Slide: 1 INTRODUCTION TO INTERNATIONAL INTELLECTUAL PROPERTY LAW Dorian S. Mazurkevich Attorney-Advisor Office of Enforcement U.S. Patent and Trademark

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INTRODUCTION TO INTERNATIONAL INTRODUCTION TO INTERNATIONAL INTELLECTUAL PROPERTY LAW INTELLECTUAL PROPERTY LAW

Dorian S. MazurkevichDorian S. MazurkevichAttorney-AdvisorAttorney-AdvisorOffice of EnforcementOffice of EnforcementU.S. Patent and Trademark OfficeU.S. Patent and Trademark Office

Intellectual Property, Trade and Economic Development: Intellectual Property, Trade and Economic Development: Seeking ConsensusSeeking Consensus

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U.S. Patent and Trademark Office (USPTO) U.S. Patent and Trademark Office (USPTO) Office of External AffairsOffice of External Affairs

• Congressional Affairs, International Congressional Affairs, International Relations, and Enforcement.Relations, and Enforcement.

• Serve as technical advisors on IP issues Serve as technical advisors on IP issues for the U.S. governmentfor the U.S. government

• Provide technical assistance and Provide technical assistance and cooperation with foreign governmentscooperation with foreign governments

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INTRODUCTIONINTRODUCTION

1.1. Background on WTO and TRIPs Agreement Background on WTO and TRIPs Agreement

2.2. Current Issues: Current Issues:• Trademarks (Geographical Indicators)Trademarks (Geographical Indicators)• Enforcement (TRIPs Plus)Enforcement (TRIPs Plus)• Patents (Data Exclusivity, and CBD)Patents (Data Exclusivity, and CBD)

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INTERNATIONAL STANDARDS FOR PROTECTING INTERNATIONAL STANDARDS FOR PROTECTING INTELLECTUAL PROPERTYINTELLECTUAL PROPERTY

World Trade Organization (WTO):World Trade Organization (WTO):• WTO is the successor to the General WTO is the successor to the General

Agreement on Tariffs and Trade (GATT) Agreement on Tariffs and Trade (GATT) established in the wake of the WWIIestablished in the wake of the WWII

• First took effect in January 1995.First took effect in January 1995.

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Why include IP in GATT?Why include IP in GATT?

Reasons for Including IP on the GATT Agenda:Reasons for Including IP on the GATT Agenda:

• Growth in world trading.Growth in world trading.

• Increased importance of global IP protection.Increased importance of global IP protection.

• Existing provisions of international law were Existing provisions of international law were perceived insufficient.perceived insufficient.

1. Absence of enforcement of rights before 1. Absence of enforcement of rights before national judicial authorities.national judicial authorities.

2. Lack of a dispute settlement mechanism 2. Lack of a dispute settlement mechanism between States. between States.

3. Standards were outdated.3. Standards were outdated.

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The Agreement on Trade-Related Aspects of The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)Intellectual Property Rights (TRIPs)

The most detailed The most detailed and comprehensive and comprehensive multilateral multilateral agreement on agreement on intellectual property intellectual property yet negotiated. yet negotiated.

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• TRIPS introduced intellectual property TRIPS introduced intellectual property rules into the multilateral trading rules into the multilateral trading system for the first time.system for the first time.

• Membership in WTO requires a country Membership in WTO requires a country to agree to adopt the minimum to agree to adopt the minimum standards for intellectual property standards for intellectual property regulation.regulation.

• IP laws are established and enforced IP laws are established and enforced by each individual Member Country.by each individual Member Country.


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• How basic principles of the trading system How basic principles of the trading system and other international intellectual property and other international intellectual property agreements should be applied.agreements should be applied.

• How to give adequate IP protection.How to give adequate IP protection.

• How to enforce IP rights.How to enforce IP rights.

• How to settle disputes on IP between How to settle disputes on IP between members of the WTO.members of the WTO.

