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G E N E VA – A U G U S T 2 0 0 8 – N o . 4 A SIZZLING 2 SUMMER for Spectator Sports PATENT 8 LANDSCAPING Shedding Light on the Life Sciences 12 AFRICAN DESIGNERS Traditional with a Twist

2008 INTA/WIPO INTERNATIONAL FORUM ON TRADEMARKS AND INDUSTRIAL DESIGNS SEPTEMBER 24, 2008 RADISSON SAS, ROYAL HOTEL BRUSSELS, BELGIUM LOOK BEYOND THE BORDER OF TRADEMARKS Join experts from the International Trademark Association (INTA) and the World Intellectual Property Organization (WIPO) as they venture beyond the border of trademarks into the world of industrial designs. You will gain a basic understanding of the most common protection systems and walk away with practical tips and advice that you can use on a daily basis. The conference brings together WIPO experts and prominent speakers from the industry and legal profession to give participants an inside look into the most important topics concerning the use of the Madrid System and other related issues at WIPO. For more information or to register, please visit www.inta.org/go/inta-wipoconference2008 Calendar of Meetings SEPTEMBER 22 TO 30 GENEVA Assemblies of the Member States of WIPO (Forty-fifth series of meetings) Some of the assemblies will meet in extraordinary session, other bodies in ordinary session. Invitations: As members or observers (depending on the assembly), the States members of WIPO; as observers, other States and certain organizations. OCTOBER 6 TO 10 GENEVA Preparatory Working Group of the Committee of Experts of the Nice Union for the International Classification of Goods and Services for the Purposes of the Registration of Marks (Twenty-seventh session) The Preparatory Working Group will continue its work of revision of the ninth edition of the Nice Classification. Its recommendations will be submitted for adoption at the twenty-first session of the Committee of Experts of the Nice Union in 2010. Invitations: As members, the States members of the Preparatory Working Group of the Committee of Experts of the Nice Union; as observers, the States members of the Paris Union, which are not members of the Preparatory Working Group, and certain organizations. OCTOBER 21 AND 22 GENEVA WIPO Arbitration Workshop An annual event for all persons interested in WIPO arbitration procedures, both as potential arbitrators and as potential party representatives. Invitations: Open to interested parties, against payment of a fee. OCTOBER 23 AND 24 GENEVA WIPO Advanced Workshop on Domain Name Dispute Resolution: Update on Practices and Precedents An event for all persons interested in receiving up-to-date information about the trends in WIPO domain name panel decisions. Invitations: Open to interested parties, against payment of a fee.

GENEVA, AUGUST 2008 CONTENTS 2 SPECTATOR SPORTS BREAKING RECORDS IN IP REVENUES 3 TECHNOLOGY, INNOVATION AND GRIT: FASTER, HIGHER, STRONGER IN DISABLED SPORTS 6 SCORING DOMAIN NAME WINS AT WIPO 7 SPOTLIGHTS ON SHANGHAI INTERNATIONAL FILM FESTIVAL 8 SHEDDING LIGHT ON THE LIFE SCIENCES: PATENT LANDSCAPING FOR PUBLIC POLICYMAKERS 11 OAPI JOINS INTERNATIONAL INDUSTRIAL DESIGNS TREATY 12 INTERNATIONAL HOME DECORATION MARKET BECKONS AFRICA’S DESIGNERS 15 IP AND BUSINESS HOW TO SUCCESSFULLY BUY OR SELL A BUSINESS WITH IP ASSETS 18 COMMITTEE MEETINGS 20 INTER-REGIONAL FORUM ON DEVELOPMENT AND SERVICE-ORIENTED IP ADMINISTRATION 21 IN THE NEWS 22 LETTERS AND COMMENT 24 BOOK REVIEW WIPO MAGAZINE ISSUE 2008/4 Assistant Editor: Sylvie Castonguay Acknowledgements WIPO Contributors © World Intellectual Property Organization Graphic Designer: Sheyda Navab Richard Owens (WIPO Copyright C. Jewell (Media Relations & Public E-Commerce Technology and Affairs Section) P. 3-5 Management Division) P. 7 A.-J. Bossenbroek, B. Beckham Cover textile design: (Arbitration & Mediation Center) P. 6 Atelier Ndomo, Mali A. Taubman (Global IP Issues Div.) Photo: Design Africa P. 8-10 A. Swaminathan (Communications & Public Outreach Div.) P. 24

