General Notes Flashcards
WIPO ?
WIPO, a specialized agency of the United Nations, is dedicated to the promotion of innovation and creativity for the economic, social and cultural development of all countries through a balanced and effective international IP system. This first section of the course will discuss the mandate, structure, financing and activities of WIPO. Among topics to be considered are the following: Objectives; Main Activities; Organizational Structure and Budget; History; Legal Status; Treaties Administered by WIPO.
Relations with the UN, WTO, and Other Intergovernmental Entitites?
This section will take a more detailed look at the cooperation between WIPO and WTO. WTO is one of WIPO’s principal institutional partners. The framework of WIPO-WTO cooperation is based on a 1995 Agreement between WIPO and WTO that entered into force in 1996. It provides, in particular, for cooperation in the implementation of the TRIPS Agreement, which is officially administered by WTO. Such cooperation includes notification of laws and regulations, legal-technical assistance and technical cooperation in favor of developing countries. Among others, we will take a detailed look at what it means for WIPO to be a specialized agency of the United Nations, and the practical aspects of cooperation between WIPO and WTO, as well as other IGOs.
TRIPS
The TRIPS Agreement is arguably the most debated and the most controversial of all the WTO Agreements. It also happens to be the only Agreement in the set of WTO multilateral Agreements that has been amended since the WTO came into existence in 1995 – the amendment entered into force in January 2017. This section will take a detailed look at the TRIPS Agreement. Among topics to be discussed are the following: General Provisions, Basic Principles and Final Provisions (including the Concept of Intellectual Property: Patents, Copyright and Related Rights, Trademarks, Industrial Designs, Geographical Indications); Standards Concerning the Availability, Scope and Use of IP Rights; Transitional Arrangements; Institutional Arrangements & Final Provisions.
The discussion will also cover the IP and Public Health interface, including the Doha Declaration, Compulsory Licensing and the WTO cases relating to the Australian Tobacco Plain Packaging Act 2011. There will be a simulated panel hearing of the Plain Packaging cases, on which a ruling has been expected from the WTO Panel for the last several months.
Dispute Resolution under the Auspices of WIPO
There is a growing need for quick and inexpensive ways of settling commercial disputes involving IP rights, and providing private parties with an alternative to often lengthy and costly court proceedings. Alternative Dispute Resolution (ADR) is widely perceived to be one of the most appropriate means of resolving IP disputes because it (a) is appropriate for most IP disputes, (b) enhances party control/autonomy, (c) is time/cost-effective, and (d) is often less adversarial than court litigation. Among topics to be discussed are: The WIPO Arbitration and Mediation Center as the world’s leading provider of Internet domain name dispute resolution services; and Alternative Dispute Resolution of IP disputes.
IP and Development
“Development” has become one of the most debated issues in the international arena. In the UN context, there is the UN Sustainable Development Goals (SDGs). In the WTO context, there is the Doha Development Agenda: and in the WIPO context, there is the WIPO Development Agenda.
A Fundamental premise underlying IP throughout its history has been that the recognition and rewards associated with ownership of inventions and creative works stimulate further inventive and creative activity that, in turn, stimulates economic development. It is today widely accepted that knowledge and inventions play an important role in economic growth.
Over 75% of WIPO and WTO’s Members are developing or least-developed countries. There are several provisions in the WIPO and WTO Agreements that speak to the special position of these countries. What specific role does IP play in development and vice versa? Why has development become such a buzzword in IOs today? What is the likely impact of the development agenda in WIPO?
What is the pros and cons of enforcement?
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What is the UN Sustainable Development Goals (SDGs) ?
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What is the Doha Development Agenda?
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What is the WIPO Development Agenda?
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In the WTO and WIPO context how they see the development?
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What specific role does IP play in development and vice versa?
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Why has development become such a buzzword in IOs today?
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What is the likely impact of the development agenda in WIPO?
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What is ADR ?
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What is the benefits of ADR?
(a) is appropriate for most IP disputes,
(b) enhances party control/autonomy,
(c) is time/cost-effective, and
(d) is often less adversarial than court litigation
What is the WIPO Arbitration and Mediation Center ?
