INTERNATIONAL PROTECTION OF
INTELLECTUAL PROPERTY
by Jon P.
Santamauro
U. S. Patent & Trademark Office
Mr. Santamauro works in the office of Robert L. Stoll, the
USPTO's Administrator for External Affairs, Director Rogan's principal advisor
on IP protection and trade issues, including proposed U.S. legislation and
international activities. The Administrator for External Affairs
significantly affects the establishment and implementation of patent and
trademark and copyright policy at both the national and international level. See
www.uspto.gov/web/offices/dcom/olia . Mr. Santamauro recently
delivered this paper as the keynote speech of a California Bar International Law
Section seminar entitled "Winning International Strategies for Technology-Based
Companies" held in Del Mar, California on February 8, 2002.
Right-click here to download MS Word 97 version.
Liaison between the USPTO, the IP Treaty Organizations and IP
Agencies in Other Countries
I am delighted to be here today, addressing the importance of international
protection of intellectual property. I would like to thank all of the organizers
of this event for putting together a wonderful program that has highlighted the
important role that intellectual property protection plays, with particular
respect to technology-based companies, in the new information economy.
I will begin by discussing the role of the United States Patent and Trademark
Office (USPTO) as a liaison to intellectual property treaty agencies and to
intellectual property agencies of other countries. Then, I will discuss
international enforcement efforts, including the role of the USPTO and the
United States Trade Representative
(USTR). After this I will talk about the
Patent Cooperation Treaty (PCT) and obtaining patents in different countries
around the world. Then, I will discuss the World Intellectual Property
Organization (WIPO) Copyright Treaty, including its importance to software
producers.
The growth and reach of the Internet continues to change the ways in which
people and businesses interact in a manner unimagined only a few years ago.
Today, international borders are more often and more easily crossed than ever.
Therefore, it is more important than ever for businesses, and particularly high
technology businesses, to enforce their intellectual property rights around the
world. To do this efficiently and effectively, the laws of different nations
must be made more uniform if development in these emerging areas is to be
fostered. However, securing and enforcing intellectually property rights, which
are inherently territorial, involve the high costs of dealing with different
systems, different points of view, and other various considerations.
Therefore, the ongoing efforts at the various intellectual property treaty
organizations are very important, and the USPTO plays an important role in
representing the United States at these organizations, particularly with respect
to the substantive areas of patents, trademarks and copyright.
One of most well-known and important organizations responsible for the creation
of international norms regarding intellectual property is
WIPO. This
organization is a specialized organization within the United Nations and has a
U.N. mandate to promote intellectual property around the world. In doing so, it
administers numerous treaties and provides a truly global forum to discuss
normative trends in the various fields of intellectual property.
WIPO has a number of standing committees on the substantive intellectual
property laws, including patents, copyrights, and trademarks, as well as various
other sessions and meetings on virtually every aspect of intellectual property
law and practice. The USPTO generally heads the delegations that attend these
meetings.
As to patents, the Standing Committee on the Law of Patents, or SCP, of WIPO was
the setting for the creation of the
Patent Law Treaty of 2000, a major
achievement in procedural norm setting. The PLT harmonizes the formal
requirements of patent applications around the globe. The entry into force of
this treaty should provide U.S. patent applicants with easier access to world
markets at a reduced cost. USPTO officials led the USG delegation negotiating
this accomplishment.
The PLT sets forth a filing date “standard.” If an applicant files: (1) an
indication that the elements attached to the submission are intended to be an
application, (2) indications for identifying or contacting the applicant, and
(3) a description or drawing in any language, he or she is entitled to a filing
date. In the United States, this change will necessitate the removal of the
current requirement of a “claim” for a filing date. This change will help to
ease the burden on applicants wishing to achieve multinational patent
protection.
More generally, the PLT sets forth the maximum requirements a contracting party
may establish as to the “form or contents” of an application. Currently,
ratification and implementation packages are being developed in the United
States. The USPTO looks forward to ratifying the PLT and to that Treaty’s entry
into force so that applicants may benefit from reduced costs and easier access
when seeking patent protection internationally.
