Version 2
New Directions in Intellectual Property Rights
A.S.A.Krishnan and A.K.Chakravarti.
May, 1998
Information Technology Group Dept. of Electronics
Govt. of India
INDEX
New
Direction in Intellectual Property Laws - International Trends
With the digital revolution continuing and the Internet, coupled with multimedia on-line products becoming more popular, Cyber Law has emerged as a separate new area of specialisation. IPR in cyber environment has also been receiving international attention among the other components of cyber law. Members of the legal community have been examining the extent to which traditional intellectual property principles apply in cyberspace. While patent, trademark and trade secret laws are occasionally relevant, it is the area of copyright law as applied to multimedia products in cyberspace that continues to receive the most attention. In several countries, and also internationally reviews of copyright laws are under way, proposing solutions to the problems thrown up by digitalisation due to the characteristics of Digital Media. These include activity at WIPO, which considered and adopted an extension to the Berne convention in December 1996, the European Green Paper on Copyright and Related Rights in the Information Society, prepared by European Commission, the US White paper on Intellectual Property and The NII and other initiatives from working countries such as Australia, Canada, Malaysia and Japan. In this article we analyse the recent developments/amendments in IPR laws taking place worldwide, in order to tackle the global technology shift.
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2.
Europe - the European Commission Green Paper
In July 1995, the EC published a green paper entitled "Copyright and related Rights in the Information Society". The Paper highlights that the full development of the Information Soceity in Europe, including the information superhighway will require harmonisation of IPR laws to ensure that right holders will make the material available while balancing the interests of users. The Green paper identifies certain issues which are key to the application of copyright to the new technology. These are the new services and interactive nature of such services, the new emerging market structures, and the importance of cross-border services. These include a number of legal issues, including the identification of the author, the applicability of the traditional concept of originality as condition for protection, the concept of 'first publication' when a work can be simultaneously disseminated world wide, the concept of 'fair use' and the scope of exclusive rights giving the right to prohibit exploitation of work.
The proposed directive on the legal protection of databases, when it is adopted will have fundamental importance in the information society, given the fact that most of the future services and products will be operated from databases. It seeks to harmonise the copyright law applicable to database structures, in whatever form, on-line and off-line(CD-ROM etc.). It also envisages the introduction of a new economic right, sui-generis, which would protect the substantial investments of database makers.
Apart from the above directives and proposals, certain new amendments may be introduced to take care of the digital nature of copyrighted products. The specific rights which are being envisaged or under review are:
Reproduction Right to implement strict control of reproduction, and
associated exceptions; New definition of communication to the public specially
in the network environment; Legislation on Transmission right over network
and digital broadcasting rights for digital dissemination, which require
clarity and legal certainty presently; Moral rights in an interactive environment.
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Digital Era Copyright Enhancement Act
To update and preserve balance in the Copyright Act for the 21st Century; to advance educational opportunities through distance learning; to implement the World Intellectual Property Organisation Copyright Treaty, and Performances and Phonograms Treaty, and for other purposes, in November 1997, a bill entitled 'Digital Era Copyright Enhancement Act'. is in the process of enactment. The highlights of the amendments are:
Analog or digital transmission is also included as part of fair use.
For first sale purposes, the following has been added with respect to phonograms.
In the case of digital copies, it is not an infringement to make a copy
of a work in a digital format if such copying—
(1) is incidental to the operation of a device in the course of the
use of a work otherwise lawful under this title; and
(2) does not conflict with the normal exploitation of the work and
does not unreasonably prejudice the legitimate interests of the author.'.
No person, for the purpose of facilitating or engaging in an act of infringement, shall engage in conduct so as knowingly to remove, deactivate or otherwise circumvent the application or operation of any effective technological measure used by a copyright owner to preclude or limit reproduction of a work or a portion thereof. As used in this subsection, the term 'conduct' does not include manufacturing, importing or distributing a device or a computer program.
'Effective technological measure' has been defined as a change
in the data comprising a work or a copy of a work transmitted in digital
format so as to protect the rights of a copyright owner of such work or
portion thereof under this title and which—
(1) encrypts or scrambles the work or a portion thereof in the absence
of information supplied by the copyright owner; or
(2) includes attributes with respect to access or recording status
that cannot be removed without degrading the work or a portion thereof.
No person shall knowingly provide copyright management information that is false, or knowingly publicly distribute or import for distribution copyright management information that is false, with intent to induce, facilitate, or conceal infringement.
