By William New
There is more to the story of enforcing intellectual property rights than one typically reads in the media, and developing country governments should defend themselves against unfair enforcement practices, officials and activists said recently.

Speakers gave their views at a 9 October event of the intergovernmental South Centre entitled, Examining IP Enforcement from a Development Perspective.

Viviana Muñoz Tellez, programme officer in the South Centre’s Innovation and Access to Knowledge Programme, outlined organisations that are working on IP rights enforcement, including the World Intellectual Property Organization, World Trade Organization, Interpol, World Customs Organisation, and some governments through bilateral trade agreements.

Muñoz recommended that developing countries respond to increased focus on enforcement by taking a “holistic” approach to IP, ensuring equitable and fair measures. They also should avoid elevating their commitments further through bilateral deals. Other steps could be to adopt clear definitions for piracy and counterfeiting based on Article 51, footnote 14 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), and maintaining flexibilities in the TRIPS agreement intended for smaller economies.

A final recommendation by Muñoz was to back implementation of the new WIPO Development Agenda within the WIPO Advisory Committee on Enforcement. Proposals in this area include examining competition and IP enforcement, preventing the misuse of IP rights, and providing more scrutiny of data on global piracy and counterfeiting.

Roger Kampf, counsellor at the WTO, discussed flexibilities and obligations related to IP enforcement in the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). He said the World Health Organization should be included in the list of international organisations dealing with enforcement issues, through its task force on counterfeit medicines.

Kampf said enforcement is not a new concept to IP policy, and said TRIPS provides a minimum level of protection. But he mentioned the flexibility member governments have, such as in implementation.

Pedro Roffe, senior fellow at the International Centre for Trade and Sustainable Development (ICTSD), said bilateral trade agreements differ from TRIPS on enforcement by making penalties mandatory, according to South Centre meeting notes.

Joshua Sarnoff, a professor at American University in Washington, DC, said the US standard is to view an IP right as giving immunity from antitrust scrutiny, but said other countries might consider unilateral refusals to licence under antitrust rules and not necessarily give monopoly right over price to rights grantees.

Sarnoff also described a key legal case, a recent US Supreme Court decision called eBay v. MercExchange. The impact of the case has been that courts are granting fewer injunctions and that there is a wider variety of outcomes than in the past.

Ambassador Sun Zhenyu of China expressed support for the TRIPS Agreement and for the IP system, especially in development strategies, but said there must be a balance between rights and obligations.

Customs procedures emerged as an important enforcement issue for developing countries. They are being asked to catch infringing goods going and coming, and they also may face restrictions getting their goods into developed country markets out of enforcement concerns.

Fernando Piérola, counsel at the Advisory Centre on WTO Law, commented on a WTO dispute settlement case brought by the United States against China (DS362). He cited TRIPS Article 41.1, which lays out the balance between countries protecting IP but not using enforcement as a trade barrier. There is a question in the case of whether Chinese customs can remove the infringing aspects of goods, or auction them off, or destroy them, which could run against TRIPS Articles 46 and 59. There also is a question of whether China is criminalising and penalising all cases of infringement, as indicated under TRIPS Article 61, he said. New ground will be broken in the case, he said, for instance, on what constitutes a “deterrent” taken by a country against IP infringement, and what is considered “commercial scale.”

William New may be reached at wnew@ip-watch.ch.