Standing Committee Wipo.docx

Table of Contents 1.1 INTRODUCTION: ................................................................................................................................. 2 1.2 DECISION-MAKING AND NEGOTIATING BODIES ..................................................................................... 3 1.3 Objectives of WIPO ................................................................................................................................. 4 1.4 Objectives of our the study ..................................................................................................................... 4 1.5 Literature Review: ................................................................................................................................... 4 1.6 Methodology:.......................................................................................................................................... 5 2.1 INTRODUCTION TO STANDING COMMITTEES: ....................................................................................... 6 2.2 Standing Committee on the Law of Patents (SCP): ................................................................................. 7 2.2.1 Current issue in the SCP: .................................................................................................................. 8 2.3 Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT): ........................................................................................................................................................... 20 2.3.1 Trademarks .................................................................................................................................... 20 2.3.2 Industrial Designs ........................................................................................................................... 21 2.3.3 Geographical Indications ............................................................................................................... 22 2.3.4 Recommendation of SCT:............................................................................................................... 24 2.4 Standing Committee on Copyright and Related Rights (SCCR): ............................................................ 25 2.4.1 Copyright ........................................................................................................................................ 26 2.4.2 The Committee is currently engaged in discussing: ...................................................................... 27 2.5 Committee on WIPO Standards (CWS): ................................................................................................ 43 2.5.1 Why use WIPO Standards? ............................................................................................................ 43 2.5.2 Who sets WIPO Standards? ........................................................................................................... 43 2.5.3 What do WIPO Standards cover?................................................................................................... 43 2.5.4 CWS is currently involved in issues: ............................................................................................... 44 2.6 Standing Committee for Information Technologies ............................................................................. 45 2.7 Standing Committees of Experts........................................................................................................... 45

CHAPTER 1 1.1 INTRODUCTION: WIPO provides a global policy forum, where governments, intergovernmental organizations, industry groups and civil society come together to address evolving intellectual property (IP) issues. WIPO member states and observers meet regularly in the various WIPO Committees and decision-making bodies. Their challenge is to negotiate the changes and new rules needed to ensure that the international IP system keeps pace with the changing world, and continues to serve its fundamental purpose of encouraging innovation and creativity. WIPO’s member states determine the direction, budget and activities of the Organization through the decision-making bodies. We currently have 191 member states. To become a member, a state must deposit an instrument of ratification or accession with the Director General. The WIPO Convention provides that membership is open to any state that is: a member of the Paris Union for the Protection of Industrial Property, or member of the Berne Union for the Protection of Literary and Artistic Works; or a member of the United Nations, or of any of the United Nations' Specialized Agencies, or of the International Atomic Energy Agency, or that is a party to the Statute of the International Court of Justice; or invited by the WIPO General Assembly to become a member state of the Organization. WIPO welcomes the inclusion of stakeholder organizations and interest groups as observers at the formal meetings of member states. There are several kinds of committees in the framework of the WIPO. The first group consists of the ad hoc committees (Standing Committees) established by the General Assembly. Their aim is to change - if there is a need to change the provisions of the existing international agreements administered by the WIPO in any way, or if there is a need to pass a new international agreement in the certain field. 6 The second group consists of the committees formed in the framework of the international agreements referring to classifications: Locarno Agreement, Nice Agreement, Strasbourg Agreement and Vienna Agreement. These committees are formed by the countries signatories of these agreements. Their task is to periodically revise the existing classifications. They are known by the title Standing Committees of Experts. WIPO welcomes the inclusion of stakeholder organizations and interest groups as observers at the formal meetings of member states.

1.2 DECISION-MAKING AND NEGOTIATING BODIES 1) Governing Bodies Established by the WIPO Convention, these constituent organs, are WIPO’s highest decisionmaking bodies. They traditionally meet in September/October each year in either ordinary or extraordinary session. 

The WIPO General Assembly and the Assemblies of the member states of each Union (e.g. the PCT Union Assembly)

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The WIPO Coordination Committee

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The WIPO Conference

2) Permanent Committees Any of the Governing Bodies can constitute committees as required. For example: 

Program and Budget Committee (PBC)

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Committee on Development and Intellectual Property (CDIP)

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Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC)

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Advisory Committee on Enforcement (ACE)

The International Classification treaties established permanent Committees of Experts with a mandate periodically to revise and update the classification systems

3) Diplomatic Conferences If one of the Standing or Permanent Committees determines that sufficient progress has been made to move towards treaty adoption, the General Assembly can decide to convene a Diplomatic Conference. This is a high level meeting of member states, convened with the sole purpose of finalizing negotiations on a new treaty. The most recent have included: 

Diplomatic Conference for the Adoption of a new Act of the Lisbon Agreement - The Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications

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Diplomatic Conference to Conclude a Treaty to Facilitate Access to Published Works by Visually Impaired Persons and Persons with Print Disabilities

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Diplomatic Conference on the Protection of Audiovisual Performances.

4) Standing Committees These are ad hoc committees of experts established by a decision of the General Assembly for a given purpose, e.g. to determine the need or otherwise for new treaty provisions:

1.3 Objectives of WIPO 1) The objectives of WIPO are, firstly, to promote the protection of and the respect for intellectual property throughout the world through cooperation among States; and, where appropriate, in collaboration with other international organizations. 2) To ensure administrative cooperation among the intellectual property Unions established by the treaties that are administered by WIPO.

1.4 Objectives of our the study 1. To understand functions of standing committee. 2. To study various discussion in which standing committee is involved. 3. To study the activities of each standing committee separately.

1.5 Literature Review: 1. WIPO AND THE BOOK : The WIPO Handbook is an authoritative source of the WIPO standards recommendations and guidance lines in the field of IP information and documentation. 2. TOP TENS IN 2010: PATENT, TRADE MARK COPYRIGHT, TRADE SECRET CASES: Mc John Stephen, Northwestern Journal Of Technology and Intellectual Property. This piece discusses notable intellectual property decision in 2010 in united states, viewed across doctrinal lines, some interesting threads emerge. The scope of protection was at issue in each are,

such as weather human and business methods are patentable, whether a product idea may a tare secret, and where the constitutional limits on copyright legislation lie. 3. A TRADE AGREEMENT CREATING BARRIERS TO INTERNATIONAL TRADE? ACTA BORDER MEASURES AND GOODS IN TRANSIT, RUSE-KHAN HENNING LAW REWIEV, SPRING 2011 By its title, the anti-counterfeiting trade agreement (ACTA) considers itself a trade agreement. The negotiating parties as well as its main proponent’s emphasis importance of strong intellectual property enforcement standards for international trades in IP protected goods. At the same time the border measures rules ACTA draft text carries the potential to create significance barrier to international trade especially in generic medicines.

1.6 Methodology: Type of Research and Research Design: As for the research design, exploratory research is being used as the main purpose is to gain an insight into, and an understanding of the economic international institution/ organization called WIPO. Data Collection Methods: Data has been collected from Secondary sources such as: websites, magazines, journals, research papers, reference books, official website of WIPO, newspapers and other industry related books.

CHAPTER 2 2.1 INTRODUCTION TO STANDING COMMITTEES: These are ad hoc committees of experts established by a decision of the General Assembly for a given purpose, e.g. to determine the need or otherwise for new treaty provisions: Standing committees are established by the decision of the General Assembly of the WIPO, if there is a need to change the provisions of the existing international agreements administered by WIPO, or if there is the need to pass the new international agreement in the specific field. The work of these committees is, among other things, of great importance for the uniform practice of member states, in particular the national intellectual property offices, in the procedures for the protection of intellectual property rights. The experts in the given field of knowledge of intellectual property from member states of the WIPO participate in the work of the committees. They meet biannually in regular sessions organized and prepared by the WIPO Secretariat. The Secretariat leads the sessions, prepares working materials and in every other way supports the work of the committee. When the standing committee establishes that an essential improvement has been made in the direction of the adoption of the new international agreements, the General Assembly can decide to summon the Diplomatic Conference, the meeting at the high level, dedicated exclusively to finalizing the negotiations about the new agreement. As an example, in the March of 2006, the Diplomatic Conference was held in Singapore for the adoption of the revised Trademark Law Treaty. There are following standing committees formed by the General Assembly: Standing Committee for Patents (SCP), Standing Committee for Trademarks, Industrial Designs and Indications of Geographical Origin (SCT), Standing Committee for Copyright and Related Rights (SCCR) and Standing Committee for Information Technologies. 