The SCP is currently working toward a substantive patent law treaty, sometimes
called the SPLT. The current round of substantive harmonization talks began in
November 2000. Those of you who are familiar with the history of patent law
harmonization talks may be skeptical of the chances of success of these talks.
The previous discussions on harmonization became stalled due to various
controversial issues. And, indeed, controversy still exists, most notably the
issues involving the differences between a first-to-file system, used in the
rest of the world, and that of the first-to-invent system, of which we are so
proud here in the United States.
While these discussions may be difficult, the SCP has agreed to a new approach
for a “deep harmonization” of both the law and practice on a limited number of
issues regarding the drafting, filing, and examination of patent applications.
This will require a determination by the Committee of the “best practices” with
respect to these issues, regardless of current practices in any particular
country.
Some recent progress has been made at the SCP, particularly with respect to the
chances of creating a truly international grace period for inventor disclosures
and the reexamination of the “unity of invention” standard in light of the
development of new technologies.
We welcome public comments on these efforts. Before the May 2001 SCP, the USPTO
published a Federal Register Notice (66
Fed. Reg. 15409) asking the public to submit comments on a variety of issues
being addressed in the discussions, and even some issues that were not yet being
addressed. The notice was published on March 19, 2001, and we received a number
of responses that are posted on the USPTO Office of Patent Legal
Administration's "Public Comments on Proposed Practice Changes" pages at
www.uspto.gov/web/offices/dcom/olia/harmonization .
The responses evidence a split of opinion on a number of controversial issues.
These issues included the question of the benefits of the first-to-file system
versus the first-to-invent system, the retention of the requirement to disclose
the “best mode” in the specification, and the so-called “Hilmer” doctrine as to
prior art effect of published applications.
If these talks are successful, even if the process takes many years, it will
result in enormous benefits for American patent owners. It would lead to uniform
standards of patentability around the world and, possibly, mutual recognition of
patent rights, thereby lowering the costs of obtaining patent protection around
the world immensely. Only a single application would need to be drafted and
used, with consistent examination results, around the world. It would be an
enormous step to the global recognition of patent rights or even, a global
patent.
Our participation with respect to the WIPO does not end with patents. The USPTO
also heads the U.S. delegation to the Standing Committee on the Law of
Trademarks, Industrial Designs and Geographical Indications, or “SCT.” We all
recognize the importance of trademarks and service marks in conducting business.
Protection of marks internationally is crucial to competitiveness and success.
The SCT has recently developed in three historic contributions to the field of
intellectual property, namely three joint recommendations – the first on
well-known marks (in 1999), the second on
trademark licenses (in 2000), and the
third on use of marks and other distinctive signs on the Internet (in 2001).
The first Joint Recommendation, regarding well-known marks, reflects U.S.
practice by setting forth a non-exhaustive list of factors to be considered by
national courts when determining if a mark is well-known.
The Joint Recommendation on Well-Known Marks represents a breakthrough in
international standard-setting for trademarks. For the first time, trademark
experts throughout the world agreed that well-known marks are entitled to
protection, even if they are not registered. This understanding is critical to
enhanced international protection for U.S. trademark owners, because it is often
U.S. trademarks that are the subject of abuse in other countries - - precisely
because the U.S. owner has worked hard and invested to make its brand
well-known.
In addition, discussions continue with respect to Domain Names at the SCT. In
the age of the Internet, this is an ever more important topic. Certainly, issues
of “cybersquatting” of trademarks have caused great concern. In 1999, an
international consultation process conducted by WIPO resulted in promulgation of
the Internet Corporation for Assigned Names and Numbers’ (ICANN)
Uniform Dispute
Resolution Procedure (UDRP). Since the first UDRP case was filed in December
1999, trademark owners have been able to challenge cybersquatters in an
expedited administrative arbitration procedure, conducted online, for
significantly less money than a court action.
While distinct from WIPO’s role as an ICANN-accredited UDRP dispute-resolution
provider, the SCT has moved beyond trademark cybersquatting, to discussions on
possible extension of the UDRP to domain names incorporating personal names,
trade names, country names, geographical indications, international
nonproprietary names for pharmaceutical substances, and the names of
intergovernmental organizations. The USPTO is playing an active role in the SCT
discussions in these groundbreaking areas.
