Review of TRIPS Implementing Legislation - Search

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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.

This page allows you to search Members' questions and answers on notified laws and regulations. You can consult search results on screen, download and print them in Excel format. You can also download individual documents.

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Page 671 of 677   |   Number of documents : 13533

Document symbol Notifying Member Member raising question Question Answer Date of document distribution  
IP/Q4/USA/1 United States of America Hong Kong, China 5. In criminal proceedings, are there any proof facilitation provisions which could create legal presumptions of intellectual property subsistence and ownership and thus could excuse the right owner from appearing in court and to testify these issues? If not, why?
See reply to question 2 above.
18/12/1998
IP/Q4/USA/1 United States of America Hong Kong, China [Questions posed to the US only] 1. Are there any statutory minimum damages for intentional or negligent intellectual property infringements? If yes, is the judiciary content that its judicial discretion has been curtailed?
In the case of copyrights, 17 U.S.C. § 504(c) provides statutory damages, which a copyright owner may elect instead of actual damages. For each work infringed, the minimum amount that can be awarded under the section, based on the circumstances, is US$200 and the maximum is US$100,000. As apparent from the amounts, judges have considerable discretion in determining the actual amount awarded and, therefore, would not likely consider their discretion unreasonably curtailed. In the case of patents, damages may not be less than a reasonable royalty for the use made of the invention by the infringer if the infringer had notice that the invention in question was patented. A substantial amount of discretion is involved in determining what would be a "reasonable royalty". See 35 U.S.C. §§ 284 and 287.
18/12/1998
IP/Q4/USA/1 United States of America Hong Kong, China 2. Is parallel import of articles infringing intellectual property rights (especially copyright) a criminal offence? If yes, please quote the relevant legislation or hallmark cases.
In the case of copyright, yes. Section 506(a) defines criminal copyright infringement as follows: "(a) Criminal infringement - Any person who infringes a copyright wilfully and for purposes of commercial advantage or private financial gain shall be punished as provided in section 2319 of title 18." Section 501(a) defines an "infringer of a copyright" as "Anyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 118, ... , or who imports copies or phonorecords into the United States in violation of section 602, ...". The relevant part of Section 602 states that "Importation into the United States, without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under section 501, ...". Penalties for criminal copyright infringement are set forth in 18 U.S.C. § 2319.
18/12/1998
IP/Q4/USA/1 United States of America Japan 1. Please explain whether "proceedings leading to a decision on the merits of the case" stipulated in Article 55 of the TRIPS Agreement, are judicial or administrative.
Under US law, "proceedings leading to a decision on the merits of a case" referred to in Article 55 of the TRIPS Agreement are customarily administrative, but parties also can proceed judicially, either initially or after they have exhausted administrative remedies.
18/12/1998
IP/Q4/USA/1 United States of America Japan 2. Are there any ways other than the application stipulate in Articles 51 and 52 of the TRIPS Agreement (hereafter referred to as "the Application") which enable a right holder to request the competent authorities to suspend the release of the goods which infringe intellectual property rights or which are suspected to infringe intellectual property rights?
The right holder can obtain protection for trademarks and copyrights for a period of ten years, renewable for the duration of the underlying right, by following the Customs recordation process set out in §§ 133.01 to 133.15 (regarding trademarks) and 133.31 to 133.37 (regarding copyrights) of title 19 of the Code of Federal Regulations (C.F.R.).
18/12/1998
IP/Q4/USA/1 United States of America Japan 3. Please explain what term your country regards as "a reasonable period within which the competent authorities shall inform the applicant whether or not they have accepted the Application" stipulated in Article 52 of the TRIPS Agreement.
The period will be set out in amendments to the Customs Service's regulations that are currently under review and pending approval.
