TWN Info Service on WTO and Trade Issues  (Apr16/08)
18 April 2016
Third World Network

WIPO: 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 concerns.

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 (CDIP).

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. +