Export University in association with InfoAmericas Exporting 201 – Focus on Latin America Presented by: José I. Rojas May 25, 2007 Intellectual Property in Latin America

Intellectual Property Rights (IPRs) ► Intellectual property refers to rights relating to and which arise under laws of trademarks, patents, copyrights, trade secrets, unfair competition, and related laws. ► The protection of IPRs is essential to technological progress, competitiveness and the well-being of any country. “Intellectual property rights are a cornerstone of every modern society and free-market economy, and are particularly important for Latin America’s developing economies.” Unknown Latin American Scholar Alexis de Tocqueville Institution

Important Considerations ► Proprietary and Derivative Rights:  Ascertain proprietary rights and derivative rights of the product, service, or publication you wish to place in Latin America  You are entitled to the sale, distribution, and placement of what you legally own  You can commercialize and do business with the property of others only when you are licensed or authorized to do so through a duly executed legal contract. ► Proprietary rights are embedded in patents, trademarks, service marks, and copyrights and give their owners the exclusive right to their use. ► Derivative rights are those given to expansions of, or extensions to, the use of a given product, new applications of a product, or translations.  Example: A copyright on a book is a proprietary right. The translation into another language of the same work is a derivative right. While the copyright is given to the original author, the derivative copyright is given to the translator. Translation of the work is prohibited without the prior authorization of the original author or owner.

Important Considerations continued… ► Ask before your IP enters your export market in Latin America:  It is crucial to ask for advice from qualified legal counsel (who usually will work with local counsel in the country involved) on how to protect your IP in that market.  IP rights are some of the strongest points in your favor in a contract negotiation.

International IPR Protection Background ► Most prominently governed by the Paris Convention for patents and trademarks and the Berne Convention for copyright, both administered by the World Intellectual Property Organization (WIPO). ► Mounting disputes over IPRs lead to the inclusion of trade- related IPRs on the agenda of the GATT/WTO Uruguay Round and the resulting Trade Related Intellectual Property Rights Agreement (TRIPs) of 1994.

Protecting IPRs in Latin America ► The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement):  is the Uruguay Round (GATT - General Agreement on Tariffs and Trade) agreement covering protection and enforcement of intellectual property rights;  represents the most far-reaching multilateral agreement towards global harmonization of IPRs;  applies to all WTO member countries, including all Latin American countries and their territories;  covers patents, trademarks, copyrights and related rights, industrial designs and undisclosed information (trade secrets);  provides for Dispute Resolution and Parallel Importation

Enforcement of IPRs and the TRIPs Agreement ► The TRIPs Agreement requires all WTO members to provide certain minimum standards of intellectual property protection, as well as effective IPR enforcement. ► Important notes:  Enforcement issues are becoming more important as more countries enact laws which are consistent with the TRIPs Agreement.  Compliance issues regarding IPRs typically will not be inadequate foreign laws, rather inadequate enforcement of TRIPs-consistent IPR laws.

USTR Special 301 Report and Overcoming Deficiencies ► The 2006 “Special 301” annual review from the Office of the U.S. Trade Representative provides detailed results of the effectiveness of IPR protection in 87 countries, including Latin America.  The report includes countries placed on Watch Lists for countries non-compliant with respective IP regulations.  Latin American countries currently on Watch Lists are: Argentina, Brazil, Bolivia, Chile, Colombia, Costa Rica, Dominican Republic, Ecuador, and Guatemala. ► A top priority for the administration is working with foreign governments to address weak IPR protection and enforcement.

The Global Congress/Interpol Latin American Regional Forum on Combating Counterfeiting and Piracy ► Held in Rio de Janeiro in June ► Addressed constraints and development of IPR protection and enforcement cooperation between the governing agencies. ► An important factor noted was establishment and optimization of effective IPR legal protection and enforcement systems in order to promote significant social wealth, tax fairness, economic development ► Another highlight was the number of Latin American regions increasing their attention on IPR protection in accordance with their obligations under the TRIPs agreement. ► Concluded with all participating Latin American countries in agreement that protection of IP rights is key to economic development and continuing to enhance efforts on IP enforcement.

Resulting Enforcement Efforts ► Global forums, legislation and procedures are encouraging Latin American countries to establish specialized IP crimes investigation units, appoint specialized IP crimes prosecutors, and allocate more resources toward the training of judges who adjudicate enforcement claims.

Protecting your IPRs in Latin America ► No centralized registration system (such as under Madrid Protocol) adopted in Latin America to date. ► Engage with IP attorney who will collaborate with an international network of foreign counsel for comprehensive IP protection. ► Sources for locating IP attorneys:  Martindale-Hubbell  INTA (International Trademark Association)  ASIPI (Asociación Interamericana de la Propiedad Intelectual)  Additional Resources:  USPTO International Page:

Questions & Answers Jose I. Rojas Miami, Florida, USA