EBS Law Term 2014 Intellectual Property Law

Fields and Principles

Prof. Martin SenftlebenVU University Amsterdam

Bird & Bird, The Hague

Contents

• intellectual property

• rationale of protection

• international treaties

• international debate on IP protection

• dispute settlement

• research resources

Intellectual property

Intellectual Property

copyright and neighboring

rights

industrial property

Traditional approach: two main branches

Copyright and neighboring rights

• books, writings, plays

• musical compositions

• choreography

• drawings, paintings

• sculptures, architecture

• cinematographic works

• photography

Cultural inspiration:protection of literary and artistic works

• performers

• phonogram producers

• broadcasting organizations

Holders of neighboring rights:

• authors

Copyright holders:

Industrial Property

Technical innovation:protection of products and processes

• inventions

• layout-designs of integrated circuits

• industrial designs

• artistic works

Aesthetic innovation:protection of product appearance

• trademarks

• trade names

• geographical indications

KLM

Market transparency:protection of distinctive signs

Overview of the protection system

Overview of the system

technologycommerce

culture

patent lawtrademark law

copyright law

industrial designs

Example: complex products inventions:

patents

distinctive sign: trademark

appearance: works, industrial designs

Rationale of protection

freedom of competition

areas of IP protection

Bird’s-eye view

freedom of expression

Art. 7 of the TRIPS Agreement

‘The protection and enforcement of

intellectual property rights should contribute

to the promotion of technological innovation

and to the transfer and dissemination of

technology, to the mutual advantage of

producers and users of technological

knowledge and in a manner conducive to

social and economic welfare, and to a

balance of rights and obligations.’

‘natural’ period of market exclusivity

advantage of being first

‘extended’ period of market exclusivity

term of IP protection

Incentive for creativity and innovation

• stimulation of investment

• enhanced possibility of amortization

Further rationales

• reward for creative work

• publication of knowledge/

dissemination of information

• market transparency

• fair competition

International treaties

Principle of territoriality

…national intellectual property rights

…cross-national objects of protection

• effect of protection grant limited to

national territory

• grant only to be repealed by authorities

of the granting state

• acts concerning IP governed by the

domestic laws in the territory concerned

• no need to protect foreigners

Obstacles to IP protection

based on

reciprocity

Solution I: bilateral agreements

copyright and neighboring

rights

industrial property

Berne Convention

Paris Convention

Solution II: international IP treaties

World Intellectual Property Organization (WIPO)

• Berne Convention for the Protection of

Literary and Artistic Works (1886/1967)

• Paris Convention for the Protection of

Industrial Property (1883/1967)

• many further treaties, such as the Patent

Cooperation Treaty (PCT) and the Madrid

Agreement and Protocol (Madrid System)

Establishment of Unions

• Art. 1 of the Berne Convention

‘The countries to which this Convention applies

constitute a Union for the protection of the rights

of authors in their literary and artistic works.’

• Art. 1(1) of the Paris Convention

‘The countries to which this Convention applies

constitute a Union for the protection of industrial

property.’

Example: Paris Union

National treatment and minimum rights

• Art. 5(1) of the Berne Convention:

‘Authors shall enjoy, in respect of works for

which they are protected under this Convention,

in countries of the Union other than the country

of origin, the rights which their respective laws

do now or may hereafter grant to their nationals,

as well as the rights specially granted by this

Convention.’

National treatment and minimum rights

• Art. 2(1) of the Paris Convention:

‘Nationals of any country of the Union shall, as

regards the protection of industrial property

enjoy in all the other countries of the Union the

advantages that their respective laws now grant,

or may hereafter grant, to nationals;

all without prejudice to the rights specially

provided for by this Convention.’

international minimum standard

country A country B

National treatment and minimum rights

World Trade Organization (WTO)

• Agreement on Trade-Related Aspects of

Intellectual Property Rights (TRIPS 1994)

• Annex 1C to the General Agreement on

Tariffs and Trade (GATT 1994)

• inclusion of the intellectual property system

in global trade regulations

Most-favored-nation treatment

• Art. 4 of the TRIPS Agreement:

‘With regard to the protection of intellectual

property, any advantage, favor, privilege or

immunity granted by a Member to the

nationals of any other country shall be

accorded immediately and unconditionally

to the nationals of all other Members.’

• variety of trade-related instruments

• Free Trade Agreements (FTAs)

• EU Association Agreements

• Bilateral Investment Treaties (BITs)

– ‘investment’ includes intellectual property rights

• Bilateral IP Treaties (BIPs)

= in many cases TRIPS-plus approach

Renaissance of bilateral agreements

International Debate on IP Protection

copyright: information

products

patents: technical know-how

distinctive signs: product marketing, goodwill

Development Dimension

copyright: access to

knowledge

patents: access to medicine

distinctive signs: plain packaging

Public Health Dimension

Plain packaging

• grant of protection stimulates investment in

innovative products

• but may also frustrate follow-on innovation

innovation

follow-on innovation

Economic Growth Dimension

need for a

balance

source of flexibility

balancing done already

WTO jurisprudence:

certain adjustments possible, but no renegotiation of the basic balance

• mutual advantage of producers and users

• social and economic welfare

• balance of rights and obligations

TRIPS Objectives and Principles

Settlement of disputes

• complaint by WTO member

• conciliation: consultations, mediation

• Dispute Settlement Body (General Council):

appoints Panel

• Panel: hearings, report

• Appellate Body: appeal only on points of law

• automatic adoption by DSB, unless rejected

– if compliance (-): retaliation on request of plaintiff

– same or other sector (‘cross-retaliation’)

International: WTO Dispute Settlement

These approximate periods for each stage of a dispute settlement

procedure are target figures — the agreement is flexible. In

addition, the countries can settle their dispute themselves at any

stage. Totals are also approximate.

60 days Consultations, mediation, etc.

45 days Panel set up and panelists appointed

6 months Final panel report to parties

3 weeks Final panel report to WTO members

60 daysDispute Settlement Body adopts report (if no

appeal)

Total = 1

year(without appeal)

60-90 days Appeals report

30 days Dispute Settlement Body adopts appeals report

Total = 1y

3m(with appeal)

WTO Dispute Settlement: time schedule

Research Resources

Commentary Literature

Online resources

Blogs

The end.

contact: m.r.f.senftleben@vu.nl