Flashcards in WIPO Exam Deck (22)
What does it means for WIPO to be a specialized agency of UN?
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.”
(Mission, objectives, structure and Budget)
Elaborate on some of the principal areas of cooperation between WIPO and WTO
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. There are 95 IW
Implementation of 6ter of Paris TRIPS - When you are a country you register your signs and emblems, official Hallmarks and emblems of intergovernmental organizations (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 1- 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).
2- 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.
Dispute settlement- 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
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.
What is unique about WIPO as UN agency?
• Huge source of money, more independent from UN and the payment of members!
• They receive 90% of their income by the registration systems
• Registration service for everybody efficient system for registration
• WIPO Academy
• Global IP Infrastructure
What are the principal differences between WIPO and WTO?
• WTO has just one IPR Agreement, WIPO has 26 treaties
• TRIPS just set minimum standards
• WIPO has the Internet Agreements, protects also GR and TK, TCEs
• Enforcement system (TRIPS is included in the WTO system DSU principle of single undertaking!)
• WIPO has the specialized knowledge
• WIPO has the more flexible way of rule-making: soft law (faster and more flexible)
• WTO is more focused on the trade aspects of IPRs
• To be a member of WIPO you have to be a State, to be a party you have to be a government: So for Hong Kong for instance you can just have the minimum standard protection set by Art. 2:2 TRIPS for IPRs (compare also EU!)
• BUT: other situation regarding dispute settlements
It’s true that TRIPs is one of the most important agreements between WTO frameworks?
One of the fundamental characteristics of the TRIPS Agreement is that it makes protection of intellectual property rights an integral part of the multilateral trading system, as embodied in the WTO.
The TRIPS Agreement is often described as one of the three “pillars” of the WTO, the other two being trade in goods (the traditional domain of the GATT) and trade in services.
The TRIPS Agreement is part of the “single undertaking” resulting from the Uruguay Round negotiations. That implies that the TRIPS Agreement applies to all WTO members. It also means that the provisions of the agreement are subject to the integrated WTO dispute settlement mechanism which is contained in the Dispute Settlement Understanding (the “Understanding on Rules and Procedures Governing the Settlement of Disputes”).
The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most comprehensive multilateral agreement on intellectual property.
The three main features of the Agreement are:
1. Standards. In respect of each of the main areas of intellectual property covered by the TRIPS Agreement, the Agreement sets out the minimum standards of protection to be provided by each Member.
2. Enforcement. The second main set of provisions deals with domestic procedures and remedies for the enforcement of intellectual property rights.
3. Dispute settlement. The Agreement makes disputes between WTO Members about the respect of the TRIPS obligations subject to the WTO's dispute settlement procedures.
In addition the Agreement provides for certain basic principles, such as national and most-favoured-nation treatment, and some general rules to ensure that procedural difficulties in acquiring or maintaining IPRs do not nullify the substantive benefits that should flow from the Agreement. The obligations under the Agreement will apply equally to all Member countries, but developing countries will have a longer period to phase them in. Special transition arrangements operate in the situation where a developing country does not presently provide product patent protection in the area of pharmaceuticals.
The TRIPS Agreement is a minimum standards agreement, which allows Members to provide more extensive protection of intellectual property if they so wish. Members are left free to determine the appropriate method of implementing the provisions of the Agreement within their own legal system and practice.
The general goals of the TRIPS Agreement are contained in the Preamble of the Agreement, which reproduces the basic Uruguay Round negotiating objectives established in the TRIPS area by the 1986 Punta del Este Declaration and the 1988/89 Mid-Term Review. These objectives include the reduction of distortions and impediments to international trade, promotion of effective and adequate protection of intellectual property rights, and ensuring that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade. These objectives should be read in conjunction with Article 7, entitled “Objectives”, according to which the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations. Article 8, entitled “Principles”, recognizes the rights of Members to adopt measures for public health and other public interest reasons and to prevent the abuse of intellectual property rights, provided that such measures are consistent with the provisions of the TRIPS Agreement
The TRIPS Agreement says WTO member countries must comply with the substantive obligations of the main conventions of WIPO — the Paris Convention on industrial property, and the Berne Convention on copyright (in their most recent versions).
With the exception of the provisions of the Berne Convention on moral rights, all the substantive provisions of these conventions are incorporated by reference. They therefore become obligations for WTO member countries under the TRIPS Agreement — they have to apply these main provisions, and apply them to the individuals and companies of all other WTO members.
The TRIPS Agreement also introduces additional obligations in areas which were not addressed in these conventions, or were thought not to be sufficiently addressed in them.
The TRIPS Agreement is therefore sometimes described as a “Berne and Paris-plus” Agreement.
