1. International Intellectual Property Prof. Manheim Spring, 2007 Review (Fall ‘06 Exam) Copyright © 2007

2. Spring, 2007Int'l IP2 Question 1 Rumors of a unique, highly flavorful coffee from the remote Village of Cartagena, Colombia, motivated Starbucks, Inc., (a US company) to send a team of researchers to the village. There they found Juan Valdez practicing an ancient art of coffee roasting known only to the elders of Cartagena. The Starbucks team offered Valdez a large sum of money to move to Seattle to teach Starbucks employees the “ Cartagena roasting technique. ” At Starbuck ’ s urging, Valdez filed a US patent application for the “ Cartagena roasting technique, ” and assigned it to Starbucks. Starbucks also filed an intent to use US trademark application for “ Genuine Cartagenan Coffee ” for coffee roasted with the Cartagena technique. Other coffee growers from Cartagena, Colombia have contacted you to oppose Starbuck ’ s patent and trademark applications. What legal theories should you explore?

3. Spring, 2007Int'l IP3 Question 1 - Patent Rumors of a unique, highly flavorful coffee from the remote Village of Cartagena, Colombia, motivated Starbucks, Inc., (a US company) to send a team of researchers to the village. There they found Juan Valdez practicing an ancient art of coffee roasting known only to the elders of Cartagena. The Starbucks team offered Valdez a large sum of money to move to Seattle to teach Starbucks employees the “ Cartagena roasting technique. ” At Starbuck ’ s urging, Valdez filed a US patent application for the “ Cartagena roasting technique, ” and assigned it to Starbucks.

4. Spring, 2007Int'l IP4 Question 1 - Patent Rumors of a unique, highly flavorful coffee from the remote Village of Cartagena, Colombia, motivated Starbucks, Inc., (a US company) to send a team of researchers to the village. There they found Juan Valdez practicing an ancient art of coffee roasting known only to the elders of Cartagena. The Starbucks team offered Valdez a large sum of money to move to Seattle to teach Starbucks employees the “ Cartagena roasting technique. ” At Starbuck ’ s urging, Valdez filed a US patent application for the “ Carta- gena roasting technique, ” and assigned it to Starbucks.  Process patents  Assignment to Starbucks  Valdez as inventor

5. Spring, 2007Int'l IP5 Question 1 - Patent  Process patent for “roasting method”  Permitted by TRIPs Art. 27  Patentable subject matter under 35 USC §101  Satisfies utility requirement (& industrial application)  Assignment to Starbucks  Patents/applications are assignable - §152, 261  TRIPs 28(2) - same  Valdez as inventor  Only “inventors” can file applications - §101  Is Valdez “ inventor ” of novel process?

6. Spring, 2007Int'l IP6 Question 1 - Patent Rumors of a unique, highly flavorful coffee from the remote Village of Cartagena, Colombia, motivated Starbucks, Inc., (a US company) to send a team of researchers to the village. There they found Juan Valdez practicing an ancient art of coffee roasting known only to the elders of Cartagena. The Starbucks team offered Valdez a large sum of money to move to Seattle to teach Starbucks employees the “ Cartagena roasting technique. ” At Starbuck ’ s urging, Valdez filed a US patent application for the “ Cartagena roasting technique, ” and assigned it to Starbucks.  Novelty & Traditional Knowledge  Non-Obviousness

7. Spring, 2007Int'l IP7 Question 1 - Patent  Novelty  TRIPs Art. 27.1  Patents available for any “new” invention  Novelty not defined - up to each country  35 USC §102(a)  Patent denied if “known or used by others in US”  Unless patented or published in another country  If Valdez “used” the invention (by teaching to others in US) more than 1 year prior to filing, may be statutory bar  Note: Novelty defeated by Traditional Knowledge (oral descriptions abroad) under EPC Art. 54(1)

8. Spring, 2007Int'l IP8 Question 1 - Patent  Non-Obviousness  TRIPs Art. 27  Patents must “involve an inventive step”  Note 5: the term “inventive step” may be deemed by a Member to be synonymous with the term ”non-obvious”  35 USC § 103  “A patent may not be obtained [if the] subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art”  Survey of Prior Art  Comparison of Prior Art and invention

9. Spring, 2007Int'l IP9 Question 1 - Trademark Starbucks also filed an intent to use US trademark application for “ Genuine Cartagenan Coffee ” for coffee roasted with the Cartagena technique. Other coffee growers from Cartagena, Colombia have contacted you to oppose Starbuck ’ s patent and trademark applications. What legal theories should you explore?  Subject Matter of TM  Priority of Use  Intent to Use Mark  Geographical Indication

