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Article 63.2 of the TRIPS Agreement requires Members to notify the laws and regulations made effective by that Member pertaining to the subject matter of the Agreement to the Council for TRIPS in order to assist the Council in its review of the operation of the Agreement.

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Page 669 of 677   |   Number of documents : 13533

Document symbol Notifying Member Member raising question Question Answer Date of document distribution  
IP/Q4/SWE/1 Sweden United States of America 12. Article 52 of the TRIPS Agreement requires that rights holders wishing to stop importation of counterfeit trademarked goods or pirated copyrighted works present evidence to the competent authorities that there is prima facie infringement of their trademark or copyright. Please explain what evidence will constitute prima facie infringement in Sweden.
As mentioned in Sweden's responses to the Checklist of Issues on Enforcement, Sweden applies the European Union Council Regulation No. 3295/94 of 22 December 1994, as further implemented through the Act on Customs Control of Trademark Infringements of 15 December 1994. As mentioned in connection with question 7, the Swedish legal system is based on a free evaluation of the facts in the case concerned and not on any formal requirements as to the value of certain facts in that respect. Thus, there are no explicit provisions on what would constitute prima facie evidence. In the case of border measures, a corresponding effect will follow from the fact that the application for a border measure shall contain a sufficiently detailed description of the infringing goods and evidence that the applicant is actually the right owner to the relation to the goods (see also above in the response to question 10).
26/08/1998
IP/Q4/SWE/1 Sweden United States of America 13. Article 57 requires that the competent authorities be able to authorize the right holder to inspect the detained goods in order to substantiate the claims. Please explain how right holders are provided an opportunity to inspect suspect goods that have been detained by customs authorities.
The above-mentioned Regulation applied by Sweden provides that the customs authority concerned shall give the right-owner and other persons who are affected by any of the actions taken, a possibility to inspect the goods. Also in this case Swedish law does not contain any specific criteria on the way in which right-holders are to be provided an opportunity to inspect suspect goods that have been detained by customs authorities.
26/08/1998
IP/Q4/SWE/1 Sweden United States of America 14. Article 60 permits Members to exclude from the provisions for border enforcement small quantities of goods of a non commercial nature carried by passengers or sent in small consignments. Please describe what constitutes a de minimis import that is excluded from the border measures under the law of Sweden.
There are no explicit provision on de minimis imports in Swedish law (except the provisions on tax-free importation of duty-free goods which are hardly of any interest in this context).
26/08/1998
IP/Q4/SWE/1 Sweden United States of America 15. Article 61 requires that criminal penalties be sufficient to provide a deterrent at least for wilful trademark counterfeiting and copyright piracy. Please explain how the penalties provided under the laws of Sweden comply with that obligation.
In a bill (Bill 1993/94:122, pages 55-56) containing proposals for strengthening the measures against intellectual property infringements (which proposals were adopted by the Parliament) the Government stated, inter alia, that "acts that involve infringements of intellectual property rights are to be taken seriously and possibilities must exist to impose severe imprisonment penalties in serious cases". The Government then proposed - and the Parliament accepted - that the maximum penalty be increased from six months to two years for industrial property infringements (formerly, this imprisonment scale had existed only as far as copyright infringements were concerned). This increase of the maximum penalty had also the effect of extending the timeframe for instituting an action in respect of the violation of an intellectual property right and of making the provisions on detention of suspected persons possible. It seems that the Courts more and more tend to adjudicate imprisonment sanction, at least in more flagrant copyright infringement cases. As an example, it can be mentioned that the Court of Appear in Stockholm in a judgement of 26 September 1996, invoked, inter alia, the fact that the piracy activities of a defendant involved several hundreds of copies of children's movies which are commercially interesting for a comparatively long period in an important market and that, consequently, great damage had been caused to the right-owners. Moreover, part of the activities had occurred through different shops, a fact that would make possible a wide distribution which was therefore especially dangerous also because the distribution would occur without the public suspecting that the copies were printed ones. For these reasons the Court found that the penalty should be imprisonment.