Standing Committee on the Law of Patents (SCP)

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Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT)

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Standing Committee on Copyright and Related Rights (SCCR)

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Committee on WIPO Standards (CWS)

2.2 Standing Committee on the Law of Patents (SCP): The SCP was created in 1998 to serve as a forum to discuss issues, facilitate coordination and provide guidance concerning the progressive international development of patent law. By dealing with clusters of interlocking issues rather than working in isolation on single issues, it is intended to provide member states with an effective mechanism for setting priorities and allocating resources, and ensure the coordination and continuity of interrelated, on-going work. Its primary role was to serve as a forum for discussion about the questions of importance for the development of patent rights in the world. The Committee consists of the member countries of the WIPO and the members of the Paris Union. In its work, as observers, the countries that are not the members of the WIPO can also participate at the sessions of the “Paris Union” as well as the certain intergovernmental and nongovernmental organizations. From its foundation, this committee works on the international harmonization of patent rights. The main achievements of the Committee for Patent Law in the recent years were the negotiations regarding the “Patent Law Treaty” (PLT) as well as the passing of the “Manual regarding the fulfillment of formal conditions in the procedure of patent protection”. This treaty was adopted by the Diplomatic Conference on June 1, 2000, and it entered into force on April 28, 2005. The discussion on the draft of the future international agreement under the title “Substantive Patent Law Treaty” (SPLT) started at the fifth session of the Committee in May 2001. The discussion was focused around the issues of the substantive importance on the grant of patents. Among other things, the definitions of the new substantive issues were under discussion, just like the state of the art, novelty inventive level, industrial utilization of the invention, question of publication of inventions, etc. The Committee agreed that other current issues should be under consideration at future meetings. Although the discussion led to the fact that the delegations of the signatory states of this agreement should be in harmony concerning some principled issues, the discussion opened new dilemmas and new disagreements that were discussed till the twentieth session of the Committee in January 2014 when the differences in the approach between the developed and undeveloped countries became such that the question of survival of the committee was resolved by the decision that in the future period one should give up the consideration of harmonization of the legal issues and turn towards the elaboration of the compilation of the review of certain aspects of national patent systems, not including analysis or evaluating. The Committee is composed of all member states of WIPO and/or of the Paris Union. As observers, certain member states of the UN, who are not members of WIPO and/or the Paris

Union, as well as a number of accredited intergovernmental and non-governmental organizations, also participate in the SCP.

2.2.1 Current issue in the SCP: 1) Exceptions and Limitations to Patent Rights While the granting of exclusive patent rights is considered as an incentive for investment in innovative activities and the production of knowledge, allowing the enforcement of the full scope of the exclusive rights in all circumstances may not always meet the ultimate goal of the patent system to enhance the public welfare. Therefore, in order to strike the right balance between the interests of the right holders, third parties and the public, the scope of the enforceable exclusive rights may be set under national patent laws according to certain exceptions and limitations to patent rights that have been reserved for decision by individual countries. Since the socio-economic conditions and priorities of a country influence this balancing of interests, provisions in patent laws on exceptions and limitations vary from one country to another. Nevertheless, the SCP has identified that the legislation of many countries provides some or all of the following exceptions and limitations to patent rights: (i) Private and/or non commercial use; (ii) Experimental use and/or scientific research; (iii) Extemporaneous preparation of medicines; (iv) Prior use; (v) Use of articles on foreign vessels, aircrafts and land vehicles; (vi) Acts for obtaining regulatory approval from authorities; (vii) Exhaustion of patent rights; (viii) Compulsory licensing and/or government use; and (ix) Certain use of patented inventions by farmers and breeders.

2) SCP Discussions on Transfer of Technology Given the importance of innovation to technological, social and economic development of countries, the generation, transfer and diffusion of innovative technology at both national and international levels has been widely recognized as a major element to be taken into account in designing development policies. In that context, the role of the patent system and its effects on technology transfer are under continuous discussions in the Standing Committee on Patents (SCP). The dissemination and transfer of technology is a major pillar that supports the raison d’être of the patent system. By granting exclusive rights, the patent system aims to improve the efficient flow of knowledge and to facilitate transactions in protected technology. The patent system sets up a legal framework that allows technology holders to disclose their inventions to the public and license or sell their patents, without fear of free-riding. A wider group of researchers and engineers who access the disclosed knowledge may, in turn, further contribute to the development of the technology concerned. The possibility of defining ownership and a clear boundary of rights facilitates the transfer of technology protected by patents. While the process of transferring technology is complex and influenced by a number of factors, such as political and market environments, human resources and infrastructure, policy makers also adjust various mechanisms built into the patent system to provide a framework that supports transfer of technology at the national and international level. Activities 1) Many activities relating to patents undertaken by WIPO do not specifically address technology transfer. Nevertheless, they may be relevant to the topic, since the promotion of technological innovation and the transfer and dissemination of technology are widely recognized to be the general objectives of the patent system. In a way, all efforts to improve the patent system have a positive impact, either directly or indirectly, on the contribution of the patent system to transfer of technology, whether it is through the development of legal and institutional frameworks, technological infrastructure and tools, capacity building or through raising awareness. 2) For example, a high predictability in terms of the validity of granted patents, sufficient disclosure of inventions in patent applications, or an adequate scope of protection with the necessary exceptions and limitations are some essential elements for the patent system to fulfill its objectives also in terms of innovation and transfer of technology. An improved infrastructure for accessing patent information and improved technical infrastructure of patent offices increase an efficient dissemination of technological and

legal information necessary for technology transfer, such as, for example, who owns which technology in which country for which duration. In order to ensure the quality of patents and enforcement of law and to promote sound negotiation between technology holders and potential technology users, the capacity of patent offices, patent examiners, judges, enforcement officers and patent professionals, such as patent attorneys, needs to be constantly enhanced so that they are in possession of the necessary knowledge and skills in a fast-moving economy. Therefore, it is worth briefly mentioning those general activities relating to patents carried out by WIPO, insofar as they may be relevant to transfer of technology. 3) The well functioning of the Patent Cooperation Treaty (PCT) as an international patent filing system is important for the international patent system in all fields of technology. Due to its global reach, the timeliness and quality of international work products under the PCT, such as the publication of PCT international applications and the preparation of international search reports, written opinions and international preliminary examination reports, often affect the quality of national and regional patent systems. 4) With respect to the development dimension of “transfer of technology”, the WIPO Development Agenda aims to ensure that development considerations form an integral part of WIPO’s work. Therefore, it is a cross-cutting agenda which touches upon all activities of WIPO. Some recommendations and projects established under the Development Agenda directly address issues regarding transfer of technology and access to knowledge (see Section III, below). However, many other Development Agenda recommendations may also be indirectly related to transfer of technology. For example, many recommendations address the following issues: (i) the promotion of a fair balance between intellectual property protection and the public SCP/18/7 page 3 interest; (ii) consideration of the special needs of developing countries and least developed countries (LDCs); and (iii) flexibilities in international intellectual property agreements, which should support the development goals agreed within the United Nations system, including those contained in the Millennium Declaration. 5) Further, technical assistance and capacity building in patent-related areas, such as legislative advice and training of government officers and other stakeholders, are also part of the core activities of WIPO. A number of educational programs for enhancing the understanding of intellectual property issues, for example, summer schools, distance learning courses and Master programs, are also conducted by WIPO. 6). Published patents (and applications) as well as information associated with those documents, are an important source of valuable information that links potential technology transferors and transferees. With a view to facilitating access, retrieval, use

and dissemination of patent information, the International Patent Classification (IPC) and WIPO standards have been constantly reviewed and developed by the relevant WIPO bodies. Further, information and communication technology (ICT) has created opportunities for a more effective access to the output of the patent system. In this regard, WIPO develops global IP databases and facilitates access to technology databases, assists modernization of ICT infrastructure of patent offices and digitization of patent collections and supports capacity building to facilitate the use of various patent information tools. 7). Lastly, the WIPO Arbitration and Mediation Center offers alternative dispute resolution options for the resolution of international commercial disputes between private parties. Such mechanisms have been used to solve disputes in patent licensing, research a 3) Quality of patents Quality is an essential aspect of the patent system to ensure that it serves its purpose of promoting innovation, contributing to dissemination and transfer of technology and fostering technological, social and economic development of the country concerned. Errors in patent grant and administration procedures can cause legal uncertainty and increase costs for all users of the patent system: rights-holders, competitors, users of patent information and the patent Offices themselves. Consequently, various mechanisms have been built into the patent system, and additional measures have been developed by the Offices, to ensure that patent protection is only granted to inventions which fully comply with national legal requirements for patentability, and that grants are made in a timely and cost-efficient manner. Search and examination, third party observation and opposition mechanisms, among others, are examples of quality-related measures built into the system. In addition, practical guidelines for patent office employees and their training programs, codes of conduct for patent applicants, and quality control and quality management systems have been instituted by many Offices. Owing to the increased internationalization of patent filings, the SCP is exploring ways to improve the quality of patents globally. 4) Opposition and Administrative Revocation Mechanisms National and regional laws provide opposition and other administrative revocation and invalidation mechanisms that make it possible for third parties to intervene in the patent examination process before the grant of a patent, or to challenge a patent after its grant. While the design of such mechanisms may differ from one country/region to another, the common objective is to provide a simple, quick and inexpensive means to increase patent quality by providing additional input to the process. These mechanisms also provide an alternative to potentially lengthy and costly judicial proceedings.

