The WIPO View On Enforcement, Idris And Development Agenda

Wolfgang Starein is the World Intellectual Property Organization (WIPO) official with primary responsibility for enforcement of intellectual property rights. In a series of recent interviews with Intellectual Property Watch, Starein talked about WIPO’s enforcement agenda for the coming year, a January 2007 enforcement conference, access to knowledge, WIPO’s relationship to the World Trade Organization (WTO) on enforcement, the proposed WIPO development agenda, and unfavourable portrayals of the WIPO director general in the media.

[WIPO ENFORCEMENT AGENDA]

Intellectual Property Watch (IPW): What is WIPO’s agenda on enforcement for the coming year?

Wolfgang Starein (WS): Those who take a critical look at our activities may not be aware that we receive a large number of requests particularly from developing countries just for so-called technical assistance, in particular through training of law enforcement officials. It is quite surprising to see how many countries make such demands. For the training of customs and police officials, we team up with the World Customs Organization and Interpol, whenever possible. For judges, we often prepare different programs since it is in many cases considered inappropriate to bring together judges and staff of law enforcement agencies such as police officials. Then you have to separate these groups and organise individual or back-to-back meetings, focusing on the specific needs of the persons to be trained, and they are quite different.

IPW: What kind of activities do you anticipate from a policy or norm setting viewpoint, if any, within WIPO on enforcement this year?

“Even where there is no obligation and the country is free to choose, we may have to advise the government officials that according to our experience the solution which they have in mind is unlikely to work in practice.”WS: Our activities focus first and foremost on technical assistance. We have plenty of such meetings which are also listed on our website. We offer workshops or on-the-job training for officials that are working in the law enforcement field. We also offer forums or platforms for an exchange of views and experiences among the judiciary. Norm-setting is not within the mandate of the [WIPO] Advisory Committee on Enforcement and not part of our activities. But we advise government officials who request us to help them on how to prepare draft legislation or inquire how they could best deal with certain issues. They may also send us their draft legislation and ask us to comment on the enforcement provisions contained therein. We are quite happy to give them our suggestions if they request us to do so but we do not impose our views if they don’t do. For example, we inform them that a specific provision is not in line with the international obligations that their country has agreed to, or we tell them that this is an issue which is not dealt with in international agreements. Even where there is no obligation and the country is free to choose, we may have to advise the government officials that according to our experience the solution which they have in mind is unlikely to work in practice.

IPW: How would a WIPO training session on technical assistance address the divergent viewpoints and concerns that come up in multi-stakeholder debates?

WS: In our discussions, we try to cover a wide range. But if we provide training, it is normally a focused training. We address different viewpoints when possible and appropriate. Let’s take, for example, legislative advice. When you meet with government officials, you get a clear perception of what they want and what they don’t want. It may even happen that they have a perception that you find surprising for a developing country. If you ask them why they don’t take a different approach, they may reply to you that they were aware of different options but that they wanted it this way. Under these conditions we limit the advice to what has been requested. To take an example that is not related to enforcement, I remember that there was at an earlier stage an outcry, I think it was at an African regional organisation, that the patent legislation did not make use of the transitional period for the protection of medicinal products. Such period is permitted under the relevant international agreement. Should we in such cases only be asked to comment in writing on whether or not the legislation or draft legislation complies with international obligations, we might not necessarily inquire why they had not included such a transitional provision. However, if the government makes use of our standard offer to have more detailed discussions in the capital or at our headquarters, we would certainly inquire and, when necessary, explain the different options to the government officials. They will then inform us of the reasons for their approach. For example, they might argue that it is in their view more important for the country to provide incentives for better investments from industrialised countries than to have a transitional provision. This does not exclude, of course, that they may change their opinion later, perhaps because they had second thoughts or may react to massive criticism from consumers or consumer groups.

IPW: WIPO’s primary mission appears to be the protection of intellectual property rights. If that is the case, why wouldn’t enforcement be in the primary mission of the organisation?

