International Intellectual Property
Law
Summer 2009
Introduction
Professor Susanna Fischer
• Web page for this course
http://www.law.edu/faculty/fischer - scroll
down to International IP 2009
• TWEN page
• My e-mail: fischer@law.edu
• Co-teacher: Professor Megan LaBelle
Course Meetings, Attendance, Exam
• Class meetings are every weekday from
June 15-July 2 from 3:45 to 5:50 p.m.
• Attendance is required. We reserve the
right to treat late arrival as an absence.
• If you miss more than 2 classes without
prior permission, we may bar you from the
final examination.
• Written final exam (take home, open book,
1 hour on patents, trademarks/geographical
indications, copyrights, trade
secrets/industrial design/regulatory data)
Required Materials
• The required book is Frederick M.
Abbott, Thomas Cottier, Francis
Gurry, International Intellectual
Property in an Integrated World
Economy (Aspen 2007)
• PLEASE BRING THE BOOK to
EVERY CLASS
This Course is About
• International protection of intellectual
property rights (IPRs)
• We will focus on trade related aspects
of IPRs
• Focus on multilateral agreement,
occasional attention to regional
agreements (European Union)
Main Course Themes: Recurring
Questions
• Different approaches to intellectual property rights (IPR) protection
in civil and common law systems
• How should international agreements deal with different approaches
of common law systems and civil law systems to IPR protection
• Clash between developing and developed countries concerning the
proper extent of protection for IPR
• To what extent should IPR agreements balance IPR and human
rights, such as the right to health and access to education?
• Is harmonization of IPR necessary or desirable? To what extent have
international agreements harmonized substantive IPR? To what
extent have they harmonized procedures for obtaining IPR?
• How should international law address the opportunities and
challenges of technological development, such as digital
technologies?
What is Intellectual Property?
What is Intellectual Property?
• IP is a product of the
human mind
• IP surrounds us in our
daily lives. Can you
think of some types of
IP that you encounter
on a daily basis?
• National law in
virtually all countries
protects IPR.
Intellectual Property vs. Real
Property
• How does intellectual property differ from
physical or real property?
• Should the law treat intellectual property
like other forms of property? Why or why
not?
Types of Intellectual Property
• SMALL GROUP
EXERCISE: What
kind or kinds of
intellectual property
can you see in this
picture?
Types of Intellectual Property
•
•
•
•
Trade Secret
Trademark/Trade Dress
Copyright (maybe)
Patent (expired if
protection originally
sought)
• Patent, Trademark, and
Trade Secret are together
often called Industrial
Property
Issues Related to Scope of IPR
•
•
•
•
•
What type(s) of IP does the law protect?
How are the IPR acquired?
Who owns the IPR?
How long do the IPR last?
What is the source of protection for the
IPR?
Why Should the Law Protect IPR
and If So, How?
Main Theories For IPR
• “Natural rights” thesis – IPR are natural rights
deriving from inventor’s humanity
• “Reward-by-monopoly” thesis – IPR are a
reward to for useful service to society of invention
and creativity
• “Monopoly-profit-incentive” thesis – IPR make
it worthwhile for inventors and their capitalist
backers to risk their money in inventions
• “Exchange for secrets” thesis – IPR are part of a
bargain between inventor and society to ensure
that inventions are not kept secret but benefit
society
Main Theories For IPR
• “Efficiency-enhancing” function – IPR
provide consumer with easy way to identify
products with preferred qualities or
characteristics
• Encourage business investments in
“goodwill”
Importance of International
Intellectual Property
• Why study international intellectual
property?
Importance of International
Intellectual Property
• Intellectual capital (knowledge, creativity,
technology) is becoming an increasingly important
source of wealth creation for the world economy
in relation to physical capital (land, natural
resources, manual labor)
• Globalization and the development of digital
communications technologies is resulting in
increased transborder flows of intellectual capital.
• Growth of international trade
TRIPS, Trade and IP
• 1994 agreement (outcome of Uruguay
Round of GATT) establishing enforceable
global minimum (high) standards of IP
protection and enforcement for IPR
(including copyright, patent, trademark,
geographical indications, and trade secret)
Challenges to Developing a
Global Framework for IPR
• What challenges do you think there are for
the development of a global framework for
the protection of IPR?