26/08/1998
IP/Q4/SWE/1 Sweden United States of America [Follow-up questions from the US] 1. Please provide statistical information related to civil copyright, trademark, geographical indication, industrial design, patent, integrated circuit layout-design and trade secret enforcement for each of the years 1996 and 1997, including the number of cases filed; injunctions issued; infringing products seized; infringing equipment seized; cases resolved (including settlement); and the amount of damages awarded.
It has proved to be extremely difficult to obtain any exact and reliable information concerning the number of intellectual property cases in the courts and outright impossible to obtain such information broken down according to types of rights and types of cases, the reason being that no such breakdown exists in the statistical information available at our central court administration. The information below is, therefore, based on personal inquiries at some courts which are of special importance in this respect. The information relates only to civil cases; no specific information is available on the number of criminal cases, the reason being that those which concern intellectual property are not singled out in the statistics and, furthermore, intellectual property violations frequently are linked to other types of offences/crimes and thus disappear in the statistics. Generally speaking, the impression of the authorities is that the number of both civil and criminal cases has been steadily increasing during the last ten years. As regards the proceedings in the ordinary courts, civil litigation in patent cases is concentrated in the Stockholm City Court and in practice also most civil litigation occurs in that Court. According to the information provided by the Court, 31 cases have been filed in the course of 1996 and 20 cases between 1 January 1997 and 30 November 1997. As regards administrative proceedings, which are perhaps of less interest from an enforcement point of view, the normal route is that rejections of applications for industrial property rights may be appealed against to the Patent Court (which is the second instance) and from there to the Supreme Administrative Court. Each year about 100 patent cases go to the Patent Court and about 700 cases relating to other industrial property rights, primarily trademark rights. The Supreme Administrative Court received 95 appeals from the Patent Court in 1996 and 61 cases during the first 11 months of 1997.
26/08/1998
IP/Q4/SWE/1 Sweden United States of America 2. Please provide statistical information related to criminal enforcement in the area of copyright piracy and trademark infringement for each of the years 1996 and 1997, including the number of raids, prosecutions, convictions and the amount of fines and/or jail terms (including whether the fines were paid and whether the jail term was actually served or was suspended) and any other information establishing that your criminal system operates effectively to deter copyright piracy and trademark counterfeiting.
Please see the reply to follow-up question 1.
26/08/1998
IP/Q4/USA/1 United States of America European Union 1. The United States' response to item eight in the Checklist of Issues on Enforcement3 states that "the United States Government is not in a position to provide data on the actual duration or cost of proceedings concerned with the enforcement of intellectual property rights". Publicly available data, however, indicates that an enforcement action in the United States federal courts typically requires several years to reach a final judgement and that the costs of such actions, including attorneys' fees, often reach US$1 million or more. In light of this information, please explain how the United States Government ensures compliance with the requirements of Article 41.2 of the TRIPS Agreement.
It is not clear to what "publicly available data" the European Communities refer in asserting that enforcement actions in Federal courts "typically" require several years to reach a final judgment and that costs, including attorneys' fees, "often" reach US$1 million or more. By not providing citations to or copies of the "publicly available data" referred to, the European Communities preclude the United States Government from considering the source and the material and responding. With regard to information on average costs and duration of legal actions, it should be noted that, under the United States judicial system, US district courts have original jurisdiction over enforcement actions regarding copyrights, patents, plant variety protection, trademarks and integrated circuit layout designs. Jurisdiction over enforcement actions involving geographical indications and trade secrets is shared between the Federal district courts and the state courts depending on a variety of factors. The Administrative Office of the United States Courts (the Administrative Office), which compiles statistics on activities of Federal courts, provides statistical information only on the number of cases filed annually involving patents, copyrights and trademarks (see table 1 below) and the number of cases terminated in a given year involving those same topics (see table 2 below), indicating at what stage of the process the case was terminated. The figures in table 1 below indicate, however, that right holders