Swings and roundabouts: The impact of legal drafting on the language and understanding of copyright law and the need for educational materials

We are pleased to announce our Executive Committee’s Member, Hayleigh Bosher, co-authored publication with Prof. Dinusha Mendis.

Swings and roundabouts: The impact of legal drafting on the language and understanding of copyright law and the need for educational materials

Abstract

Legislators face the challenging task of drafting copyright law, which takes into account the views of various stakeholders, intended policy and technological developments, whilst ensuring that the wording and language that is used is accurate and precise. Meeting these objectives means that the law in its legislative form can be hard-to-understand, complex and not easily accessible to the layperson. This article explores steps, which have been put in place by various organisations and online resources, to assist in the understanding of copyright for the public and schools, with particular focus on education and teaching materials – as presented on Copyrightuser.org.

Link to the article: http://www.tandfonline.com/doi/abs/10.1080/13600869.2016.1176319?journalCode=cirl20&

Litigating Intellectual Property Issues in Investor-State Dispute Settlement: A Jurisdictional Conflict

Litigating Intellectual Property Issues in Investor-State Dispute Settlement: A Jurisdictional Conflict
Pratyush Nath Upreti
This article attempts to show a jurisdictional conflict, while litigating intellectual property in investor-state dispute settlement (ISDS). At the global level, the World Trade Organization (WTO) dispute settlement body has jurisdiction to deal with any matters related to intellectual property. On the contrary, ISDS exclusively settles a dispute arising from an investment. The recent International Investment Agreements reveals that ‘intellectual property’ is part of the definition of investment, giving way for an investor to challenge intellectual property issues in ISDS. This departure of forum shifting from WTO Dispute Settlement Understanding to ISDS can be seen through the lenses of res judicata and doctrine of estoppel. However, the impact of such jurisdictional conflicts awaits future claimants.

“VPATAPP” Interview: A repository of patent-related data

VPATAPPRecently, I was lucky enough to find “VPATAPP”, a useful mobile app for patent enthusiasts (from professionals, such as patent agents or lawyers to research centres) across the world, since it constitutes a one-stop destination for accessing all authentic data related to patent world. The app brings specific patent information regarding industries like automobiles, electronics, information and communications technology (ICT), healthcare, pharmaceuticals, oil/gas and biotechnology. The information is updated quarterly and new features will be added in the near future. Currently, the app provides rapid links to:
  1. Directory of global patent law firms
  2. Worldwide patent related blogs
  3. Patent search websites available from patent offices across the world
  4. Supplementary protection certificates (SPCs)
  5. Updated full patent acts available from national/regional/international patent offices
  6. Weekly or monthly official gazettes and registers ordered by countries/regions or organisations
  7. Patent related journals
  8. Patent related LLM, masters and courses offered by different centres in the world
  9. Patent classification systems
  10. Latest news about case law, events, decisions/reports from patent offices and antitrust agencies, book publishing and research papers

Once I tried out the app, several questions came to my mind. Thus, I reckoned it interesting to interview Mr. Vijay Shivpuje, the leader of the team who launched the app and who recently became a member of New IP Lawyers  (you can find his profile here). Vijay, to whom I am obliged for his readiness to collaborate with the IPowL blog, is originally from India and associated with a multinational pharmaceutical generic organisation in the same country.

  • How did you come up with the idea of creating VPATAPP?
    The idea of creating VPATAPP was a result of making a difference in the patent community with a vision to create a one-stop destination for all the needs of the patent law firms, industries, associations, universities, service providers, patent examiners and everyone who is associated with this vibrant field. And with the penetration of mobile devices globally, it made sense to design a mobile app rather than a website.

Actually, it is the outcome of more than a decade of experience in patent prosecution, patent searching, patent litigation and patent licensing within various industries and the everyday minor problems faced working therein. The industries need to get authentic web resources in various countries about patent law. Besides, the idea was to connect effectively both the industry and the legal community. Usually, lawyers’ efforts to get information about services and expertise remain within the bounds of case law and journals. However, what is important is to disseminate this knowledge in the benefits of the industry and the society in general.

