Transcript Folie 1

CEIPI Master Programme
IP Law and Management
International
Intellectual Property Law
- Principles and Practice Henning Große Ruse - Khan
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Strasbourg, 28 May 2009
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
1
18.07.2015
Seminar Outline
 Introduction: Rationale, History and
Actors in International IP Law
 The Main Principles of International IP
Law
 The Wider International Law Context
 The Future of International IP Law
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
2
18.07.2015
Introduction: Rationale, History
and Actors in International IP Law
Why International Treaties on IP
protection?
 While IP protection (still) results from rights
granted by virtue of national laws, Int. IP law
has a history of over 120 years…
 Discrepancy between national protection
regimes and
cross-border, international use of
protected material
equally international exploitation of goods /
services containing IP protected material
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
3
18.07.2015
Introduction: Rationale, History
and Actors in International IP Law
Options to Address Global Use
 Bundle of distinct national laws (unharmonised and potentially discriminatory)
 Bi-/Multilateral Agreements on mutual
recognition, non-discrimination in the
treatment of foreign right holders
 Int. Agreements on common (minimum)
standards to be implemented in nat. laws
 Int./Regional Systems of IP protection
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
4
18.07.2015
Introduction: Rationale, History
and Actors in International IP Law
Obstacles to Increased Harmonisation
 Traditionally, IP protection has been used as a
industrial policy device to promote (domestic)
innovation, production and technological
progress
 As IP protection increases, so does its impact
on public interests outside the core of IP
regulation (public health, food security,
environment & climate change, access to
information and human rights)
diverging national interests prevent consensus
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
5
18.07.2015
Introduction: Rationale, History
and Actors in International IP Law
A Brief History of Int. IP Law
 increasing use of bilateral copyright
treaties in the 19th century in Europe
Brussels Congress on Literary and
Artistic Property (1858)
 Vienna Congress; Int. Exposition (1873)
 Paris Int. Literary Congress, ALAI (1878)
 Paris Conferences of 1878, 1880, 1883
 Berne ALAI Conference 1883; Diplomatic
Conferences 1884, 1885, 1886
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
6
18.07.2015
Introduction: Rationale, History
and Actors in International IP Law
Paris Convention for the Protection
of Industrial Property (1883)
 Rome, 1886
 Madrid, 1890-1891
 Brussels, 1897
 Washington, 1911
 The Hague, 1925
 London, 1934
 Lisbon, 1958
 Stockholm, 1967
 Geneva, 1980 vs. WTO/TRIPS
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
7
18.07.2015
Introduction: Rationale, History
and Actors in International IP Law
Berne Convention for the Protection
of Literary and Artistic Works, 1886
 Paris, 1896
 Berlin, 1908
 Rome, 1928
 Brussels, 1948
 Stockholm, 1967
 Paris, 1971
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
8
18.07.2015
Introduction: Rationale, History
and Actors in International IP Law
Further International Agreements
 Patent Cooperation Treaty (PCT), 1970
 International Convention for the Protection
of New Varieties of Plants (UPOV), 1961
 Madrid Agreement Concerning the Int.
Registration of Marks (1891) - Trademark
Law Treaty (TLT), 1994
 Universal Copyright Convention (UCC),
1952 - WIPO Copyright Treaty (WCT), 1996
 ‘Rome’ Convention (1961) – WIPO Performers and Phonograms Treaty (WPPT), 1996
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
9
18.07.2015
Introduction: Rationale, History
and Actors in International IP Law
WTO TRIPS Agreement, 1994
 Political, economic and technological context
 Substantive Provisions on copyright,
trademarks, industrial designs, patents,
semiconductors, trade secrets
 Enforcement of IP: civil remedies,
provisional measures, border measures,
criminal sanctions
 access to WTO dispute settlement
 Doha Declaration, proposed TRIPS amendment and ongoing Doha Round negotiations
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
10
18.07.2015
Introduction: Rationale, History
and Actors in International IP Law
Main Actors in Int. IP Law
 Int. Bureau to administer PC, BC (BIRPI), later WIPO as specialised UN Agency (1967)
 UNESCO administering UCC
 UNCTAD: role of IP in tech. transfer
 WTO: TRIPS Council administering TRIPS
 WHO: Commission on Intellectual Property
Innovation and Health (CIPIH)
 World Customs Organisation: SECURE
 G8 and other forums: ACTA and other FTAs?
