From the 13th to 16th of this month, the International Association for Advancement of Teaching and Research in Intellectual Property (ATRIP) held its annual conference in Vilnius. The event which was hosted by the Faculty of law of the Vilnius University, was a well-organized one and went like clockwork with attention being paid to the minutiae.
The theme of the Congress was “Horizontal Issues in IP Law: Uncovering the Matrix” which saw several interesting presentations and discussions on diverse topics pertinent to the theme such as impact of different forms of ownership on exclusivity, role of IP law in dissemination of information, IP’s interface with sports law, overlaps between IP rights, limitations and exceptions to IP rights (a.k.a. fair use), licensing, choice of law principles, term of protection and negotiation of enforcement issues in international fora.
I shall discuss only a few presentations here; on the issue of ownership and its impact on exclusivity, Prof.Marshall Leafer from the Indiana University School of Law spoke on Traditional Knowledge (TK). According to him, the purpose of the discourse on TK is to understand perspectives from either sides of the discussion which in turn ought to lead to intercultural respect. But on the aspect of ownership, he advocated use of traditional forms of IP to protect innovation in TK. This is an issue we have discussed earlier on SpicyIP and we feel that employing traditional IP rights to protect such innovation is easier said than done because those aspects of the work which already exist in the public domain ought not to be protected and such aspects have to distinguished from the contribution of the innovator, which is a formidable task best left to customary laws. Moreover, use of traditional forms of IP may provide a surreptious backdoor for those have scant or no respect for the rights of indigenous groups.
On the role of IP law in dissemination of knowledge, two very informative talks were delivered by Professors John Cross and Lars Smith of University of Louisville School of Law. Prof. Cross’s presentation was to the point and discussed three specific issues; he was of the opinion that the current system of IPR is based on a skewed emphasis on creativity and innovation which accrue property rights to the creator. This model, according to him, could be justified over a system of patronage only if the benefit to the society is greater.
However, he felt that the advantage of having a property model is that it encourages dissemination by “playing off” the desire for profit. In other words, in the absence of a property right which assures the creator of protection which is certain and whose power of sanction against trespassers is clear, the desire to exploit the product of his ingenuity for maximum profits, as opposed to optimum profits, would be higher and this may hinder dissemination of knowledge. Also, he pointed out that the property model limits the term of exclusivity (the question if existing terms are justified is another issue altogether) in addition to putting in place mechanisms for dissemination such as the requirement of written description and best mode in patent law. Stated otherwise, quid pro quo characterizes a property model.
He did, however, acknowledge the problems with the current system such as (1) use of patents to block access to technology as opposed to positively employing it to commercialise the know-how, or (2) the presence of contractual limitations on reverse engineering. He also drew a distinction between the fruits of innovation (products) and the knowledge from such products of creativity. The latter, according to him, is the important one in the big picture. To address the problem of access to products, he pointed to the presence of internal and external solutions such as compulsory licensing provisions and competition law. As for dissemination of knowledge, he proposed use of a broader doctrine of misuse of patents.
In my discussions with him after the presentation, I enquired if imposition of a “know-why” requirement as part of the written description in patents would help in advancing the cause of dissemination to which he responded with optimism. I seek the opinion of our readers here; would introduction of a “know-why” requirement be a justified burden on a patentee and would it alter the fundamentals of patent law as we know it now? Or would it act to choke the incentive behind grant of patents by posing too tall an order for applicants? Of course, all these questions are raised purely from an academic stand point since inclusion of a know-why requirement does put additional pressure on examiners of patent applications. But hypothetically assuming that examiners are up to the task, would the addition of such a requirement help serve the cause?
In the second talk on the same topic delivered by Prof.Lars Smith, a related issue was addressed which attracted interesting questions. Prof.Smith dealt with the pros and cons of the US form of protection for trade secrets which with certain modifications, he opined, could help in dispersing knowledge since the owner of the information would ultimately have to share the information with other stakeholders such as employees and vendors in the process of exploiting it. The problem with protection of trade secrets according to him was the absence of a clear definition of what would constitute a trade secret. I pointed out the definition of a trade secret in the US Economic Espionage Act to which he responded convincingly. He said that though the Act provides a criminal deterrent against theft of trade secrets, there is no provision for damages for the owner of the information.
I then discussed 2 specific points with him; the first one was that sharing of information with stakeholders was inevitable and indispensable which the owner would have to do anyway since he cannot harness the information all by himself. Therefore, dissemination in the strictest sense had to cross the de minimis line which forms part of such transactions with stakeholders, and that incidental dissemination cannot be seen as the ideal limit.