10. Spring, 2007Int'l IP10 Question 1 - Trademark  Subject Matter of TM  TRIPs Art. 15  Any sign capable of distinguishing the goods or services of one undertaking from those of another  15 USC §1052  TM available where “ goods of the applicant may be distinguished from the goods of others ” Genuine Cartagenan Coffee

11. Spring, 2007Int'l IP11 Question 1 - Trademark  Priority of Use  TRIPs Art. 15  Members may make registrability depend on distinctiveness acquired through use  No use yet, only “ intent to use ”  15 USC §1051(a)  The owner of a trademark used in commerce may apply to register it

12. Spring, 2007Int'l IP12 Question 1 - Trademark  Intent to Use Mark  15 USC §1051(b)  A person who has a bona fide intention … to use a TM in commerce may apply to register the TM  15 USC §1051(d)  (1) the applicant shall file a verified statement that the mark is in use within 6 months of allowance  TRIPs Art. 15.3  actual use of a TM shall not be a condition for regis- tration. An application shall not be refused solely on the ground that intended use has not taken place before three years from the date of application.

13. Spring, 2007Int'l IP13 Question 1 - Trademark  Geographical Indication  TRIPs Art. 22 (2)  In respect of GIs, Members shall provide the legal means for interested parties to prevent  (a) the use of any means that indicates or suggests that the good originates in a geographical area other than the true place of origin  15 USC §1052 - TM will not be registered if..  (a) it uses a geographical indication that identifies a place other than the origin of the goods [wines/spirits]  (e) it is primarily geographically deceptively misdescriptive of the goods Genuine Cartagenan Coffee

14. Spring, 2007Int'l IP14 Question 1 - Trademark  Geographical Indication  15 USC §1054  Collective and certification marks, including indications of regional origin, shall be registrable  Generic Term  15 USC §1064(3)  If a registered mark becomes the generic name for the goods or services for which it is registered, it shall be cancelled  Question of fact - significance of mark to the relevant public Genuine Cartagenan Coffee

15. Spring, 2007Int'l IP15 Short Answer Question 1 The United States commenced a dispute settlement proceeding against Brazil in the WTO, claiming that Article 68 of the Brazil Intellectual Property Law of 1996 violates TRIPs. Article 68 states, in pertinent part: “The patent holder may have its patent compulsorily licensed in case of abuse in the exercise of rights granted by the patent, or in case of abuse of economic power achieved through the patent right, to be proved under a court of law or administrative decision. Section 1: Compulsory license shall be granted equally: I) in case of non exploration of the object of the patent in the Brazilian territory for lack of manufacturing or incomplete manufacturing, excepted the cases of economic infeasibility, where importation will be allowed... “ Does Art. 68 violate TRIPs?

16. Spring, 2007Int'l IP16 Short Answer Question 1 “The patent holder may have its patent compulsorily licensed in case of abuse in the exercise of rights granted by the patent, or in case of abuse of economic power achieved through the patent right, to be proved under a court of law or administrative decision. Section 1: Compulsory license shall be granted equally: I) in case of non exploration of the object of the patent in the Brazilian territory, for lack of manufacturing or incomplete manufacturing, excepted the cases of economic infeasibility, where importation will be allowed... “  Compulsory License  Patent Abuse  Failure to Work

17. Spring, 2007Int'l IP17 Short Answer Question 1  Compulsory License  TRIPs Art. 31  [Compulsory] use may only be permitted if, prior to such use, the proposed user has made efforts to obtain authorization from the right holder on reasonable commercial terms and conditions and that such efforts have not been successful within a reasonable period of time.  This requirement may be waived by a Member in the case of a national emergency or other circum- stances of extreme urgency or in cases of public non-commercial use

18. Spring, 2007Int'l IP18 Short Answer Question 1  Compulsory License  DOHA Declaration (2001) (Qatar)  TRIPs Agreement can and should be interpreted and implemented in a manner supportive of WTO members ’ right to protect public health and in particular, to promote access to medicines for all. ”  Flexibility to grant Compulsory Licenses  TRIPs should be read in light of objectives & principles  Freedom to grant CLs and terms for such licenses  Freedom to declare national emergency (public health)  Exhaustion of IP rights per national law

