Review of TRIPS Implementing Legislation - Search

Reset
 
 

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.

* You do NOT have to select all the search fields below (only fill the search fields that are relevant to your query).
* Please note that selected search criteria are cumulative and will all be reflected in your search results.


Page 672 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 Japan 18. Please explain whether the discovery procedure under the Federal Rules of Civil Procedure may cost the party concerned a lot of burden or time, because the scope of disclosure is extensive and the procedure usually lasts long. Please explain whether the discovery is consistent with Article 41.2 of the TRIPS Agreement, which requires that the procedures concerning the enforcement of intellectual property rights not be unnecessarily complicated or costly.
The discovery procedure governed by the Federal Rules of Civil Procedure (the Rules) is fully consistent with the obligations of Article 41.2. The discovery procedure enables each party to an action for enforcement of intellectual property rights to obtain information related to any claim or defence in that action. The Rules authorize the judge in any enforcement action to limit discovery requests which are unreasonably cumulative or duplicative; if the information is obtainable from some other source that is more convenient, less burdensome, or less expensive; if the party seeking discovery has had ample opportunity by discovery in the action to obtain the information sought; or if the burden or expense of the proposed discovery outweighs its likely benefit, taking into account the needs of the case, the amount in controversy, the parties' resources, the importance of the issues at stake in the litigation, and the importance of the proposed discovery in resolving the issues. See Rule 26. The judge in any enforcement action also is required to issue a scheduling order that, among other things, limits the time for completion of discovery. See Rule 16(b).
18/12/1998
IP/Q4/USA/1 United States of America Japan 19. Section 337 of the Tariff Act of 1930 provides that Administrative Law Judge and USITC determine a target date. Please explain how many target dates have been determined since 1 January 1996. In such cases, please explain whether the target dates are consistent with Article 41.2 of the TRIPS Agreement, which requires that the procedures concerning the enforcement of intellectual property rights not entail unreasonable time-limits or unwarranted delays.
Section 337 is fully consistent with Article 41.2. By statute, Section 337 investigations must be completed at the earliest practicable time. Target dates for the completion of the investigation are set by the Administrative Law Judge early in the investigation. These requirements parallel the procedures set out in recently revised Rule 16 of the Federal Rules of Civil Procedure providing district courts with various mechanisms for expediting litigation. These target dates typically call for completion of the investigation in one year, although complex investigations may take about eighteen months to complete. The Commission has the flexibility to ensure that the target date set is not unreasonable and does not allow unwarranted delays.
18/12/1998
IP/Q4/USA/1 United States of America Japan [Follow-up question from Japan] With respect to the reply to question 19 from Japan, please provide statistical information related to Section 337 of the Tariff Act of 1930 for each of the years 1995 to 1997, including the number of cases filed, the number of cases whose investigations were initiated, the number of cases whose target dates were set and the targeted duration for the completion of the investigation.
In 1995, 11 section 337 petitions were filed, 11 investigations were initiated, nine were given target dates by the US International Trade Commission (the other cases were subject to the old rules). Eight of the nine were to be completed within 12 months and one within 12 1/2 months. In 1996, 13 section 337 petitions were filed, 12 investigations were initiated, and all 12 were assigned target completion dates. The target completion dates varied from ten 1/2 months to 21 months. As of 1 December 1997, 11 section 337 petitions have been filed in 1997, 11 investigations were initiated, and all but three have been assigned target dates and target dates will be assigned those three shortly. Target completion dates ranged from 12 months to 15 months.
18/12/1998
IP/Q4/USA/1 United States of America Japan 20. According to Section 337 of the Tariff Act of 1930 as recently amended, those accused are about to file counterclaim in the USITC proceedings, though those counterclaims are transferred to a federal court in actual cases. In this context, please explain whether the recent amendment of Section 337 of the Tariff Act of 1930 has solved the prior problem in which those accused were only able to file counterclaim in a federal court.
The amendments to Section 337 resolved the problem that the panel identified in its report. Namely, a respondent in a section 337 action may file with the USITC any counterclaim that may be filed with a federal court. If the claim is of the form of a defence to the alleged violation of section 337, the USITC will consider the matter. If the party raising the counterclaim seeks a remedy such as damages, the amendments now make that remedy available. Moreover, the amendments ensure that the party raising the counterclaim is not prejudiced by any delay or payment of fees.
18/12/1998
IP/Q4/USA/1 United States of America Japan 21. According to recent amendments of Section 337 of the Tariff Act of 1930, producers or importers of challenged products of a foreign origin may not necessarily have to defend their products both before the USITC and a federal court in a sense that both the USITC and a federal court procedures never proceed at the same time. Please explain whether the recent amendment of Section 337 of the Tariff Act of 1930 has solved the prior problem in which producers or importers of challenged products of foreign origin were forced to defend in double fora.
