The round of negotiations in Tokyo last week on the controversial Anti-Counterfeiting Trade Agreement (ACTA) will be the last in the several-year long process to come to a final agreement, negotiators have said. The latest text – along with highlighted issue areas on which certain countries still have reservations – will be released before the end of the week, negotiators told Intellectual Property Watch.

The most critical outstanding issue is scope, especially on border measures, a Japanese negotiator told Intellectual Property Watch today. There was a “certain convergence” but “further examination was needed in some capitals,” the negotiator said. “In that sense we haven’t gotten agreement” yet.

“Now [we are] in the process of preparing the text based on the outcome” and “as soon as we have a text reflecting” discussions – and it is verified by other participants – it will be released to the public. This is estimated to be within the next several days, hopefully by the end of the week, he added. The released text should contain the names of countries and points on which they still have reservations, the negotiator told Intellectual Property Watch. A United States trade official later specified in an interview that the text would be released by mid-week.

It is unclear what the procedure will be for resolving final outstanding issues without convening another round, or whether a more limited treaty text may result by trimming areas lacking agreement (IPW, Bilateral/Regional Negotiations, 8 September 2010). A joint press release from the negotiating parties is available here[pdf].

Advocacy group Knowledge Ecology International said today they had received an email from the US Trade Representative’s office arranging for a 7 October discussion with NGOs on ACTA developments, which could be an indication that the text will be available by then.

There are four to six issue areas, depending on how they are sliced, that remain outstanding, the US official said. Among these are “a couple” related to border measures, and one on the digital environment. These will appear in italics and underlines in the text to be released this week, he said.

Several areas of the text contain options or areas that remain of concern for countries, but the “most difficult is the scope,” said the Japanese negotiator.

Patents Out of Border Section

There is currently a text describing the scope, but countries are holding out the possibility of alterations to it until they can consult with their capitals. However “there is a consensus to exclude patents from scope of application of border measures,” the Japanese negotiator said. “But in terms of coverage of overall agreements [it] is still a point to be confirmed.”

The US official confirmed “patents are out of the border measures section,” a decision he said had already been made prior to the Tokyo round.

The inclusion of patents in enforcement measures at the border was a major concern of civil society groups, in particular those who deal with public health, as border-enforcement measures related to patents within the European Union resulted in several stopped shipments of legitimate generic medicines in 2008. There is currently a World Trade Organization dispute settlement consultation on this issue (IPW, WTO, 16 September 2010), and news sources in India have indicated it may escalate to a dispute settlement panel (such as here and here).

There are, however, provisions in the ACTA text addressing goods in transit within the border measures section, though the “precise wording is not 100 percent resolved,” the US official said, as one or two parties are still engaged in consultations on this issue.

Geographical indications (GIs), or product names associated with a particular place or characteristics, were another issue on which there was “extensive discussion,” said the Japanese official. However, by the end of the Tokyo meeting delegates had reached a texts which “seems to represent emerging consensus by way of compromise.”

This compromise text on GIs sets out a “certain principle” that signatories to ACTA must respect when putting into place enforcement mechanisms, but leaves open flexibilities for each member’s individual implementation. More details on what this principle is could not be provided before the release of the text.

This issue is dealt with in the first paragraph under border measures, said the US trade official. Some parties to the agreement felt that GIs should be included, while others felt ACTA should focus on issues of trademarks, counterfeiting and piracy, said the US official. The United States falls into the former camp, while the EU falls into the latter, though other countries also had opinions on these issues, he added.

On criminal enforcement, private acts of infringement will be excluded. This section “basically aims at putting into place” an efficient mechanisms for enforcement in cases of commercial infringement, said the Japanese official.

Third-party liability – the question of whether a party that is neither the infringer of content nor the consumer of infringed content can be held responsible for the infringement – “has now been removed” from the digital section of the ACTA text, said the US official.

Third-party liability was a concern for internet freedom advocates worried that stringent laws would make content hosts such as YouTube too quick to take down videos accused of infringement, regardless of whether infringement is taking place. On so-called “three- strikes” legislation – another concern of internet freedom advocates, in which repeat copyright infringers could lose their internet access – there has “never been a proposal from any party reflecting” this view, the Japanese negotiator said.

Technological protection measures remain in the digital section, and have “somewhat evolved” to work out differences among parties that still existed in the last official released ACTA text in April, the US official said.

No “Rival” to WIPO

The fifth chapter of the ACTA texts also sets up a separate institutional body that some have worried will take away some of the World Intellectual Property Organization’s prominence in these areas. This has concerned countries that are not a party to ACTA, which involves a small negotiating group consisting of Australia, Canada, the European Union, Japan, Korea, Mexico, New Zealand, Singapore, Switzerland and the United States. WIPO, a UN agency, has a much wider base of members, particularly from the developing world.

But the ACTA body will deal with enforcement aspects of IP while WIPO has a wider role on substantive coverage of IP rights, the Japanese official told Intellectual Property Watch. So the new institution should play a complementary role. Dispute settlement mechanisms are “not expected.”

The US official confirmed that the intention of the parties to ACTA at the outset was not to interfere “with good work being done” at international institutions such as WIPO, the World Customs Organization and Interpol on combating counterfeiting and piracy. This would be “counterproductive,” he said.

He also said that ACTA is “not setting up an international organisation” but rather a cooperative structure among the parties to the agreement. “There is no question about setting up a rival institution.”

Separately, a statement of support emerged Monday from private sector Motion Picture Association of America.