Export University in association with InfoAmericasExport University in association with InfoAmericasExporting 201 – Focus on Latin AmericaExporting 201 – Focus on Latin America

Presented by:Presented by: JosJoséé I. I. RojasRojas

May 25, 2007May 25, 2007

Intellectual Property in Latin America

Intellectual Property Rights (IPRs)Intellectual Property Rights (IPRs)

► Intellectual property refers Intellectual property refers to rights relating to and to rights relating to and which arise under laws of which arise under laws of trademarks, patents, trademarks, patents, copyrights, trade secrets, copyrights, trade secrets, unfair competition, and unfair competition, and related laws. related laws.

► The protection of IPRs is The protection of IPRs is essential to technological essential to technological progress, competitiveness progress, competitiveness and the well-being of any and the well-being of any country.country.

“Intellectual property rights are a cornerstone of every modern society and free-market economy, and are particularly important for Latin America’s developing economies.”

Unknown Latin American ScholarAlexis de Tocqueville Institution

Important ConsiderationsImportant Considerations► Proprietary and Derivative Rights:Proprietary and Derivative Rights:

Ascertain proprietary rights and derivative rights of the product, Ascertain proprietary rights and derivative rights of the product, service, or publication you wish to place in Latin America service, or publication you wish to place in Latin America

You are entitled to the sale, distribution, and placement of what you You are entitled to the sale, distribution, and placement of what you legally own legally own

You can commercialize and do business with the property of others You can commercialize and do business with the property of others only when you are licensed or authorized to do so through a duly only when you are licensed or authorized to do so through a duly executed legal contract.executed legal contract.

► Proprietary rights are embedded in patents, trademarks, Proprietary rights are embedded in patents, trademarks, service marks, and copyrights and give their owners the service marks, and copyrights and give their owners the exclusive right to their use. exclusive right to their use.

► Derivative rights are those given to expansions of, or Derivative rights are those given to expansions of, or extensions to, the use of a given product, new applications of a extensions to, the use of a given product, new applications of a product, or translations. product, or translations.

Example: A copyright on a book is a proprietary right. The Example: A copyright on a book is a proprietary right. The translation into another language of the same work is a derivative translation into another language of the same work is a derivative right. While the copyright is given to the original author, the right. While the copyright is given to the original author, the derivative copyright is given to the translator. Translation of the derivative copyright is given to the translator. Translation of the work is prohibited without the prior authorization of the original work is prohibited without the prior authorization of the original author or owner. author or owner.

Important ConsiderationsImportant Considerationscontinued…continued…

► Ask before your IP enters your export Ask before your IP enters your export market in Latin America:market in Latin America: It is crucial to ask for advice from qualified legal It is crucial to ask for advice from qualified legal

counsel (who usually will work with local counsel counsel (who usually will work with local counsel in the country involved) on how to protect your IP in the country involved) on how to protect your IP in that market.in that market.

IP rights are some of the strongest points in your IP rights are some of the strongest points in your favor in a contract negotiation.favor in a contract negotiation.

International IPR Protection International IPR Protection BackgroundBackground

► Most prominently governed by the Paris Convention Most prominently governed by the Paris Convention for patents and trademarks and the Berne for patents and trademarks and the Berne Convention for copyright, both administered by the Convention for copyright, both administered by the World Intellectual Property Organization (WIPO). World Intellectual Property Organization (WIPO).

► Mounting disputes over IPRs lead to the inclusion of Mounting disputes over IPRs lead to the inclusion of trade-related IPRs on the agenda of the GATT/WTO trade-related IPRs on the agenda of the GATT/WTO Uruguay Round and the resulting Trade Related Uruguay Round and the resulting Trade Related Intellectual Property Rights Agreement (TRIPs) of Intellectual Property Rights Agreement (TRIPs) of 1994.1994.

Protecting IPRs in Latin AmericaProtecting IPRs in Latin America

► The WTO Agreement on Trade-Related Aspects of The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement):Intellectual Property Rights (TRIPs Agreement): is the Uruguay Round (GATT - General Agreement is the Uruguay Round (GATT - General Agreement

on Tariffs and Trade) agreement covering on Tariffs and Trade) agreement covering protectionprotection and and enforcementenforcement of intellectual of intellectual property rights;property rights;

represents the most far-reaching multilateral represents the most far-reaching multilateral agreement towards global harmonization of IPRs;agreement towards global harmonization of IPRs;

applies to all WTO member countries, including all applies to all WTO member countries, including all Latin American countries and their territories;Latin American countries and their territories;

covers patents, trademarks, copyrights and related covers patents, trademarks, copyrights and related rights, industrial designs and undisclosed rights, industrial designs and undisclosed information (trade secrets);information (trade secrets);

provides for Dispute Resolution and Parallel provides for Dispute Resolution and Parallel ImportationImportation

Enforcement of IPRs and Enforcement of IPRs and the TRIPs Agreementthe TRIPs Agreement

► The TRIPs Agreement requires all WTO members to The TRIPs Agreement requires all WTO members to provide certain minimum standards of intellectual provide certain minimum standards of intellectual property protection, as well as effective IPR property protection, as well as effective IPR enforcement. enforcement.

