European Commission DG Trade 1

Seminar for ORs and OCTs EPAs:

the Intellectual Property context

Christophe DE VROEY

European Commission DG Trade 2

I. What are IPRs?

• Rights given to persons over the creation of their minds

• Exclusive “negative” right → to prevent

• Balance of interests → “social contract”

• Encourages creativity and innovation

• Encourages investment and technology transfer

• Protects consumers

European Commission DG Trade 3

Main categories of IPRs

Copyright • Artistic works

• Literary works [computer software and data

bases]

Related (neighbouring) rights

• Performers• Phonogram producers• Broadcasters

Industrial property

• Trademarks• Geographical indications • Industrial designs• Patents• Plant varieties protection• Topographies of integrated

circuits• Undisclosed information (e.g.

trade secrets; test data)

European Commission DG Trade 4

The International IP system• Multilateral agreements:

– Key Organisations: WTO, WIPO

– The TRIPS Agreement

– Standard-setting Treaties: Paris Convention, Berne Convention, Rome Convention, etc, also sectoral: UPOV, CBD…

– Global protection systems: Madrid Agreement, PCT…

– Classification Treaties: Strasbourg (patents)…

• Regional and bilateral agreements: impact of MFN principle

• Trends in international IP rules:– Widening of protectable subject matter

– Creation of new rights

– Harmonisation and standardisation of approach to protection

European Commission DG Trade 5

WIPO

• UN specialized agency with 182 Member States (90% of world countries), born in 1970 on the footsteps of BIRPI (Paris and Berne Conventions “Bureau”)

• Functions:– Administer international treaties on IP (25)– Harmonize and simplify IP rules and practices– Monitor developments in IP field– Provide technical assistance and facilitate dispute

resolution

European Commission DG Trade 6

The WIPO agreements

IP Protection- Berne Convention- Brussels Convention- Film Register Treaty- Madrid Agreement (Source)- Nairobi Treaty- Paris Convention - Patent Law Treaty- Phonograms Convention- Rome Convention- Trademark Law Treaty - Washington Treaty- WCT- WPPT

Protection systems

- Budapest Treaty- Hague Agreement- Lisbon Agreement- Madrid Agreement (Marks)- Madrid Protocol- PCT

Classification

- Locarno Agreement- Nice Agreement- Strasbourg Agreement

- Vienna Agreement

European Commission DG Trade 7

WTO

OBJETIVES: – Raise standards of living

– Full employment

– Optimal use of the world’s resources and sustainable development

PRINCIPLES:– Non discrimination: MFN and national treatment

– Freer and fairer trade

– Ensure participation of developing countries FUNCTIONS:– Further objetives and facilitate implementation of the agreements

– Forum for negotiations among its Members

– Administer TPRM and dispute settlement system

European Commission DG Trade 8

The WTO agreements

WTO

TRADE POLICY REVIEW MECHANISM

DISPUTE SETTLEMENT SYSTEM

GOODS INTELLECTUAL PROPERTY

SERVICES

TRIPS: most comprehensive IP agreement everTRIPS: most comprehensive IP agreement everObjective: promote technological innovation and technology transfer to the mutual advantage of producers and users => social and economic welfare

European Commission DG Trade 9

TRIPs

General Standards Enforcement

Paris and Berne

Natioanl Treatment

MFN

Exhaustion

principles

Copyrights

Trademarks

GIs

Designs

Patents

topographies

Undisclosed information

General obligations

civil/adm procedures

Border Measures

Criminal procedures

European Commission DG Trade 10

TRIPS: main elements

• Applicability of basic principles of GATT, of other IP agreements, plus specific principles: – Non discrimination (MFN, NT)– Balanced protection (Art.7 & 8)– Free method of implementing minimum protection (Art.1)– Private enforcement

• Minimum standards of protection of IPRs• Enforcement of IPRs• Prevention and settlement of disputes• Transitional arrangements

European Commission DG Trade 11

TRIPS negotiations DDA & TRIPS Council

Ministerial Conference

General Council

Trade Negotiating Committee Councils/Committees

Neg Group on Market Access

Neg Groupon Rules

Special Sessions

TRIPS Council in Regular Session: review of legislation, public health, biodiversity, TK, TT, TA, NVCs, extension until 2002…

TRIPS Council in Special Session: GI register + Technical

consultations on “extension”

European Commission DG Trade 12

TRIPs and Public Health• Article 31(f) TRIPs.

• Declaration on the TRIPs Agreement and Public Health at the Doha Ministerial Conference (2001) confirms that Members are free to issue compulsory licences for reasons of public health.

• 30 August 2003 the WTO General Council adopted the Decision on the Implementation of Paragraph 6 of the Declaration on the TRIPs Agreement and Public Health ("Perez Motta text").

• On 29 October 2004, the Commission adopted a proposal for a Regulation on compulsory licensing of patents relating to the manufacture of pharmaceutical products for export to countries with public health problems.

• Also Council Regulation No 953/2003 of May 2003 (Tiered Pricing Regulation)

European Commission DG Trade 13

TRIPs and Geographical Indications

EC proposals GIsRegister

• The EU proposes an international registry with legal effects (recognition by all WTO Members).

• The registration of a GI in the registry would in particular make it possible to reverse the burden of proof (in the current situation, it is the producer who is the victim of usurpation who must demonstrate that he is the true owner of the GI).

Extension• Extension of the protection

granted by Article 23 TRIPs - which currently benefits only wines and spirits - to all products.

• Producers and manufacturers would no longer have to prove that the public has been misled in order to prevent the misuse of their GIs.

• Not the idea to ‘claw back’ GIs which are currently being used in good faith in third countries (TRIPs exceptions fully respected).

European Commission DG Trade 14

TRIPs and technical assistance IP cooperation programs in third countries

• The EC is a major provider of technical assistance in favour of developing and least-developed countries in the IP area.

• The objective of this assistance is to facilitate the implementation of international IP obligations, in particular those resulting from bilateral and multilateral agreements such as the TRIPs Agreement.

• Such assistance generally include the preparation of laws and regulations on the protection and enforcement of IP rights and on the prevention of their abuse, as well as support regarding the establishment or reinforcement of domestic IP offices and agencies relevant to these matters, including the training of staff in the administration of IP protection and management methods.

European Commission DG Trade 15

TRIPs and Biodiversity

• Main features of the EC proposals: disclosure in patent applications should be a mandatory requirement; if the patent applicant fails or refuses to declare the required information, then the application should not be further processed; if the information provided is incorrect or incomplete, sanctions should be envisaged

outside the field of patent law.

• Since genetic resources and traditional knowledge (TK) can be used in patentable inventions, DCs ask for an equitable sharing of the benefits arising from this use, in accordance with the principles established in the CBD.

• This adjustment would consist of the introduction of an obligation to disclose the origin of the genetic resource or TK in patent applications

European Commission DG Trade 16

II. Regional approaches: the EU and IPR

• EU single market: eliminate restrictions to free movement and distortions of competition => environment conducive to innovation and investment

• How? – Harmonisation of national laws and/or– Creation of Community IPRs: one application, EC-

wide protection

• Lisbon agenda: establishing a “knowledge economy”

European Commission DG Trade 17

Regional approaches: the EU and IPR

• Copyright and related rights: significant harmonisation of copyright law; towards collective management of copyright across EU (national collecting societies). EC in WIPO treaties

• Geographical Indications: depending on product, from Community GI to no harmonisation except TRIPS

• Trademarks and Designs: harmonisation of national laws & creation of Community TM (OHIM). June 04: EC accedes to Madrid Protocol

• Patents: national patent systems harmonised through international conventions. Two supra-national approaches:– European Patent System based on Munich Convention, which

established the EPO. Not in “Community” legal order!– Proposal for the Community Patent in 2000: not yet agreed

European Commission DG Trade 18

Regional approaches: the EU and enforcement

• Enforcement in the EU: progress in harmonisation of approach across the EU: Action Plan 2000 and Green Paper, followed by the EU Enforcement Directive 2004/48/EC. – Applies to all EU-regulated IPRs– Applies mainly to infringements with «commercial purpose» or

«causing significant harm»– «minimum standard », i.e. member states may go further

• Council Regulation 1383/2003, in force on 1 July 2004: conditions for intervention by the customs authorities

• EU enforcement strategy in third countries: various actions to confront a complex problem. Current survey on priority countries

European Commission DG Trade 19

Regional approaches: ACP

Article 46 of Cotonou Agreement: – Objective: ensure adequate and effective protection of IPR in

line with international standards with a view to reducing distortions and impediments to bilateral trade.

– Special provision: may consider agreements on TMs & GIs– IPRs covered: copyright & related rights inc. computer

programmes, utility models, patents including for biotech & plant varieties, designs, TMs, GIs, topographies of ICs, databases, protection against unfair competition and disclosure of confidential information

– Co-operation and technical assistance: preparation of legislation, enforcement, capacity building including on a regional basis

European Commission DG Trade 20

Regional approaches: EPAs, what is next?

• Regional approach: integration pays off => need to look at ways in which regional co-operation could help in setting up IP administrations, adopting laws, establishing protection systems

• IPRs to be covered => Cotonou• Particular attention to be paid to GIs, and to their relation

to TMs• Enforcement: rules make sense if they are enforced• Technical cooperation: EPA negotiations should

contribute to capacity building and stronger IP systems in every country participating.

European Commission DG Trade 21

Useful WebSites• WIPO http://www.wipo.int/about-ip/en/overview.html

• WTO http://www.wto.org/english/tratop_e/trips_e/trips_e.htm

• EC helpdesk http://www.ipr-helpdesk.org/index.htmTrade http://europa.eu.int/comm/trade/issues/sectoral/intell_property/index_en.htmMarkt http://europa.eu.int/comm/internal_market/en/index.htmTaxud http://europa.eu.int/comm/taxation_customs/index_en.htm

• OHIM http://oami.eu.int/en/default.htm

• EPO http://www.european-patent-office.org/index.en.php