Meetings of the Assemblies of WIPO Member States – 2008 Report

December 2008

Topped by the appointment of Mr. Francis Gurry as the next Director General of the Organization, the WIPO Assemblies met in September to review the past year’s activities and discuss the Organization’s future work program. The General Assembly Chairman, Ambassador Martin I. Uhomoibhi, Nigeria’s Permanent Representative to the United Nations in Geneva, underlined the success of this year’s session in his concluding remarks, noting that Member States were united by the vision set out in Mr. Gurry’s acceptance speech (see page 6) of an Organization getting to grips with the big issues and fulfilling its role as the “pre-eminent forum for intellectual property discourse”.

Appointment of the New Director General

Mr. Gurry, an Australian, was appointed as Director General for a six-year term that began on October 1 and will run through September 2014. In unanimously appointing Mr. Gurry, WIPO Member States put regional differences behind them to focus on the future health of the Organization and achieved, in the words of Ambassador Uhomoibhi, “a seamlessly smooth, harmonious transition” that Mr. Gurry said “would provide a good basis to tackle all the challenges of the future”.

Committee on Development and IP (CDIP)

Member States took stock of the work of the CDIP which, in the two formal meetings held in March and July, had considered 15 of the 45 recommendations in the WIPO Development Agenda and expressed the need for mechanisms to facilitate coordination with other WIPO bodies so as to ensure effective implementation.

The General Assembly approved the work program for implementing the five costed recommendations from a list of 26 requiring additional resources. Member States agreed to make resources available to the Secretariat in line with WIPO’s program and budget process.

The General Assembly approved the start of consultations for the convening of a donor conference in 2009 to help mobilize additional resources, by encouraging the establishment of trust funds or other voluntary funds, specifically for least developed countries (LDCs), while continuing to accord high priority to financing activities in Africa. The aim would be to promote the legal, commercial, cultural and economic exploitation of IP in these countries. The conference would also seek to improve the mobilization, coordination and management of extra-budgetary resources at WIPO, through an exchange of ideas and best practices.

Standing Committee on Copyright and Related Rights (SCCR)

The General Assembly decided that the November 2008 session of the SCCR would continue to discuss the protection of broadcasting organizations and cable-casting organizations, based on an informal paper by the Chair, outlining his understanding of the main positions and of the divergences to be addressed.

At the March 2008 meeting of the Committee, Member States had expressed a willingness to find a way forward on the protection of audiovisual performances. In light of this, WIPO had been requested to prepare a summary of recent activities and the positions of the members of the SCCR.

WIPO had organized a number of national and regional seminars in Africa, Asia and Latin America to promote progress on the issues at the levels of national legislation and international consensus-building. In preparing these events, WIPO had followed a flexible and balanced approach to the protection of performers at the national level in practical areas such as contractual relations and collective bargaining, the exercise and transfer of rights and remuneration systems. Similar events are planned for the coming year and Member States agreed to keep the issue on the agenda of the next General Assembly meeting.

Member States noted the status of discussions on the question of exceptions and limitations to copyright, in particular the Committee’s decision to mandate a WIPO study on exceptions and limitations for the benefit of educational activities, including distance education and taking cross-border aspects into account.

Advisory Committee on Enforcement (ACE)

The November 2007 session of the ACE had discussed international, regional and national cooperation in the field of enforcement of IP rights, with a particular focus on criminal remedies. These discussions had paved the way for an update of the WIPO Casebook on the Enforcement of Intellectual Property Rights, the second edition of which will be available shortly. The General Assembly underscored the importance of WIPO’s role in the enforcement of IP rights, and noted the growing number of enforcement-related activities undertaken by WIPO in the last year.

Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC)

Member States took note of a progress report on the IGC’s analysis of gaps in the protection available for traditional knowledge and traditional cultural expressions/expressions of folklore. These gap analyses were developed and reviewed through an open commentary process in preparation for the IGC’s October 2008 session (see page 24). Delegates also welcomed the continued successful functioning of the WIPO Voluntary Fund for Indigenous and Local Communities.

Standing Committee on the Law of Patents (SCP)

There had been a revival of discussions within the SCP and, as requested by the General Assembly in 2007, an overview of current international patent issues covering the different needs and interests of all Member States had been released by the Secretariat in April 2008. The June 2008 SCP meeting welcomed the report as a good basis for discussion and it remained open for written comments until the end of October 2008. It will serve as the basis for the SCP’s discussions at its next meeting in early 2009, along with four additional preliminary studies on: dissemination of patent information (inter alia, the establishment of a database on search and examination reports); exceptions from patentable subject matter and limitations to the rights (inter alia, research exemption and compulsory licenses); patents and standards; and client-attorney privilege. Delegates endorsed a recommendation to convene a conference in 2009 on issues relating to the implications of patents on certain areas of public policy, such as health, the environment, climate change and food security.

Internet domain names

WIPO continues to take steps and to develop tools to ensure fair and transparent Uniform Domain Name Dispute Resolution Policy (UDRP) procedures, which are administered by its Arbitration and Mediation Center. Recent developments within the Internet Domain Name System (DNS) had expanded opportunities for mass registration of domain names, and consequently increased the challenges for IP rights owners to enforce their rights. The Center is actively engaged with the Internet Corporation for Assigned Names and Numbers (ICANN) to bring to its attention circumstances that may frustrate the intended functioning of the UDRP. WIPO is also engaged in efforts that aim to enhance the observance of principles of IP protection in the introduction of new gTLDs and in the introduction of internationalized domain names (IDNs: non-Latin script) at the top level, which ICANN foresees taking place in the course of 2009.