No person shall, without authority of the copyright owner or other lawful
authority, knowingly and with intent to mislead or to induce or facilitate
infringement—
(1) remove or alter any copyright management information;
(2) publicly distribute or import for distribution a copy or phonorecord
containing copyright management information that has been altered without
authority of the copyright owner or other lawful authority; or
(3) publicly distribute or import for distribution a copy or phonorecord
from which copyright management information has been removed without authority
of the copyright owner or other lawful authority.
'Copyright management information' has been defined as the following
information in electronic form as carried in or as data accompanying a
copy or phonorecord of a work, including in digital form:
(1) The title and other information identifying the work, including
the information set forth in a notice of copyright;
(2) The name and other identifying information of the author of the
work;
(3) The name and other identifying information of the copyright owner
of the work, including the information set forth in a notice of copyright;
(4) Terms and conditions for uses of the work;
(5) Identifying numbers or symbols referring to such information or
links to such information; and
(6) Such other identifying information concerning the work as the Register
of Copyrights may prescribe by regulation: Provided, That the term 'copyright
management information' does not include the information described in section
1002, section 1201(c), or a chapter of this title other than chapters one
through nine of this title: Provided further, That, in order to assure
privacy protection, the term 'copyright management information' does not
include any personally identifiable information relating to the user of
a work, including but not limited to the name, account, address or other
contact information of or pertaining to the user. violator was not aware
and had no reason to believe that its acts constituted a violation.
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Digital Copyright Clarification and Technology Education Act of 1997
Another bill titled 'Digital Copyright Clarification and Technology
Education Act of 1997'. has been placed in the U.S Senate for enactment.
The purpose of this bill is :
(1) to clarify the application of copyright law in the unique environment
of Internet and on-line communication;
(2) to foster the continued growth and development of the Internet
as a means of communication and commerce, including the lawful distribution
of intellectual property;
(3) to protect the rights of copyright owners in the digital environment;
(4) to clarify that providing network services and facilities with
respect to the transmission of electronic communications of another person
does not result in liability under the Copyright Act;
(5) to clarify that Internet and on-line service providers are not
liable for third-party copyright infringements unless they have received
notice in compliance with this Act of the infringing material and have
a reasonable opportunity to limit the third-party infringement; and
(6) to create incentives for the rapid elimination of infringing material
residing on an electronic communications system or network without litigation.
Under this bill "A person shall not be liable for direct, vicarious
or contributory infringement of copyright arising out of providing electronic
communications network services or facilities with respect to a copyright
infringement by a user. A person shall be considered to provide 'network
services and facilities' when such person transmits, routes or provides
connections for material on behalf of a user over an electronic communications
system or network controlled or operated by or for the person, including
intermediate and transient storage, the processing of information, and
the provision of facilities therefor, if—
(A) the provision of services is for the purpose of managing, controlling
or operating a communications system or network, supplying local access,
local exchange, telephone toll, trunk line, private line, or backbone services,
including network components or functions necessary to the transmission
of material contained in electronic communications carried over those services;
or
(B) the transmission of material over the system or network on behalf
of a user does not involve the generation or material alteration of content
by the person."
In the case of private and real time communication services, a person
shall not be liable for direct, vicarious or contributory infringement
of copyright arising from supplying to another—
(A) a private electronic communication, including voice messaging or
electronic mail services, or any other communication for which such person
lacks either the technical ability or authority under law to access or
disclose such communication to any third party in the normal course of
business; or
(B) real-time communication formats, including chat rooms, streamed
data, or other virtually simultaneous transmissions.
With regard to information location tools no person shall be liable
for direct, vicarious or contributory infringement of copyright arising
out of supplying a user of network services or facilities with—
(A) a site-linking aid or directory, including a hyperlink or index;
(B) a navigational aid, including a search engine or browser; or
(C) the tools for the creation of a site-linking aid.
Material residing on a system or network-
(1) co-operative procedure for expeditious response to claims of infringement-
A person shall not be liable for direct, vicarious or contributory infringement
of copyright arising out of the violation of any of the exclusive rights
of the copyright owner by another with respect to material residing on
a system or network used in conjunction with electronic communications
that is controlled or operated by or for the person, unless upon receiving
notice complying with paragraph (b)(3), the person fails expeditiously
to remove, disable, or block access to the material to the extent technologically
feasible and economically reasonable for a period of ten days, or until
receiving a court order concerning the material, whichever is less.
