Intellectual Rights 9

The authors analyze the courts’ decisions applying the treaty World Trade Organization (WTO) TRIPs in force as from 1st January 1995, on various controversial matters regarding the interpretation of the minimum standards of protection of the treaty in relation with the argentine norms on industrial property. The Argentine Supreme Court considered various of the dates established by the TRIPs for the application of its mandatory standards. The issue of the revalidation of foreign patents is also analysed in detail with relation to the “Unilever” decision and the various opinions of the Supreme Court members. The authors demonstrate that the Supreme Court doctrine is incomplete as for example it does not take into account the Treaty of Montevideo of 1889 in force, which allows revalidation of foreign patents. The authors also consider the decision of the Supreme Court in the case “Karl Thomae”, which they also consider not well grounded. One of the relevant consequences of TRIPs is the need to provide for preliminary injunctions and therefore various decisions are studied. The conversion of pharmaceutical process patent applications into product patent applications and the jurisprudence on this matter is also examined. In conclusion the authors consider that in spite of mistakes in the interpretation in some cases, the current tendency of the argentine jurisprudence is in favor of the acknowledgement of industrial property in accordance with TRIPs objectives.

The means to compensate for damages has evolved. At the beginning it was adopted by countries mainly to put an end to the infringement act. Nowadays members of the international conventions and those of the World Trade Organization have the obligation to adopt measures ordering not only ceasing with the infringement, but also to compensate adequately the intellectual property right holder. The author describes this evolution and compares the situation in a developed country such as the US with and emerging economy as Peru. While in the former country there are judicial precedents imposing millionaire compensations, in the latter country there are no civilian precedents of civil compensation for damages. However, the situation in Peru may change as a result of the Levi’s judicial case Levi’s, for infringement of a licensing agreement granted by Levis Strauss & Co. The author explains the problems and methodology to quantify the damages.

In view of the economic importance of Internet, the World Intellectual Property Organization (WIPO) has established standards to meet the new challenges in the protection of intellectual property. ICANN (Internet Corporation for Assigned Names and Numbers) is the organization responsible for the general coordination and the administration of domain names (DSN). Delegation of the administration of the system in the different countries correspond to those organizations that connected first in each country with Internet. The article analysis the similarities and differences between trademarks and domain names, which are a source of legal conflicts that the author classifies in: a) Conflicts based on legitimate rights; and b) Infringement by third parties and due to technology abuses. The author concludes that international agreements and national regulations are necessary to face these new challenges, and to gain confidence in order to allow a complete development of the opportunities that the new digital technologies offer.

Domain names are intellectual creations of their applicants, and they serve as exclusive identification of each holder in the world wide web of computers. Domain names are intellectual property. However, Internet exists with few regulations, which are issued by the agencies delegated to assign domain names. In practice, domain names may or may not be identical to trade-marks. But there is a substantial difference, because trademarks identify products or services, or a firm, while domain names is only an electronic address. The use of domain names may fall under the legal regimes governing trademarks, trade names, company names, or under unfair competition norms, depending on each case. The author analyses different infringements because of the use of domain names, which may even fall under criminal norms. Among other issues, the author also studies whether the use of domain names may satisfy the legal requirement to use trademarks, he summarises various norms to deal with controversies over the registration of domain names, and he suggests strategies to defend legal rights. The author concludes that it is necessary to study and understand the legal nature of domain names in order to make them compatible with other existing intellectual property rights.