18/12/1998
IP/Q4/USA/1 United States of America Japan 4. Please indicate provisions of laws and ordinances which prescribe the "proceedings leading to a decision on the merits of the case" stipulated in Article 55 of the TRIPS Agreement. And please summarize their contents.
Regulations governing such proceedings are found at 19 C.F.R. §§ 133.21 through 133.23a, which govern limitations on the importation of articles bearing recorded trademarks, notice to the parties, and detention and seizure of the articles. Proceedings governing articles that infringe copyrights are found at 19 C.F.R. § 133.43, which provides for notice to importer and the copyright owner and for an opportunity for them to exchange written materials stating their views on the question of piracy and rebutting the views of the other party before the articles are submitted to Customs headquarters for a decision .
18/12/1998
IP/Q4/USA/1 United States of America Japan 5. Please explain the specific procedure, if any, to be applied to the goods which are not evident whether or not they infringe intellectual property rights, in Article 55 of the TRIPS Agreement.
We assume that the question refers to procedures involving infringement of rights other than trademarks and copyrights, since these procedures are the basis for earlier questions. Customs does not have independent authority to detain goods that infringe patents, industrial designs, or trade secrets. The US International Trade Commission has authority under section 337 of the Tariff Act of 1930 to order the Customs Service to deny entry to goods the USITC determines are infringing such rights.
18/12/1998
IP/Q4/USA/1 United States of America Japan 6. Please explain the responsibility that the competent authorities and other related authorities take to the right holders when they fail to suspend the release into free circulation of goods which infringe intellectual property rights with regard to the suspension based on the Application or the Ex Officio Action stipulated in Article 58 of the TRIPS Agreement.
Customs officials are responsible for making their decisions in good faith in accordance with the authority granted to them by statute. Decisions of the Customs Service are reviewable in court under Chapter 7 of title 5 of the United States Code. A reviewing court can decide all relevant questions of law, interpret constitutional and statutory provisions, and determine the meaning or applicability of the terms of an agency action. Section 706(1) authorizes the court to compel action that it determines has been unlawfully withheld.
18/12/1998
IP/Q4/USA/1 United States of America Japan 7. Please explain the responsibility that the competent authorities and other related authorities take to the right holders when they examine goods which infringe intellectual property rights and nevertheless release them into free circulation with regard to the suspension based on the Application or the Ex Officio Action stipulated in Article 58 of the TRIPS Agreement.
See the response to question 6. Also, Customs can demand redelivery of goods violating trademarks or copyrights if appropriate, under 19 C.F.R. §§ 133.24 and 133.46 respectively.
18/12/1998
IP/Q4/USA/1 United States of America Japan 8. Please explain the responsibility that the competent authorities and other related authorities take to the importers when they suspend the release into free circulation of goods which do not infringe intellectual property rights with regard to the suspension based on the Application or the Ex Officio action stipulated in Article 58 of the TRIPS Agreement.
Decisions of the Customs Service are reviewable in court under Chapter 7 of title 5 of the United States Code. The reviewing court can decide all relevant questions of law, interpret constitutional and statutory provisions, and determine the meaning or applicability of the terms of an agency action. Section 706(2) authorized the court to hold unlawful and set aside agency action, findings, and conclusions found to be "(C) in excess of statutory jurisdiction, authority, or limitations, or short of statutory right", "(E) unsupported by substantial evidence in a case subject to sections 556 and 557 of this title or otherwise reviewed on the record of an agency hearing provided by statute; or (F) unwarranted by the facts to the extent that the facts are subject to trial de novo by the reviewing court".
18/12/1998
