Women in Law

some times i use to wonder about the percentage of women who complete their graduation but never practise law as such. But felt good and proud when i read this article below forwarded by my dear friend champa. Women are more into law these days and outlook magazine had made a spl report on it.


WOMEN LAWYERS
In Portia's Court
She is winning the argument. The courtroom as a traditional male bastion is adjourned.


Women-In-Law
The number of women studying law is on the rise. In Mumbai, women form 60-65% of students in law colleges. It was 35-40% in the early '90s.

Women make up 50% of graduates of the elite National Law School in Bangalore

In 2003, only 17 out of 514 Supreme Court and High Court judges were women. By 2007, this had increased to 39 out of 597 judges.

Women members constitute 15% of the Supreme Court Bar Association and their number is steadily rising.
***

Hall Of Fame

1959: Anna Chandy becomes the first woman High Court judge

1977: Leila Seth becomes the first woman Supreme Court senior advocate

1989: Fathima Beevi becomes the first woman Supreme Court judge.

1991: Leila Seth becomes the first woman Chief Justice of a High Court (Himachal Pradesh)

Dec 6, 2007: Daya Chaudhary becomes first woman judge of Punjab and Haryana High Court
***

Anitha Shenoy is a lawyer of her time. An advocate-on-record at the Supreme Court, she is one of two state counsels for Karnataka. In her own practice, she handles headlining public interest cases, such as the ongoing trial of Dr Binayak Sen. Or she takes on pro bono clients who repay her in kolhapuri chappals and bags of bitter gourd. Other times, she makes 'decent money' from private clients. She has a four-year-old daughter. In her chambers, she sits under a picture of goddess Saraswati and seems to have as many hands.

But she isn't alone. "There are so many women who are competent and completely committed to their practice," Shenoy told Outlook, "We've reached the stage where we know we're getting there. Now that there are so many women in the Supreme Court, life is much easier for us."

In 1921, Cornelia Sorabjee was admitted to the bar, prompting a revision of the law that excluded female practitioners. Three generations and several pathbreaking careers later, a groundswell of young women is surging into the rough-and-tumble of the legal world (see box). More women are law students, practising advocates, judges and partners in corporate law firms than ever before.


"Just the bodily presence of women changes things."
Not too long ago, it was a very different story. "What has happened in the last ten years has been dramatic," says Kamini Jaiswal, a Supreme Court advocate who has been in legal practice for over three decades, "In the sixties and seventies, there were very few women lawyers. We went through really tough times, not only with the Bench but also with our colleagues at the Bar." Kamini speaks as a veteran, someone who was able to withstand the hostility that the male legal establishment poured on young women interlopers. "To sustain yourself you had to have a thick skin," she says, "I saw a lot of lady lawyers who didn't, who permanently lost their balance."

There were the inevitable efforts to undermine her reputation. "If you were a young working lawyer, you were treated as a woman of easy virtue, firstly by your clients and seniors," recalls Kamini. "Once you began to prove yourself, the talk shifted to insinuations—'What's going on in that barsati?' But there has been tremendous change—mostly because of women's strength in numbers."

Strength in numbers. It is a constant refrain from the young women advocates, in their late twenties and early thirties, who have entered the practice in the last decade.

"Just the bodily presence of women, I think, changes things," says Srimoyee Ghosh, a human rights litigator who opened an independent practice in Delhi last year. "The Bombay Family Courts is a fantastic experiment in how women's movements have made a difference to the culture of a courtroom. It's less formalistic, has more women judges and tonnes more women lawyers. "


In Portia's Court




(2 of 2)
"Just the bodily presence of women, I think, changes things," says Srimoyee Ghosh, a human rights litigator who opened an independent practice in Delhi last year. "The Bombay Family Courts is a fantastic experiment in how women's movements have made a difference to the culture of a courtroom. It's less formalistic, has more women judges and tonnes more women lawyers. "

"At one time, in fact, we were an 'all girls team' and outvoted the boys," says Kiran Khanna, a managing associate who handles mergers and acquisitions for a Bombay firm. "Corporate firms are certainly not chauvinist."


Courtrooms, however, sometimes still are. For all their mothballed conventions and antique atmosphere, the courts can be far from chivalrous. In 1997, the Supreme Court delivered a judgement referred to as Vishaka, mandating all employers to institute sexual harassment committees. But the Supreme Court Bar Association itself never formed one. In the same year, a study conducted by judges found that 65 per cent of women lawyers were often subjected to, or had often observed, sexual harassment from colleagues. Senior advocates still have a bit of a reputation for making sexual advances on female employees. "Some of my friends have faced sexual overtures from their seniors," says Anitha evenly. "It eventually forced them to leave their employment."

Last year, a Delhi High Court judge interjected while a young lawyer was in the middle of her arguments, saying he "knew how women lawyers make it"—implying that it was not by their intelligence or determination. Almost every young woman advocate recalls receiving patronising or inappropriate remarks from a judge (for obvious reasons, these statement were off the record). "The Bench still has a very sexist attitude," Kamini says. "They make rules for private workplaces to protect you, but in the courts there is no protection at all. It can be exasperating or humiliating, depending on how you choose to take it."

"Legal institutions are inherently patriarchal," says Aarti Mundkur, a founding member of Bangalore's Alternative Law Forum. "There is a feeling of being under a gaze in the premises of the court. Women friends who work in criminal law practice, especially, tell me about experiencing sexism. But you learn to deal with men in court the same way you deal with men on a bus. You find ways to tackle it and you go on."

It's encouraging to established lawyers that the face of discrimination has become less ugly in their tenure. Meenakshi Arora, who has been practising in the Supreme Court since 1985, notes, "the barriers are more subtle and hard to distinguish". Anitha has an example of subtle discrimination: clients pay her husband, also a lawyer, on time, "but they always try to shortchange me. My female colleagues have the same experience."

"I can confidently say that one cannot find a more gender-neutral territory than my chamber and the court precincts," says Aparajita Singh, a Supreme Court advocate. As junior to Harish Salve, she worked on some of the highest profile cases in recent years, such as the Uphaar cinema trial and the AIIMS reservations matter. "A client comes to you for your competence," she shrugs. "He is not bothered by your gender."

So, increasingly, young women lawyers are preoccupied only by the issues that bother young women everywhere.Such as what to wear. In Kamini's early career, judges referred to her as "the lady in pants". Ten years later, Meenakshi Arora was told she would never have clients until she switched to saris. Today, she says, "every second woman wears trousers," but the question persists. Even swanky corporate lawyers sometimes have to think twice. "There have been some hysterical moments involving older conservative male clients, whose experience of anyone with a Mrs tag implied a much older woman in a sari," says Kiran, "as opposed to someone younger in a designer suit!"

These barriers were scaled by hardy pioneers of the older generation; now they are being flattened by the march of the optimistic younger one. "There is no gainsay in saying that we have so few women judges, because there have been so few women advocates all along," says Meenakshi "With the number of advocates that this generation has, they may break through those last barriers."

But they are now encountering a barrier that may never be easy to overcome—raising a child while pushing your career. Some branches of law, such as corporate practice, make life easier for mothers. "The love for law coupled with being a corporate lawyer permits me to be a mother and a working woman," Kiran says. "Balancing both is easier than it would be for a litigator."

Anitha is discovering that herself. "It's really hard to be a driven lawyer and a mother," she sighs. "You can't have a social life—you can't even be much of a wife—and I can't give my daughter a lot of time." Reflecting for a moment on her brutal schedule, she adds, "A lot of the presently successful senior women lawyers aren't married, or they haven't had children. If the present lot do make it and we can meet the challenge of raising children as well, that might be our greatest achievement."



Courtesy : outlook

S O X

Sarbanes-Oxley Essential Information


What the term 'Sarbanes-Oxley' stands for
Senator Paul Sarbanes and Representative Michael Oxley, who drafted the Sarbanes-Oxley Act of 2002. If you want to read more about the authors of this act, start with our Sarbanes and Oxley page.

The intent of the the Sarbanes-Oxley Act
To protect investors by improving the accuracy and reliability of corporate disclosures made pursuant to the securities laws, and for other purposes.

What the Act is about
The Sarbanes-Oxley Act created new standards for corporate accountability as well as new penalties for acts of wrongdoing. It changes how corporate boards and executives must interact with each other and with corporate auditors. It removes the defense of "I wasn't aware of financial issues" from CEOs and CFOs, holding them accountable for the accuracy of financial statements. The Act specifies new financial reporting responsibilities, including adherance to new internal controls and procedures designed to ensure the validity of their financial records.

Sarbanes-Oxley Audits
The Act requires all financial reports to include an internal control report. This is designed to show that not only are the company's financial data accurate, but the company has confidence in them because adequate controls are in place to safeguard financial data. Year-end financial reports must contain an assessment of the effectiveness of the internal controls. The issuer's auditing firm is required to attest to that assessment. The auditing firm does this after reviewing controls, policies, and procedures during a Section 4040 audit, conducted along with a traditional financial audit.

The Act itself
We have essential information about the act on our Act page, along with a list of key sections of the act, key dates,and links to more detail.

Talking the talk
Before you go much further, you're going to have to know FinancialSpeak, ControlsSpeak, and AuditingSpeak. Here's a Financial Glossary and a Governance Glossary to get you started. Here are definitions and key concepts from COSO, a Post-Enron Lexicon for Wall Street, and a Securities Fraud Glossary. The PCAOB has issued official definitions of certain terms used in auditing and related professional practice standards.