  • Based on your experience as a practitioner, in what sense did you notice the lack of connection between industry and legal community?
    Nowadays, the access to legal updates is confined to law journals, case law and blogs. In a techno-legal field as patents, what is important is to make these sources available also to industries, to help them to better understand the legal complexities attached to each industrial domain. As far as the legal community is concerned, the fact of sharing this information across the industry, provides them the opportunity to explore the industrial requirements and the current trends in a given industrial sector. Therefore, knowledge dissemination free of cost help all stakeholders.
  • Returning to the app, how does the app disseminate the relevant knowledge to industries and patent lawyers?
    Through this tiny app, we want to offer an easy access to relevant information for industry (non-lawyers) and legal community. For patents agents and professionals, what is significant is to gather pertinent information to prepare, file, and prosecute patent applications. To that end, the app offers them a global, swift and handy access to patent search websites, full patent acts, official gazettes and registers and patent blogs.
    To collate all this data in continuously updated form and per each country is not a trivial task, since we also have to overcome language and cultural barriers.

For lawyers, the app collects the latest updates regarding case law, legislation amendments, latest articles published by scholars, events and law firms, which saves a considerable amount of time researching.

But as I mentioned before, one of the main goals of the app is to connect effectively the industry and the legal community through an interdisciplinary collaboration. So what we aim is that the app becomes a platform that enables share of expertise and knowledge about patents between lawyers and non-lawyers.

  • Which criteria does the app use to achieve the patent data completeness?
    We cannot talk about complete patent data due to the rapid changes happening in the domain. We track all the websites containing patent law information in order to update or add new data.
    Fortunately, the team’s rich experience in the patent domain in several industries such as pharmaceuticals, biotechnology, chemicals, veterinary products, Fast-Moving Consumer Goods (FMCG) or mechanical devices, makes easier for all of us to keep track of these websites.

Moreover, we are always willing to add new blogs and law firms (patents) to the app absolutely free of cost.

  • Taking into account your previous answer and that you have a background in Law and Pharma, I suppose that the team you are leading is also a multidisciplinary one (composed of lawyers and non-lawyers), is not it?
    Yes, we have both lawyers and non-lawyers. It is a mix of both of them.
  • VPATAPP will be launching its next version in the near future introducing patent status and patent translation services. Will it also contain other new features, such as patent information from countries not included in the app, patent case law or a directory of industrial standards?
    Currently, we are working on including patent information from countries not included in the app and also on the case law part. The industrial standards’ directory is on the cards, but it will not be added in the near future. Above all, we need to keep all the information updated, which is a tedious task.
  • The VPATAPP is a data collection app that connects the users to various free patent search websites. In the future, would you also like to work on legal analytics (cleaning, coding, and tagging all patent data) or on the formulation of algorithms to solve specific patent problems?
    Thanks for the wonderful idea. We would definitely work on them, if the technological development could be carried out within the app’s framework and is cost effective.
  • Bearing in mind that VPATAPP is constantly evolving, would you be interested in crowdsourcing the app (in form of funding, legal assistance or coding work)
    Broadly speaking, we are looking for like minded partners who could take the product to the next level.
    In respect of funding, we are looking for someone who understands the intellectual property (IP) business and contributes to the cause, rather than simply funding.
    Likewise, we are seeking help from various law firms in terms of technical inputs who are willing to develop a long term partnership, in place of providing specific legal assistance.
  • Mr. Vijay Shivpuje, I would like to thank you for your willingness to provide us further information about VPATAPP and for contributing to the development of new technologies that make certain stages of legal research more efficient for IP law practitioners.

I would like to end by stressing that New IP Lawyers is also fully convinced that an interdisciplinary collaboration allows problems to be addressed in a wider context, especially when solutions can only be found through combinations of disciplinary approaches and perspectives.
Hence,  I truly hope that this post inspires and stimulates IP passionates to work on the interdisciplinary field of IP law and informatics, since as Warren Buffett said: “Someone is sitting in the shade today because someone planted a tree a long time ago”.

