WIPO Assemblies Conclude
October 1, 2008
Chairman Uhomoibhi congratulates Director General Gurry
Topped by the appointment of Mr. Francis Gurry as the next Director General of the World Intellectual Property Organization (WIPO), the WIPO Assemblies concluded a day ahead of schedule, on Tuesday, September 29, 2008, following a review of activities over the past year and discussions on the Organization’s future work program. The WIPO Assemblies bring together the 184 member states of the Organization.
In his concluding remarks, the Chairman of the WIPO General Assembly, Ambassador Martin I. Uhomoibhi, Permanent Representative of
Mr. Gurry thanked all member states for their support and for the constructive spirit that had prevailed throughout the Assemblies. This, he said, provided “a good basis to tackle all the challenges of the future.”
Appointment of New Director General
Internal Oversight Mechanisms
The General Assembly took note of the reports of the WIPO Audit Committee and of the report of the Director of Internal Audit and Oversight Division. The Division’s mission is to independently audit and evaluate WIPO control and business systems and processes and to provide recommendations for improvement to ensure the achievement of WIPO’s mission and goals.
Committee on Development and IP (CDIP)
Member states took stock of the work of the CDIP, which was established by decision of the General Assembly in 2007 when it adopted the WIPO Development Agenda comprising 45 cross-cutting recommendations. In the two formal meetings of the Committee in March and July 2008, member states had considered 15 of the 45 recommendations and expressed the need for mechanisms to facilitate coordination with other WIPO bodies so as to ensure effective implementation.
Ambassador Trevor Clarke of Barbados, Chair of the CDIP, said that developed countries had recognized the importance of the recommendations to developing countries. He said that while modest progress had been made, there was a lot of ground work to cover before completion of the work plan for effective implementation of the 45 recommendations.
The GA took note of progress and approved the work program for implementing the 5 costed recommendations from a list of 26 requiring additional resources. (see: http://www.wipo.int/edocs/mdocs/govbody/en/wo_ga_36/wo_ga_36_4_rev.doc.). Member states agreed to make resources available to the secretariat in line with WIPO’s program and budgetary processes.
The General Assembly also took note of a proposal to convene a donor conference in 2009 to help mobilize additional resources, by encouraging the establishment of trust funds or other voluntary funds, specifically for LDCs, while continuing to accord high priority to finance activities in Africa. This is with a particular focus to promote the legal, commercial, cultural and economic exploitation of intellectual property in these countries. The donor conference would also seek to improve the coordination and management of extra budgetary resources at WIPO through an exchange of ideas and best practices. The General Assembly approved the initiation of consultations on the conference, for the purpose of submitting the budgetary requirements to the next Program and Budget Committee. (For further information, please see: http://www.wipo.int/edocs/mdocs/govbody/en/wo_ga_36/wo_ga_36_11.doc).
Work of the Standing Committee on Copyright and Related Rights (SCCR)
The General Assembly took note of the current status of the work in the SCCR, in particular in the areas of protection of broadcasting and cable casting organizations, the protection of audiovisual performances, and exceptions and limitations to copyright.
On the protection of broadcasting organizations and cable casting organizations, member states decided that the November 2008 session of the SCCR would continue to discuss this question with the aim of finding a way forward. Discussions will be based on an informal paper by the Chair, which will outline his understanding of the main positions and divergences to be addressed.
On the protection of audiovisual performances, the General Assembly noted that member states had expressed a willingness to find a way forward on this issue during the March 2008 (16th) session of the SCCR. In light of this, the secretariat had been requested to prepare a factual document summarizing recent activities and the positions of members of the SCCR. An information meeting on this subject will also be organized in the context of the November (17th) session of the SCCR.
The General Assembly noted that WIPO had organized a number of national and regional seminars in Africa, Asia, and Latin America to promote progress on the issue, at the levels of national legislation and international consensus-building. In preparing these events, WIPO had followed a flexible and balanced approach to the protection of performers at the national level, in such practical areas as contractual relations and collective bargaining, the exercise and transfer of rights, and remuneration systems. WIPO will continue to organize similar events in the coming year. Member states agreed to keep the issue on the agenda of the General Assembly in 2009.
Member states also noted the status of discussions on the question of exceptions and limitations to copyright, in particular the Committee’s decision to mandate the WIPO secretariat to prepare a study on exceptions and limitations for the benefit of educational activities, including distance education and the crossborder aspects. An information meeting on studies relating to this question will take place in connection with the November session of the SCCR.
Advisory Committee on Enforcement (ACE)
The General Assembly noted that the November 2007 session of the ACE had addressed the issue of international, regional and national cooperation in the field of enforcement of intellectual property rights with a particular focus on criminal remedies. These discussions had paved the way to updating the WIPO Casebook on the Enforcement of Intellectual Property rights, the second edition of which will be available in the near future.
