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WIPO Comes to Stanford - Report on Conference by KHIPLA members

Posted By KHIPLA, Feb 10, 2011

WIPO COMES TO STANFORD

Camille Barr

Introduction

On November 19th 2010, six of us attended a conference at Stanford called “Intellectual Property in the International Arena: WIPO comes to Stanford.” WIPO stands for the World Intellectual Property Organization which is an organization within the United Nations. The conference addressed current major issues in international intellectual property law. It was attended by key figures in the field including the Deputy Director General for Innovation and Technology at WIPO (Jim Pooley), the Director of the Copyright Law Division at WIPO (Richard Owens), the Patent Commissioner at the US Patent & Trademark Office (USPTO)(Bob Stoll), several of the leading IP professors in the country (Mark Lemley, Pam Samuelson, Arti Rai, Eric Goldman), experienced attorneys in international IP law from a number of prominent law firms, and lead counsel for major corporations including Google and Paramount Pictures. Below are accounts from each of us of the various panel discussions.

History of WIPO and International IP Law

International intellectual property has an interesting history marked by shifting national interests regarding IP over time. In the late 1800s, predecessor organizations to WIPO were founded based on the desire of a number of countries to enforce intellectual property rights around the world. Several treaties were signed, however, they had little effect and little enforcement power - and the US was not a signatory to any of these until the late 20thCentury. In 1983, however, a large group of countries organized to open up trade relations – the founding of the World Trade Organization (WTO). Among the three main treaties agreed to in these negotiations (the Uruguay Agreements) was the Agreement on Trade-Related Aspects of Intellectual Property Rights or TRIPs which for the first time created strong international IP protections largely because it had teeth through the enforcement tools of trade sanctions. TRIPs required the 150 signatory nations to write minimum IP protections into their own laws, expand patentable subject matter to virtually all important commercial fields, and curtail compulsory licenses. It also allowed each country to own IP rights in other signatory countries.

The strong IP rights required by TRIPs created a backlash in developing countries who felt that strong IP protections allow developed nations to “mine” their cultural and biological resources and charge excessive royalties to use new technologies such as needed pharmaceuticals. Because of this backlash, the increasingly powerful developing countries, most notably India, China, and Brazil, have been resistant to new strengthening of IP rights, and the next rounds of the WTO (the Doha Round) have been stalled for almost 10 years.

Anti-Counterfeiting Trade Agreement

This background of increased resistance to strong IP rights led to the treaty discussed in the first panel of the conference – the Anti-Counterfeiting Trade Agreement (ACTA). ACTA is an agreement among a small number (38) of developing nations meant to bypass the stalled negotiations of IP rights in the WTO. It has been a highly contentious topic in the IP world, largely because all the negotiations for it were highly secretive and because it was seen as an end-run around the developing nations. Despite the secrecy, however, documents on the agreement have been regularly leaked, and a near-finalized version of it was released this month. Notable aspects of ACTA include provisions in which member states can enforce anti-piracy statutes by enabling border security to detain any suspected pirated materials (previously border guards did not have this authority), the possibility of criminal enforcement of IP rights violations, and reduced safe harbors for internet service providers when copyrighted material gets uploaded onto their sites.

The panel discussing ACTA included Richard Owens, Eric Goldman (Professor, Santa Clara Law School), Steven Metalitz (Partner, Mitchell Silberberg & Knupp, LLP) and Fred Von Lohmann (Senior Copyright Counsel, Google). The representatives from WIPO discussed the authority that ACTA can have – and it appears that the Obama administration (negotiations for ACTA began under the Bush II administration) can ratify ACTA without any Congressional input. All panelists seem to agree that the finalized version of ACTA will be much watered down from what had been originally proposed and leaked. The most vocal member of the panel was Fred Von Lohmann from Google who forcefully argued that rushing to clamp down on internet piracy is not the best way to go – excessive enforcement will chill creativity, particularly given that internet piracy is so new and the optimum scope and depth of enforcement is still poorly understood. He said that events overtake the law in nascent technologies; for example, if piracy laws had been drafted right after Napster got shut down, they would probably have been poor because of a lack of understanding of the direction the technology was heading. He argued that developing countries signed on to TRIPs because it was rushed through and they didn’t fully understand what they were getting into. He argued that ACTA is similar to TRIPs and by setting an international precedent that other nations will have to follow if they want to trade with the developing world, it is forcing the hand of developing nations too early.