(2) Paragraph (b)(1) shall apply where such person—
(A) did not initiate the placement of
the material on the system or network;
(B) did not determine the content of
the material placed on the system of network; and
(C) did not contract for placement of
the specific material on the system or network by
another person in order to provide that content as part of the person's
service offering.
(3) A person shall not be deemed to have notice that material residing
on a system or network used in conjunction with electronic communications
is infringing unless the person—
(A) is in receipt of a notification
that the particular material is infringing. Such notification shall:
(i) pertain
only to allegedly infringing material that resides on a system or network
controlled or operated by or for the person;
(ii) be
submitted in accordance with directions displayed on the person's system
or network indicating a single place or person to which such notifications
shall be submitted;
(iii) be signed,
physically or electronically, by an owner of an exclusive right that is
allegedly infringed, or by a person authorised to act on such owner's behalf;
(iv) provide
an address, telephone number, and electronic mail address, if available,
at which the complaining party may be contacted in a timely manner;
(v) describe
the material claimed to be infringing, including information reasonably
sufficient to permit the person expeditiously to identify and locate the
material;
(vi) provide reasonable
proof of a certificate of copyright registration for the material in question,
a filed application for such registration, or a court order establishing
that use of the material in the manner complained of is not authorised
by the copyright owner or the law;
(vii) contain a sworn statement
that the information in the notice is accurate, that the complaining party
is an owner of the exclusive right that is claimed to be infringed or otherwise
has the authority to enforce the owner's rights under this title, and that
the complaining party has a good faith belief that the use complained of
is an infringement;
(viii) be accompanied by
any payment that the Register of Copyrights determines is necessary to
deter frivolous and de minimis notices; and
(B) A person who is an employee or agent of
a non-profit educational institution, library or archives, acting within
the scope of his employment, or such an educational institution, library
or archives itself, shall not be deemed to have notice under subparagraph
(A) if that person reasonably believed
(i) that the allegedly infringing use was a fair use under Sec.
10 or
(ii) was otherwise lawful; and
(C) The Register of Copyrights may, by regulation, establish guidelines
identifying additional information to be included in the notice and shall
issue a standard notice form in both electronic and hard copy formats,
which complies with this paragraph, but failure of a party to provide any
such additional information, or failure to use any issued form, shall not
invalidate the notice.
Misrepresentations and redress for wrongful notifications- Any person
who materially misrepresents that material on-line is infringing in a notice
described in paragraph (b)(3)(A), shall be liable in a civil action that
may be brought in an appropriate United States district court or State
court for statutory damages of not less than $1,000, and any actual damages,
including costs and attorneys' fees, incurred by—
(A) the actual copyright owner or the alleged infringer arising out
of the disabling or blocking of access to or removal of such material;
or
(B) any person who relies upon such misrepresentation in removing,
disabling, or blocking access to the material claimed to be infringing
in such notice.
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A law to combat piracy on the Internet, passed by President Clinton,
will make it an offense to exchange unauthorised copies of software, music
and literature even if the guilty party does not make a profit. The No
Electronic Theft (NET) Act, the third bill specifically related to the
Internet and technology signed by Clinton, means that anyone distributing
illegal copies of material over the value of USD2,500 or more will be subject
to five years in prison plus a fine of USD25,000. For illegal possession
of material valued at USD 1,000 or more the culprit will face a misdeamenour
charge and a jail sentence of one year. The importance of the Internet
and high technology industries to the US economy has seen number of bills
introduced in the recent past with more legislation to be implemented in
early January.
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As part of the Information Policy Group of the Information Infrastructure Task Force on NII, the Working Group on IPR was set up. After issuing a preliminary draft report in July 1994 and taking both oral and written evidence from a large number of interested organizations and individuals, the Working Group issued the final report in September 1995. After examining the existing state of the US law and the arguments for and against intellectual property protection for various kinds of information on the NII, the Working Group has proposed to deal with the main problems that perceived arising from dealings with works in cyberspace by amending the US copyright Act. These amendments include defining existing infringing acts such as 'publication' and 'importation' to include unauthorised electronic transmission of a work where the primary purpose of the transmission is to distribute a copy of the work . It is also proposed to make it illegal to circumvent copy protection technology and to provide for a scheme of copyright management information to be attached to the work, and making it illegal to falsify such information or remove it without authority. The working Group also proposes that the elements of criminal copyright infringement be amended by removing the requirement that the defendant has to obtain monetary gain from infringement.