Delegates underscored the importance of WIPO’s role in the enforcement of intellectual property rights, and noted the growing number of enforcement-related activities undertaken by the WIPO secretariat in the last year. These included technical assistance and legislative advice in response to the many requests by member states as well as cooperation with public and private sector partners to organize the Fourth Global Congress on Combating Counterfeiting and Piracy in Dubai in February 2008.
Work of the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC)
Delegates took note of a progress report on the work of the IGC following the renewal of its mandate by the General Assembly in 2007. This new mandate required the IGC to accelerate its work, and left open the possibility for specific outcomes, including an international instrument or instruments.
The General Assembly noted the work under the Committee on the analysis of gaps in the protection available for traditional cultural expressions/expressions of folklore and for traditional knowledge. These gap analyses have been developed and reviewed through an open commentary process in preparation for the IGC’s October 2008 session. Delegates also noted the IGC’s decision to update and re-issue working documents on the protection of genetic resources for in-depth discussion at its next session, and the invitation for intersessional commentary on the issue of genetic resources. With a view to accelerating the Committee’s work, in line with its mandate, the October 2008 session of the IGC will consider establishing intersessional mechanisms to build on the progress achieved so far in a structured and focused manner. Member states also welcomed the further successful implementation of the WIPO Voluntary Fund for Indigenous and Local Communities, supported by generous donations, noting that it had significantly enhanced the depth and diversity of representation in the IGC process.
Standing Committee on the Law of Patents (SCP)
Member states welcomed the revival of discussions within the SCP and noted the progress it had made in establishing a work program. By decision of the General Assembly in 2007, the WIPO secretariat prepared and released in April 2008 an overview of current international patent issues covering the different needs and interest of all member states. This was welcomed by the SCP at its June 2008 meeting as a good basis for discussion. The report will remain open for written comments until the end of October 2008 and will serve as the basis of the SCP’s discussions at its next meeting in early 2009 along with four additional preliminary studies on: dissemination of patent information (including, inter alia, the establishment of a database on search and examination reports); exceptions from patentable subject matter and limitations to the rights, inter alia, research exemption and compulsory licenses; patents and standards and client-attorney privilege.
Delegates further endorsed a recommendation to convene in 2009 a conference on issues relating to the implications of patents on certain areas of public policy, such as health, the environment, climate change and food security.
Internet Domain Names
The General Assembly reviewed WIPO’s activities in relation to the protection of intellectual property in the Internet Domain Name System (DNS). The WIPO Arbitration and Mediation Center administers dispute resolution procedures under the Uniform Domain Name Dispute Resolution Policy (UDRP) established by the Internet Corporation of Assigned Names and Numbers (ICANN) as of December 1999 on the basis of recommendations made by WIPO. By September 2008, the Center had administered some 14,000 UDRP and UDRP-based cases. In 2007 alone, the Center witnessed an 18% increase over the previous year, administering a total of 2,156 cases covering 3,545 domain names registered in generic top-level domains (gTLDs) and any of 55 country code top-level domains (ccTLDs) for which the Center also provides its services. This represents the highest number of UDRP cases handled by the Center since the UDRP took effect. WIPO’s UDRP proceedings through 2007 have involved parties from 143 countries and been conducted in 15 different languages.
WIPO continues to take steps and to develop tools to ensure fair and transparent UDRP procedures, to enhance consistency of decisions under the UDRP and to help parties assess their chances in UDRP proceedings. Recent developments within the DNS had expanded opportunities for mass registration of domain names and consequently increased the challenges for intellectual property rights owners to enforce their rights. The Center is actively engaged with ICANN to bring to its attention circumstances that may frustrate the intended functioning of the UDRP. WIPO is also engaged in efforts that aim to enhance the observance of principles of intellectual property protection in the introduction of new gTLDs and in the introduction of internationalized domain names (IDNs: non-Latin script) at the top level, which ICANN foresees taking place in the course of 2009.
Digital Access Service for Priority Documents
Member states reviewed progress in the implementation of a new voluntary service - digital access service for priority documents (DAS) – which responds to the business needs of applicants by enabling them to meet priority document requirements of patent offices without having physically to obtain and submit certified copies to each of them. The service will also facilitate the work of patent offices which may also obtain priority documents under alternative arrangements. The priority right established by the Paris Convention for the Protection of Industrial Property is a basic principle of the patent system which offers anyone who has filed an application for a patent in a member country a right of priority, for the purpose of filing in other member countries. The DAS service, which is being developed by WIPO in cooperation with participating patent offices, will thus offer a simple and safe digital alternative to filing paper copies of priority documents with multiple patent offices. The system leverages existing systems, such as the Electronic Document Interchange system under the PCT, and offers a gateway (via WIPO’s PATENTSCOPE® website) to digital libraries to be maintained by patent offices as well as the WIPO secretariat. It is currently envisaged that development and testing of communication arrangements between WIPO and at least some of the pilot offices will be completed in early 2009 allowing practical use to begin during the second quarter of 2009. For further details of the DAS system please see http://www.wipo.int/edocs/mdocs/govbody/en/a_45/a_45_2.doc.