The most common mechanisms are: 1) Opposition Systems Many countries provide opposition mechanisms in their patent systems. Opposition systems stricto sensu offer third parties an opportunity to oppose the grant of a patent within a certain period of time provided by the applicable law. An opponent must allege at least one of the grounds for opposition among those that are prescribed in the applicable law. Opposition procedures are closely related to the patent granting procedure. An opposition may be requested soon before the grant of a patent (pre-grant opposition) or after the grant of a patent (post-grant opposition). In some countries, an opposition may be filed pre-grant, within a certain time period immediately after the publication of the application for a patent and before the examination phase, in which case the procedure resembles, to a certain extent, the socalled third party observation system. It is possible to combine pre-grant and post-grant opposition systems. India, for example, provides both a pre-grant and a post-grant opposition system. One of the main objectives of the opposition system is to provide a simple, quick and inexpensive mechanism that ensures the quality and validity of granted patents by allowing an early rectification of invalid patents. In general, opposition proceedings are inter partes procedures conducted before the patent office, not a court. Pre-grant opposition often starts once the examination of a patent application has been completed by a positive result. The Office publishes its intention to grant the patent on the claimed invention contained in the application, and provides a certain time period during which an opposition can be filed. The opponent shall state the grounds for opposition and submit any evidence. If no opposition is filed during that period, the patent will be granted. If an opposition is filed, the applicant will be notified of that fact, together with the grounds for opposition and the evidence (for example, prior art documents that demonstrate lack of inventive step). The applicant will be given the opportunity to comply with the requirements under the applicable law, and to make observations, within the prescribed time limit. In accordance with the applicable law, the opponent has the possibility to respond to the observations made by the applicant. Based on the submissions by the opponent and the applicant, an examiner or any other person entrusted to decide on opposition cases under the applicable law will make a decision as to whether the patent shall be granted or not. In some countries, the pre-grant opposition system is designed in such a way that it starts after the publication of the patent application and before substantive examination. Once the patent application is published, an opposition may be filed within a certain time period prescribed under the applicable law. The opponent shall state the grounds for opposition and submit any evidence. If no opposition is filed during that period, the

substantive examination will be carried out. If an opposition is filed, the applicant will be notified, and given an opportunity to make observations and/or amend the application within the prescribed time period. The conclusion of the opposition will be notified to both the applicant and the opponent. Post-grant opposition starts once the patent is granted. Once the fact that a patent has been granted is published, an opposition may be filed with evidence within a certain time period prescribed in the applicable law. Similar to the pre-grant opposition, the patentee will be notified about that fact, and be given the opportunity to comply with the requirements under the applicable law, and to make observations, within the prescribed time limit. In accordance with the applicable law, the opponent has the possibility to respond to the observations made by the patentee. Based on the submissions by the opponent and the applicant, whoever is entrusted to decide on opposition cases under the applicable law will make a decision as to whether the patent shall be maintained, amended or revoked. Since one of the objectives of the opposition system is to provide a simple mechanism to ensure the quality and validity of granted patents, procedural and substantive requirements provided by the applicable laws regarding opposition systems have certain common aspects. However, there are differences in the details. Some of these differences are the following: 

the timeframe during which an opposition may be filed: the opposition period may start immediately after the publication of the patent application, after the completion of the substantive examination with a positive result and/or after the grant of the patent;

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entitlement to file an opposition: in many national laws, any party, including the applicant or the patentee, may file an opposition. However, some laws provide that any third party (excluding the applicant or the patentee) may file an opposition;

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the threshold for opposition: in many countries the opponent has to provide full evidence of the grounds. In one country, an opposition may be instituted if it is “more likely than not” that the patent is invalid; with respect to admissibility, in some countries the request has to be sufficiently substantiated, provide written documents and other evidence while in other countries, the criteria of admissibility are not defined in their patent laws;

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the disclosure of the identity of the requester: in some countries, it is possible for the opponent, the true party in interest, not to disclose his identity, which may be in favor of continuing good business relationship between the opponent and the patent applicant or patentee;

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the length of the opposition period: the length of the opposition period varies from country to country. In many countries, the duration may vary from two to six months for pre-grant opposition and from six to 12 months for post-grant opposition;

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the grounds for an opposition: in many countries, the requirements regarding novelty, inventive step, industrial applicability, sufficiency of disclosure and addition of new matter going beyond the original disclosure are grounds for an opposition. Non-compliance with the requirements concerning the exclusions from patentable subject matter also forms part of the grounds for an opposition in many countries. Some countries accept an opposition on the grounds that an applicant/patentee is not entitled to the right to a patent, or on other grounds covering all requirements that should be fulfilled to obtain a patent. They include, for example, the fact that information regarding corresponding foreign applications was not submitted, the source or geographical origin of biological material used in the invention was not disclosed, or the essential formalities were not complied with;

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reviewing officers: the opposition may be conducted by an examination division or the proceedings may be held before a special opposition board; the board may include technical and legal examiners or judges;

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inter partes procedural requirements: formal and procedural requirements relating to, for example, a request, notification to parties, arguments, evidence, oral hearing and final decision depends on the applicable law, most likely based on the general civil procedural law of each country;

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opposition fee: in many countries, the payment of an opposition fee is required to file an opposition;

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the effect of the opposition on civil actions: in some countries the opposition has an estoppel effect or an effect for civil proceedings to stay. In other countries both administrative and civil proceedings could be pursued independently and in parallel; and

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the timeframe for an opposition: in one country the final determination has to be issued within one year, extendable up to six months; in many countries, no time limits for a final administrative decision is specified. An appeal against the final decision of the opposition body is generally possible, often to a court. It should be noted that, according to Article 62.5 of the TRIPS Agreement, final administrative decisions in procedures concerning the acquisition and maintenance of intellectual property rights as well as the administrative revocation and inter partes procedures shall be subject to review by a judicial or quasi-judicial authority.

In a larger sense, the opposition system is complemented by related mechanisms which allow third parties to intervene in the patent examination process before the grant of a patent or to challenge the grant of a patent after its grant. Those mechanisms are similar to the opposition system, but may differ in some criteria from the opposition system stricto sensu, which is a inter partes, time-bound review systems.

2) Re-examination Systems A re-examination is a proceeding conducted by the patent office after the grant of a patent in which the validity of a patent is re-examined at the request of the patentee or third party, as provided by the applicable law. In some countries, a re-examination system is provided as an alternative or complement to the opposition system. In comparison to the opposition system, in general, the re-examination is not time-bound and can be requested during the lifetime of the patent. In some countries the re-examination is conducted by a single examiner or the division of the patent office which has granted the patent in the first place, in comparison to a full opposition board in the cases of post-grant oppositions. The re-examination procedures are conducted ex parte in some countries (largely without the participation of the requester in the conduct of the re-examination) and inter partes in some other countries (with greater participation of the requester in the re-examination process). The ex parte re-examination is often characterized as a system that provides for quality check through a second patent examination of the patent by the patent office. The inter partes re-examination in certain countries may resemble to administrative revocation or invalidation mechanisms in some other countries in the sense that both provide for a wide range of substantive grounds and inter partes proceedings which allow third parties to challenge a patent before an administrative body. However, the proceedings of the inter partes re-examination are generally more conducted as a second examination by the patent office itself than as a full inter partes administrative review by a specialized board. In general, the re-examination may be requested mainly on the basis of documentary evidence, and an opportunity to appeal against the re-examination decision is generally possible. The re-examination system often has an estoppel effect, as the requester of reexamination is, in most countries, estopped from basing judicial review on the same grounds as the re-examination.

Depending on the expected role of the re-examination system in the entire review mechanisms placed in the national patent system, procedural as well as substantive requirements regarding the re-examination are different from one country to another.

3) Administrative Revocation and Invalidation Mechanisms The administrative revocation and invalidation mechanisms provide for an inter partes review of the validity of a patent which is not limited to a certain period after the grant of the patent. Even though the administrative review has quasi-judicial elements in some countries, the procedure is different from a judicial review, which is, in general, initiated by only interested parties, fully adversarial and entirely court-based. In many countries, similar to the opposition proceedings, any person, not limited to an interested party, could request an administrative review. In general, the administrative review constitutes a forum outside a court, composed of a panel of experienced examiners and/or administrative judges, for reviewing the validity of a patent. It allows for reviewing the patent on grounds which might render a patent invalid, most importantly, non-compliance with the substantive patentability criteria. Mechanisms for administrative revocation and invalidation are conducted inter partes, similar to the opposition, but they are generally not time-bound. In several countries, an administrative review may be initiated and conducted ex officio. While post-grant opposition systems provide third parties to challenge patents at the administrative level, since the opposition period is limited, there could be cases where third parties recognize the needs of invalidating a patent only after the expiration of the opposition period. It is often the case where the technology surrounding a patented invention is developed and commercialized only some years after the grant of the patent, and at that point, the validity of the patent calls attention of competitors. The administrative review provides for a longer or a second window of challenging patents for anyone. In some countries, the administrative revocation and invalidation is the only inter partes mechanism to challenge the validity of patents before the administrative body, such as in China, Japan, the Republic of Korea and the United Kingdom. Among the countries that have an administrative review mechanism, the procedural and substantive requirements have some common aspects, but are different in details. Such differences may include: 

the possibility of ex officio proceedings;

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the onus of evidence for the person requesting the revocation;

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the grounds for revocation;

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the conduct of the review procedure;

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the possibility to make a revocation/invalidation request after the expiry of the life time of the patent;

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the standard for providing evidence; and

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the composition of the reviewing board.