The second point I made was that in the face of increasing rate of obsolescence of technology, the cost of hoarding the information may be more than the returns one could accrue from it, which makes it imperative on the part of the owner to either protect it using a more certain form such as a patent or disperse it in public domain and reap the benefits during its short shelf life. I felt that the system of patents is indirectly responsible for such a situation i.e. if patent provides an incentive for innovation in the form of protection, which results in greater innovation, it contributes to greater obsolescence as well, thereby rendering useless longer patent terms or hoarding of information in the form of trade secrets. If any of these observations seem blanket, crude and bereft of logic, I welcome our readers to share their views.
The next presentation which is of immediate relevance to us was the one on overlap between copyright and design law. Unfortunately, I cannot discuss the presentation made by Dr.Estelle Derclaye of the University of Nottingham because I am yet to seek her permission to cite her work. However, those interested may get in touch with her.
Another presentation on a complex and vital topic was the one on choice of law principles governing intellectual property. This was an exhaustive presentation and I don’t think I can do justice to it by condensing it. This work is now available on the ALI website (http://www.ali.org/) and on Westlaw.
The last topic which I shall discuss here is on negotiation of enforcement issues in international fora, specifically the Anti-Counterfeiting Trade Agreement (ACTA) which has been discussed at length on SpicyIP by Swaraj. Two hard-hitting, riveting and pithy presentations were made by Prof. Hong Xue of the Beijing Normal University and Prof.Peter K.Yu of Drake University, with the former questioning the need for an alternative forum to WTO and the latter listing the benefits for China from the experience gained in the USA v. China WTO dispute. Both presentations reflected the seriousness and preparedness with which the Chinese academic community (irrespective of where it is based out of) represents and defends its country’s interests……
Prof.Xue started off by questioning the need for an alternative forum such as the ACTA which reflected an inconsistency in the stand of parties to ACTA, most of whom have consistently emphasised on respect for the WTO which is based on multilateralism. In plain and simple terms, Prof.Xue said that if there exists a difference of opinion on standard of enforcement to be observed by countries, developing and developed, the solution lay in negotiating within the framework of TRIPs, and not in setting up another forum which could be interpreted as nothing but disrespect for and evisceration of WTO.
She also questioned the interpretation of TRIPS by parties to ACTA who perceived the discretion and autonomy provided in TRIPS on the issue of enforcement as a deficiency of TRIPS, and not as an intended provision which reflected the consensus of parties to TRIPS. She ended her presentation on the note that the dynamics of IP discourse is nothing but a history of international power relations which is best reflected in the composition of parties to ACTA.
In his presentation, Prof.Yu questioned the rationale behind the claims of USA in the US v. China WTO dispute. For a thought-provoking discussion of the case, please visit Prof.Michael Geist’s site where he summarizes the issues in dispute as follows:
1. Does China’s copyright law provide appropriate protection for all works in compliance with international copyright law (Berne Convention as incorporated by TRIPS)?
2. Do China’s border measures, which allow customs officials to donate, auction, or sell to the rights holder confiscated goods, violate TRIPS?
3. Does China’s IP enforcement system, which sets a minimum threshold for criminal prosecution, violate TRIPS?
The WTO which ruled on the case on January 26th this year upheld US’s claims on the first issue but on the rest of the issues, found that US did not meet the burden of proof. Interestingly both sides claimed victory with most observers opining that China got a better deal. Coming back to Prof.Yu’s talk on the case, he said that hypothetically assuming that US had emerged the winner, China still had learnt valuable lessons on how to play, what he called, the “WTO game”. First, China had learnt how to prepare and present arguments at the WTO and second, the case provided an opportunity for both sides to understand the possible legal arguments to substantiate their respective stands, which could come in handy in future disputes.
Prof.Yu further pointed out that the presence of discretion in a now decentralized system in China allows for lot of room for manoeuvre on the ground, which US did not realise. So he said that either set a ceiling on discretion or do not cry foul when the use of discretion did not go in US’s favour. He then gave an insight into the politics of policy discourse inside China; according to him, China has two groups, the reformists and the conservatives. A victory in the WTO case would mean vindication of the conservative position i.e. there is no need for reform. A defeat in the case would only reiterate the reformist stance with the added advantage of the blame for such reform falling on the US and not the reformists. Therefore, either ways, according to him, this was a win-win position all the way for China.
Whatever be the consequences for China, the point which is of relevance to us is that when we reach a position similar to that of China, we may have to encounter similar tactics from possibly the same players. So it is in our interest to draw lessons from the Chinese experience…
On the whole, the ATRIP Congress was an eye-opening experience which helped broaden one’s vision and pointed to the need for a comprehensive approach to IP policy issues bearing in mind their implications to Indian interests.