The amendments to section 337 provided the means to prevent infringement proceedings being brought against imported goods in two forums at the same time. A district court hearing an infringement case is required to stay its proceedings, at the request of a respondent in a section 337 proceeding, in respect of any claim that involves the same issues as those pending before the ITC. Such issues would include questions of patent validity, infringement, and any defences that might be raised in both proceedings. The district court may use its discretionary authority to stay any other claims in the case.
18/12/1998
IP/Q4/USA/1 United States of America Japan [Follow-up question from Japan] With respect to the replies to questions 3, 16 and 17 from Japan, the United States of America states that amendments of laws and/or regulations are currently under review and pending approval. Please explain: (a) outline of present laws and/or regulations, including whether there are not any provisions or other treatments are stipulated; (b) outline of the amendments being prepared; (c) expected timing of approval.
(a) The outline of the present regulations is found at the beginning of 19 C.F.R. § 133. (b) The amendments being prepared will expand and clarify the information that may be disclosed to interested parties, clarify Customs position regarding materially and physically different grey market goods and make the procedures that apply to trademarks and copyrights more uniform. (c) The amendments have been prepared for final publication and are being processed as expeditiously as possible.
18/12/1998
IP/Q4/USA/1 United States of America Switzerland Preliminary remark: the Swiss authorities are aware that there is a two-tier system in the United States. The following questions are mainly limited to the federal law, unless otherwise indicated. When a feature of state law is of interest and a question is posed, we do not expect a description of all the state laws but, whenever possible, examples. 1. Please explain in detail the measures which have been taken in order to comply with the GATT panel decision of November 1989 on Section 337 of the US Tariff Act of 1930.
The United States amended section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337, as part of US implementation of the Uruguay Round results. As stated in the "Statement of Administrative Action" accompanying the Uruguay Round Agreements Act, the amendments to § 337 bring US procedures into conformity with national treatment obligations under GATT 1994, while providing for effective enforcement of intellectual property rights at the border. The TRIPS Agreement, which was negotiated after the GATT panel report finding that certain aspects of section 337 were inconsistent with Article III of GATT 1947, recognizes that it may be necessary to treat domestic and imported products differently to enforce intellectual property rights effectively in respect of imported goods. The procedures applied under section 337 comply fully with Article 49 of TRIPS in that they "conform to principles equivalent in substance to those set forth" in Section 2 of the TRIPS Agreement. For example, each element of Articles 41 and 42 of the TRIPS Agreement are met in the context of a section 337 proceeding. The 1994 amendments to section 337 made the following changes to USITC procedures to implement the panel's recommendations. - Eliminated the requirement that the USITC issue a final determination within a fixed period of time. Instead, the amendment provides that the ITC must complete its investigation "at the earliest practicable time". To promote rapid adjudication, the USITC must, within 45 days of initiating an investigation, establish a "target date" for its completion. See 19 U.S.C. § 1337(b)(1). These requirements parallel the procedures set out in recently revised Rule 16 of the Federal Rules of Civil Procedure providing district courts with various mechanisms for expediting litigation. They are also consistent with district court efforts to avoid delay, such as by establishing a schedule for the completion of various stages of litigation. - Provide a means to prevent infringement proceedings being brought against imported goods in two fora simultaneously. A district court hearing an infringement case is required to stay its proceedings, at the request of a respondent in a section 337 proceeding, in respect of any claim involving the same issues as those pending before the ITC. Such issues would include questions of patent validity, infringement, and any defences that might be raised in both proceedings. The district court may, in its discretion, stay any other claims in the case. - Resolved the problem regarding counterclaims that the GATT panel identified in its report. A respondent in a section 337 action may file with the USITC any counterclaim that may be filed with a federal court. If the claim is of the form of a defence to the alleged violation of section 337, the USITC will consider the matter. If the party raising the counterclaim seeks a remedy such as damages, the amendments now make that remedy available. Moreover, the amendments ensure that the party raising the counterclaim is not prejudiced by any delay or payment of fees. See 19 U.S.C. § 1337(c).
18/12/1998
IP/Q4/USA/1 United States of America Switzerland 2. Section 337 determinations are subject to judicial review, on appeal, by the Court of Appeals for the Federal Circuit. Please indicate whether such determination may be subject to further judicial review before the US Supreme Court.
Decisions of the CAFC regarding § 337 can be appealed to the US Supreme Court.