Challenges to Developing a
Global Framework for IPR
Include
• Legal differences in IPR protection; territorial
nature of IPR
• Cultural differences in attitudes toward IPR and
ownership of these IPR
• Rapid technological changes (such as new digital
technologies) enabling easy/cheap reproduction of
information as well as technological means of
evading IPR laws.
• Difference in approach toward IPR between
developing (importers of technology) and
developed countries (exporters of technology)
Introduction to Treaties
• Treaties are an important source of
international intellectual property law.
• What’s a treaty?
Introduction to Treaties
• A treaty is an agreement by States to be bound by
particular rules. International treaties have
different designations, such as covenants, charters,
protocols, conventions, accords and agreements. A
treaty is legally binding on those States that have
consented to be bound by the provisions of the
treaty–in other words, those States that are party
to the treaty.
• Treaties can also be called conventions,
agreements, protocols.
• Can be multilateral or bilateral
Signature
• What is the effect of signing a treaty? Does
that bring the treaty into effect?
How Does a State Become Party
to a Treaty?
How Does a State Become Party
to a Treaty?
• Ratification
• Accession
Ratification
• Ratification is formal expression of consent.
• To ratify, the State must have previously signed
treaty when open for signature.
• Ratification is a 2 step process requiring approval
by domestic constitutional organ (generally
legislature -in U.S. Senate only) and also formal
transmission of instrument of ratification to
relevant international organization like the United
Nations
Accession
• Accession is an agreement to be bound by
a treaty by a State that has not previously
signed the instrument.
Reservations to Treaties
• What is a reservation to a treaty?
Reservations to Treaties
• This is like an exception to part of the treaty for a
particular state. If a State enters reservation(s) to a
treaty, this indicates that it does not agree to be
bound by a provision or provisions of that treaty.
• However, reservations that would defeat the
object and purpose of the treaty are not
permissible.
• States are also bound by any treaty provision that
has become part of customary international law.
• Treaty itself may prohibit reservations to some or
all provisions.
Customary International Law
• What is customary international law?
Customary International Law
• A general and consistent practice followed
by States that derives from a sense of legal
obligation.
How Do Treaties Become Law?
How Do Treaties Become Law?
• This differs from place to place.
• Many civil law countries, e.g. the Netherlands,
Poland or Italy, view treaties as generally selfexecuting
• Other countries following the British legal system,
such as Canada, generally do not view treaties as
self-executing, but require implementation by
domestic legislation before a private party can
invoke the treaty as a source of rights in national
courts.
• U.S.: some but not all treaties are self-executing.
Doctrine of Change of
Circumstances
• Change of circumstances can sometimes
allow a party to get out of a treaty if the
parties based agreement at time of
ratification on certain essential
circumstances and these change.
• Of course party can’t itself create the
change of circumstances
International System for the
Protection of Intellectual
Property
• Governed by institutions on international
or multilateral level, regional level, and
national level
Main Organizations at Int’l Level
• World Intellectual Property Organization
(WIPO)
• World Trade Organization (WTO)
Other Int’l Organizations With a
Role in Int’l IP System
• World Bank
• UN Conference on Trade and Development
(UNCTAD)
• UN Environment Program (UNEP)
• UN Development Program (UNDP)
• UNESCO
• Food and Agricultural Organization (FAO)
• International Telecommunications Union (ITU)
• World Health Organization (WHO)
• Organisation for Economic Cooperation and
Development (OECD)
Regional Level Organizations
•
•
•
•
•
European Union
Andean Group
Mercosur
NAFTA
APEC (Asia-Pacific Economic Cooperation)
• European Patent Office
• African Regional Industrial Property
Organization (ARIPO), OAPI
National Level
• National Governments
• Regulation of IPR usually takes place at the
federal level, though some countries have
subfederal units of government (e.g. U.S.
States) that may regulate to some extent.
German Länder and Swiss Cantons play little
role in IPR regulation.
• Growing importance of bilateral trade
agreements regulating IPRs
Today, We Focus Mainly on
international organizations: first
WIPO
• Prior to the Uruguay Round Negotiations on
trade-related aspects of intellectual property
that resulted in the TRIPS Agreement,
WIPO was the preeminent international
institution regulating IPRs.