IP/Q4/USA/1 United States of America Japan 9. Is the right holder informed of identities of the importers and consignors when the competent authorities "suspend" the goods which infringe on intellectual property rights or which are suspected to infringe intellectual property rights, as well as the case where the right holder is informed of identities of the importers and consignors stipulated in Article 57 of the TRIPS Agreement?
Currently, under 19 C.F.R. § 133.23a(c), notice is given to the trademark owner of the quantity of articles seized. The amendments to the regulations now being reviewed and pending approval, will provide for the disclosure of additional information. Under 19 C.F.R. § 133.43, notice is given to copyright owners that delivery of suspected infringing copies or phonorecords is being withheld a sample of the imported article is provided.
18/12/1998
IP/Q4/USA/1 United States of America Japan 10. Please explain the measures to protect confidential information in the course of the inspection stipulated in Article 57 of the TRIPS Agreement. And please indicate provisions of laws and ordinances which prescribe such measures.
Customs regulations governing the treatment of confidential information are contained in Part 103 of title 19 of the Code of Federal Regulations. Customs employees can be subject to disciplinary action within the Service or held liable for the improper disclosure of confidential information under 18 U.S.C. § 1905 (the Trade Secrets Act), 40 U.S.C. § 759 (the Computer Security Act of 1987, and 5 U.S.C. § 552a (the Privacy Act).
18/12/1998
IP/Q4/USA/1 United States of America Japan 11. Please explain the procedures of detentions and seizures to be ordered by the competent authorities based on Articles 51 and 55 of the TRIPS Agreement.
Procedures governing seizures and detentions are described in 19 C.F.R. §§ 133.21 through 133.24 for trademarks and 19 C.F.R. §§ 133.42 through 133.47 for copyrights. The final provisions regarding forfeiture and assessment of liquidated damages in connection with both trademarks and copyrights are contained in 19 C.F.R. §§ 133.51 through 133.53.
18/12/1998
IP/Q4/USA/1 United States of America Japan 12. Please explain the procedures to appeal against any decisions ordered by the competent authorities based on Articles 51 and 55 of the TRIPS Agreement.
Decisions made by field offices are subject to review by Customs' headquarters. Decisions of the Customs' headquarters are reviewable in the courts pursuant to 5 U.S.C. § 701 et seq.
18/12/1998
IP/Q4/USA/1 United States of America Japan 13. Please explain the basis for calculating the security or equivalent assurance stipulated in Article 53 of the TRIPS Agreement that the competent authorities may require an applicant when they suspend the release into free circulation.
Section 113.11 of title 19 of the Code of Federal Regulations authorizes port directors to determine the appropriate type of bond and the amount. The amount of the bond is based upon consideration of factors set out in 19 C.F.R. § 133.13.
18/12/1998
IP/Q4/USA/1 United States of America Japan 14. Please explain who shall pay the cost of detentions based on Article 51 of the TRIPS Agreement or destruction stipulated in Article 59 of the TRIPS Agreement.
The importer pays the cost of detention in accordance with 19 C.F.R. §§ 24.12 and 24.17(a)(9).
18/12/1998
IP/Q4/USA/1 United States of America Japan 15. Please explain what kind of cases are regarded as "the exceptional circumstances" in which the competent authorities may allow re-exportation of counterfeit trademark goods stipulated in Article 59 of the TRIPS Agreement.
Counterfeit trademarked goods may not be reexported. The Anti-counterfeiting Consumer Protection Act of 1996 amended 17 U.S.C. 603(c) to prevent re-export of copyright-infringing goods.
18/12/1998
IP/Q4/USA/1 United States of America Japan 16. Please explain kinds and contents of documents which shall be provided by the applicant to lodge the Application.
The requirements will be set out in amendments to previously cited regulations. These amendments are currently under review and pending approval.
18/12/1998
IP/Q4/USA/1 United States of America Japan 17. Please explain what materials the US regard as "adequate evidence to satisfy the competent authorities that there is prima facie an infringement of the right holder's intellectual property rights" stipulated in Article 52 of the TRIPS Agreement. For example, as for patent rights, is a written opinion statement prepared by a lawyer regarded as "adequate evidence", and can the right holders request the ITC to commence a procedure to identify whether or not the goods infringe the right based on the statement?
See the response to question 16.
18/12/1998

Page 671 of 677   |   Number of documents : 13533

 
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