INTELLECTUAL PROPERTY TRANSFER OF TECHNOLOGY n What

INTELLECTUAL PROPERTY & TRANSFER OF TECHNOLOGY n What is technology ? Importance for economic growth and development Types of protection of technology: 1. Patents (statutory protection) - s. infra 2. Know How (protection by agreements and general private law) - s. infra 3. Sometimes copyright - s. infra -, e. g. for software 4. Sometimes law on trademarks and designs also protects technology – s. ch. Distribution 5. Plant variety rights n

CONFLICT OF LAWS n - - - Conflict of law rules for IP rights: The IP right is in principle territorial, limited to the country of registration (or set of countries: Benelux IP rights (trademarks, designs etc. ), EU trademark, etc. ). But territoriality may affect e. g. goods in transit (s. infra). Conflict rule: lex loci protectionis (eg Berne Convention 5. 2; art. 8 Rome-II regulation) > fragmented application in case of effect in more than 1 country Internal rights and duties arising out of license contracts: choice of law, subs. law of the country or the licensor (Rome-I-Regulation)

TRIPS: PRINCIPLES n n n - - - TRIPs Agreement = Trade Related Aspects of Intellectual Property Rights 1994 Balancing protection of IP rights v. access to technology (comp. infra) The TRIPS Agreement determines: The minimum standards of protection for 6 categories intellectual property rights; no general exceptions but specified rules for each category. Missing (not harmonised): rules on exhaustion of a right (s. infra) Possible exclusions in art. 8 (health, nutrition, …) The basic principles of equal treatment: MFN principle (art. 4) and national treatment (with NO exception for free trade agreements!) Transparency obligation related to the relevant national law Mandatory remedies for the enforcement of IP rights Applicability of the Dispute Settlement Procedure of the WTO (DSU)

TRIPS: INSTITUTIONAL n n n General obligations of member states in TRIPS : Adequate enforcement procedures in the domestic legal system Criminal sanctions for serious infringements (wilful counterfeiting, commercial scale piracy) see infra slides on compliance in EU Institutional: TRIPS Council In the EU: since the Lisbon Treaty, TRIPS is an exclusive competence of the EU (art. 207 TFEU, ECJ in C-414/11)

TRIPS: IP RIGHTS (1) Copyright n - - - Copyright and « neighbouring rights » < Berne Convention (1886 as amended 1971): lifetime of the author plus 50 years (NB in EU 70 years). Further partial harmonisation in the EU (Dir. 2001/29) neighbouring rights of performers, producers etc. copyright is acquired automatically (no registration necessary; registration exists in some laws (e. g. USA) and gives additional benefits (esp. evidential value) Important question for trade: exhaustion ? In US law the copyright first sale doctrine applies worldwide, i. e. copyright in the US is exhausted after a legitimate first sale anywhere in the world (USC Ch. 17 § 106 as interpreted by SCot. US decision of 19 III 2013, Kirtsaeng) NB. The Eu has separate regimes for the protection of software (Dir 2009/24) and of databases (Dir. 96/9)

TRIPS: IP RIGHTS (2) Patents n - - - Patents for inventions: Minimum availability (art. 27 TRIPS): a patent must be available for any invention (new, innovative and capable of industrial application); list of authorised exclusions from patentability (i. a. possibility to exclude patents for medical treatments, etc. ) Disputes on novelty in case of new versions of existing medicines: Glivec/Novartis-case Indian Supreme Court 2013 (S. 3(d) 2005 Indian Patent Act prohibits the patenting of new forms of existing pharmaceutical substances that do not demonstrate significantly enhanced efficacy. I. e. measure against ‘evergreening’ of patents (esp. medicine) NB. In Eu evergreening can be illegal on the basis of abuse of dominant position (CJEU 2012 in C-457/10 Astra. Zeneca) Transitory provisions in art. 27 and 70 TRIPS. Minimal (content of the) protection is also defined (art. 28 ff. TRIPS) Art. 31 on compulsory licensing (see infra Paris Convention + rules for developing countries) (NB. Also a partial solution against ‘patent trolls’)

