[Ip-health] WIPO: Proposal for training of judiciary raises concerns

K.M. Gopakumar kumargopakm at gmail.com
Wed Apr 13 01:52:20 PDT 2016

Proposal for training of judiciary raises concerns*
* Published in SUNS #8220 dated 13 April 2016*

New Delhi, 12 Apr (K. M. Gopakumar) -- A proposal by the Secretariat of the
World Intellectual Property Organization (WIPO) to train the judiciary of
developing countries on intellectual property and development issues raises

The proposal titled "Cooperation on Intellectual Property Rights Education
and Professional Training with Judicial Training Institutions in Developing
and Least Developed Countries" will be discussed at the on-going 17th
session of the WIPO Committee on Development and Intellectual Property

The meeting at the WIPO headquarters in Geneva is from 11 to 15 April.

The proposal originally submitted at the 16th session of CDIP is up for
substantial discussion this week.

The proposed project is to carry out judicial trainings in four selected
judicial institutes from developing countries, one each from Africa, Asia,
Latin America and the Caribbean, and the Arab region.

The project involves development of a training program for
initial/induction intellectual property rights (IPR) training and
in-service IPR training.

It includes development of a tool kit and delivery of face-to-face and
online training.

Further, the project also envisages the fostering of a network among
judicial training institutes to learn from each other from their IPR
training initiatives.

Lastly, the proposal also proposes the creation of one or more online
professional ‘communities of practice' on IPR issues for social/networked
peer-to-peer learning amongst magistrates, judges and prosecutors.

At the 16th CDIP session, Brazil, on behalf of the Group of Latin America
and Caribbean Countries (GRULAC), sought clarifications from the
Secretariat with regard to the content of the IPR tool kit.

Further, Brazil also sought an assurance from the Secretariat that the
training should exclusively focus on the development aspects mentioned in
recommendations 3, 10 and 45 of the WIPO Development Agenda.

[Recommendation 3: Increase human and financial allocation for technical
assistance programs in WIPO for promoting, inter alia, a
development-oriented intellectual property culture, with an emphasis on
introducing intellectual property at different academic levels and on
generating greater public awareness on intellectual property.

[Recommendation 10: To assist Member States to develop and improve national
intellectual property institutional capacity through further development of
infrastructure and other facilities with a view to making national
intellectual property institutions more efficient and promote fair balance
between intellectual property protection and the public interest. This
technical assistance should also be extended to sub-regional and regional
organizations dealing with intellectual property.

[Recommendation 45: To approach intellectual property enforcement in the
context of broader societal interests and especially development-oriented
concerns, with a view that "the protection and enforcement of intellectual
property rights should contribute to the promotion of technological
innovation and to the transfer and dissemination of technology, to the
mutual advantage of producers and users of technological knowledge and in a
manner conducive to social and economic welfare, and to a balance of rights
and obligations", in accordance with Article 7 of the TRIPS Agreement.]

Egypt demanded a demarcation of the on-going training of judicial officers
and the proposed training carried out under the project.

It also queried how, while seeking funding and collaboration with other
partners, the Secretariat is going to adhere to recommendation 10 of the
Development Agenda.

Recommendation 10 states that the objective of building national
institutional capacity is to enhance efficiency and balance between
intellectual property (IP) protection and public interest.

India asked for full information with regard to the training activities,
content of the materials, partners etc. to facilitate an informed decision
by Member States. Pakistan called for a balanced content.

The Secretariat currently carries out the judicial training program through
the IP enforcement division known as ‘building respect for IP'.

During the last three years i. e. 2013-2015, this division has carried out
at least 18 training programs and study tours exclusively for the judiciary.

Often these programs are conducted with the financial assistance of
developed countries including Japan and the United States.

The content of these training programs is not available in the public
domain. Currently, the WIPO website provides only the agenda of the program
and does not provide slides or papers presented in these meetings.

As a result most Member States, academics or civil society organisations
are not aware of the orientation of these training programs. The concern is
whether these training programs encourage the judicial officials of
developing countries to enforce IP rights without considering the
development concerns or public interest.

Under the Trade-Related Aspects of Intellectual Property Rights (TRIPS)
Agreement there is no obligation to extend injunctions to all IP
infringement cases. It is left to the discretion of the judicial authority.

There is an attempt to influence the judiciary to grant injunctions
including ex parte injunctions and preliminary injunctions in IP
infringement cases.

Meanwhile, the trend in the US is to not issue injunctions in patent
infringement cases even in the case of proven infringement.

In the eBay case the US Supreme Court refused to grant an injunction in a
case of proven infringement of patent and allowed eBay to continue to use
the patent and pay damages.

However, trends in developing countries such as India are the opposite. The
Delhi High Court has granted a series of ex parte and preliminary
injunctions on alleged patent infringement in several cases.

In the absence and non-availability of the training materials of WIPO's
judicial training programs there is no clarity with regard to WIPO's stand
on injunctions.

Another important flexibility under the TRIPS Agreement is with regard to
the judicial institutional mechanism for the enforcement of IP.

According to Article 41.5 there is no obligation to establish a special
court for the adjudication of IP disputes.

However, WIPO's Methodology Tool Kit for National IP Strategy states:
"Where national IP enforcement legislation is already in place, such
legislation should be evaluated in order to establish whether it contains
provisions for the following judicial and administrative procedures, and
remedies ..."

One of the evolution criteria mentioned is Special Courts which have
jurisdiction over IP infringement.

Often WIPO's judicial training programs allow the participation of the
private sector. The agenda posted on the WIPO website shows participation
of the private sector as resource persons.

For instance, in 2013 Carlos Linares of the Recording Industry Association
of America made a presentation on "The Role of the Internet and New
Technology in IP Infringement" in the WIPO-USPTO Judicial Colloquium on
Intellectual Property Rights.

In 2014 at the WIPO/CIPC Colloquium on Building Respect for IP for Members
of the Judiciary of the Common Law Countries of the Southern African
Development Community (SADC), Yoshihiro Suzuki, vice-President of the Japan
Intellectual Property Association (JIPA), Tako Matsui, Patent Attorney,
Okabe International Patent Office, Japan Patent Attorney Association (JPAA)
also made presentations titled "IP Enforcement - Japanese Perspective".

In the same meeting the CEO of the South African Federation Against
Copyright Theft (SAFACT) participated in a round table titled "IP
Enforcement from the Perspective of Right Holders".

Interestingly, one cannot find the participation of public interest
advocates in any of the judicial training programs.

Often WIPO's judicial training programs allow the participation of the
private sector. This raises two concerns.

First, such participation of the private sector leads to undue influence
and compromises the neutrality of the judiciary.

Secondly, such participation often gives a one-sided view of IP enforcement
and it may make the judiciary blind to development and public interest in
their approach.

The participation of the private sector in IP programs of judges have at
times resulted in the recusal of judges from hearing the case due to
potential conflict of interest.

Justice Dalveer Bhandari of the Indian Supreme Court, for example, recused
from the famous Novartis case due to his participation in the International
Judges Conference organised by the IP Owners Association.

[Novartis had challenged the rejection of a patent for their chronic
leukaemia drug imatinib mesylate under Section 3 (d) of the Patents Act,
which prevents the granting of patents on a known molecule.]

Furthermore, there is currently no effective framework in the WIPO to avoid
conflict of interest.

Often the Secretariat facilitates unfettered access of the private sector
to policymakers and judiciary. This raises serious concerns of conflict of
interest with regard to the resources persons attending these conferences. +

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