/information systems, information exchange, patent examination guidelines • mandatory disclosure requirement, i.e. to make it mandatory for patent applications to show the source of origin of GRs, as well as evidence of PIC and a benefit-sharing agreement • and/or managing patent/IP rights through contract (IP clauses in mutually-agreed terms) Problem: who are the owners? Are generally regarded as collectively originated and held, so that any rights and interests in this material should vest in communities rather than in individuals.

Answer 103

• TK and TCEs are innovations and creative expressions of indigenous and local communities • They are products of creative intellectual activity; so they are “intellectual property” • Ex: traditional art, music, medicine… • But since they are “traditional”, they cannot be fully protected by existing IP systems due to inherent inadequacies of the system: • Originality • Use in commerce • Novelty, etc. • Until recently, TK and TCEs were considered as belonging to the common heritage of humanity.. In the “public domain” • Today, growing awareness of: • The risk of erosion of local knowledge systems • The economic potential – for communities and industries • Their value as cultural “assets” – part of social and cultural identity • Vulnerability to misuse and misappropriation • Of course, TK and TCEs should be preserved, conserved and safeguarded.. • But should they get IP protection, and if so, how? • Protection with conventional/existing IP systems to prevent misuse, misappropriation, copying, adaptation or other kind of illicit exploitation. • Adaptation of conventional/existing IP systems • Sui generis protection o TK and TCEs would be recognized as a form of “intellectual property” – i.e., as comprising creations and innovations of the human mind o The protection of TK and TCEs would be provided by a special system or mechanisms based on the kinds of measures, principles and values that underlie the system established for the protection of intangibles (the intellectual property system o Features of this intellectual property system include: Property rights (e.g. exclusive rights) and non-property rights (e.g. moral 1. rights, unfair competition, right to equitable compensation) 2. Balance and proportionality: IP rights do not provide absolute and perfect control: limitations and exceptions/limited term/the role of the ‘public domain’ • Non-IP measures and laws

Answer 104

* Promote respect for traditional cultures * Prevent misuse and misappropriation * Be able to control and exploit * Encourage community innovation and creativity * Promote economic development and legitimate/appropriate trading opportunities * Ensure remuneration for third party use * Ensure acknowledgement * Prevent the acquisition of unauthorized IP rights

Answer 105

To be considered when developing a sui generis system of protection: • Why protect? Aims and objectives • What to protect? Subject matter • Who should benefit? Beneficiaries • What acts should be forbidden? Scope • Should there be exceptions and limitations? • For how long? Duration • Should there be formalities? • What sanctions or penalties apply? • Should rights be retrospective? • How should foreign right holders be treated?