4) Submission of Information by Third Parties Many patent offices provide the opportunity for third parties to submit prior art documents, such as published patent applications and patents or other publications, which they believe are relevant to the determination of patentability of the claimed invention. In countries where a patent application is published before the grant of the patent, third parties are in a position to analyze the claimed invention contained in the published patent application before the grant of the patent or the refusal of the patent application. In order to assist a substantive examiner to examine the patentability of the claimed invention, in some countries, third parties may submit prior art information which is relevant to such determination of patentability. In general, the fact that information is submitted by a third party and the content of such information are made available to the public. While the objective of such mechanism is, in general similar to the pre-grant opposition system in that it aims to increase the validity of granted patents through contributions from third parties, the third party observation system, however, is different from the pregrant opposition system in many aspects, although it varies from one country to the other. The main difference lies in the fact that it is an ex parte procedure under which the third party who submitted the information cannot participate in the subsequent examination or review procedure. Further, the submission of the relevant information does not trigger any specific review process (although an examiner may take into account the submitted information, if appropriate), and the information will be simply included in the file which can be consulted by the public. In many countries, there is no time limit for third parties to submit relevant information. The anonymous submission of information is allowed in certain countries. This could help third parties to submit prior art information even if they have business relationship with the applicant and therefore, are unwilling to disclose their identities. Further, in some countries, the grounds for the submission of information may be limited by certain requirements. In general, the submission of third party

observations is not subject to payment of fees. In some countries, fees are required if the observations are voluminous. Theoretically, it is possible to introduce such a system in a patent office that does not conduct substantive examination. The prior art information submitted by a third party will be made available to the public upon the publication of the patent, and it can be used by any party during the post-grant revocation proceedings. For that reason, in some countries, third parties may also submit prior art information to the patent office anytime during the post-grant phase. The submitted information will be included in the official file (dossier) which is accessible to the public. In some countries, it is possible to submit, in addition to the prior art documents or the reference thereof, a comment on the relevance of each document submitted. In other countries, it is possible to file a protest. The submission of information relevant to patentability by third parties is a simple, inexpensive (often free of charge) and informal way to publicly question the validity of a patent. In contrast to the pre-grant opposition, after a positive determination by the examiner, the submission of observations does not have the effect of suspending the process. On the other hand, due to its informal and ex parte nature, the submitter of the information cannot participate in and influence the review process. Whether the information submitted would be fully considered during the review process largely depends on the examiner who conducts the substantive examination. In most countries the third party submitting the information does not receive any feedback as to how the material is used in the examination process. In general, the differences in the design of various third party observation systems relate to: 

period for submitting observations;

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conduct of procedure: notification to the applicant, possibility of comments or counter-arguments by the applicant, public disclosure of observations, feedback to requester;

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grounds for observations: documents and information to be submitted; and

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fees.

5) Confidentiality of Patent Advisors’ Communications It is widely recognized that protecting the confidentiality of professional advice from patent advisors* to their clients promotes frank and open communications necessary to high quality advice. Consequently, most countries, under both civil law and common law

traditions, ensure confidentiality of such advice either through contractual arrangements between patent advisors and their clients, codes of conduct set by professional associations, or pursuant to laws or regulations. In some common law countries, the confidentiality of communications between the client and patent advisor is protected by a specific “privilege” against discovery, while in some civil law countries, a patent advisor might be entitled to the right to refuse to testify in court on a matter falling under the professional secrecy obligation. As patent protection is increasingly international, cross-border issues of confidentiality of communications between clients and their patent advisors arise, raising the question of whether and to what extent confidentiality of communications between a client and his patent advisor should be maintained in court proceedings in other jurisdictions and how the confidentiality could be preserved beyond national borders. The SCP has been working on this issue, focusing on cross-border aspects of confidentiality of communications between clients and patent advisors.

6) Topics and issues: patents and health Policy-makers have to find the right balance between the rights of patent holders who produce medical innovations, and the public who need access to them. Efforts have been made to identify legal frameworks and practices under the patent system, which adequately balance incentives to innovate with access to health-related technology. Any such framework must take into account the interests of both technology holders and technology users. The complexities involved with health innovation and access to medicines, however, require a holistic understanding of synergies between the patent system and other policy components. The interplay between trade policy, public health policy, procurement policy, the regulatory environment, innovation policy and intellectual property strategy, the market environment and other factors are critical to an understanding of patents and health. In order to address these challenges, the WIPO’s Standing Committee on the Law of Patents (SCP) examines the role of the patent system in striking the right balance between innovation and technology access.

2.3 Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT): The SCT was created in 1998 to serve as a forum to discuss issues, facilitate coordination and provide guidance on the progressive development of international law on trademarks, industrial designs and geographical indications, including the harmonization of national laws and procedures. So far, this committee discussed many issues of importance for making uniform the international practice and international positive law of distinctive signs, Among other things, in the framework of this committee, issues were discussed regarding the protection of well known trademarks, protection of trademarks on Internet, licenses in trademark law, protection of nontraditional trademarks, opposition procedure, implementation of article 6 of the Paris Convention, etc. One of the important achievements of this committee is passing recommendations on the use of trademarks and other distinctive signs on Internet. (Joint Recommendation Concerning Provisions on the Protection of Marks). Participation in the SCT is open to all member states of WIPO or the Paris Union for the Protection of Industrial Property as members. A special rule of procedure extends membership without the right to vote to the European Union. In addition, member states of the United Nations that are not members of WIPO or the Paris Union, intergovernmental organizations, and non-governmental organizations accredited with observer status at WIPO may participate in the Committee in an observer capacity.

2.3.1 Trademarks What is a Trademark? A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights. How can you protect Trademark? At the national/regional level, trademark protection can be obtained through registration, by filing an application for registration with the national/regional trademark office and paying the required fees. At the international level, you have two options: either you can file a trademark application with the trademark office of each country in which you are seeking protection, or you can use WIPO’s Madrid System. What right does trademark registration provide?

In principle, a trademark registration will confer an exclusive right to the use of the registered trademark. This implies that the trademark can be exclusively used by its owner, or licensed to another party for use in return for payment. Registration provides legal certainty and reinforces the position of the right holder, for example, in case of litigation. How long does trademark protection last? The term of trademark registration can vary, but is usually ten years. It can be renewed indefinitely on payment of additional fees. Trademark rights are private rights and protection is enforced through court orders.

What kinds of trademark can be registered? A word or a combination of words, letters, and numerals can perfectly constitute a trademark. But trademarks may also consist of drawings, symbols, three-dimensional features such as the shape and packaging of goods, non-visible signs such as sounds or fragrances, or color shades used as distinguishing features – the possibilities are almost limitless.

2.3.2 Industrial Designs What is an industrial design? In a legal sense, an industrial design constitutes the ornamental or aesthetic aspect of an article. An industrial design may consist of three dimensional features, such as the shape of an article, or two dimensional features, such as patterns, lines or color. What kind of protection does an industrial design right offer? In principle, the owner of a registered industrial design or of a design patent has the right to prevent third parties from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes. What kind of products can benefit from industrial design protection? Industrial designs are applied to a wide variety of products of industry and handicraft items: from packages and containers to furnishing and household goods, from lighting equipment to jewelry, and from electronic devices to textiles. Industrial designs may also be relevant to graphic symbols, graphical user interfaces (GUI), and logos.

How are industrial designs protected? In most countries, an industrial design needs to be registered in order to be protected under industrial design law as a “registered design”. In some countries, industrial designs are protected under patent law as “design patents ”. Industrial design laws in some countries grant – without registration – time- and scope limited protection to so-called “unregistered industrial designs”. Depending on the particular national law and the kind of design, industrial designs may also be protected as works of art under copyright law

2.3.3 Geographical Indications What is a geographical indication? A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production.

Geographical Indications What is a geographical indication? A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production. What rights does a geographical indication provide? A geographical indication right enables those who have the right to use the indication to prevent its use by a third party whose product does not conform to the applicable standards. For example, in the jurisdictions in which the Darjeeling geographical indication is protected, producers of Darjeeling tea can exclude use of the term “Darjeeling” for tea not grown in

their tea gardens or not produced according to the standards set out in the code of practice for the geographical indication. However, a protected geographical indication does not enable the holder to prevent someone from making a product using the same techniques as those set out in the standards for that indication. Protection for a geographical indication is usually obtained by acquiring a right over the sign that constitutes the indication. For what type of products can geographical indications be used? Geographical indications are typically used for agricultural products, foodstuffs, wine and spirit drinks, handicrafts, and industrial products.

How are geographical indications protected?

There are three main ways to protect a geographical indication: 

so-called sui generis systems (i.e. special regimes of protection);



using collective or certification marks; and



methods focusing on business practices, including administrative product approval schemes.

These approaches involve differences with respect to important questions, such as the conditions for protection or the scope of protection. On the other hand, two of the modes of protection — namely sui generis systems and collective or certification mark systems — share some common features, such as the fact that they set up rights for collective use by those who comply with defined standards. Broadly speaking geographical indications are protected in different countries and regional systems through a wide variety of approaches and often using a combination of two or more of the approaches outlined above. These approaches have been developed in accordance with different legal traditions and within a framework of individual historical and economic conditions.

2.3.4 Recommendation of SCT: 1) Protection of well-known marks: The Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO), Taking into account the provisions of the Paris Convention for the Protection of Industrial Property relative to the protection of well-known marks; Recommend that each Member State may consider the use of any of the provisions adopted by the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) at its second session, second part, as guidelines for the protection for well-known marks; It is further recommended to each Member State of the Paris Union or of WIPO which is also a member of a regional intergovernmental organization that has competence in the area of registration of trademarks, to bring to the attention of that organization the possibility of protecting well-known marks in accordance, mutatis mutandis, with the provisions contained herein.