18/12/1998
IP/Q4/USA/1 United States of America Switzerland Question 1 of the Checklist of Issues on Enforcement 3. According to the US response to question 1 of the Checklist of Issues on Enforcement,18 federal district courts, in addition to state courts, may have "jurisdiction over claims of trademark infringement, misappropriation of trade secrets, or unfair competition based on state laws...depending on the nature of the claims and the parties involved". Please specify, in greater detail, the nature of claims and types of parties for which federal district courts may also have jurisdiction over claims based on state laws and set forth the relevant statutory provisions or other relevant legal authority.
A claim based on state law may be heard in a federal district court under the following statutory provisions: 28 U.S.C. § 1332, which provides for federal court jurisdiction in cases where the citizenship of the parties is diverse (i.e. they are citizens of different states or one is a foreign national) and the amount of the claim exceeds US$50 000; or 28 U.S.C. § 1367, which provides federal jurisdiction to hear state law claims that are related to and part of the same case or controversy as a separate federal claim. In addition, under 28 U.S.C. § 1441, a case bought in state court that satisfies federal jurisdictional requirements may in most cases be removed to federal court at the request of a party.
18/12/1998
IP/Q4/USA/1 United States of America Switzerland 4. Please state whether US federal district court jurisdiction over infringement of intellectual property rights extends to industrial designs and geographical indications and specify the relevant statutory provisions.
Federal districts courts have original jurisdiction over infringement actions involving industrial designs under 35 U.S.C. § 281 and 28 U.S.C. § 1338 and involving geographical indications registered as certification marks under 15 U.S.C. § 1114 and 28 U.S.C. § 1338.
18/12/1998
IP/Q4/USA/1 United States of America Switzerland Question 2 of the Checklist of Issues on Enforcement18 5. Please further delineate the "instances" pursuant to which beneficial owners of intellectual property rights can assert rights in an action in court or before the USITC.
The other instance is that an exclusive licensee in a mask work for an integrated circuit may institute an action for infringement of the mask work. See 17 U.S.C. § 910(2).
18/12/1998
IP/Q4/USA/1 United States of America Switzerland 6. The US response to question 2 of the Checklist of Issues on Enforcement18 provides that federal court judges have authority to order personal appearances and to authorize written or videotaped depositions in hardship cases. Please provide information concerning the authority of administrative judges hearing infringement matters brought before the USITC to order the same and specify the administrative or other provisions allowing for these procedures.
The US International Trade Commission and its administrative law judges have authority, under 5 U.S.C. § 557, to order personal appearances and to authorize written or videotaped depositions in appropriate circumstances.
18/12/1998
IP/Q4/USA/1 United States of America Switzerland Question 5 of the Checklist of Issues on Enforcement 7. Please indicate the criteria for determining the duration of a "temporary" injunction and the circumstances, if any, under which a right holder may procure an extension of time. Please describe, in greater detail, the proceedings for enforcement of "permanent" and "temporary" injunctions by federal marshals and set for the relevant statutory or other legal authority.
To obtain a preliminary injunction, courts have generally required that the moving party demonstrate some or all of the following: a substantial likelihood that it will prevail on the merits of its case; that it will suffer irreparable injury if preliminary relief is not granted; that the threatened injury to it outweighs the harm an injunction might cause the defendant; and that the preliminary injunction will not have a serious adverse effect on the public interest. A temporary restraining order (TRO) may be granted by a court where it clearly appears from specific facts shown by an affidavit or by a verified complaint that immediate and irreparable injury will result before the adverse party or his attorney can be heard in opposition, and the complainant’s attorney has certified to the court, in writing, the efforts which have been made to give notice and the reasons supporting his claim that notice should not be required. Security is required as a condition for obtaining a TRO or a preliminary injunction in an amount sufficient to cover costs and damages to the party wrongfully enjoined or restrained. TROs expire within ten days unless extended for good cause shown or if the adverse party consents to a longer period. A motion for preliminary injunction must be scheduled for a hearing at the earliest possible time and, the party obtaining the TRO does not proceed with the request for preliminary injunctions, the TRO will be dissolved. See Rule 65, Federal Rules of Civil Procedure. Rule 70 of the Federal Rules of Civil Procedure authorizes Federal judges to direct that a conveyance of land, delivery of deeds or documents, or performance of any other specific act provided for in a judgment be done at the cost of a disobedient party by some other person appointed by the court. A party entitled to performance would apply to the court for a writ of attachment or sequestration against the property of the disobedient party to compel compliance with the judgment. The court may also adjudge a non performing party in contempt. Section 566(a) of title 28, United States Code, states that the primary role and mission of the United States Marshals Service is to provide for the security and to obey, execute, and enforce all orders of the United States District Courts, the United States Courts of Appeals and the Court of International Trade. Subsection 566(c) states that: "Except as otherwise provided by law or Rule of Procedure, the United States Marshals Service shall execute all lawful writs, process, and orders issued under the authority of the United States, and shall command all necessary assistance to execute its duties".