TRIPS: IP RIGHTS (3) PVR + National PVR TRIPS - Plant varieties: states may protect them either with patents or a specific right (Plant variety right or Breeders right) or a combination of both (27, 3 TRIPS) – eg by ratifying the UPOV treaty (1961/1991). n n - - - National (incl. EU) plant variety rights: In the EU it is either a plant variety (specific right) or a biotechnological invention (elgible for protection according to the Biotechnology Directive 98/44 unless it is the prodcut of an essentially biological process). The EU has ratified UPOV. There is a ’unitary’ plant variety right since 1994 (Reg. 2100/94) next to the PV rights of the member states. An exception is made for the ‘farmers privilege’ or ‘crop exemption’. There is also an exhaustion principle: PVR is exhausted when put on the market with the consent of the PVR holder, but the conditions for consent imposed upon a licensee or buyer can also be invoked against thirs parties when they relate directly to the essential features of the PVR (ECJ in C-140/10 Greenstar-Kanzi)

TRIPS: IP RIGHTS (4) Other n Trade marks, design rights: see chapter distribution n Geographical indications & appellations of origin: see chapter distribution n Topographies of integrated circuits (chips) < WIPO Washington Treaty on IC 1989 - duration of protection now minimum 10 years n Protection of « Trade secrets » (undisclosed information) or « know how » < Paris Convention 1967 > have to be protected if certain requirements are met (secret, commercial value because of its secrecy, reasonable steps to keep it secret) -

NATIONAL PATENTS Patents for inventions (in the US ‘utility patient’ as there also design patents) n National patents: n National law determines conditions and legal effects of a patent: - Conditions: generally novelty, inventiveness and industrial applicability - Not for mere abstract ideas (esp. restrictive is the US law, see SCot. US 2014 in Alice Corp restricting patents for software) - Exceptions to patentability (eg stemcells that can grow into embryos, ECJ 18 Oct 2011 in C-34/10 Brüstle + ECJ 18 Dec 2014 in C-364/13; human genes, SCot. US 13 June 2013) (see also EUBiotechnology Directive 98/44) - Application procedure, costs - Publication is necessary in exchange for protection n

NATIONAL PATENTS Patents for inventions n National patents - effects n - - - Protection is territorial (restricted to the country granting the patent) Parallel patents in various countries lead an autonomous life Limited in time (generally 20 years) (+ possible additional protection certificate (pharmaceutical products, now Reg. 469/2009) (idem in US) Scope of protection (exclusive rights) In the EU: exhaustion principle; US: exhaustion after a legitimate first sale anywhere in the world (SCot. US 2017 Impression/Lexmark) (does not apply to sale by an unrelated holder of a parallel patent elsewhere: SC 1890 in Boesch / Gräff) Several exceptions/restrictions (eg farmers privilege; biotechnology)

PATENTS n International rules on recognition, harmonisation ? n The minimum protection to be granted to foreign inventions according to the TRIPS Agreement by reference to the Paris Convention 1883/1967 (supra) n Paris Convention on Industrial Properties 1883 (as amended Stockholm 1967): National treatment (in the granting no discrimination based on nationality) Right of priority: after initial application in one country a period of grace of 12 months to apply in all other countries with right of priority and retro-active effect Right of the government to grant compulsory licenses in case of absence of exploitation without justification for more than 3 or 4 y. - -

PATENT APPLICATIONS n n Under the Paris Convention still necessary to apply for patents separately in each country Patent Cooperation Treaty 1970: simplify the application process; possibility of a centralised application for many countries; patents are granted separately for each country. An application may only relate to a single invention (unity principle)

PATENT APPLICATIONS n A further Treaty is the PLT (WIPO), harmonising national application procedures European Patent Convention (EPC), München 1973, revised 2000 in force 2007; 37 states (27 EU + 10 other): - a single application (in En, Fr or German)* and - a single examination (EPO, European Patent Office Munich); - the granted patents remain however national patents and will only be valid where the patent is validated (national requirements). Only 14 EU + 7 other have abolished or reduced requirementes for further translation ( « London agreement 2008 on art. 65 EPC » ). * in 2009 52% of applications were in English - as it is a bundle of national patents, it is possible that one is valid another not under the applicable national laws; also litigation will concern only single national patents (ECJ refused to accept cross-border jurisdiction of national courts of the ‘spider in the web’, see ECJ in C-539/03 Roche / Primus) n A series of bilateral agreements organises a so-called ’patent prosecution highway’ (fast-track examination of patents already examined by a partner patent office). n