Based on the Final recommendations of the above Working Group, the U.S
Copyright Law has been amended and the specific copyright law to the digital,
networked environment of NII has been named as 'NII copyright Protection
ACT of 1995'.
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A multimedia working party set up by the UK Department of Trade and
Industry, comprising of representatives from the media, publishing, music
and computer industries, has recently reported and has recommended that
a copyright owner who is unable to track down the sources of information
distributed over the Internet should be able to obtain compensation from
the service provider or force the blocking of such transmissions. This,
of course, has caused outcry from the service providers.
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5. The Global Information Infrastructure Commission (GIIC) recommendations on IPR
The GIIC recommends that current intellectual property laws should be
carefully reviewed for adapting to the future development of the technology,
with sufficient consideration for the balance between right holders and
users, specially to maintain a robust public domain of international shared
knowledge in GII environment. It supports in principle effort to take technological
measures to prevent any activities infringing exclusive rights. It recommends
that an accurate definition of the boundary between legal and illegal activities
is necessary to clarify this matter. To reduce the transaction costs for
both right holders and users, the GIIC believes that one or more collective
mechanisms for identifying right holders and establishing the conditions
for utilization will be necessary. With respect to software, the Commission
recommends that governments examine the issuing of software patents through
multilateral organizations. While the GII is borderless, worldwide information
Infrastructure, IPR laws are differ in many countries. In order to have
full exploitation of the GII for the transaction of business worldwide,
GIIC urges international harmonization for resolving the issues of IPR,
arising out of GII.
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In the light of the significant development of relevant technologies and changes in socio-economic backgrounds and international situations after 1971, the Copyright Law of Japan has been revised a number of times. The major recent revisions of the Copyright Law are as follows.
Amendments to the Japanese Patent Law were promulgated on December 14, 1994. The amendments fall into two groups, one group being effective on July 1, 1995 and the other being effective on January 1, 1996. Many of these amendments were pressed for by U.S. industry.
Amendments effective July 1, 1995 include the following:
1) All patents and patent applications in force on July 1, 1995 will have a term of 20 years from the filing date.
2) It will be possible to file applications in English provided that a Japanese translation is filed within 2 months.
3) Provision will be made for the first time for restoration of patents which have lapsed for non-payment of annuity fees as long as the reason for that failure was "due to reasons beyond the patentee's control" and the application for restoration is filed within six months of the expiration of the normal grace period for late payment of annuity fees.
4) Priority will henceforth be able to be claimed from applications filed in any country that has adopted the GATT-TRIPS Agreement even if that country is not a member of the Paris Convention.
5) The previous prohibition on protection for substances manufactured by transformation of the atom has been repealed. The major provisions which come into effect on January 1, 1996 in Japan are:
2) Accelerated examination of patent applications is provided for if the applicant submits to the Japanese Patent Office a Search Report issued by a foreign or regional Patent Office. Applications for which accelerated prosecution is requested must be granted or rejected within 36 months of the date on which the request for accelerated examination is filed.
Report of Multimedia Subcommittee of the Copyright Committee in Japan
On February 24, 1997 in Japan, a report including recommendations relating to the Japanese copyright system in this advanced information society was brought before the Copyright Committee, and ultimately confirmed by the committee. The report was prepared by the Multimedia Subcommittee of the Copyright Committee. Within the Subcommittee, problems related to copyright in a digitised and networked society since its creation in 1992 were discussed.
Though the report was prepared in response to the new treaties issued
by the World Intellectual Property Organisation (WIPO) last December, it
did not address all of the issues raised by the WIPO treaties. According
to the report, the remaining issues will continue to be discussed with
recommendations expected sometime in the near future. A bill amending the
Japanese Copyright Act in accordance with the following recommendations
will be submitted to the Japanese Congress later this spring.
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Recommendations
(1) Give performers and producers of phonograms the right to transmit
by request. Performers and producers of phonograms, unlike authors, have
not had the right to transmit by request via a computer network, such as
the Internet. However, they are given the right in the WIPO Performances
and Phonograms Treaty to make available to the public fixed performances
and phonograms. In accordance with this treaty, the Japanese Copyright
Act should also provide the right to make such works available; in other
words, the right to place such works on networks should be made available.
(2)Add "making available to the public" to "transmission"
(3)In Japan, an author has been provided rights related to transmissions made by request since 1986. Under the current Japanese Copyright Act however, the action of making a copyrighted work available to the public is not a copyright infringement, though a "transmission" itself may be an infringement. The "Right of Communication to the Public" in the WIPO Copyright Treaty covers not only the transmission itself, but also the making available to the public of works in such a way that members of the public may access the works from a place and at a time individually chosen by them. Therefore, it is necessary to add "making a available to the public" to the concept of "transmission" in the Japanese Copyright Act.
