Bilateral IP office programmes: The UK IPO can help

Bilateral IP office programmes: The UK IPO can help

By IPcommentator   Monday, July 07, 2014   No comments:

This month’s IP connect, newsletter published by the UK Intellectual Property Office (UK IPO), provides food for thought, not least on a matter which this Leo mooted here last May. 

They are:

(1) Two patent examiners from the State Intellectual Property Office of the People’s Republic of China (SIPO) shadowed their counterparts at the UK IPO last month. [This is expected since both have commenced a two-year pilot on the Patent Prosecution Highway (PPH) initiative] 

Here is how the UK IPO summarised SIPO’s visit: “…The examiners compared searches and examinations made by the two offices of equivalent applications, and found that the similarities in tools, techniques and approach were far more striking than any differences.

When our guests weren’t comparing casework they received presentations and discussions on other aspects of the IPO’s work, including the patent publishing process and our opinions and mediation services. The SIPO examiners reported that they were impressed with the work of the IPO, a sentiment which was reciprocated by our own examiners.”

Source: here

(2) The second, albeit not a UK IPO initiative, is that the UK IPO hosted two rising Thai IP academics: Paramee Kerativitayanan and Napasa Cheydet. Both were the winners of the Young Thai IP Law Ambassador Award 2013, an academic competition run by the British Council in partnership with several major law firms and universities. [Well, we already know (again, also mentioned here) that the Thai Government would, more likely than not, gladly welcome and/or support this sort of initiative]

The newsletter further explains: “The Young Thai IP Law Ambassador initiative raises awareness of the legal and cultural issues around IP with the younger generation. It also looks to create an informal network for university students with a strong interest in IP. Participants have to go through a grueling selection process involving essays, interviews and mock court hearings. The winning duo will undertake a two-week visit to the UK and participate in various activities at leading intellectual property establishments, including judicial and academic bodies, top private law firms, and of course the IPO.”

 

Commentary

First, Afro-IP understands that these collaborative initiatives form part of the UK Government’s international IP policy, in particular, the UK IPO’s IP attaché scheme (programme) targeting key export markets. [This programme doesn’t yet cover the African continent but this Leo plans to generally look into it in a future post. In comparison to others, one could argue that the UK's stance on IP in least-developed countries (LDCs) is pro-development] The idea behind the programme is that since the BRIC and ASEAN countries are the emerging lucrative markets for UK plc, it is desirable for their IP regimes to be conducive for UK IP rights holders. 

  

Secondly, the “Young Thai IP Law Ambassador Award” (YTIPAA) is, indeed, very interesting: among others, it made this Leo wonder if 'certain' African countries might benefit from creating specialist courts to deal with specialist matters such as IP, and whether leading IP law firms, universities or public bodies, and IP-reliant private sector organisations in Africa should attempt to put something together.[Afro Leo is not naive to the fact that the African continent is home to 70% of the LDCs and that most of their IP offices need to come up to a level so as to make certain assistance meaningful. Thus, he says that any ideas for capacity building should take these factors into account]

Third, this Leo appears to have somewhat guessed right, last May, when he commented that he won’t be surprised if the UK IPO was already carrying out (formally or informally) an initiative similar to what he was proposing for African countries. Now that we know (or to be precise: this Leo now knows) that the UK IPO can do it, 'certain 'African countries may want to consider a similar initiative with them or others - if WIPO is not already covering it.

As always, readers are invited to comment on what is currently happening in a particular African country or region, if any, and/or what should be done.

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Coverage of the launch of the YTIPAA in 2010 is here and here

Nottingham Law School's coverage of YTIPAA here

Past winner of YTIPAA now at Queen Mary, University of London here

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Official bilateral IP office placement: Can the UK IPO go that far?

Official bilateral IP office placement: Can the UK IPO go that far?