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
11
18.07.2015
The Main Principles of
International IP Law
Territoriality
 National IP rights are limited to the territory
of the granting state
 ‘Bundle of national rights‘ – potentially
differing on subject matter; conditions for,
scope of & limitations to IP protection
 Expressions of territoriality:
 Principle of independence of patents, Art.
4bis (1) PC
 Lex loci protectionis as applicable IP law,
see Art.5 (2) BC
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
12
18.07.2015
The Main Principles of
International IP Law
Extensions of Territoriality?
 Trends towards ‘extraterritorial‘ application
of national IP laws to conduct abroad with
minimal contacts to the national territory:
 Goods produced abroad using a process
patented domestically are considered
infringing when imported
 Domestic © liability of foreign ISPs for
hosting infringing content abroad?
 Compulsory license to export life-saving
drugs to countries lacking manufacturing
capacities under the ‘para.6 mechanism‘?
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
13
18.07.2015
The Main Principles of
International IP Law
The EC - Border Measures Case
 Policing Patents Worldwide? Is the EC extending patent protection beyond its territory?
 In groups, discuss case No.1 from the
handout, focussing on the following:
 Is there, in your opinion, a sufficient
territorial link to the EC?
 In a wider context, what are the implications
for global trade and public health?
 Is there a prima facie case for infringement
of obligations under TRIPS or the PC?
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
14
18.07.2015
The Main Principles of
International IP Law
Relevant EC and Treaty Law
 “This Regulation sets out the conditions for action by the
customs authorities when goods are suspected of infringing an
intellectual property right in the following situations: (b) when
they are found during checks on goods entering or leaving the
Community customs territory (…), in the process of being reexported (…) or placed in a free zone or free warehouse (…)”,
Art.1:1 EC BMR (1383/2003)
 IP enforcement procedures “shall be applied in such a manner
as to avoid the creation of barriers to legitimate trade”, Art.41:1
TRIPS
 “Any right holder initiating the procedures under Article 51
shall be required to provide adequate evidence to satisfy the
competent authorities that, under the laws of the country of
importation, there is prima facie an infringement of the right
holder’s intellectual property right” (…), Art.52 1st sentence
TRIPS
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
15
18.07.2015
The Main Principles of
International IP Law
Relevant EC and Treaty Law
 In any country of the Union the following shall not be
considered as infringements of the rights of a patentee:
 1. the use on board vessels of other countries of the
Union of devices forming the subject of his patent in the
body of the vessel, in the machinery, tackle, gear and
other accessories, when such vessels temporarily or
accidentally enter the waters of the said country,
provided that such devices are used there exclusively
for the needs of the vessel;
 2. the use of devices forming the subject of the patent in
the construction or operation of aircraft or land vehicles
of other countries of the Union, or of accessories of such
aircraft or land vehicles, when those aircraft or land
vehicles temporarily or accidentally enter the said
country. (Art.5ter PC)
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
16
18.07.2015
The Main Principles of
International IP Law
Reciprocity and National Treatment
 Traditionally, national IP laws were discriminatory as to the protection of foreigners
 Securing adequate protection abroad as a
key rationale for int. IP law
 Reciprocity: Protecting foreign rightholders
to the extent that one’s own rightholders are
protected in the foreign country (Art.7:8 BC)
 National Treatment: treating foreigners in
the same way as nationals in the protection
of IP (Artt.3 TRIPS, 5:1 BC, 2 PC)
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
17
18.07.2015
The Main Principles of
International IP Law
Reciprocity Incentives under the EC
Database Directive
 Is the reciprocity requirement for the
extension of sui generis database protection
to foreign database makers consistent with
international national treatment obligations?