AUGUST 2008 2 SPECTATOR SPORTS BREAKING RECORDS IN IP REVENUES Photos.com It is a summer for sport fans. The UEFA* Euro 2008 filled screens in June and the Beijing Summer Olympics will captivate audiences throughout the month of August. Euro 2008 generated €1.3 billion (US$2 billion) from broadcasting rights, trademark sponsorship and ticket sales – 50 percent more than the 2004 total. The 2005-2008 Olympic cycle – covering both winter and summer Olympics – are expected to far outperform the US$4.2 billion in revenues generated in the previous Olympic cycle. Euro 2008 The Euro is challenging the Olympics to be the most watched sport tournament after the World Cup. No single Olympic event has drawn the 161 million viewers the Euro 2004 final between Greece and Portugal attracted. The European football championship is very popular in South America and Asia; it is reportedly impossible to find a taxi in the wee hours of the morning in Singapore when games are on. The official EURO 2008 website – which offers coverage in ten languages, including Japanese, Korean and Chinese – registered over one billion page views in the four months preceding the event. In June alone, 42 million visitors from 200 countries logged into the site with a peak of 4.3 million viewers in a single day and half a million per hour to follow live coverage on the Internet. Statistics: Broadcast of UEFA acknowledges that “The sums from TV rights and sponsors the Athens Olympic Games are much bigger than the sums generated from ticketing.” After the final tally, television broadcasting – the licensing of copyright- The 300 events provided over 4,000 hours of live tele- related rights – amounted to 60 percent of Euro 2008 earning. vision coverage. Marketing – sponsorship from trademark owners and products that Utilized more than 1,000 cameras and 450 video tape carry the Euro logo – reached 21 percent. machines Olympic Games Employed 3,700 people. Worked with more than 12,000 accredited right- Sponsorships and broadcast licensing revenues are a boon for the holding broadcast organizations to reach people in Olympics, increasingly hard-pressed to cover the escalating costs re- 220 countries. lated to organizing the event. The Beijing Olympics may even be Total viewer hours 34.4 billion. profitable. The revenue from national sponsors – 7 of 10 are Chinese companies – is expected to surpass the US$1 billion mark, almost twice that of the Athens Olympics. Add to that the US$866 million from the 12 international sponsors that are part of The Olympic Partners Programme (TOP), a long-term corporate partnership covering a four-year term in line with the Olympic quadrennium. There will also be further revenues from merchandize products carrying the Olympic logo and the Beijing Games mascots. Broadcast revenues, which amounted to US$1.494 billion in 2004, will top US$1.737 billion this summer – this without the compromise of the Olympic Charter regulation that all television agreements be princi- pally based on free-to-air broadcasting. To optimize revenues the International Olympic Committee nego- tiates directly with broadcasting organizations for television, mobile telephones and the Internet rights, cutting out third-party commissions. Digital technology and the Internet have opened more options for broadcasting, further increasing revenues. In July the International Olympic Committee signed an agreement with Terra for the Internet and mobile platform exhibition rights within Latin America, a new and growing source of revenue for * Union of European Football Associations the organization.

3 TECHNOLOGY, INNOVATION AND GRITFaster, Higher, Stronger in Disabled Sports Nowhere is the impact of techno- ing arena for these athletes. Today Photo: Lieven Coudenys logical innovation more evident specialized prostheses are crafted than in the area of disabled sports. to meet the specific requirements For years athletes with talent, de- for amputee athletes aiming to termination and drive have been compete. Similarly wheelchair excluded from competitive sports technology now allows adjust- by disabilities. But scientific inno- ments to readily accommodate vation has come a long way in the varying needs of the athletes finding solutions using bio-me- competing in different sports. chanics and other technologies to Prosthetics – serve these athletes. flexible, comfortable, The development of new materi- durable als and cutting-edge designs as well as major advances in engi- neering and surgical techniques Prosthetic devices, such as artifi- Images from the 2004 Paralympics in have given disabled athletes un- Athens. cial limbs or eyes, have existed for precedented opportunities to ac- centuries, but early devices were tively participate in sport. These trends have put crude, heavy, unwieldy and uncomfortable. sport as recreation within the reach of many indi- Greater understanding of the biomechanical func- viduals with a disability, but also have boosted the tioning of the human body along with the creation ranks of elite athletes with disabilities and enabled of lighter, stronger and more flexible materials and previously unimaginable sporting feats. the emergence of increasingly sophisticated engi- neering technologies have resulted in prosthetics The 13th Paralympic Games, which will be held in that offer greater movement, comfort, strength Beijing in September, demonstrate this advance in and durability. In fact, the pace of innovation in this disabled sports. Some 4,000 Paralympians from 150 area is so rapid and wide-ranging that even the countries will participate in the Games, marking a prospect of bionic limbs is fast becoming a reality. ten-fold increase from the 400 competitors from 23 countries in the 1960 Games in Rome. The Games For Frenchman Ambroise Paré, who introduced will include a wide range of sport – archery, athlet- amputation as a medical option in the 1500s and ics, boccia, cycling, equestrian, 5-a-side and 7-a- thereby paved the way for a more widespread use side football, goalball, judo, power lifting, rowing, of prosthetics, today’s startling advances in human- sailing, shooting, swimming, table tennis, volleyball machine neural interfaces must have been (sitting), wheelchair basketball, wheelchair fencing, unimaginable. The creation of electronic knees and wheelchair rugby and wheelchair tennis. Athletes arms whose movements are triggered by electrical from six different disability groups defined by the signals generated by nerves in the remaining parts degree of function determined by the disability – of limbs would have seemed like science fiction. those with an amputation, cerebral palsy, visual im- Before long, the continuing commitment of re- pairment, spinal cord injuries, intellectual disability searchers, scientists, engineers and manufacturers and others which do not fit into these above working with athletes with a disability in their groups – will participate in these events. search for optimal solutions will surely result in prostheses that can faithfully replicate the natural Major advances in the prosthetics industry and turns and twists of a human leg, arm or hand – wheelchair technology have transformed the sport- moves that are essential in most sports. >>>