The text of the TRIPS Agreement also makes use of the provisions of some other international agreements on intellectual property rights:
WTO members are required to protect integrated circuit layout designs in accordance with the provisions of the Treaty on Intellectual Property in Respect of Integrated Circuits (IPIC Treaty) together with certain additional obligations.
The TRIPS Agreement refers to a number of provisions of the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (Rome Convention), without entailing a general requirement to comply with the substantive provisions of that Convention.
Article 2 of the TRIPS Agreement specifies that nothing in Parts I to IV of the agreement shall derogate from existing obligations that members may have to each other under the Paris Convention, the Berne Convention, the Rome Convention and the Treaty on Intellectual Property in respect of integrated circuits.
Explain the transitional provisions on TRIPS
WTO members can make use of the general transition periods without having to notify the WTO and fellow-members. The TRIPS Council reviews the legislation of members after their transition periods have expired.
1. Developing Countries
Developing countries that are not least-developed countries had to apply the TRIPS Agreement’s provisions by 1 January 2000. In 2000 and 2001, the TRIPS Council reviewed the legislation of the following members whose transition periods expired on 31 December 1999:
Antigua and Barbuda, Argentina, Bahrain, Barbados, Belize, Bolivia, Botswana, Brazil, Brunei Darussalam, Cameroon, Chile, Colombia, Congo, Costa Rica, Côte d’Ivoire, Cuba, Cyprus, Dominica, Dominican Republic, Egypt, El Salvador, Estonia, Fiji, Gabon, Ghana, Grenada, Guatemala, Guyana, Honduras, Hong Kong, China, India, Indonesia, Israel, Jamaica, Kenya, Korea, Kuwait, Macau, Malaysia, Malta, Mauritius, Mexico, Morocco, Namibia, Nicaragua, Nigeria, Pakistan, Papua New Guinea, Paraguay, Peru, Philippines, Poland (areas which were not reviewed in ’96–’98), Qatar, Saint Lucia, Singapore, Sri Lanka, St. Kitts and Nevis, St. Vincent and Grenadines, Suriname, Swaziland, Thailand, Trinidad and Tobago, Tunisia, Turkey, United Arab Emirates, Uruguay, Venezuela, Zimbabwe
Please note, nonetheless, that many of these members put into effect national legislation to implement much of the TRIPS Agreement before 1 January 2000.
2. Least Developed Countries
Least developed countries had initially until 1 January 2006 to apply the TRIPS Agreement’s provisions, now extended to 1 July 2013, with the possibility of further extension, and until 1 January 2016 for pharmaceutical patents. In the WTO, least developed country members are those recognized as least developed countries by the United Nations. Lists of least-developed countries that are WTO members and those negotiating membership can be found here.
3. New Members
The general transitional periods apply to the original members of the WTO, i.e. governments that were members on 1 January 1995. Since the WTO came into being, a number of countries have joined it. These countries have generally agreed in their membership agreements (their “accession protocols”) to apply the TRIPS Agreement from the date when they officially became WTO members, without the benefit of any transition period.
The latest list of countries (and “customs territories”) applying to join the WTO can be found here, as can the list of all WTO members, and their dates of joining the WTO.
All members, even those availing themselves of the longer transitional periods, have had to comply with obligations on national treatment (equal treatment for foreign and domestic individuals and companies, Article 3) and most-favoured-nation treatment (non-discrimination between foreign individuals and companies, Article 4) from 1 January 1996.
Special transition rules apply in the situation where a developing country does not provide product patent protection in a given area of technology.
More specifically, if a developing country did not provide product patent protection in a particular area of technology when the TRIPS Agreement came into force (1 January 1995), it has up to 10 years (to 1 January 2005) to introduce the protection (Art 65.4).
But for pharmaceutical and agricultural chemical products, the country must accept the filing of patent applications from the beginning of the transitional period, even though the decision on whether or not to grant any patent itself need not be taken until the end of this period (Art 70.8). This is sometimes called the “mailbox” provision.
If the government allows the relevant pharmaceutical or agricultural chemical product to be marketed during the transition period, it must — subject to certain conditions — provide the patent applicant an exclusive marketing right for the product for five years, or until a decision on granting a product patent is taken, whichever is shorter (Art 70.9).
In addition, Article 65.5 of the TRIPS Agreement says countries using the transition period should not backslide — members availing themselves of a transitional period (under paragraphs 1, 2, 3 or 4 of Article 65) must ensure that any changes in their laws, regulations and practice made during the transition period do not result in a lesser degree of consistency with the provisions of the agreement.
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.
Explain the reasons why you encourage your client to submit the IP dispute to mediation, arbitration or a court of law?
