TRIPS AGREEMENTTRIPS AGREEMENT

Prof. Gan YingProf. Gan Ying

19-Feb-200819-Feb-2008

I INTRODUCTIONI INTRODUCTION

• 1) Linkage between IP & trade:

• market access for legitimately traded goods

• Notification v. registration system for IP rights transfer agreement

2) elements leading to formation of TRIPS:

• Conventions administered by WIPO

• higher normative standard

• Effective enforcement mechanism

• Dispute settlement mechanism

• US as the moving force.

Overview of TRIPSOverview of TRIPS

• 1) TRIPS as part of a package deal of Uruguay Round.

• 2) TRIPS is crucial for the followings:-- establishes substantive minimum standard for

national IP laws; incorporates IP conventions but goes further.

-- minimum int’l criteria for national enforcement of IP rights through civil, criminal, and administrative proceedings;

-- dispute settlement system-- common procedural requirements concerning the

administration and maintenance of IP rights

• 3) institutional arrangements:• Council for TRIPS: -- monitors and reviews Members’ legislation and

ruling.-- reviews new developments and recommends

modification of TRIPS.-- cooperates with WIPO (1995 Cooperation

Agreement between WTO and WIPO)(notification, translation of national laws, technical

assistance, etc.)

4) Provisions for developing countries4) Provisions for developing countries

• Grace periods for full compliance have largely expired,

• (least-developed: grace period for pharmaceuticals extended to 2016/1/1 by DOHA Ministerial Conference)

• Developed countries shall --• provide incentives for transfer of tech to least-developed.• Technical assistance and financial help for developing

countries in preparing laws and regulations.

II Minimum substantive standardsII Minimum substantive standards

• 1, Copyright and related rights• 2, Patents• 3, Trademarks and service marks• 4, Geographical indications• 5, Undisclosed information or trade

secrets• 6, Industrial designs• 7, Layout designs of integrated circuits

CopyrightCopyright

• - protects literary, musical, graphic or other artistic form in which the author expresses intellectual concepts.

• - originality• - extend to any tangible form: • - neighboring rights (related rights): extend privileges of

copyright to creative works that were not by personal authors. (e.g. radio/TV broadcast)

• - moral rights: right of author to associate the work with his name, no distortion or falsification of his work, right to decide when and how to divulge his work to the public.

• -notice or registration as a prerequisite for protection?

• Literary works, dramas, pictorial, graphic, sculptural works, motion pictures, audiovisual works, musical works, architectural works,

• Computer programs.

• Not extend to ideas or facts.

Protection Standard of TRIPS for CopyrightProtection Standard of TRIPS for Copyright

• Full recognition of Berne Convention• Computer program copyrightable as literary

works• Minimum 50y from making or publication.• Limited exception for certain special cases which

do not conflict with a normal exploitation and do not unreasonably prejudice the legitimate interests of the right holder.(art.13)

Narrowly interpreted by DSB: US- section 110(5) Copyright Act case-allow playing music by small

establishments and restaurants)

Patent Patent

• -- protect inventions of all kinds.• -- categorized as machines, processes,

compositions of matter, articles of manufacture, or new uses of any of these.

• -- grant inventor a monopoly on commercial exploitation for limited period.

• -- novel, useful, etc. • -- obtained by issuance of patent. (file

application)• -- territorial

• Paris Convention: facilitate application process by NT/non-discrimination principles, an inventor obtains the benefit of the filing date in his home country provided he files in another convention country within 1y of the home-country filing date.

• Patent Cooperation Treaty– inventor can file in multiple countries by one application and obtain the benefit of his home country’s filing date.

• European Patent Convention: one filing for all EU countries.

Protection Standard of TRIPS for PatentProtection Standard of TRIPS for Patent

• Patent Protection for all inventions (products/processes) in all fields of tech.

• >20y from filing the application

• Patent rights available without discrimination as to the place of invention, the field of tech. and whether the products are imported or produced locally.(art.27.1)

1) Patent excludability1) Patent excludability

• grounds for excluding inventions from patentability (Art.27.2-3 )

• Exclusion must be necessary to prevent commercial exploitation of the invention that is harmful with territory.

• Waiting for further interpretation.

• Limited Exceptions : Art.30.

• Compulsory licensing:

-- antitrust law

-- public interest injured due to abuse of patent monopoly

-- licensor (developed) v. licensee (developing)

-- requirements to be observed when ordering compulsory licensing: art. 31

TrademarkTrademark

• --protect any word, name, symbol, logo, or device used to identify, distinguish, or indicate the source of goods or services.

• -- registration, first-come, first served basis.

• -- no requirement of prior use of mark (US? Lanham Act.)