• It still plays an important role even after
TRIPS
WIPO
• WIPO’s headquarters are
in Geneva, Switzerland
• It was established by a
convention (Convention
Establishing the World
Intellectual Property
Organization) that was
concluded in Stockholm in
1967 and entered into
force in 1970.
• There are 184 member
states including Poland &
U.S. – over 90% of
world’s countries
• web site is at:
http://www.wipo.org
WIPO: 2 Objectives
 1. promote protection of IP throughout the
world through international cooperation
(Art. 3 of WIPO Convention)
 2. ensure administrative cooperation
among IP unions established by treaties
administered by WIPO
History of WIPO
• WIPO’s roots date back to 19th century Paris
Convention for the Protection of Industrial
Property (1883) and the Berne Convention for the
Protection of Literary and Artistic Works (1886).
• Both provided for the establishment of an
“International Bureau” to carry out administrative
tasks.
• In1893, these merged as BIRPI (based in Berne),
moved to Geneva in 1960 and became WIPO in
1970.
• In 1974, WIPO became a specialized agency of
the UN system
WIPO Convention
• The Convention Establishing the World
Intellectual Property Organization is a purely
administrative treaty with no substantive
obligations for IPRs.
• All substantive obligations are set out in
separate treaties, with their own contracting
parties and often their own constituent organ
through which those contracting parties act.
• These separate treaties are administered by
WIPO
• There is a common secretariat and a common
budgetary and financial system for all the
treaties.
WIPO’s Budget
• The annual budget of WIPO is around 700
million Swiss francs
• Unusually for a UN body, it is mainly selffinanced.
• 10% of income comes from Member State
contributions
• 90% comes from fees for services rendered
under global protection system and other
activities
WIPO’s Work
• harmonize national intellectual property
legislation and procedures,
• provide services for international applications
for some industrial property rights,
• exchange intellectual property information,
• provide legal and technical assistance to
developing and other countries,
• facilitate the resolution of private intellectual
property disputes, and
• marshal information technology as a tool for
storing, accessing, and using valuable
intellectual property information.
Organs of WIPO
• General Assembly
• WIPO Conference
• WIPO Coordination Committee
Director General of WIPO
• Director General is
Francis Gurry
(Australia) as of
10/2008
• Co-author of our
course book
WIPO Committees
• Much of the important work in WIPO is
done through committees
• Standing committees begin work on
treaties; then convene Diplomatic
Conference
• Also uses working groups
3 Groups of WIPO Treaties
• 1. IP Protection Treaties (provide for
internationally agreed basic standards for IP
protection)
• 2. Global Protection System Treaties (provide
for one international registration/filing that is
effective protection in any signatory state)
• 3. Classification Treaties (create international
classification systems that help standardize
practice of industrial property offices for
inventions, trademarks, industrial designs.
Facilitates search and retrieval of registrations)
IP Protection Treaties
• 1. Berne Convention for the Protection of
Literary and Artistic Works (164)
• 2. Brussels Convention Relating to the
Distribution for Programme-Carrying Signals
Transmitted by Satellite (33 – not Poland)
• 3. Geneva Convention for the Protection of
Producers of Phonograms Against
Unauthorized Duplication of Their
Phonograms (77 – not Poland)
• 4. Madrid Agreement for the Repression of
False and Deceptive Indications of Source on
Goods (35– not US)
• 5. Nairobi Treaty on the Protection of the
Olympic Symbol (47 – not US)
IP Protection Treaties Cont’d
• 6. Patent Law Treaty (PLT) – (19) Poland and
US are both signatories
• 7. Paris Convention for the Protection of
Industrial Property (173)
• 8. Rome Convention for the Protection of
Performers, Producers of Phonograms and
Broadcasting Organizations (88 – not US)
• 9. Trademark Law Treaty (TLT) (42 – Poland
has signed but not ratified)
• 10. WIPO Copyright Treaty (WCT) (70)
• 11. WIPO Performances and Phonograms
Treaty (WPPT) (68)
IP Protection Treaties cont’d
• 12. Film Register Treaty (13) Poland and US
have both signed but not ratified
• 13. Singapore Treaty on the Law of
Trademarks (11) entered into force Mach 2009
not Poland
• 14. Washington Treaty on IP in Respect of
Integrated Circuits not yet in force: 2 accessions
(Bosnia-Herzegovina, St. Lucia), 1 ratification
(Egypt)
Global Protection System
Treaties
• 1. Patent Cooperation Treaty (PCT) (141)
• 2. Madrid Agreement Concerning the Int’l
Registration of Marks (56) not US
• 3. Madrid Protocol (78)
• 4. Hague Agreement Concerning the
International Deposit of Industrial Designs (55
– not US or Poland)
• 5. Lisbon Agreement for the Protection of
Appellations of Origin and their International
Registration (26 – not US or Poland)
• 6. Budapest Treaty on the International
Recognition of the Deposit of Microorganisms
for the Purposes of Patent Procedure (72)
Classification Treaties
• 1. Locarno Agreement Establishing an
International Classification for Industrial
Designs (50 - not Poland, US)
• 2. Nice Agreement Concerning the
International Classification of Goods and
Services for the Purposes of the Registration of
Marks (83)
• 3. Strasbourg Agreement Concerning the
International Patent Classification (59)
• 4. Vienna Agreement Establishing an
International Classification of the Figurative
Elements of Marks (25 – not US)
Enforcement under WIPO
• The WIPO treaties and conventions don’t establish
any dispute settlement mechanism.