“In recent years, an increasing number of patent offices in many parts of the world became involved in enforcement matters and may even be entitled to administrative remedies.”WS: No, enforcement is not the primary mission of WIPO, but protection is ineffective if rights cannot be enforced. Clearly, the mandate of WIPO comprises protection and enforcement. But if we speak of our role in enforcement we don’t mean assistance in the enforcement of rights of individuals, we mean technical assistance and advice on how to formulate legislation. For example, we inform judges how to handle intellectual property cases effectively, we examine with customs officials how to exercise border control of intellectual property rights and with police officials which tasks they have in cases of IP crime and what they should and should not do, and so on. While we are to some extent dealing with the protection of individual industrial property rights because we also have developed our own systems facilitating international registration or application, we don’t get involved in concrete cases of enforcement of these rights unless parties to a dispute make use of our arbitration and mediation services. There is a big need for technical assistance in the field of enforcement, and a big demand by developing countries. There may also be a need on the side of some industrialised countries but they do not approach us frequently.

IPW: What is the difference between protection and enforcement?

WS: In fact, the answer depends on how you look at it. The word ‘protection’ is often used in connection with the period and procedure before obtaining intellectual property rights. You have certain intellectual property rights that are generally available without formalities and therefore come into existence very quickly, copyright for example, but in many cases, and this is particularly true for certain industrial property rights, the inventor or creator will face procedures which are sometimes rather complicated, costly and time-consuming. He will have to file an application for registration of his trademark or industrial design in most countries. In particular, we will have to file an application for the grant of a patent for his invention and his patent application may result in a patent only after a considerable period of time, for example, after four, five or even ten or more years. In a number of countries, patent examination can be deferred and final decisions have to be awaited in opposition procedures before a patent can be granted. Provisional protection may be available if the application has been published but the owner of the patent can only enforce his right once the patent has been granted.

Sometimes, the term ‘protection’ is used in a wider sense and ‘enforcement’ in a restricted sense, namely as a reference to the last phase when the right holder wants to act on a final decision in his favour which he has obtained and which entitles him to an injunction or damages. We use it in a wider sense, namely when the right holder alleges that his IP right has been infringed and demands that an injunction be granted or damages awarded. Normally, the right holder has to take action and file a request with the court. In many instances, criminal proceedings will also depend on his initiative to file a complaint. Patent offices are usually not in charge of enforcing individual IP rights. They have to administer the procedure for obtaining and maintaining different intellectual property rights. In recent years, however, an increasing number of patent offices in many parts of the world became involved in enforcement matters and may even be entitled to administrative remedies. Their competencies to protect IP rights have thus been considerably extended.

[A2K, WTO]

IPW: One of the current concerns is access to knowledge. There is concern that enforcement of the rights of the developed countries’ rights holders – where the vast majority of the rights are – is to the detriment of local innovators, or people in the developed world who feel the information should remain in the public domain. What is the viewpoint of this division?

WS: The answer is very clear, I think, from my side, from the enforcement side. There is a need for discussion on the scope of protection of intellectual property rights and on public domain. And the debate which is taking place is a legitimate debate and it has of course to come at some stage to a conclusion. Sometimes, consent is reached at the international level, for example, in the framework of the TRIPS [World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights] Agreement, where you have certain standards that have been agreed upon. I don’t want to and I cannot in this context elaborate on the question whether all interests have been fully balanced. But once countries have agreed on certain standards of protection including enforcement, I don’t think it is acceptable to say ‘we did not like the agreement but we could not avoid it; therefore, we want at least to avoid that the rights that we have promised to make available can be enforced.’ That does not make sense. One cannot argue that one wanted to agree to the right, but never wanted to make it enforceable. There are only a limited number of grounds on which you can oppose enforcement but in a vast majority of cases there are no such reasons.

IPW: Can you explain the relationship with WTO or other bodies in Geneva and elsewhere in terms of development of policy related to enforcement in terms of technical assistance and guidance on enforcement at the national level?