Why Congress thought the Act was needed
The US Sarbanes-Oxley Act was passed in the wake of a myriad of corporate scandals. What these scandals had in common was skewed reporting of selected financial transactions. For instance, companies such as Enron, WorldCom and Tyco covered up or misrepresented a variety of questionable transactions, resulting in huge losses to stakeholders and a crisis in investor confidence. How did Congress think the Act would address the problem? Sarbanes-Oxley aims to enhance corporate governance and strengthen corporate accountability. It does that by:
formalizing and strengthening internal checks and balances within corporations
instituting various new levels of control and sign-off designed to
ensure that financial reporting exercises full disclosure
corporate governance is transacted with full transparency.

If a company isn’t in compliance...
What happens depends on which section of the act they’re out of compliance with. Non compliance penalties range from the loss of exchange listing, loss of D&O insurance to multimillion dollar fines and imprisonment. It can result in a lack of investor confidence. A CEO or CFO who submits a wrong certification is subject to a fine up to $1 million and imprisonment for up to ten years. If the wrong certification was submitted "willfully", the fine can be increased up to $5 million and the prison term can be increased up to twenty years.

Who the Act applies to
SOX applies to all public companies in the U.S. and international companies that have registered equity or debt securities with the Securities and Exchange Commission and the accounting firms that provide auditing services to them.

Is the Act of concern to US companies only?
Here’s a great answer from ISACA: “No, there are potential international implications as well. In fact, among the many factors that must be considered in complying with Sarbanes-Oxley, some will uniquely impact international organizations. Specifically, global organizations, or non-US-based companies that are required to comply with Sarbanes-Oxley, need to examine their IT operations and determine if they are significant to the organization as a whole. Significant business units can include financial business units or IT business units. The assessment of whether an IT business unit is significant can be impacted by the materiality of transactions processed by the IT business unit, the potential impact on financial reporting if an IT business unit fails and other qualitative risk factors. The issue is that there are financial materiality and significant risk considerations, quantitative and qualitative, and both aspects provide focus.”

Constitutional Law

Right To Information: Its Scope And NeedBy
Information : What it means and to whomThe phrase freedom of information has itself become a subject of debate in India. Many local activists and legal experts prefer to use the term right to information as they see freedom as signifying mere prohibition of Government interference, whereas applying the term right imposes a positive duty on the Government to disseminate information to the people. In the Indian Constitution, most of the freedoms enumerated in Article 19, which guarantees freedom of expression, require the State to refrain from interfering. A right, on the other hand, is understood in India as placing a positive duty on the State to take steps to ensure its fulfilment. Madhav Godbole, the erstwhile Union Home Secretary and Right to Information Activist, says in his critique on the Freedom of Information Bill, 2000, “Since the Bill makes it a point to talk only about freedom of information as opposed to right to information, it has lent itself to some clumsy construction ... all citizens have a right to information.”
Two aspects of the right to information are particularly important to the current debate:(1) information to which access must be given upon request; and(2) information which must be published and disseminated suo motu (proactively) by public authorities, including information which would affect fundamental rights such as food, environment and civil liberties. Particular emphasis is being paid to suo motu publication, given the background of illiteracy and poverty that prevails in most parts of the country.
Although information in the current debate refers primarily to information held by public authorities, strong arguments can be made to extend the scope of the term to certain kinds of information held by private parties. The right to information would then become a right to seek and receive information from public authorities, as well as a right to access certain kinds of information from private actors.
The right to information derives from the democratic framework established by the Constitution and rests on the basic premise that since the Government is for the people, it should be open and accountable and should have nothing to conceal from the people it purports to represent. In this context, the following observation seems to sum up the philosophical basis of the right to information:
In a Government of responsibility like ours, where all the agents of the public must be responsible for their conduct, there can be but a few secrets. The people of this country have a right to know every public act, everything that is done in a public way, by their public functionaries. They are entitled to know the particulars of every public transaction in all its bearing. The right to know which is derived from the concept of freedom of speech, though not absolute, is a factor which should make one way, when secrecy is claimed for transactions which can, at any rate, have no repercussion on public security. To cover with veil of secrecy the common routine business is not in the interest of the public. Such secrecy can seldom be legitimately desired. It is generally desired for the purpose of parties and politics or personal self-interest or bureaucratic routine. The responsibility of officials to explain or to justify their acts is the safeguard against oppression and corruption.
The need for the right to informationInformation is the currency that every citizen requires to participate in the life and governance of society. The greater the access of the citizen to information, the greater would be the responsiveness of the Government to community needs. Alternatively, the greater the restrictions that are placed on access, the greater the feelings of powerlessness and alienation. Without information, people cannot adequately exercise their rights and responsibilities as citizens or make informed choices. Government information is a national resource. Neither the particular Government of the day nor public officials create information for their own benefit. This information is generated for purpose related to the legitimate discharge of their duties of office, and for the service of the public for whose benefit the institutions of the Government exist, and who ultimately (through one kind of import or another) fund the institutions of the Government and the salaries of officials. It follows that the Government and officials are trustees of this information for the people.
The net result of secrecy has been disempowerment of common people and their exclusion from processes which vitally affect their existence. Information on matters such as employment schemes, obtaining certificates for various purposes, recommendations for different types of loans, access to different poverty alleviation programmes, irrigation, drinking water, sanitation and education is a must for ordinary people, whether provided proactively or on request.
In recent years, the historic lack of information on these and other matters has been mitigated by factors such as the growth of democratic values, the information revolution and the decentralisation of governance through the Gram Panchayats (village elected bodies), which are responsible for all of the issues noted in the preceding paragraph. However, although political power has been decentralised, the problem of gaining access to information remains at the level of local officials, who are often reluctant to be open because they represent vested interests or are party to corruption and misappropriation of funds.
An antidote to corruptionIndia has the dubious tag of being the twentieth most corrupt nation in a recently compiled list of 91 countries around the world. This is consistent with most people’s everyday experiences; corruption in India is rampant, from the common clerk to the highest offices of the country. Big scams, for example, regarding defence deals, fodder procurement and sugar prices have frequently made the headlines. People even have to pay bribes to access basic information, such as their own electricity bills. The right to information is thus a potent tool for countering corruption and for exposing corrupt officials.
Limiting abuse of discretionOfficials can abuse their discretion to suit various political or other vested interests, as well as to misappropriate funds. For instance, the power given to Collectors to allocate tribal land to non-tribal people or to convert agricultural land to non-agricultural land has been seriously misused all over the country. Since these are administrative matters, they tend to be hidden from disclosure, fostering abuse of power. While in theory it is possible to obtain a State High Court order to compel disclosure of this information, in practice this is not possible for poor indigenous people or villagers, given the cost, distance and delays involved. The right to information is therefore important to check abuse of administrative discretion and to ensure fair process.
Protection of civil libertiesThe right to information is also necessary for protecting civil liberties, for example, by making it easier for civil society groups to monitor wrongdoing such as encounter killings or the abuse of preventive detention legislation. The fact that the authorities regularly refuse to release information to civil society on such issues is indicative of the need for right to information legislation.
Knowledge of various schemesFood, shelter, livelihood and education, the most important aspects of a person’s life, are provided in most rural areas through numerous schemes run by the Central or the State Government.
In most cases, people do not know about the existence of these schemes, or at least salient details, such as their entitlements under the scheme, paving the way for them to be tricked into accepting less than their allocation through forgery. Furthermore, records are often tampered with, a relatively simple practice because no one outside the tight-knit governmental circle has access to them.
Land and lack of information about land entitlements and records is a major problem, especially since nearly two-third of the population is dependent on agriculture. A regular complaint with rural people is the inability to access their own land records. To get a copy of their patta is difficult. Not only are there delays and repeated time-consuming visits to various offices, but they also routinely have to pay bribes to the Patwari, the Tahsildar or the Block Development Officer (BDO). Lack of access to land records and knowledge about land laws have led to frequent instances of land-grabbing by powerful people.
Health schemes are rarely advertised sufficiently to enable people to benefit from them. The anti-polio campaign is a case in point.
Environmental issues like contamination of groundwater have a direct effect on people’s lives and yet very little information on these problems is available. The case of Union Carbide Corporation is long-familiar in this aspect.
Consumer information is another area where it is important to have proactive dissemination of information, and consumer groups are fighting for stricter labelling laws on domestic as well as foreign products, especially food and medicines. Mandatory labelling of non-vegetarian products has recently been approved by the Government under the Prevention of Food Adulteration Act.
Participation Participation in political and economic processes and the ability to make informed choices is restricted to small elite in India. Consultation on important policy matters, even when they directly concern the people, is rare. Even where consultation is mandatory, for example under the Environment Protection Act, information sharing is limited, undermining the whole consultative process. Furthermore, reports pertaining to those consultations are difficult to access.
The need for more openness as an aspect of democratic and effective governance has been accepted not only by international organisation like World Bank (which is presently conducting a widespread consultation on how best to strengthen its disclosure policy), but also by private enterprise. A recent industry report on infrastructure development made a strong case for greater transparency.
Knowledge of laws and policiesIndia has some very progressive legislations, backed up by progressive court judgments, but these laws are often largely confined to the books and fail to be fully implemented because they have not been effectively disseminated. For example, for years after the forest laws were put into place, few people understood the conditions they created on cutting down trees, leading to harassment and threats by local forest officials against villagers for cutting on their own land. In Madhya Pradesh, it was reported that any pink-coloured paper could be used to exploit indigenous people as they identify it as a penalty slip for violating forest laws.
Elixir for the mediaThe need for the media to be able to access information is of crucial importance in India, as it is elsewhere in the world. The media provides a link between the people and their Government and acts as a vehicle of mobilisation. This role is particularly important in India, where the media played a major role in the freedom struggle as well as during the period of internal emergency, when civil and political rights were suspended. The media’s right to information is not a special privilege but rather an aspect of the public’s right to know, which the media play a key role in ensuring. This view finds support in statements of the Supreme Court of India in cases involving claims of press freedom.
As rightly pointed out by Ralph Nader, “Information is the currency of democracy.” We call this an age of information, which makes right to information inevitable. India presents a mixed picture with much secrecy legislation still in place restricting the free flow of information, but at the same time some significant developments at State level in terms of promoting freedom of information laws, as well as draft national legislation. Unfortunately, the draft law presently being considered by the Central Government is woefully inadequate. It is essential that decision-makers fundamentally rework this draft, to ensure that legislation is passed which protects the public’s right to know and promotes the free flow of information in India.