• -- territorial

Protection Standard of TRIPS for TrademarkProtection Standard of TRIPS for Trademark

• Trademarks registration may dependant on use.

• Protection period: initial registration > 7y, renewable indefinitely, may be cancelled only after 3y uninterrupted non-use.

• Assignable

• No compulsory licensing of trademarks

Geographical indicationsGeographical indications

• Unfair competition? • Descriptive, not capable of trademark

protection? – US Lanham Act amended to outlaw the false designation of origin.

Protection Standard of TRIPS for GIProtection Standard of TRIPS for GI

• Must create legal system of protection for GI where the reputation or quality of a good is essentially attributable to its geographical origin.

• Members may prohibit use of GI. in a way to cause deception and provide relief (injunction/refuse registration/invalidate registration.)

Undisclosed information or trade secretsUndisclosed information or trade secrets

• secret (not in general circulation)+ commercial value• industrial Know-how:• know-how in marketing and distribution (eg. list of consumers) • Law against unfair competition/ trade secret law. --Protect against b

usiness espionage and disclosure of information by former employees.

• Protection Standard of TRIPS for Trade Secret

art. 39: In the course of ensuring effective protection against unfair competition as provided in Article 10bis of the Paris Convention (1967), Members shall protect undisclosed information …

Industrial DesignsIndustrial Designs

• -- protect applied art that has industrial application.

• WIPO• Hague Agreement on the Int’l Deposit of Industrial Designs• Locarno Agreement Establishing an Int’l Classification for Industrial Desi

gn

Protection Standard of TRIPS for Protection Standard of TRIPS for Industrial DesignsIndustrial Designs

• Design protection extended to aesthetic aspects not dictated by technical or functional considerations

• > 10y

• Owner have right to prevent others from making/selling/importing products bearing or embodying that design.

Layout designs of integrated circuitsLayout designs of integrated circuits Topographics of semi-conductor chips Topographics of semi-conductor chips

TRIPS protection for topographiesTRIPS protection for topographies

• incorporated the Treaty on Intellectual Property in Respect of Integrated Circuits

• unlawful acts : importing, selling, or otherwise distributing for commercial purposes a protected layout-design without the authorization of the right holder.

• > 10y from filing of application for registration or from first commercial exploitation anywhere in the world

III Enforcement of IP rightsIII Enforcement of IP rights

• 1, General principles

• Must enact laws and regulations

• Process of enforcement –fair/equitable and not unnecessarily complex and expensive.

• Judicial review

• 2, Civil and administrative procedures and remedies

• 3, Criminal procedures

• 4, Border (customs) measures

• 5, Provisional measures

• 6, Dispute settlement(DUNCAN--p.89)• (1) Ensure effective implementation• (2) Relatively non-confrontational mode v. unilateral trad

e sanctions • (3) Global corporate actors:• No locus standi in DSB(exclude private right of action)• Help in Formulating TRIPS, Monitoring national impleme

ntation/enforcement measures; identifying noncompliance countries/ providing evidence/ provide technical expertise

• fragmentation in consensus among themselves:

• 7， TRIPS Council: scrutiny and surveillance.

IV Critical thinking IV Critical thinking

• 1, Benefits & costs of higher standards for developing countries?

• 1) Traditional view: cost>>benefit

• 2) World bank: benefit >> cost

• 3) Better accept the reality and solve problem.

2, Reverse piracy?2, Reverse piracy?

• 1) Protection of traditional knowledge and culture.

• patenting knowledge widely shared by indigenous peoples (no explicit protection in TRIPS).

• 2) Key issues:

• manner and scope of protection• Separate category or not?• Who receive payment?—a group or an

unknown/forgotten persons?

• Knowledge of herb medicine

• Stories, songs, music, dance, carvings, designs, pottery, sculpture, woodwork, mosaics, costumes, metal ware………

• Folklore: a group-oriented and tradition-based creation of groups of individuals reflecting the expectation of the community as an adequate expression of its cultural and social identity, its standards and values as transmitted orally, by imitation or by other means. -- Nigeria

3, Public Health?3, Public Health?

• 2001 DOHA Ministerial Conference – the Declaration on the TRIPS Agreement and Public Health

Requires the amendment of TRIPS, esp. compulsory licensing & parallel imports

• 1) Compulsory licensing TRIPS Art. 31: (conditions) Conditions more easier for public health purpose.• 2) Parallel imports DOHA declaration: parallel importing of

pharmaceuticals is permitted.

• Importing a legally produced product from a low-priced distributor (lowest world price) instead of buying directly from the manufacturer/ authorized distributor.

4, Threaten food production in developing?4, Threaten food production in developing?

• Int’l convention for the protection of new varieties of plants (UPOV): create a system of granting breeder’s rights under domestic laws.