2) Trade Mark licenses: The Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO); Taking into account the provisions of the Paris Convention for the Protection of Industrial Property and of the Trademark Law Treaty (TLT); Recommend that each Member State may consider the use of any of the provisions adopted by the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) at its fourth session, as guidelines concerning trademark licenses; It is further recommended to each Member State of the Paris Union or of WIPO which is also a member of a regional intergovernmental organization that has competence in the area of registration of trademarks, to bring these provisions to the attention of that organization.

3) Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet: The Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO); Taking into account the provisions of the Paris Convention for the Protection of Industrial Property; Recommend that each Member State may consider the use of any of the provisions adopted by the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) at its sixth session, as guidelines concerning the

protection of marks, and other industrial property rights in signs, on the Internet; It is further recommended to each Member State of the Paris Union or of WIPO which is also a member of a regional intergovernmental organization that has competence in the area of registration of trademarks, to bring these provisions to the attention of that organization.

2.4 Standing Committee on Copyright and Related Rights (SCCR): The Standing Committee on Copyright and Related Rights (SCCR) was set up in the 1998-1999 biennium to examine matters of substantive law or harmonization in the field of copyright and related rights. The Committee is composed of all member states of WIPO and/or of the Berne Union; and, as observers, certain member states of the United Nations (UN) which are nonmembers of WIPO and/or the Berne Union, as well as a number of intergovernmental and non-governmental organizations. In the framework of this committee, which was established in 1998, we discuss about the current issues in the field of copyright and related rights. This committee has given most attention to the questions of protection of the broadcasting organizations, issues of limitation of copyright and issues of international protection of audiovisual performances. The question of discussing the protection of audiovisual performances was concluded in 2012 by the adoption of the Beijing Treaty on Audiovisual Performances, while the issue of passing the international instrument arranging the limitation of copyright in favor of the arrangement of limitation of copyright in favor of persons with disabilities in the use of printed material was concluded by the adoption of the Marrakesh Treaty enabling access to published works to the blind and persons with difficulties in the use of printed material. The issue of considering protection of various broadcasting points is still on the agenda of the committee. The Standing Committee formulates recommendations for consideration by the WIPO General Assembly or a Diplomatic Conference. Copyright protection extends only to expressions, and not to ideas, procedures, methods of operation or mathematical concepts as such. Copyright may or may not be available for a number of objects such as titles, slogans, or logos, depending on whether they contain sufficient authorship.

2.4.1 Copyright What is copyright? Copyright (or author’s right) is a legal term used to describe the rights that creators have over their literary and artistic works. Works covered by copyright range from books, music, paintings, sculpture, and films, to computer programs, databases, advertisements, maps, and technical drawings. What can be protected using copyright? Exhaustive lists of works covered by copyright are usually not to be found in legislation. Nonetheless, broadly speaking, works commonly protected by copyright throughout the world include: 

literary works such as novels, poems, plays, reference works, newspaper articles;



computer programs, databases;



films, musical compositions, and choreography;



artistic works such as paintings, drawings, photographs, and sculpture;



architecture; and



advertisements, maps, and technical drawings.

Copyright protection extends only to expressions, and not to ideas, procedures, methods of operation or mathematical concepts as such. Copyright may or may not be available for a number of objects such as titles, slogans, or logos, depending on whether they contain sufficient authorship.

What rights does copyright it give ? What are the rights as author of a work? There are two types of rights under copyright: 

economic rights, which allow the rights owner to derive financial reward from the use of their works by others; and



moral rights, which protect the non-economic interests of the author. Most copyright laws state that the rights owner has the economic right to authorize or prevent certain uses in relation to a work or, in some cases, to receive remuneration

for the use of their work (such as through collective management). The economic rights owner of a work can prohibit or authorize: 

its reproduction in various forms, such as printed publication or sound recording;



its public performance, such as in a play or musical work;



its recording, for example, in the form of compact discs or DVDs;



its broadcasting, by radio, cable or satellite;



its translation into other languages; and



its adaptation, such as a novel into a film screenplay. Examples of widely recognized moral rights include the right to claim authorship of a work and the right to oppose changes to a work that could harm the creator's reputation.

Can you register copyright? In the majority of countries, and according to the Berne Convention, copyright protection is obtained automatically without the need for registration or other formalities. Most countries nonetheless have a system in place to allow for the voluntary registration of works. Such voluntary registration systems can help solve disputes over ownership or creation, as well as facilitate financial transactions, sales, and the assignment and/or transfer of rights. .

2.4.2 The Committee is currently engaged in discussing: 1) Limitations and Exceptions In order to maintain an appropriate balance between the interests of right holders and users of protected works, copyright laws allow certain limitations on economic rights, that is, cases in which protected works may be used without the authorization of the right holder and with or without payment of compensation. Limitations and exceptions to copyright are provisions, in local copyright law or Berne Convention, which allow for copyrighted works to be used without a license from the copyright owner.

Limitations and exceptions to copyright relate to a number of important considerations such as market failure, freedom of speech, education and equality of access (such as by the visually impaired). Some view limitations and exceptions as "user rights"—seeing user rights as providing an essential balance to the rights of the copyright owners. There is no consensus among copyright experts as to whether user rights are rights or simply limitations on copyright. Limitations and exceptions to copyright and related rights vary from country to country due to particular social, economic and historical conditions. International treaties acknowledge this diversity by providing general conditions for the application of exceptions and limitations and leaving to national legislators to decide if a particular exception or limitation is to be applied and, if it is the case, to determine its exact scope. Due to the development of new technologies and the ever-increasing worldwide use of the Internet, it has been considered that the above balance between various stakeholders’ interests needs to be recalibrated. Limitations and exceptions is an issue considered in the agenda of the WIPO Standing Committee for Copyright and Related Rights (SCCR) and, recently, its debate has been focused mainly on three groups of beneficiaries or activities in relation to exceptions and limitations – on educational activities, on libraries and archives and on disabled persons, particularly visually impaired persons.

I.

Changing technology

The scope of copyright limitations and exceptions became a subject of societal and political debate within various nations in the late 1990s and early 2000s, largely due to the impact of digital technology, the changes in national copyright legislations for compliance with TRIPS, and the enactment of anti-circumvention rules in response to the WIPO Copyright Treaty. The European People's Party concluded that international instruments for the protection of copyright no longer seem capable of guaranteeing creators and investors a fair return on their activities while ensuring the public’s access to information and respect for privacy. Defenders of copyright exceptions fear that technology, contract law undermining copyright law and copyright law not being amended, is reducing the scope of important exceptions and therefore harming creativity. In May 2010 a declaration entitled Copyright for Creativity was launched, stating: "While exclusive rights have been adapted and harmonised to meet the challenges of the knowledge economy, copyright’s exceptions are radically out of line with the needs of the modern information society. The lack of harmonisation of exceptions hinders the

circulation of knowledge based goods and services across Europe. The lack of flexibility within the current European exceptions regime also prevents us from adapting to a constantly changing technological environment." This ad-hoc coalition is being registered at the official EU Transparency Register in the section In-house lobbyists. Coordinator of this project runs a Brussels-based public affairs & government relations firm specialised in the online environment, that mainly mentions Industry (a.o. Google) and Trade Associations as its clients. Attempts at expansion of copyright limitations and exceptions are sometimes regarded as a threat by publishers.

II.

Competition law / anti-trust law

Copyright is typically thought of as a limited, legally sanctioned monopoly. Because of this, copyright licensing may sometimes interfere too much in free and competitive markets. These concerns are governed by legal doctrines such as competition law in the European Union, anti-trust law in the United States, and anti-monopoly law in Russia and Japan. Competition issues may arise when the licensing party unfairly leverages market power, engages in price discrimination through its licensing terms, or otherwise uses a licensing agreement in a discriminatory or unfair manner. Attempts to extend the copyright term granted by law – for example, by collecting royalties for use of the work after its copyright term has expired and it has passed into the public domain – raise such competition concerns. In April 1995, the US published "Antitrust Guidelines for the licensing of Intellectual Property" which apply to patents, copyright, and trade secrets. In January 1996, the European Union published Commission Regulation No. 240/96 which applies to patents, copyright, and other intellectual property rights, especially regarding licenses. The guidelines apply mutatis mutandis to the extent possible. The interplay of copyright law and competition law is increasingly important in the digital world, as most countries' laws allow private contracts to over-ride copyright law. Given that copyright law creates a legally sanctioned monopoly, balanced by "limitations and exceptions" that allow access without the permission of the copyright holder the over-riding of copyright law by private contracts can create monopoly activity. Well known limitations and exceptions include fair dealing in the UK and Canada, as well as the fair use doctrine in the US. The undermining of copyright law, and in particular limitations and exceptions to copyright by contract law is an issue frequently raised by libraries, and library groups such as International Federation of Library Associations and Institutions. As a result of this, this issue is increasingly being looked at and discussed at

a national governmental level e.g. UK as well as international level such as WIPO – as part of the Development Agenda.

III.