 Consider this issue (case No.2) in groups,
focussing on
Artt.3 (incl. its fn.1), 10 TRIPS
Artt.2, 10bis PC; and
Artt.5:2, 2 BC
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
18
18.07.2015
The Main Principles of
International IP Law
Relevant EC and Treaty Law
 “The right provided for in Article 7 shall apply to database
whose makers or rightholders are nationals of a Member
State or who have their habitual residence in the territory of
the Community (…) Agreements extending the right provided
for in Article 7 to databases made in third countries and
falling outside the provisions of paragraphs 1 and 2 shall be
concluded by the Council acting on a proposal from the
Commission.” (Art.11:1, 3 of the Db Dir)
 “Whereas the right to prevent unauthorized extraction and/or
re-utilization in respect of a database should apply to
databases whose makers are nationals or habitual residents
of third countries or to those produced by legal persons not
established in a Member State, within the meaning of the
Treaty, only if such third countries offer comparable
protection to databases produced by nationals of a Member
State or persons who have their habitual residence in the
territory of the Community.” (Recital 56 of the Db Dir)
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
19
18.07.2015
The Main Principles of
International IP Law
Relevant EC and Treaty Law
 “Each Member shall accord to the nationals of other
Members treatment no less favourable than that it accords
to its own nationals with regard to the protection[1] of
intellectual property, subject to the exceptions already
provided in, respectively, the Paris Convention (1967), the
Berne Convention (1971), (…).” (Art.3:1 TRIPS)
 „[1] For the purposes of Articles 3 and 4, "protection" shall
include matters affecting the availability, acquisition, scope,
maintenance and enforcement of intellectual property rights
as well as those matters affecting the use of intellectual
property rights specifically addressed in this Agreement.”
(footnote 1 to Art.3:1 TRIPS)
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
20
18.07.2015
The Main Principles of
International IP Law
Relevant EC and Treaty Law
 “Compilations of data or other material, whether in machine
readable or other form, which by reason of the selection or
arrangement of their contents constitute intellectual creations
shall be protected as such. Such protection, which shall not
extend to the data or material itself, shall be without prejudice
to any copyright subsisting in the data or material itself.”
(Art.10:2 TRIPS)
 “Authors shall enjoy, in respect of works for which they are
protected under this Convention, in countries of the Union
other than the country of origin, the rights which their
respective laws do now or may hereafter grant to their
nationals, as well as the rights specially granted by this
Convention.” Art.5:1 BC
 “Collections of literary or artistic works such as encyclopaedias and anthologies which, by reason of the selection and
arrangement of their contents, constitute intellectual creations
shall be protected as such” (…), Art.2:5 BC
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
21
18.07.2015
The Main Principles of
International IP Law
Relevant EC and Treaty Law
 “Nationals of any country of the Union shall, as regards the
protection of industrial property, enjoy in all the other countries of the
Union the advantages that their respective laws now grant, or may
hereafter grant, to nationals; all without prejudice to the rights
specially provided for by this Convention.” Art.2 PC
 “The protection of industrial property has as its object patents, utility
models, industrial designs, trademarks, service marks, trade names,
indications of source or appellations of origin, and the repression of
unfair competition. Industrial property shall be understood in the
broadest sense and shall apply not only to industry and commerce
proper, but likewise to agricultural and extractive industries and to all
manufactured or natural products.” Art.1:2&1:3 PC
 “The countries of the Union are bound to assure to nationals of such
countries effective protection against unfair competition. Any act of
competition contrary to honest practices in industrial or commercial
matters constitutes an act of unfair competition”, Art.10bis PC
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
22
18.07.2015
The Main Principles of
International IP Law
Most Favoured Nation Treatment
 origins in (some) bilateral © treaties of the
19th century, as well as GATT (1947)
 Most favoured nation treatment (MFN)
ensures that any advantage or other
preferential IP protection offered to
rightholders from one country must be
unconditionally extended to right holders
from other countries
 Within the operation of national treatment
(NT), limited practical scope for MFN?
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
23
18.07.2015
The Main Principles of
International IP Law
MFN and TRIPS-plus FTAs
 The WTO rules on trade in goods offer an
exception to MFN which provides for an
economic incentive for preferential trade
agreements (PTAs) – which often include
TRIPS-plus obligations as well…
 Examine the application of the TRIPS MFN
obligation with respect to these TRIPS-plus
obligations in PTAs!