By IPcommentator   Wednesday, May 28, 2014   No comments:

No, its not on Afro Leo's territory

This Leo must be an IP technical assistance fanatic to spot this piece in the UK IPO's May newsletter. It reads:

"In April, the IPO hosted a two-day visit for a rising academic from St Kitts and Nevis in the Caribbean. Ms Jihan Williams, a Chevening Scholar (UK Government’s global scholarship scheme) is one of their strongest candidates and is currently studying an LLM in Intellectual Property at Queen Mary University, London. 

Studies aside, Jihan is a lawyer at the Attorney General’s Chambers in Basseterre. Previously, IP functions in St Kitts and Nevis were handled by the High Court Registry, but in 2011 their IP function was made a standalone department, albeit with only three staff. The purpose of her visit was to see how an efficient, established IP office operates and to gain insight into our best practice. The UK also provides technical assistance to developing countries under the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights).

Jihan met with staff from our International Policy, Innovation, Enforcement, Copyright and Trade Marks directorates as well as with external stakeholders. The key message to Jihan was that awareness is key; if people respect IP they will carry the message further afield."

Commentary

The leafy UK IPO in Newport, better than London?

It is commendable that the UK IPO even granted Ms. Williams the unique opportunity to see the inside of its walls - albeit just for two days. Yes, IP awareness is important, but we also hope Ms Williams learnt  a lot more than that to benefit the IP office in St Kitts and Nevis.

(1) Can this be formalised or extended for the benefit of certain countries, most in need?

This Leo still remembers the two photographs shared by Nicky Garnett (Second Speaker) at the MIP Forum 2014 which go to support his online discoveries on the state of most IP offices across Africa. IP capacity-building is obviously an issue across the continent.

So, should the UK IPO build upon this kind gesture (as assumed) to Ms Williams by formalising it for students from certain African countries? [Afro Leo might set up a poll on this] For this Leo, it may well be that WIPO is largely taking care of assisting developing countries with administration of IPRs, but developed-country WTO members can equally offer the same - not just on IP enforcement training.

(2) How might this idea work in practice?  Assuming the beneficiary requests for the assistance, and is also ready and willing to play its part in the process, below is this Leo's off the cuff suggested structure - which is not the most innovative idea:

(a) Get the relevant government department, responsible for the funding IP office, to sponsor a few of the brightest commercial law students from its leading law school (or current staff within the IP office) to pursue postgraduate IP studies at a reputable IP institute abroad [Yes, the Government of Thailand is very good at this; this Leo's lovely Thai classmates, back then at college/university, were all on scholarships];

(b) Before the student(s) set off abroad, he/she should spend a good one or two months at his/her country's IP office to understand how they operate [Not applicable to staff];

(c) When in the host country  (e.g. the UK), the university (e.g. QMU, London) - who will already have an arrangement in place with the host country's IP office (i.e. the UK IPO) - will, at a scheduled point, allow the student(s) to go on a placement at the UK IPO. Ideally, the placement should, at least, last for a couple of weeks and expose the student(s) to all types of work including appeals. [Fortunately or unfortunately, the UK IPO is based in Newport, South Wales. The hope is that the scholarship will also cover other things such as accommodation]

(d) Having returned to the university, the student may be expected to write a short comparative coursework on his/her experiences;

(e) When the postgraduate programme is complete, the student leaves to, hopefully, join (or rejoin) his/her country's IP office.

Concluding remarks
Essentially, all that is required from the relevant African Government department is to simply provide the funds to its IP office to take it from there with its counterpart and the academic institution abroad. This reduces bureaucracy.

Placement programmes (professional or not) are nothing new to UK universities or any university around the world; thus, emerging difficulties should be easily tackled. Also, other issues such as confidentiality can be equally handled by the host IP office with appropriate measures. To be relevant, the postgraduate programme could include general IPR administration as a module - with a core focus on certain registrable rights such as designs, trade marks and utility models.['Opportunity to offer more specialist courses', Afro Leo whispers]

Source: here

No doubt that the UK IPO is doing its best, under financial constraints, in the area of IP technical assistance. This Leo won't be surprised if this sort of initiative (official or informal) is already going on between the UK IPO and a few countries, or between other countries. [OAPI or ARIPO could've been the appropriate entity to deliver this sort of assistance to African countries. Unfortunately, things are currently fragmented]

To his mind, this idea or something similar would be much more meaningful and probably less expensive than having a developed country send its IP office staff to developing countries to deliver one-day IP awareness seminars etc - something lawyers/experts within most of those countries can handle.