► Important notes:Important notes: Enforcement issues are becoming more important Enforcement issues are becoming more important

as more countries enact laws which are consistent as more countries enact laws which are consistent with the TRIPs Agreement. with the TRIPs Agreement.

Compliance issues regarding IPRs typically will not Compliance issues regarding IPRs typically will not be inadequate foreign laws, rather inadequate be inadequate foreign laws, rather inadequate enforcement of TRIPs-consistent IPR laws.enforcement of TRIPs-consistent IPR laws.

USTR Special 301 Report and USTR Special 301 Report and Overcoming DeficienciesOvercoming Deficiencies

► The 2006 “Special 301” annual review from the Office The 2006 “Special 301” annual review from the Office of the U.S. Trade Representative provides detailed of the U.S. Trade Representative provides detailed results of the effectiveness of IPR protection in 87 results of the effectiveness of IPR protection in 87 countries, including Latin America. countries, including Latin America. The report includes countries placed on Watch Lists The report includes countries placed on Watch Lists

for countries non-compliant with respective IP for countries non-compliant with respective IP regulations.regulations.

Latin American countries currently on Watch Lists Latin American countries currently on Watch Lists are: Argentina, Brazil, Bolivia, Chile, Colombia, Costa are: Argentina, Brazil, Bolivia, Chile, Colombia, Costa Rica, Dominican Republic, Ecuador, and Guatemala. Rica, Dominican Republic, Ecuador, and Guatemala.

► A top priority for the administration is working with A top priority for the administration is working with foreign governments to address weak IPR protection foreign governments to address weak IPR protection and enforcement.and enforcement.

The Global Congress/Interpol The Global Congress/Interpol Latin American Regional Forum on Latin American Regional Forum on

Combating Counterfeiting and PiracyCombating Counterfeiting and Piracy► Held in Rio de Janeiro in June 2005.Held in Rio de Janeiro in June 2005.► Addressed constraints and development of IPR protection and Addressed constraints and development of IPR protection and

enforcement cooperation between the governing agencies. enforcement cooperation between the governing agencies. ► An important factor noted was establishment and optimization An important factor noted was establishment and optimization

of effective IPR legal protection and enforcement systems in of effective IPR legal protection and enforcement systems in order to promote significant social wealth, tax fairness, order to promote significant social wealth, tax fairness, economic developmenteconomic development

► Another highlight was the number of Latin American regions Another highlight was the number of Latin American regions increasing their attention on IPR protection in accordance with increasing their attention on IPR protection in accordance with their obligations under the TRIPs agreement. their obligations under the TRIPs agreement.

► Concluded with all participating Latin American countries in Concluded with all participating Latin American countries in agreement that protection of IP rights is key to economic agreement that protection of IP rights is key to economic development and continuing to enhance efforts on IP development and continuing to enhance efforts on IP enforcement. enforcement.

Resulting Enforcement EffortsResulting Enforcement Efforts

► Global forums, legislation and procedures Global forums, legislation and procedures are encouraging Latin American countries to are encouraging Latin American countries to establish specialized IP crimes investigation establish specialized IP crimes investigation units, appoint specialized IP crimes units, appoint specialized IP crimes prosecutors, and allocate more resources prosecutors, and allocate more resources toward the training of judges who adjudicate toward the training of judges who adjudicate enforcement claims. enforcement claims.

Protecting your IPRsProtecting your IPRsin Latin Americain Latin America

► No centralized registration system (such as under No centralized registration system (such as under Madrid Protocol) adopted in Latin America to date.Madrid Protocol) adopted in Latin America to date.

► Engage with IP attorney who will collaborate with an Engage with IP attorney who will collaborate with an international network of foreign counsel for international network of foreign counsel for comprehensive IP protection. comprehensive IP protection.

► Sources for locating IP attorneys:Sources for locating IP attorneys: Martindale-HubbellMartindale-Hubbell INTA (International Trademark Association)INTA (International Trademark Association) ASIPI (Asociación Interamericana de la Propiedad Intelectual)ASIPI (Asociación Interamericana de la Propiedad Intelectual)

Additional Resources:Additional Resources: USPTO International Page: USPTO International Page:

http://www.uspto.gov/main/profiles/international.htmhttp://www.uspto.gov/main/profiles/international.htm

Questions & AnswersQuestions & Answers

Jose I. RojasJose I. Rojas

Miami, Florida, USAMiami, Florida, USA