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What is the Internet domain name dispute resolution services?
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What is the general provisions of the TRIPS ?
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What is the basic principles and final provisions?
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What is transitional arrangements ?
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What is Institutional Arrangements ?
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What is the objectives of WIPO?
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What is the main activities of WIPO?
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What is Organizational Structure and Budget of WIPO ?
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What is the History ofWiPO?
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What is the legal status of WIPO?
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What treaties administered by WIPO?
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What is the relations between WIPO and UN ?
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What is the relations between WIPO and WTO ?
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What is the relations between WIPO and UN ?
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What is the relations between WIPO and WHO ?
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What is the relations between WIPO and others ?
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What is the WIPO?
WIPO, a specialized agency is dedicated to the promotion of innovation and creativity for the economic, social and cultural development of all countries through a balanced and effective international IP system.
This first section of the course will discuss the mandate, structure, financing and activities of WIPO.
What is objectives of WIPO?
To enable governments, businesses and individuals in all member states to realize the potential benefits of IP as a driver of innovation and creativity.
In the ART.1 of agreement WIPO- UN is established its objectives:
1- Promoting creative intellectual activity
2- Facilitate the transfer of technology related to industrial property to developing countries in order to accelerate economic, social and cultural development.
What is the main WIPO’s Activities ?
A global forum for IP policy, services, information and cooperation:
- Services to Industry
- Global IP Infrastructure
- Norm-Setting
- Economic Development
What is norm setting ?
To regulate IP has used the multilateral treaty-making process that is slow and time-consuming. It also could be delayed further by the fact that both international and domestic requirements need to be fulfilled before a treaty comes into force in the states concerned.
Most disappointed is the fact that certain treaties may never enter force (e.g. the Treaty of Protection of Intellectual Property in respect to integrated circuits)
A further difficulty arises with respect to rulemaking when the initial problems or interest change in the negotiation period. (E.g. the WIPO draft treaty about dispute resolution. When WTO was created, States preferred to settle IP disputes under WTO dispute settlement body).
Other rulemaking process is the non-binding agreements, like declarations of the UNGA. Since WIPO has only used the traditional treaty method however, in the last few years, the Secretariat of WIPO is exploring other means. In 2000 WIPO’s assemblies approved Recommendation concerning trademark licenses and in 2001, a Recommendation concerning provision on the protection of Marks, and other Industrial Property rights in signs, on the Internet.
Finally, another important aspect is the changing nature of participants in international legal regulation, e.g. in Internet, where most active player is ICANN (internet corporation for assigned names and numbers). ICANN has adopted the WIPO proposal of Uniform Domain Name Dispute Resolution Policy (UDRP) a mechanism for resolving domain names dispute
What is the WIPO’s Economic Development?
In 2007 WIPO MS adopted the WIPO development agenda, including 45 recommendations focused in the needs of its developing country MS. It put emphasis on use of IP for development. The art. 3 of WIPO convention changed to include the development objectives.
- To place development as the ultimate objective of the global IP system.
- To make the IP system development friendly.
- To take into consideration the specific needs and interests of developing countries and LDCs.
- To ensure a balance between the rights of IP right holders and public interests.
- To make development considerations integral to WIPO’s work.
The challenge was to facilitate use of IP by developing countries for economic, social, cultural development.
The 45 agreed proposals were classified in 6 clusters of activities.
- Technical Assistance and Capacity Building;
- Norm-setting, Flexibilities, Public Policy and Public Knowledge;
- Technology Transfer, Information and Communication Technology (ICT) and Access to Knowledge;
- Assessments, Evaluation and Impact Studies;
- Institutional Matters including Mandate and Governance
- Other issues
It was established a Committee on Development and Intellectual Property to monitor, assess, discuss and report on implementation of recommendations and discuss IP and development issues and a Development Agenda Coordination Division to ensure agreed outcomes reflected in relevant programs.
Now there are the SDGS in UN and the development objectives in WTO.
Services to industry
Provides a range of services for users of the IP System. The Secretariat offers treaty-related services that help fee-paying applicants and holders of IP rights to protect IP across borders. Enables applicants to seek patent protection, facilitates registration of industrial designs in multiple countries with minimum facilities and expenses and offers an alternative dispute resolution procedure.