(4)Expand the scope of the "wire transmission" of a computer program
(5)Under the current Japanese Copyright Act, the "wire transmission" right excludes transmission by wire telecommunication installations which are located on the same building. The rapid development of LANs (Local Area Networks) recently, however, has created a great disadvantage to copyright owners of computer programs. For example, in one company all employees are able to co-use one copy of a business application software via LAN, incurring only the cost of one software application. To prevent this, the transmission of computer programs in the same building should be included in the scope of the "wire transmission" right.
(6)Clarify the scope of the "broadcasting right" by wireless
(7)In the Japanese Copyright Act, the term "broadcasting" has traditionally represented the concept of wireless transmission to the public. It has not been clear whether the scope of the "broadcasting right" covers wireless transmission by request or not. Because wireless transmissions by request have begun to occur recently, the scope of the "broadcasting right", including the wireless transmission by request, should be clarified. In the WIPO Copyright Treaty, articles covering transmission by request do not distinguish between those made by wire and those made wireless.
(8)Regulation of equipment to defeat copy protection The current Japanese
Copyright Act does not contain any provision covering equipment designed
to defeat copy protection. On the other hand, the WIPO treaties provide
for member obligations concerning such technological measures. This issue
is fraught with controversial problems necessitating further discussion.
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7. Hong Kong - Amendment of Intellectual Property Laws
On May 2, 1996, the Intellectual Property (World Trade Organization
Amendments) Ordinance was passed and it entered into force on May 10, 1996.
The law was introduced in October 1995 to enable Hong Kong to fulfill its
obligations under GATT-TRIPS and to conform to new international intellectual
property standards. Irrespective of whether China itself is admitted to
the WTO, Hong Kong's status as a member of the WTO will not be affected
by its reversion to Chinese sovereignty, since it will retain its status
as a separate trading entity. The principal provisions of the new Ordinance
are summarized below.
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1) The definition of a trademark has been expanded to include "any sign that is visually perceptible and capable of being represented graphically." Under this definition, certain shapes (but probably not sounds or smells), if capable of being represented graphically, may now be registrable.
2) The definition of infringement of a trademark has been expanded, so that a registration may be infringed by use of an identical or confusingly similar mark, not only in relation to goods or services covered by the registration (as was the case under the former Ordinance), but also in relation to goods or services of the same description, where such use would result in a likelihood of confusion. As the phrase "of the same description" covers only goods or services provided in the same business, this provision is not as broad as it should be under Article 16 of GATT-TRIPS.
3) Trademark owners may now apply to the High Court for an order directing the Commissioner of Customs and Excise to take appropriate steps to seize and detain infringing goods imported into Hong Kong. The application may be made ex parte, with notice to the Commissioner, and must be supported by an affidavit giving grounds sufficient to make out a prima facie case.
4) Under the transitional provisions, only infringements, which first
occurred after May 10, 1996, will be affected by the new Ordinance. Pending
trademarks that were not advertised prior to May 10, 1996, may be converted
into applications under the new Ordinance and be examined thereunder, provided
notice is given to the Registrar and payment of an official fee is made
by November 9, 1996.
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1) The Ordinance provides for new copyright protection for performers of musical, dramatic and literary works. Performers of such works may now take steps to prevent certain unauthorized recordings, subsequent re-recordings, broadcasts of performances or any public showing or playing of certain unauthorized recordings or broadcasts. The term of protection is 50 years from the end of the calendar year in which a work is performed and extends to performances anywhere in the world by persons domiciled or resident in Hong Kong.
2) Copyright owners may prevent the rental of certain computer programs and sound recordings without their consent. Under the transitional provisions, only infringements occurring on or after May 10, 1996, are subject to the new Ordinance.
3) Criminal penalties, including fines and imprisonment, may be imposed for offenses committed outside Hong Kong that constitute, aid, abet or procure copyright infringement in Hong Kong. These offenses include the manufacture of infringing goods for import into Hong Kong, the manufacture of articles intended to be used in Hong Kong to make infringing goods, the manufacture of articles for use outside Hong Kong in making infringing goods for import into Hong Kong, as well as export from Hong Kong of articles for use in making infringing goods for import into Hong Kong. However, the manufacture of goods with the consent of a foreign copyright owner will not constitute an offense under the Ordinance.