On the copyright side, the USPTO also heads the delegation to the Standing
Committee on Copyrights at WIPO. Recently, this committee was responsible for
the creation of the so-called “Internet” treaties: the
WIPO Copyright Treaty
(WCT) and the WIPO Performances and Phonograms Treaty (WPPT). Currently, this
committee is working on the protection of databases as well as broadcaster’s
rights.
The WCT will enter into force on March 6, 2002 – again, the WIPO has shown its
commitment to moving ahead the field of intellectual property as the Internet
and other developments continue to challenge our notions of doing business.
Beyond WIPO, the USPTO is engaged in many other important multilateral
activities. This includes the Trilateral Cooperation between the USPTO, JPO and
EPO. This special relationship among the world’s three largest patent offices
has resulted in numerous studies on important topics as well as technical
advancements in operations areas such as electronic filing and classification of
patents and applications.
Our role as liaison between the United States government and multilateral
organizations is, indeed, very important. However, the USPTO additionally has a
great role in dealing with foreign intellectual property offices on a bilateral
basis. One of our most important roles, particularly with respect to developing
countries, is technical assistance. The USPTO offers training programs in a
variety of areas every year.
One of our most successful programs is the
Visiting Scholars Program. In this
program, foreign nationals, many of them officials, visit the USPTO for a period
of 2-3 weeks attending series of lectures on the American intellectual property
system. This past year, we had visitors from: Nigeria, Mexico, Cyprus, and
Romania, just to name a few. And this year, demand around the world for this
program is very high. We have more requests for participation than we can
accommodate.
As you can imagine, the USPTO values this program. As modern intellectual
property systems develop throughout the world, American inventors and industries
will be greatly helped. This program and others like it should help developing
countries establish world-class systems for protecting intellectual property
rights.
International Enforcement Efforts: The Role of the USPTO and USTR
I’d like to move on now to discuss international enforcement efforts and the
USPTO role in that regard. Once substantive rights are granted, it is important
to have effective enforcement mechanisms in place to ensure that those rights
are respected.
The Agreement on Trade-Related Aspects of Intellectual Property
Rights, or TRIPs
Agreement, requires that member countries integrate IP enforcement into their
civil and criminal judicial systems and into their customs procedures so that IP
owners can seek civil and criminal remedies, as well as stop the importation of
infringing goods.
An important point to remember: while TRIPs provides the backbone for an overall
IP enforcement system, it does not provide any guidance on the actual
implementation of these provisions. Rather, it allows countries to implement
them in accordance with their national laws and within the confines of their own
legal systems. We have found through working with many countries, that enacting
laws to define IP protection that is TRIPs compliant is the relatively easy part
in a country’s efforts to become WTO members. Implementing these laws, and
actually enforcing them is much more complex and difficult.
Within this context, I’d like to briefly discuss with you two U.S. government
agencies that have a role in these efforts, the Office of the
U.S. Trade
Representative, (USTR) and the USPTO. First, let me describe the role of the
USPTO in the enforcement of intellectual property. The mission of the USPTO, by
law, is to administer the patent and trademark laws, and to advise the
President, and other federal departments and agencies on all matters of
intellectual property policy in the United States and intellectual property
matters in other countries. In addition, the USPTO provides guidance where
appropriate to foreign governments and international intergovernmental
organizations on matters of intellectual property protection and enforcement.
As for the role of the USTR: the USTR is responsible for developing and
coordinating U.S. international trade, commodity, and direct investment policy,
and leading or directing negotiations with other countries on such matters.
Among the topics for which it provides trade policy leadership and negotiating
expertise is trade-related intellectual property protection issues.
Specifically, in the area of intellectual property enforcement, the goal of the
USTR is to control piracy and counterfeiting through strong laws and effective
enforcement worldwide, and to ensure that protection remains effective as
technology advances.
The major tools that USTR uses in this effort include the annual “Special 301”
review mandated by Congress in the 1988 Trade Act. Being included on a Special
301 list warns a country of the United States government’s concerns regarding
the country’s intellectual property laws and enforcement. In many cases, being
on the list has helped countries begin to work on improvements in their
enforcement regime.