“There are some persons who see themselves as the true friends of consumers, but not all consumers may wish to be represented by them, and some take a rather extreme standpoint.”WS: We are not seeking to reach a multilateral agreement on enforcement policies in the framework of international treaty negotiations administered by WIPO, this is certainly true. That is not what we do, at least as long as our member states don’t want us to do it. Of course we as the secretariat may get involved in policy matters, for example when we are asked to assist a country in formulating options for policies it wishes to implement. Both organisations, WTO and WIPO, render technical assistance on request but since we have a relatively big secretariat and employ more staff in the field of technical assistance than the World Trade Organization, we might be in the position do a bit more. But both organisation also cooperate in this field and have joint meetings.

It is important to note, however, that the secretariats of the World Trade Organization and of WIPO are not taking the lead in developing and implementing enforcement policies. Such activities depend on the initiative and support of member states since both organisations are member-state driven. We have our advisory committee and there is a forum for discussion at the WTO in the field of IP, the TRIPS Council. The experience of the last TRIPS Council meetings was that whenever the European, the US or the Japanese delegations came up with a proposal to discuss enforcement issues, a number of developing countries put counterweight and opposed such discussion.

IPW: Are you the top-ranking official at WIPO dedicated solely to enforcement activity? To what extent does the current policy of WIPO on enforcement reflect what you bring to the position?

WS: [The first] is a question of interpretation. To use your formulation, I am the top official who is exclusively involved in these matters. But enforcement is also an important part of the tasks of the deputy director general in charge of this sector, with whom I am cooperating closely. Enforcement is, of course, also a small part of the overall responsibility of the director general to whom we report.

Following the success of the recent global congress on combating counterfeiting and piracy, there is perhaps a growing understanding that enforcement is more important for the organisation than some had thought because so far they considered it as being rather marginal. A number of countries are not entirely satisfied that several hundred people are dealing with IP protection and only five with enforcement matters and would appreciate if the organisation could substantially increase the number of staff in the field of enforcement. But this is a recent development that so far has not yet led to changes in the organisation. Maybe in the future there will be a few more people dealing with intellectual property enforcement, predominantly to provide technical assistance.

IPW: The Group of Eight [industrialised countries] meeting in Germany this summer will have a focus on IP enforcement. Will you go?

WS: Not to the meeting in June [6-8] which is for heads of state. But there is an IPR experts group, and WIPO and a few other intergovernmental organisations have been invited as observers. Under the German presidency, there [were] two expert meetings before and there may also be one after the summit. In Moscow, under the Russian presidency [in 2006], we had two sessions – one before and one after the St. Petersburg [G8 summit]. If you read the declaration that was issued on intellectual property rights in St. Petersburg, you get 90 percent of the subject matter and projects that were and still are under discussion.

[ENFORCEMENT CONFERENCE]

IPW: What was the perception of the 30-31 January Third Global Congress on Combating Counterfeiting and Piracy, what was your role in arranging it and why were there no consumer groups on the speaking panels?

The main focus of the congress was on how to fight intentional and organised counterfeiting and piracy activities at a commercial level. The TRIPS agreement requires WTO members to provide in such cases criminal sanctions. Consumer groups have an important role when discussing which scope of protection IP rights should have. We are sure that they also have a strong interest in IP enforcement, at least with the aim of eliminating health and safety risks caused by certain counterfeit products. But since we had had only a limited period of time for that session and had to accommodate the requests of partner organisations to include the speakers they had nominated, we could not invite additional representatives.

IPW: Was the aim to raise awareness or come up with something specific? Was this more of an organising meeting for those people who would then go forward to carry the message out to the public?

WS: Both [to the first question]. We did not formulate and adopt resolutions. This was a meeting where we wanted people to take clear note of the problem and discuss possibilities for action, but we did not want to tell them, ‘This is the way to go.’ We intend on compiling a list of proposals that have been made by the speakers and panellists of the congress.

[To the second question] We encouraged very much and facilitated the participation of people from developing countries because it doesn’t make sense if only American and European politicians and business leaders participate in these meetings and talk to each other. … Within the limits of their international obligations, countries are free to do whatever they want. As far as online access or copying of CDs is concerned, there is a clear understanding that the international standard does not require to consider and treat everybody who is illegally downloading as a criminal, but if someone violates copyright frequently and on a commercial scale, then the TRIPS agreement obliges the country to make sure that this piracy activity can sanctioned by criminal law. So the aim is not to punish the 14-year-old boy who is occasionally downloading a song, the aim of making available criminal sanctions is to prevent people from offering illegal facilities enabling an unlimited number of others to download a large variety of music without compensation of the right holders.