Courtesy : Dr. Minal M. Bapat*

Explanation of the WTO Agreement on Textiles and Clothing

Agreement on Textiles and Clothing

The object of this negotiation has been to secure the eventual integration of the textiles and clothing sector — where much of the trade is currently subject to bilateral quotas negotiated under the Multifibre Arrangement (MFA) — into the GATT on the basis of strengthened GATT rules and disciplines.

Integration of the sector into the GATT would take place as follows : first, on 1 January 1995; each party would integrate into the GATT products from the specific list in the Agreement which accounted for not less than 16 per cent of its total volume of imports in 1990. Integration means that trade in these products will be governed by the general rules of GATT.

At the beginning of Phase 2, on 1 January 1998, products which accounted for not less than 17 per cent of 1990 imports would be integrated. On 1 January 2002, products which accounted for not less than 18 per cent of 1990 imports would be integrated. All remaining products would be integrated at the end of the transition period on 1 January 2005. At each of the first three stages, products should be chosen from each of the following categories: tops and yarns, fabrics, made-up textile products, and clothing.

All MFA restrictions in place on 31 December 1994 would be carried over into the new agreement and maintained until such time as the restrictions are removed or the products integrated into GATT. For products remaining under restraint, at whatever stage, the agreement lays down a formula for increasing the existing growth rates. Thus, during Stage 1, and for each restriction previously under MFA bilateral agreements in force for 1994, annual growth should be not less than 16 per cent higher than the growth rate established for the previous MFA restriction. For Stage 2 (1998 to 2001 inclusive), annual growth rates should be 25 per cent higher than the Stage 1 rates. For Stage 3 (2002 to 2004 inclusive), annual growth rates should be 27 per cent higher than the Stage 2 rates.

While the agreement focuses largely on the phasing-out of MFA restrictions, it also recognizes that some members maintain non-MFA restrictions not justified under a GATT provision. These would also be brought into conformity with GATT within one year of the entry into force of the Agreement or phased out progressively during a period not exceeding the duration of the Agreement (that is, by 2005).

It also contains a specific transitional safeguard mechanism which could be applied to products not yet integrated into the GATT at any stage. Action under the safeguard mechanism could be taken against individual exporting countries if it were demonstrated by the importing country that overall imports of a product were entering the country in such increased quantities as to cause serious damage — or to threaten it — to the relevant domestic industry, and that there was a sharp and substantial increase of imports from the individual country concerned. Action under the safeguard mechanism could be taken either by mutual agreement, following consultations, or unilaterally but subject to review by the Textiles Monitoring Body. If taken, the level of restraints should be fixed at a level not lower than the actual level of exports or imports from the country concerned during the twelve-month period ending two months before the month in which a request for consultation was made. Safeguard restraints could remain in place for up to three years without extension or until the product is removed from the scope of the agreement (that is, integrated into the GATT), whichever comes first.

The agreement includes provisions to cope with possible circumvention of commitments through transshipment, re-routing, false declaration concerning country or place of origin and falsification of official documents.

The agreement also stipulates that, as part of the integration process, all members shall take such actions in the area of textiles and clothing as may be necessary to abide by GATT rules and disciplines so as to improve market access, ensure the application of policies relating to fair and equitable trading conditions, and avoid discrimination against imports when taking measures for general trade policy reasons.

In the context of a major review of the operation of the agreement to be conducted by the Council for Trade in Goods before the end of each stage of the integration process, the Council for Trade in Goods shall by consensus take such decisions as it deems appropriate to ensure that the balance of rights and obligations in this agreement is not upset. Moreover, the Dispute Settlement Body may authorise adjustments to the annual growth of quotas for the stage subsequent to the review with respect to Members it has found not to be complying with their obligations under this agreement.

A Textiles Monitoring Body (TMB) oversees the implementation of commitments and to prepare reports for the major reviews mentioned above. The agreement also has provisions for special treatment to certain categories of countries — for example, those which have not been MFA members since 1986, new entrants, small suppliers, and least-developed countries.


Note: this Agreement was terminated on 1 January 2005.

Nokia Corporation v. Nokia India Private Limited

Nokia Corporation v. Nokia India Private Limited

Case No. D2006-0080




1. The Parties

The Complainant is Nokia Corporation, Espoo, Finland, represented by Sen-Oberoi, India.

The Respondent is Nokia India Private Limited, Bangalore, Karnataka, India.


2. The Domain Name and Registrar

The disputed domain name is registered with Register.com.


3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2006. On January 18, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On January 18, 2006, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2006.

The Center appointed Andrew Mansfield as the sole panelist in this matter on March 8, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.


4. Factual Background

Complainant is the leading manufacturer of mobile phones and accessories in nearly every country in the world. Complainant has one-third of the world’s market share for mobile phones. The Complainant’s trademark NOKIA is famous in most countries of the world by virtue of long, extensive, and continuous use for nearly a century. In 2005, Interbrand Corporation ranked NOKIA as the sixth most valuable trademark in the world.

Worldwide, Nokia has registered 429 trademarks, with one in nearly every state. In India, Complainant holds trademark registration 466,090 to the word NOKIA. Complainant has eight additional trademark applications pending in India.

Complainant operates a website at “www.nokia.com” that links to various other websites divided on the basis of geographical location and type of product.


5. Parties’ Contentions

A. Complainant

Complainant asserts that the domain name is identical or confusingly similar to its trademark NOKIA. The domain name contains the exact letters that constitute NOKIA in English and adds “ind,” a common abbreviation for India.

Complainant asserts that Respondent has no rights or legitimate interests in the domain name. Complainant has not authorized Respondent to register or use the domain name or any trademark forming part of it. Complainant also informs the Panel that it is not aware of a company named NOKIA India PVT and that the domain name was registered under this false company name by Respondent in order to make the registration appear legitimate.

Complainant asserts that the domain name was registered and is being used in bad faith. Respondent has operated a commercial website at the domain name selling Complainant’s products or unauthorized copies of Complainant’s products since November of 2005. Respondent links to information on Complainant’s legitimate website, thus increasing the likelihood of confusion engendered by the domain name in the minds of the average user. Respondent is using Complainant’s trademark and copyrighted material without permission. Complainant argues that Respondent is obviously well aware of Complainant’s trademark NOKIA. Finally, Respondent misrepresented itself to the Registrar by failing to provide a complete and accurate physical address.

B. Respondent

The Respondent, even though properly notified of the proceedings, did not reply to the Complainant’s contentions.


6. Discussion and Findings

In order to succeed in its Complaint the Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used by the Respondent in bad faith.

The Panel proceeds to deal with each of these elements in turn.

A. Identical or Confusingly Similar

The domain name consists of Complainant’s famous mark NOKIA plus the letters IND. Complainant has proven that it is the owner of the trademark NOKIA. It has long been held that domain names that entirely incorporate a trademark, such as the case here, may be confusingly similar to the trademark. Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 (January 6, 2004) (); Bayerische Motoren Werke AG v. DLR, WIPO Case No. D2001-1231 (December 14, 2001) (). The addition of a geographic identifier to a trademark may also render a domain name confusingly similar to a trademark. Honda Motor Company Limited v. LOKITA Enterprises, WIPO Case No. D2003-0507 (August 8, 2003) ().

The Panel finds that the domain name is confusingly similar to Complainant’s trademark NOKIA. The addition of the three letters IND, even if used as a place indicator, do not reduce the confusing similarity between the domain name and the mark but serve to increase it, instead.

B. Rights or Legitimate Interests

The Complainant has made out an initial prima facie case that the Respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. By matter of default, Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel notes that, even though not contended by the Respondent, a respondent may have rights or legitimate interests to a domain name as a reseller. This is discussed further under the third element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Respondent is using the domain name to intentionally attract customers to its website under the misrepresentation that its website is licensed, sanctioned, or operated by Nokia. There is substantial and undeniable likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website. Nevertheless, Respondent may be allowed to make use of the NOKIA trademark if it is a reseller of Complainant’s goods and thus had a legitimate interest in the domain name.

The majority view of panels considering whether a reseller of products may use the trademark of such products in a domain contains several requirements. A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements if: (1) Respondent actually offers goods and services at issue; (2) Respondent uses the site to sell only the trademarked goods; and, (3) the site accurately discloses the registrant’s relationship with the trademark owner.

Respondent fails the third prong of this test. There is no disclosure on Respondent’s website of the relationship between Respondent and Complainant. In fact, the website is intentionally created to look like the official Indian website of Complainant.

Finally, the Panel notes that Respondent failed to provide an accurate mailing address to the registrar. The Panel takes this failure to provide accurate information as further indication of bad faith, as has been done by prior panels. Forte Communications, Inc. v. Service for Life, WIPO Case No. D2004-0613 (September 22, 2004).

Complainant has satisfied this element of the Policy.


7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.