Offices participating in the pilot scheme include the European Patent Office, the Israel Patent Office, the Japan Patent Office, the National Board of Patents and Registration of Finland, the State Intellectual Property Office of the People’s Republic of China, the United Kingdom Intellectual Property Office, the United States Patent and Trademark Office and WIPO in its capacity as a receiving office under the PCT.
Article 6ter of the Paris Convention for the Protection of Industrial Property (Paris Convention)
Member states approved a revised communication procedure under Article 6ter of the Paris Convention for the Protection of Industrial Property. (Article 6ter prohibits use, without the authorization of competent authorities, as trademarks or elements of trademarks, of state emblems, official hallmarks and emblems of international intergovernmental organizations.) Under the revised procedure, Article 6ter communications will be published electronically every six months. This will simplify communication procedures and provide greater legal security for all parties involved, as the new publication dates will create generally applicable starting points for the calculation of the time limits for transmittal of any objections by concerned parties (see Article 6ter(4) and (6)). Further details of the revised procedure is available in Annex 2 of the following document: http://www.wipo.int/edocs/mdocs/govbody/en/p_a_40/p_a_40_1.doc
Matters concerning the Madrid Union
Member states of the Madrid system for the international registration of trademarks amended a number of rules governing that system to improve accessibility of information regarding the fate of international registrations in designated contracting parties. Under the current procedures, if the trademark office of a contracting party designated in an international registration, following examination, has decided that the trademark in question cannot be protected in the territory of that contracting party, it is required to submit a refusal notification to WIPO within a given time period. However, such a requirement currently does not exist when the trademark office has decided that the trademark can be protected. This system of “tacit acceptance” will be changed as from September 1, 2009 by the introduction of an obligation for designated contracting parties to submit so-called “statements of grant of protection”. The change is accompanied by a transitional arrangement whereby any contracting party that requires more time to implement this obligation will have until January 1, 2011 to do so.
Delegates further agreed to a proposal that a study be conducted by WIPO on the implications and advantages of including other languages in the language regime of the Madrid system. The working languages of the Madrid System are currently English, French and Spanish. The study will focus on the benefits of including Arabic, Chinese, Portuguese and Russian as official filing languages. An expansion of the number of filing languages of the Madrid system is expected to boost membership of the system and to further stimulate growth in the use of the system both within new member countries and established members.
Matters concerning the Hague Union for the International Registration of Industrial Designs
Member states of the Hague system amended a number of rules governing that system to improve accessibility of information regarding the fate of international registrations in designated contracting parties. This will better enable the holder of an industrial design right to determine the status of protection of a design by establishing a formal framework for the communication of a statement of grant of protection.
Member states also agreed to extend the current fee reduction scheme under the Hague Agreement Concerning International Registration of Industrial Designs to certain intergovernmental organizations the majority of whose members are Least Developed Countries (LDCs). In 2007, the Hague Union Assembly agreed to reduce fees to 10% of the prescribed fees for applicants from LDCs. This fee reduction scheme became effective on January 1, 2008. As from January 1, 2009, an international application filed by an applicant from a contracting party that is an LDC or a member state of an intergovernmental organization, the majority of whose members are LDCs, and whose international application is exclusively governed by the 1999 Act of the Agreement will qualify for the fee reduction scheme. The fee reduction is intended to improve the ability of design creators from LDCs to benefit from the Hague system by reducing the costs of filing design applications under the system.
The Hague Union Assembly also took note of a study on the implications of adding the Spanish language as the third working language of the Hague system, in addition to French and English. The addition of Spanish as a working language of the Hague system received broad support from members of the Hague Union Assembly and other member states of WIPO. As a result, the Hague Union Assembly requested WIPO to submit proposals for the necessary amendments to the regulations. The addition of Spanish is expected to boost new accessions; act as a clear and strong incentive for Spanish-speaking countries to join the Hague system and/or facilitate their accession process; and be of direct interest to the offices of existing members for whom Spanish is their official language of operation. It would further benefit industrial design owners in both existing member countries who would benefit from a more streamlined and cost-effective means of protecting their industrial designs.
Investment Plan for Madrid and Hague Systems
Member states took note of progress achieved in the implementation of a four-year investment program (2008-2011) to update the information technology architecture of the Madrid and Hague systems. The IT Modernization Program, which aims at generating efficiencies in the administration of the two systems, comprises three categories of sub-projects (internal operation, external communication and governance and technical) and is to be implemented in three phases, over the period of the project for a total estimated cost of some 15.3 million Swiss francs.