Saneil Suri

Copyright in a Networked World

This panel included Richard Owens, Director of the WIPO Copyright Law Division, WIPO; Pamela Samuelson, Professor of Law and Director of Berkeley Center for Law and Technology; Scott Martin, Executive Vice President of Intellectual Property at Paramount Pictures; and Tom C. Rubin, Chief Counsel for Intellectual Property Strategy at Microsoft.  The panel was moderated by Stanford Law School Professor, Paul Goldstein.  The panelists identified some key issues in copyright going forward.

Richard Owens began by discussing what copyright issues are next on the WIPO agenda.  One issue on the agenda concerns creating exceptions to allow for access to copyrighted works by libraries, archives, educational, teaching and research institutions, and visually impaired access.  Also on the agenda are discussions over protection of audiovisual works.  In December of 2000 19 articles regarding audiovisual media were provisionally adopted by the member states.  The status of these articles are in question but it may be a solid basis for negotiations regarding international use of audiovisual works.  Another open  question is whether a copyright protection scheme should be signal based or content-based.  And if the answer is content-based, then how does digital content relate to content already protected?

Tom Martin suggested that the international ban on formalities, while preventing barriers to protection for authors also hindered the ability to create comprehensive copyright databases.  In other words, there is an inherent tension between a voluntary registration system, which allows authors to protect their work easily, and a registration requirement which would allow for more thorough databases.  He believes that WIPO and private industry has an important role to play in developing registration databases.  While Microsoft opposed the Google Books settlement, they believe a registry of books is infrastructure to buy, sell, and license books in the networked world. 

Pamela Samuelson, who believes that the current copyright protection regime looks backwards and does not look to future concerns,  talked about the need for exceptions to allow nonconsumptive use for researchers in databases.  She also advocated a standard based approach versus a rules based approach, which may be difficult on an international scale in civil law jurisdictions.

Lastly, Scott Martin gave the perspective the film industry.  Paramount views itself as a content provider, not a distributor; distribution platforms already exist.  He lamented that large box office returns for movies give a false perception of health of the film making industry.  Most movies do not break even until after the theatrical release window comes to an end and require DVD sales to recoup initial expenses.  Piracy, which is affecting DVD sales is putting the traditional business model in jeopardy which can only sustain large blockbusters with huge opening numbers or small cheap films that cost very little to make.  He also disclaimed the idea that there is any magic bullet to the problem such as compulsory licensing or cheaper pricing.  Another problem is that litigation is  a long expensive process that cannot keep up with the pace of technology.  Therefore, they must concentrate their efforts on the most egregious pirates. 

Guang Zhang

Keynote Address – Jim Pooley, Deputy Director General for Innovation & Technology, WIPO

The Patent Cooperation Treaty has aimed to “harmonize” the patent process internationally.  However, a disproportionate number of patent filings come from the developed nations.  This creates a question of whether or not the patent process is actually beneficial, especially to smaller countries.  Due to this perceived unfairness, many countries have come to regard the term “patent harmonization” to be taboo. As their economies grow, developing nations begin to value patents more and more.  This will spread the use of patents, as well as fit in with the goals of developed nations as well.

However, we must not approach the spread of IP by giving transferring technology to developing nations at no costs.  This does not work in the long term.  Developing nations do not realize the huge costs of IP.  Developing new technology requires a developed university system, venture capital, liberal bankruptcy law, even good weather.  Creating a national “Silicon Valley” is much more difficult than perceived.  Time is also a big issue.

Instead, we must foster a culture innovation in developing countries.  We must properly compensate owners of technology, and we will receive in return locally grown innovation.  We must take into account the commercial realities of technology owners.  The concept of build it and it will happen does not necessarily occur.  The only recent exception has been China, but this is rare.

The new concept is Networked Innovation, where countries connect and collaborate long distance with other countries. Some developing countries are currently too financially strained to send specialized IP personnel to WIPO, thus WIPO has begun to offer IP for diplomat courses to educate these persons on how to converse in this complicated field.

Enforcement is also an issue in developing countries.  WIPO currently delegates this task to each state, even if enforcement is subpar compared to other member states.  On the other hand, if countries were to step up enforcement to very high levels like in the US, there is potential for a very litigious technology sector which may not be beneficial to anyone.

Brian Eller

International Patent Harmonization

The conference at Stanford was very interesting and I learned a lot about a variety of topics.  My favorite moment of the conference came not during a panel speech, but in a private discussion with the eminent IP scholar and professor Arti Rai.  Arti Rai, along with Stanford professor Mark Lemley and Commissioner for Patents Bob Stoll all discussed recent developments at the U.S. Patent and Trademark Office.  Having interned at the USPTO over the summer and having heard Bob Stoll discuss the unending virtues of their new programs, I felt that the whole story was not being given, especially since I had worked on some of these new programs at my summer internship.  In particular, I was very critical of the new Patent Prosecution History (PPH) programs the USPTO has established with foreign patent offices.  Unfortunately, I was not able to ask my question to the speakers, and Bob Stoll left too quickly afterwards.  However, I was able to talk to Arti Rai, (who actually was a front runner for the position of Director of the USPTO) about these programs.  I was somewhat shy coming up to her, as several others were talking to her.  However, she could see my interest and allowed me to politely listen in and join in discussion.  She was able to politely answer my questions and concerns.  While talking to her another speaker and patent practitioner, confirmed the worries about the program I had, and she said she would look into it.