Moseley versus V Secret Catalogue Inc [VICTORIA'S SECRET CASE]

Victoria's Secret case sends message - An Advertising Supplement - a discussion of the U.S. Supreme Court's decision in Moseley versus V Secret Catalogue Inc
Los Angeles Business Journal, May 12, 2003 by Christopher C. Larkin
In March, the U.S. Supreme Court for the first time addressed the question of trademark dilution, when it issued its decision in Moseley v. V Secret Catalogue, Inc. popularly known as the Victoria s Secret case. Despite the unanimity of the decision, however, the majority and concurring opinions left open key questions, setting the stage for additional litigation on the uncertain parameters of trademark dilution, or possible legislative action.

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The United States Trademark Act, or Lanham Act, deals primarily with trademark infringement, based on the policy that consumers should be able to use marks to accurately identify the source or sponsorship of goods and services. The use of a junior trademark that is identical or very similar to a famous trademark on very different goods or services often may not cause consumer confusion and therefore not result in infringement. In 1995, the Federal Trademark Dilution Act (FTDA) was added to the Lanham Act to protect owners of famous trademarks against having their marks lose uniqueness due to the use of the same or a very similar mark by others even where there is no likelihood of consumer confusion.

When the FTDA was enacted, about half the states already had their own dilution statutes. The FTDA s biggest difference from those statutes was its requirement that the defendants use of a mark causes dilution of the distinctive quality of the famous mark, rather than the mere likelihood of injury to the famous mark s reputation. But in construing this language in the FTDA, the Fourth and Fifth Circuits held that the owner of a famous mark must show actual dilution, such as measurable economic harm to the mark, while the Second and Seventh Circuits held that a showing that dilution is likely to occur in the future is sufficient. The Moseley case turned on this question.

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The case arose when Victoria s Secret, the famous lingerie retailer, discovered that an adult-themed novelty store was operating as Victor s Secret. When asked to change its name, proprietor Victor Moseley adopted Victor s Little Secret, but Victoria s Secret filed suit, claiming that the new name diluted its mark by blurring its distinctiveness and tarnishing its reputation through association with lewd subject matter. The federal district court in Louisville, Kentucky granted summary judgment on Victoria s Secret dilution claim and the Sixth Circuit affirmed, but the Supreme Court unanimously reversed the Sixth Circuit and sent the case back to the lower courts for trial.

Justice Stevens opinion for the Court addressed whether objective proof of actual injury to the economic value of a famous mark (as opposed to a presumption of harm arising from a subjective likelihood of dilution standard) is a requisite for relief under the FTDA. In his opinion, the Court held that the FTDA does require proof of actual dilution, but not proof of actual lost sales or profits. Justice Stevens wrote that at least where the marks at issue are not identical, the mere fact that consumers mentally associate the junior users mark with a famous mark is not sufficient to establish actionable dilution.

Justice Stevens opinion did not specify what type of direct evidence, such as a consumer survey, might prove actual dilution. But in emphasizing the fact that the marks in Moseley were not identical, he suggested that less proof might suffice to show actual dilution where the marks are identical. He wrote that tilt may well be... that direct evidence of dilution such as consumer surveys will not be necessary if actual dilution can reliably be proven through circumstantial evidence the obvious case is one where the junior and senior marks are identical. Here again, however, his opinion did not explain what sort of circumstantial evidence (beyond the identity of the marks) might be needed in that fact situation.

A short concurring opinion by Justice Kennedy did not clarify these issues. Although he joined Justice Stevens opinion for the Court, Justice Kennedy wrote that [w]hen a competing mark is first adopted, there will be circumstances when the case can turn on the probable consequences its commercial use will have for the famous mark. In Justice Kennedy s view, [a] holder of a famous mark threatened with diminishment of the marks capacity to serve its purpose should not be forced to wait until the damage is done and the distinctiveness of the mark has been eroded, and should be able to obtain a prompt injunction. Justice Kennedy s views seem inconsistent with the Courts opinion that he joined, particularly with the Courts holding that actual dilution must be shown in all cases.

In Moseley, the Court failed to set clear guidelines for lower courts faced with FTDA claims. Although it is clear that actual dilution is now the standard for relief, the Court did not provide any guidance as to how that standard may be satisfied. Moseley makes it more difficult for owners of famous marks to obtain relief under the FTDA, but leaves open many questions for future resolution in litigation or by amendment to the FTDA.

Patent - Diamond Vs Chakrabarty

Diamond v. Chakrabarty, 447 U.S. 303 (1980), was a United States Supreme Court case dealing with whether genetically modified micro-organisms can be patented.

Contents [hide]
1 Background
2 Decision
3 Ruling
4 Dissent
5 External links



[edit] Background
Genetic engineer Ananda Mohan Chakrabarty, working for General Electric, had developed a bacterium (derived from the Pseudomonas genus) capable of breaking down crude oil, which he proposed to use in treating oil spills. He requested a patent for the bacterium in the United States but was turned down by a patent examiner, because the law dictated that living things were not patentable.

The Patent Office Board of Appeals agreed with the original decision; however, the United States Court of Customs and Patent Appeals overturned the case in Chakrabarty's favor, writing that "the fact that micro-organisms are alive is without legal significance for purposes of the patent law." Sidney A. Diamond, Commissioner of Patents and Trademarks, appealed to the Supreme Court.

The Supreme Court case was argued on March 17, 1980 and decided on June 16, 1980.


[edit] Decision
In a 5-4 ruling, the court ruled in favor of Chakrabarty, and upheld the patent, holding that:

A live, human-made micro-organism is patentable subject matter under [Title 35 U.S.C.] 101. Respondent's micro-organism constitutes a "manufacture" or "composition of matter" within that statute.

[edit] Ruling
Chief Justice Warren E. Burger wrote the decision, and was joined by Potter Stewart, Harry Blackmun, William Rehnquist, and John Paul Stevens.

Burger wrote that the question before the court was a narrow one - the interpretation of 35 U.S.C. 101, which says:

"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."
He wrote that:

We have [in earlier ruling 289 U.S. 178] cautioned that courts "should not read into the patent laws limitations and conditions which the legislature has not expressed."
Regarding the scope of the original legislation, he wrote:

In choosing such expansive terms as "manufacture" and "composition of matter," modified by the comprehensive "any," Congress plainly contemplated that the patent laws would be given wide scope.
Finding that Congress had intended patentable subject matter to "include anything under the sun that is made by man," he concluded that:

Judged in this light, respondent's micro-organism plainly qualifies as patentable subject matter. His claim is ... to a nonnaturally occurring manufacture or composition of matter - a product of human ingenuity.

[edit] Dissent
The dissenting opinion was written by William J. Brennan, who was joined by Byron White, Thurgood Marshall, and Lewis Franklin Powell.

Brennan's dissent focused on the argument that there is evidence in the legislative record that Congress did not intend living organisms to be patented.

We must be careful to extend patent protection no further than Congress has provided.
Brennan noted that "we do not confront a complete legislative vacuum", and commented on the 1930 Plant Patent Act and 1970 Plant Variety Protection Act, which explicitly allow patents for plants in certain cases:

The Acts evidence Congress' understanding, at least since 1930, that 101 does not include living organisms. If newly developed living organisms not naturally occurring had been patentable under 101, the plants included in the scope of the 1930 and 1970 Acts could have been patented without new legislation.
Therefore:

Because Congress thought it had to legislate in order to make agricultural "human-made inventions" patentable and because the legislation Congress enacted is limited, it follows that Congress never meant to make items outside the scope of the legislation patentable.
And with regard to the specifics of the 1970 act:

Congress specifically excluded bacteria from the coverage of the 1970 Act ... The fact is that Congress, assuming that animate objects as to which it had not specifically legislated could not be patented, excluded bacteria from the set of patentable organisms.

[edit] External links
Complete ruling
Retrieved from "http://en.wikipedia.org/wiki/Diamond_v._Chakrabarty"

Aerotel case - Patent

Aerotel v Telco and Macrossan's application
From Wikipedia, the free encyclopedia
Jump to: navigation, search
Aerotel v Telco and Macrossan's application[1] is a judgment by the Court of Appeal of England and Wales. The judgment was passed down on 27 October 2006 and relates to two different appeals from decisions of the High Court. The first case involved GB patent 2171877[2] granted to Aerotel Ltd and their infringement action against Telco Holdings Ltd and others. The second case concerned GB patent application 2388937 filed by Neal Macrossan but refused by the UK Patent Office, now operating as the UK Intellectual Property Office.

The reasoning in the judgment forms the basis for the current practice of the UK Intellectual Property Office, when assessing whether patent applications are for patentable subject matter.

The approach applied in the judgment has been criticized by a Board of Appeal of the European Patent Office (EPO) as being "irreconcilable with the European Patent Convention".[3]

Contents [hide]
1 History
1.1 Aerotel's patent
1.1.1 Application procedure
1.1.2 High Court
1.2 Macrossan's application
1.2.1 Application procedure
1.2.2 High Court
2 Judgment
2.1 Aerotel v Telco
2.2 Macrossan's application
2.3 Reasoning
2.4 Criticism of a practice of the European Patent Office
3 Appeal to House of Lords
4 Effects
4.1 UK Intellectual Property Office
4.2 High Court of England and Wales
5 Parallel procedure before the European Patent Office
6 Criticism
7 References
8 See also
9 External links



[edit] History

[edit] Aerotel's patent

[edit] Application procedure
Zvi Kamil, an Israeli inventor, filed his UK patent application number 8600691 for a "telephone system" on 13 January 1986, claiming priority from two previous Israeli patent applications filed on 13 January 1985 and 10 November 1985. The application related to a "special" telephone exchange. A caller has an account with the owner of that exchange and deposits a credit with him. The caller has a code. To make a call he calls the number of the special exchange and inputs his code and then the callee's number. If the code is verified and there is enough credit he is put through: the call will be terminated if his credit runs out.