 Does any MFN exception apply?
 What is the result for the global standards of
IP protection?
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
24
18.07.2015
The Main Principles of
International IP Law
Relevant Treaty Law
 With 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. Exempted from this obligation are
any advantage, favour, privilege or immunity accorded by a Member:
 (a) deriving from international agreements on judicial assistance or law
enforcement of a general nature and not particularly confined to the
protection of intellectual property;
 (b) granted in accordance with the provisions of the Berne Convention
(1971) or the Rome Convention authorizing that the treatment accorded
be a function not of national treatment but of the treatment accorded in
another country;
 (c) in respect of the rights of performers, producers of phonograms and
broadcasting organizations not provided under this Agreement;
 (d) deriving from international agreements related to the protection of
intellectual property which entered into force prior to the entry into force
of the WTO Agreement, provided that such agreements are notified to
the Council for TRIPS and do not constitute an arbitrary or unjustifiable
discrimination against nationals of other Members. (Art.4 TRIPS)
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
25
18.07.2015
The Main Principles of
International IP Law
Minimum Standards and the ‘ConventionPlus’ Principle
 Regardless of NT obligations, differences in
the level of IP protection remain and cause
obstacles to the international trade in IP
protected goods and services
 Int. (treaty) obligations as to introduce
certain ‘minimum standards’ of IP protection
serve an int. harmonisation function
 See Art.5:1 BC: “Authors shall enjoy (…) the
rights specially granted by this Convention.”
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
26
18.07.2015
The Main Principles of
International IP Law
Continuously Increasing Minimum Standards?
 What are so called ‘Minimum Standards’ in
international IP treaties? Identify some in the revised
Berne Convention, TRIPS or the Paris Convention!
 Which general provisions in these Agreements
indicate that countries can provide additional, more
extensive protection in their national laws?
 Why do you think does TRIPS incorporate relative
detailed provisions on substantive patent and
trademark protection, while on first sight ‘neglecting’
copyright and related rights (where only specific
issues are addressed)?
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
27
18.07.2015
The Main Principles of
International IP Law
Some Minimum Standards in the PC
 Right of priority, Art.4
 Right to be named as inventor, Art.4ter
 Protection of well-known marks, Art.6bis
 Protection against unfair competition,
Art.10bis
 Seizure (upon importation) of TM-, trade
name infringing goods and goods with false
indications of source & origin, Artt.9, 10
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
28
18.07.2015
The Main Principles of
International IP Law
Some Minimum Standards in the BC
 Moral rights to claim authorship and to
object any prejudicial modification of the
work (Art.6bis BC)
 Reproduction right (Art.9 BC)
 Translation right (Art.8 BC)
 Public performance right (Art.11 BC)
 Public recitation right (Art.11ter BC)
 Broadcasting right (Art.11bis BC)
 Adaptation right (Art.12 BC)
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
29
18.07.2015
The Main Principles of
International IP Law
Some Minimum Standards in TRIPS
 © protection for software, Art.10:1
 substantive TM protection, Artt.15-21
 GI protection, esp. for wines and
spirits, Artt.22-23
 comprehensive patent standards,
Artt.27-34
 Limits on exceptions & limitations,
Artt.13, 17, 30, 26:2
 IP Enforcement, Artt.41-61
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
30
18.07.2015
The Main Principles of
International IP Law
‘Convention-Plus’ Principle
 In respect of Parts II, III and IV of this
Agreement, Members shall comply with
Articles 1 through 12, and Article 19, of the Paris
Convention (1967). (Art.2:1 TRIPS)
 Members shall comply with Articles 1 through
21 of the Berne Convention (1971) and the
Appendix thereto. However, Members shall not
have rights or obligations under this Agreement
in respect of the rights conferred under Article
6bis of that Convention or of the rights derived
therefrom. (Art.9:1 TRIPS)
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
31
18.07.2015
The Main Principles of
International IP Law
Minimum Standards only?