Article 6ter of the Paris Convention for the Protection of Industrial Property (Paris Convention)

Member States approved a revised communication procedure under Article 6ter of the Paris Convention, under which communications will be published electronically every six months. This will simplify communication procedures and provide greater legal security for all parties involved, as the new publication dates will create generally applicable starting points for the calculation of the time limits for transmittal of any objections by concerned parties (see Article 6ter(4) and (6)).

Madrid Union for the International Registration of Trademarks

Member States of the Madrid system for the international registration of trademarks amended a number of rules governing that system to improve accessibility of information regarding the fate of international registrations in designated contracting parties. Under the current procedures, if the trademark office of a contracting party designated in an international registration has decided, following examination, that the trademark in question cannot be protected in the territory of that contracting party, it is required to submit a refusal notification to WIPO within a given time period. However, such a notification requirement currently does not exist when the trademark office has decided that the trademark can be protected. This system of “tacit acceptance” will be changed as from September 1, 2009, by the introduction of an obligation for designated contracting parties to submit a so-called “statements of grant of protection.” The change is accompanied by a transitional arrangement whereby any contracting party that requires more time to implement this obligation will have until January 1, 2011, to do so.

A WIPO study will be carried out on the implications and advantages of including other languages in the regime of the Madrid system. The current working languages are English, French and Spanish. The study will focus on the benefits of including Arabic, Chinese, Portuguese and Russian as official filing languages. An expansion of the number of filing languages of the Madrid system is expected to boost membership of the system and to further stimulate growth in its use, both within new member countries and established members.

Hague Union for the International Registration of Industrial Designs

Member States of the Hague system amended a number of its rules in order to improve the accessibility of information regarding the fate of international registrations in designated contracting parties. This helps holders of industrial design rights to determine the status of protection of their designs by establishing a formal framework for the communication of a statement of grant of protection.

The current fee reduction scheme under the Hague Agreement Concerning the International Registration of Industrial Designs – which reduced fees for applicants from LDCs to 10 percent of the prescribed fees as of January 1, 2008 – will be extended to certain intergovernmental organizations (IGOs), the majority of whose members are LDCs. As from January 1, 2009, an international application filed by an applicant from a contracting party that is an LDC or a member state of an IGO, the majority of whose members are LDCs and whose international application is exclusively governed by the 1999 Act of the Agreement, will qualify for the fee reduction scheme. Member States decided that designers from the 16 member states of the African Intellectual Property Organization (known by its French acronym OAPI - Organisation africaine de la propriété intellectuelle) will be the first to benefit from this 90 percent reduction in fees.

Following the results of a study on the implications of adding Spanish as the third working language of the Hague system, in addition to English and French, broad support was received from members of the Hague Union Assembly and other WIPO Member States. The addition of Spanish is expected to boost new accessions; act as a clear and strong incentive for Spanish-speaking countries to join the Hague system and/or facilitate their accession process; and be of direct interest to the offices of existing members for whom Spanish is the official language of operation. It would also benefit industrial design owners in existing member countries who would gain from a more stream-lined and cost-effective means of protecting their industrial designs.

Investment Plan for Madrid and Hague Systems

Much progress had been achieved in the implementation of a four-year investment program (2008-2011) to update the information technology architecture of the Madrid and Hague systems. The IT Modernization Program, which aims at generating efficiencies in the administration of the two systems, comprises three categories of sub-projects (internal operation, external communication and governance and technical) and is to be implemented in three phases over the period of the project, for an estimated cost of some 15.3 million Swiss francs.

Lisbon Union for the Protection of Appellations of Origin

The Lisbon Union Assembly agreed to establish a working group to explore the introduction of possible improvements to the procedures of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (see page 20).

The WIPO Assemblies brought together the 184 Member States of the Organization. (Photo: WIPO/Mercedes Martínez Dozal)

Patent Cooperation Treaty (PCT) Union

A number of amendments were made to the Regulations under the PCT. These include amendments relating to the supplementary international search system – due to enter into force on January 1, 2009 – as well as amendments relating to the processing of international applications under Article 14(4) and the amendment of claims, which will enter into force on July 1, 2009.

Member States adopted, in the form of an “understanding”, a set of criteria to facilitate decisions relating to the addition of further languages of publication under the PCT.

Following a request by the 2007 PCT Assembly, a study was prepared by the Secretariat on the eligibility criteria for determining the group of developing and least developed countries whose applicants should benefit from a reduction of PCT fees, suggesting that a combination of criteria based on income or other economic indicators of development of a country and of criteria based on the size of a country, reasoned by size of economy, should be used. Member States agreed that the issue should be placed on the agenda of the PCT Working Group in 2009.

Digital Access Service for Priority Documents

Member States reviewed progress in the implementation of a new voluntary service – digital access service for priority documents (DAS) – which responds to the business needs of applicants by enabling them to meet priority document requirements of patent offices without having physically to obtain and submit certified copies to each of them. The service will also facilitate the work of patent offices which may obtain priority documents under alternative arrangements. The DAS service will offer a simple and safe digital alternative to filing paper copies of priority documents with multiple patent offices. It leverages existing systems such as the Electronic Document Interchange system under the PCT, and offers a gateway (via WIPO’s PATENTSCOPE^® website) to digital libraries to be maintained by patent offices as well as the WIPO Secretariat. It is currently envisaged that development and testing of communication arrangements between WIPO and at least some of the pilot offices will be completed in early 2009 allowing practical use to begin during the second quarter of 2009.

Patent Law Treaty (PLT)

The PLT Assembly unanimously agreed on the applicability, to the PLT and Regulations under the PLT, of a number of modifications to the Administrative Instructions under the PCT made in the past year, with immediate effect. A modified Model International Request Form will provide a check-box that indicates the authorization by the applicant to receive advance copies of notifications by e-mail from the Office, if the Office wishes to do so.