IP lawWord

　　国际知识产权

　　International IP Law

　　国际知识产权法

　　国际知识产权

　　Introduction I. II. III. I. II. Nature and Features of IP What is nature of IP: private right or sth of ‘commons’ What are features of IP What are forms of IP (WIPO or WTO TRIPS Agreement) How to justify IP (why IP) and their implications Rights over information (信息权利的理论)– the public goods character of IP rights cf physical property Natural property rights in ideas, creations (自然财产权 理论) Fairness arguments (公平理论), cf free-riders Incentives to create/innovate (激励理论) (may not be the same things) Positive and negative commons (积极和消极公域理论)– proprietary arguments versus public domain/open access proponents

　　III. IV.V.

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　　The Principal IP Institutions Multilateral organisations –“Core” bodies World Intellectual Property Organisation WIPO) World Trade Organisation (WTO) –“Non-core” Food and Agriculture Organisation (FAO) International Telecommunications Union (ITU) World Health Organisation (WHO) Secretariat of the Convention on Biological Diversity (CBD) United Nations Education Scientific and Cultural Organisation (UNESCO) UNDP, UNEP, UNICEF World Bank, OECD

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　　The Principal IP Institutions Regional and Trade Integration Organisations I.European Union (27 member states) OHIM (trade marks and designs) II. North American Free Trade Agreement (Canada, USA, Mexico) (NAFTA) III. Andean Community (Boliva, Columbia, Ecuador and Peru) IV. El Mercado Comun del Sur (Mercosur)(Argentina, Brazil, Paraguay and Uruguay) http://www.wendangwang.com-Pacific Economic Cooperation (APEC) (includes China, USA, Russia and Australia)

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　　The Principal IP Institutions

　　I. II.

　　Regional Industrial Property Offices European Patent Organisation Community Plant Varieties Office Eurasian Patent Organisation (Russia and former Soviet states) African Regional Intellectual Property Organisation (ARIPO) and African Industrial Property Organization (OAPPI) Coherence of IP institutions IP institutions - fragmentary and may conflict Coherence issue: global governance

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　　Non-Governmental Organisations Non-Governmental Organisations (NGOs) –Role as observers/lobbyists –“Traditional” organisations – International Literary and Artistic Association (ALAI), International Association for the Protection of Industrial Property (AIPPI), LES –Others – industry and professional groups, human rights and environmental rights activists, religious groups, research bodies, etc Enterprises and individuals – the main users of the international IP system! (Q: individual right

　　vs. state’s right)

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　　Basic Principles and Features I. II. III. IV. V. The National treatment and reciprocity Art. 5(1)(3) of the Berne Convention Art. 2, 3 of the Paris Convention Art. 2 of the Rome Convention Art. 3 of the TRIPS Agreement But Art. 6 (1) 、Art. 7(8) of the Berne Convention The Most favored-nation treatment Art. 4 of the TRIPS Agreement The Independence vs. Territoriality Art. 4bis of the Paris Convention and Art. 5(2) of the Berne Convention The Ubiquity and exhaustion of rights Art. 6 of the TRIPS Agreement The Right of priority Art. 4 of the Paris Convention

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　　Foundations of International IP Law Introduction Growing transnational economic, science and technology, cultural and other activities Conflict between territorial IP and transnational economic activities (or globalised economy) entails in

　　ternational cooperation on national IP laws and policies Political rationales International relations

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　　Challenges of International IP Law Globalization and privatization of “public goods” (knowledge) IPRs are not a sealed system any more and IPRs have been strengthened by “married” with international trade and investment The tense relationship between IPRs and human right, development, public health, innovation, climate change, competition, traditional knowledge and other public policies (WIPO development agenda) How to justify globalization of IPRs protection (cf.

　　International Public Goods and Transfer of Technology Under a Globalized Intellectual Property Regime, edited by Keith

　　E. Maskus and Jerome H. Reichman, Cambridge University Press 2005) How to balance public interest and private interest under globalized intellectual property system (‘balance’ will be dependent on context ***?)