AUGUST 2008 4 These types of developments are strong, flexible and light-weight Photo: Lieven Coudenys not only revolutionizing the solution. In 1982, he teamed up world of disabled sports but are with Dale Abildskov, an aerospace also beginning to stimulate de- composite materials engineer, bates and raise questions among and together they set about authorities that regulate the building a carbon fiber prototype. able-bodied sports. By cutting the carbon fiber into a “C” shape, it was possible to take Oscar Pistorius full advantage of the strength and wins his case flexibility of carbon fiber, which helped simulate the spring action Earlier this year, a South African of a normal foot and allowed the double amputee sprinter, Oscar user to run and jump. Pistorius, won his appeal against the IAAF (International Association In 1984, Philips established Flex- of Athletics Federations) ruling Foot Inc. to market his invention; We are captivated by the that his carbon fiber prosthetics determination and drive of athletes and in 2000, he sold his company gave him an unfair advantage over long excluded from competitive to Ossur, an Icelandic manufactur- sports by their disabilities… able-bodied athletes in his bid to er. Philips retained ownership of compete in the Beijing Olympic the patent rights to his invention Games. Pistorius still has to achieve the qualifying and continues to work with Ossur to develop new time to compete in the Beijing Olympics, but his and improved prosthetics. successful battle with the sporting authorities is un- Wheelchair sports doubtedly encouraging for all disabled athletes. Born with a congenital condition that left him Another area in which patented technologies have with lower legs but no feet, Pistorius runs on car- had a significant impact is that of wheelchair sports. bon fiber blades: the Ossur Flex-Foot®, also Growing interest and participation in these events known as Cheetahs. He has broken his own world since the 1970s, along with, once again, the greater record on 26 occasions and has recorded times availability of lighter-weight materials, fuelled the better than those of the equivalent women’s races development of wheelchairs for specific sports, in the 2004 Athens Olympic Games. To become such as basketball, rugby, soccer, tennis and racing. the first sprinter with a disability to compete in the Olympics, Pistorius will have to run 400 me- Unlike standard wheelchairs, those used in sport ters in 45.55 seconds to be selected for the South have rigid adjustable structures that do not fold, African relay team. thus increasing their strength and solidity. Their unique camber offers greater stability when turn- Pistorius’s prosthetic feet are engineered to enable ing sharply, and reduces injuries from falling or tip- a more natural gait and to maximize comfort. The ping. Sports wheelchairs are made of composite, carbon-fiber blades were invented by an American lightweight materials that are stronger and more student, Van Philips, after a water-skiing accident in versatile. Their lighter weight saves athletes from 1976, which resulted in his left foot being amputat- having to spend more energy to move around in ed. Frustrated with ill-fitting and unresponsive pros- them, reducing shoulder and wrist injuries and al- thesis, he devoted his energies to the search for a so making the chairs easier to transport. Wheelchair technology While the first patent for a wheelchair was granted in the United States in 1869, wheelchairs were mass produced only in the late 1930s. In 1937, a m patent was granted to two engineers, Harry Jennings and Herbert Everest, .co os ot Ph for a wheelchair with an x-brace frame which enabled it to be folded without having to move the drive wheels. This design, which allows the wheelchair to be more easily transported, remains the standard for man- ual wheelchairs today.

5 Going the Distance Natalie Du Toit, a South African swimmer, is the first woman amputee to qualify for the Olympics. Unlike Oscar Pistorius, Du Toit does not use a controversial prosthetic limb, so did not have to fight for her right to participate. Born in Cape Town in 1984, Du Toit competed internationally for the first time in 1998. In February 2001, she had an accident on her way to school when her scooter was hit by a car; her left leg was subsequently amputated. That did not stop her. In May she was swimming again in anticipation of Photo: Anesh Debiky/ Yana Ivanova the 2002 Commonwealth Games where she would become the first athlete with a disability to qualify for an able-bodied event: the 800 meter freestyle final. She went on to win two gold medals at the 2002 Commonwealth Games’ Elite Athletes with a Disability and five gold medals and one silver in the 2004 Athens Paralympics. Du Toit made history when she qualified for the 2008 Beijing Olympics in May after taking fourth place in the 10km World Open-Water Swimming Championship in Seville, Spain. She be- “You’re still the same as everybody else because you have the same dream.” – Natalie Du Toit will go to the Beijing came the first Olympian with a disability. Her time was only 5.1 Olympics as part of the South African Swim Team. seconds behind the winner, so her chances are good for the Olympics. Du Toit will, of course, also be competing in the Beijing Paralympics in September. As Du Toit put it to Telegraph reporter Simon Hart, “Going out there in the water, it feels as if there’s nothing wrong with me. It doesn’t matter if you look different. You’re still the same as everybody else because you have the same dream.” The 1975 Boston Marathon was the first major race Photo: Lieven Coudenys to include a wheelchair division. That year Bob Hall completed the race in 2 hours and 58 minutes. Today the course record for women, established in 1994, is held by Jean Driscoll (USA) who completed the race in 1 hour 33 minutes and 22 seconds. Since 2004 Ernst Van Dyck (South Africa) has held the course record for men: 1 hour 18 minutes and 27 seconds. Technology has had a major impact in enabling athletes to achieve these dramatic improve- ments in performance. …and share the enthusiasm and joy of their families. 2008 Beijing Paralympic Games Fortius (faster, higher, stronger). Technology, per- haps more than any other factor, will determine When we tune into the Paralympic Games in the future evolution of sport and the rules that September, we can only marvel at the courage, de- govern them. termination and dedication of these exceptional individuals who have reached the levels of sport- The sporting achievements of remarkable individu- ing excellence that many able-bodied athletes can als like Oscar Pistorius and Dame Tanni Grey- only dream of. The startling achievement of many Thompson, a British wheelchair athlete who won a sports scientists, engineers and surgeons also de- total of 16 Paralympic medals and held over 30 serve recognition for their ingenuity and creativity world records and is also six-time winner of the in developing the technologies that enable hu- London Marathon between 1997 and 2002, bear man bodies to adapt to disabilities in ways previ- witness to their outstanding courage, commitment ously unimaginable. and drive, and also serve as testimony to the ability of humankind to overcome adversity through inge- As the motto of the Olympic Movement attests, nuity and creativity. sport has always been about progress – Citius, Altius,