make frequent use of temporary restraining orders, preliminary injunctions, ex parte seizures and other provisional remedies in cases enforcing intellectual property rights, so that only a small percentage of cases filed proceeds to final judgment. Tracking individual intellectual property cases from filing to termination in order to determine the average time required to reach final judgment would be very costly. In addition, the duration of cases is affected significantly by the parties themselves and there would be no means for determining what periods were attributable to the courts and what periods were the fault of the parties. The Administrative Office does not keep a record of the cost of litigation. Parties do not provide information on attorneys' fees, cost of experts, etc. to the Administrative Office, and would not likely do so if asked, because such information is generally regarded as confidential, except when costs are being claimed. Fees charged by attorneys are not set by government nor does the government place any arbitrary limits on the number of practising attorneys. Fees vary from location to location, firm to firm, attorney to attorney, and task to task and are often subject to negotiation. Under these circumstances, even estimates of the costs of litigation would be unreliable. For all of these reasons, it is not possible to provide data on the average duration or cost of proceedings concerned with the enforcement of intellectual property rights in the United States. The data regarding termination of cases for the year ending 30 June 1997, however, would indicate that a majority of cases are resolved during the discovery phase (before pre-trial), since discovery provides each side with information allowing it to evaluate its position and the likelihood of success on the merits of the case. Many others are resolved before action begins as a result of negotiations. Table 1 [Part of the response is in Table format ] Table 2 [Part of the response is in Table format ]
18/12/1998
IP/Q4/USA/1 United States of America European Union [Follow-up question from the EC] There exist numerous published studies in relation to costs and duration of proceedings in the US federal and state court systems. As to the cost element, please find attached a copy of the "Report of Economic Survey 1997" by the American Intellectual Property Law Association. Could the United States confirm, or otherwise comment on, the results of this study?
Published articles regarding the cost and duration of legal proceedings in US Federal and state courts do exist, but they have not been prepared by the US Government and therefore, the US Government is not in a position to "confirm" that any "data on the actual duration or cost of proceedings concerned with the enforcement of intellectual property rights" contained in those articles are accurate or that the conclusions reached by the authors are valid. Regarding the tables attached to the EC’s follow up questions, the AIPLA's "Report of Economic Survey 1997", as its title indicates, is not a "study." Quoting from the introduction to the Report, "The survey reports on incomes and related characteristics of individual practitioners and addresses other economic aspects of intellectual property law practice. " In January 1997, the AIPLA mailed survey questionnaires to its 8,048 members and sent reminder post cards in February. Responses were received from 1,638 individual practitioners and 293 law firms. The first line of each portion of the tables attached to the follow up questions by the EC indicates the number of persons and firms supplying estimates from which the percentiles in that particular portion were compiled. The introduction notes that "percentiles based on fewer than 50 responses should be assumed to have relatively wide margins of error". The figures shown in the tables, as indicated in the table headings, reflect estimates provided by some AIPLA members responding to the questionnaire. They are not "data on the actual duration or cost of proceedings concerned with the enforcement of intellectual property rights". AIPLA members were instructed to consider, in making their estimates, "total cost" to be "All costs, including outside legal and paralegal services, local counsel, associates, paralegals, travel and living expenses, fees and costs for court reporters, photocopies, courier services, exhibit preparation, analytical testing, expert witnesses, translators, surveys, jury advisors, and similar expenses", incurred for discovery, motions, pre trial, trial, post trial and appeal.
18/12/1998
IP/Q4/USA/1 United States of America European Union 2. Under the American Rule, the claimant and defendant in a proceeding to enforce intellectual property rights generally must bear their own attorneys' fees. In many cases, attorneys’ fees can exceed the potential damages for infringement. As a result, the American Rule acts as a deterrent against pursuing a civil enforcement action, except in cases involving significant damages. Please explain how the United States complies with the requirement of Article 41.1 of the TRIPS Agreement that "Members shall ensure that enforcement procedures as specified in this Part are available under their law so as to permit effective action against any act of infringement of intellectual property rights covered by this Agreement".