… There are some persons who see themselves as the true friends of consumers, but not all consumers may wish to be represented by them, and some take a rather extreme standpoint. There is nothing wrong with the participation of people with quite opposite views even in a congress dealing with a concrete theme, provided that they argue within certain coordinates, but if they leave the common ground entirely because they are convinced that the IP system is as such harmful, then there is no sound basis for discussion and willingness to listen to the arguments of the other side. You say we could have had more speakers from this sector – that may be true. But it is a major effort to reach consensus on all the people from all sectors which should be invited to such a congress as speakers.

[DIRECTOR GENERAL ACCOUNTABILITY]

IPW: WIPO Director General Kamil Idris was mentioned in many press articles recently, both for public appearances and regarding questions about his management practices. Do you have a comment on this?

WS: The director general was indeed often seen on TV and widely mentioned in the media on the occasion of the Third Global Congress on Combating Counterfeiting and Piracy. The director general had taken a political risk by accepting that WIPO host the congress since matters concerning the enforcement of IP rights were considered to be politically sensitive in the Geneva environment. He was rightly praised for having done so when the success of the congress became obvious and when it turned out that there were no negative statements prior to, during or after the conference.

“The timing of these articles [on Idris], which had always been published exactly at the time when certain events took place at the headquarters of the organisation in Geneva, appeared to have had the purpose of political blackmailing.”I am of course aware of the fact that a local newspaper had recently published an article about our director general in conjunction with the correction of personal data, and that he had also been criticized by the press earlier. As an employee of WIPO, I have no comments to offer. However, in my capacity as a federal court judge – on secondment – I dare express my personal point of view and say the following: Over the last years, we read a number of articles containing certain allegations and accusations. As far as the role and involvement of the director general in certain activities is concerned, these articles were rather unsubstantiated or predominantly defamatory, one was ridiculous and one even absurd. This is highly unpleasant. In addition, the timing of these articles, which had always been published exactly at the time when certain events took place at the headquarters of the organisation in Geneva, appeared to have had the purpose of political blackmailing. This is highly irritating. Finally, a number of these articles discredited not only the director general but also the work of entire staff or the organisation. Since there are more than 1,000 employees who often work hard and enthusiastically in order to help accomplish the mission of WIPO, this is highly unfair.

In order to avoid misunderstandings, I wish to underline how important it is that the media investigate and inform the public of the results of their investigation. They are an essential part of control mechanisms. However, if they are unable to present clear and convincing facts, it is not acceptable that they draw negative conclusions without sufficient proof. It is even less acceptable if they refrain from expressly formulating such conclusions but mislead the reader into believing that there must be good reasons to incur and maintain suspicion.

IPW: So you believe the director general has been portrayed in an inappropriate manner?

WS: He has certainly given rise to discussion about the change in personal data which was brought up again by the press recently. But in other cases, and all in all, he has certainly not been treated in a fair manner. He has repeatedly been described as someone who made the best use of the system to his own advantage. However, in reality, if there had ever been a great beneficiary of the system, it had been his predecessor who had managed to remain in office for 24 years and who even received two salaries for the two sister organisations WIPO and UPOV [Union for the Protection of New Varieties of Plants] led by him. The current director general has always been generous. Many of the employees, in particular those who benefited significantly from his generosity, were not always as thankful as they should have been. In addition, any favourable treatment goes hand in hand with the risk that there are others who are dissatisfied because they are convinced that they had deserved an even more advantageous treatment. It is difficult to say in the absence of an objective review and evaluation whether there were sufficient reasons for such positive self-assessment. Some doubts remain whether all of the frequent complaints which were made and shared with third persons were really justified.

[DEVELOPMENT AGENDA]

IPW: In its session 19-23 February, the Provisional Committee on Proposals Related to the WIPO Development Agenda (PCDA) agreed on recommendations on norm-setting and flexibilities reflected in paragraph 10 of the annex to the chair’s conclusions. Since you have experience providing legislative advice to developing countries would you comment on the development agenda effort?