EU PATENT EU Unitary Patent n Purpose: stop segmentation in national markets (autonomy of parallel patents restricts free movement of goods) incl. The necessity to litigate separately in every country (as required by the ECJ in C-539/03, Roche/Primus) n MS except Spain & Italy (refusing because of the language arrangement) (and Croatia) started enhanced cooperation > agreement on 3 instruments December 2012; Italy joined nevertheless on Sep 30, 2015) n New UP will not be available for non-MS (as Norway, Switzerland Turkey) and remains optional for UP States. Thus applicant applying at the EPO indicates whether he requests a UP (plus national patents for non-EU countries) or merely national patents. n n Content: of the 3 Instruments: next slides

EU PATENT n EU Unitary Patent 1. Regulation 1257/2012 (UPReg. ): content of the unitary patent Property regime ? As a whole treated as a single national patent of the country of the applicant (single object of property) n - 2. Translation arrangements: Regulation 1260/2012: Application allowed in any official language Patent granted in English, French, German with unofficial machine translations in the other languages Translation costs not to be paid by applicant. n 3. Dispute settlement (next slide) n Will it be succesful ? May depend on the duration of examination by the EPO. Some national Patent Offices grant patents without lengthy examination … n -

EU PATENT DISPUTE SETTLEMENT n n n - n Unified Patent Court Agreement (UPCA)(incl. Denmark & Italy but without Spain & Poland) (will enter into force if UK and Germany ratify, as F and 13 others have already ratified) (+ 2015 Protocol on Provisional Application) (waiting for UK, and in Germany decision of constitutional court). = A common dispute settlement mechanism instead of parallel dispute procedures ”for current European and future EU patents” > thus for unitary patents and (unless opted out) for national EPC-patents (during a transition period of 14 years concurrent jurisdcition for national patentes of the UPC and MS Courts) the EEUPC (European and EU Patent Court) consisting of: a Court of 1 st instance, with central chambers (Paris, London and Münich) and local or regional chambers, and a Court of appeal (Luxemburg) These are courts common to and thus of the member states; thus under control of the ECJ by way of preliminary rulings where EU law is at stake (not for the interpretation of the UPC itself, but eg Biotech directive, competititon law, etc. ). Brussels-I-Reg has been amended to make it possible (Reg. 542/2014)

KNOW HOW / TRADE SECRETS n Know how: a definition is found in Reg. 330/2010 art. 1 g. : «a package of non-patented practical information, resulting from experience and testing by the supplier, which is secret, substantial and identified » n Definition in the American (Uniform Trade Secrets Act, UTSA): “information, including a formula, pattern, compilation, program, device, method, technique, or process, that: (i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. n Now supplemented by the federal Defend Trade Secrets Act (DTSA) 2016 n Definition in EU Directive 2016/943: secret, commercial value, reasonable steps taken to keep is secret

KNOW HOW / TRADE SECRETS Protection ? n See also minimum protection of trade secrets imposed by the TRIPS Agreement, by reference to the Paris Convention of 1883 /1967 n Know how cannot be patented insofar as kept secret n Some protection by national laws. Requirements: technical information which is 1° secret and 2° essential (for a product, process or service). n In order to transfer know how (or grant a license) and at the same time keep the secret, it is necessary to identify properly the knowledge to enable verification of the 2 abovementioned requirements (by description or otherwise) n Protection not by an exclusive right , but by a contractual duty of confidentiality, and now also by unfair trade practices law and similar remedies (next slide) n