The United States is in full compliance with Article 41.1. Enforcement procedures as specified in Part III of the TRIPS Agreement are available so as to permit effective action against any act of infringement. Article 45 requires that damages be authorized only in situations where the infringer knew, or had reasonable grounds to know, his activity was infringing. Judges in Federal courts have such authority (for copyright, see 17 U.S.C. § 504; for trademarks, including certification marks, see 15 U.S.C. § 1117; for patents and industrial designs, see 35 U.S.C. § 284; for integrated circuit layout designs, see 17 U.S.C. § 911; and for trade secrets, refer to the appropriate state laws). US judges have the authority, required by Article 44, to enjoin infringement for the life of the relevant intellectual property right (for copyright, see 17 U.S.C. § 502; for trademarks, see 15 U.S.C. § 1116; for patents and industrial designs, see 35 U.S.C. § 283; for integrated circuit layout designs, see 17 U.S.C. § 911; and for trade secrets, see relevant state laws), and, in all but very rare cases, do so when infringement is found to exist. Most intellectual property owners bring legal actions soon after they become aware of an infringement, not seeking primarily to obtain damages for infringement that has already occurred, but to enjoin further infringement. Finally, US judges have the authority to award costs, including attorneys' fees in appropriate circumstances, as required by Article 45.2. We note that the EC question, like others it has submitted, is based upon unsupported assertions first, that "in many cases, attorneys' fees can exceed the potential damages for infringement" and second, that the first unsupported assertion deters right holders from pursuing civil enforcement actions. The United States believes that the data provided in the tables in our response to question 1, giving the number of cases filed annually, indicate that right holders are not deterred from enforcing their rights.
18/12/1998
IP/Q4/USA/1 United States of America European Union [Follow-up questions from the EC] Could the US explain in detail how damages are calculated for infringements of copyright and related rights, trademarks, geographical indications (including appellations of origin), patents, semiconductor topographies and undisclosed information?
As stated in response to an item under EC question 7, calculation of damages is based on the evidence provided by the parties. Publicly available legal treatises discuss damages in detail in relation to each form of intellectual property, citing and quoting from relevant cases. See, for example, regarding copyright, Nimmer on Copyright, Melville B. Nimmer and David Nimmer, published by Matthew Bender; The Law of Copyright, Howard B. Abrams, Clark Boardman Callaghan publisher; regarding trademarks, McCarthy on Trademarks and Unfair Competition, Third Edition, Thomas McCarthy, Clark Boardman Callaghan; Trademark Protection and Practice, Gerome Gelson and Jeffrey M. Samuels, Matthew Bender; regarding patents and industrial designs, Lipscomb's Walker on Patents, 3rd Edition, Ernest Bainbridge Lipscomb III, Clark Boardman Callaghan; Chisum on Patents, Donald S. Chisum, Matthew Bender; and regarding trade secrets, Milgrim on Trade Secrets, Roger M. Milgrim, Matthew Bender; Trade Secrets Law, Melvin T. Jager, Clark Boardman Callaghan.
18/12/1998
IP/Q4/USA/1 United States of America European Union Could the US further explain whether culpable (as opposed to innocent) conduct by the infringer is a necessary condition for the award of damages?
The statutes notified by the United States pursuant to Article 63.2 indicate the conduct by the infringer that must be demonstrated as a condition for the award of damages. Regarding copyright, see 17 U.S.C. § 504; for trademarks, including certification marks, see 15 U.S.C. § 1117; for patents and industrial designs, see 35 U.S.C. § 284; for integrated circuit layout-designs, see 17 U.S.C. § 911; and for trade secrets, see § 3 of the Uniform Trade Secret Act, on which most state laws are based.
18/12/1998
IP/Q4/USA/1 United States of America European Union Could the US support its assertion that "most intellectual property owners bring legal actions soon after they become aware of an infringement, not seeking primarily to obtain damages ..."?
The equitable doctrine of laches applies to actions for the enforcement of intellectual property in the United States as it does to other assertions of rights against another through court action. Judges have discretion to bar relief in the event unreasonable and inexcusable delay by a plaintiff in filing suit results in material prejudice to the defendant. The doctrine is more flexible than a statute of limitations and requires an assessment of the facts in each case regarding the reasonableness of the delay and the prejudice to the defendant. Prejudice to the defendant can occur if the passage of time decreases a defendant’s ability to vindicate itself because of the death of witnesses, fading memories, or stale evidence; or because changes in the circumstances or relationships of the parties make it unfair to let a suit go forward. See 15 U.S.C. § 1115(b)(8). In addition, statutes of limitations in regard to damages apply in connection with several forms of intellectual property. See 17 U.S.C. § 507(b); 35 U.S.C. § 286; 17 U.S.C. § 911 (d); and § 6 of the Uniform Trade Secret Act, on which most state trade secret laws are based.
