1 A RE T HERE N EVER-ENDING C HALLENGES IN E NFORCEMENT? I S IT T IME FOR A R EGIME C HANGE? Peter N. Fowler Senior Counsel for Enforcement Office of Policy and External Affairs USPTO

2 Enforcement as Regime Component Ideal IPR regimes include not only strong and updated protection for all forms of IP but also efficient and effective enforcement mechanisms. Components of an effective enforcement regime must include: Civil litigation and injunctive relief; Criminal enforcement; and Border measures; and may include administrative enforcement mechanisms.

3 TRIPs is the Common Denominator Though Berne and Paris make reference to enforcement, TRIPs created modern foundation of enforcement obligations for all WTO members. Common language about enforcement has been established. Common acknowledgment that enforcement is a vital component of an IPR regime. Common acceptance that IP enforcement matters to societies and economies.

4 Emerging International Standards Demonstrated by widening body of treaty law, including: WTO TRIPs Agreement WIPO Internet Treaties Free Trade Agreements World Customs Organization Model Law Council of Europe Cybercrime Convention EU Directive on Enforcement Anti-Counterfeiting Trade Agreement (ACTA)

5 Integrated Enforcement Regimes General agreement that enforcement aspects of a legal system must be integrated to be effective. Emphasis on efficiency, information-sharing, transparency, and coordination among all players and stakeholders. Acceptance that effective enforcement environment contributes to economic growth, investment, job creation, and innovation. Combating piracy and counterfeiting benefits everyone – except the pirates and counterfeiters.

6 Need for Never-Ending Enforcement Top-down political will and leadership to send consistent message. Sustained enforcement activities, not sporadic raids or one-off photo op events. Strategic and coordinated public awareness and education activities to change consumer attitudes and create enforcement-friendly environment. Transnational cooperation and information-sharing. Institutional framework and specialized focus on IP.

7 ACTA: Background and Parties ACTA is an executive trade agreement on IP enforcement between: Australia, Canada, EU and its member states, Japan, Korea, Mexico, Morocco, New Zealand, Singapore, Switzerland, and the U.S., but open to others. Originated with Japanese proposal in 2004 to confront rampant trademark counterfeiting and copyright piracy with new international agreement. Formal negotiations began in 2008; concluded in late 2010, with final text released in December Parties are in respective processes of approval; expected to come into force in late 2011.

8 The Purpose of ACTA Leadership statement by like-minded countries as to what should be done to improve and enhance enforcement of IP in a global marketplace and on the Internet. Compendium of modern and effective practices in border, civil and criminal enforcement. Party may expand and implement more extensive enforcement of IP than ACTA minimum standards. Parties welcome additional adherents.

9 The Purpose of ACTA Requires strengthening border enforcement, and civil and criminal enforcement systems to deal with commercial-scale infringement. Specifies procedures to be available in civil and criminal proceedings, imposition of deterrent penalties for IP crimes, expands access to relevant documents and information relating to seized goods at several stages of enforcement process. Scope is all IP, except for border measures and criminal enforcement, which are limited to copyright piracy and trademark counterfeiting.

10 New Elements in ACTA Incorporates substantive provisions of WIP Internet Treaties on circumvention of technological protection measures (TPMs) and rights management information (RMI); Requires criminal penlties for trafficking in counterfeit and illicit labels and packaging; Requires that aiding and abetting be criminalized; and Recommends explicit criminal penalties for unauthorized camcording of movies in cinemas.

11 Clarifies Some Definitions In-transit goods: Builds on TRIPs usage by clarifying that “in-transit goods” refers to goods under customs control, including customs transit or transshipment. Commercial Scale: “include those carried out as commercial activities for direct or indirect economic or commercial advantage.” Persons: Requires that natural or legal persons, corporations, businesses, and partnerships be included in any definition of “person”.

12 ACTA Going Forward Does not alter current U.S law and practice; Will promote adoption of effective practices and standards in other countries; Commitment to provide technical assistance and capacity-building and promote adoption of effective IP enforcement practices in trade agreements with non-ACTA partners; Will be basis of global standards.

13 Other Initiatives Trans-Pacific Partnership Agreement (TPP): On-going negotiations to create an Asia-Pacific FTA among: Australia, Brunei Darussalam, Chile, Malaysia, Peru, New Zealand, Singapore, U.S., and Vietnam; Comprehensive IPR chapter on protection and enforcement; Provide certainty for IP rights holders for protection and enforcement of IPRs; and Facilitate the enforcement of IPRs to eliminate trade in infringing goods.

14 U.S. Enforcement Objectives for TPP Create integrated enforcement regime to tackle IP theft and trade in infringing goods in the 21 st Century landscape; Create smarter, more effective, targeted, and sustained enforcement mechanisms to deal with digital piracy and organized criminal transnational actors; Create greater transparency and cooperation in all aspects of IP enforcement system; and Provide technical assistance and capacity-building to encourage efficient and deterrent enforcement systems.

15 Conclusion No one today seriously disputes the role of enforcement in an overall IP regime. Governments now generally accept that enforcement efforts contribute to economic growth and stability, and benefits society and culture. Challenge for governments is to demonstrate political will to build integrated enforcement system with laws, tools, and mechanisms that are efficient, effective, and coordinated, and to provide for sustained response to the never-ending challenges of IP crime.

16 THANK YOU Peter N. Fowler Senior Counsel for Enforcement Office of Policy and External Affairs USPTO web: