Transcript Diapositiva 1

TRIPS Agreement
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Enforcement in Part III: a major innovation in
international IP law
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Part III: essentially US and EC positions, limited
contributions from developing countries
VCLT-article 31
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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.
VCLT
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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.
TRIPS approach on enforcement
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Recognizes major differences in enforcement,
no intention to harmonize
Define the objective of the rules, not the way of
achiving it
Procedures must be ‘fair and equitable (art. 41.2)
The judicial authorities shall have the authority
to…
Optional provisions
Provisional measures (injunctions)
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Article 50
1. The judicial authorities shall have the
authority to order prompt and effective
provisional measures:
a) to prevent an infringement of any intellectual
property right from occurring… (b) to preserve
relevant evidence in regard to the alleged
infringement.
Provisional injunctions in the USA
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Reasonable likelihood of prevailing if the validity
of the patent were challenged;
Irreparable harm (it is not irreprarable if an
economic compensation may be obtained)
Proportionality (harm caused to right holder
higher than harm caused to alleged infringer if
measure were wrongly granted)
Reasonable likelihood that infringement exists
Impact on the public interest
Preliminary injunctions in patent
litigation: France 1984-2004
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6000 requests filed
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19 provisional measures granted
Source: Insitut National de la Propriété Industrielle
Article 51: border measures
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Members shall, in conformity with the
provisions set out below, adopt procedures to
enable a right holder, who has valid grounds for
suspecting that the importation of counterfeit
trademark or pirated copyright goods may take
place, to lodge an application in writing with
competent authorities, administrative or judicial,
for the suspension by the customs authorities of
the release into free circulation of such goods…
Article 51
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…Members may enable such an application to be
made in respect of goods which involve other
infringements of intellectual property rights,
provided that the requirements of this Section
are met. Members may also provide for
corresponding procedures concerning the
suspension by the customs authorities of the
release of infringing goods destined for
exportation from their territories.
Regulation (EC) No 1383/2003 customs
action against goods suspected of
infringing IPRs
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Article 4
1. Where the customs authorities…
have sufficient grounds for suspecting
that goods infringe an intellectual
property right, they may suspend the
release of the goods or detain them….
Article 45.1-Injunctions
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IThe judicial authorities shall have the authority to
order a party to desist from an infringement, inter alia to
prevent the entry into the channels of commerce in
their jurisdiction of imported goods that involve the
infringement of an intellectual property right,
immediately after customs clearance of such goods.
Members are not obliged to accord such authority in
respect of protected subject matter acquired or ordered
by a person prior to knowing or having reasonable
grounds to know that dealing in such subject matter
would entail the infringement of an intellectual property
right.
Article 45.2
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Notwithstanding the other provisions of this Part and
provided that the provisions of Part II specifically
addressing use by governments, or by third parties
authorized by a government, without the authorization
of the right holder are complied with, Members may
limit the remedies available against such use to payment
of remuneration in accordance with subparagraph (h)
of Article 31. In other cases, the remedies under this
Part shall apply or, where these remedies are
inconsistent with a Member's law, declaratory
judgments and adequate compensation shall be
available.
Permanent injunctions
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eBAY INC. et al v. MERCEXCHANGE
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US Supreme Court “the decision whether to
grant or deny injunctive relief rests within the
equitable discretion of the district courts.”
Permanent injunctions (3)
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Amgen v. Roche (March 2008)
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Validity and violation of three Amgen patents relating
to Roche’s ‘Mircera’ established by District Court
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District judge William Young denied permanent
injunction and order a compulsory license in favor of
Roche: reduced drug price that would result from
competition
Amado v. Microsoft
(Febrero 26, 2008)
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U.S. Patent 5,293,615 (Carlos Armando Amado,
Guatemala) "point and shoot interface for linking
database records to spreadsheets“
Microsoft requests to Federal court of California a
compulsory license, which is accorded with a royalty of
US$ 0.12 per copy (Amado requested US$ 2 per copy)
The Court of Appeals for the Federal Circuit confirms
the license and requests the district court to review
royalty payment
The TRIPS Agreement
Article 41.1: Members shall ensure that
enforcement procedures …are available under
their law so as to permit effective action against
any act of infringement of intellectual property
rights covered by this Agreement… These
procedures shall be applied in such a
manner as to avoid the creation of barriers to
legitimate trade and to provide for
safeguards against their abuse.
European Commission, Pharmaceutical Sector
Inquiry Report -2009
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Filing numerous patent applications for the same
medicine (forming so called "patent clusters" or "patent
thickets") is a common practice… to delay or block the
market entry of generic medicines.
…individual medicines are protected by up to nearly
100 product-specific patent families, which can lead to
up to 1,300 patents and/or pending patent applications
across the Member States.
Originators vs. generics
219 molecules (2000-2007)
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1,300 patent-related contacts and out of court
disputes
patent litigation cases increased by a factor of
four between 2000 and 2007 (698 cases)
Generic companies won 62% of 149 cases
(average duration 2.8 years, six months to more
than six years).
The European Patent Office is
raising the bar…
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2008, for the first time in its
history, the EPO reported a refusal
rate of over 50 % of pending
applications.