Global IP infrastructure
Support global IP infrastructure through services to patent offices and copyright agencies. Provides information services through a series of global database of patents documents, brands, marks and law and treaties as well as statistic and research. Provides assistance to developing countries and host a number or multi-stakeholder platform and public-private partnership.
ORGANIZATIONAL STRUCTURE AND BUDGET
WIPO has 189 member states and more than 350 observers. The Headquarters are situated in Geneva and had premises in New York, Rio, Moscow, Beijing, Singapore and Tokyo.
Is the administrator of 26 treaties and 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
The main policy and decision-making bodies of WIPO are the General Assembly, the Coordination Committee and WIPO conference.
- General Assembly composed of the member states of WIPO, which are members of any of the unions
- Conference composed by the parties of the WIPO convention
- Coordination Committee composed of members elected from among the members of the Executive Committee of the Paris and Berne Union (meetings every year, main function: give advise to the organs of the unions
The internal organization is divided in seven organisational Sectors: 1- Development 2- Brands and designs 3- Global Issues 4- Patents and Technology 5- Culture and Creative Industries 6- Administration and Management 7- Global infrastructure.
HISTORY
The origins of WIPO date back to 1883 Paris Convention for the Protection of Industrial Property and the 1886 Berne Convention for protection of Literary and Artistic works.
In 1967 entry to force the Convention establishing the WIPO and in 1974 signed the agreement with United Nations to become a Specialized Agency of the UN system.
LEGAL STATUS
The WIPO is the specialized agency o the United Nations charged with Intellectual Property.
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.”
TREATIES ADMINISTERED BY WIPO
Administers 26 treaties:
- WIPO convention:
- 15 IP protection- define international substantive standards on IP.
- 4 Classification- Organise information concerning inventions, trademarks and industrial designs through an indexed classification system.
- 6 Global protection system, which establish procedural rules mainly aimed at ensuring that one international registration or filing of an industrial property will have effect in all the countries signatory to the relevant treaties.
More relevant treaties are:
1- Paris Convention- Industrial property.
2- Bern Convention- Literary and artistic works.
3- Rome Convention- Phonograms and broadcasting organisations.
4- Madrid agreement-Copyrights.
5- Lisbon agreement- Geographical indications
6- TRIPS agreement –Trade related aspect of intellectual property rights.
HOW TO REGISTER A PATENT
When you enter into national phase you chose where you want the patent protection (in how many countries do you want protection). The countries can decline the protection.
Before you can file an optional demand of preliminary examination from the following countries that belongs to the PCT International Searching Authorities (Australia, Austria, Brazil, Canada, Chile, China, Egypt, Finland, India, Israel, Japan, Republic of Korea, Russian Federation, Singapore, Spain, Sweden, Turkey, Ukraine, United States of America, European Patent Office, Nordic Patent Institute, Visegrad Patent Institute).
- The PCT system is a patent “filing” system, not a patent “granting” system. There is no “PCT patent” or “global patent”.
- The decision on granting patents is made exclusively by national or regional Offices in the national phase.
- Only inventions may be protected via the PCT by applying for patents, utility models and similar titles
- Design and trademark protection cannot be obtained via the PCT. There are separate international conventions dealing with these types of industrial property protection (the Hague Agreement and the Madrid Agreement and Protocol, respectively)
The Madrid system protects trademarks and the Hague system is industrial designs.