[Afro Leo selfishly thinks that the UK should attempt to lead on this - starting with African countries - in order to keep totting up Afro Leo IP technical assistance points] Hopefully, it doesn't or shouldn't cost a lot (in monetary terms, if any) for the UK IPO to give this a try. Work experience (paid or unpaid) often just require staff with a bit of patience and time to show someone a thing or two.

Ultimately, the curiosity is whether this is feasible and/or too much to ask for.

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To see how far a UK IP owner can stretch its right(s) to St Kitts and Nevis, try here

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A review of African official IP websites: no. 30: Malawi

A review of African official IP websites: no. 30: Malawi

By IPcommentator   Monday, February 04, 2013   No comments:

This Leo is back inland and finds himself in a landlocked country where there is still no designated website for the Department of Registrar General (Ministry of Justice and Constitutional Affairs). Browsing around, the Ministry's website does not have much to offer to an IP stakeholder. He leaves here looking forward to next stop, Mali. 

Around the web for related IP news

Domestic

Algeria: WIPO has been around in Algiers on a mission to improve the transfer of technology between industrialized and developing countries and Algeria is about a launch a technology transfer office, See here and here 

Nigeria: The Nigerian Copyright Commission recaps on 2012 including its litigation success in 31 copyright infringement cases (26 criminal prosecutions and 5 civil). Read all about it here

International
IPRs and public health study: WHO, the World Intellectual Property Organization (WIPO) and the World Trade Organization (WTO) will launch a new study on the linked roles that public health policies, intellectual property and trade can play in advancing medical technology and ensuring it is available equitably to all who need it. The event will be open to the public and take place at 16:30–18:00 on 5 February 2013 in the WTO’s CR Building. 

To register for the event by email ipd@wto.org. For more details see here 

Japan increases its contribution to WIPO: This blog has hosted posts (here, here, here and here) on IP-related technical assistance to developing countries; therefore, it is delighted to learn that Japan has increased its voluntary contributions to support WIPO's activities in developing countries. To read more, see here

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TRIPPING on IP Technical Assistance: Part II

TRIPPING on IP Technical Assistance: Part II

By Anonymous   Wednesday, December 12, 2012   No comments:

In part I of this two-part piece, this Leo picked excerpts  from Article 67 of TRIPS and then set out a series of questions scrutinising the effectiveness of the provision in ensuring holistic IP technical assistance from developed-country WTO Members (DCs) to developing and least-developed country WTO Members (D/LDCs). This investigation continues here in part II where we consider phrase (B) - which this Leo has split into two strands:  

• ...as well as on the prevention of their abuse,..... 
• and shall include support regarding the establishment or reinforcement of domestic offices and agencies relevant to these matters].

The first strand - including its foregoing in bold red - tells this Leo that DCs are not just required to assist D/LDCs become TRIPS-compliant, but shall also support them utilise the flexibilities within TRIPS. In particular, it states that DCs ought to assist D/LDCs in framing IP laws and policies which will withstand or deter potential abuse of IPRs. This Leo further reads the second strand as placing a duty on DCs to play a role in the establishment and/or the sustainability of domestic IP offices and agencies in D/LDCs. So, the curiosity is as follows:

    (1)  Why would any IP enthusiast easily believe that a DC, such as the USA, would want to assist D/LDCs get around their TRIPS commitment or ensure they fully apply its flexibilities? (Afro Leo is thinking that the opposite is the case - a DC is more likely to push for TRIPS-plus);

    (2)   If the mandate in Article 67 is for the advancement of domestic IP offices in D/LDCs, why is there also the increasing links and support through regional organisations such as ARIPO and potentially coming soon, to the much criticised over-arching PAIPO? (Digressing, Afro Leo does not even feel that the regional organisations (ARIPO and OAPI)  are supported well enough. If you consider their status in Africa and compare that to their websites,  one would expect their websites to look like either of these: OHIM, BOIP or EPO);