Fair use exceptions for libraries under Indian copyright law

Indian copyright law provides exceptions to libraries for use of copyrighted works under the statutory fair dealing provisions of the copyright Act (section 52) as well as under the judicially created fair use exception. Broadly the law permits use of copyrighted works by libraries for the following purposes: 1. Research and education; 2. Instructions, teaching and training; 3. Private study; 4. Enabling access to the disabled; 5. Activities of education institution; 6. Review and criticism; 7. Searching and data mining; 8. Storage and preservation; and 9. Access to knowledge. The fair dealing and fair use exceptions are provided under Section 52 of the Copyright Act and have emanated from different court decision, notably the Delhi High Court decision in The Chancellor, Masters & Scholars of the University of Oxford & Ors vs Rameshwari Photocopy Services with respect to photocopying.

IV.

Study on Copyright Limitations and Exceptions for the Visually Impaired

This Study builds on a number of earlier studies and reports looking at the relationship between copyright and the needs of visually impaired people who are unable to read copyright works in the form in which they have been published. In particular, the Study looks at what might be the appropriate balance between the interests of right holders on the one hand, and visually impaired users of copyright works and those assisting them on the other hand where exceptions to rights are provided, but it also looks at other possible solutions to the copyright problems that have been identified.

The framework in international treaties and conventions relating to intellectual property seems to permit exceptions for the benefit of visually impaired people. Indeed, exceptions seem possible with respect to a wide range of acts restricted by copyright that might be undertaken by those making and supplying accessible copies to visually impaired people. However, the possibility of such provision is not specifically addressed and is not mandatory under these treaties and conventions, although it is widely accepted that copyright laws should provide a balance between the interests of different stakeholders. Also, especially where several different treaties and conventions need to be considered, the conditions that might apply to exceptions is quite complicated and there may be some doubt regarding exceptions to the adaptation right in particular. In examining exceptions for the benefit of visually impaired people in national laws, 57 countries have been found that have specific provisions that would permit activity to assist visually impaired people unable to access the written word, or to assist people with a print disability more generally, by making a copyright work available to them in an accessible form. Some of the exceptions found in these countries would also permit other types of assistance for handicapped people, and two further countries have been found that have exceptions that would permit, amongst other things, audio description of broadcasts. It has not been possible in this Study to consider to what extent exceptions of other types would permit activity for the benefit of visually impaired people, such as exceptions permitting private copying, use of copyright works for educational purposes and those applying to activity in or by libraries,. But it seems unlikely that such exceptions would provide a comprehensive solution to the legitimate needs of visually impaired people unable because of copyright constraints to access the written word. The specific exceptions found in national laws have been analysed in some detail, for example looking at how the end beneficiary is defined, what type of copyright works can be copied or otherwise used and by what type of organisation, whether or not activity must be of a non-commercial nature and what type of accessible copies can be made. The range of provision varies considerably between countries on most of the factors considered and the variation does not generally seem to have any relationship to the needs of visually impaired people in a particular country. A number of exceptions are specifically qualified by a requirement to comply with a test the same as or similar to the 3-step test found in the Berne Convention. The majority of exceptions do not provide for any remuneration to be paid to right holders for activity under the exception. Organisations making accessible copies for visually impaired people under an exception in one country often wish to share those copies with similar organisations in other countries so that transcription work in one country does not need to be repeated in another country, and the limited resources available for assisting visually impaired people

in all countries are used more efficiently. International treaties and conventions relating to intellectual property generally permit countries to decide for themselves what provision to make on cross-border movement of copies of copyright works made under exceptions. The laws of both the exporting and importing country do, however, need to be considered regarding cross-border movement of accessible copies. One of the difficulties in deciding whether accessible copies made under an exception in one country may be exported to another country is the lack of clarity about what types of distribution of accessible copies are within the scope of many of the specific exceptions to copyright for the benefit of visually impaired people. However, other aspects of the scope of the exceptions are also likely to be relevant, such as who may act under the exception, how to determine whether or not the requirements about the end beneficiary of the exception are met, whether requirements that a work must have been published are met, whether or not only copies made under the exception may be distributed in the country and whether the same type of accessible copies in both importing and exporting countries are permitted. In a number of countries, the interaction with more general provisions relating to import and/or export of copies that have been made without the authorisation of the right holder also seems to be relevant. A number of case studies illustrate both problems arising out of copyright constraints as well as effective solutions. These case studies show that at one end of the spectrum problems are as much due to lack of understanding about the needs of visually impaired people as lack of exceptions to copyright or other provision that can lead to more accessible copies being made available. At the other end of the spectrum, that is in countries with fairly comprehensive provision regarding the making of accessible copies under exceptions to copyright, there may still be problems where it is desired to move accessible copies between countries. The difficulties in reaching licensing arrangements, both instead of or as well as undertaking activity under exceptions to copyright, both regarding activity within a country and movement of accessible copies across borders, are illustrated by several case studies. Problems include long delays in getting a response, or lack of a response at all, from right holders and there is evidence that current mechanisms cause problems for right holders as well as organisations making accessible copies. But other case studies do show licensing arrangements with right holders which are, or look likely to be, more effective and which do or will complement exceptions in useful ways. It seems probable that helpful agreements will be more likely where trust has been built up between the relevant parties. As well as provision relating to the making and distribution of accessible copies, licensing problems and solutions concerning the linked issue of access to publishers’ electronic files to make the production of accessible copies easier are covered in case studies. A final case study illustrates the advantages for visually

impaired people where stakeholders work together to try and build in accessibility to the written word as part of the ordinary publishing process. The Study concludes by discussing possible solutions to copyright problems to improve access to the written word for visually impaired people. The recommendations include the following suggestions and observations: Collaboration between all stakeholders can help ensure that technology improves access to the written word for visually impaired people and WIPO could help facilitate and encourage such activity as well as help to raise awareness amongst all stakeholders about the issues covered by the Study. The ideal is for accessibility to be built into the ordinary publishing process. Further debate about provision relating to exceptions in international treaties and conventions in the intellectual property area may be desirable in the long term, and developing countries may need further guidance about exceptions, but international agreements relevant to the rights of disabled people may already require countries to take the needs of disabled people into account when framing their copyright laws. Although exceptions to copyright are unlikely to deliver full accessibility to all publications for visually impaired people, they may nevertheless be justified, but need to balance the interests of all stakeholders and work in ways that encourage rather than deter more comprehensive solutions. Self-help access to the written word by visually impaired people may be desirable under private copying exceptions or otherwise and it would be helpful for information to be available in every country about what is possible. Exceptions that permit non-profit making of accessible copies by organisations assisting visually impaired people are more useful if defined in functional terms and where they are broadly drawn regarding type of accessible copy that may be made, but other provision may be needed in an exception to protect the interests of right holders and provisions should not necessarily act against right holders being entitled to a fair price for use of their works. It might be helpful for WIPO to facilitate a discussion on the scope of exceptions, particularly given the wide differences that currently exist in national laws. Exceptions that provide for the import and export of accessible copies across borders might be appropriate, but provision may be particularly complicated where countries do not provide international exhaustion of rights, so licensing might provide a better approach. WIPO might be able to facilitate discussions between stakeholders about licensing.

Licensing, including collective licensing, may offer other benefits too, such as secure access to publishers’ e-files, and legislative changes may be better if they support and encourage a trusted environment where licensing can be developed. Standard permission requests and licence agreements may benefit right holders as well as non-profit bodies, such as libraries for the blind, producing accessible formats. Conflict between the use of DRMs and exceptions to copyright may be best explored further by looking at specific exceptions for the benefit of visually impaired people, building on earlier work initiated by WIPO.

2) Broadcasting Organizations The updating of the international protection of broadcasting organizations has been discussed at length at the WIPO in the ambit of the Standing Committee on Copyright and Related Rights (SCCR). The issue at stake is to update the protection of broadcasting organizations, which are holders of related rights, in response to the digital and other new technologies and the growing use of the Internet. Important developments in technology and marketplace have taken place in the broadcasting sector since the adoption of the Rome Convention in 1961. The process was initiated at the WIPO Worldwide Symposium on Broadcasters’ Rights which was held in Manila in 1997.

Broadcasting Organization Activities and the Rome Convention

(a)

Broadcasting and Technology

1. Since broadcasting emerged as radio broadcasting in the first decade of the 20th century and television broadcasting became widespread in the 1950s and 1960s, it underwent important changes as regards the production, dissemination and consumption of programs. Still, in the 1960s broadcasting was technically limited to analog radio and television services provided over the air from terrestrial transmitters, and due to spectrum constraints, the number of channels was limited. 2. What might be considered the main features of broadcasting have since then to some extent remained unchanged. The main operation that is performed by a broadcasting service consists in sending a stream of signals containing images and/or sounds for reception by the public at large. Broadcasting is not confronted with any inherent limitation as to the number of receivers within a given geographical area covered

by the radio waves concerned. One transmitter can reach an audience of 2,000 or 2,000,000 for almost the same technical costs (point to multipoint; see Annex I). The marginal cost to the broadcasting organization of extra listeners or viewers is effectively zero.