 It is understood that the countries of the Union reserve the
right to make separately between themselves special
agreements for the protection of industrial property, in so far
as these agreements do not contravene the provisions of this
Convention. (Art.19 PC)
 The Governments of the countries of the Union reserve the
right to enter into special agreements among themselves, in
so far as such agreements grant to authors more extensive
rights than those granted by the Convention, or contain other
provisions not contrary to this Convention. (Art.20 BC)
 Members may, but shall not be obliged to, implement in their
law more extensive protection than is required by this
Agreement, provided that such protection does not
contravene the provisions of this Agreement. (Art.1:1 TRIPS)
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
32
18.07.2015
The Main Principles of
International IP Law
Ratio & Types of Exceptions and Limitations
 The protection of IPRs not only contains safeguards to receive
a return of investment for the right holders but aims at a
“balance between the rights of authors and the larger
public interest” (see Preamble WCT; compare also Art.7
TRIPS)
 Types of exceptions and limitations to IP protection:
 The concept of ‘negative rights’
 Statutory exemptions from protected subject matter (see
Art.27:2, 3 TRIPS)
 Statutory exceptions from exclusive rights allowing free
use (see Art.10:1 BC)
 Statutory licenses allowing use against fair remuneration
or compensation to the right holder (see Art.11bis:2 & Art.13
BC)
 Compulsory licenses (see Art.31 TRIPS)
 Exceptions and limitations for developing countries (Art.II
and III of the Appendix to the RBC; Art.31bis TRIPS
proposal)
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
33
18.07.2015
The Main Principles of
International IP Law
Exceptions and Limitations in Int IP
 Traditionally, int. IP law has seldom set specific or comprehensive limits on the ability of
countries to introduce exceptions and limitations (E&L) to IP protection in their national
laws
 As a matter of public policy (promotion of
public interests such as education, research,
public health; and special interest groups (e.g.
disabled) or specific activities (private use),
E&L were left to national discretion…
 This changed with the introduction of the three
step test in Artt.9:2 BC; 13, 17, 30, 26:2 TRIPS
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
34
18.07.2015
The Main Principles of
International IP Law
China – Denial of Copyright Case
Consider whether Art.4 (1) of the Chinese
Copyright Law can be justified under Art.17 of
the revised Berne Convention. What do you
think is the wider principle behind Art.17?
Do you think the legality of the Chinese
Measures must be judged differently if it did offer
copyright protection under its copyright laws, but
did prevent – under public (broadcasting, press
or other) laws – any distribution, reproduction or
making available to the public of copyrighted
works which consist of ‘unconstitutional or
immoral content’?
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
35
18.07.2015
The Main Principles of
International IP Law
Relevant Treaty and National Laws
 “Works the publication and/or dissemination of which
are prohibited by law shall not be protected by this Law.”
(Art.4 of the Chinese Copyright Act)
 “The provisions of this Convention cannot in any way
affect the right of the Government of each country of the
Union to permit, to control, or to prohibit, by legislation or
regulation, the circulation, presentation, or exhibition of
any work or production in regard to which the competent
authority may find it necessary to exercise that right.”
(Art.17 RBC)
 Compare also Art.4quarter PC: “The grant of a patent shall not
be refused and a patent shall not be invalidated on the ground
that the sale of the patented product or of a product obtained
by means of a patented process is subject to restrictions or
limitations resulting from the domestic law.”