The application was published as GB patent application 2171877 on 3 September 1986 and the patent was granted with effect from 21 December 1988. Kamil assigned his patent to Aerotel Limited on 12 April 1999. The patent expired on 12 January 2006.[4]


[edit] High Court
Aerotel sued Telco Holdings Limited for patent infringement in February 2005 and Telco counterclaimed for revocation of the patent. The action started in the Patents County Court, but HHJ Fysh QC transferred it to the High Court in November 2005. In February 2006, Telco applied for summary judgment on its counterclaim, basing the application on the exclusion to patentability. This application succeeded before Lewison J who ordered revocation of the patent on 3 May 2006.[5][6][7]


[edit] Macrossan's application

[edit] Application procedure
Macrossan's GB patent application 2388937 has a December 2000 priority date. It was for a new automated method of acquiring the documents necessary to incorporate a company. It involved a user sitting at a computer and communicating with a remote server, answering questions. By posing questions to the user in a number of stages, enough information was gleaned from the user's answers to produce the required documents. Questions posed in the second and subsequent stages were determined from previous answers provided and the user's answers were stored in a database structure. This process was repeated until the user had provided enough information to allow the documents legally required to create the corporate entity to be generated. A number of document templates were also stored and the data processor was configured to merge at least one of these templates with the user's answers to generate the required legal documents. The documents could then be sent to the user in an electronic form for the user to print out and submit, mailed to the user, or submitted to the appropriate registration authority on behalf of the user.

The UK patent office did find that Macrossan's process was both novel and involved an inventive step, but nonetheless rejected the application for a patent since the claimed subject matter was not patentable subject matter under UK patent law.[8]. The UK patent examiner found that the claims related to a method for doing business and a computer program as such.

Macrossan sought a review of the patent examiner's finding, by way of a hearing before a UKPO hearing officer - she held[8] that the application related to a computer program as such, a method for doing business as such, and a method for performing a mental act as such, and thus was excluded from patentability on each of those three grounds.


[edit] High Court
Macrossan then appealed to the High Court. The High Court concurred in finding[9] that the application related to a computer program as such, and to a method for performing a mental act as such and was unpatentable for each of those two reasons. However the High Court specifically overruled the UKPO hearing officer on one of the three grounds of exclusion, by holding[10] that the application did not relate to a method of doing business as such.


[edit] Judgment
The judgment approved a new four-step test to be used when assessing whether or not an application actually describes an invention. The four-step test is as follows:

Properly construe the claim;
Identify the actual contribution;
Ask whether the contribution falls solely within excluded subject matter; and
Check whether the contribution is technical in nature.
The second step, that of identifying the contribution, was highlighted as being the most problematical since it may be difficult to determine what the contribution actually is.


[edit] Aerotel v Telco
Aerotel's patent was found to relate to a patentable invention in principle because the system as a whole was new in itself, not merely because it is to be used for the business of selling phone calls. While this system could be implemented using conventional computers, the key to it was a new physical combination of hardware. The judge felt that this was clearly more than just a method of doing business as such. The method claims were construed as relating to a use of the new system and were also deemed to relate to a patentable invention in principle. The additional questions of whether the claimed invention was novel and involved an inventive step were not considered directly by the judge, although the implication is that the invention was at least novel.


[edit] Macrossan's application
In relation to Macrossan's patent application, it was held that the subject matter was unpatentable on the grounds of the computer program and business method exclusions. However in relation to the mental act exclusion, the Court of Appeal made no specific finding.[11]


[edit] Reasoning
In both cases, the judgment does not explain in detail how the contributions provided by the claimed inventions were identified and provides little guidance for how the second step of the test could be carried out in other cases.[12] Instead, the reader is directed to the lengthy summary of past case law that is included as an Appendix to the judgment to understand the reasoning of the judges fully. Based on this summary of the case law, the judgment rejects the notion set out in the earlier judgment concerning Fujitsu's application that the UK Courts should be guided by the case law of the EPO since the judges were of the opinion that EPO case law was too unsettled.

The judgment briefly mentions[13] the TRIPS agreement and the fact that its lack of a list of exclusions from patentability and its requirement that patents should be available in "all fields of technology" puts political pressure on Europe to remove or reduce the categories of non-inventions. However, Jacob had previously ruled[14][15] that TRIPS does not have direct effect on UK law and thus did not affect the case in question. Instead, cases relating to the exclusions from patentability must be decided by simply trying to make sense of the language of the EPC without bias for or against exclusion.[16]


[edit] Criticism of a practice of the European Patent Office
The judgment proposes several questions to be put to the Enlarged Board of Appeal in an effort to resolve the perceived conflicts between the different decisions of the Boards of Appeal. In response to this, Alain Pompidou, president of the European Patent Office (EPO), wrote to Lord Justice Jacob to say that while clarification of certain issues relating to excluded subject matter would be welcomed, there were currently insufficient differences between relevant Board of Appeal decisions that would justify a referral. Instead, a referral would be appropriate if the approach taken by one Board of Appeal would lead to the grant of a patent whereas the approach taken by another Board would not.[17]

The practice of the EPO to deem non-technical subject matter, such as new music or a story, as part of the prior art was criticised as not being intellectually honest.[18] A similar criticism was also raised during appeal T 1284/04, in response to which the Board of Appeal stated that:

“ the COMVIK approach does not consider the non-technical constraints as belonging to the prior art, but rather as belonging to the conception or motivation phase normally preceding an invention since they may lead to a technical problem without contributing to its solution. Such aspects have never been taken into account for assessing inventive step, irrespective of whether or not they were known from the prior art.[19] ”

See also: Criticism section below.

[edit] Appeal to House of Lords
Citing as reasons a clear divergence in reasoning between the UK courts and the European Patent Office, Neal Macrossan sought leave to appeal the refusal of his patent application to the House of Lords.[20][21] Within the patent profession it was hoped that a ruling by the House of Lords would clarify the extent to which patent protection is available to computer-implemented inventions. The House of Lords had already tackled fundamental questions such as novelty[22], inventive step[23], claim construction and sufficiency[24] during 2004 and 2005.

The House of Lords refused leave to hear the appeal, citing the reason that the case "does not raise an arguable point of law of general public importance".[25][26][27]

Some patent attorneys have expressed surprise at this decision since, while the merits of Macrossan's case might have been arguable, it was felt that there are issues with the law that require resolving. Consequently, there is disappointment at this missed opportunity to better establish where the boundary lies between patentable and non-patentable software. The Foundation for a Free Information Infrastructure have expressed the view that the decision of the House of Lords confirms that the correctness of the Court of Appeal.[28][29]


[edit] Effects

[edit] UK Intellectual Property Office
Main article: Software patents under United Kingdom patent law
Following this judgment, the UK Patent Office (now the UK Intellectual Property Office) issued a Practice Note[30] on 2 November 2006 announcing an immediate change in the way patent examiners will assess whether inventions relate to patentable subject matter. The Patent Office also prepared four case studies as examples of how they saw the test being applied in practice.[31]


[edit] High Court of England and Wales
The first judgment of the High Court[32] following the Aerotel/Macrossan judgment concerned two appeals filed from decisions of the UK Patent Office to refuse applications of Cappellini and Bloomberg. Taking the lead from Jacob LJ's approach of killing two birds with one stone in Aerotel/Macrossan, Pumfrey J decided that, since the decisions raised similar questions, it would be convenient to deliver a single judgment in respect of the legal issues, dealing with the facts relating to each case after considering the law.[33]


[edit] Parallel procedure before the European Patent Office
Main article: Software patents under the European Patent Convention
A European patent application, namely EP patent application 1346304, in the patent family of patent application GB 2388937 filed by Macrossan, is currently pending at the European Patent Office (EPO).

On Monday 30 October 2006 (the first business day following the handing down of the Court of Appeal's judgment on Friday 27 October 2006), the Search Division of the EPO in charge of establishing a search report for the European patent application issued a declaration under Rule 45 EPC that a search could not be established.[34] The declaration indicates that the EPO search examiner is of the opinion that Macrossan's application contains nothing of technical merit, but only commonplace technical features (i.e. a computer) for implementing a business method. As a consequence, no meaningful search was considered to be possible.

Current EPO practice when examining computer-implemented inventions is that any technical feature in a claim, such as a computer, results in the finding that there is "an invention", but only those features which provide a technical solution to a technical problem (as opposed to a business problem) can contribute to an inventive step. In contrast to the UKIPO and courts, therefore, the EPO is unlikely to refuse the application as relating to a computer program or a method of doing business as such (Article 52(2) and (3) EPC), but will probably use reasoning relating to the question of whether the invention involves an inventive step (Article 56 EPC).


[edit] Criticism
The "technical effect approach (with the rider)" applied in the judgment has been criticized by the Board of Appeal 3.5.01 of the EPO in its decision T 154/04 of November 15, 2006. [35] The Board considered that the examination of whether there is an invention within the meaning of Article 52(1) to (3) EPC has to be strictly separated from and not mixed up with the other three patentability requirements referred to in Article 52(1) EPC.