(b)

Economic Features of Broadcasting Organizations

3. The broadcasting market is today essentially composed of two main categories of operators. The first one consists of broadcasting organizations that finance their activities through advertising or license fees. Their broadcasting is usually non-encrypted. The other model consists of television by subscription, essentially pay television companies. 4. The two main features of pay-TV relate to the controlled access to the program and the payment of the subscriber. The success of the major pay-TV channels has been founded on their exclusive licensing, on a geographical basis and for a limited period of time, of the rights in certain programs. The major part of these programs is made of films, news, and sports coverage which provide high audience figures. Sports, in particular, is a sector where there is often only one exclusive licensee for each country. (While the term “sports rights” is often used, such transmissions are in certain countries subject to contract protection, rather than copyright.)

(c)

The Legal Framework Applicable to Broadcasting

5. The general legal framework applicable to radio and television broadcasting reflected the technological environment and more specifically the facts that broadcasting was expensive and, due to the shortage of Hertzian frequencies, limited to few players. Therefore, in general, a small number of generalized channels developed in each country. Until t he advent of broadcasting by satellite, television broadcasting was essentially limited by national boundaries. Programs served mainly the general public interest, especially in providing useful information and discussion of issues in a public forum, and much broadcasting is still today operated as a public service. Due to the restrictions in available frequencies used for over-the-air broadcasting and cable access, the possibility for broadcasting organizations to offer specialized targeted channels (known as niche channel programs) was for many years almost non-existent. 6. The legal framework applicable to broadcasting was normally specific and well defined. In most countries the broadcasting sector was, and it remains today, extensively regulated. The rules to which broadcasting organizations are subject range from the

license required for the activity as such, procedures for the allocation of frequencies, rules relating to the public mandate, regulation of the content itself like language quotas, local cultural content, or rules for the protection of young people. 7. Rights granted to broadcasting organizations were also limited. Until 1961, such rights were essentially granted at the national level, and not all countries provided for such protection. At the international level, the main rights granted to broadcasting organizations were laid down in the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (the Rome Convention), which was adopted on October 26, 1961. It came into force on May 18, 1964, and as of March 27, 2002, 68 countries were party to it. 8. The Rome Convention reflects the technological development of the time when it was negotiated. It defines broadcasting as “the transmission by wireless means for public reception of sounds, or of images and sounds” (Article 3(f)) and thereby confines broadcasting to over the air transmissions, excluding coverage for cable transmissions. Protection for cable transmissions has, however, in a number of countries been granted at the national level. Articles 13 and 14 of the Rome Convention lay down the minimum rights for broadcasting organizations and ensures the exclusive right to authorize or prohibit a number of activities in the realm of broadcasting. 9. The minimum rights granted to broadcasting organizations under the Rome Convention are the rights to authorize or prohibit: (a) the re-broadcasting of their broadcasts; (b) the fixation of their broadcasts; (c) the reproduction of fixations of their broadcasts; and (d) the communication to the public of television broadcasts if such communication is made in places accessible to the public against payment of an entrance fee. The right of reproduction, however, applies only to reproduction of fixations that are either made without their consent, or made in accordance with the provisions of Article 15 (that is, the exceptions and limitations permitted under the Convention). In the latter case, however, the reproduction must be made for purposes different from those referred to in those provisions. As regards the right of communication to the public, the Article 13(d) states that it shall be a matter for the domestic law of the State where protection of that right is claimed to determine the conditions under which it may be exercised. Article 16(1)(b) further allows a Contracting State to declare that it will not apply Article 13(d) at all. In that case, the other Contracting States are not obliged to grant that right to broadcasting organizations whose headquarters are in that State. Article 14 states that the term of protection shall last at least until the end of a period of twenty years computed from the end of the year in which the broadcast took place. 10. The Rome Convention allows for exceptions and limitations in respect of: (a) private use; (b) use of short excerpts in connection with the reporting of current

events; (c) ephemeral fixation by a broadcasting organization by means of its own facilities and for its own broadcasts; and (d) use solely for the purposes of teaching or scientific research. In addition, Contracting States may apply the same kind of limitations as they provide for in connection with the protection of copyright in literary and artistic works, however with the reservation that compulsory licenses may be provided for only to the extent to which they are compatible with the Convention (Article 15). 11. Which type of organizations is protected as broadcasting organizations under the 1961 Rome Convention is not expressly clarified. Although there is no definition in that Convention of “broadcasting organization,” it was and is generally accepted that these are organizations which provide their broadcasting services to the general public over Hertzian (wireless) waves.

(d)

Signal, Content and Program

12. The object of the protection under Article 13 of the Rome Convention, “broadcasts” is not defined in the Convention but from the definition of “broadcasting” in Article 3(f), it appears that it is the signals constituting the wireless transmission of images and/or sounds. Accordingly, the object of the protection is the signals themselves and not to the content of what they transmit.

13. Broadcasting is sometimes referred to as a “point to multipoint” technology which means it is a process in which the same signal flows, or is transferred, from a single origin to multiple consumers. That signal should arrive at all the endpoints at roughly the same time. In this case the network links always end at a number of different points. This process is different from “point to point” transmissions which are delivered to consumers individually (see Annex I).

14. During the discussions in the Standing Committee, it has generally been indicated that protection should be granted to broadcasting organizations for their signals independently of the copyright and related rights protection of the content. Theoretically it is possible to separate the signals from the content, which they carry. However, in practice, that distinction is almost impossible. Pirates are mainly interested in the content which is carried by the signals, but it should be recalled that copyright law does not protect all content and pirates can also be interested in signals carrying unprotected content.

Issues to be Considered Broadcasting Organization (a)

Broadcasting and Piracy

15. As a result of the huge investments and costs involved in broadcasting and the enormous marketing revenues generated because of the massive appeal of television programs, not to mention the rise of new recording and transmission technology, broadcasting piracy has become a main problem (as illustrated in Annex II). In the digital environment, piracy is a severe threat since a digital signal, once received, can be perfectly cloned and reproduced (pirates are able to obtain perfect digital copies of broadcast programs from which multiple copies and Internet downloadable copies can be made and redistributed). Transmission of broadcasts over the Internet are also vulnerable to piracy because of the ease with which contents can be accessed and copied. Large segments of the public have access to broadcasting services, and at the same time copying devices have become cheap and commonplace. 16. Piracy also affects the market for encrypted transmissions. Broadcasting organizations make use of encryption systems so that only the viewers they authorize can access the programming. Audiovisual pirates analyze (“crack”) the encryption systems and manufacture and distribute unauthorized decoders, black boxes and smart cards. This practice is widespread both in developed and developing countries, and the use and illegal distribution of decoding devices have proliferated. (b)

Program-Carrying Signals

17. The notion of “program-carrying signal” relates to the issue of “signal theft.” The pre-broadcast program-carrying signal can be described as the electronic signal carrying program material which is sent via a telecommunications link to a broadcasting organization for use in its broadcasts. Such signals are intended not for reception by the public, but for use by broadcasting organizations in their broadcasts. Therefore, they are not broadcasting, but a point to point transmission (see Annex II) by telecommunications links from the site of an event (sports, news or cultural) to one or more national and/or foreign broadcasting organizations for the purpose of enabling the latter’s broadcasting of the event. A broadcasting network (or program syndicator) also sends such signals, for example, to its affiliated broadcast stations. 18. Pirates can intercept the signals, with their content, either at the stage of the pre-broadcast transmission, for example, off a satellite (see Annex II), or at the stage of the actual broadcast. Since pre-broadcast signals are often digital, pirates are able to obtain perfect digital clones of the program-carrying signals and content from which multiple streams, copies, downloads or rebroadcasting can be made. There are also cases where pirates have disseminated the pre-broadcast signals and related content simultaneously, before the time when the receiving broadcasting organization had

scheduled its, delayed, broadcast. For example, instances have been reported where programming has been taken off a United States of America network East Coast feed and streamed over the Internet before it was broadcast on the West Coast. 19. The 1974 Brussels Satellites Convention addresses the question of protection of pre-broadcast program-carrying satellite signals by obliging Contracting States to undertake adequate measures against their unauthorized distribution, but leaving it open whether it should be under public or private law. Among the possible measures is a specific right for broadcasting organizations to take direct action, particularly by means of exclusive rights under copyright or related rights legislation. Another possible means is telecommunications law, in which case normally a telecommunications authority will take action to protect the secrecy of the signals. (c)

The Object of Protection

20. Some of the developments described above have already been dealt with in other contexts, such as for instance, satellite broadcasting and certain use of encrypted signals, which are included in the definition of “broadcasting” in Article 2(f) of the WIPO Performances and Phonograms Treaty (WPPT). Questions remain, however, whether that definition of broadcasting, which refers only to wireless transmission, remains sufficient in the light of the present technological realities, or whether certain forms of wire transmission should be included in the definition of broadcasting or be defined or described separately and assimilated to broadcasting. In this connection, depending on the outcome of the discussions in the Standing Committee it might also be considered whether certain cases of transmissions which in general should not be considered or assimilated to broadcasting still might be assimilated such as for example, simulcasting. Such questions have been raised regarding programs which are not transmitted over the air, but directly through cable systems over the Internet. Conclusions to be reached in this respect may influence both the definitions in a possible international instrument, and the protection granted by it. 21. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) does not contain any definitions relating to broadcasting, but it vests in broadcasting organizations rights to prohibit certain acts relating to their broadcasts. These acts are: the fixation; the reproduction of fixations; and the rebroadcasting by wireless means of broadcasts; as well as the communication to the public of television broadcasts of the same. Where Members do not grant such rights to broadcasting organizations, they shall provide owners of copyright in the subject matter of broadcasts with the possibility of preventing the above acts, subject to the provisions of the Berne Convention.