AUGUST 2008 6 SCORING DOMAIN NAME WINS AT WIPO Speed may be A record 2,156 complaints against Disputes over domain names often of the essence alleged cybersquatters were filed start long before the actual events. at WIPO’s Arbitration and Mediation For example, the Center has already Center in 2007. The problem showed administered cases pertaining to the The expedited and cost-efficient no signs of abating 2010 FIFA (Fédération Internationale case resolution service offered un- Photo: South Africa 2010 Local Organising Committee in the first half of de Football Association) World Cup der the UDRP is a key benefit for all 2008. Complainants and the 2012 PGA (Professional parties filing cases for alleged cy- cover a wide spec- Golfers Association) Championship. bersquatting, as is evident from trum: individuals – Other cases involved the names of several sports-related cases. For ex- authors, entertain- competitions such as the Premier ample, on the eve of SuperBowl ers, athletes – com- League, the Orange Bowl, the XLII, the NFL filed a case that in- panies, and non- NCAA (National Collegiate Athletic cluded among other domain names profit foundations. Association) Final Four and the superbowlxliipackages.com. WIPO Trademark holders London Marathon. Among sports appointed a Panel that was able Moses Mabhida from all sectors – biotechnology authorities, cases have been filed by to render a decision transferring Stadium in Durban currently in and pharmaceuticals, banking and the National Football League (NFL), those domain names to the NFL construction for the finance, food and beverages, fash- National Association for Stock Car prior to the event. Similarly, in 2004 FIFA World Cup South ion, Internet, etc. – take advantage Auto Racing (NASCAR) and UEFA. when Madrid was one of five cities Africa 2010. The WIPO Arbitration and of the Center’s expedited dispute on the short list for the Interna- Mediation Center has resolution procedures under the If many sports-related complaints tional Olympic Committee’s host already administered Uniform Domain Name Dispute are filed by event organizers, others city bidding process for the 2012 cases pertaining to the 2010 World Cup. Resolution Policy (the UDRP). This are filed by participating sports teams Olympic Games, the organization article takes a closer look at the who seek to reclaim their name on responsible for promoting Madrid’s sports sector which has repeatedly the Internet. The latter have included bid to host the event obtained a found its way to the Center. One football clubs AFC Ajax (Amsterdam, transfer of several domain names, need only look at the recent UEFA Netherlands), Panathinaikos (Athens, such as madrid2012.com, prior to EURO 2008 football championship Greece), Juventus (Turin, Italy), Real the final selection. to appreciate that sports have Madrid (Spain), Galatasaray (Istanbul, evolved into a truly global indus- Turkey) and Schalke 04 (Gelsen- As these examples demonstrate, try with multiple stakeholders. kirchen, Germany), and also basket- the sports industry clearly benefits ball’s New York Knicks and American from the Center’s dispute resolution Popularity football’s Carolina Panthers. services under the UDRP. Whether increases the case is more timeless, such as cybersquatting With sports teams figuring promi- with NASCAR or UEFA, or topical, nently among WIPO claimants, it such as the 2010 FIFA World Cup, or Sports-related domain name cases should come as no surprise that in- those related to the upcoming touch upon a wide range of sports dividual athletes also have found Olympic Games, the UDRP option – the more popular the sport, the their way to the Center. Examples offers rights owners an opportuni- more frequently it is the target of include Kareem Abdul-Jabbar, Lance ty to reclaim their online properties cybersquatters. Basketball, American Armstrong (see WIPO Magazine in an efficient and effective manner football, golf, football (soccer), 6/2005), and Wayne Rooney (see without needing to go to court. If Formula One motor racing and WIPO Magazine 6/2006). The Center one of the principal functions of hockey are at the top of the target has further processed cases relat- trademarks is to prevent consumer list. Major sporting events, such as ing to venues, such as Madison confusion, the fans are also win- the Super Bowl, the Volvo Ocean Square Garden in New York and ners when domain names are Race, the UEFA Champions League Wembley Stadium in London. Cases transferred to the rightful owners. and the Olympic Games, are also covering the trademarked prod- popular targets, and their organizers ucts of sporting good manufactur- have successfully challenged domain ers – Nike, Adidas, Oakley, Speedo, name registrations through WIPO. Converse, etc – are also filed with some regularity.