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
36
18.07.2015
The Main Principles of
International IP Law
Relevant Treaty and National Laws
Compare also the following argument to address concerns
over the impact patent protection on public interests such as
health, ethical standards or environmental protection:
 “Whereas a patent for invention does not authorise the holder
to implement that invention, but merely entitles him to prohibit
third parties from exploiting it for industrial and commercial
purposes; whereas, consequently, substantive patent law
cannot serve to replace or render superfluous national,
European or international law which may impose restrictions or
prohibitions or which concerns the monitoring of research and
of the use or commercialisation of its results, notably from the
point of view of the requirements of public health, safety,
environmental protection, animal welfare, the preservation of
genetic diversity and compliance with certain ethical
standards”. (Recital 14 of Directive 98/44/EC on the legal
protection of biotechnological inventions)
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
37
18.07.2015
The Main Principles of
International IP Law
Compare Art.8:1 TRIPS, WTO Panel in EC - GIs
 Members may, in formulating or amending their laws and
regulations, adopt measures necessary to protect public health
and nutrition, and to promote the public interest in sectors of
vital importance to their socio-economic and technological
development, provided that such measures are consistent with
the provisions of this Agreement. (Art.8:1 TRIPS)
 “These principles [of Art.8:1 TRIPS] reflect the fact that the
TRIPS Agreement does not generally provide for the grant of
positive rights to exploit or use certain subject matter, but
rather provides for the grant of negative rights to prevent
certain acts. This fundamental feature of intellectual property
protection inherently grants Members freedom to pursue
legitimate public policy objectives since many measures to
attain those public policy objectives lie outside the scope of
intellectual property rights and do not require an exception
under the TRIPS Agreement” (EC – GIs, para.7.210)
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
38
18.07.2015
The Main Principles of
International IP Law
US – Copyright Case
 Consider the application of Art.13 TRIPS –
the so called ‘three step test’ – to the
exceptions the US law provides. Which do
you think is the most crucial limitation on a
countries’ ability to foresee exceptions to
copyright in its national law?
Scan through the TRIPS Agreement and
check how other IP rights are regulated as
regards exceptions which WTO Members
can introduce in their national laws.
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
39
18.07.2015
The Main Principles of
International IP Law
Relevant Treaty Laws
 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 (Art.13 TRIPS)
 Members may provide limited exceptions to the rights
conferred by a trademark, such as fair use of descriptive
terms, provided that such exceptions take account of the
legitimate interests of the owner of the trademark and of
third parties (Art.17 TRIPS)
 Members may provide limited exceptions to the exclusive
rights conferred by a patent, provided that such exceptions
do not unreasonably conflict with a normal exploitation of
the patent and do not unreasonably prejudice the
legitimate interests of the patent owner, taking account of
the legitimate interests of third parties (Art.30 TRIPS)
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
40
18.07.2015
The Main Principles of
International IP Law
Panel in US – Copyright
 Art.13 TRIPS extends also to the rights afforded by the
BC
 “certain special cases”: an exception or limitation must
have narrow scope as well as an exceptional or
distinctive objective
 “conflict with a normal exploitation of the work”:
covering any uses which enter into economic
competition with the ways that right holders normally
extract economic value from that exclusive right
 “prejudice to the legitimate interests” of right holders
reaches an unreasonable level if an exception or
limitation causes or has the potential to cause an
unreasonable loss of income to the copyright owner
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
41
18.07.2015
The Wider International Law
Context
Fragmentation and Specialised Regimes in IL
“[T]he absence of a central authority in international
relations, pared with the rapid normative development by
different and uncoordinated legal regimes can lead to
conflicts between rules or rule-systems and deviating
institutional practices.”[1] In a pluralistic environment of
specialised rules and rule-systems each focussing on
solving specific problems, “answers to legal questions
depend on whom you ask, what rule-system is your focus
on”[1]
[1] International Law Commission, Fragmentation of
International Law: Difficulties Arising From the
Diversification and Expansion of International Law (U.N.
Doc A/CN.4/L.682), 13 April 2006
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
42
18.07.2015
The Wider International Law
Context
(Horizontal and Vertical) Conflicts of Norms
 Patent protection for pharmaceuticals provides an
incentive to develop and produce new, innovative drugs
– but also a ‚monopoly‘ which prevents easy access to
medication…
 Do you think that there is any true conflict between
patent protection and the right to health?
 Can you think of other ‘conflicts’ between the exclusivity
IP protection entails and human rights?
 If there is a genuine conflict, how should it be resolved?
 Formal Conflict resolution tools addressed by the ILC
report: lex superior (see Art.103 UN Charter), lex
posterior (see Art.30 VCLT) and lex specialis
 Conflict resolution by reconciliation, integration?