Matters concerning the Lisbon Union for the Protection of Appellations of Origin
The Lisbon Union Assembly (http://www.wipo.int/meetings/en/details.jsp?meeting_id=16028 ) agreed to establish a working group to explore the introduction of possible improvements to the procedures of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration. The Lisbon System established under the Lisbon Agreement facilitates the international protection of appellations of origin. The system is used by the 26 member states to the Lisbon Agreement (list in PDF (http://www.wipo.int/treaties/en/documents/pdf/lisbon.pdf )). The system offers the possibility of obtaining the protection for an appellation of origin in the 25 contracting parties to the Lisbon Agreement (i.e., in addition to the protection already existing in the country of origin) by using one single registration procedure.
Matters concerning the Patent Cooperation Treaty (PCT) Union
Member states adopted a number of amendments to the Regulations under PCT. These include amendments relating to the supplementary international search system, due to enter into force on January 1, 2009. The amendments concern clarification of procedures for the refund of the supplementary search handling fee and the supplementary search fee; the right of agents to practice before any International Authority specified to carry out a supplementary international search; and the effects of a withdrawal of a request for supplementary international search.
Member states also agreed on amendments to clarify the procedure to be followed by the PCT receiving office where the receiving office has accorded, albeit mistakenly, an international filing date and intends to issue a declaration under Article 14(4) that the international application is to be considered withdrawn because it does not contain the claim(s) element or the description element (Article 11(1)(iii)(d) and (e)).
With regard to Amendment of Claims, member states adopted a proposal to require that, in the case of amendments of the claims under Articles 19 and 34, applicants submit a replacement sheet or sheets containing a complete set of claims rather than, as at present, replacement sheets only for those sheets of claims which, on account of an amendment, differed from sheets previously filed.
Member states agreed that the amendments relating to the supplementary international search system will enter into force on January 1, 2009, whereas the amendments relating to the processing of the international application under Article 14(4) and the amendment of claims will enter into force on July 1, 2009.
Quality Management Systems for PCT International Authorities
Member states noted the most recent developments concerning the quality management systems set up by each of the International Searching and Preliminary Examining Authorities in accordance with Chapter 21 of the PCT International Search and Examination Guidelines. Reports from each of the International Authorities, setting out how each Authority has implemented and developed its quality management system, are publicly available on the PCT website (see www.wipo.int/pct/en/quality/authorities.html).
Languages of Publication under the PCT
Member states adopted, in the form of an “understanding”, a set of criteria to facilitate decisions relating to the addition of further languages of publication under the PCT. In 2007, the PCT Assembly adopted a decision to expand to ten the number of languages of publication under the PCT (Arabic, Chinese, English, French, German, Japanese, Korean (effective January 1, 2009), Portuguese (effective January 1, 2009), Russian and Spanish). For details of the criteria adopted, please see: http://www.wipo.int/edocs/mdocs/govbody/en/pct_a_38/pct_a_38_4.doc
Eligibility Criteria for Reductions in PCT Fees
Member states discussed a study, prepared by the secretariat following a request by the 2007 PCT Assembly, on the eligibility criteria for determining the group of developing and least developed countries whose applicants should benefit from a reduction of PCT fees (http://www.wipo.int/edocs/mdocs/govbody/en/pct_a_38/pct_a_38_5.doc), suggesting that a combination of criteria based on income or other economic indicators of development of a country and criteria based on the size of a country, reasoned by size of economy, should be used. Member states agreed that the issue should be placed on the agenda of the PCT Working Group in 2009.
Matters concerning the Patent Law Treaty
The PLT Assembly unanimously agreed on the applicability to the PLT and Regulations under the PLT of a number of modifications to the Administrative Instructions under the PCT made in the past year, with immediate effect. Member states further agreed to adopt a modified Model International Request Form with immediate effect. The modified form provides a check-box that indicates the authorization by the applicant to receive advanced copies of notifications by e-mail from the Office, if the Office wishes to do so. Please see: http://www.wipo.int/edocs/mdocs/govbody/en/plt_a_5/plt_a_5_1.doc.
Admission of Observers:
In line with the Organization's commitment to transparency and inclusive debate, the WIPO Assemblies also agreed to grant observer status to five additional international non-governmental organizations and five additional national non-governmental organizations. The list of these new observers is available at: http://www.wipo.int/edocs/mdocs/govbody/en/a_45/a_45_3.doc. As a consequence, 66 IGOs, 217 international NGOs and 49 national NGOs have observer status with WIPO.
Progress Report on the WIPO Construction Project
Member states noted that the construction site for the WIPO headquarters extension re-opened in April 2008 and that construction is on schedule for a completion date of October 2010. Further information is available at: http://www.wipo.int/edocs/mdocs/govbody/en/wo_ga_36/wo_ga_36_6.doc.
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