7 SPOTLIGHTS Shanghai International Film Festival While Beijing was starting to burn with the Summer Olympics heat in June, China’s largest city, Shanghai, was welcoming a star studded international cast to the 11th Shanghai International Film Festival (SIFF). Famous directors and producers, glamorous ac- tresses and suave leading men posed for cameras as they walked up the red carpet on opening night. The competition lineup included films from Argentina, China, the Czech Republic, Japan, Lithuania, New Zealand, the Republic of Korea and Russia. A series of fora took place during the Festival, including the National Symposium on Copyright and Related Rights in the Film and Audiovisual Sector, organized by WIPO in cooperation with the State Administration of Radio, Film and Television of China (SARFT) and supported by the Ministry of Culture, Sports and Tourism of the Republic of Korea. The Festival offered an ideal opportunity to attract film and television producers as well as representatives of media distribution companies to participate in the Symposium. Shanghai as a film center The booming, bustling, 1930s Shanghai was the birthplace and the center of Asian cinema. Its film industry was second only to Hollywood. Shanghai lost this prized position as other Asian countries built up their cinema industry. But Shanghai’s star is now on the rise – due mainly to the new market economic reforms of the 1990s. At the first SIFF in 1993, four of the 19 competitors received Golden Cup Awards and one a Special Jury Award. A total audience of 300,000 viewed 167 films from 33 countries. Today, SIFF is one of the few A-listed international film festivals in Asia. It is considered to be on a par with Cannes Festival and both are recognized by the International “Mukha,” Russian filmmaker Vladimir Federation of Film Producers Associations. Kott’s directorial debut, scored the top prize at the 11th Shanghai In addition to art and commercial films, SIFF presents independent films, short films International Film Festival. and documentaries from diverse cultural backgrounds. Many may have already been screened overseas, but the Festival provides the first opportunity for local audiences to view the films in China. Backed by SIFF’s support for foreign investments and co-production deals, Shanghai is regaining its place in the cinema industry within China and beyond. WIPO Symposium Photos: SARFT The first theme in the WIPO Symposium, “New Challenges for the Production and Distribution of Audiovisual Content,” addressed the challenges for global accessibility to copyright content in the digital environment, highlighting current issues in China including the structure of legal protection for audiovisual content. In the next session, “Maximizing the Value of Audiovisual Content: Contract and Licenses,” specialists from China, the U.K., Hong Kong, the U.S. and Korea addressed hot topics such as the principal rights owners in a film – producers, directors, cinematographers, etc. – and how The opening ceremony to the WIPO to secure the widest possible grant of rights in order to maximize the value of the film. Symposium. Other presentations dealt with audiovisual licensing in Korea, including the role of the judiciary, emerging film business models and threats, the role of new technologies in digital film production and perspectives for the future on collective licensing in the Chinese film industry. The seminar closed with a panel discussion where speakers and participants ex- changed views on issues such as pricing mechanisms for “video on demand” services; the legal ins-and-outs of protecting television show formats; statutory licensing systems for film creators in other countries, etc. Throughout the Symposium, participants showed a real-world understanding of the grim effects of piracy on audiovisual revenues and the critical importance of effective IP rights enforcement. The Symposium thus made a timely contribu- tion to the growth potential of China’s emergent film industry, as it seeks to provide a solid basis for remunerating its film creators while meeting mushrooming global demand for high-quality film content.

AUGUST 2008 8 SHEDDING LIGHT ON THE LIFE SCIENCES Patent landscaping for public policymakers The life sciences offer tremendous promise for human- to use effectively. Recent advances in information ity – new medicines, better crops, a cleaner environ- technology and broader Internet access mean that ment – while at the same time fuelling debates over patent information is now much more readily avail- such diverse questions as bioethics, access to medi- able.* Obviously, many important life sciences tech- cines, food security, custodianship of the environment nologies are not published in patent documents. But – even the very genetic identity of humanity. It is not, the in-principle transparency of the patent system and therefore, surprising that policymakers, consumers, in- greater practical accessibility make patent data a valu- dustry bodies and others scrutinize developments in able resource for policymakers and analysts concerned the life sciences closely and demand good quality, ac- with life sciences issues – for the content of patent cessible information as documents, and increasingly for the guidance that can Photo: FAO/Robert Grossman the basis for effective be extracted from collections of patent documents – regulation and sound not just point-by-point technical analysis but the policy decisions. prospect of reviewing the technology landscape. Patents offer pathways Photo: Nature for generating, dissemi- nating and implementing valuable new technologies for greater Rice is a staple in many public welfare. But life sciences patents have been a developing and least developed countries. source of controversy – consider recent debates con- Policymakers therefore cerning patents for stem cells, diagnostic tools and need to assess the rice genes, or questions about the impact of patents potential impact of patents on sequences on access to medicines and on transfer of environ- Rice Genome Sequence. A patent landscape can help answer from the rice genome. questions such as: How much of the rice genome has been mentally friendly technology. patented? By whom? What is the practical impact of this for farmers, breeders and agricultural researchers? An essential function of the patent system is to deliv- er information to the public: informing the public is Patent landscaping: from not an incidental benefit of the patent process but is raw data to knowledge built, by design, into the very foundations of the system. The patent system discloses: Legal information, including published details of A patent landscape is an overview of patenting activ- what material is patented, with what legal scope, ity in a field of technology. A landscape normally seeks in what countries, in whose name, and when it to answer specific policy or practical questions and to passes into the public domain; present complex information about this activity in a Technological information such as a patent’s so- clear and accessible manner. Industry has long used called ‘teaching’ or technical disclosure, which is patent landscapes to make strategic decisions on in- * WIPO’s PatentScope® required to give a skilled reader all the informa- vestments, research and development (R&D) direc- Search Service (www.wipo.int/ tion needed to put the new technology into tions, competitors’ activities as well as on freedom to patentscope) allows practical effect. operate in introducing new products. Now, public full-text searching in over policymakers are increasingly turning to landscaping 1.4 million published Both of these aspects are important to life sciences to build a factual foundation before considering high international patent applications, and policymakers, who are concerned not only with the level policy matters, especially in fields such as health, increasingly provides for substance of emerging technologies, but also with agriculture and the environment. Cheaper informa- tracking of related who holds exclusive rights over technologies, where tion technology, greater awareness of the patent sys- patenting activity at the national level as well as and for how long. tem and a trend towards free access online to patent focusing on particular information have combined to put patent landscap- technologies of policy This ‘disclosure’ in the past produced vast libraries of ing in reach of public sector policymakers as well. concern such as traditional medicines. printed documents, which were costly and laborious Landscaping can help answer questions such as:

9 How much of the rice genome has been patent- international pharmaceutical patenting activity ed? By whom? What is the practical impact of this from several key developing countries has risen for farmers, breeders and agricultural researchers? sharply this decade, starting from a low base; How much of public-funded medical research is the number of applications to patent cell lines has being patented and by whom? Which public insti- risen sharply since 2000; they are mostly filed by tutions are most active in patenting key life sciences public institutions, not private firms; technologies like stem cells? In what countries are the number and diversity of international patent patents in force and where are they not in force for applications concerning avian flu and the H5N1 essential medicines? What does this pattern of form of the influenza virus have grown rapidly in patent holdings imply for procurement of medi- the last two years; cines? When will these patents lapse or expire? the mix of public and private ownership of tech- Who are the new players in vaccine technology? nologies on key food crops differs dramatically de- How can developing countries plan to secure ac- pending on the economics of the crop concerned cess to the current and future technologies for – patents relating to corn are largely in private vaccine production? hands, while those concerning the potato are What are the trends in research on neglected dis- more likely to be held in the public sector. eases? What do patenting trends reveal about the changing role of developing countries in medical Many valuable initiatives are under way to provide research? ever more reliable and sophisticated information What is the geographical coverage of patents on products for life sciences policymakers. In April, WIPO key technologies in medicine, such as HIV/AIDS organized a symposium on patent landscaping to fur- antiretroviral drugs; for plant biotechnology, such ther practical dialogue between life sciences policy- as agrobacterium-mediated transfer; for the envi- makers and patent landscaping experts and to match ronment, such as the use of algae to absorb CO2 – policy needs with practical capacities. The initiative and where is technology already in the public do- built on WIPO’s past collaboration with its UN part- main? What technological and commercial oppor- ners: the Food and Agriculture Organization (FAO) on tunities do these offer developing countries? What patent activity relating to key food crops, and the are the implications for multilateral agreements in World Health Organization (WHO) on patenting issues the fields of health, plant genetic resources and relevant to current public health issues. Symposium the environment? participants reviewed several continuing landscaping projects under WIPO’s Life Sciences program: Concluding a comprehensive, definitive patent landscape in a major technological field such as HIV/AIDS Agricultural biotechnology – Working with the FAO, treatments can be a massive endeavor, requiring con- an expert team using inputs from India, Brazil, Europe siderable resources and expertise. It potentially entails and North America developed an overview of patent an expert review of thousands of complex documents activities on gene promoters – key tools used in agri- and fine assessments on their legal and technical con- cultural biotechnology. The landscaping contrasts the tent. A fully global landscape would strictly entail ex- different technological and commercial patterns de- pert searches in over 100 patent offices worldwide. veloped around several key food crops – soybeans, Any ‘finished’ report will be out of date within days, as maize, potato and rice. This is intended to guide poli- further patent disclosures are published online. cymakers implementing the international system for Keeping the landscape up-to-date for continuing ref- benefit sharing resulting from the use of plant genet- erence can be just as resource intensive as its initial de- ic resources in developing new agricultural products. velopment. But the high cost and technical barriers are progressively declining. What once would have been a The rice genome – A landscape of patenting activity costly strategic landscape can now be prepared free of on rice in the U.S. was prepared by Cambia, an NGO in- charge from a laptop with good Internet access. volved in patent transparency issues. This landscape presented, in interactive graphic form, the scope of Fortunately for life sciences policymakers, much prac- patents covering the chromosomes constituting the tical guidance can be obtained from patent informa- rice genome. It found that patent applications cov- tion systems without massive investment in resources, ered a wide spread of the rice genome (around 74%), however the landscapes produced will be incomplete many were “bulk sequence applications” published and limited in geographical coverage. Often what is with claims to large numbers of sequences. But grant- needed for policy debate is an overview of broad ed patents, with enforceable rights, covered only 0.26 >>> trends, not detailed analysis. WIPO’s input to life sci- percent of the rice genome. The most active players ences policy processes has shown, for instance, that: were multinational firms.