     (3)   Is it fair and reasonable (cheeky, says Afro Leo) to interpret “reinforcement of domestic IP offices” as not just meaning, 'the training of personnel and the like', but to also include equipping the IP offices across Africa for 21^st century IP administration and practice? (Afro Leo notes that there are countries in Africa (e.g. here and here) whose houses are in order in this regard - as things appear online); and

(4) Which sort of "agencies relevant.." are we referring to here? (To Afro Leo, "agencies" resonates as 'IP enforcement').

Conclusion

Taking parts I and II together, it seems to me that a proper debate is due on the effectiveness and benefits of Article 67 as this specific area receives little or no attention in the midst of the often heated arguments on the form and/or existence of IP laws in D/LDCs.

Before drawing my conclusions, it is worth pointing out that the level of economic development, resources and IP activities across Africa varies and hence the need for a tailored approach in any technical assistance rendered. Furthermore, and although not the focus here, this Leo does not lose sight of the various IP technical assistance projects undertaken by WIPO including the IP information service in collaboration with some DCs. (Afro Leo says, the expectation that in a 21^st century, all IP registries across Africa should have an online presence is a plausible one. He feels that the same effort put in by DCs to assist African countries draft and/or enforce the sort of IP laws and policies, by will or pressure, on a par with theirs should also be put towards making sure that the IP offices in these countries operate online for benefit of interested parties within or outside a given country.)

Perhaps, it would be too costly for a DC to provide the IP office of an African country (or even ARIPO or OAPI) with a fully functioning database-integrated website. As this Leo found out, in 2008, the UK Intellectual Property Office (UK IPO) rebuilt its website at a cost of £362,000, and currently maintains it at an annual cost of £258,000. Although one would not expect those two figures to be the same in a D/LDC, in some way, it paints a picture as to why most African countries – especially, the less well-off ones - would be reluctant to commit sparse funds to a website slightly comparable to that of the UK IPO. (Afro Leo knows that some African countries are resource-rich and may well afford it, but wonders whether the income they generate are actually used  to solve their critical problems. He also feels that IP is, probably, at the bottom of the list of priorities for most African countries though some are beginning to take serious notice of it recently)

The only thing that is clear to this Leo about Article 67 is that IP technical assistance to D/LDCs is not exclusive to multi-lateral institutions such as the World Intellectual Property Organisation (WIPO).  Having broken Article 67 into bite-sizes, he remains sceptical - hypothetically speaking - because it feels as if DCs are comfortable and busy performing well on those excerpts highlighted in bold red in part I (e.g. training D/LDCs to enact and enforce IP laws and policies - sometimes strict ones); while there appears to be little appetite to seriously work on phrase (B) above - a part which may well be more advantageous to D/LDCs. This doubt is further exacerbated because there are no clear repercussions if  DCs fail to act in accordance with the spirit and letter of Article 67.

Therefore, this Leo is left to conclude that Article 67 is not an obligation in its strict sense; rather, a gratuitous interest-driven and one-sided commitment to get everyone fully on-board (Just because a great majority of African IP offices lack an online presence does not mean Article 67 is not fit for purpose or does not work, Afro Leo warns. But he also holds similar views that Article 67 is based on a DC's own terms). The hope is that one day, readers would be able to visit the website of any IP office in Africa to conduct searches for prior art or earlier registered trade marks as well as get relevant IP news update. DCs can make this day come sooner rather than much later.

Maybe, the problem does not lie within Article 67 after all; what do readers think.

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To search the records of technical assistance by developed countries, see here (This year alone, developed-country WTO members such as European Union (including its individual Member States), Canada, United States, Australia, Norway, Switzerland, Japan and New Zealand have all offered assistance and cooperation to D/LDCs. Most of these were in the form of training, workshops and seminars geared towards enforcement of IPRs)

For a factsheet on WTO’s trade-related technical assistance, see here

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