After analyzing the debates on genetic manipulation and the importance of biotechnology in agriculture, the author focuses on the legal norms that regulate these inventions. She brings into consideration the norms in TRIPs, in UPOV Conventions, in the Biodiversity Convention, in Mercosur and in the Argentine legislation. Regarding this legislation, the author describes the contradictions between the legal norm of article 6g. (patent law) and the respective regulations (Decree 260/96), and concludes that the regulations exceed the legal text because it excludes in general the protections of animal and plants and not only those pre-existing in nature. As the Argentine National Institute of Industrial Property (INPI) applies the decree, the intervention of the judiciary will be necessary to make the law prevail. The author describes the criteria INPI applies, and as the patent application processes demand long periods of time there are still no judicial decisions on INPI’s rejections on applications, based on the new patent law. The author also analyses law 20.247 and the specific administrative resolutions on transgenic plants. Finally she makes a detailed study on the evolution of the regulations in the European Union, where these inventions are patentable except when they claim plant variety or animal race. The author concludes that the restrictions being applied in Argentina cause great damage, and leaves without protection a good number of inventions in the field.

The author analyses the juridical nature of the patent right, which has practical consequences. The scope of rights of the patent holder reaffirms the principle that a patent right is in fact a property right. Both the Argentine law and TRIPs determine expressly the right of the patent holder to grant voluntary licenses, therefore compulsory licenses can only be an exception. Therefore, the author opposes the initiatives that intend to convert the exceptional nature the licenses ordered by the State must have. Article 101 of the Argentine patent law 24.481 contradicts various TRIPs articles, under the excuse that it regulates a transitional period. The patent holder has the right to demand that all the requisites ordered by TRIPs are fulfilled. As to the new Argentine Antitrust law 25.156, the author considers that its article 2 amends the specific antimonopoly provisions of the patent law. The applicant to a compulsory license must demonstrate that his request fulfils the mandatory requisites established in the Argentine legislation together with TRIPs, art. 31.

The author analyses the norms in the field of industrial property that protect the results of clinical research and other experiments for products. When there is a patent covering a product or a process (including patents on uses), tests that make use of same must have the patent holder authorization. Any exception must fufil every requirement set in TRIPs, art 30. Criteria established by WTO panels must be taken into account in order to interpret the Argentine law 24.766, art. 8th. Without any need for a patent, results of tests must be granted by the protection established by TRIPs, art. 39.3, protection that is different and independent from patents. During the term of data protection, second and third applicants for registration –not authorized by the originator– must perform their own tests. Neither the health authorities in charge of registration of products nor the third unauthorized parties may rely, directly or indirectly, in the data obtained by the originator. Principles and norms that protect industrial property against unfair competition are also applicable. Protection of data is currently inefficient. The author points to several problems, such as lack of adequate regulations, inconsistent interpretations, lack of expeditious preventive measures and remedies which constitute a deterrent to further infringements.

The Patent Cooperation Treaty has been ratified by 108 countries and is administered by the Intellectual Property World Organization (WIPO). Basically, the treaty allows the filling of an international application, submitting the same in one of the member countries or at WIPO, thus the applicant obtains a priority date for his application valid in the member countries the inventor selects upon filling. Afterwards, the applicant has thirty months to start the processes in the countries he selected for protection (national phase). In this manner the inventor can protect his invention in various countries, enjoying a period of time to analyse the real possibilities of protecting the invention in the different countries he selected. In the Americas, various countries are members, among them: Brazil, Canada, the U.S. and Mexico. Other countries, such as Argentina, study their ratification. The author points out that the success of PCT is due to the fact that it leaves intact national sovereignties in order to approve or not to approve each patent application. The author also analyses the new Treaty on Patent Law concluded on 1st June 2000, in the process of ratification, with the objective to harmonize the formal requirements the national and regional patent offices have and to speed up the proceedings in the member States. The author studies the proposals that have been made to amend the PCT, as for example the certificate of patentability that has received objections. As to the possibility of a world patent, the author explains the positions of: a) Japan that favours a trilateral patent to be in force in said country, the European Union and the United States; b) the E.U. that offers its community patent as a basis; and c) the U.S. that proposes amendments in the PCT in various steps in order to arrive at the world patent. Among the conclusions, the author states that at least in the short run –due to differences among the industrialised and of the developing countries– it is unlikely that PCT will become the road to arrive at the world patent.