19. Spring, 2007Int'l IP19 Short Answer Question 1  Patent Abuse  TRIPs Art. 8  Appropriate measures, provided that they are consistent with the provisions of this Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the int ’ l transfer of technology  Recognized in US law  Antitrust violations  Improper expansion of patent scope  Inequitable conduct before USPTO

20. Spring, 2007Int'l IP20 Short Answer Question 1  Failure to Work  TRIPs Art. 2727  1. Patents shall be available … in all fields of technology; patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced  Paris Art. 5(A)  1: Importation not a grounds for forfeiture  2/4: National law may provide for non-transferable compulsory license (3 yrs after issue or app +4 yrs )

21. Spring, 2007Int'l IP21 Short Answer Question 2 Sagdiyev is a national and author in the central Asian country of Kazakhstan. Kazakh law provides automatic copyright upon the fixation of a work in a tangible medium. Sagdiyev has never filed for copyright protection in any other country. Kazakhstan joined the Berne Convention in 1999. Sacha Baron Cohen is a British comedian whose 2006 film Borat uses some material written by Sagdiyev and first published in Kazakhstan before 1999. A. As a matter of US law, does Sagdiyev have a copyright in his pre-1999 works that he can enforce against Cohen in the US? B. Does the Berne Convention require the US to recognize a copyright in Sagdiyev's work?

22. Spring, 2007Int'l IP22 Short Answer Question 2 Sagdiyev is a national and author in the central Asian country of Kazakhstan. Kazakh law provides automatic copyright upon the fixation of a work in a tangible medium. Sagdiyev has never filed for copyright protection in any other country. Kazakhstan joined the Berne Convention in 1999. Sacha Baron Cohen is a British comedian whose 2006 film Borat uses some material written by Sagdiyev and first published in Kazakhstan before 1999. A. As a matter of US law, does Sagdiyev have a copyright in his pre-1999 works he can enforce against Cohen in the US? B. Does the Berne Convention require the US to recognize a copyright in Sagdiyev's work?

23. Spring, 2007Int'l IP23 Short Answer Question 2 Sagdiyev is a national and author in the central Asian country of Kazakhstan. Kazakh law provides automatic copyright upon the fixation of a work in a tangible medium. Sagdiyev has never filed for copyright protection in any other country. Kazakhstan joined the Berne Convention in 1999. Point of Attachment Under Berne?  Berne Art. 3  National of Union state: upon creation of the work  What happens in 1999?  This convention shall apply to all works which have not yet fallen into the public domain … in the case of new accessions to the Union

24. Spring, 2007Int'l IP24 Short Answer Question 2 Sagdiyev is a national and author in the central Asian country of Kazakhstan. Kazakh law provides automatic copyright upon the fixation of a work in a tangible medium. Sagdiyev has never filed for copyright protection in any other country. Kazakhstan joined the Berne Convention in 1999. Sacha Baron Cohen is a British comedian whose 2006 film Borat uses some material written by Sagdiyev and first published in Kazakhstan before 1999. National Treatment  Without point of attachment, no Berne country is bound to recognize within its borders Sagdiyev’s ©

25. Spring, 2007Int'l IP25 Short Answer Question 2 A. As a matter of US law, does Sagdiyev have a copyright in his pre-1999 works he can enforce against Cohen in the US?  17 USC ､ §104  Published works are protected by this title if  (1) on the date of first publication, one or more of the authors is a national or domiciliary of the United States, or is a national, domiciliary, or sovereign authority of a treaty party, or is a stateless person, wherever that person may be domiciled; or  (2) the work is first published in the United States or in a foreign nation that, on the date of first publication, is a treaty party

26. Spring, 2007Int'l IP26 Short Answer Question 2 A. As a matter of US law, does Sagdiyev have a copyright in his pre-1999 works he can enforce against Cohen in the US?  17 USC ､ §105A  (a)(1)(A) Copyright subsists, in accordance with this section, in restored works, and vests automatically on the date of restoration.  Does Sagdivey’s material qualify as a restored work?

27. Spring, 2007Int'l IP27 Short Answer Question 2 B. Does the Berne Convention require the US to recognize a copyright in Sagdiyev's work?  Berne Art. 18  (1) This Convention shall apply to all works, at the time of [Berne]s] coming into force, that have not yet fallen into the public domain  (2) The preceding provisions shall also apply in the case of new accessions to the Union  TRIPs 70: Protection of Existing Subj. Matter  All subject matter existing at the date of accession and protected in that Member on the said date, is protected by this Agreement, as determined by Article 18 of Berne