18/12/1998
IP/Q4/USA/1 United States of America European Union Could the US explain in detail the "appropriate circumstances" in which US judges have the authority to award attorney's fees to the parties prevailing in an action in intellectual property right-related cases?
The statutes notified by the United States pursuant to Article 63.2 indicate the "appropriate circumstances". With respect to copyrights, see 17 U.S.C. § 505; for trademarks, including certification marks, see 15 U.S.C. § 1117; for patents and industrial designs, see 35 U.S.C. § 285; for integrated circuit layout-designs, see 17 U.S.C. § 911(f); for trade secrets, see § 4 of the Uniform Trade Secret Act, on which most state laws are based.
18/12/1998
IP/Q4/USA/1 United States of America European Union Could the US indicate whether the award of attorney's fees to the party prevailing in an action can in practice be considered to be the general rule, or rather the exception in intellectual property right-related issues?
Where the party claiming an award of attorney's fees establishes entitlement in accordance with the statute, such fees will be awarded.
18/12/1998
IP/Q4/USA/1 United States of America European Union 3. Given the fact that the quality of the United States Patent and Trademark Office’s examination procedures is compromised by scarce resources and large volumes of patent applications, and that there is no provision for independent re examination of a patent, a United States patent may issue without undergoing a rigorous examination to ensure validity. Nevertheless, any patent issued by the Patent Office is entitled to a presumption of validity in any subsequent enforcement action, and invalidity must be shown by "clear and convincing" evidence. Please explain how applying the presumption of validity and a high evidentiary standard in these circumstances complies with the requirement of Article 41.2 of the TRIPS Agreement that procedures concerning the enforcement of intellectual property rights shall be "fair and equitable".
The European Communities' question is again based not upon facts, but upon unsupported assertions. All United States patents are subjected to a rigorous, comprehensive examination prior to issuance. There is no basis for the suggestion that patents in the United States are not entitled to the presumption of validity provided by 35 U.S.C. 282. The legal presumption of validity of patents has been part of US patent statute since 1 January 1953, when the preceding judicial doctrine was codified. The purpose of the presumption of validity is to place the burden of proof on the party asserting invalidity of a patent, rather than requiring patentees to provide evidence demonstrating the validity of their patents in every enforcement action, which is difficult, time-consuming and unnecessary. The presumption of validity is a sensible approach shared by many countries that provides for substantive examination of patents. The presumption also ensures that a patentee has notice of a defendant's intention to challenge the patent, prior to trial. It should go without saying that providing a legal presumption of validity for patents can only serve to lessen the complexity of patent litigation. The concern expressed by the delegation of the European Communities over the "clear and convincing evidence" standard is likewise misplaced. This standard lies between the legal standards of "preponderance of the evidence" and "beyond a reasonable doubt". It recognizes that the patent has already been subjected to a rigorous search and examination before the US Patent and Trademark Office. While higher than the "preponderance of the evidence" standard, the standard does not prejudice the accused infringer. Once a prima facie case of invalidity is presented by the party challenging a patent's validity, the patent owner must come forward with evidence to counter that showing. If the fact-finder concludes that the prima facie case is established and not overcome by the patent owner, the patent, or the particular claims challenged, will be declared invalid by the court. Finally, while patents are by law presumed valid, courts given evidence challenging validity never find that a patent is "valid". They find either that the patent is "invalid", or "not invalid". The latter finding allows subsequent defendants to contest the validity of the patent. On the other hand, once a court holds a patent (or more properly, specific claims in the patent) to be invalid, those claims cannot thereafter serve as the basis of a challenge against other parties. We believe that this balance of rights between patentee and potential defendants is fully consistent with Article 41.2 of the TRIPS Agreement.
18/12/1998
IP/Q4/USA/1 United States of America European Union 4. Pursuant to 19 U.S.C. § 1526, United States courts have the authority to order seizure, forfeiture and destruction of imported goods bearing a counterfeit American trademark owned by an American entity. The statute does not provide similar authority for goods bearing a counterfeit trademark owned by a foreign citizen or corporation. Please explain how this provision complies with Article 46 of the TRIPS Agreement, which requires that judicial authorities have the authority to order disposition or destruction of infringing goods. In addition, please explain how this provision complies with Article 3 of the TRIPS Agreement.