The USTR also makes use of regional arrangements to promote and extend
protection of intellectual property. For example, the North American Free Trade
Agreement (NAFTA) contains specific obligations requiring high levels of
intellectual property protection.
Under the WTO TRIPs Council’s “built-in agenda,” the WTO Members, including the
United States, have, over the past two years, conducted a thorough review of
developing country members’ implementation of TRIPs obligations. In the WTO
context, the United States has encouraged these countries to meet and to
accelerate their implementation of TRIPs obligations.
Finally, one of the United States’ most important tools is the ability to offer
technical assistance in the area of intellectual property regimes and
enforcement to countries in the process of implementing their TRIPs obligations.
USPTO actively advises the USTR on all of its efforts in this regard.
As I mentioned earlier, the USPTO plays one of its largest and most important
roles in the area of technical assistance. Indeed, we view that as a central
component of our enforcement mission. These training programs provide high-level
government and law enforcement officials with an in-depth review of TRIPs’
substantive and enforcement provisions, a primer on the characteristics of an
effective IP enforcement system and practical advice on implementing effective
enforcement programs for both hard goods and in the digital environment.
To give you an example of what the USPTO has done in the area of international
enforcement training, here are a few of the activities we’ve been involved in:
(1) we offer twice-annual in-house IP enforcement training programs, which we
often sponsor in conjunction with WIPO; (2) in November 2001, the USPTO
sponsored a two-day/two-city IP enforcement seminar in Vietnam; (3) in November
2000, the USPTO sponsored a two-day judge’s training seminar in Taipei, Taiwan;
and (4) in September, 2000, the USPTO sponsored a two-day Symposium of the
Americas in the Washington DC area dealing with the protection of intellectual
property in today’s digital environment.
Strong enforcement procedures are indeed essential for the complete protection
of all intellectual property rights. However, in light of the focus on
international strategies for high technology companies at this forum, I’d like
to move on to a very important mechanism for obtaining global patent rights, the
Patent Cooperation Treaty, or PCT.
The Patent Cooperation Treaty and International Filings through USPTO
One of the major accomplishments in international patent law is the
Patent
Cooperation Treaty and the ability of applicants to preserve rights in the
member states of the WIPO while obtaining an expert opinion of the patentability
of the subject matter of the application. For 30 years, the system has worked to
ease the gaining of intellectual property rights in different countries and has
exceeded expectations.
In 2001, WIPO received over 100,000 PCT applications for the first time in the
history of the treaty. This represents growth of over 10% from the number filed
in 2000. Here in the United States, 43,421 applications were filed in the USPTO
for Fiscal Year 2001, representing an 18.4% increase in filings from FY2000.
But the growth is not limited to highly industrialized nations like the United
States. WIPO statistics indicate that there are significant increases in the
number of applications from inventors in developing countries, as well. The PCT
is being recognized as a truly international protection scheme.
An applicant can file an application in his or her home country, and then rely
on that filing as a priority filing throughout the “international phase” of
prosecution. During this phase, he may request examination and receive written
opinions on the patentability of his invention from an examination authority,
or, choose only to receive a search report identifying items of prior art.
Recently, the USPTO has been at the forefront of the effort to encourage greater
participation in the PCT by reforming the treaty. Despite the successes of the
treaty, it contains many cumbersome aspects, particularly with respect to
procedures. The United States proposal contains two stages: (1) the first stage
involves simplification of certain procedures and conforming the PCT to the
recently concluded PLT of 2000; and (2) the second stage involves a much more
comprehensive overhaul of the entire PCT system.
In response to the United States proposal, the PCT Assembly at WIPO chose to
convene a Committee to Reform the PCT. The Committee, meeting in May 2001, in
turn agreed to recommend that a Working Group be created that would consider
technical issues and draft language for changes to both the Regulations under
the PCT and the treaty Articles themselves. The first meeting of the Working
Group took place in November 2001.
The major elements of the “first stage” of the United States proposal were
recommended by the Reform Committee to be considered by the Working Group. Those
elements include: (1) elimination of concept of designations; (2) conforming of
the filing date and “missing part” requirements to PLT; (3) elimination of
20-month deadline for national stage entry; (4) elimination of concept of
demands; and (5) combination of search and examination.