10 AUGUST 2008 Charting future directions Mapping patent activity along the influenza vaccine development pipeline Good quality information about patenting activity is an essential input for some of the most critical inter- wild virus specimen >>> national policy debates today. Yet patent information >> >> Development of seed viruses risk assessment, selection of for vaccine production is unavoidably complex, constantly evolving, and diffi- Analysis, sequencing, vaccine produced and distributed vaccine targets >>>> wild virus specimen >> cult to capture in readily accessible form for a non- >>>> >>>> specialized audience. There are real risks associated >> >>>> with making judgments on the basis of limited patent wild virus specimen landscapes without considering the full technical and >> >> >>> legal context. Thus the demand for reliable patent wild virus specimen landscaping in the life sciences is strong, and there are no shortcuts to meeting that demand. ‘upstream’ ‘vaccine development’ ‘downstream’ e.g. patents on derived e.g. patents on means of producing seed e.g. patents on adjuvents, sequences, on research viruses or other antigens for vaccines. production technologies, tools ‘reverse genetics’ technology means of delivery of vaccine One of the most challenging aspects of patent landscaping in the life sciences is the difficulty of working Landscapes on the influenza virus – To support work with and analyzing DNA and amino acid sequence undertaken in partnership with the WHO on patent is- listings. Patent offices and patent analysts labor with sues relating to the influenza virus, two complemen- massive sets of sequence data. Progress in bioinfor- tary landscapes were developed, one by a team of matics may enable sequences to link patent docu- public-interest IP attorneys and another by Cambia. ments with other biotechnology data systems using These landscapes responded to policy concerns that sequence data – using the language of heredity to patents were sought over strains of the flu virus, po- shed new light on the life sciences. tentially complicating the sharing of viruses that is critical for vaccine production and rais- The WIPO symposium demonstrated that a key need Courtesy of the CDC ing concerns about the sharing of ben- is greater networking and pooling of resources efits such as the accessibility of flu vac- among experts working in this field – both to ensure cines in the event of a pandemic. that the excellent initiatives under way in this field build upon one another and avoid duplication, as well Neglected diseases – Another land- as to promote the sharing of experience, know-how scape reviewed patenting activity di- and landscaping techniques. rected towards neglected diseases classed as Type II, which are present in PATENT INFORMATION WHAT LINKAGES LIFE SCIENCES POLICY PROCESSES developed and developing countries Ultrastructural Increased accessibility greater policy Strong demand for but in a major proportion in the developing world of data guidance empirical data, e.g. details of an neglected diseases (such as tuberculosis and HIV/AIDS), and Type III, influenza virus Massive growth in data control of plant genetic resources particle. which predominantly affect developing countries Increasing – but still use of genetic resources accessible, incomplete geographical under CBO useful information (African Sleeping Sickness or Trypanosomiasis, African coverage Focus on practicalities of: River Blindness or Onchocersiasis, Leishmaniasis, Data mining and ensuring freedom to coordination possibilities operate Leprosy and Rabies). This extensive review of patents constructing new innovation pathways on treatments, prevention and diagnosis for each of these diseases was undertaken by an Indian Government specialist institution, the Unit for A positive feedback loop is developing: patent infor- Research and Development of Information Products matics are delivering increasingly focused and accessi- (URDIP). It showed considerable recent R&D activity ble information products for policymakers, who in turn directed towards these diseases, undertaken by a can sharpen and distil their demands for patent infor- wide diversity of public and private players. Newly es- mation, leading in turn to increasingly more relevant tablished firms are applying medical biotechnology to and useful support. Patent landscaping is not a substi- Type III neglected diseases, suggesting new players tute for the policy debates and deliberations on the key and new innovation pathways in these critical areas life sciences issues of the day. But it can inform, support (although these are early-stage technologies). The and strengthen the factual basis for discussions, so as- landscapes tracked linkages between patent filings sisting the policymakers in those fields to set future di- and clinical trials, identified trends in the use of genet- rections on health, the environment and food security. ic resources and showed a complex pattern of com- parative public sector and private sector activity. The survey not only provided valuable insights for policymakers, but also demonstrated new techniques for mining patent data.

11 OAPI JOINS INTERNATIONAL INDUSTRIAL DESIGNS TREATY The Organisation africaine de la and Togo. Dr. Edou Edou added, Photos: OAPI propriété intellectuelle (OAPI) “these countries have only a tiny (African Intellectual Property share of the volume of interna- Organization) on June 16 de- tional trade and for their cre- posited its instrument of acces- ators and businessmen, the sion to the Geneva Act of the Hague System offers the oppor- Hague Agreement Concerning tunity to extend the protection the International Registration of of their creations of form abroad Industrial Designs. The Geneva without being subject to innu- Act is one of the three treaties merable requirements, and this, that govern the Hague System at lower cost.” for the international registration Carving out of industrial designs, which of- a role fers businesses in all participat- for the future ing countries a simple, afford- able and efficient way of obtaining and maintaining their Under the guidance of Dr. Edou industrial designs portfolios. Edou, OAPI is carving out a new role for itself, in which accession OAPI’s instrument of accession, to the Hague system is just a deposited by OAPI Director start. Elected in August 2007, Dr. General Dr. Paulin Edou Edou, Edou Edou’s vision is to create an will become effective as from Organization that “serves as a African designers have September 16. “OAPI’s participa- laboratory of analysis able to and IP titles seem to exist in sep- invested time, energy and expertise to create tion in this system is designed grapple the most difficult and arate worlds rather than as com- designs that have not only to promote the flow of complex questions in the area of plementary pillars that work in become popular the protection for foreign creations development and intellectual harmony toward a country’s world over. OAPI registered some 149 on the territories of our Member property.” His goal is to modern- economic development. such designs in 2007. States,” said Dr. Edou Edou, “but ize OAPI to make it a catalyst for The designs range from shoes to text material above all for our creators, who further growth and develop- Over the next five years, OAPI such as these by John have few economic resources, ment in its member states – a plans to tackle the challenge of Walkden et Cie S.A., to make use of the facilities of- pivotal role defined in the bringing IP to market. The a Beninese company. fered by the system in order to Organization’s mandate. Organization wants to promote obtain protection from the the exploitation of IP and fill the abuses to which they are fre- OAPI’s research has shown that economic void that results from quently subject and to benefit in most of its member states’ sci- the inability to bring IP to market fairly from their creative work.” entific researchers do not think or the inability to transform IP in- of their work in terms of IP and to an economic asset. The solu- OAPI groups 16 member states, even less in terms of business tions already exist. OAPI is work- namely: Benin, Burkina Faso, development. The case is similar ing to identify the most suitable Cameroon, Central Afr ican for business developers who do to its circumstances and envi- Republic, Chad, Congo, Côte not look towards IP to find busi- ronment, and to use them to d’Ivoire, Equatorial Guinea, ness potential or show any inter- help turn IP titles into IP assets. Gabon, Guinea, Guinea Bissau, est in institutional research. Mali, Mauritania, Niger, Senegal Scientific researchers, businesses