4) The Ordinance enables copyright owners to apply to the High Court
for an order directing the Customs authorities to seize and detain suspected
infringing goods on or after importation to Hong Kong under the same conditions
as outlined above for trademarks.
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8. Ireland - New Trademark Law
A new trademark law, enacted to implement the European Community Trade Mark Harmonisation Directive No. 89/104/EEC and to give effect to the Madrid Protocol, entered into force on July 1, 1996. According to our sources, the principal changes effected by the new law are summarized below.
2) Multiple classes may now be covered in a single application.
3) The definition of a trademark has been expanded to include any sign that can be represented graphically, including the shape of goods or their packaging.
4) Part A and Part B of the Register have been eliminated to create a single Register.
5) Trademark registrants may now sue for infringement with respect to the use of confusingly similar marks on goods or services similar, but not necessarily identical, to those covered by their registration.
6) New penal offenses have been enacted to discourage trademark counterfeiting.
7) The provisions for trademark licensing and license recordal have been simplified.
8) Registrations are now granted for a period of 10 years from the filing date and may be renewed for further 10 year periods.
9) Collective marks may be registered.
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The Philippines has formulated certain strategies to strengthen our intellectual property system. These strategies can be classified according to these objectives as
2. the improvement of the administrative procedure in granting patents, registration of trademark and copyright, and liberalization of regulations on the transfer of technology;
3. improvement in the enforcement of intellectual property rights. Compliance with TRIPS
The Salient features of the new law are as follows
a.) With respect to patents:
2. The "first to file" system is adopted in the granting of patents in lieu of the "first to invent" system.
3. The term of the patent protection will be 20 years from date of filing which departs from the previous 17 years from the date of issue.
4. Substantive examination has to be requested, unlike the previous system wherein substantive examination is automatically undertaken.
5. The patentee automatically earns the right of importation,in addition to the exclusive right to make, use or sell the invention provided for under the previous law.
6. In infringement cases involving process patents, the burden of proof is shifted to the defendant to prove the absence thereof.
7. In cases of repetitive infringements, a stiffer penalty is imposed, i.e imprisonment of not less than 6 months to 3 years and/or a fine of P 100,000.00 to P 300,000.00.
8. The adoption of the TRIPS provisions which aims to meet the needs of the consumers for affordable products without substantially depriving the patentee of any economic advantage he would normally gain from his patent, in compulsory licensing.
2. An application for registration of a trademark may be refused if it is determined ex-parte by competent authority to be well-known internationally, and in the Philippines, whether or not it is registered in the latter, as being the mark of a person or entity other that the applicant ( Section 113 [e], supra). Moreover, color alone, it "defined by a given form", may be registered as a trademark ( Section 113 [l] ).
3. An application may now refer to several goods and services, by filling an "initial application" and dividing it into two (2) or more "divisional applications" and distributing among the latter, the goods or services referred to in the initial application (Section 119).
4. Only one Register to Trademarks shall be maintained (Section 127). The Supplemental Registered is ABOLISHED
5. A trademark registration certificate shall remain in force for a period of ten (10) years, subject to renewal for succeeding periods to ten-year increment (Section 135 & 136). The previous law provided for a 20 year period of validity of registration.
6. The exclusive right of the owner of a well-know mark as determined by the Bureau. which is registered in the Philippines, Shall extend to goods and services which are not similar to those in respect of which the mark is registered, provided that the use of that mark in relation to those goods and services and the owner of the registered mark is likely to damaged by such use (Section 137.2).
7. Petitions for cancellation of marks will now be filed with the regular courts and no longer with the Bureau which will be confined to the registration of trademarks (Section 141). In any action involving the registration of a trademark, the regular courts may determined the right of registration, order the cancellation of registration. in whole or in part, or otherwise rectify the register with respect to the registration of any party to the action. Judgment and orders shall be certified by the court to the Director of the Intellectual Property Office. who shall make the appropriate entry upon the records of the Office, and shall be controlled thereby (Section 150).
8. In trademark infringements, a stiffer penalty will be imposed ranging from imprisonment of 2 to 5 years, plus a fine.
2. Reproduction of computer programs may be made without the author's consent, subject to certain conditions in instances where such reproduction is necessary (Section 189).
3. Decompilation of computer programs is allowed under certain conditions., Decompilation which is understood to be the reproduction of the code and translation of the forms of the computer program to achieve inter-operability of an independently-created computer program with the programs may also constitute "unfair use."