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
43
18.07.2015
The Wider International Law
Context
Treaty Interpretation and Dispute Settlement
 In Int. IP law, diverging treaty interpretations &
implementations cause significant controversy
 Under PC and BC, theoretical option to bring a
dispute over the interpretation to the ICJ
 Countries in favour of a strong global IP system
purposely shifted to the GATT/trade forum
because of its perceived ‘teeth’ in enforcement of
treaty obligations
The new WTO/DSU adjudication system makes
questions of jurisdiction, treaty interpretation,
competence to decide and deference to national
autonomy ever more important
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
44
18.07.2015
The Wider International Law
Context
The Role of Treaty Objectives: Canada –
Patents vs. the Doha Declaration
 What is, in your opinion, the proper role of the treaty
objectives in the process of interpretation in the
Canada – Patents dispute?
 Are they already expressed in the individual
provisions (such as Art.30 TRIPS) or do they retain
significant influence in the interpretation of broad and
open treaty terms such as legitimacy, reasonableness
or normality?
 What influence, if any, do you think the Doha
Declaration on TRIPS and Public Health has on the
interpretation of TRIPS? Does it warrant another
outcome in the Canada – Patent case?
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
45
18.07.2015
The Wider International Law
Context
Relevant Treaty Law
Art.31 VCLT – General Rule of Interpretation
1. A treaty shall be interpreted in good faith in accordance with the
ordinary meaning to be given to the terms of the treaty in their context
and in the light of its object and purpose.
2. The context for the purpose of the interpretation of a treaty shall
comprise, in addition to the text, including its preamble and annexes:
(a) any agreement relating to the treaty which was made between all the
parties in connection with the conclusion of the treaty;
(b) any instrument which was made by one or more parties in connection
with the conclusion of the treaty and accepted by the other parties as
an instrument related to the treaty.
3. There shall be taken into account, together with the context:
(a) any subsequent agreement between the parties regarding the
interpretation of the treaty or the application of its provisions;
(b) any subsequent practice in the application of the treaty which
establishes the agreement of the parties regarding its interpretation;
(c) any relevant rules of international law applicable in the relations
between the parties.
4. A special meaning shall be given to a term if it is established that the
parties so intended.
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
46
18.07.2015
The Wider International Law
Context
Relevant Treaty Law
 “Members may provide limited exceptions to the
exclusive rights conferred by a patent, provided that
such exceptions do not unreasonably conflict with a
normal exploitation of the patent and do not
unreasonably prejudice the legitimate interests of the
patent owner, taking account of the legitimate interests
of third parties.” (Art.30 TRIPS)
 “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” (Art.7 TRIPS)
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
47
18.07.2015
The Wider International Law
Context
The Doha Declaration
4. We agree that the TRIPS Agreement does not and should not
prevent Members from taking measures to protect public
health. Accordingly, while reiterating our commitment to the
TRIPS Agreement, we affirm that the Agreement can and
should be interpreted and implemented in a manner supportive
of WTO Members' right to protect public health and, in
particular, to promote access to medicines for all.
In this connection, we reaffirm the right of WTO Members to
use, to the full, the provisions in the TRIPS Agreement, which
provide flexibility for this purpose.
5. Accordingly and in the light of paragraph 4 above, while
maintaining our commitments in the TRIPS Agreement, we
recognize that these flexibilities include:
(a) In applying the customary rules of interpretation of public
international law, each provision of the TRIPS Agreement shall
be read in the light of the object and purpose of the Agreement
as expressed, in particular, in its objectives and principles.
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
48
18.07.2015
The Future of International
IP Law
A Self Contained Regime or Part of a
Comprehensive Global Economic,
Environmental and Social Order?
 Int. IP law is a ‘specialised (yet increasingly heterogeneous) regime within a diverse and fragmented
body of International law
 In a globalised, increasingly complex and interconnected world, IP protection increasingly interacts with
other areas of law and regulation
 Can IP best fulfil its objective to ‘promote the progress of science and the useful arts’ by being a technical value-free area of law or must it attempt to
resolve global issues such as climate change, food
security access to knowledge and public health?
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
49
18.07.2015
Thank you for your attention!
Any comments and critique to
[email protected]
Dr. Henning Grosse Ruse
- Khan
Division Intellectual Property
and Competition Law
Max Planck Institute
for Intellectual Property,
Competition and Tax Law
50
18.07.2015