1- 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 1- 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.
2- 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.
3- 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.
4- 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.
5- 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.
How effective is the UDRP as implemented by WIPO?
It’s a time and cost effective means (filing fee: $1,500)
Other advantages: enforcement (10 days rule). Consent to jurisdiction by ICANN contract. Predictable: three elements.
What are the advantages and disadvantages of UDRP?
The main advantage of the UDRP Administrative Procedure is that it typically provides a faster and cheaper (filing fee: $1,500) 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 . Preserves court actions.
Other advantages: enforcement (10 days rule). Consent to jurisdiction by ICANN contract. Predictable: three elements.
♣ Only for cybersquatting non for complex disputes.
♣ Panels rarely request additional evidence.
♣ Non in person hearings only written procedure.
It is no use protected in IP if there is no result in development? Do you agree?
Elaborate on some of the arguments used by both sides in the Tobacco plain packaging case at WTO
How do you predict the panel would rule in the tobacco plain packaging case at the WTO?
It would consider that the plain packaging is a valuable measure of public health and is not an expropriation of the intellectual property. So the panel will dismiss the claim.
Why do we promote and protect intellectual property?
There are several compelling reasons:
a) The progress and well being of humanity rest on its capacity to create and invent new works in the areas of technology and culture.
The legal protection of new creations encourages the commitment of additional resources for further innovation. Third, the promotion and protection of intellectual a) property spurs economic growth, creates new jobs and industries, and enhances the quality and enjoyment of life.
An efficient and equitable intellectual property system can help all countries to realize intellectual property’s potential as a catalyst for economic development and social and cultural well being.
The intellectual property system helps strike a balance between the interests of innovators and
the public interest, providing an environment in which creativity and invention can flourish, for the benefit of all.
Why on certain countries unable or unwilling to enforce IP rights?
Many developing country governments are concerned that the legal standards required by TRIPS, especially for patents, may simply be too high for their countries at the present time. For example, they worry that having to extend IPR protection to advanced industrial fields such as biotechnology and information and communications technology will only benefit foreign businesses, since their domestic firms lack the capacity to innovate in this field. Being unable to freely copy such inventions, they feel, may hinder local firms' efforts to enhance their own technological capacity and become more innovative in the future.
Developing states have long maintained that the WTO dispute settlement is power-based. Although legal decision are based in merits, the remedies are highly continents on country market power
♣ Lack infrastructure, resources, expertise
♣ Lack of treaty (TCE…)
♣ Need generic drugs etc.; public interests/domain (education, access to medicine…)
♣ Sometimes preferable not to strengthen IP in favour of development
How is actually WIPO funded IT?
WIPO 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.
Why do you encourage your client to use the PCT registration system at WIPO?
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
What is the IP ?
Explain All amendments to the TRIPS ?
What is the WIPO ?
§The World Intellectual Property Organization (WIPO) was established by a convention of 14 July 1967, which entered into force in 1970. It has been a specialized agency of the United Nations since 1974, and administers a number of international unions or treaties in the area of intellectual property, such as the Paris and Berne Conventions.
WIPO’s objectives are to promote intellectual property protection throughout the world through cooperation among states and, where appropriate, in collaboration with any other international organization. WIPO also aims to ensure administrative cooperation among the intellectual property unions created by the Paris and Berne Conventions and sub-treaties concluded by the members of the Paris Union.
The administration of the unions created under the various conventions is centralized through WIPO’s secretariat, the “International Bureau”. The International Bureau also maintains international registration services in the field of patents, trademarks, industrial designs and appellations of origin. WIPO also undertakes development cooperation for developing countries through advice, training and furnishing of documents.
An agreement on cooperation between WIPO and the WTO came into force on 1 January 1996. The agreement provides cooperation in three main areas:
notification of, access to and translation of national laws and regulations
implementation of procedures for the protection of national emblems
and technical cooperation.
Does the complain Tabaco packing law interfere with trademark rights
Does the agreement allow compulsory licensing of patents?
Article 31 allows compulsory licensing and government use of a patent without the authorization of its owner.
But this can only be done under a number of conditions aimed at protecting the legitimate interests of the right holder. For example: (unless there is an emergency) the person or company applying for a licence must have first attempted, unsuccessfully, to obtain a voluntary licence from the right holder on reasonable commercial terms, and adequate remuneration must be paid to the right holder.
The authorization granted under compulsory licensing must also meet certain requirements. In particular, it cannot be exclusive, and it must as a general rule be granted predominantly to supply the domestic market.
(Compulsory licensing = authorization, given by a government,
to use a patented invention without the consent of the patent-holder)
> More frequently-asked questions on compulsory licensing of pharmaceuticals and TRIPS