4. In copyright infringement, a stiffer penalty is imposed. For the first offense, imprisonment of 1 to 3 years plus a fine of P 50,000.00 to P 150,000.00. For the second offense, imprisonment of 3 to 6 years plus a fine of P 150,000.00 to P 500,000.00. For the third offense. imprisonment of 6 to 9 years plus a fine of P 500,000.00 to P 1,5000,000.00.
The second objective of the IPR strategy of the Philippines is to streamline the administrative producers of registering patents, trademarks and copyrights as well as to liberalized the regulation on the transfer to technology.
The existing procedure for the examination and grant of patents, utility models and industrial designs, is outdated. In order for the BPTTT to achieve a reasonable level of certainty that the patents it grants are strong and in conformity with international standards ( not to mention seasonably issued) the new law incorporates the following changes :
b. The adoption of the deferred examination procedure, pursuant to which the patentability of the invention will not be examined until the after the applicant is provided by the BPTTT with a "search report" indicating the "prior art", which consists of patents and publications on inventions similar to that which is sought to be patented, and could be cited to disprove the claim that the invention is new and inventive. On the basis of an unfavorable search report, the applicant will likely not request for examination of this application. From the point of view of the applicant, this would cut the cost of prosecuting the application and from the point of view of the BPTTT, it would result in a substantial reduction of examination workload.
c. Applications for utility models or industrial designs will no longer be examined to determine whether they have practical utility, are novel or original, provided they meet certain formal requirements, will forthwith be registered by the BTTT. The registration by it self will serve as the basis of protection. This change is dictated mainly by the impossibility of accurately determining whether the matter for which a utility model or industrial design protection is sought is novel or original. Because of their simplicity in structure, configuration or form, there are innumerable articles throughout the country which could form part of the "prior art". If the question of ownership of a utility model or industrial design is contested by several persons it should be resolved in adversarial proceedings before the courts. Under the new systems of registration, the processing of utility models and industrial designs applications will not exceed three months . This would make the systems respond effectively to the need of makers and designers for immediate protection since the demand for these products oftentimes last only for a brief period.
d. The new law also mandates the Bureau to apply the procedure prescribed in the Patent Cooperation Treaty (PCT) in the examination of what is referred to in the latter as the international application. In light of the growing complexity and rapid changes of technology as well as the increasing competition in trade and commerce worldwide there is a growing number of patent applications filed in many countries. Patent offices of developed countries employ highly skilled examiners and install high-tech facilities for storing, retrieving and analyzing data. A developing country's patent office could hardly cope with these challenges.
The ability of the Philippines to adequately protect intellectual property
rights will invariably boost confidence of the international business community
on the enforcement of IPR laws in the country. The third objective, therefore,
is the enhancement of enforcement capabilities in the country. The various
measures to achieve this classified into three, namely
(a) legislative;
(b) executive; and
(c) judicial.
Copyright infringement is now penalized by a fine ranging from P 50,000.00 to P 150,000.00, plus imprisonment for a period ranging from one year to three years, for the first offense. These are substantially increased for the second offense and moreso, for third and subsequent offenses.
As regards remedial measures initiated by a Executive Department the Philippines had to address the loose and uncoordinated enforcement of IPR laws in the Philippines carried out by several departments and agencies of government. The absence of a central authority to provide policy direction and uniformity in the implementation of intellectual property laws hampered the Philippines' capability to combat piracy and counterfeiting. To remedy this problem, Executive Order No. 60 was issued by the President of the Philippines in February, 1993 establishing the Presidential Inter-Agency Committee on Intellectual Property Rights (PIAC - IPR) Its main objective is to coordinated, firstly, the activities of government agencies dealing with the administration and enforcement of intellectual and industrial property rights, and secondly. the policy-making process of the Executive Branch on matters relating to intellectual property.
DTI under Executive Order No. 913.
On the judicial front, the Supreme Court issued Administrative Order No. 113-95 as amended by Administrative Order No. 104-96 dated October 21, 1996 designating 27 Regional Trial Courts as Special Courts for Intellectual Property Rights-related cases. Said Administrative Order mandates the Special Courts to take cognizance of all cases for violations of laws on intellectual property. The same further set a time frame whereby "Trial shall be immediately commenced and shall continue from day to day, to be terminated as far as practicable within 60 days from initial trial. Judgement shall be rendered within thirty days from date of submission for decision." Altogether, these measures are expected to dramatically improve the enforcement of laws against violators or intellectual property rights.