These changes would work in combination to eliminate the most cumbersome aspects
of the current PCT system and thereby encourage the use of the treaty by
applicants. The application process would then be streamlined and provide for an
automatic search report and possibly a written opinion as well as allowing up to
30 months for the international application to be converted to a national stage
application.
The “first stage” of reform hopefully can be accomplished quickly within the
next few years. We view the “second stage” as a longer process. The PCT Assembly
unanimously adopted the measure of eliminating the 20-month deadline for
national stage entry in September 2001. Entry into force of the time limit
modifications necessary will be in April 2002. We are hopeful that the passage
of this measure by the Assembly will stimulate a fast agreement process for a
comprehensive reform package.
In the United States, the 20 to 30 month change will be implemented by rule
change. The USPTO published a final rule in the Federal Register on January 4,
2002, in order to amend regulation 37 C.F.R. § 1.494 to provide for this change.
The rule will be effective April 1, 2002.
Building on the 20 to 30 month change, the United States Delegation, at the
recent PCT Reform Working Group Meeting in November 2001, stressed the
importance of the combination of search and examination that could result in an
Expanded International Search Report, which would include an initial opinion on
patentability in addition to the typical search report results. An International
Preliminary Examination Report (IPER) would only be triggered if the applicant
responds to the expanded search report. This would allow examining authorities
to take advantage of the great efficiency of treating search and examination
together. In addition, the USPTO is looking at the possibility of implementing
this system by integrating the processing of international and national
applications in order to further reduce duplication of work.
Therefore, the 2000 PLT, combined with a reformed PCT, may lead to the ability
of an applicant to prepare a relatively simplified application in a single
format, preferably in electronic form, that would be accepted by all patent
offices as a national/international application.
The WIPO Copyright Treaty and Software Issues
Shifting gears a bit, I’d like to talk about international copyright
protection: particularly copyright protection of software and other products and
the WIPO Copyright Treaty (WCT), including its implementation in the United
States. In response to the growth of electronic commerce, the ease of
infringement, and the corresponding difficulty of detection and enforcement,
copyright owners increasingly are looking to technology, as well as the law, for
ways to protect their works. This need for protection is a growing concern of
the software industry.
The WCT makes clear, in Article 4 of that agreement that “Computer programs are
protected as literary works within the meaning of Article 2 of the Berne
Convention,” whatever may be the mode or form of their expression. This is an
important recognition that software, regardless of the medium, will be protected
under the copyright laws.
The WCT does not provide new substantive changes in United States copyright law,
but it does provide for important new provisions on copyright management
information and the circumvention of technological prevention measures. As
mentioned earlier, the effects of the WCT are felt throughout the
Digital
Millennium Copyright Act of 1998 (DMCA), which made the changes necessary in
United States law to implement and adhere to the WCT. Let me note here that both
WCT and DMCA are very comprehensive in nature, and that I will only discuss
certain specific topics.
The WCT requires, in Article 11 of that treaty, that Contracting Parties provide
for effective legal means for preventing the circumvention of technological
measures used by authors in connection with the exercise of their rights. The
anti-circumvention provisions of the DMCA cover the act of circumvention and the
manufacturing, importing, offering to the public, providing, or otherwise
trafficking in circumvention tools.
After extensive debate on this issue, Congress concluded that it was appropriate
to include both categories of prohibitions. The resulting legislative package
was supported by the content industries and also, importantly, by the consumer
electronics and computer hardware sectors. The DMCA includes separate provisions
on circumvention of effective technological protection measures that control
access to works and circumvention of technological protection measures that
control the exercise of any of the exclusive rights in works. It is important to
note that these acts are not limited to copying but include all of the exclusive
rights of the copyright owner.
The DMCA differentiates between copyright infringement and unauthorized
circumvention of technological protection measures. The law makes it clear that
the anti-circumvention provisions have no impact on rights, remedies, or
defenses under copyright. It further provides that the copyright liability, if
any, of producers or distributors of circumvention products and services is
unchanged. It is not necessary to prove infringement to establish a violation of
the anti-circumvention provisions. Consequently, ordinary copyright defenses do
not apply. Thus, the DMCA makes circumvention a separate civil and criminal
offense.