KNOW HOW / TRADE SECRETS n In the US: On the one hand uniform state law (Uniform Trade Secrets Act, UTSA) (adopted by 47 states) n For interstate commerce cases* since 2016 a federal Defend Trade Secrets Act. - * the trade secret must be “related to a product or service used in, or intended for use in interstate or foreign commerce » - Remedies under the DTSA include n - > injunctive relief (but sometimes replace by reasonable royalty, where injunction is inequitable) > ex parte (unilateral request) conservatory seizure in ‘extraordinary circumstances’ (and with a liability for damages in case of abuse); > « attorneys’ eyes only » protection in case of litigation (sealed filings), as detailed in a ‘protective order’ from the court > possibility of multiple damages for willful and malicious misappropriation - Independent discovery and Reverse engineering in principle lawful - whistleblower exception (immunity), incl. the obligation to include this exception in employee confidentiality agreements

KNOW HOW / TRADE SECRETS In the EU: minimum harmonisation of rules against misappropriation of trade secrets by Directive 2016/943 (to be implemented before 9 June 2018) - Harmonises the definition: secret, commercial value, reasonable steps taken to keep it secret - Includes protection against relevant forms of misappropriation (defined in art. 4) Protection / remedies (art. 6 -15) include: Ø Prohibition of use and further disclosure (injunctive relief) Ø including maintaining confidentiality in case of litigation (but at least one natural person from including maintaining confidentiality in case of litigation (but at least each of the parties as well as the respective lawyers of the parties must have access to the file !) Ø a ban on goods infringing trade secrets - - with wide exceptions (art. 5), namely for the purpose of 1° fulfilling a non-contractual obligation or 2° protecting a legitimate interest. Incl. Protection of whistle-blowers and freedom of expression and information (investigative journalism). Cannot be opposed to the right of access concerning environmental documents (ECJ in C-673/13). - Independent discovery and Reverse engineering remain permitted (art. 3) (but Reverse engineering can be prohibited by MS law, such as in Germany)

TRANSFER OF TECHNOLOGY – general Transfer in ownership / Licence of a limited right / Complex contracts n Transfer of a patent - a transfer of the property of a patent as an incorporeal asset, on the basis of a contract (depending on the counterperformance a sale, barter, investment in a legal person, donation, etc. ) - as patents for different countries are autonomous, each patent is to be transferred separately according to the law of property of that country (lex rei sitae); a European Unitary Patent however is a single patent to be transferred as a whole according to the law of property of the country of the applicant - duty to guarantee of the transferor – extent of the duty depending on the content of the contract - price usually a fixed sum (sometimes also royalties) n Transfer of know how ? Depends on how one classifies the right. n

TRANSFER OF TECHNOLOGY – LICENCE Licence: granting a right to use the invention in the territory, whether or not exclusive n Patent licensing - mere licence in the sense of exemption from prohibition - normally in exchange for compensation in money (royalties) by the licensee - usually combined with other duties of the licensor (know how) - obligation to guarantee, incl. against third parties without right (in case of bij exclusive licence); no guarantee of return on investment n « Licence » of know how ? Share information with the licensee in exchange for payment and with an obligation of secrecy (for the licensee) n

TRANSFER OF TECHNOLOGY – LICENCE n Compulsory Licences granted by the government: see supra - TRIPS art. 31 - Paris Convention : Right of the government to grant compulsory licenses in case of absence of exploitation without justification for more than 3 or 4 y. n Quid if invention « is not available to the public at a reasonable affordable price » (e. g. in S. 84 Indian Patents Act) ? - Applied by the Supreme Court of India in the Bayer – Nexavar case (december 2014). n

TRANSFER OF TECHNOLOGY – LICENCE n n • • Licenses for «standard-essential patents» (SEP’s), i. e. patents for inventions that must be used to meet the standard set by an SSO*: members of the SSO must declare that they will give anyone a license on FRAND-conditions > Licensing conditions must be « fair, reasonable and non-discriminatory » ( « FRAND » ). Such declaration is called a « FRAND Commitment » . When a business is a ‘willing licensee ’, eg agreeing to acquire a licence on FRAND terms to be determined by a third party, the patent holder may no longer enforce the SEP as this would constitute abuse of dominant position (E. Commission 29 April 2014 in Motorola v. Apple). Further details about the conditions under which it would be an abuse by the patent holder elaborated by the ECJ in Huawei/ZTE (C-170/13, July 2015). SSO = Standard Setting Organisation, eg the ESTI (European Telecommunications Standard Institute » ) Eg a mobile smartphone involves 250. 000 patents ….