18/12/1998
IP/Q4/USA/1 United States of America Switzerland Question 7 of the Checklist of Issues on Enforcement 8. Please indicate whether, in cases of preliminary relief under Section 337, damages for any losses to legitimate interests resulting from a temporary exclusion order can be recovered where the respondent prevails in the final determination.
The US International Trade Commission is authorized to require that a bond be posted as a prerequisite to the issuance of a temporary exclusion order and, if the respondent prevails in the final determination, the bond may be forfeited to the respondent. See 19 U.S.C. § 1337(e)(2).
18/12/1998
IP/Q4/USA/1 United States of America Switzerland Items 8 and 13 of the Checklist of Issues on Enforcement20 9. The US responses to items 8 and 13 of the Checklist of Issues on Enforcement20 mentions that the US Government is not in a position to provide the data requested for various reasons including, inter alia, because such data varies greatly in relation to other variables such as complexity and type of proceeding. However, without some further information regarding such factors as costs and time limits applicable to procedures for the enforcement of intellectual property rights, it is difficult to determine US compliance with Article 41.2 of the TRIPS Agreement. For this reason, it is requested that despite the possible variation of data, answers are provided to the following questions: Please cite the legal and/or administrative authority concerning costs such as fees charged for judicial and administrative enforcement proceedings. Please explain, in particular the cost arising from civil evidentiary procedures and finding of fact by juries with regard to the enforcement of patent rights.
With respect to fees charged for judicial proceedings, see 28 U.S.C. §§ 1913 and 1914. Under Rule 54(d) of the Federal Rules of Civil Procedure and 17 U.S.C. § 505; 15 U.S.C. § 117(a); 17 U.S.C. § 911(f), these fees, witness fees and the like, are generally awarded to the prevailing party, unless the court orders otherwise because of the equities in the case. The text of the latest fee schedules established by the Judicial Conference of the United States is set out in Annex 3. Administrative fees vary depending upon the procedure in question. The United States Government would be happy to provide fee schedules for procedures in which the Government of Switzerland indicates an interest.
18/12/1998
IP/Q4/USA/1 United States of America Switzerland - Please refer to provisions of US laws and/or regulations which have the purpose of deterring deliberate delays by parties to a proceeding.
Federal judges in any enforcement action are required to issue a scheduling order that, among other things, limits the time for completion of discovery. See Rule 16(b), Federal Rules of Civil Procedure. In connection with discovery, courts, under Rule 37, require any party or deponent whose conduct necessitated the filing of a motion to compel to pay the reasonable expenses incurred by the other party in obtaining the order, including attorneys fees, unless opposition to the motion was substantially justified or other circumstances make such an award unjust. Similar sanctions are imposed under Rule 37 on parties that fail to comply with orders; that fail to attest to the genuineness of a document or the truth of any matter as requested under Rule 26; that fail to attend a deposition, serve answers to interrogatories, or respond to a request for inspection; or that fail to participate in framing a discovery plan. In addition, courts may impose similar sanctions on parties or on their attorneys for failure to obey a scheduling or pretrial order, if the attorney is unprepared or fails to participate in good faith. See Rule 16(f). The US International Trade Commission has similar authority in connection with § 337 cases. See 19 U.S.C. § 1337(h).
18/12/1998
IP/Q4/USA/1 United States of America Switzerland Items 16 and 17 of the Checklist of Issues on Enforcement 10. Article 55 of the TRIPS Agreement provides that "...in appropriate cases, this time limit [of ten days] may be extended by another ten working days". Is such time extension foreseen in the US system? If not, please explain how an applicant can avail himself of this possibility as expressly provided by the TRIPS Agreement?
The US system is TRIPS-compliant and does allow for the time limit to be extended in appropriate cases, as expressly provided by the TRIPS Agreement. Please see 19 C.F.R. Part 133.