　　Food security (Food and Agriculture Organization); New rights: traditional knowledge and control over genetic resources (WIPO) Strong argument for reform of IPRs system for example, in copyright: educationalists, libraries, archives (orphan works),persons with disabilities, particularly visual impairment;researchers;consumers, particularly internet users;“free culture”, “copyleft”, Pirate Party, open source software movements and human rights: to education, freedom of expression, to development International IP law making and enforcement issues Limits of IP laws and technological, economic, political and social development

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　　International Copyright Law Introduction I. Legal issues under copyright laws - what is the copyright and related rights; - what can be copyrightable, e.g. copyright-ability issue; - How to obtain a copyright; - rights conferred to a copyright owner or holder; - exceptions to copyright; - term of protection; - protection of copyright - copyright dispute settlement system II. Anglo-American conception of copyright and the continental concept of copyright (Droit d’Auteur) - No definition under the Berne Convention III. Diversity of copyright legal systems (conflict, coordination and cooperation)

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　　International Copyright Law International Cooperation in Copyright Law The Berne Convention (1886) The TRIPS Agreement (1994) The WIPO Copyright Treaty (1996); The Rome Convention (1961) The Geneva Convention (or the Phonograms Convention) (1971) The WIPO Performances and Phonograms Treaty (1996)

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　　International Copyright Law Who can enjoy copyright protection under treaties or the criteria of eligibility for protection I. Nationality or place of first publication (Art. 3(1)of the

　　Berne Convention); I. Habitual resident (Art. 3(2)of the Berne Convention); II. The criteria of eligibility for protection of cinematographic works, works of architecture and certain artistic works (Art. 4 of the Berne Convention) III. Art. 1(3) of the TRIPS Agreement

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　　International Copyright Law I. II. 1. 2. 3. III. National Treatment (Art. 5 (1) of the Berne Convention) Provisions The country of origin (Art.5(4)) The country of the Union where works first published, or the cases of simultaneously published; or Under certain condition, the country of the Union of which the author is a national (Art.5(4)(c)(i)) However for cinematographic works and works of architecture (Art.5(4)(c)(ii)) Possible Restriction of protection (Art. 6 of the Berne Convention

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　　International Copyright Law I. II. How to obtain a copyright - automatic protection Art. 5(2) of the Berne Convention - no formalities required; Art. 2.2 of the Berne “(2) It shall, however, be a matter for legislation in the countries of the Union to prescribe that works shall not be protected unless they have been fixed in some material form”, is “fixation” a formality within the meaning of Art. 5.2 of the Berne Convention? Independence of Protection (Art. 5(2) of the Berne Convention) The Most - Favored - Nation Treatment (Art. 4 of the TRIPS Agreement)

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　　International Copyright Law The subject matter of copyright protection – expressions (Art.9(2) of the TRIPS Agreement) I. Expressions, idea/expression dichotomy copyright in perfumes, fashion design, computer software II. Original, creativity and facts (I) European conception of ‘original’ vs. US doctrine of ‘sweat of the brow’. However, the United States Supreme Court in Feist Publications, Inc. v. Rural Telephone Service Co.,499 U.S. 340 (1991) (II) Database protection – the European Union Database Directive (Directive 96/9/EC)

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　　International Copyright Law Who can enjoy copyright protection – authorship vs. ownership NOT provided under the Berne and TRIPs and other IP conventions National law issues: conflict of laws e.g. “works made for hire” - who is author, who is owner, what different conceptions in common law and European civil law countries

　　ITAR-TASS RUSSIAN NEWS AGENCY v. RUSSIAN KURIER, INC, United States Court of Appeals,Second Circuit, 1998, 153 F. 3d 82

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　　International Copyright Law I. Rights conferred (min. international standards and NT) Moral rights: inalienable; including the rights of attribution and integrity, the right of first publication, the right to withdraw a work from circulation***;the means of redress for safeguarding the rights shall be governed by the legislation of the country where protection is claimed Conception of moral rights in US and Europe - Turner Entertainment Co. v. Huston (Court of Appeal of Versailles, 1994, Chambrre Civile): without authors permission, can colorization of motion pictures “Asphalt Jungle” be broadcaste

　　d in France? Is that infringing authors moral right of integrity under French law? Art. 6bis of the Berne and the TRIPS Agreement

　　(I)

　　(II)

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　　International Copyright Law Rights conferred II. The right of translation (Art. 8 of the Berne) III. The right of reproduction in any manner or form (Art. 9 (1) of the Berne) IV. The right to perform dramatic, dramatico-musical and musical works (Art. 11 of the Berne) V. The right to broadcast and communicate to the public, by wire, re-broadcasting or loudspeaker of any other analogous instrument, the broadcast of the work (Art. 11bis (1) of the Berne) VI. The right of public recitation (Art. 11 ter of the Berne) VII. The right to make adaptations, arrangements or other alterations of a work (Art. 12 of the Berne)

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　　International Copyright LawVIII. The right to make cinematographic adaptations and reproductions of a work (Art. 14 of the Berne) IX. The “droit de suite” in Works of Art and Manuscripts (optional) (Art. 14ter of the Berne) )(Resale Rights – EC Directive 2001/84: Art. 1 Subject matter of the resale right – Member States shall provide, for the benefit of the author of an original work of art, a resale right, to be defined as an inalienable right, which cannot be waived, even in advance, to receive a royalty based on the sale price obtained for any resale of the work, subsequent to the first transfer of the work by the author)

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　　International Copyright LawX. Right to enforce protected rights (Art. 15 of the Berne) XI. The rental rights (Art. 11 of the TRIPS Agreement Art. 7(1) of the WCT, 2006/115/ECRental right and lending right) XII. The right of communication to the public (Art. 8 of the WCT)

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　　International Copyright Law I. Obligations Concerning Technological Measures (Art. 11 of the WCT) Conceptual different from the act of infringing the copyrights? Legal liabilities and remedies different (civil, how about criminal one)? Obligations Concerning Rights Management Information (Art. 12 of the WCT)

　　II.