Download VPATAPP:
This app is available free of cost on Google Play (android) and App Store (iOS).

Contact:
If you would like more information or get in touch with Mr. Vijaykumar Shivpuje, you might do it on: +919768665354; or at: vijayksl123@gmail.com

 

RECAP: Seminar on Performer’s Rights

As anticipated in our Tweets, New IP Lawyers organized a seminar on Performer’s Rights on the evening of 18 April 2016 at the Digital Catapult Centre in London. You may find now a report on this intellectually stimulating and entertaining event in our Seminar Series webpage. We thank our Executive Committee Member,  Hayleigh Bosher,  for the report and for organizing a wonderful evening of discussion and performance.

As New IP Lawyers, we like to promote research on topics that help advance our society. The promotion of performer’s rights is one of these topics. To learn more about the economic and moral justification for performer’s rights, we have made available on our Youtube channel the talks of Hon Mr Justice Arnold, Dr. Ananay Aguilar (University of Cambridge), and Dr Gowri Nanayakkara (Canterbury Christ Church University). You may also read online a short version of the papers  of Dr. Aguilar and Dr. Nanayakkara.

We hope that you enjoy  our online report and look forward to welcoming you to more events rich with intellectual discussions and fun.

The BB

Right to Regulation & Investment Court System: Alternative to ISDS? (Part II) – Mediation in Investor-State Dispute: An Option

In my previous contribution to the EFILA blog, titled Right to Regulation & Investment Court System: Alternative to ISDS?, I analyzed the debate raised by the ISDS provision in TTIP and how the proposed Investment Court may not be able to solve the issues raised by ISDS. It is important to analyze the reasons behind such a huge cry over ISDS set up in the Trade/Investment Agreement. The European Federation for Investment Law and Arbitration (EFILA) in its paper titled A response to the criticism against ISDS has balanced an analysis on the criticism of ISDS.

It is evident that in recent years, there has been a diversion of opinions, which is painful to investors and also encroaching on the national matters of State. Therefore, the global community has to realize that the present ISDS is not always working effectively and alternatives should be proposed. The European Commission’s proposed ‘Investment Court’ might be a step towards formulating an alternative.  No doubt that the proposal is a good attempt but it still needs to be revised.

Recent Trends of International Investment Agreements

In recent years, more countries have been opting for IIAs to continue their existing co-operation with countries or as a way to find an economic development. According to the United Nations Conference on Trade and Development (UNCTAD), there has been rapid growth of IIA from 1980 till 2014 (see Figure 1.)

Screen Shot 2016-03-08 at 1.14.40 PM

Figure 1: Trends of IIAs (Preliminary data for 2014UNCTAD, IIA database)

The above graph highlights the recent trends of IIAs from 1980-2014. It is expected that IIAs number will increase, but the graph indicates that there has been a decline in the last few years. According to UNCTAD data, in 2004 there were 27 IIAs, out of which 14 were Bilateral Investment treaties (BITs) and 13 were ‘other IIAs’, i.e. economic agreements other than BITs like

Free trade agreements (FTAs), bringing the total number of agreements to 3,268 (2,923 BITs and 345 ‘other IIAs). The total number of IIAs was lower down in 2014 as compared to 2013 where there was a total of 44 IIAs (30 BITs and 14 Other IIAs). The interesting fact is that in 2013 the number of BITs terminated was 148, out of which a new treaty replaced 105, 27 were unilaterally denounced and 16 were terminated by consent.

Screen Shot 2016-03-08 at 1.14.54 PM

Figure 2: Most Active negotiator of ‘other IIAs’; treaties under negotiation and partners involved. Source: UNCTAD, IIA database.

The above figure emphasizes the number of treaties under negotiation and partner countries involved in a negotiation. At present, the European Union has 28 treaties under negotiation among 70 different countries as partners. Although the data highlights seven countries under negotiation, but at present there are 45 countries and four regional integration organizations that are revising their model IIAs.

