Transcript Slide 1

ARE THERE NEVER-ENDING CHALLENGES
IN ENFORCEMENT? IS IT TIME FOR A
REGIME CHANGE?
Peter N. Fowler
Senior Counsel for Enforcement
Office of Policy and External Affairs
USPTO
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Enforcement as Regime Component
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Ideal IPR regimes include not only strong
and updated protection for all forms of IP
but also efficient and effective enforcement
mechanisms.
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Components of an effective enforcement
regime must include:
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Civil litigation and injunctive relief;
Criminal enforcement; and
Border measures; and
may include administrative enforcement mechanisms.
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TRIPs is the Common Denominator
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Though Berne and Paris make reference to
enforcement, TRIPs created modern foundation of
enforcement obligations for all WTO members.
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Common language about enforcement has been
established.
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Common acknowledgment that enforcement is a
vital component of an IPR regime.
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Common acceptance that IP enforcement matters
to societies and economies.
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Emerging International Standards
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Demonstrated by widening body of treaty
law, including:
• WTO TRIPs Agreement
• WIPO Internet Treaties
• Free Trade Agreements
• World Customs Organization Model Law
• Council of Europe Cybercrime Convention
• EU Directive on Enforcement
• Anti-Counterfeiting Trade Agreement (ACTA)
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Integrated Enforcement Regimes
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General agreement that enforcement aspects of a
legal system must be integrated to be effective.
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Emphasis on efficiency, information-sharing,
transparency, and coordination among all players
and stakeholders.
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Acceptance that effective enforcement environment
contributes to economic growth, investment, job
creation, and innovation.
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Combating piracy and counterfeiting benefits
everyone – except the pirates and counterfeiters.
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Need for Never-Ending Enforcement
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Top-down political will and leadership to send
consistent message.
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Sustained enforcement activities, not sporadic raids
or one-off photo op events.
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Strategic and coordinated public awareness and
education activities to change consumer attitudes
and create enforcement-friendly environment.
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Transnational cooperation and information-sharing.
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Institutional framework and specialized focus on IP.
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ACTA: Background and Parties
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ACTA is an executive trade agreement on IP enforcement
between: Australia, Canada, EU and its member states,
Japan, Korea, Mexico, Morocco, New Zealand, Singapore,
Switzerland, and the U.S., but open to others.
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Originated with Japanese proposal in 2004 to confront
rampant trademark counterfeiting and copyright piracy with
new international agreement.
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Formal negotiations began in 2008; concluded in late 2010,
with final text released in December 2010.
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Parties are in respective processes of approval; expected to
come into force in late 2011.
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The Purpose of ACTA
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Leadership statement by like-minded countries as
to what should be done to improve and enhance
enforcement of IP in a global marketplace and on
the Internet.
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Compendium of modern and effective practices in
border, civil and criminal enforcement.
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Party may expand and implement more extensive
enforcement of IP than ACTA minimum standards.
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Parties welcome additional adherents.
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The Purpose of ACTA
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Requires strengthening border enforcement, and
civil and criminal enforcement systems to deal with
commercial-scale infringement.
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Specifies procedures to be available in civil and
criminal proceedings, imposition of deterrent
penalties for IP crimes, expands access to relevant
documents and information relating to seized goods
at several stages of enforcement process.
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Scope is all IP, except for border measures and
criminal enforcement, which are limited to
copyright piracy and trademark counterfeiting.
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New Elements in ACTA
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Incorporates substantive provisions of WIP Internet
Treaties on circumvention of technological
protection measures (TPMs) and rights
management information (RMI);
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Requires criminal penlties for trafficking in
counterfeit and illicit labels and packaging;
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Requires that aiding and abetting be criminalized;
and
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Recommends explicit criminal penalties for
unauthorized camcording of movies in cinemas.
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Clarifies Some Definitions
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In-transit goods: Builds on TRIPs usage by
clarifying that “in-transit goods” refers to goods
under customs control, including customs transit or
transshipment.
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Commercial Scale: “include those carried out as
commercial activities for direct or indirect economic
or commercial advantage.”
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Persons: Requires that natural or legal persons,
corporations, businesses, and partnerships be
included in any definition of “person”.
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ACTA Going Forward
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Does not alter current U.S law and practice;
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Will promote adoption of effective practices and
standards in other countries;
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Commitment to provide technical assistance and
capacity-building and promote adoption of
effective IP enforcement practices in trade
agreements with non-ACTA partners;
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Will be basis of global standards.
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Other Initiatives
Trans-Pacific Partnership Agreement (TPP):
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On-going negotiations to create an Asia-Pacific FTA
among: Australia, Brunei Darussalam, Chile, Malaysia,
Peru, New Zealand, Singapore, U.S., and Vietnam;
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Comprehensive IPR chapter on protection and
enforcement;
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Provide certainty for IP rights holders for protection and
enforcement of IPRs; and
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Facilitate the enforcement of IPRs to eliminate trade in
infringing goods.
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U.S. Enforcement Objectives for TPP
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Create integrated enforcement regime to tackle IP theft
and trade in infringing goods in the 21st Century
landscape;
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Create smarter, more effective, targeted, and sustained
enforcement mechanisms to deal with digital piracy and
organized criminal transnational actors;
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Create greater transparency and cooperation in all aspects
of IP enforcement system; and
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Provide technical assistance and capacity-building to
encourage efficient and deterrent enforcement systems.
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Conclusion
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No one today seriously disputes the role of enforcement in
an overall IP regime.
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Governments now generally accept that enforcement
efforts contribute to economic growth and stability, and
benefits society and culture.
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Challenge for governments is to demonstrate political will
to build integrated enforcement system with laws, tools,
and mechanisms that are efficient, effective, and
coordinated, and to provide for sustained response to the
never-ending challenges of IP crime.
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THANK YOU
Peter N. Fowler
Senior Counsel for Enforcement
Office of Policy and External Affairs
USPTO
email: [email protected]
web: www.uspto.gov
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