Private sector participation
Success in the filed of IPR can be achieved with the assistance of the private sector. The owner of the intellectual property remains the driving force in the effectiveness of any enforcement program. He has every motivation to defend and protect the business enterprise he has established through hard work and substantial capital, against those who threatens his business by counterfeiting his products. and stealing his ideas.
The government's role comes into play in providing an adequate system of remedies that the IPR holder can avail himself of inexpensively and expeditiously. Thus the winning formula in the battle against infringers is the pooling of resources of both the private and public sector.
It is in this context that two of the fifteen members of the PIAC -
IPR come from the private sector. They are nominees of :
(i) The Intellectual Property Association of the Philippines (IPAP),
an association of lawyers engaged in intellectual property practice. and
(ii) the Council to Combat Counterfeiting and Piracy of Patents, Trademarks,
and Copyright (COMPACT). an association of corporations and businessmen
who have special interest in promoting the protection of IPR.
These organisations have played a vital role in the government's program
to promote awareness or disseminate information on intellectual property
and in holding orientation seminars or training to update the skills of
enforcement officers.
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11. The New Copyright Treaties of WIPO
Recognising the profound impact of the digital technologies, World Intellectual Property Organization (WIPO) organised a Diplomatic conference in December 1996, inviting around 160 member countries, with digital agenda as the main theme. The digital agenda of the conference sought to modify the existing norms and rights of the international rights regime and to create new ones so as to cope up with the creation, adoption, transmission and distribution of works in the digital medium. Three draft treaties, prepared by WIPO were discussed in detail - one concerning copyright, second concerning the protection of performers and producers of phonograms, and the third one concerning new form of sui-generis protection of databases. At the end of the conference the first two treaties were adopted viz: the Copyright Treaty and the Performances and Phonograms Treaty. These Treaties would come into force after ratification by the respective member countries.
With respect to computer software, in the new treaty, computer programs, in any mode or form of expression are protected as literary works. In the case of copyright protection of original databases to emphasize the unique and specific nature of databases as objects of protection, compared to traditional categories of works, database has been defined as compilation of data, instead collection, as defined in the Berne Convention.
Perhaps the most important article of the new Treaty is concerning the rights of communication to the public. The provisions of the Berne Convention do not provide full certainty when they are applied to the interactive on-demand transmission of protected works over information networks. The new right of transmission has been added to the already existing rights of reproduction and the right of public performance or the right of communication. The right of communication in the new treaty has been extended to all categories of copyrighted works. The actual wording of the corresponding Article, regarding the right of communication is that such a right includes "the making available to the public of their works by wire or wireless means, in such a way that members of the public may access these works from a place and at a time individually chosen by them". This statement takes care of digital on-line delivery of works and this rule would function as the basic rule for digital department stores, digital bookstores, digital record and video shops. Providing access to protected works is covered by authors' rights. Contracting parties or member countries of the Treaty can fulfil the requirements by granting authors a right of communication, "a right of transmission" or a right of distribution by transmission. Legal security for on-line service providers and telecommunication companies is assured, by the clause, " The mere provision of physical facilities for enabling or making a communication does not itself amount to communication within the meaning of this Treaty or Berne Convention."
The second Treaty on performances and phonograms is intended to be an independent and comprehensive one, covering all the relevant aspects in respect of the protection of the performers and producers of the phonograms. This Treaty contains an important article on definitions, to keep pace with the digital influence. The definition of the phonograms and producers of phonograms have been modernised so that in addition to the fixation of sounds, they also cover fixation of a representation of sounds. In many cases the whole or part of a phonogram is produced without fixing "real" audible sounds, but by writing the digital signals, representing sounds directly into memory of a computer. The definition of broadcasting now explicitly covers transmission by satellite and transmission of encrypted signals. In order to protect the performers against unauthorised and obscene modification of their performances, while fixing in phonograms, performers have been granted "moral rights". Similarly, performers and makers of phonograms are granted right of reproduction, both direct and indirect in any manner or form, and an exclusive right of making available to the public of their performances fixed in phonograms by interactive on-demand delivery methods.
In both the Treaties, some common provisions have been introduced -
international exhaustion of the right of distribution which permits further
distribution of legal authorised copies of protected works anywhere in
the world, right of rental for computer programs, cinematographic works
and works in phonograms. With regard to limitations and exceptions, member
countries have been authorised to modify or extend their national legislation
to include appropriate limitations and exceptions for digital network environment.
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