“ This distinction abstracts the concept of "invention" as a general and absolute requirement of patentability from the relative criteria novelty and inventive step, which in an ordinary popular sense are understood to be the attributes of any invention (...). [36] ”

In relation to the "ordinary popular sense" according to which novelty and inventive step are understood to be attributes of all inventions and in relation to the corresponding meaning of the term invention, the Board considered that:

“ The "technical effect approach" endorsed by Lord Justice Jacob in the Aerotel/Macrossan judgement (...) seems to be rooted in this second ordinary meaning of the term invention, a practice which might be understandable "given the shape of the old law" (Lord Justice Mustill, loc.cit. [37]), but which is not consistent with a good-faith interpretation of the European Patent Convention in accordance with Article 31 of the Vienna Convention on the Law of Treaties of 1969. [38] ”

The "contribution" or "technical effect" approach followed in the Aerotel/Macrossan judgement was abandoned by the Boards of Appeal of the EPO ten years ago and the board in T 154/04 confirmed that there were "convincing reasons" for abandoning this approach. [38]

The Board further considered that

“ The "technical effect approach (with the rider)" applied in the Aerotel/Macrossan judgement is irreconcilable with the European Patent Convention also for the further reason that it presupposes that "novel and inventive purely excluded matter does not count as a 'technical contribution'" (Aerotel/Macrossan, e.g. paragraph No. 26(2)). This has no basis in the Convention and contravenes conventional patentability criteria (...)" [3] ”


[edit] References
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371)
^ Note: This link goes to the published patent application, not the granted patent.
^ a b Decision T 154/04 of November 15, 2006, Reasons 13, to be published at the Official Journal of the European Patent Office.
^ The Patents Status Enquiry service of the UK IPO lists landmarks for GB2171877
^ Aerotel Ltd v Telco Holdings Ltd and others (2006) EWHC 997 (Pat) (Word). Practical Law Company. Retrieved on 10 March 2007.
^ High Court grants summary judgment of invalidity. Practical Law Company. Retrieved on 10 March 2007.
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371), paragraph 1
^ a b Patent Office Decision BL O/078/05, Neal William Macrossan's application (PDF). UK Patent Office. Retrieved on 10 March 2007.
^ Neal William Macrossan's application ([2006] EWHC Ch 705)
^ Patent Office Decision BL O/078/05, Neal William Macrossan's application (PDF). UK Patent Office. Retrieved on 10 March 2007., paragraphs 28-30
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371), paragraph 62
^ UK Patent Office Change Practice when Examining Business Method and Computer Program Patent Applications. Boult Wade Tennant. Retrieved on 10 March 2007.
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371), paragraph 16
^ Lenzing AG’s European Patent (UK) ([1996] EWHC Admin 390), paragraph 61
^ Patent Office Decision BL O/226/06, Sony Electronics Inc's application (PDF). UK Patent Office. Retrieved on 10 March 2007. Paragraph 17
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371), paragraph 21
^ The text of the President of the EPO's letter to Jacob LJ, Re: Court of Appeal Judgement [2006 EWCA Civ 1371]. UK Patent Office. Retrieved on 16 March 2007.
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371), paragraph 27
^ Boards of Appeal of the European Patent Office, Decision T 1284/04 of March 7, 2007, Reasons 3.1
^ Marks and Clerk.
^ Patent Appeal, The Register 2006-11-10.
^ Out Law.
^ MWE.
^ Boult Wade Tennant.
^ http://www.ukcorporator.co.uk/H_of_L_Report.pdf
^ Macrossan Refused Leave to Appeal, IPKat.
^ Macrossan at the Highest Court, The Register 2007-02-08.
^ http://www.vnunet.com/itweek/news/2174365/lords-refuses-hear-software
^ http://www.marks-clerk.com/attorneys/news_one.aspx?newsid=122
^ Patents Act 1977: Patentable subject matter. UK Intellectual Property Office. Retrieved on 10 March 2007.
^ Applying the Aerotel/Macrossan test. UK Intellectual Property Office. Retrieved on 10 March 2007.
^ Pablo Cappellini's application and Bloomberg LP's application ([2007] EWHC Patents 476)
^ Cappellini's & Bloomberg's Applications: untethered from the real world. IPKat. Retrieved on 16 March 2007.
^ Copy of EPO declaration under Rule 45 EPC (PDF). UK Corporator. Retrieved on 13 March 2007.
^ Decision T 154/04, Reasons 12 and 13.
^ Decision T 154/04, Reasons 10.
^ This expression "given the shape of the old law" refers to the reasoning in the UK decision re Genentech Inc.'s Patent [1989] R.P.C. 147, pages 262 f.
^ a b Decision T 154/04, Reasons 12.

Courtesy : wikipedia

Online Policy Group v. Diebold, Inc.

Online Policy Group v. Diebold, Inc.
EFF helped protect online speakers by bringing the first successful suit against abusive copyright claims under the Digital Millennium Copyright Act (DMCA). This landmark case set a precedent that allows other Internet users and their ISPs to fight back against improper copyright threats.

In OPG v. Diebold, a California district court has determined that Diebold, Inc., a manufacturer of electronic voting machines, knowingly misrepresented that online commentators, including IndyMedia and two Swarthmore college students, had infringed the company's copyrights. EFF and the Center for Internet and Society Cyberlaw Clinic at Stanford Law School sued on behalf of nonprofit Internet Service Provider (ISP) Online Policy Group (OPG) and the two students to prevent Diebold's abusive copyright claims from silencing public debate about voting.

Diebold sent dozens of cease-and-desist letters to ISPs hosting leaked internal documents revealing flaws in Diebold's e-voting machines. The company claimed copyright violations and used the DMCA to demand that the documents be taken down. One ISP, OPG, refused to remove them in the name of free speech, and thus became the first ISP to test whether it would be held liable for the actions of its users in such a situation.

In his decision, Judge Jeremy Fogel wrote, "No reasonable copyright holder could have believed that the portions of the email archive discussing possible technical problems with Diebold's voting machines were proteced by copyright." In turn, Diebold had violated section 512(f) of the DMCA, which makes it unlawful to use DMCA takedown threats when the copyright holder knows that infringement has not actually occured.

Diebold subsequently agreed to pay $125,000 in damages and fees.

Order Granting In Part And Denying In Part Crossmotions For Summary Judgment [PDF 112k] September 30, 2004
Transcript from Summary Judgment hearing February 9, 2004
Plaintiffs' Opposition to Defendents' Motion for Summary Judgment January 30, 2004
Defendents' Opposition to Plaintiffs' Motion for Summary Judgment January 30, 2004
Plaintiffs' Motion for Summary Judgment January 12, 2004
Declaration of Cohn in Support of Plaintiffs January 12, 2004
Declaration of Pavlosky in Support of Plaintiffs January 12, 2004
Declaration of Weekly in Support of Plaintiffs January 12, 2004
Declaration of Laroia in Support of Plaintiffs January 12, 2004
Defendants' Motion for Summary Judgment January 12, 2004
Defendants' Notice of Motion for Summary Judgment January 12, 2004
Declaration of Sand in Support of Defendants January 12, 2004
Defendants' Proposed Order January 12, 2004
Diebold Withdrawal Letter to Will Doherty of OPG (December 3, 2003)
Diebold's Answer to Complaint, (December 5, 2003)
Scheduling Order Detailing Diebold's Withdrawal of Threats (PDF 34k - December 1, 2003)
Diebold Response to Cohn Letter (PDF 391k - November 24, 2003)
Transcript of Preliminary Injunction (November 17, 2003)
Letter of Cindy Cohn
Supplemental Declaration of Benny Ng regarding Diebold's "second notice" to Hurricane Electric (PDFs, November 17, 2003)
Plaintiffs' Reply Brief on Preliminary Injunction (PDF 175k - November 14, 2003)
Declaration of Vincent V. Carissimi, Swarthmore College Counsel (PDF 154k)
Proposed Preliminary Injunction Order (PDF 73k)
Second Supplemental Declaration of Luke Thomas Smith (PDF 412k)
Amendment to Application for Preliminary Injunction (PDF 12k)
Diebold's Opposition to Motion for Preliminary Injunction (PDF 2.2MB - November 12, 2003)
Declaration of Nancy Reeves (PDF 154k - November 12, 2003)
Plaintiffs' Supplemental Brief Supporting Preliminary Injunction (PDF 908k - November 7, 2003)
Supplemental Declaration of David E. Weekly (PDF 328k - November 7, 2003)
Supplemental Declaration of Luke Thomas Smith (PDF 572 - November 7, 2003)
Judge Fogel's order, setting expedited hearing schedule for Preliminary Injunction (November 4, 2003)


Complaint (November 4, 2003)
First Amended Complaint, (November 14, 2003)
Application for Temporary Restraining Order (November 4, 2003)
Proposed Temporary Restraining Order (November 4, 2003)
Declaration of David E. Weekly, OPG Board Member
Declaration of Luke Thomas Smith, Swarthmore Student
Declaration of Nelson Chu Pavlosky, Swarthmore Student
Declaration of Benny Ng, Hurricane Electric
Declaration of Wendy Seltzer, EFF Staff Attorney
Diebold's opposition to TRO (November 4, 2003)


Diebold cease-and-desist letter to OPG
EFF's response to Diebold on behalf of OPG
Press releases
EFF Wins in Diebold Copyright Abuse Case Sept 30, 2004
Diebold Coughs Up Cash in Copyright Case Oct 15, 2004
Electronic Frontier Foundation and Stanford Law Clinic Sue Electronic Voting Company
ISP Rejects Diebold Copyright Claims Against News Website
Media coverage:
File Sharing Pits Copyright Against Free Speech (Requires free registration) [John Schwartz, New York Times]
Black Box Voting Blues [Steven Levy, Newsweek]
Diebold Issues Threat to Publishers of Leaked Memos [AP]
E-Vote Protest Gains Momentum [Wired]
Students Fight E-Vote Firm [Wired]
Commentary:
Latest DMCA Takedown Victim: The Election Process [Ed Foster, Gripelog]
Something Truly Terrifying [Tom Tomorrow, This Modern World]
(Electronic) Civil Disobedience at Swarthmore [Ernest Miller, The Importance Of...]
Swarthmore Crackdown on Protesting Students Reaches New Low [Ernest Miller, The Importance Of...]
Related documents/resources:
Congressman Dennis J. Kucinich endorses open design processes for electronic voting machines, and condemns Diebold's coercive copyright claims.
Security researchers discover huge flaws in e-voting system
Chilling Effects on the DMCA's safe harbor provisions


Courtesy: EFF

WTO - TRIPS

What is the WTO? The World Trade Organization (WTO) is the only global international organization dealing with the rules of trade between nations. At its heart are the WTO agreements, negotiated and signed by the bulk of the world’s trading nations and ratified in their parliaments. The goal is to help producers of goods and services, exporters, and importers conduct their business.