However, the DMCA includes a prohibition on trafficking in devices or services
for the circumvention of technologies that control the exercise of exclusive
rights because the copyright law alone would not be fully “adequate and
effective” to prevent the making or distributing such devices or services.
However, the DMCA prohibits only devices or services that are developed or
distributed with the purpose of enabling circumvention of technological
protection measures. This may be established by: (a) the way that devices or
services are designed or produced; (b) the way they are marketed; or, (c) the
fact that a device or service has only a limited commercially significant
purpose or use other than to circumvent.
These criteria are intended to apply to those in the business of providing the
means to defeat technological protection measures while permitting the
manufacture and sale of legitimate consumer electronics and computer equipment
that are not intended to circumvent. The DMCA includes both civil and criminal
remedies in order to provide an effective deterrent to the manufacture and
trafficking in circumvention devices and services. The civil remedies include
injunctions, impoundment, actual or statutory damages, costs and attorneys’
fees, and destruction of prohibited devices. These remedies may be invoked by
any injured party. The criminal penalties apply to willful commercial violators,
and include both fines and imprisonment.
In the process of drafting the two new treaties, questions arose concerning the
potential liability of service providers if civil and criminal penalties were to
be levied. Would service providers – Internet Service Providers (ISPs), On-line
Service Providers (OSPs), search engine services, portals, and other similar
entities – be liable if a system user transmitted infringing material over their
networks?
The Diplomatic Conference for the treaties discussed the liability question, but
did not adopt specific provisions on the basis that the reproduction right and
possible exceptions to that right could be appropriately addressed through
existing international standards. However, the Congress and the Administration
supported the attempts by the private sector to arrive at a solution that was
amenable to all.
Until the enactment of the DMCA, service providers were subject to the same
standard of liability as anyone else who distributes a copyrighted work in
violation of the copyright owner's exclusive rights. A service provider could
have been held directly liable, vicariously liable, or to have engaged in
contributory infringement under those doctrines. The DMCA alters these standards
and provides certainty for service providers and immunizes them from the type of
inadvertent liability that could arise by virtue of the nature of the Internet.
The liability limitations of the DMCA only apply, however, when a service
provider can meet the Act’s specific requirements.
Essentially, the DMCA provides that it is not an act of infringement for a
service provider to transmit or to provide access to infringing material when
the provider lacks actual or implied knowledge that the material infringes a
copyright and the provider derives no express financial benefit from the
provision of infringing material.
The law also protects from liability a provider who removes or otherwise
disables access to material upon receiving knowledge or information that such
material is infringing, regardless of whether the material is subsequently
determined to be infringing or not.
A service provider is protected from third-party liability for damages, costs or
attorney's fees under the Copyright Act, if it complies with three threshold
requirements. It must: (1) adopt and implement a policy of terminating the
accounts or subscriptions of repeat infringers; (2) inform subscribers and
account holders of this policy; and, (3) accommodate and not interfere with
"standard technical measures."
Conclusion
Well, we’ve discussed quite a list of topics today. But let me state again
that the need for businesses, particularly high-technology businesses, to
protect their intellectual property rights in the international arena, is
essential for success in the modern, knowledge-based economy. Intellectual
property rights are generally territorial – one needs to ensure that protection
is obtained and maintained outside the United States as it is within the United
States. This may have great cost burdens, but the prospect of losing your
innovative ideas to competitors overseas may come at a greater cost.
The USPTO plays an important role in helping American inventors and innovators
protect their intellectual property. Our involvement with multilateral
organizations and other patent offices, as to both substance and enforcement
issues, is critical to our mission. As I mentioned, the Patent Cooperation, at
30 years and counting, is a wonderful example of a system that eases the
obtaining of patent rights world-wide, and in doing so, has exceeded the
expectations of all groups affected.
Please be assured that the USPTO will continue our efforts on your behalf, and
on behalf of all American businesses, as we continue on our path to the ultimate
goal of world-wide respect of strong intellectual property protection unimpeded
by unnecessary limits thereon. It may be difficult, but the gains both within
the United States and around the globe will be worth the wait.
Thank you.
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