TRANSFER OF TECHNOLOGY – LICENCE n FRAND-Commitments are also found for technology in a wider sense, such as financial techniques: under pressure of antitrust proceedings opened by the EU Commission, ISDA and Markit made FRAND Commitments (2016) to license know how for exchange trading of financial products. For other patents than SEP’s, it is also possible to make a declaration that there is a ‘licence of right’. In the case of a Unitary patent, this will make the patent cheaper (see art. 8 UPReg)

TRANSFER OF TECHNOLOGY – LICENCE n Content of Licence agreements (checklist) n Scope of application: territory; substance (rights granted, e. g. including manufacturing) Exclusive or not Transfer by licensee allowed or not Technical information and/or technical assistance to be given Guarantees relating to the right Rights and obligations concerning improvements and adaptations, eg grantback of improvements by the licensee n n n

TRANSFER OF TECHNOLOGY – LICENCE n Content of Licence agreements (checklist) n Obligations concerning quality of products manufactured (reputation licensor), obligations concerning quantities Price (lump sum, royalties, guaranteed minimum in royalties) Duration of the contract; rights and duties in case of termination Obligation of confidentiality (often precontractual NDA) No-challenge clause (or termination-on-challenge) Forum clause: choice of law n n n

TRANSFER OF TECHNOLOGY – COMPLEX n Licence combined with a transfer of technology for marketing: see esp. Franchising n Sometimes a mere licence to produce as « OEM » (original equipment manufacturer), the licensor will put its trademark on the product and sell/retail. n Turn-key contracts (composite transfer of technology for industrialisation): agreements for delivery and assembly of a ready-made industrial plant. often including a guarantee of result, at least assistance during production, etc. -

TRANSFER & COMPETITION LAW (EU) Intellectual property is an « exception » to free movement of goods (justifies restrictions to free movement insofar as necessary for the protection of the IP right, art. 42 TFEU); this can lead to segmentation of markets n Principle of exhaustion once on the market with permission of the right holder (free movement not to be restricted more than necessary for the specific subject-matter of the right) (question whether first sale may contain prohibitions that lead to contractual liability of first buyer) n Further, agreements and practices restricting competition that may affect trade between member states are in principle prohibited under art. 101 TFEU (see supra) (see also the exception de minimis and other general rules on exceptions; possibility of block exemptions) n 3 relevant block exemptions (1 general, 2 more specific) + « Guidelines for horizontal agreements 2010 » + Guidelines for TT Agreements 2014 n

BLOCK EXEMPTIONS - TTBER Block exemption for technology transfer agreements « TTBER » (EU-Reg. 772/2004 > EU-Reg. 316/2014) (+ Guidelines), valid until 2026 n Scope of application: see the definitions in art. 1. n Concerns license agreements (patent, know how or mixed license agreements) (no longer since 2014: software, unless licensed for integration with other products) (license to produce software for resale > VBER, ch. Distribution) n Scope of the exception in the new TTBER is more limited, certain clauses out of scope, now have to be examined on a case-by-case basis (eg pay for delay clause in settlement*, …). See art. 2 (3) for the related clauses covered by the exemption. * So-called reverse payment patent settlement (RPPS), esp. Between an originator of medecine and producer of generic medicine - not immune for antitrust scrutiny in the US either: SCot. US 2013 in FTC/Actavis; EU general Court 8 Sep 2016 in Lundbeck (infringement already by its object) n Exclusion of certain networks in Art. 7 n

BLOCK EXEMPTIONS - TTBER n Duration of the exemption is limited to period of protection of the IP right (or for know how: as long as it remains secret) (art. 2) n (US law has an even stricter rule: post-patent term royalties are always unlawful, most recently in Kimble v. Marvel, SCot. US 22 June 2015, affirming the decision in Brulotte v. Thys from 1964) (less strict rule in EU: ECJ in C-567/14 Genentech, affirming ECJ in Ottung, C 320/87: licensee may terminate license agreement but royalties due as long as not terminated) Combined market-share thresholds (art. 3): 20 % on the relevant technology and product market* for competing undertakings, 30 % if not competing (complexity of defining the relevant market) n Black lists, see next slide n n Art. 6: Withdrawal of exemption in individual cases