The findings of UNCTAD data highlights that the countries’ willingness to enter into agreements and few IIAs are under revision. This implies three things. First, negotiation is getting more complex because of the increase in the number of countries in the negotiation process, as every country has a share of interest. Furthermore, even if a deal is negotiated in the broader package, then also the question of commitment to those issues is very important.

Second, the interrelation between IIAs and domestic concerns comprising ‘social, environmental and public health’ matters makes negotiation more difficult. Ignoring this issue means that negotiation has a severe impact on the development of host countries. Therefore, finding the proper balance may take more time, which makes negotiation slow.

Third, some of the most recent investment disputes might show that IIAs go beyond the protection and promotion issues and leave no flexibility on some issues that allow member countries to peruse their development agenda, according to their needs.

Fourth, the transparency in negotiation deals creates a public nuisance on some contingent issues, diverse opinions on other issues, which may or may not be discussed, would have a negative impact on negotiations and, as a result, it creates negative public opinion.

Fifth, recent claims of investors under the investor-state dispute settlement mechanism have raised concern on such negotiation deals particularly such claims are encroaching upon host state sovereignty and domestic regulation.

The critics fear that the growing frivolous claims brought to ISDS will slowly discourage investors and states to opt for ISDS.  The data shows that the average cost of arbitration is $8 million per party. Therefore, at international level, there is a need to offer an alternative, which balances both the interest of investors and states. Moreover, such an alternative should be acceptable by both the parties.

Investor-State Mediation

In recent years, the relationship between the state and investors is getting salvaged. The development will be fragile when rift exists between the investor and state. Parties – for own benefit – use the increasing diverse opinions of the arbitration tribunals. This will result in negative consequences in global investment regime. The possible way to balance the system is by revising ISDS provisions or adopting investor-state mediation.

The very idea of arbitration, mediation and conciliation is to resolve the dispute. Among the three, arbitration is overwhelmingly accepted for several years. The growing criticism of ISDS has sorrowed relation between investors and the State and should be looked at with immediate concern. Perhaps, the time has come to also use the mediation process in Investor-State Disputes. There has been an attempt to use mediation in Investor-state disputes with success in a limited jurisdiction. However, scholars argue the very nature in which mediation aims to settle a dispute is different from arbitration, making it difficult for acceptance of mediation.

According to Jacqueline Nolan-Haley in her work ‘Mediation: The ‘New Arbitration’ argues that “the morality of mediation lies in the optimum settlement, a settlement in which early party gives up what he values less, in return for what he values more. The morality of arbitration lies in a decision according to the law of contract.”  The author explains this observation, as the nature of mediation is more adversarial than that of arbitration.

Similarly, authors Welsh & Schneider in their work ‘Becoming Investor –State Mediation’(2012) analyze a very fundamental difference between ‘mediation’ and ‘arbitration’. According to the authors, mediation is an ‘interest-based’ system of negotiation, which looks like a meeting. Whereas, ‘arbitration’ is a ‘right-based’ system which looks like a hearing. The very fundamental concept, which the authors are trying to convey, is that the mediation facilitates parties to arrive to a decision unlike arbitration, which focuses on adjudication.  Also, the authors clear the misnomer attached to ‘mediation’. They identify several models of  ‘mediation’ such as ‘facilitative’, ‘elective’, and ‘understanding-focused’, ‘therapeutic’ ‘Humanistic,’ ‘narrative,’ ‘insightful,’ ‘transformative’ and focus on facilitating the development of understanding and ‘integrative (or interest-based) solutions’.

Among these models, the authors suggest adopting a model which will improve relationships between the parties and able to acknowledge volatile political situations.  In other words, the authors suggest the last model as a suitable model in the context of investment treaties. Also somewhere in their article, the authors touch the possibilities of the role of state officials as potential ‘quasi-mediators’. I tend to disagree on this, particularly in the context of investor-state disputes. The role of state officials as quasi-mediators will further complicate the process and may create a trust-deficit environment. Therefore, it is important to note that the very foundation of the mediation process is ‘trust’.