• Special transitional arrangement.Special transitional arrangement.


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What areas are covered by TRIPS?What areas are covered by TRIPS?

The intellectual property areas covered by the The intellectual property areas covered by the TRIPs Agreement are:TRIPs Agreement are:• Copyright and related rightsCopyright and related rights• TrademarksTrademarks• Industrial designsIndustrial designs• PatentsPatents• Layout-designs (topographies) of integrated Layout-designs (topographies) of integrated

circuitscircuits• Undisclosed information, including trade secretsUndisclosed information, including trade secrets• EnforcementEnforcement

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Current Issues Under TRIPsCurrent Issues Under TRIPs

• Trademarks Trademarks • Geographical IndicatorsGeographical Indicators

• EnforcementEnforcement• TRIPs PlusTRIPs Plus

• PatentsPatents• Data ExclusivityData Exclusivity• CBDCBD

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TRIPs Art. 22: Geographical IndicationsTRIPs Art. 22: Geographical Indications

• ““[I]ndications which identify a good as [I]ndications which identify a good as originating in the territory of a Member, or originating in the territory of a Member, or a region or locality in that territory, where a a region or locality in that territory, where a given quality, reputation or other given quality, reputation or other characteristic of the good is essentially characteristic of the good is essentially attributable to its geographic origin.”attributable to its geographic origin.”

• Examples: Idaho potatoes, Napa Valley Examples: Idaho potatoes, Napa Valley wine, Washington State appleswine, Washington State apples

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U.S., Australia, Canada and others: • Private rights to be enforced by right holder.• Subject to priority rules (a later-in-time GI cannot trump an earlier established trademark).

European view:• Monitored and enforced by the government.• Trump pre-existing trademarks containing the terms. (would repatriate generic terms).

Geographical Indicators (GI)Geographical Indicators (GI)

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Geographical Indications as Certification MarksGeographical Indications as Certification Marks

• GIs are a subset of trademarks because GIs are a subset of trademarks because they are source-identifiers, guarantees of they are source-identifiers, guarantees of quality, and business interests. quality, and business interests.

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Geographical Indications as Certification MarksGeographical Indications as Certification Marks

• Geographical indications can be Geographical indications can be protected through a trademark system:protected through a trademark system:

• As certification marks or; As certification marks or;

• As collective marks.As collective marks.

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Certification MarksCertification Marks

A certification mark is a type of trademark which indicates to consumers:

1)1) geographic origin of a product;geographic origin of a product;

2)2) materials used, quality, method of materials used, quality, method of manufacture, and accuracy; ormanufacture, and accuracy; or

3)3) products made under the auspices of, or products made under the auspices of, or by members of, a specific trade union or by members of, a specific trade union or organization.organization.

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Collective MarksCollective Marks

• Indicate membership in a group or Indicate membership in a group or organization.organization.

• Can also identify group members.Can also identify group members.

• Proprietors of collective marks can Proprietors of collective marks can exclude people from using the mark.exclude people from using the mark.

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Examples of Foreign Geographical Examples of Foreign Geographical Indications for FoodstuffsIndications for Foodstuffs

Protected in the United StatesProtected in the United States

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““COLOMBIAN”COLOMBIAN”

U.S. Registration No. U.S. Registration No. 1,160,492 (registered 1,160,492 (registered July 7, 1981)July 7, 1981)

For “coffee”For “coffee” ““The mark certifies that the The mark certifies that the

coffee was grown in the coffee was grown in the Republic of Colombia and that Republic of Colombia and that such coffee has been such coffee has been subjected to standards subjected to standards inspection authorized by inspection authorized by applicant and … passing applicant and … passing recognized current minimum recognized current minimum quality standards required for quality standards required for such export as set and such export as set and enforced by said enforced by said Federacion….”Federacion….”