Certain PCT Advantages
The PCT, as the cornerstone of the international patent system, provides a worldwide system for simplified filing and processing of patent applications, which:
- Postpones the major costs associated with internationalizing a patent application
- Provides a strong basis for patenting decisions
- Harmonizes formal requirements
- Protects applicant from certain inadvertent errors
- Evolves to meet user needs
- Is used by the world’s major corporations, universities and research institutions when they seek international patent protection
PCT Challenges
• Trying to keep PCT from being politicized like certain other parts of WIPO’s work
• Quality of international work products
• Building trust between patent offices, so duplicative international phase and national phase processing can be reduced
• Language issues
Helping developing countries benefit from PCT
• Top 15 countries responsible for 92.7% of IAs published in 2014
• Top 32 countries filed approx. 96% of IAs
• The other 4% of filings are spread across 110 countries
LESSON 4: RELATIONS WITH THE UN, WTO AND OTHER INTERGOVERNMENTAL ENTITIES
This section will take a more detailed look at the cooperation between WIPO and WTO. WTO is one of WIPO’s principal institutional partners. The framework of WIPO-WTO cooperation is based on a 1995 Agreement between WIPO and WTO that entered into force in 1996. It provides, in particular, for cooperation in the implementation of the TRIPS Agreement, which is officially administered by WTO. Such cooperation includes notification of laws and regulations, legal-technical assistance and technical cooperation in favor of developing countries. Among others, we will take a detailed look at what it means for WIPO to be a specialized agency of the United Nations, and the practical aspects of cooperation between WIPO and WTO, as well as other IGOs.
RELATION BETWEEN WIPO AND UN.
In 1974 was signed the Agreement between UN and WIPO and WIPO become a specialized agency of the UN.
WIPO is responsible:
1. For taking appropriate action in accordance with its basic instrument, treaties and agreements administered by it
1- WIPO co-ordinate with UN to make the UN system fully effective
2- Representatives of the UN shall be invited to attend to the sessions of all bodies of the organization, but they have no right to vote
3- Representatives of the Organisation shall be invited to attend meetings from the General Assembly (for purposes of consultations)
4- Exchange of information
5- Yearly there is a report due by the organization
6- Cooperation in the provision of technical assistance for developing countries and LDC
7- To enter into relations with other intergovernmental organizations the Organization has to inform the Economic and Social Council of the nature and scope of the intentioned agreement
RELATION 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.
2- Implementation of 6ter of Paris TRIPS - When you are a country you register your signs and emblems (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 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).
3- 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
6- 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
LECTURES 5,6, 7- INTELLECTUAL PROPERTY LAW AND THE TRADE - RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS)
The TRIPS Agreement is arguably the most debated and the most controversial of all the WTO Agreements. It also happens to be the only Agreement in the set of WTO multilateral Agreements that has been amended since the WTO came into existence in 1995. This section will take a detailed look at the TRIPS Agreement. Among topics to be discussed are the following: General Provisions, Basic Principles and Final Provisions (including the Concept of Intellectual Property: Patents, Copyright and Related Rights, Trademarks, Industrial Designs, Geographical Indications); Standards Concerning the Availability, Scope and Use of IP Rights; Transitional Arrangements; Institutional Arrangements & Final Provisions.
The discussion will also cover the IP and Public Health interface, including the Doha Declaration, Compulsory Licensing and the WTO cases relating to the Australian Tobacco Plain Packaging Act 2011. There will be a simulated panel hearing of the Plain Packaging cases, on which a ruling is expected from the WTO Panel sometime in 2017.
Forms and functions of International Property Rights
Intellectual property is a defined set of the intangible products of human creative activity. Unlike real property and personal property, which is often protected by means of physical security devices (such as fences and other enclosures), intellectual property is mainly protected by sets of enforceable legal rights granted to “owners” or “holders.”
What are IPR?
- Intangible Property/Private Rights
- They are rights given to persons over the creation of their minds. They usually give creator/inventor an exclusive right over the use of his/her creations/inventions for a certain period of time.
- Broadly divided into two categories: copyright and related rights, and industrial property.
Why protect intellectual property right?
There are several compelling reasons.
1- The progress and well being of humanity rest on its capacity to create and invent new works in the areas of technology and cultures.
2- The legal protection of new creations encourages the commitment of additional resources for further innovation.
3- The promotion and protection of intellectual property rights spurs economic growth, creates new jobs and industries, and enhances the quality and enjoyment of life.
An efficient and equitable IP system can help all countries to realize intellectual property’s potential as a catalyst for economic development and social and cultural well being.
The IP system help strike a balance between the interest of innovators and the public interest, providing an environment in which creativity and invention can flourish, for the benefit of all.