 Mediation in Investment Agreements

The recent studies show that mediation has been used with great success in international commercial law. The critics argue that success of mediation in commercial law cannot be an assurance for success in the international investment regime. However, the recent Investment Agreements such as EU-Canada: Comprehensive Economic and Trade Agreement (CETA) and ASEAN Comprehensive Investment Agreement (ACIA) have incorporated ‘mediation’ in their provisions..

Also, mediation features in some Model BITs. For example Article 10.4 of the Thai BIT Model states that:

“The disputing parties may at any time agree to good offices, conciliation or mediation. Procedures for good office, conciliation or mediation may begin at any time and may be terminated at any time. Such procedures may continue while the matter is being examined by an arbitral established under this article, unless the disputing parties agree otherwise. Proceedings involving good offices, conciliation and mediation and positions taken by the disputing parties during these proceedings shall be confidential and without prejudice to the rights of disputing investor in any further or other proceedings.”

 This shows that mediation appears in some Investment Agreements and it is just a matter of time until such practice will gain momentum.

Mediation as an alternative?

 There is a diversion of opinion within the scholar’s milieu arguing that arbitration is more favorable than other forms of dispute settlement. However, the recent trends urge us to rethink arbitration and finding beyond the arbitration.  This forum shift has been realized in other international communities, as a result of IBA rules on Mediation developed to encourage good practices of mediation. One of the important features of the IBA rules on mediation gives the liberty to the state to make the mediation process private. This will take away unwanted public opinion.

At the end, I think every modern Investment agreement should include ‘Consultation’ & ‘Mediation’ among the methods for amicable settlement of disputes arising out of International Investment Agreements.  I believe adopting mediation would be a right approach because the process does not abide with a strict interpretation of law unlike in ISDS.

Similarly, the mediation process is a more informal proceeding than ISDS and involvement of a neutral party to the dialogue would give rise to a win-win situation for both parties. Moreover, in the broader sense, the inclusion of mediation in IIAs will make a country less skeptical about consequences of litigating intellectual property rights through regular ISDS mechanism. In other words, the mediation process will help the state to main regulatory rights in the host country. On the other side, it is important to note that the decision of mediation does not gain force as like of arbitration under the ICSID Convention, making mediation a toothless weapon.  This would be the reason for Europe to opt for ‘Investment Court’ model in spite of reference to mediation in CETA, which is similar to the WTO mediation process for trade dispute settlement.

However, there is a school of thought believing that mediation may create transparency and a proper environment to negotiate between the parties.  But the lack of enforcement of such a decision might make the situation worse.  Therefore, it would not be rational to jump to a conclusion that the ‘mediation’ process will immediately solve the problems raised by ISDS. Moreover, the mediation process is yet to be tested in International Investment Agreements.

Original Article can be found in EFILA Blog

A wind of change on EU and US trade secrets. Will the reform increase innovation and competitiveness?

Trade secrets are probably the oldest and the most common form of intellectual protection. The reason seems obvious. Can you imagine a manufacturer that reveals his/her know-how to competitors? If the original producer discloses important business information, he/she facilitates competitor activities and may loose the market lead and all economic advantages linked to the trade secret. Companies’ interest in protecting trade secrets has nowadays increased due to the expansion of cyber espionage[1] and trade secret misappropriation from employees and competitors.[2] Under these circumstances, business has lobbied for legal mechanisms that can assure a better protection in the EU and US. The EU started to consider harmonization of existing national laws in November 2013 with the proposal for a DIRECTIVE OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL on The Protection of Undisclosed Know-How and Business Information (Trade Secrets) Against their Unlawful Acquisition, Use and Disclosure. The US, on the other hand, introduced a proposal for uniform rules on trade secrets in July 2015. See HR 3326 and S. 1890. General information on these reforms can be found on the official page of the European Commission and on a detailed post on Latest Updates on Federal Trade Secrets Legislation. Here we can point at the commonalities between the EU and US reforms. Both the EU and US proposals aim to provide uniform standards for trade secret misappropriation and remedies against misappropriation, including injunctive relief and monetary damages.

