World Intellectual Property Organization

WIPO IP Enforcement News: January to March 2004

I. SOME WIPO ACTIVITIES

New WIPO IP Enforcement Website

The WIPO Enforcement Division has prepared a new website, dedicated to issues pertaining to the enforcement of intellectual property rights. The website provides information on the activities of WIPO in this field, and on IP enforcement developments that are taking place around the globe. The site also provides answers to a set of frequently raised questions. With a view to the theme selected for presentations at the second session of the Advisory Committee on Enforcement (ACE) to be held in June 2004, i.e. the role of the judiciary in the enforcement of intellectual property rights, a considerable part of this question and answer part refers to matters related to IP litigation. In addition, this website integrates parts of the former IPEIS Electronic Forum, amended according to the recommendations of the first session of the ACE in June 2003. The Forum is, for the time being, open to registered participants of the ACE.

The website will be launched shortly at
http://www.wipo.int/enforcement/en/index.html

See also the recommendations for restructuring the Forum (contained in document WIPO/ACE/1/7 Rev.) at
http://www.wipo.int/documents/en/meetings/2003/ace/pdf/wipo_ace_1_7rev.pdf

 

Cooperation with the European Commission

In the framework of WIPO's cooperation with the European Commission, Directorate-General Enlargement, under the Technical Assistance Information Exchange Office (TAIEX) program, WIPO provided its expertise in two events organized by TAIEX, namely (1) the National Workshop on Consumer Risk from Fraudulent Misrepresentation of Goods, held in Bucharest on February 9, 2004, which targeted representatives from business as well as consumer associations, and (2) the Regional Workshop for Judges and Prosecutors on the Enforcement of IPRs, which took place in Brussels on March 8 and 9, 2004. Presentations made by WIPO experts and other speakers, as well as the respective workshop programs, will be made available by TAIEX on their website in due course.

See http://taiex.be/

 

II. FORTHCOMING EVENTS

Second session of the WIPO Advisory Committee on Enforcement (ACE), June 28-30, 2004

The Second Session of the ACE will be held from June 28 to 30, 2004, at WIPO headquarters in Geneva. According to the outcome of the first session in 2003, the forthcoming session will include expert presentations on the role of the judiciary and quasi-judicial authorities, as well as of prosecution, in enforcement activities, including related issues such as litigation cost .

The draft agenda of the session is available at
http://www.wipo.int/documents/en/meetings/2004/ace/index_1.htm

 

The Hague Conference on Private International Law : next steps in the preparation of a Convention on exclusive choice of court agreements

The current draft Convention, issued in December 2003 after the first session of a Special Commission, contains a number of provisions which still have to be consolidated, among them those concerning the extent to which IP-related disputes would be excluded from the scope of the Convention, and several other provisions which may have particular implications on disputes involving intellectual property rights. In order to work on these IP related issues, and to advance on the respective provisions, an informal IP meeting will be held from March 29-31, 2004, at USPTO headquarters in Washington, to which Members and Observers of the Hague Conference, including WIPO, as well as representatives from the business community and bar and trade associations, have been invited. The formal second session of the Special Committee is then scheduled to be held in The Hague from April 21-27, 2004.

The current draft, as well as background material related to the discussions of this Convention, are available at the website of the Hague Conference, see
ftp://ftp.hcch.net/doc/workdoc49e.pdf.

 

WCO/Interpol : First Global Congress on Combating Counterfeiting, May 25-26, 2004

On May 25 and 26, 2004, the First Global Congress on product and trademark counterfeiting will take place in Brussels, organized by WCO and Interpol, with the support and participation of WIPO, and in cooperation with various non-governmental organizations. The purpose of the congress is to develop collective understanding of the extent of counterfeiting and piracy, and to identify expedient measures, for both the public and the private sector, in shaping future enforcement strategies and actions. The congress is organized at high-level, and aims to, ultimately, produce concrete recommendations on new methods and initiatives for addressing counterfeiting at the different levels. The Agenda of the Congress will be made available shortly.

 

III. LINKS

UK : Publication of a new Patents Bill which includes new measures to improve the system for enforcing patent rights

On January 15, 2004, a new Patents Bill was introduced in the House of Lords, which, once in force, will amend the existing Patents Act 1977. The new instrument introduces new measures to aid in enforcement of patent rights, recognizing the problem of often lengthy and expensive patent litigation. To address this, the Bill, inter alia, makes available a new procedure which enables the Controller to give, upon request, non-binding opinions related to questions of validity relating to novelty or inventive step, and on questions of infringement (see Clause 12). These views are intended to offer an expedient means in resolving actual or potential disputes, by encouraging out-of-court settlements. Clause 11 introduces another measure aimed at fostering the enforcement of patent rights, namely by extending the protection of the patent proprietor against claims for groundless threats.