The basic problem with PPH program is that there is a potential for abuse.  Briefly, the PPH program tries to capitalize on the work of other patent offices in the world and to use their work to speed up patent prosecution in the United States.  However, patent applicants are learning to “game” the system by changing claim scope when they file at the U.S. patent office, under the PPH program.  Basically, they will assert that due to translational differences and to conform to the claim structure required by the United States they need to make significant changes to the claims (Europe and Japan allow multiple dependent claims and other formal differences in patent claim structure not allowed by the U.S.).  However, changing claim scope (which is not supposed to occur under the PPH program), severely undermines the efficiency and speed of the program, especially if a patent examiner doesn’t catch it, which seems likely considering the pressure from above to make this system work.  The patent practitioner, without admitting to malpractice, told Arti Rai that they “strengthen” the claims when they refile with in the U.S.  This is very troubling.

Finally, I feel there are other problems with program, especially the fact that U.S. examiners should be examining new art along with the submitted art of the office of first filing, something that Mark Lemley briefly stated but didn’t go into much detail on.  However, Arti did a satisfactory job addressing these concerns.  All in all, I really enjoyed this part of the conference, especially considering the politeness and straightforwardness of Arti Rai.

Ariana Zimbouski

International Patent Harmonization

Discussion between James Pooley - Deputy Director General for Innovation and Technology, WIPO, Arti K. Rai - Elvin R. Latty Professor of Law, Duke Law School, and Robert L. Stoll - Commissioner for Patents, USPTO

First of all, the talk was quite interesting. They started off talking about substantive patent harmonization. Apparently at WIPO meetings, one should not use the phrase "harmonization" because it suggests a leveling up of patent protection. Instead, phrases like "normsetting" or "normative agenda" should be used because these phrases infer a process that involves finding common ground between countries. This is especially important because of roadblocks due to differences between developing and developed countries as well as differences between developing countries themselves. There is also a problem moving forward because IP is seen as a smaller piece of a larger puzzles - it was created as a consequence of TRIPPs and is often used more as a bargaining tool.

However, there is hope that common ground will be found on things like a first to file system and grace periods. After all, a recent study showed that Rule 131 is almost never used, so we are effectively in a first to file system already. Also, since the US is moving into that direction, it should improve Europe’s willingness to the grace period impediment.

There was also an interesting discussion on harmonizing patentable subject matter. Robert Stoll asked why subject matter even needs to be harmonized, as different countries have different systems for different reasons. He also mentioned the artful drafting of software claims and problems within the international community due to people fixing patent applications in order to try to manipulate the system to get patents through. One of the funniest parts was when Robert Stoll mentioned how US courts have done a lot to change US patent law by making it much less stringent, and continued on to say that nobody knows what Bilski really means with respect to patenting software.

Jinling Wang

Arbitration for Intellectual Property Dispute

Panelists:

James Pooley, Deputy Director General for Innovation and Technology, WIPO

Michael Jacobs, Co-founder and co-chair, Intellectual Property Practice Group, Morrison & Foerster LLP

Kevin Kramer, Associate General Counsel – IP Litigation and Conflicts, Yahoo!

The panelists discussed how IP disputes are particularly suited for arbitration process.  First, the complexity of the legal issues involved in IP disputes makes the arbitration more attractive than litigation. Because the process aims at "arbitration among parties" rather than "arbitration against the world",  agreements can be feasibly reached. Second, most of the IP disputes are mixed with other business issues, such as breach of contract and merger issues. The parties involved are often in an ongoing relationship.  Arbitration makes the parties more aware of the time, cost and the necessity of the dispute.  The panelists commented that during arbitration, a business approach is often employed when parties are resistant to negotiation on the merits. The arbitration clause is also increasingly seen pre-existing in the contracts as the awareness of the advantage of the process increases. WIPO Deputy General James Pooley also commented on the arbitration service at WIPO. The process is inexpensive, flexible and expedite.  The organization also has the capacity to satisfy particular needs in the international cases by having a large staff of arbitrators in many countries. In summary, the panelists describes the arbitration process as playing an increasingly important role in IP Dispute.