18/12/1998
IP/Q4/ZAF/1 South Africa European Union 1. In terms of Article 41 of the TRIPS Agreement, Members are obliged to ensure: (a) that enforcement procedures are available under their laws so as to permit effective action against any act of infringement of intellectual property rights; and (b) that such procedures include expeditious remedies; but provided (c) that such procedures provide safeguards against abuse. Thus, in relation to (c) in particular, safeguards are built into the procedural obligations specified in the TRIPS Agreement. For example, Article 41.4 provides that parties to proceedings shall have an opportunity for review by a judicial authority of at least the legal aspects of initial judicial decisions on the merits of a case. It is the understanding of the European Communities and their Member States that an interlocutory injunction (or, as it is known in South African law, a temporary interdict) ordered by the High Court is neither reviewable nor appealable. - Is our understanding of the current legal position in South Africa correct? Please explain. - If so, and in the absence then of the opportunity of a review or an appeal, what safeguards are built into the procedures available against the abuse by an applicant of proceedings for a temporary interdict?
Article 41 of the TRIPS Agreement requires, in Article 41.4, that there shall be an opportunity for review, inter alia, in respect of at least the legal aspects of initial judicial decisions on the merits of a case. In reply to the specific question as formulated, it is confirmed that the current legal position in South Africa is that an interlocutory injunction (temporary interdict) is not subject to review nor to appeal. It is submitted that this position is not in conflict with Article 41.4, inasmuch as the decision in regard to an interlocutory injunction is not a decision on the merits of a case. An interlocutory injunction is based on a balance of convenience, and the merits of the case are specifically not decided. To succeed with a temporary interdict, the claimant merely has to show prima facie, that there is a right which is or is about to be infringed, and that the balance of convenience favours the granting of a temporary interdict pending the finalization of the main proceedings. Furthermore, an interlocutory injunction is exactly that, namely a temporary order pending further court action; if such further court action does not follow within a reasonable period, the interlocutory injunction can be discharged. The order normally specifies a return date by which cause must be shown as to why the temporary interdict should not be made permanent, thus creating an opportunity for the respondent to state his case. The system is safeguarded against abuse in that the Court requires to be satisfied that the balance of convenience is in favour of the granting of such an interdict, and in considering this aspect The Court will consider, inter alia, the status and financial position of both parties, and will make the decision on the basis of the least measure of interference with the activities of a party.
30/04/1999
IP/Q4/ZAF/1 South Africa European Union 2. It is the understanding of the European Communities and their Member States that a number of decisions by the Registrar of Trade Marks are currently outstanding for more than a year since they were argued before the Registrar. How does this comply with Article 41.3 of the TRIPS Agreement?
There is, at the present time, a small backlog of decisions by the Registrar of Trade Marks, namely seven outstanding, only one of which has been outstanding for a substantial period of time. This is due to a shortage of staff, and an unexpected escalation in the number of trademark cases filed, giving rise to a considerable increase in the number of trademark hearings before the Registrar of Trade Marks. However, it should be borne in mind that the Trade Marks Act provides (e.g. in Sections 24(1), 26 and 27) that the applicant has an option to elect whether to bring the proceedings before the Registrar, or before the Court. This means that, in many cases, the delay currently experienced in regard to matters being heard by the Registrar, can in fact be avoided by the applicant by bringing the proceedings before the Court (i.e. the High Court). In terms of Section 59 of the Trade Marks Act, where proceedings in terms of certain specified sections are pending before the Registrar, the Registrar may in his discretion refer the proceedings to the Court, he must refer to the proceedings to the Court on written application of all the parties concerned. This provision creates a mechanism whereby parties who require expeditious decisions could approach the High Court rather than the Registrar.
30/04/1999
IP/Q4/ZAF/1 South Africa European Union 3. Article 45 of the TRIPS Agreement provides that judicial authorities have the authority to order the infringer to pay the right holder’s expenses. By the same token, but in opposite circumstances, Article 48 of the TRIPS Agreement provides that the judicial authorities shall have the authority to order the applicant to pay the defendant’s expenses. In both cases these expenses may include "appropriate attorney’s fees". Could the Government of South Africa please clarify whether "expenses" would comprise the actual expenses of the victorious party (such as counsel’s and expert’s fees, travel, accommodation and the like)? Please explain.
Courts in South Africa have an inherent jurisdiction to grant an order as to costs in favour of a successful litigant, and such costs would normally include attorneys' fees and disbursements or expenses. The expenses, payment of which may be ordered by the Court, would be taxed expenses, i.e. expenses permitted in terms of the tariff applicable in the High Court. The sum so ordered to be paid will be based on what is allowed by the relevant High Court tariff; this may not include all actual expenses, but rather those which are reasonable and are permitted in the circumstances. Generally speaking, experts' fees will be recovered; however, travel and accommodation expenses will generally not.
30/04/1999

Page 672 of 677   |   Number of documents : 13533

 
Reset