FACT FILE
Location: Geneva, Switzerland
Established: 1 January 1995
Created by: Uruguay Round negotiations (1986-94)
Membership: 151 countries on 27 July 2007
Budget: 182 million Swiss francs for 2007
Secretariat staff: 625
Head: Pascal Lamy (Director-General)
Functions: • Administering WTO trade agreements
• Forum for trade negotiations
• Handling trade disputes
• Monitoring national trade policies
• Technical assistance and training for developing countries
• Cooperation with other international organizations

Does the TRIPS agreement strike the right balance?

The speakers Celine Charveriat, head of Oxfam’s advocacy office in Geneva and Harvey Bale, Director General of the International Federation of Pharmaceutical Manufacturers Association discuss whether the TRIPS agreement strikes the right balance between the rights of governments and the rights of patent holders. Each speaker has two minutes to make their case, followed by three and a half minutes of exchange and a 30-second summing up. The moderator is WTO spokesperson Keith Rockwell.

A SHORT GUIDE TO INTERNATIONAL IPR TREATIEs

The home page for the World Intellectual Property Organization (WIPO), the international body for the protection of IPR and the administering agency for most international IP agreements. (Courtesy WIPO.int.)
Strong protection for intellectual property rights (IPR) worldwide is vital to the future economic growth and development of all countries. Because they create common rules and regulations, international IPR treaties, in turn, are essential to achieving the robust intellectual property protection that spurs global economic expansion and the growth of new technologies.


German imperial patent 5789 was granted to Karl Benz for the design of what became the first Benz motor car, 1888. (Science Museum, London/Topham/The Image Works)


William Hedley patented the system that gave locomotives with smooth wheels sufficient traction in 1813, the same year he unveiled his famous steam locomotive, "Puffing Billy." (NRM/SSPL/The Image Works)


Emile Berliner patented a form of recording on a zinc disc in 1887 and his gramophone became the basis for the record industry. (SSPL/The Image Works)
The international community, however, did not have a single source for intellectual property obligations and norms until the 1994 Uruguay Round of the General Agreement on Tariffs and Trade created the World Trade Organization (WTO) and included the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

The significance of the TRIPS Agreement is three-fold:
(1) It is the first single, truly international agreement that establishes minimum standards of protection for several forms of intellectual property;
(2) It is the first international intellectual property agreement that mandates detailed civil, criminal, and border enforcement provisions; and
(3) It is the first international intellectual property agreement that is subject to binding, enforceable dispute settlement. TRIPS, in effect, lays the groundwork for a strong and modern IPR infrastructure for the world community.

As a strong adherent of the TRIPS Agreement and all other international IPR treaties discussed below, the U.S. government encourages other countries to join and implement them.

TRIPS

The TRIPS Agreement came into force in 1995, as part of the Agreement Establishing the World Trade Organization. TRIPS incorporates and builds upon the latest versions of the primary intellectual property agreements administered by the World Intellectual Property Organization (WIPO), the Paris Convention for the Protection of Industrial Property, and the Berne Convention for the Protection of Literary and Artistic Works, agreements that go back to the 1880s.


Drs. William Shockley (seated), John Bardeen (left), and Walter H. Brattain won a Nobel Prize for their invention of the transistor. (Topham/The Image Works)

A woman looks at Microsoft® products in a shop in Brussels. The company, like others, benefits from the Madrid Protocol's improvements to international registration of trademarks. (AP/WWP)

Bakers from Dresden, Germany, have kept the trade secret of the exact components of their Christmas cake (now under a registered trademark, "Echter Dresdner Christstollen") for more than 100 years. (AP/WWP)

IPR protections reward the ingenuity of breeders of new plant varieties. (AP/WWP)

In 2001, WTO gave least-developed countries another 10 years to implement TRIPS provisions on pharmaceuticals. Here, a scientist conducts quantitative analysis of medicine tablets. (AP/WWP)
TRIPS is unique among these IPR accords because membership in the WTO is a "package deal," meaning that WTO members are not free to pick and choose among agreements. They are subject to all the WTO's multilateral agreements, including TRIPS.

TRIPS applies basic international trade principles to member states regarding intellectual property, including national treatment and most-favored-nation treatment. TRIPS establishes minimum standards for the availability, scope, and use of seven forms of intellectual property: copyrights, trademarks, geographical indications, industrial designs, patents, layout designs for integrated circuits, and undisclosed information (trade secrets). It spells out permissible limitations and exceptions in order to balance the interests of intellectual property with interests in other areas, such as public health and economic development. (For the complete text of the TRIPS Agreement, as well as an explanation of its provisions, see the WTO web site at http://www.wto.org.)

According to TRIPS, developed countries were to have implemented the agreement fully by January 1, 1996. Developing-country members and members in transition to a market economy were entitled to delay full implementation of TRIPS obligations until January 1, 2000. Least-developed members were given until January 1, 2006, to implement their obligations, with the possibility of further transition upon request. Developing countries that did not provide patent protection for particular areas of technology on their date of application were given an additional five years, until January 1, 2005, to provide such protection.

At the 2001 WTO Ministerial Conference in Doha, least-developed countries were given an additional 10 years to implement TRIPS patent and "undisclosed information" provisions as they relate to pharmaceuticals.

Because the TRIPS Agreement is a decade old, however, it does not address several new developments, such as the Internet and digital copyright issues, advanced biotechnology, and international harmonization, the process of creating uniform global standards of laws or practice. It sets the floor for minimum IPR protection, not the ceiling.

Since the conclusion of the TRIPS Agreement, the World Intellectual Property Organization has addressed digital copyright issues in the so-called Internet Treaties, namely the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT).

What follows are summaries of other WIPO treaties that complement the TRIPS Agreement, particularly in addressing new technological developments. For texts of the WIPO treaties discussed below, see: http://www.wipo.int/.

TRADEMARK LAW TREATY

The Trademark Law Treaty (TLT), adopted on October 27, 1994, entered into force on August 1, 1996. Thirty-three states, including the United States, are party to the TLT as of July 1, 2005. The TLT was enacted to simplify procedures in the application and registration process and to harmonize trademark procedures in different countries. The TLT harmonizes procedures of national trademark offices by establishing the maximum requirements a contracting party can impose.

The TLT gives service marks -- the distinctive identifiers of businesses that offer a service, as opposed to goods -- "equal" status with trademarks. Previously, many foreign countries treated trademarks and service marks differently. The TLT requires member nations to register service marks and treat them as they would trademarks.

From the trademark owner's perspective, the TLT saves time and money in the preparation and filing of documents for the application. It streamlines the process for post-registration renewals, recording assignments, changes of name and address, and powers of attorney. Member countries to the TLT are now required to permit the use of multi-class applications, enabling trademark owners to file a single application covering multiple classes of goods and services.

Another significant feature of the TLT that benefits trademark owners is its prohibition of requirements by national offices for authentication or certification of documents as well as signatures on trademark applications and correspondence. Many countries had required that any signatures submitted in support of registration of a mark be notarized or otherwise legalized in accordance with the laws of that nation. Under the TLT, it is no longer necessary in most instances to go through these procedures. This feature enables trademark owners to complete and file trademark documents more quickly, at less cost.

An additional advantage of the TLT is the harmonization of the initial and renewal terms of trademark registration among signatory countries: The TLT provides for an initial 10-year term, with 10-year renewals.

Other key features of the TLT include the introduction of an intent-to-use application system (with proof of use prior to registration); streamlined renewal procedures; minimization of the elements to obtain an application filing date; and simplified procedures for recording changes in name and ownership of trademark applications and registrations.

Overall, the TLT is intended to facilitate international trade: It is of particular importance to individuals and small businesses looking for markets in other countries. Currently, WIPO's Standing Committee on Trademarks, Industrial Designs, and Geographical Indications (SCT) is conducting negotiations on proposed revisions to the TLT. This standing committee has recommended that the WIPO General Assembly hold a diplomatic conference March 13-31, 2006, to consider adoption of the revised TLT.

PATENT LAW TREATY

The Patent Law Treaty (PLT), adopted by WIPO in June of 2000, entered into force on April 28, 2005. The PLT is the product of several years of multilateral negotiations on harmonizing global patent systems. The PLT harmonizes certain patent application procedures in order to reduce or eliminate formalities and the potential for loss of rights. The PLT does not harmonize substantive patent law, that is, the laws of each country that set forth the conditions that must be met in order to receive a patent for an invention in that country. WIPO, however, is holding discussions regarding harmonization of substantive patent law.

The PLT will make it easier for patent applicants and patent owners to obtain and maintain patents throughout the world by simplifying and, to a large degree, merging national and international formal requirements associated with patent applications and patents.

The PLT:

simplifies and minimizes patent application requirements to obtain a filing date;
imposes a limit on the formal requirements that Contracting Parties may impose;
eases representation requirements for formal matters;
provides a basis for the electronic filing of applications;
provides relief with respect to time limits that may be imposed by the Office of a Contracting Party and reinstatement of rights where an applicant or owner has failed to comply with a time limit and that failure has the direct consequence of causing a loss of rights; and
provides for correction or addition of priority claims and restoration of priority rights.