Forms of IP and the functions they are intended to serve:
- Patent- The “patent” is a set of rights granted to the inventor of a product or process that is “new” (or “novel”), involves an “inventive step” (or is “nonobvious”) and is “capable of industrial application” (or “useful”). The inventor must disclose the invention in the patent application in a way that enables others to make the invention without undue experimentation.
The minimum term of a patent under the TRIPS Agreement is 20 years from the filing of the application.
The holder of a patent may prevent others from making, using, offering for sale, selling or importing the invention during the patent term. As with other IPRs, the rights of the patent holder are qualified by certain important exceptions.
The patent is typically referred to as a “hard” form of intellectual property because it generally excludes another person from using the invention without the consent of the patent holder even if the other person independently found the same invention.
The patent is intended to perform three functions:
(1) to stimulate inventive activity;
(2) to encourage investment in the products of inventive activity, and
(3) to disseminate technical information to the public.
- Trademark - The “trademark” is a sign or symbol that distinguishes the goods or services of one enterprise from another in commerce. Trademarks may consist of virtually any form of sign, including letters and words, designs, colours, shapes, sounds and scents. A trademark allows its holder to prevent others from using an identical or confusingly similar sign to identify its goods or services in commerce. Trademark rights may last as long as the right holder continues to use the mark in commerce. In civil law jurisdictions, trademark rights are typically based on registration. In common law jurisdictions, trademark rights may be based either on registration or on use in commerce (the latter referred to as “common law” trademarks). In some jurisdictions, trademark rights may extend beyond the prevention of consumer confusion to encompass the prevention of “dilution” of the trademark holder’s interests, that is, third parties may be prevented from “tarnishing” or “blurring” the trademark.
3- Copyright - “Copyright” is granted to authors and artists to protect expressive works against unauthorized reproduction or distribution by third parties. Expressive works are broadly defined, and include such things as books, films, music recordings and computer software. There is, in fact, no express limit on what material might be considered to embody protectable artistic expression.
Under the TRIPS Agreement, the minimum term of copyright protection is the life of the author plus 50 years. However, in a number of places, including the United States and the European Union, the duration of copyright has been extended to the life of the author plus 70 years. Copyright also extends to the rights of performers in the fixation of their unfixed performances, and to rights of producers of sound recordings and broadcasters.
Copyright is considered a “soft” form of IPR because it does not preclude independent creation by third parties.
- Design Protection - Designs are covered by various forms of IPR, including design patent, copyright, trademark and trade dress, and sui generis registration systems. The protection of non-utilitarian designs has long been a problematic area for intellectual property law.
- Geographical Indication -Geographical indications (GIs) are identifiers that associate a product with a place based on the duality or characteristics of the product or goodwill associated with the place. The classic illustrative GI is “Champagne,” that is, the name of a region in France known for producing quality sparkling wines by a specific method.
- Protection of Layout-Design of Integrated Circuits - Integrated circuits (or semiconductors) are produced on the basis of three dimensional maps or “mask works” that are used to direct sophisticated equipment that etches circuits on semiconductor materials. There has been little enforcement activity based on sui generis IC layout-design protection, but it is the subject of TRIPS Agreement rules.
- Protection of Undisclosed Information - Undisclosed information is generally protectable if it is commercially valuable, undisclosed and the business claiming rights takes reasonable steps to protect it. Protection of undisclosed information is generally (but not exclusively) synonymous with “trade secret” protection. Such protection is provided in a variety of ways, including by specific statute or by unfair competition law.
Trade secret protection generally lasts as long as the relevant information remains secret. The TRIPS Agreement specifically requires protection of undisclosed data with respect to new chemical entities in pharmaceutical and agricultural chemical products that is submitted for government regulatory purposes, requiring protection against “unfair commercial use.”
- TRIPS AGREEMENT
The TRIPs is the most controversial agreement. Introduce the IPR in the trade agreements. The amendment of TRIPs entry intro force next month
The TRIPS Agreement covers seven types of IPRs
Before the TRIPS Agreement, WIPO-Administered the following Agreements:
¥ Berne Convention for the Protection of Literary and Artistic Works
¥ Paris Convention for the Protection of Industrial Property
¥ Several Others – about 18
¥ Also, numerous other regional and bilateral IP protection agreements (…)
