Intellectual Rights 7

The GATT – TRIP’s Agreement provides minimum provisions to be included in the patent law of members of the Word Trade Organization (WTO). 2) The WTO came into effect on 1 January 1995. 3) A patent shall have a minimum of a twenty year term from application date. 4) Patents shall be available for inventions which are new, inventive and capable of industrial application, in all areas of technology without discrimination, and irrespective of where the invention has been made. 5) There shall be no discrimination, in the granting and use of patent rights, between imported and locally produced patented products. Accordingly, importation satisfies any local working requirement and precludes grant of compulsory licences on that basis. Similarly, the availability of compulsory licences cannot discriminate among industries (e.g., pharmaceuticals). 6) Compulsory licences may be granted only under narrowly defined conditions. 7) The rights conferred by a patent are defined: a patent to a product prevents unauthorised making, using, offering for sale, selling or importing the patented product. 8) Procedures for the enforcement of patents are given together with penalties available against proven infringers. These include injunctions (including interlocutory injunctions), damages and costs. 9) Patent applications for pharmaceutical products may be filed after 1 January 1995 in all WTO members but the timetable for attaining full “accordance” with TRIPs takes account of the state of development of the WTO member. Marketing exclusivity is provided for the pharmaceutical product of the patentee as part of the transitional provisions, after the product receives approval but before a TRIPs-compatible law takes effect.

In this article the regime of intellectual property in Peru is explained. It is composed of two basic norms: the decision 344 of the Agreement of Cartagena and the general law of industrial property (decree law 26.017). Because of its later passing and its higher hierarchy, decision 344 prevails in the event of conflict between the two rules. Decision 344 admits patents “in all fields of technology”. This implies the full patentability of chemical, pharmaceutical and biotechnological products. However, article 7o , clause e, excludes the medicines that appear in the essential medicines list of the Word Health Organization (this exclusion in practice is of scarce weight due to the fact that the great majority of medicines considered as essential by the WHO already have patents expired and belong in any case to the public domain). An obligatory licenses regime for specific cases is established: lack of working, emergency or national safety, dominant position abuse, and dependent patents. Concerning the general law of industrial property, an interesting aspect is that the owner of the patent can request the following remedies in case his right is infringed, or even if there is inminent danger that his right could be transgressed: the cessation of the infringing facts, the forfeit of the products and advertising materials, the temporary close of the infringing business, customs measures for avoiding the entrance into the country of the infringing goods, and as a rule any remedy needed to avoid the infraction or its continuation. The National Competition Defense and Intellectual Property Protection Institute (INDECOPI) has the Inventions Office and, as second administrative instance, the Competition Defense and Intellectual Property Court. The agency was created as a piece of the structural reform of the Peruvian economy, in which the protection of intellectual rights plays a central role.

In this essay, the author examines the nature of publicity works, as wellas the intellectual property, trademarks and labor law provisions gover ning the relationships among the creators, producers and other owners of advertising works. He also discusses various problems relative to the nature of such relationships, and the issue of ownership claims by the agency and the advertiser. He concludes that advertising works do not constitute a special category of intellectual works. In his opinion, the fact that they are intended for the diffusion of a product on the marketplace does not make them different from other works of the same kind, as far as their legal protection regime is concerned. The author analyzes the issue of the ownership of intellectual property rights by focusing on two relationships: the one existing between the advertising agency and the independent creator –governed by author collaboration or work lease rules, according to the case–, and that of the advertising agency vis-à-vis the advertiser. In this last issue –where comparative law disagrees as to whether there is automatic rights transfer in favor of the advertiser–, the author claims that intellectual rights belong to the creative agency, while he judges advisable a contractual regulation, especially when the parties’ intention goes in the opposite direction. In the essay the normative regime of different advertising works is also studied, as for instance advertising phrases, posters, jingles, pictures, and TV adverts. With respect to this last topic, the authors touches on the prickly problem of delimiting rights accruing to agencies, advertisers, and producers.