WS: I cannot comment on the compromise reached in the PCDA after long discussions. However, I can make some general remarks. It would appear that the debate on flexibilities in the field of norm setting is unfortunately not only peppered by passion but also by misunderstandings.

Misunderstanding number one is that it would be appropriate and an easy task to set out and explain all flexibilities in a comprehensive manner in a single document such as a draft intellectual property law prepared on the request of a developing country. This is not the case. The number of flexibilities in a wider sense is so vast that this can hardly be done without creating unnecessary confusion. It is often preferable that these flexibilities be examined and discussed orally in a concrete context and with a particular focus.

“An IP right which cannot be enforced because there are no effective enforcement mechanisms or because it can be questioned again and again even after a final decision determining its violation has been taken is as useless as a car without wheels.”Misunderstanding number two is that there are many options for unrestricted choice in different legal fields. This is not entirely correct. Only a certain number of the flexibilities are unrestricted options such as the choice which principle of exhaustion of IP rights may be applicable. Regarding this issue, a country may decide in favour of national, regional or international exhaustion and could even apply different principles for different IP rights. Many of the other flexibilities are limited in the sense that they are neither expressly allowed nor expressly excluded by international standards such as obligations under the TRIPS agreement. They may be safe options or options with a high, medium or lower risk of being considered incompatible with international obligations should a dispute arise. In these cases, legislative advice should whenever possible include an assessment of the risk a country would run if it decided in favour of a certain alternative which is not a safe option. The evaluation of the risk may take into account legal issues and questions of practical relevance and thus the likelihood of a possible dispute.

Misunderstanding number three is that there seems to be an implied perception according to which developing countries would be best advised to opt in any case for minimum requirements. This may not always be the most adequate solution. For example, a country might well be interested in prescribing border measures for export control of counterfeit trademark and pirated copyright goods regardless of the fact that only border measures to prevent the importation of such goods are mandatory under the TRIPS agreement. Counterfeit and pirated goods are often ordered by dealers in third countries for the purpose of resale and a government might wish to place this additional burden for a number of reasons on its customs authorities, for example, in order to benefit from favourable treatment in other fields offered in bilateral trade negotiations. By the way, border measures in form of export control are required under a number of laws including those of developing countries such as the People’s Republic of China.

The question had been raised as to whether the global congress may have had an influence on the outcome of the PCDA meeting which was held shortly thereafter. I would be tempted to give a positive answer to this question. Indeed, I am convinced that some concessions by industrialised countries in the PCDA meeting had been facilitated by the fact that developing countries did not try to oppose the consensus in the global congress on the need for effective enforcement of IP rights on the content of which an international agreement had been reached and concluded earlier.

IPW: The PCDA chair’s conclusions, in paragraph 24 of the annex, recommend that IP enforcement be approached in the context of broader societal interests and especially development-oriented concerns. What is your view on this recommendation?

WS: I can only give an answer of a more general nature. The problem of such very general recommendations is that they leave much room for interpretation. When the scope of protection has been agreed upon, the enforcement of IP rights should only be excluded under exceptional circumstances. It is certainly worthwhile and necessary to define the conditions under which enforcement should be excluded as precisely as possible. However, the main debate has to take place in the framework of substantive law and concentrate on how the scope of protection of IP rights and exceptions to protection are to be determined. It is not the purpose of the enforcement procedure to enable the repetition of known arguments and another review of earlier decisions as to substance. An IP right which cannot be enforced because there are no effective enforcement mechanisms or because it can be questioned again and again even after a final decision determining its violation has been taken is as useless as a car without wheels.

IPW: Thank you.

Wolfgang Starein joined WIPO in 1989. He is currently director of the enforcement and special projects division, and was previously director of the small and medium-sized enterprises division and deputy director in charge of legislative advice to developing countries related to industrial property. Before joining WIPO, Starein worked as a German judge at different district and high courts and the Federal Patent Court, and as a counsellor in the economic and commercial department of the German Federal Ministry of Justice.