WIPO IP Enforcement News: May 2003
1) Patent Litigation Insurance (PLI)
An insurance covering the risks of patent litigation may seem a promising business strategy for an effective enforcement of patent rights, in particular from the perspective of small and medium-sized enterprises (SMEs). In the EU, the US and in Japan, a number of insurance companies have developed respective insurance schemes, covering patent, trademark and copyright litigation. In order to examine in detail these schemes, as well as the legislative background in EU member states, the European Commission has commissioned a study on possible insurance schemes against the risks of patent litigation.
The final report can be found under http://www.europa.eu.int/comm/internal_market/en/indprop/patent/docs/patent-litigation-insurance_en.pdf
The study looks in detail into existing insurance schemes, and has consulted companies (primarily SMEs), patent lawyers, attorneys and insurance companies throughout the EU and in the US. It concludes, inter alia, that no insurance scheme has yet proven to provide adequate cover, in particular with a view to SMEs, due to the high levels of premium and the low level of indemnity. The report also outlines practical elements for insurance schemes and submits a number of recommendations to be further developed.
2) Intellectual Property Enforcement in the European Union - Announcement concerning the Protection of Electronic Pay Services against Piracy
The European Union continues its activities for an improved intellectual property enforcement within the Internal Market. In addition to two recent Commission initiatives of January of this year, the proposed Directive on measures and procedures to ensure the enforcement of intellectual property rights (COM (2003) 46(01)), and the proposal for a Council regulation concerning customs action against goods suspected of infringing certain intellectual property rights (COM (2003) 20), the European Commission has launched, on April 24, 2003, a report regarding electronic piracy within the internal market.
Efficient legal protection of Europe's electronic pay-services is considered to be critical for the further development of these fast growing economies. In that respect, the EU has agreed in 1998 on Directive 98/84/EC, which aims at a minimum protection for these "conditional access" services, in particular by prohibiting all commercial manufacturing, distribution and marketing activities related to so-called pirate smart-cards and other devices which would circumvent the access protection of these services. Five years later, the Commission now submits a report which examines the implementation of this Directive in the EU Member states.
The report also provides some interesting information regarding the interrelation of the electronic pay-services Directive and the Directive on copyright in the information society (2001/29/EC) which already was under negotiation during the adoption of the pay-services Directive. For that reason, it was decided not to bring copyright protection under the umbrella of the pay-services Directive but to understand both Directives complementary; provisions on technological protection measures for copyrighted content and on anti-circumvention are therefore contained in the information society Directive.
The report is available under http://europa.eu.int/comm/internal_market/en/media/condac/functioning/com2003-198/com-2003-198_en.pdf
3) Copyright Enforcement Provisions in India
The Indian Copyright Act sets rules for both the subject matter of copyright protection and its enforcement. This article of Zakir Thomas, Registrar of Copyright in the Indian Copyright Office, provides some detailed information on the part of the copyright enforcement regulations. For example, provisions on injunctions and other temporary measures against copyright infringements are examined, as well as certain aspects of criminal proceedings.
The article is available under http://18.104.22.168/CW/articles/127/cworld_0302_18n1.htm
4) Coalition for Intellectual Property Rights (CIPR): Survey on Consumer Attitudes and Behaviour towards Counterfeiting in Moscow
Much has been written on the level and kind of counterfeited goods that flood the markets today. However, an aspect that still requires examination is the question on how consumers perceive this development, and how they would behave in a concrete situation confronted with counterfeited goods.
On March 19, 2003, a survey has been released which was undertaken jointly by CIPR and the Pharmaceutical Research and Manufacturers of America (PhRMA), with support from the International Federation of Consumer Organizations ((KonfOP) and the Consumer Union of Russia. This survey was undertaken during 2002 in Moscow, and it examines the attitude of consumers towards the various categories of counterfeited goods available on the market. About 1200 consumers have been interviewed ; the questionnaire examines, for instance, the kinds of counterfeited products consumers were confronted with, the brands that were counterfeited most, and the level of the consumers awareness towards the aspect of counterfeit when buying goods. Moreover, consumers were asked to give their perception on the danger of different categories of counterfeited goods, and the necessity of rendering punishments more serious. The release states that the survey is not meant to be an academic exercise in sociology, but it certainly provides some interesting data on consumer attitudes in that context.
The release, together with a link to download the survey, is available under http://www.cipr.org/activities/conferences/03_19_2003/index.htm
5) Germany : The Principle of Non-Disclosure in Intellectual Property Litigation - Significant Change in Legislation and Jurisdiction
In common law jurisdiction, it is a widely accepted concept that parties in civil proceeding are obliged to produce documents or other evidence required by the adverse party. On the other hand, in Germany, like in various other continental law systems, in principle such obligation did not exist under the Civil Procedure Code, in particular if such evidence was against the partys own interests. This principle has become relevant in particular in copyright litigation, where it often meant to be a significant obstacle for the right holder to get hold of the necessary evidence.
In recent times, a fundamental change in the German civil procedure can be seen : the first alleviation took place in 2002 by legislative modifications of the Civil Procedure Code. In addition, a recent judgement of the German Federal Supreme Court has now admitted further steps to enable the plaintiffs access to evidence in the hands of the defendant.
The article by Mr. Dittmer, head of the intellectual property practice group in the Berlin office of Baker & McKenzie, looks into details of the decision, its compliance with the TRIPS agreement, and its importance for future intellectual property procedure and jurisdiction in Germany.
The article can be found under http://22.214.171.124/CW/articles/126/010314ib.htm
6) The Judgements Project of the Hague Conference on Private International Law Report on the Second meeting of the informal working group and draft choice of court agreement
The Judgements Project aims at the establishment of common rules for international jurisdiction and enforcement of foreign judgements. One of the focus areas in the discussion is the inclusion of intellectual property rights in this set of rules, in particular with a view to a possible rule on choice of court clauses for contracts dealing with intellectual property rights. Another key issue concerns the limitation to B2B choice of court clauses.
The projects working group, established in 2002, has held its second meeting in January 2003. The discussion on intellectual property focussed in particular on the question which IP rights should be included in a choice of court clause. In the first meeting, it had been suggested to include only copyright, but to exclude the area of patents and trademarks (both registered and unregistered), in particular with a view to the validity of such rights. In the second meeting, the propsal of including all IP rights was made. In addition, it was proposed to exclude piracy cases, where no contractual relationship between the parties exists. The participants agreed to further examine these issues.
In March 2003, the working group released a preliminary working paper which includes a draft text on choice of court agreements. In this draft, Art. 1 lit. 3k) excludes the issue of validity of patents, trademarks and other intellectual property rights (to be defined) from the scope of the Convention.
The draft text on choice of court agreement can be found under ftp://ftp.hcch.net/doc/genaff_pd08e.pdf
The full report of the second meeting is available under http://www.cptech.org/ecom/jurisdiction/reportjan03.pdf
7) United States Trade Representative (USTR) Annual Report on Adequacy and Effectiveness of Intellectual Property Protection
On May 1, 2003, USTR announced the results of its annual review, called the Special 301 report, which examines in detail issues of intellectual property protection and enforcement in 74 countries around the globe. According to the report, the situation in a number of countries has slightly improved compared to the results of the previous year. Special attention has been given to the aspect of counterfeiting and piracy, in particular with a view to unauthorized copies of media products such as CDs, VCDs, DVDs and CD-ROMs. The report also stresses the importance of the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT) to set international standards for the protection of copyrighted works in the Internet environment.
The report is available at http://www.ustr.gov/reports/2003/fullreport.pdf