Section 526 of the Tariff Act of 1930 authorizes the Secretary of the Treasury to seize goods bearing a trademark owned by a citizen of, or by a corporation or association created or organized within, the United States. Section 1124 of title 15 of the United States Code provides similar authority with respect to trademarks of any manufacturer or trader located in any foreign country which, by treaty, convention, or law, affords similar privileges to citizens of the United States. The TRIPS Agreement would qualify as such a convention. The US Customs Service has a single set of regulations implementing the two sections of law. Because authority to seize goods infringing US trademarks registered by foreign entities already existed, it was not felt necessary to amend Section 526 when implementing the obligations of the TRIPS Agreement. As explained in the preceding paragraph, Section 526 of the Tariff Act of 1930 authorizes the Secretary of the Treasury, not US courts, to seize goods that bear unauthorized trademarks. Section 1118 of title 15, United States Code, gives judges authority to order disposition or destruction of goods that infringe trademarks.
18/12/1998
IP/Q4/USA/1 United States of America European Union 5. The United States' response to item 16 of the Checklist of Issues on Enforcement states that United States Customs regulations "have been amended to provide ad hoc application contemplated in Article 51". The cited United States regulations, however, provide for ex officio action by the United States Customs Service based on recordation of a copyright or trademark. There is no express provision for an application by the right holder to suspend imports of specific counterfeit trademark or pirated copyright goods as required by Article 51 of the TRIPS Agreement. In addition, please explain the status of United States' plans to adopt the regulations referenced in the response to item 16 and explain how the resulting procedures will comply with the requirements of Articles 52 to 60.
The amendments to Customs regulations providing for ad hoc application procedures mentioned in the US response to item 16 of the Checklist of Issues on Enforcement 5 are being reviewed prior to approval. Notwithstanding the status of the amendments, the US Customs Service, as a matter of policy and based on the authority provided in 18 U.S.C. §§ 2318 and 2320, does intervene on a case by case basis at the request of a right holder. The amendments will clarify Customs' policy and practice.
18/12/1998
IP/Q4/USA/1 United States of America European Union [Follow-up question from the EC] In response to question 5 submitted by the European Communities and their Member States, the United States has stated that US customs regulations will be amended to "clarify" US Customs policy and practice with respect to ad hoc application procedures, as set forth in the US response to question 16 of the Checklist of Issues on Enforcement.5 Please clarify the timing for amending the customs regulations to bring them into conformity with Article 51.
[Follow-up question from the EC] In response to question 5 submitted by the European Communities and their Member States, the United States has stated that US customs regulations will be amended to "clarify" US Customs policy and practice with respect to ad hoc application procedures, as set forth in the US response to question 16 of the Checklist of Issues on Enforcement.5 Please clarify the timing for amending the customs regulations to bring them into conformity with Article 51.
18/12/1998
IP/Q4/USA/1 United States of America European Union 6. Please explain how the procedures for Ex Officio Action in relation to border measures comply with the requirements of Article 55 of the TRIPS Agreement, which are incorporated by reference in Article 58.
Section 1499 of title 19, United States Code, requires the US Customs Service to determine within five days (excluding weekends and holidays) whether merchandise presented for examination will be released or detained. Customs must issue a notice of detention no later than five days after the decision to detain merchandise. Customs must make a final determination on the admissibility of detained merchandise within 30 days of the date on which the merchandise was presented for examination. Failure to decide within that period is treated as a decision to exclude the merchandise, against which the importer may file a protest.
18/12/1998
IP/Q4/USA/1 United States of America European Union 7. With regard to cases that involve the infringement of intellectual property, could the Government of the United States provide data on the number of: - law suits that have been filed including their respective outcome and the average length from the filing of a complaint until the final judgement;
See table 1 in the response to question 1 for the number of law suits that have been filed annually in connection with copyrights, patents and trademarks since 1993. As noted in response to question 1, cases are not tracked individually and so it is not possible to determine the average length from filing to final judgment.
18/12/1998

Page 669 of 677   |   Number of documents : 13533

 
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