One might think that these proposals are good news for business. Uniform standards of protection safeguard companies trade secrets across borders, facilitate their operations, and consequently encourage innovation and investment. If one believes that legal certainty equals more safe investments, then we should look at the formulation of legal provisions. Are they clear and precise enough to guarantee a smooth functioning of the market? Professors in the US have highlighted several drawbacks in the announced bill. A first letter of opposition to the bill claims that it could contribute to anticompetitive behaviors, increase of accidental disclosure of trade secrets, negative impact on access to information, collaboration among businesses and mobility of labor. A second letter argues that the wrong is defined differently, the ex parte civil seizure remedy may block legitimate competition, the motion for “encryption” should be better clarified, employee mobility is not protected, trade secrets are not considered as intellectual property rights, the difference between trade secrets and misappropriation is not clear, and trade secret misappropriation does not always result in harm. Although other voices emphasize the benefits of the US proposal, the concerns raised by the professors cannot go unnoticed for the sake of innovation and competition.
What about the EU proposal? Although the Commission aims at reducing legal uncertainties in order to spur innovation in the single market and the proposal has the merit of defining “trade secrets” and harmonizing the scope of protection, we think that the lack of clarity in some provisions in the proposal may increase litigation and thus, hinder innovation. We point at some of these provisions below.
Art. 2 Definitions
For the purposes of this Directive, the following definitions shall apply:
  1. ‘trade secret’ means information which meets all of the following requirements:
           (a)….
           (b) has commercial value because it is secret;
The formulation of letter (b) is ambiguous. It seems like the commercial value of the trade secret depends on the fact that it is kept secret. What happens when the secret is revealed? Does it loose its commercial value? The value might be reduced for the secret holder but this does not mean that the commercial value disappears with the disclosure of the secret. Think of the competitors, for example. They could use the trade secret to enter the market.
        (c) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.
What are reasonable steps under the circumstances? What if a controversy on this point ends up in court? If we think that judicial practices differ between EU countries and within the same country, how will legal certainty across the Union be guaranteed?
Art. 3 Unlawful acquisition, use and disclosure of trade secrets
          4. The use or disclosure of a trade secret shall also be considered unlawful whenever a person, at the time of use or disclosure, knew or should, under the circumstances, have known that the trade secret was obtained from another person who was using or disclosing the trade secret unlawfully within the meaning of the paragraph 3.
This provision is certainly important to take account of situations that the law cannot predict, but it seems to confer too much discretion on defining such situations. The terms “should, under the circumstances” are of particular concern as they involve normative judgement. Depending on the interests at stake, the interpretation may find the behavior lawful or unlawful.
We should also draw readers’ attention to the fact that contrary to regulations, directives are not immediately enforceable as law. They leave some room for Member States to achieve a particular result. But the recommendations laid down in the draft directive could be improved in order to achieve its results more effectively. We invite our NIPL fellows to discuss with us further ambiguous provisions and remember that trade secret disclosure is not always bad for innovation and competition.
[1] See, for example, APT1 Exposing One of China‘s Cyber Espionage Units. Available at http://intelreport.mandiant.com/. Accessed 4 February 2016.
[2] EU recitals, http://www.tradesecretslaw.com/latest-update-on-federal-trade-secret-legislation/ citing scholarly articles such as A Statistical Analysis of Trade Secret Litigation in State Courts, 46 Gonzaga Law Review 57 (February 2011); Four Reasons to Enact a Federal Trade Secrets Act, 19 Fordham Intellectual Property, Media & Entertainment Law Journal 769 (April 2009).

 

EPIP Call for Papers 2016

The EPIP Association (European Policy for Intellectual Protection) welcomes now paper submissions for its annual conference. For more information, please visit the link below:

 http://www.epip2016.org/call/