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WIPO/IP/JU/RYD/04/12
ORIGINAL: English
DATE: October 2004
KINGDOM OF SAUDI ARABIA
WORLD INTELLECTUAL
PROPERTY ORGANIZATION
WIPO NATIONAL WORKSHOP FOR JUDGES
organized by
the World Intellectual Property Organization (WIPO)
in cooperation with
the Government of the Kingdom of Saudi Arabia
Riyadh, December 13 to 15, 2004
POLICY CONSIDERATIONS AND PRACTICAL MEASURES FOR THE
EFFECTIVE ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS; ROLE
OF THE PUBLIC AND THE PRIVATE SECTOR: INDUSTRIAL PROPERTY
prepared by Mr. Nuno Pires de Carvalho, Deputy Director and Head,
Economic Development Sector, Industrial Property Law Section, WIPO
Policy Considerations
1. Introduction
2. Policy considerations
3. Practical measures
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Policy Considerations
a. Intellectual property (IP) is about
private property rights. Enforcement
of IP, therefore, has the same
objectives as enforcement against
trespassing, namely:
a) Stopping/preventing infringement
b) Recovering damages
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Policy Considerations
b. But because IP is about intangible
assets, infringement
(trespassing) may be very
difficult to detect and stop. This
explains the importance of some
measures like provisional
(interlocutory) injunctions and
the right of information.
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Policy Considerations
c. Moreover, because IP is about
intangible assets, “trespassing” does
not prevent their use by the owner
(possession brings no material or
physical exclusivity). Thus, not only
detection is more difficult, but also
damages require different elements to
be assessed.
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Policy Considerations
d. Because of IP is intangible, there is no
immediate feeling of loss. The sense of
illegality or illicit becomes more
subtle. For this reason, reasonable,
law-abiding consumers may have no
qualms in indulging with infringing IP
rights (thinking they are not causing a
loss to anyone).
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Policy Considerations
e. For the same reason courts tend also to
be very tolerant and soft on infringers.
Besides, because many IP assets
require major investment, their
owners may be large multinational
companies. Courts may have also the
tendency of “protecting” small
infringers against large IP owners.
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Policy Considerations
f. Consequently, IP infringement is socially
deemed as a minor violation of the law.
Which transforms IP infringement into an
easy way of making “cash” for organized
crime. Therefore, IP infringement is not only
a matter of a college student who makes an
illicit copy of one computer game: it has
become a major source of funding for
serious, anti-social crimes, like drug and
weapon trafficking, and, increasingly,
terrorism.
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Policy Considerations
g. Moreover, even if IP is about private
property rights, IP infringement leads
to consumer deception and
discouragement of creation and
invention.
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Policy Considerations
2. Policy considerations
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Policy Considerations
In result of all those initial considerations,
enforcement of IP must be:
a) effective
b) fair and equitable
c) balanced (coherent and consistent with the
framework of a country’s general
enforcement of law)
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Policy Considerations
3. Practical measures
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Policy Considerations
a) to give priority to private initiative or
rather rely on ex officio enforcement?
b) to attribute the public prosecutor’s
office a pro-active role in all
proceedings involving IP infringement
or reserving that role for predetermined proceedings (for example,
those involving piracy and
counterfeiting)?
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Policy Considerations
c) should courts be more tolerant as to
the plaintiff’s obligation to submit
evidence or should they treat evidence
as under any other proceeding?
d) but in the event of information under
the control of the defendant, he is
obliged to submit it
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Policy Considerations
e) the IP owner should be informed about
the identity of those involved in the
infringement
f) should there be tolerance as to de
minimis imports?
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Policy Considerations
g) should there be tolerance as to goods
in transit?
h) should law enforcement agencies and
the IP office cooperate?
i) should infringement proceedings be
concentrated in specialized law
agencies and courts?
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Policy Considerations
Thank you!
If you have any questions as regards this
presentation, please do not hesitate to contact
[email protected]
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