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　　International Copyright Law Exceptions and Limitations to Copyright (Art. 9(2), Art.10 and Art.10bis of the Berne Convention, Art.13 of the TRIPS Agreement and Art.10 of the WCT) Term of Protection (Art.7 of the Berne Convention, in particular Art. 7(8) of the Convention) Term of protection in US and EU

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　　International Copyright Law Doctrine of fair use and the right management measure or technological measure protection (Art. 14 of the WCT, the provisions under the TRIPS Agreement) Possibility of control of circulation, presentation and exhibition of works (Art. 17 of the Berne Convention) Retroactivity issue: works existing on convention’s entry into force (Art. 18 of the Berne Convention) Neighboring Rights and the WWord Regional Copyright Systems

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　　International Copyright Law Copyright and changing technologies Copyright and freedom of speech Copyright in Software and Open Source

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　　International Patent Law I. 1. 2. 3

　　. 4. 5. 6. 7. 8. II. III. Introduction Legal issues under patent laws: Subject matter of a patent, e.g. what can be patentable; Criteria of grant a patent, e.g. patentability issue; How to obtain a patent; What rights conferred to a patent What exceptions or limitations to patent rights How long a patent shall be protected, e.g. term of protection What about use of a patent (other use without authorization of the right holder) How patent rights shall be protected Diversity of patent legal systems International regulations of patent laws (including dispute settlement system)

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　　Summary of Treaties in the Field of PatentsParis Convention 1 8 8 3 1 7 2 - Applies to industrial property -Provides framework principles such as the national treatment, the right of priority and the independence of patents granted in different Contracting States for the same invention -Lays down common rules such as inventors’ right to be named in the patent, compulsory licenses, period of grace for the payment of fees and temporary protection of inventions at certain international exhibitions-Agreement for international cooperation with regard to the filing, searching, publication and preliminary examination of patent applications and dissemination of technical information -Establishes international filing and processing system for patent applications -Regulates formal requirements of international applications - Establishes the International Patent Classification (IPC)

　　PCT

　　1 9 7 0 1 9 7 1 1 9 7 7 2 0 0 0 1 9 9 4

　　1 3 8 5 8

　　Strasbourg Agreement

　　Budapest Treaty

　　6 8

　　- Agreement that recognizes the effect of a deposit of a microorganism or patent purposes with any “international depositary authorities”

　　PLT

　　1 7

　　- Provides, in general, maximum sets of formality requirements in respect of national/regional patent applications and patents

　　TRIPS Agreement

　　1 5 1

　　-Internationally-agreed trade rules for intellectual property rights -Incorporates most of the substantive provisions of the Paris Convention -Provides framework principles such as national treatment and most-favoured-nation principle -Establishes minimum standards concerning the availability, scope and use of patent rights, such as patentable subject matter, rights conferred by a patent and exceptions to such rights and enforcement of intellectual property rights, including patents

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　　International Patent Law 1. 2. 3. (1) (2) (3) 4. National Treatment (Art. 2 of the Paris Convention, Art. 3 of the TRIPS Agreement) Right of Priority (Art. 4) The meaning of the right of priority The legal effect of the right of priority (Art. 4B) Conditions for grant right of priority Who Prior filing and the subsequent filing (Art. 4A (1) (3) Art. 4C(4)) Period of priority (Art. 4C) How (Art. 4D)

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　　International Patent Law Independence of Patents (Art. 4 bis of the Paris Convention) The Right of the inventor to be mentioned (Art. 4 ter of the Paris Convention) WTO Member but non party to the Paris

　　Convention must comply with the substantive patent provisions of the Paris Convention (Art. 2.1 of the TRIPS Agreement); The principle of the most-favored nation treatment (Art. 4 of the TRIPS Agreement)

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　　International Patent Law (e) (f) (g) (h) Other substantive Patent Provisions under the TRIPS Agreement minimum exclusive rights (Art. 28) Availability of judicial review (Art. 32) Minimum term of protection (Art. 33) Reversal of the burden of proof in deciding whether a product was obtained by a patented process (Art. 34)