• The Paris and Berne conventions permit members
to initiate dispute settlement before the
International Court of Justice
• In late 1990s, proposals were made for a stand
alone WIPO interstate dispute settlement
mechanism but did not move forward because of
concerns about WTO dispute settlement
mechanism
WIPO and Dispute Resolution
Between Private Parties
• The WIPO Arbitration and Mediation Center
administers arbitration and mediation procedures
to resolve international commercial disputes
involving IPR
• Stated out as a dispute resolution service provider
under ICANN Uniform Domain Name Dispute
Resolution Policy (UDRP) – became leading
provider of these services
WIPO Worldwide Academy
• Founded in 1998 by then Director General Kamal
Idris
• Various academic programs and services,
especially to help developing countries with
developing well-functioning IPR systems.
• These include 6 week summer school for students,
distance learning courses open to anyone,
partnerships with Turin School of Law, Lund
Unviersity, Africa University and the University
of South Africa Policy, training program for
policy advisors, professional development
programs, essay competitions, specialized IP
library
Developing Countries’ Views of
WIPO
• Before TRIPS, what was the attitude of
developing countries toward WIPO as the
forum for the development of international
standards? Why?
GATT Uruguay Round
• Industrialized (developed) country trade
negotiators sought to establish a new
international system for the protection of
IPR
• Wanted to shift IPR regulation from
WIPO to the GATT (now the WTO)
Main Reason to Shift IPR
Regulation to GATT: Better
Enforcement
• Shifting to GATT (now WTO) would
permit the use of trade-based remedies to
enforce international IPR standards.
Attitude of Developing
Countries Toward This Shift
• In the mid-1980s, what was the position of
many developing countries, such as Brazil
and India, toward the shift to international
IPR regulation by GATT?
• Why?
Attitude of Developing
Countries Toward This Shift
• Many developing countries objected to GATT
as an international regulator of IPR because they
believed GATT to be biased in favor of the needs
of developed countries and unresponsive to the
needs of developing countries. They believed
WIPO was the appropriate forum for international
IPR regulation.
• WIPO eventually (in 1987) was granted observer
status in GATT negotiations on TRIPS but debate
over whether GATT should develop substantive IP
standards did not entirely go away.
TRIPS
• TRIPS stands for “trade-related aspects of
intellectual property rights.”
• Concluded after long and complex Uruguay
Round negotiations that lasted from 1983 to 1993.
• TRIPS Agreement is part of the WTO
Agreement signed in Marrakesh in April, 1994
• WTO established as of Jan. 1, 1995
World Trade Organization
• What is the WTO and what does it do?
• How many members does the WTO have?
World Trade Organization
• WTO is an international organization that
deals with the rules of trade between
nations. It is a forum for countries to air
disputes over trade issues.
• How many members does the WTO have?
153 (much of the world)
Accession to the WTO
• What does a country have to do to
become a WTO member?
Accession
• Every country that wants to join the WTO
has to negotiate a Protocol of Accession
with WTO Members.
• This Protocol provides for specific
obligations regarding trade that must be
accepted by the new member, who is also
under general obligations of WTO
membership
WTO Governance
• Member governments run WTO.