Registrant: Republic of Colombia

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““DARJEELING”DARJEELING”

U.S. Registration U.S. Registration No. 2,685,923No. 2,685,923

For “Tea”For “Tea” ““The certification mark, as The certification mark, as

used by authorized persons, used by authorized persons, certifies that the tea contains certifies that the tea contains at least one hundred percent at least one hundred percent (100%) tea originating in the (100%) tea originating in the Darjeeling region of India and Darjeeling region of India and that the blend meets other that the blend meets other specifications established by specifications established by the certifier.”the certifier.”

Registrant: Tea Board of India

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““Egyptian Cotton”Egyptian Cotton”

Application Serial No. Application Serial No. 76-22967376-229673

For (a variety of For (a variety of products made wholly products made wholly or substantially of or substantially of Egyptian cotton)Egyptian cotton)

““The certification mark, The certification mark, intended to be used by intended to be used by authorized persons, is authorized persons, is intended to certify that the intended to certify that the products identified above products identified above contain 100% Egyptian contain 100% Egyptian Barbadense cotton.”Barbadense cotton.”

Applicants: Alexandria Cotton Exporters Association and the Egyptian Ministry of Economy and Foreign Trade

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““Parmigiano Reggiano”Parmigiano Reggiano”

U.S. Trademark U.S. Trademark Registration Nos. Registration Nos. 1,754,410; 1,892,496; 1,754,410; 1,892,496; 1,896,683; 2,320,5951,896,683; 2,320,595

For “Cheese”For “Cheese” ““The certification mark, as used by The certification mark, as used by

person authorized by the certifier, person authorized by the certifier, certifies that the goods originate in certifies that the goods originate in the Parma-Reggio region of Italy, the Parma-Reggio region of Italy, specifically the zone comprising specifically the zone comprising the territory of the provinces of the territory of the provinces of Parma, Reggio Emilia, Modena and Parma, Reggio Emilia, Modena and Mantua on the right bank of the Mantua on the right bank of the river Po and Bolgona on the left river Po and Bolgona on the left Bank of the river Reno.”Bank of the river Reno.”

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TRIPS Art. 41-61: EnforcementTRIPS Art. 41-61: Enforcement

Part III Enforcement of Part III Enforcement of Intellectual Property Intellectual Property RightsRights

1.1. General ObligationsGeneral Obligations

2.2. Civil and Administrative Civil and Administrative Procedures and RemediesProcedures and Remedies

3.3. Provisional MeasuresProvisional Measures

4.4. Special Requirements Special Requirements Related to Border MeasuresRelated to Border Measures

5.5. Criminal ProceduresCriminal Procedures

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TRIPs Art. 41: General PrinciplesTRIPs Art. 41: General Principles

• ““Members shall ensure that Members shall ensure that enforcement procedures … are enforcement procedures … are available under the law to permit available under the law to permit effective actioneffective action against infringement against infringement of intellectual property rights…”of intellectual property rights…”

• ““expeditious remedies”expeditious remedies”

• ““constitute a deterrent”constitute a deterrent”

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TRIPs Plus: Improving TRIPs TRIPs Plus: Improving TRIPs StandardsStandards

• Pre-established damages available at Pre-established damages available at election of rightholder.election of rightholder.

• Seizure of documentary evidence Seizure of documentary evidence related to infringement.related to infringement.

• Goods found to be infringing and the Goods found to be infringing and the materials and implements used to materials and implements used to create them shall be destroyed.create them shall be destroyed.

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TRIPs Plus: Improving TRIPs StandardsTRIPs Plus: Improving TRIPs Standards

• Require infringer to provide Require infringer to provide information regarding others involved information regarding others involved in infringement, means of production in infringement, means of production and channels of distribution.and channels of distribution.

• Enforcement procedures for technical Enforcement procedures for technical protection measures and rights protection measures and rights management information.management information.

• ““Ex officio” authority for criminal and Ex officio” authority for criminal and border measures.border measures.