PATENT COOPERATION TREATY SYSTEM

The roots of the Patent Cooperation Treaty (PCT) go back to 1966, when the Executive Committee of the Paris Convention for the Protection of Intellectual Property called for a study of how to reduce, for applicants and patent offices, the duplication of effort involved in filing and obtaining patent applications for the same invention in different countries. The resulting WIPO treaty, the PCT, was signed in Washington, D.C., in 1970 and entered into force in 1978. The treaty was amended in 1979, 1984, 2001, and 2004. As of September 15, 2005, there are 128 Contracting Parties to the PCT.

By simplifying patent application filing, the PCT assists innovators in obtaining patent protection throughout the world. It also encourages small businesses and individuals to seek patent protection abroad.

Under this WIPO-administered treaty, nationals or residents of a contracting state file a single patent application, called an "international" application, with their national patent office or with WIPO as a receiving office. This automatically lodges the application for patent protection in all 127 Contracting Parties of the PCT.

The treaty provides a longer period of time, 30 months, before applicants must commit themselves to undertake the expenses of translation, national filing fees, and prosecution in every country in which they want protection. By providing applicants with more time and information to evaluate the strength of their potential patent and to determine marketing plans, the 30-month period allows applicants to be more selective as to the countries in which they will file. This is a major improvement over the 12-month priority period provided under the Paris Convention for patent applicants.

Under the PCT, WIPO publishes the "international application," together with a nonbinding indication as to the potential patentability of the invention. This nonbinding indication is a preliminary search and/or examination by an "International Authority," one of 11 patent offices designated by WIPO that currently meet the treaty's minimum staffing and documentation requirements. The nonbinding indication helps applicants decide whether to proceed with their patent applications in national or regional offices. Patent offices also benefit from these nonbinding indications of patentability when deciding whether to grant national or regional patents based upon PCT applications. Foreign search reports identify relevant documents that help patent offices to conserve resources in the examination process and to improve the quality of examination.

MADRID SYSTEM FOR
THE INTERNATIONAL REGISTRATION OF MARKS

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks -- the Madrid Protocol -- was adopted in Spain's capital on June 27, 1989, and entered into force on December 1, 1995. The protocol is one of two treaties comprising the Madrid System for international registration of trademarks. The first treaty, the 1891 Madrid Agreement, provides for the registration of trademarks in several countries through the filing of one international trademark registration with WIPO in Geneva.

The Madrid Protocol, developed because some countries had problems with the operation of the Madrid Agreement, is seen as an improvement to the system for international registration of trademarks. As a result, more and more trademark owners are using the Madrid Protocol every year to protect their trademarks in foreign countries. As of September 15, 2005, there were 66 contracting parties to the Madrid Protocol.

The Madrid Protocol is a filing treaty and not a substantive harmonization treaty. It provides a cost-effective and efficient way for trademark holders -- individuals and businesses -- to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency. Moreover, no local agent is needed to file the application. Applications may be filed in English, French, or Spanish.

An application for international registration has the same effect as a national application for registration of the mark in each of the countries designated by the applicant. Once the trademark office in a designated country grants protection, the mark is protected just as if that office had registered it.

The Madrid Protocol also simplifies the subsequent management of the mark, since a simple, single procedural step serves to record subsequent changes in ownership or in the name or address of the holder with WIPO's International Bureau.

Before the protocol was enacted, burdensome administrative requirements for the normal transfer of business assets often made it difficult for trademark owners to carry out valid assignments of their marks internationally. The protocol allows the holder of an international registration to file a single request with a single payment, in order to record the assignment of a trademark with all the member countries. Registration renewal also involves a simple, single procedural step. International registration lasts 10 years, with 10-year renewal periods.

Trademark owners may designate additional countries if they decide to seek protection in more member countries or if new countries accede to the protocol.

If the basic application -- or registration upon which the international registration is based -- is cancelled for any reason in the first five years, the Madrid Protocol gives the holder of the international registration the opportunity to turn the international registration into a series of national applications in each designated country. This series of applications keeps the priority date of the original international registration in each country. The holder also preserves the rights acquired in each member country, even if international registration fails.

THE HAGUE SYSTEM FOR
THE INTERNATIONAL DEPOSIT OF INDUSTRIAL DESIGNS

The Hague System is an international registration system that enables owners to obtain protection for their industrial designs with a minimum of formality and expense. A single international application filed with WIPO's International Bureau replaces a whole series of applications previously required in a number of states and/or intergovernmental organizations party to the Hague System. The subsequent management of the international registration is considerably easier under this system. For example, one single step is all that is needed to record a change in the name or address of the holder, or a change in ownership for some or for all of the designated contracting parties.

The Hague System had 42 contracting parties as of April 26, 2005.

BUDAPEST TREATY ON THE INTERNATIONAL RECOGNITION OF THE DEPOSIT OF MICROORGANISMS FOR THE PURPOSE OF PATENT PROCEDURE

The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purpose of Patent Procedure, signed on April 28, 1977, was amended on September 26, 1980. The Budapest Treaty eliminates the need to deposit microorganisms in each country where patent protection is sought.

Under the treaty, the deposit of a microorganism with an "international depositary authority" satisfies the deposit requirements of treaty members' national patent laws. An "international depositary authority" is capable of storing biological material and has established procedures that assure compliance with the Budapest Treaty. Such procedures include requirements that the deposit will remain available for the life of the patent and that samples will be furnished only to those persons or entities entitled to receive them.

The establishment of "international depositary authorities" offers several advantages to both patent applicants and contracting states. Patent applicants benefit because the need to deposit in many countries in which they seek patent protection is dramatically reduced. Since a single deposit in any "international depositary authority" will satisfy the national disclosure requirements of any member state, patent applicants' costs are much lower. Using a single authority as a deposit increases the deposit's security, and provides a mechanism of distribution of the deposit. Contracting states benefit because they can rely on the treaty's uniform standards to assure effective deposit and public availability. They no longer need to independently establish a 'recognized' depositary to meet national patentability disclosure requirements.

As of May 2005, there are 60 Patent Offices that abide by the terms of the Budapest Treaty and 35 "international depositary authorities" in 22 different countries.

INTERNATIONAL CONVENTION FOR
THE PROTECTION OF NEW VARIETIES OF PLANTS

The International Convention for the Protection of New Varieties of Plants (UPOV) established an internationally recognized intellectual property system for the protection of new plant varieties. The UPOV Convention encourages and rewards the ingenuity and creativeness of breeders developing new varieties of plants. Anyone who develops a new variety of plant that may be disease resistant, drought resistant, cold tolerant, or simply aesthetically more pleasing is no less an inventor than someone who improves an automobile engine or develops a new medicinal drug. The only difference is that the plant breeder works with living material, rather than inanimate matter.

The process of creating a new plant variety is often long and expensive. Reproducing an existing plant variety, however, can be quick and relatively easy. Thus, an effective system of intellectual property protection needs to reward innovation by permitting inventors to recover their investment and, at the same time, disseminate the knowledge of that innovation for others to improve upon. The UPOV system establishes basic legal principles of protection that reward breeders for their inventiveness by providing exclusive rights to their plant invention, while encouraging the development of new plant varieties.

Under the 1991 UPOV system, the most recently concluded of these, the exclusive rights granted to the inventor (commonly referred to as "breeder's rights") require that another party other than the owner of the breeder's rights receive the breeder's authorization to:


produce or reproduce the protected variety;
condition the variety for propagation purposes; and
offer to sell or market, import, export, or to stock the protected variety.

To receive a breeder's right, a breeder must invent a plant variety that is new, distinct, uniform, and stable. Under the UPOV Convention, however, a plant breeder generally does not need breeder authorization to use protected plant varieties for noncommercial or experimental acts or acts done for the purposes of breeding new plant varieties. The UPOV Convention also allows each member nation to restrict the breeder's right in relation to any variety to allow farmers to use part of their harvest for subsequent plantings in their own land. These restrictions, however, must be within reasonable limits and subject to the safeguarding of the legitimate interests of the breeder.

UPOV member states hold biannual meetings of the Council, a permanent body of the convention. Other UPOV bodies include the Consultative Committee, the Administrative and Legal Committee, and the Technical Committee, made up of several Technical Working Parties (TWPs) across several agricultural sectors. The TWPs meet periodically to share and discuss observations and advancements in agricultural sectors, which helps to standardize examination standards among member states. These TWP meetings benefit breeders as well, since more uniform standards lead to greater consistency of application filings in different territories.

As of June 29, 2005, there were 59 member States to the UPOV Convention. UPOV membership is expected to continue to increase in the next several years.

For more information on UPOV, see: http://www.upov.int.

CONCLUSION

In the information age, with technology advancing at an accelerating rate, simply implementing the TRIPS Agreement is not enough to establish a robust intellectual property system. While it was the first comprehensive IPR agreement of its time, it is a decade old, and reflects a "snapshot" in time. Technological advances in information technology, biotechnology, and other fields require the updating of national and international laws that protect IP. Fortunately, WIPO has led the way in developing new international norms to meet these challenges.

WIPO also has led the way in simplifying and streamlining the procedures for seeking, obtaining, and maintaining rights in multiple countries. Through its "Global Protection Services" and its harmonization treaties, it saves creators and national IP offices a great deal of time and effort. WIPO also makes available its excellent technical assistance for establishing and improving IPR systems worldwide. Countries should look to both the WTO and to WIPO when crafting their IPR systems.

P.S. These are the treaties signed till 2006.