• TRIPS: either create a system or through patentability. Plant breeder’s rights to be given world wide IP rights protection.

• TRIPS Art. 8.1, 27.2: exclude patentability for human life and health, etc.

V Future of TRIPS:V Future of TRIPS:

• 1, Fragmentation:

• Gov.(e.g. USTR) v. private actors

• Developed v. developing,• Developed v. developed. (cases: EC—US trade act sec. 3

01-10, US copyright act, US—Canada patent act. )

• New problems with the entry of new actors • ---industries, NGO, new WTO members…• —indigenous peoples rights/ biodiversity/generic drug man

ufacturers/ no adequate incentives for corps./ promote tech transfer to developing. etc.

2, proposals for negotiation2, proposals for negotiation

• US: need biotech patents/ should not exclude plants and animals patentability…

• EC-support geographical indications/ multinational register for wines/copyright relating to electronic commerce./ harmonization around first-to-file system.

• JAP-largely follow EC

• Developing: support geographical indications for indigenous stuffs/ should exclude plants and animals patentability…

VI China’s IPR RegimeVI China’s IPR Regime

• Legislations are generally complied with TRIPS

• Review of legislation by council of TRIPS

• Illustrative list of important IPR legislations

Enforcement of IPR in ChinaEnforcement of IPR in China

• Before taking action

Investigation• Market Investigation / Infringement investigation / Infringement

analysis

Cease and Desist Letters

• Demand infringers to stop production and sale of all infringing goods immediately, and undertake not to infringe in the future

• Seek liquidated damages and compensation• Allow time for infringers to comply• May pursue a settlement or cooperative arrangement if a response

is received • If not, then pursue further action

Enforcement ApproachesEnforcement Approaches

• Administrative

• Civil

• Criminal

Administrative Enforcement Administrative Enforcement

• AIC – Administration of Industry and Commerce

• Right holder submits written request together with evidence

• SAIC go to premises of the infringers and carry out on-site inspection and give preliminary opinion

• If infringer is non-cooperative –order injunction, confiscate and destroy infringing goods and manufacturing tools

• Fine may be imposed• No power to award damages, but can mediate amount of

compensation

Administrative Enforcement Administrative Enforcement

• SIPO–State Intellectual Property Office

• For patent infringements• Limited resources –less power than AIC• If infringement is proved, may order injunction,

confiscate illegal earnings, impose fines• May mediate amount of compensation upon

request of parties• If mediation fails, right holder may pursue civil

action

Administrative Enforcement Administrative Enforcement

• GAC – General Administration of Customs

• Generally for copyrights and trademarks infringment.

• Right holder may apply for border action• Must file recordation of copyrights and trademar

ks to the GAC• Customs officers will proactively monitor exports

of infringing products in an effort to prevent their export

Civil ActionCivil Action

• Initiated at the court of the place where the infringer is located

• Evidence must be produced by the right holder

• Remedies: preliminary and permanent injunctions, and damages

• Trademark: US-based Pfizer Inc. case (2006-2007)the First Intermediate People's Court of Beijing (FIPC) ruled that Pfizer's trademark for Viagra, is valid and ord

ered two Chinese companies to stop producing counterfeit pills. But the same Beijing court ruled in January 2007 that several Chinese drugmakers' use of Weige, does not constitute trademark infringement. Pfizer is currently appealing the case.

• Copyrights: Baidu “deep linking” caseSued by Music Culture Media Co., an affiliate of UK-based EMI Group plc, in September 2005 and wa

s ordered to pay ¥68,000 ($8,781) in damages.

• （ Copyrights: Sohu case.FIPC in late December 2006 fined Sohu.com, Inc., about $140,000 for allowing

its users to download US movies illegally. ）

• Patent: Pfizer’s Viagra case.a June 2006 court ruling overturned the PRC Patent Reexamination Board's de

cision and upheld Pfizer's patent on Viagra

China's 2006 IPR Review

Criminal Action Criminal Action

• Administrative authorities may transfer the case to the Public Security Bureau (PSB) for criminal investigation if:

• the case is of serious circumstances e.g. involving amount of RMB100,000 for a case of infringement of trademark;

for import/export illegal goods, to initiate criminal proceedings, the value of seized goods must reach at least ¥50,000 ($6,300) for individuals and

¥150,000 ($19,000) for corporations ); or

• the infringer has repeatedly committed offences

Problems in enforcing IPRProblems in enforcing IPR

• Limited government resources

• Local protectionism

• Ineffective punishment

• Inconsistent application of legal standards

• China’s Action Plan on IPR Protection 2007

• Measures to build IPR protection institutions and improving coordination between existing bodies

• Public education to raise awareness of IPR protection

• Measures to enhance transparency of judicial protection

• Plans to enhance international cooperation and exchange