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TRIPs Plus: Improving TRIPs StandardsTRIPs Plus: Improving TRIPs Standards

• Criminal procedures even where no Criminal procedures even where no motive of financial gain.motive of financial gain.

• Seizure and forfeiture of goods, Seizure and forfeiture of goods, assets, means to produce and assets, means to produce and evidence.evidence.

• Criminal procedures for trafficking in Criminal procedures for trafficking in counterfeit labels.counterfeit labels.

• Internet Service Provider liability. Internet Service Provider liability.

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TRIPs and Patent IssuesTRIPs and Patent Issues

1.1. Data exclusivity for Data exclusivity for pharmaceuticals and agrochemicalspharmaceuticals and agrochemicals

2.2. UN Convention on Biological UN Convention on Biological DiversityDiversity

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““Data exclusivity”: Test data that Data exclusivity”: Test data that demonstrates a drug or demonstrates a drug or agrochemical’s safety and efficacy, agrochemical’s safety and efficacy, which is required by a drug which is required by a drug regulatory authority for marketing regulatory authority for marketing approval.approval.

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TRIPs Art. 39.3: Protection of TRIPs Art. 39.3: Protection of Undisclosed InformationUndisclosed Information

• ““Members … shall protect such Members … shall protect such [undisclosed test] [undisclosed test] datadata against unfair against unfair commercial use.” commercial use.”

• ““Members shall protect such Members shall protect such datadata against disclosure, except where against disclosure, except where necessary to protect the public, or necessary to protect the public, or unless steps are taken to ensure that the unless steps are taken to ensure that the datadata are protected against unfair are protected against unfair commercial use."commercial use."

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• Is there a conflict between TRIPs and Is there a conflict between TRIPs and the UN Convention on Biological the UN Convention on Biological Diversity, protection of traditional Diversity, protection of traditional knowledge and folklore?knowledge and folklore?

(Doha Ministerial Declaration, Para. 19)(Doha Ministerial Declaration, Para. 19)

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TRIPs and CBDTRIPs and CBD

• No conflict: Both can be mutually supported using No conflict: Both can be mutually supported using national laws and contractual arrangements.national laws and contractual arrangements.

• May provide civil and/or criminal penalties for May provide civil and/or criminal penalties for misappropriation:misappropriation:• Can be adequately enforced, similarly to health, safety Can be adequately enforced, similarly to health, safety

and other important regulatory areas.and other important regulatory areas.• Patent System is effective for promoting innovation and Patent System is effective for promoting innovation and

economic development, not regulating misconduct.economic development, not regulating misconduct.

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• Conflict: TRIPs must be amendedConflict: TRIPs must be amended

• New patent disclosures needed New patent disclosures needed regarding:regarding:• Source of origin of genetic materialSource of origin of genetic material• Evidence of prior informed consentEvidence of prior informed consent• Evidence of equitable benefit sharing.Evidence of equitable benefit sharing.

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• Members Appear to Share Several Broad Members Appear to Share Several Broad Objectives:Objectives:

• Provide Authorized Access While Assuring Provide Authorized Access While Assuring Conservation of BiodiversityConservation of Biodiversity

• Equitable Benefit Sharing for Use of Traditional Equitable Benefit Sharing for Use of Traditional Knowledge and Genetic ResourcesKnowledge and Genetic Resources

• Eliminate Erroneously Issued PatentsEliminate Erroneously Issued Patents

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Thank you.Thank you.

Dorian S. MazurkevichDorian S. MazurkevichAttorney-AdvisorAttorney-Advisor

Office of EnforcementOffice of [email protected]@uspto.gov

Intellectual Property, Trade and Economic Development: Intellectual Property, Trade and Economic Development: Seeking ConsensusSeeking Consensus

Documents

Slide: 1 INTRODUCTION TO INTERNATIONAL INTELLECTUAL PROPERTY LAW Dorian S. Mazurkevich Attorney-Advisor Office of Enforcement U.S. Patent and Trademark