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　　International Patent Law Obligations concerning procedures for acquiring or maintaining patent rights (Part IV of the TRIPS Agreement); Obligations to ensure effective enforcement of patent (Part III of the TRIPS Agreement); Dispute settlement system, etc. (Part V of the TRIPS Agreement) Issues not addressed under the TRIPS Agreement, including “ownership of patents”, definitions of “invention” 、”novelty” 、”inventive step” and “useful”

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　　The Subject Matter of Patent II. What is patent - a patent is a right granted to the inventor of a technological product or process that is new (or novel), useful and involves an inventive step. The subject matter of the Patent (what can be patented?) Article 2 of the Chinese Patent Law (2008) In this Law, “inventions-creations” mean inventions, utility models and designs. “inventions” means any new technical solution relating to a product, a process or improvement thereof; “utility model” means any new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use; “design” means any new design of the shape, the pattern, or their combination, or the combination of the colour with shape or pattern, of a product, which creates an aesthetic feeling and is fit for industrial application.

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　　The Subject Matter of Patent35 U.S.C. 101 Inventions patentable: whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title;

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　　The Subject Matter of PatentArt. 27(1) of the TRIPS Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial applications.

　　Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and prargraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally producedTRIPS Agreement protects both products and processes patent and prevents prohibition against certain types of discrimination

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　　InventionIV. A. B. What is an invention No definition under the TRIPS Agree

　　ment or the Paris Convention 35 U.S.C. 101 “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvemetn thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. 100 (a) the term “invention” means invention or discovery Invention and Discovery (Chakrabarty case, patenting life forms, questions, pages 166-167) ; Biotechnological Inventions: genetic resources, plant variety and traditional knowledge (TK); Business application software (BILSKI v. KAPPOS [DIRECTOR OF THE U.S. PTO] 130 S. Ct. 3218 (2010) (pp. 173-175) Question: why difficulty and challenges?

　　C. D. E. F.

　　G.

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　　Patentability I. Patentability: three criteria (or four criteria) Introduction Art. 27(1) of the TRIPS: any inventions new, involve an inventive step and are capable of industrial applications. However, no definitions of “novelty” 、”inventive step” and “useful” have been provided under the TRIPS Agreement Novelty: no prior art – disclosed (publication or use, time and place); Inventive step: non-obviousness, criterion is “ a person having ordinary skill in the art” Utility: “useful” or “capable of industrial application” Enablement (not provided under TRIPS ): the best known means for practicing the invention (US) or a means for enabling the practice of the invention (Europe)

　　II. III.

　　IV. V.

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　　Exclusions From Patentable Subject Matter A. B. C. What cannot be patented (Art. 27(2) (3) of the TRIPS) Necessary to protect ordre public or morality (Art. 27(2)) Diagnostic, therapeutic and surgical methods (Art. 27(3)(a) Others (Art. 27 (3) (b))

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　　Patent Rights Conferred 1. Rights conferred (Art. 28 of the TRIPS) A patent shall confer on its owner the following exclusive rights: (a) Where the subject matter of a patent is a product, to prevent third parties not having the owner’s consent from the acts of: making, using, offering for sale, selling, or importing﹡ for these purposes that product; (b) Where the subject matter of a patent is a process, to prevent third parties not having the owner’s consent from the act of using the process, and from the acts of: using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process.

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　　Patent Rights Conferred 2. ﹡ Rights conferred (Art. 28 of the TRIPS) Patent owners shall also have the right to assign, or transfer by succession, the patent and to conclude licensing contracts. this right, like all other rights conferred under this Agreement in respect of the use, sale, importation or other distribution of goods, is subject to the provisions of Article 6 which provides “For the purposes of dispute settlement under this Agreement, subject to the provisions of Article 3 and 4 nothing in this Agreement shall be used to address the issue of the exhaustion of intellectual property rights.”

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　　Exceptions to

　　Patent Rights Exceptions to the rights conferred (Art. 30 of the TRIPS) “Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.” Please also note Article 6 of the TRIPS Agreement which provides for the exhaustion of intellectual property rights.”

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　　Compulsory License Art. 5 A (2)(4) (5) of the Paris Convention Art. 31 (f) of the TRIPS Agreement Implementation of paragraph 6 of the Doha Declaration on the TRIPS Agreement and public health (2003) Chapter VI of Chinese Patent Law (2008) provide for provisions on compulsory license

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　　Patent Cooperation Treaty Patent Cooperation Treaty (PCT) (1970) Why PCT traditional approach and its problem: the national systems, the Paris Convention Objectives of the PCT To rationalize and cooperate with regard to the filing, searching and examination of patent applications and to disseminate the technical information; no “international patents”, still national patents; to complement the Paris Convention