22. Elements, which might be useful in the definition and determination of the object of protection, could be, apart from whether the signal is delivered with or without wire:  whether the transmission is a process initiated by the receiving person or whether it is sent according to a schedule determined by the broadcasting or transmitting organization;  whether access to the transmission, even if it is sent according to such a schedule, needs to be made specifically by the receiving person through a server or similar intermediary device (as in Internet streaming); and  whether the transmission is made “point to point” (as in an Internet transmission) or “point to multipoint” as in “traditional” broadcasting.  Whether a given transmission is to be regarded in the context of the current discussions as restricted to “signals” or to “program-carrying signals.”

23. It might also be considered whether the limitation of the definition of “broadcasting” in the Rome Convention and the WPPT to cover only transmission of “sounds or of images and sounds [or of the representations thereof]” is still adequate. 24. In connection with the object of protection it may also be recalled that in a memorandum prepared by the WIPO Secretariat for the first session of the Standing Committee “Existing International, Regional and National Legislation concerning the Protection of the Rights of Broadcasting Organizations” (document SCCR/1/3 of September 7, 1998) it was pointed out that a number of countries do not grant related rights for broadcasting organizations, but include broadcasts as a category of works, protected under copyright (paragraph 36). Among those countries, some appear to protect the program content rather than the emitted signal, while others appear to protect the signal, rather than the content (paragraph 39). The proposals submitted by Governments to the Standing Committee all appear to be based on a related rights protection linked to the broadcast signal, rather than the protection of the program contents under copyright. 25. Another issue which has been raised in the Standing Committee is the possible protection of pre-broadcast signals, that is, signals transporting programs to broadcasters for simultaneous or deferred use. The questions are whether such signals should be protected and, if so, how such signals should be defined, particularly in the case where the broadcast is not simultaneous. Presently, such “program carrying signals” are protected under the 1974 Brussels Convention Relating to the Distribution of

Programme-Carrying Signals Transmitted by Satellite (the Brussels Convention) which, among others, contains the following definitions: “For the purposes of this Convention: (i)

‘signal’ is an electronically-generated carrier capable of transmitting programmes;

(ii) ‘programme’ is a body of live or recorded material consisting of images, sounds or both, embodied in signals emitted for the purpose of ultimate distribution; (iii)

‘satellite’ is any device in extraterrestrial space capable of transmitting signals;

(iv) ‘emitted signal’ or ‘signal emitted’ is any programme-carrying signal that goes to or passes through a satellite; (vii) ‘distributor’ is the person or legal entity that decides that the transmission of the derived signals to the general public or any section thereof should take place;

(d)

The Subject of Protection

26. As traditional broadcasting has developed a number of other services, a number of new players have become involved in the transmission of both traditional broadcasts and, in particular, of new types of services and programs. In terms of size and character the traditional and new are very different, spanning from large national broadcasting corporations operating under well-defined rules to private individuals operating in the absence of rules. 27. Both the Rome Convention and the WPPT define the term “broadcasting,” which in its turn is part of the concept “broadcasting organization” used by those Treaties. 28.

The Brussels Convention contains, among others, the following definition:

“For the purposes of this Convention: (i) ‘signal’ is an electronically-generated carrier capable of transmitting programmes; (ii) ‘programme’ is a body of live or recorded material consisting of images, sounds or both, embodied in signals emitted for the purpose of ultimate distribution; (iv) ‘emitted signal’ or ‘signal emitted’ is any programme-carrying signal that goes to or passes through a satellite; (vi) ‘originating organization’ is the person or legal entity that decides what programme the emitted signals will carry;

(vii) ‘distributor’ is the person or legal entity that decides that the transmission of the derived signals to the general public or any section thereof should take place; (viii) ‘distribution’ is the operation by which a distributor transmits derived signals to the general public or any section thereof.” 29. Under the ITU Radio Regulations a “broadcasting service” is defined as a service in which the transmissions via Hertzian waves (i.e., electromagnetic waves of frequencies propagated in space without artificial guide) are intended for direct reception by the general public. The Radio Regulations apply to both sound radio and television. 30. Under international copyright and related rights treaties the word “broadcasting” generally has been understood as transmission via Hertzian waves. A certain number of national copyright laws give providers of cable-originated programs, who do not merely distribute broadcasts simultaneously and unchanged, rights similar to those granted to broadcasting organizations, insofar as they are considered organizations which are analogous to broadcasting organizations, that is, offering program services for reception by the public at large. 31. It does not appear that any national copyright law gives express recognition of, or protection to, webcasters as broadcasting organizations. Webcasting is described above, but there is no established legal definition of webcasting or of a webcaster, and the term may be understood as applying to any type of a number of different kinds of services over the web which might have varying degrees of interactivity and pre-programming of the content. Therefore, to the extent the Standing Committee might wish to include webcasting under a possible international instrument, an appropriate definition would have to be formulated.

(e)

The Scope of Protection

32. As regards the scope of protection, this issue will, as indicated in paragraph 5, above, not be discussed in this paper. Reference is made to paragraphs 14, 75 and 79, above, where the minimum rights for the object of protection under the Rome Convention, the TRIPS Agreement and the Satellites Convention, respectively, are described. In addition, reference is made to the proposals submitted by Governments to the Standing Committee.

2.5 Committee on WIPO Standards (CWS): The CWS is the collaborative international forum for discussing and reaching agreement on WIPO Standards, including their revision and development. It also deals with other matters relating to industrial property information and documentation. The Committee was created by WIPO member states at the General Assembly held in 2009 and it currently meets annually.

2.5.1 Why use WIPO Standards? Using agreed terminology and information formats – for example, citing prior art in a standard way – helps to make IP systems efficient and cost-effective. It simplifies the work of IP Offices, facilitates international cooperation and means that IP information is easier to understand for everyone. They are used in global services for protecting intellectual property (IP) like the Patent Cooperation Treaty (PCT), Madrid and Hague Systems, publications issued by IP Offices, global IP databases and business software solutions for IP Offices such as IPAS, WIPO Publish and WIPO Scan.

2.5.2 Who sets WIPO Standards? WIPO Standards reflect best practices around the world. They are drafted with the help of experts from many countries in meetings and online fora organized by WIPO.

2.5.3 What do WIPO Standards cover? WIPO Standards cover patents, trademarks and industrial designs and are used at all stages of the industrial property prosecution process (filing, examination, publication, grant) as well as for data dissemination. Who uses WIPO Standards? WIPO Standards are aimed at three main groups of users and facilitate working in different systems and languages. 1. IP Offices use WIPO Standards to number documents, communicate in a common language with other Offices, and prepare official gazettes, among many other things. WIPO Standards also help IP Offices modernize their information systems. 2. IP information users can use them to cross-reference country and organization codes, retrieve documents from citations and read search reports.

3. Applicants for IP protection use WIPO Standards when they cite prior art, file sequence listings, make their applications suitable for digitization and indicate dates.

2.5.4 CWS is currently involved in issues: Task forces and e-forums: The CWS establishes Task Forces consisting of policy makers and experts nominated by Committee members and observers to address specific tasks, such as the development of WIPO Standards. 1) ICT strategies and WIPO standards Task No. 58: Prepare a proposal for a roadmap of future development and enhancement of WIPO standards, including policy recommendations, in view of more effective production, sharing, and utilization of data by IPOs and other interested parties. 2) Block Chain for intellectual property Task No. 59: Explore the possibility of using block chain technology in the processes of providing IP rights protection, processing information about IP objects and their use; Collect information about IPO developments in use of and experience with block chain, assess current Industry Standards on block chain and consider merit and applicability to IPOs; Develop a model to standardize approaches of using block chain technology in the IP field, including guiding principles, common practice and use of terminology as a framework supporting collaboration, joint projects and proofs of concept; and Prepare a proposal for a new WIPO standard applying block chain technology in the processes of providing IP rights protection, processing information about IP objects and their use. 3) INID codes for new trademark types Task No. 60: Prepare a proposal for the numbering of INID codes in WIPO Standard ST.60 regarding word marks and figurative marks; on splitting INID code (551), and a potential INID code for combined marks.

4) 3D Models and Images Task No. 61: Prepare a proposal for recommendations on three-dimensional (3D) models and images. 5) Digital Transformation Task No. 62: Review WIPO Standards: ST.6, ST.8, ST.10, ST.11, ST.15, ST.17, ST.18, ST.63 and ST.81 in view of electronic publication of IP documentation; and propose revisions of those Standards if needed.

2.6 Standing Committee for Information Technologies The use and development of information technologies in the procedures of protection of intellectual property has crucial importance. This committee is dedicated to the development of information system of the WIPO and offering assistance to the member countries in the development of their own information systems.

2.7 Standing Committees of Experts This concerns committees formed by the countries signatories of the classification treaties: Locarno Agreement, Nice Agreement, Strasbourg Agreement and Vienna Treaty. Their task is to revise periodically the existing classifications. Our country attends the meetings of the Committee of experts for the Nice Agreement and Strasbourg Agreement.