Professor Daniel Gervais' New Book Includes: Confidential Interim Report DS 362

Who won the IPR dispute at the WTO between China and the U.S.? That was the name of my blog posting in October 2008 and gave some leaked information. But what does the official information say? According to WTO document WT/DS362/9, that can be found at the site of the WTO dedicated to DS 362 the Panel expected to issue its final report to the parties to the dispute by November 2008. After that IP Dragon understood that the final report would be ready somewhere in 2009.

I just got an email from Rogier Creemers who has recently started a PhD Research Project at Maastricht University concerning the political and legal side of copyright piracy in China, under the auspices of professor Kamperman Sanders. Sounds very interesting. Mr Creemers pointed me to 'TRIPs Agreement - Drafting History and Analysis', 3rd Edition, November 30, 2008, written by professor Daniel Gervais (Vanderbilt University Law School) in which the main conclusions of the Dispute Settlement Body confidential interim report concerning DS 362 can be found:

• Article 4 Copyright Law is a violation of articles 5 and 9(1) Berne Convention and article 41(1) TRIPs;
• The panel found that the criminal thresholds are not acceptable, however the U.S. did not present enough evidence of actual harm;
• The sale of confiscated goods is a violation of article 46 TRIPs.

These conclusions look lapidary, however, they represent professor Gervais' version of the interim report, not the final report. I was already familiar with Daniel Gervais' 'TRIPs Agreement - Drafting History and Analysis, 2nd Edition and even 1st Edition (both at the excellent Library of the Institute for Information Law (IViR) and recommended by professor P. Bernt Hugenholtz). Updates of good books are important, indeed. Thank you Rogier Creemers.

continue reading ...

Thesis: Paper Tiger or Roaring Dragon, China's TRIPs Implementations and Enforcement

Thesis by Danny Friedmann,
thesis advisor Professor P. Bernt Hugenholtz, Professor Peter K. Yu:
Paper Tiger or Roaring Dragon
China's TRIPs Implementations and Enforcement

Abstract:
Thesis about whether China’s IPR enforcement laws are TRIPs compliant.

At least on paper most of China’s IPR procedural laws are compliant with specific TRIPs provisions. China’s IPR laws are certainly non-compliant to the more general provisions of TRIPs, due to incompatible extra-judicial factors. Nevertheless, no unequivocal preference for a WTO case against China can be given. Another option, although more complicated, to tackle China’s IPR enforcement challenges is to be preferred: to address China’s transparency, market access, uniform application of law, integrity and impartiality of the courts and expertise in and respect for IPR.

Read the thesis here (pdf). Your comments are very welcome at ipdragon at gmail dot com.

continue reading ...

How to protect your software in China?

In China software piracy is one of the big problems. What can be done to protect software?

Copyright

Software is specifically mentioned in article 3 (8) Copyright Law as protectable subject matter.

Although copyrights do not have to be registered, since China is a signatory of the Berne Convention the enjoyment and the exercise of copyrights shall not be subject to any formality, according to article 5 (2) of this treaty, it can be wise to register:

• A registration certificate issued by the software registration institution, recognised by the copyright administration department of the State Council, is a preliminary proof of the registered items, see article 7 Regulations on Computers Software Protection;
• Elliot Papageorgiou of Rouse & Co. International gives another argument: Registration and publication of the software and identity of the owner in the copyright bulletin serves as notice to infringers and raises the presumption that the infringer was "knowingly" infringing copyright. If this is the case, the defendent cannot base his claim on article 30 Regulations on Computers Software Protection, that he neither knows nor has reasonable grounds to know that he infringed, in which case the infringer can, after paying reasonable remunaration, continue to use the copies, if the cease or destruction of these would cause heavy losses to him.

Article 29 Regulations on Computers Software Protection gives the limitation that "[t]he development of a piece of software which is similar to a pre-existing one due to a limit of alternative forms of expression does not constitute an infringement of the copyright in the pre-existing one." In other words, if there is only one technical solution possible, it is not copyrightable. Professor Hugenholtz called this (and I paraphrase) the monopoly of suboptimal technical solutions.

Patent

Article 22 Patent Law states: Any invention or utility model for which patent right may be granted must possess novelty, inventiveness and practical applicability.

• Novelty means that, before the date of filing, no identical invention or utility model has been publicly disclosed in publications in the country or abroad or has been publicly used or made known to the public by any other means in the country, nor has any other person filed previously with the Patent Administration Department Under the State Council an application which described the identical invention or utility model and was published after the said date of filing.
• Inventiveness means that, as compared with the technology existing before the date of filing, the invention has prominent substantive features and represents a notable progress and that the utility model has substantive features and represents progress.
• Practical applicability means that the invention or utility model can be made or used and can produce effective results.

According to Papageorgiou the requirements that a patent needs to be for the purpose of resolving a technical problem and capable of producing a technical result by technical means are analogous to these requirements stated by article 52 (3) European Patent Convention. However, as Wikipedia's article 'Software patents under the European Patent Convention' makes clear there is a plethora of interpretations. What China's interpretation is I am not sure yet. To be continued.

continue reading ...

James Paradise: WTO Case Will Not Start Before North Korean Nuclear Threat Has Ended

James F. Paradise wrote another thought provoking article on AsiaMedia of the UCLA Asia Institute.

The innovation of TRIPS compared to WIPO's conventions (Berne and Paris) is that disputes about enforcement can be dealt with in a binding manner by a panel of the WTO dispute resolution body. In other words WTO's TRIPS is WIPO with teeth (paraphrasing professor Hugenholtz of IViR).

However, the downside of TRIPS is that it is an integral part of WTO, which results in a hybrid treaty: the protection and enforcement of intellectual property law can get entangled with trade interests. Trade tariffs can be traded off for the protection and enforcement of intellectual property and vice versa. This might not always be in the best interest of IPRs.

Paradise points out that geo-political interests such as the North Korean nuclear threat can take priority over trade interests, including intellectual property:

"Recently there has been speculation that the United States, together with the European Union, Japan and Canada, would bring a complaint against China at the WTO because of inadequate enforcement of intellectual property rights. But it appears now that action of that sort -- should it occur -- will not happen immediately, possibly because the United States needs to maintain China's support in dealing with the North Korean nuclear problem. In September, the United States, the EU and Canada did request that a dispute settlement panel examine their complaint that Chinese tariffs on imported auto parts were discriminatory, the first time a dispute with China had risen to this level in the WTO."

Paradise points out a trend in the business community to cope with the rampant infringement of intellectual property proactively by changing their business strategy:

""We need more flexible business models," said George M. Borkowski at a panel primarily focused on copyright at the Los Angeles Asia Pacific Entertainment and Media (APEM) Summit 2006 last week. Borkowski, a partner of the law firm Mitchell Silberberg & Knupp, added that there is not much agreement within the industry itself about how to proceed."

Is this defeatism? I don't think so. As a company you should both try to prevent IPR infringements, but if they do, you should be prepared to protect and enforce your IPRs ferociously.

Read Paradise's article here.

Paradise wrote earlier an excellent review of Mertha's book'The Politics of Piracy: Intellectual Property In Contemporary China', read more here.

continue reading ...