BLOCK EXEMPTIONS - TTBER Black list of hardcore restrictions for competing undertakings in Art. 4, 1 n Black list of hardcore restrictions for not competing undertakings: see Art. 4, 2 n Black list (2014 TTBER) includes all restrictions of passive sales in territory of another licensee (unless justified on a case to case basis, to recoup investments) n Black list in art. 5 (excluded restrictions) contains: - exclusive grant-back license; - termination-on-challenge-clauses; n n Guidelines specify that any transfer of an IP right requires the transferee to engage in respecting the FRAND commitments of the transferor

BLOCK EXEMPTIONS - SBER Block exemption for specialisation agreements (Reg. 1218/2010) – Scope of application (art. 1), covered by the exemption: § unilateral specialisation § reciprocal specialisation § joint production agreements § provisions necessary for their implementation (art. 2 (2)) § exclusive purchase and/or supply obligations (art. 3 a) § joint distribution (art. 3 b) – Market share threshold: < 20% in ANY relevant market (art. 3) (where specialisation relates to intermediary products used for production of downstream products) – Hardcore restrictions (prohibited provisions) in art. 4 a, b, c – Except permitted provisions in art. 4 (b) (i) and (ii)

BLOCK EXEMPTIONS - RDBER n Block exemption for research and development agreements (R&D) (Reg. 1217/2010) – Scope of application of the exemption: – R& D agreements as defined in art. 1: § (i) joint R&D with joint exploitation § (ii) joint exploitation of the results of prior joint R & D; § (iii) joint R & D excluding joint exploitation; § iv) paid-for R & D and joint exploitation; § v) joint exploitation of the results of prior paid-for R & D; or § (vi) paid-for R & D excluding joint exploitation. – Provisions necessary for their implementation (art. 2, 2)

BLOCK EXEMPTIONS - RDBER n Block exemption for research and development agreements (R&D) (Reg. 1217/2010) - Conditions for the exemption: § All parties have access to the results for further research or exploitation (art. 3, 2) § Unless joint exploitation agreed, freedom of independent exploitation of the joint results and any pre-existing know how (art. 3, 2) § Joint exploitation limited to results protected by IP rights or constituting know-how (art. 3, 3) – Market share threshold in art. 4: if parties are competitors, combined market share < 25 % – Black list of prohibited clauses (hardcore restrictions) in art. 5 – 2 further prohibitions in art. 6

INTERNATIONAL TRANSFER – DEVELOPING COUNTRIES Specific problems of developing countries: - Need for technology (technological deficit) - Difficulties in obtaining technology: amount of royalties, export prohibitions or other conditions imposed (purchase obligations) by licensor upon licensee; no guarantee of result; n Reaction of developing countries (1960’s): regulation, control, … n International agreements lead to some liberalisation: - Bilateral investment treaties (s. next chapter) - Some codes of conduct, e. g. OECD Guidelines for multinational enterprises - TRIPS Agreement - EU Cotonou Agreement n

INTERNATIONAL TRANSFER – DEVELOPING COUNTRIES. n TRIPS Agreement - On the one side obligations to grant protection to foreign IP rights On the other side possibility of compulsory licensing (art. 31 TRIPS) Industrialised countries engaged themselves to promote transfer of technology to developing countries (art. 66 II TRIPS) Medicine: Doha declaration on the TRIPS agreement and public health (patents v. safeguard measures) + additional waiver of Aug 30, 2003 concerning § 6 Doha Decl. (compulsory license may also be used for export to other countries lacking production capacity) (to be turned into a permanent amendment of TRIPS, not yet ratified) > implemented in the EU by Reg. 816/2006 on compulsory licensing of pharmaceutical products for export; in India in Art. 92 Patent Act (revised 2005) Access to traditional agricultural knowledge: see also the FAO Treaty on Plant Genetic Resources for Food and Agriculture (in force 2004) - - n EU / Cotonou Agreement 2000