The role of patent offices
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The patent office should function ‘as a steward
of the public interest, not as a servant of patent
applicants. The PTO must protect the public
against the issuance of invalid patents that add
unnecessary costs and may confer market
power…
Federal Trade Commission (2003), To promote innovation: the proper balance
of competition and patent law policy, available at htpp://www.ftc.gov, p. 14.
Counterfeiting and piracy
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TRIPS obligation: importation of copyright
pirated works and counterfeit trademarks
Expansion to exports and goods in transit
Expansion of to any infringement of IPRs
Special anti-counterfeiting legislation
Counterfeiting in medicines
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WHO defintion: fraud in labelling with respect
to identity and source; not generics or ‘copies’
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Global problem
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Drug regulations, not IP regulations are the
main mechanisms to fight against counterfeiting
Government Accountability Office (April 2010)
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INTELLECTUAL PROPERTY. Observations
on Efforts to Quantify the Economic Effects
of Counterfeit and Pirated Goods
Potential positive economic effects of
counterfeiting and piracy
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Some consumers may knowingly purchase a counterfeit
or pirated product because it is less expensive than the
genuine good or because the genuine good is
unavailable, and they may experience positive effects
from such purchases. For example, consumers in the
United States and other countries purchase counterfeit
copies of high-priced luxury-branded fashion goods at
low prices, although the products’ packaging and sales
venues make it apparent they are not genuine.
Potential positive economic effects of
counterfeiting and piracy
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Consumers may purchase movies that have yet
to be released in theaters and are unavailable in
legitimate form. Lower-priced counterfeit goods
may exert competitive pressure to lower prices
for legitimate goods, which may benefit
consumers.
Potential positive economic effects of
counterfeiting and piracy
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Some authors have argued that companies that
experience revenue losses in one line of
business—such as movies—may also increase
revenues in related or complementary businesses
due to increased brand awareness. For instance,
companies may experience increased revenues
due to the sales of merchandise that are based
on movie characters whose popularity is
enhanced by sales of pirated movies.
Potential positive economic effects of
counterfeiting and piracy
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There are also certain instances when IP rights holders
in some industries might experience potentially positive
effects from the knowing consumption of pirated or
counterfeit goods. For example, consumers may use
pirated goods to “sample” music, movies, software, or
electronic games before purchasing legitimate copies,
which may lead to increased sales of legitimate goods.
In addition, industries with products that are
characterized by large “switching costs,” may also
benefit from piracy due to lock-in effects.
Enforcement costs
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The federal government also incurs costs to store and
destroy counterfeit and pirated goods… Storage may be
prolonged by law enforcement actions,.. as seizures
have increased, the agency’s storage and destruction
costs have grown and become increasingly
burdensome. CBP reported that it spent about $41.9
million to destroy seized property between fiscal years
2007 and 2009.
The new escenario on enforcement
of IPRs
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Domestic and international actions
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Demands on developing countries
European Union: internal market
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Customs Regulation (Council Regulation (EC)
No 1383/2003 of 22 July 2003
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Enforcement Directive 2004/48/EC
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Draft European Directive on ‘Criminal measures
aimed at ensuring the enforcement of
intellectual property rights’
European Union: actions in foreign
countries
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Strategy for the Enforcement of Intellectual
Property Rights (IPR) in Third Countries’ (2005)
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Provide a long-term line of action for the Commission
with the goal of achieving a significant reduction of the
level of IPR violations in third countries
USA: domestic measures
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The Stop Counterfeiting in Manufactured
Goods Act (March 2006)
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The Intellectual Property Protection Act of 2007
(H.R. 2391)
USA-enforcement strategies
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Strategy Targeting Organized Piracy (‘STOP!’)
Initiative
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National Intellectual Property Law Enforcement
Coordination Council’ (NIPLECC)
US agencies involved in the
enforcement strategy
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Department of Commerce-International Trade
Administration (ITA)
US State Department
US Customs and Border Protection (CBP)
USTR
US Patent and Trademark Office
Global actions
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WTO: submissions to the TRIPS Council by USA,
Japan, EU
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Group of 8:
-Statement on “Combating IPR Piracy and
Counterfeiting”
-G8 Intellectual Property Experts’ Group
Anti-Counterfeiting Trade
Agreement’ (ACTA)
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Noting further that the proliferation of
counterfeit and pirated goods, as well as of
services that distribute infringing material,
undermines legitimate trade and sustainable
development of the world economy, causes
significant financial losses for right holders and
for legitimate businesses, and, in some cases,
provides a source of revenue for organized
crime and otherwise poses risks to the public;
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(h) intellectual property refers to all categories of
intellectual property that are the subject of
Sections 1 through 7 of Part II of the TRIPS
Agreement (article 5).
Bilateral/regional actions
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Free trade agreements
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Economic Partnerships Agreements
Strengthening enforcement through
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Harmonization of laws and procedures
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Creation of special units/task forces in national
administrations
Strengthening enforcement through
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Criminalization of any commercial scale IP
violation
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Ex-officio action
WTO dispute settlement
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US/EU v. India (mail box)
US-Canada (patent term)
EC-Canada (‘Bolar exception’)
EC-US (copyright)
EC-US (Havanna case)
US/Australia-EC (geographical indications)
US-China (commercial scale)