Professor Jorda explains the value of technology licensing as a commercial alternative, and touches on a series of practical problems linked to the contracts of technology licensing. In the author’s opinion, technology transfers are much simpler when they are accomplished through patents or other forms of intellectual property. He also thinks that technology imports lead not only to manufactured products but also improved technology exports, and that the time is gone when abuses were committed in technology transfers to developing countries. In the article it is underlined that technology licenses are easier when they have patents or other forms of intellectual property as subject matter. The components of license contracts are analyzed, as well as the most frequent mistakes in this sort of contracting. An attractiveness of the article is to provide an annex with the basic clauses that should be checked in any license contract. Finally, the author reviews the considerations that should guide royalty estimation.

The passing-off action is used in Anglo-Saxon law to protect the consumer of a product that he may buy by confusion generated by the similar appearance with another, as well as to enforce the right of every company to the reputation that its products have gained on the market. One of the problems this action raises is to determine who the consumers are whose confusion (or risk of confusion) is relevant to admit this action. In the English law as well as in the Canadian one there are plenty of rulings affirming that the clientele protected for purposes of a passing-off action includes buyers and the public in general. However, in “Ayerst, McKenna & Harrison Inc. v. Apotex Inc.” (1983) the Canadian court considered that in the case of prescription drugs clientele encompasses only physicians, dentists, and pharmacists, and that the patient’s confusion is not relevant to accept the validity of the passing-off action. In this note, the author exposes the new doctrine of the Supreme Court of Canada, in the cases “Ciba-Geigy Canada v. Apotex” and “CibaGeigy Canada v. Novopharm”. This doctrine admits the passing-off action when a patient can be confused by the similar appearance of a medicine, even if physicians or pharmacists are not expected to be affected by the confusion. Besides, the author investigates what answer Argentine law gives to this sort of case. His conclusion is that the Argentine legal solution would not differ from the one currently held in Canada.

In this article the author, chilean lawyer, analyzes the contract of franchising with its characteristic and various elements. He defines franchising as a private law, bilateral, onerous, and consense-based contract. He offers a list with the parties, main obligations and rights in franchising. This agreement, the author explains, includes a trademark license and a know how transfer. In the second part, the author studies the relationship between franchising and industrial property, taking into account that the trademark is the central component in this contract. He admits that the contract includes other elements in addition to the trademark, but asserts that without a trademark and above all without a trademark image, the resulting contract is not franchising but a different one.

On May 28, 1979, five countries, Colombia, Bolivia, Ecuador, Peru and Venezuela signed the Agreement of Cartagena, giving rise to an important economic integration project known as Andean Agreement or Agreement of Cartagena. The author underlines the importance of the principles of direct application and of preeminence as pillars of community law. The interpretation of all the Agreement of Cartagena provisions is reserved to the Court of the Agreement of Cartagena, as a form of guaranteeing that the purposes of the treaty will not be distorted by national judges’ biased interpretations. At the same time, article 29 of the Treaty of Creation of the Court attributes to national judges the faculty of requesting community Court the pre-judicial interpretation of Andean provisions when they expect that these will be applicable in the procedure under way. Through pre-judicial interpretation, the community Court is accomplishing an important task giving uniformity to the application of the provisions of the Common Regime on Industrial Property. The author synthesizes the different pre-judicial interpretations produced in the matter of industrial property, especially in trademark law. The topic is fundamental since the Andean jurisprudence is the first American example of regional judicial treatment of intellectual property problems.

The author considers the complex evolution of the regime of invention patents and utility models in Argentina, a process leading to decree 260/96, which includes the harmonized text of laws 24.481 and 24.572 and the pertinent regulations He points out the main principles governing TRIPs (the Agreement on Trade Related Aspects of Intellectual Property Rights), which was ratified by law 24.425. He comments the decrees issued by the Executive Power –both, those related to vetoes to the laws, as well as those containing regulatory norms–, the last being decree 260/96. He deals with the most controversial aspects of the new regime, such as the transitional period for pharmaceutical patents, the filing of revalidation patents, the term of protection, the compulsory licensing regime, and the enforcement of intellectual property rights. Upon the identification of the ambiguous and controversial aspects of these provisions, the autor ends emphasizing the need for their improvement, in order that they respect the Constitution and the international treaties in force, taking into account the recent Brazilian legislation, which grants higher protection standards, thus allowing Argentina to recover its position as a pioneer in the recognition of intellectual property