IP PROTECTION – COMPLIANCE TRIPS Agreement contains rules on compliance and combating counterfeiting (Part III, articles 41 -61) n States must provide for effective sanctions and remedies, incl. . - sanctions for IP violations, Obtaining evidence: art. 42 - Damages and expenses : art 45; information about involved third parties art. 47 - Provisional measures (art. 50) - disposal of the goods (out of trade) or destruction: art. 46 - rules on control and release of goods by customs authorities: conservatory measures (incl. suspension of release, art. 51), dispute resolution, indemnification in case of wrongful demand of detention (art. 48, 56), - criminal sanctions (art. 61) n

IP PROTECTION – COMPLIANCE TRIPS n Implementation ? n Dispute USA v. China in WTO dealt i. a. with these questions (panel report 2009; understanding US/China April 2010) n Problem of access to justice (see further Ch. 11) jurisdiction over the infringer obtaining evidence from third parties, esp. banks (as to the payments obtained by the infringer) - - E. g. « China’s great legal firewall »

IP PROTECTION – COMPLIANCE WCO n - - WCO (World Customs Organisation) Model for National Legislation to give customs additional powers to implement the Agreement on Trade-Related Aspects of Intellectual Property Rights «SECURE » - WCO Framework to secure global trade: project suspended in 2008

IP PROTECTION – COMPLIANCE (EU) Combating counterfeiting in the EU – implementing TRIPS obligations: Reg. n 608/2013 (replacing 1383/2003 since 1 Jan 2014) concerning customs enforcement of IP rights : procedures concerning goods suspected of infringing certain IP rights and the measures to be taken against goods found to have infringed such rights. Which violations are combated ? - Counterfeit goods (fake trademarks) - Pirated goods (infringing copyright or design right) - Goods infringing a patent, a protection certificate, a plant variety right, a designation of origin or geographical indication or designation - Moulds and matrices for the manufacturing of goods infringing IP rights - From 2014: also (unregistered) trade names (if protected under national law), topographies, utility models, technology circumvention devices (art. 2). n Out of the scope - Illegal parallel trade of legally produced products - Overruns (excess quantity by licensed producer)

IP PROTECTION – COMPLIANCE (EU) n n Some statistics – 2014 In the EU 95, 194 ‘cases’ of interception by customs, covering 35, 5 million articles. 35 % are cigarettes. Important are also toys, medicine, tolietreis, electrical household goods 88 % from China (incl. hongkong); other origins are mainly Emirates, Turkey, India, Malaysia

IP PROTECTION - COMPLIANCE (EU) Control in case of import, export, transit (Ec. J in C-446/09 Philips & n n n n 495/09 Nokia: in case of external transit only if sufficient grounds for suspecting ‘diversion’, i. e. that they will be put on the market in the EU)(Proposed new EU trademark rules are however tightening the rule, but without prejudice to WTO rules) Not: travellers personal luggage, unless commercial nature (art. 1 IV). Exception does not apply to goods sent to customer (bought on line): C-98/13 Blomqvist. Custom authorities have to take appropriate measures Art. 3 specifies who is entitled to apply for a measure by custom authority Art. 4 ff. application procedure Art. 7 ff. decision procedure. Right holder has to pay the costs incurred by customs (and can claim compensation from the infringer) (art. 29) ECJ 9 April 2014 in C-583/12 Sintax: authorities may also investigate on their own initiative

IP PROTECTION – COMPLIANCE (EU) n - n Ch. III deals with the action by the customs authorities: S. 1 (art. 17 ff. ) suspension of release / detention S. 2. (art. 23 ff. ) destruction. New Regulation extends and generalizes the simplified procedure for seizure and early destruction of counterfeit goods. Legal proceedings not necessary for destruction of small quantities (eg online purchases sent by post)(art. 26) or 2° if holder does not oppose within 10 days (art. 22). Simplified procedure applies when rights-holder opts in. Ch. V on exchange of information