• Decisions are normally made by consensus.
Pros and cons?
• The Ministerial Conference is the highest
authority. It meets at least once every 2
years.
• General Council
WTO Secretariat
• WTO Secretariat is
located in Geneva,
Switzerland
• Has around 500 staff and
is headed by a Director
General (currently Pascal
Lamy) appointed in 2005
by members for 4 yr term
• Budget is around 127
million Swiss francs.
Individual member
contributions are
calculated on the basis of
the share of total trade
carried out by that
2 Basic Principles in
GATT/TRIPS
• 1. Most favored nation treatment (MFN)
TRIPS Art. 4
• 2. National Treatment TRIPS Art. 3
3 Main Components of TRIPS
Agreement
• 1. Minimum Substantive Standards of IPR
protection to be adopted by all WTO members –
TRIPS incorporates many provisions of Berne
Convention and Paris Convention. We will
discuss many of these substantive standards in
later classes on patents, copyrights, trademarks,
and trade secrets
• 2. Obligations imposed on all members to
establish effective systems of IPR enforcement
• 3. Intergovernmental dispute settlement
procedures that apply to all members, including
possible trade sanctions for failure to comply with
a ruling by the WTO Dispute Settlement Body.
Developing Countries’ Privileges
• Developing country WTO members have
certain privileges.
• These include extended implementation
times for the TRIPS Agreement.
TRIPS Grace Periods
• Developed Countries had to implement TRIPS
by Jan. 1, 1996 (1 year after TRIPS took effect)
• Developing Countries: Art. 65 – Jan. 1, 2000 plus
could delay patent protection for an additional 5
years (to Jan. 1, 2005) where did not provide
patent protection in a particular area of technology
as of Jan. 1, 1995
• Least Developed Countries – Art. 66 – Jan. 1,
2006 (extended to 2016 at Doha for medicines), in
2005 extension of transitional period to 7/1/2013
• Should late joiner developing countries get special
extended periods not tied to the date of entry into
force of TRIPS?
TRIPS Technical Assistance
Requirements
• Art. 66 – must provide incentives to promote and
encourage technology transfer to least developed
country – LDCs want this requirement to be made
more effective, so in Doha in Nov. 2001, ministers
agreed that a mechanism to monitor and
implement these obligations would be put in place.
Developed countries must submit annual reports
on their incentives
• Art. 67 – must provide technical and financial
cooperation in favor of developing and least
developed countries
Who is a Developing Country?
• No definitions of these in TRIPS
• ¾ of TRIPS members self-identify as
developing
Least Developed Countries
(LDCs)
• Also not defined in TRIPS
• Identified by UN list
• 32 TRIPS members as of 2006 out of 49
LDCs total as of Jan 2009. 33 in Africa.
Dispute Settlement under TRIPS
• WTO Agreement incorporates Dispute
Settlement Understanding (DSU), which
applies to all Members
• Panels are appointed to initially hear cases
• Appellate Body (AB) decides appeals on
questions of law
• Usually Members (sitting as Dispute
Settlement Body) automatically adopt
decisions of panels/AB
TRIPS HAS TEETH: Trade
Sanctions
• If a Member doesn’t bring its measures into
conformity with TRIPS following adoption
of panel/AB decision by DSB within a
reasonable time (ca. 15 months),
complaining Member can withdraw trade
concessions up to level of harm it is
suffering from the noncompliance.
Benefits Claimed by the WTO
for Its System
System helps promote peace
Disputes are handled constructively
Rules make life easier for all
Freer trade cuts the cost of living
Provides more choice of products
Trade raises incomes
Trade stimulates economic growth
Basic principles make life more efficient
Governments are shielded from lobbying by special
interests
System encourages good government
Criticisms of WTO System
• What do you think are some commonly
voiced criticisms of the WTO and TRIPS?
Criticisms of WTO System
• What are some commonly voiced criticisms of the
WTO? Criticisms include
• 1. WTO is a dictatorial tool of rich and powerful
nations and special interest lobbies for the rich and
powerful within nations.
• 2. WTO is responsible for the destruction of jobs
and increased poverty and inequality.
• 3. WTO focuses too extensively on commercial
interests and ignores important concerns about
health, safety the global environment, and
development