The text of the proposed Bill is available at
http://www.publications.parliament.uk/pa/ld200304/ldbills/018/2004018.pdf

 

EU (I) : Commission proposals for establishing a Community Patent Court

On February 2, 2004, the European Commission presented proposals for two Council Decisions concerning the establishment of a new Community Patent Court. In the Community, patent litigation must take place before the competent national courts, both as concerns patents granted by national patent offices, and patents granted by the European Patent Office. The proposals aims at allowing the resolution of disputes under the future Community Patent system, in particular those on validity and infringements of Community Patents. The first proposal would confer jurisdiction concerning certain disputes over Community patents on the Court of Justice, the second proposal suggests to establish the Community Patent Court, as well as a specialized Chamber within the Court of First Instance to hear appeals against the Community Patent Court's judgments.

See press release at

http://europa.eu.int/rapid/start/cgi/guesten.ksh?p_action.gettxt=gt&doc=IP/04/137|0|RAPID&lg=EN

The text of the proposals can be found at onvention, and several

http://europa.eu.int/eur-lex/en/com/pdf/2003/com2003_0827en01.pdf

http://europa.eu.int/eur-lex/en/com/pdf/2003/com2003_0828en01.pdf

 

EU (II) : Enforcement Directive - vote of the European Parliament

On March 9, 2004, the European Parliament voted in favor of the draft Directive on the enforcement of intellectual property rights. The text voted by the Parliament contains a number of compromise provisions compared to the initial proposal made by the Commission, taking into account the different interests involved, including right holders, commercial users, consumers, and intermediaries. For instance, the current text does not contain a provision on criminal sanctions which had been included in the initial Commission proposal . However, the Commission stated that the possibility of proposing in due course further measures providing for criminal sanctions in this field will be examined. It was also emphasized that the Directive does not prevent Member States from applying criminal sanctions if they wish to.

Another example, while the original proposal permitted damages worth double of the royalties of fees that would normally have been charged for licensing the IP right, the latest version introduces damages on the basis of "at least" the amount of royalties or fees which would have been due.

The proposed Directive now has to be approved by the Council of Ministers. See press release of the Commission at

http://www.europa.eu.int/rapid/start/cgi/guesten.ksh?p_action.gettxt=gt&doc=IP/04/316|0|RAPID&lg=EN;

The text voted by the Parliament is available at

http://register.consilium.eu.int/pdf/en/04/st06/st06376.en04.pdf

 

World Customs Organization (WCO) - IPR Strategic Group: New Initiative to strengthen border measures against counterfeiting in the Asia Pacific Region

In February 2004, the IPR Strategic Group of WCO has announced the setting up of a new Secretariat in the Asia/Pacific region. The purpose of this initiative is to aid WCO members in the region in combating counterfeiting more effectively at the border, including by providing assistance in facilitating the exchange of information between industry and customs administrations, and in coordinating IPR training activities.

See http://www.wcoomd.org/ie/en/press/wco.ipr.01.04v3.htm

 

Organisation for Economic Cooperation and Development (OECD) : Business and Industry Advisory Committee (BIAC) suggests to update OECD's work on counterfeiting

In preparation of the OECD Committee on Scientific and Technological Policy, which took place on January 29-30, 2004, BIAC issued a discussion paper which addresses the role OECD could potentially play in the intellectual property arena, including in the field of IP enforcement. In that context, the paper emphasizes the often weak IP enforcement mechanisms in many countries, and suggests that OECD expands its profile concerning all areas of counterfeiting. For instance, it is suggested to update the OECD 1998 Report on the Economic Impact of Counterfeiting, and to develop the international legal framework in this field through an Anti-counterfeiting Convention.

For details see

http://www.biac.org/Textes/BIAC_TEXTES/BIAC_SubmissionsPDF/Tech/FIN03-12-Affirmative_Case_for_IPR.pdf

 

Digital Piracy : Report of US policy group examines effect of digital piracy on economic growth and productivity

The Committee for Economic Development, a Washington policy group, has released, in March 2004, a report which contributes to the debate on perspectives for copyright issues in the Internet age, including enforcing copyright and fighting online piracy by technological measures, and balancing the different interests involved, within the context of the economic health of a country.

See http://www.ced.org/docs/report/report_dcc.pdf

 

US : Survey on impact of Recording Industry Association of America (RIAA) lawsuits against online music file sharers

A survey, undertaken in the US and published in January 2004, finds that the percentage of illegal music downloading over the Internet appears to have heavily dropped since RIAA began filing lawsuits, in September 2003, against users alleged to have undertaken massive copyright infringements.

For more details see

http://www.pewinternet.org/reports/pdfs/PIP_File_Swapping_Memo_0104.pdf

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