12 AUGUST 2008 INTERNATIONAL HOME DECORATION MARKET BECKONS AFRICA’S DESIGNERS African design is growing in popularity, especially in the home decoration industry where demand is outstrip- ping supply. The call is not for the masks and statues sold on sidewalks around the world. Interior decorators are looking to African designers for naturally-sourced, beautifully crafted, high-end objects. Many African designers have gained a reputation for the quality and the originality of their work and are making headway in the international market. WIPO Magazine contacted several of these designers – all part of the Design Africa program (see box) – to discuss their work and the intellectual property issues involved therein. Ronel Jordaan Textiles Muya Ethiopia PLC Every African country has its own traditional de- which are new to the rest of the world.” And her signs and crafts inherited from previous genera- work: “My designs spring from the rich cultural her- tions and completely dissimilar to anything found itage and traditions of Ethiopia, which go back for else where. The creators we interviewed were centuries and cover all aspects of handicrafts – proud of the inspirational role of their tribal roots – hand weaving, pottery, jewelry, basketry, etc. This and just as proud of the modern twist they had background is useful for product development; a given those designs. Most use locally found prod- transition process from the exotic to the contem- ucts – wood, cotton, wool, clay, grass, dyes, leather, porary designs.” stone, etc – and traditional techniques to create home design products with international appeal. And if her work is copied? “It is disheartening to say the least! Putting time and effort to create Preserving culture something unique while those who copy make no effort whatsoever!” Would IP protection help? “Yes, Sara Abera of Muya Ethiopia PLC (muya is very much so! I have registered very few of my de- Amharic for creative) preserved an endangered signs locally but have taken no action against indigenous hand weaving art by using it to cre- copiers, as such action is beyond our financial ca- ate sophisticated wall hangings, custom textiles pabilities and no one believes that justice can be as well as linens, rugs, throws and other home done – that is to say we doubt the results.” decoration items. In so doing, she helped local Recreating nature artisans upgrade their skills, and even provided training for women in prison. Her designs gained instant popularity at showcases in Ronel Jordaan Textiles produces incomparable Montreal and Toronto (Canada) and in Cape cushions, hangings, throws and carpets – all card- Town (South Africa). “International buyers start- ed, dyed and felted by hand from 100 percent ed contacting us,” she says smiling. Merino wool sourced in the Eastern Cape in South Africa, home of the company’s founder and cre- She speaks of her inspiration: “My surroundings, the ative force, Ronel Jordaan. “One look at my rock pil- colorful cloths, jewelry, wood carvings used in our lows and you know my inspiration: nature. My households; I refer to more than 80 tribes living in work is unique because I use an unusual medium Ethiopia, the undiscovered designs of handicrafts and my designs look so real,” said Ronel.

15 HOW TO IP AND BUSINESS SUCCESSFULLY BUY OR SELL A BUSINESS WITH IP ASSETS Want to evaluate the IP of a business before you buy it? Want to sell a business at an increased price for its IP? Here NORIC DILANCHIAN, Managing Partner at Dilanchian Lawyers and Consultants in Australia, provides guidance on how to avoid the obstacles. Pre-contract Photos.com Paul Kerin, Professor of Strategy, stage: Melbourne Business School, maximizing wrote that “hundreds of stud- the sale price ies have found that about 50 for sellers percent of takeovers destroy the acquirer’s share value.”1 Though appalling, this high Before a business is even put failure rate comes as no sur- up for sale, experienced prise to insiders in the merg- lawyers can assist sellers in a ers and acquisitions game. So number of ways in maximiz- what knowledge do buyers When the deal is signed, everyone is all smiles, ing the sale price. Depending and sellers of businesses need but 50 percent of takeovers go wrong – why? on the business, the following to gain to raise their game extensive services may be rec- and improve these statistics? ommended: prepare a confidential “selling document,” (e.g. a Both buyer and seller must be smart about all the disclosure statement or marketing or profile assets in the business in question. What does this document); mean for intellectual property (IP) assets? Being prepare a data room or files categorizing all key smart requires buyers and sellers to use legal and business documents; other professional advice at the earliest stage. This develop deal points to raise in negotiations; 1 Paul Kerin, Professor of is the case for large corporations, SMEs and micro take steps to improve perceptions regarding Strategy at Melbourne businesses. However, is the legal advice received al- the value of specific assets, for example by en- Business Schoool, “Doing what comes naturally” ways practical and useful? How can a buyer or sell- suring best practice protection for IP assets; BRW (Business Review er make this assessment? and Weekly – www.brw.com.au), compare offers to determine which is the best. 27 January – 2 February What not to do is simple. A buyer who signs a con- 2005, p. 10. tract with only a couple of hours of prior enquiry Why a “selling document” 2 All businesses have IP assets as they all have will be exposed to under-assessed – or even goodwill or a name or unidentified – risks buried in the detail. The list of IP In the absence of a vendor’s statement or selling brand. IP assets are limitless in their categorisation. assets in the contract, for example, may lack clarity. document, extra money and time must be spent They include software So what is the procedure to follow? providing prospects with information on demand source codes, secret to attract and maintain their interest. In some trans- know-how, customer lists, Three transaction stages action, the “supply on demand” approach can save IP rights in distribution and franchise agreements, costs. However, in more complex cases the lack of a domain names and lists of To be of use to the buyer or seller who is about to readily available “selling document” can lead to trade marks, copyrights make a deal, enquiries should be structured in higher risks, increased stress levels in negotiations, and patents. three stages: pre-contract, contract and post-con- erosion of the buyer’s trust, increased costs, legally tract. We will develop these three stages with a fo- actionable misrepresentations and oversights due cus on IP assets2 in non-franchise businesses, a to haste. A selling document prepared at an early >>> source of grievance for many buyers and sellers. stage will help avoid or minimize such problems.

16 AUGUST 2008 ‘‘…where IP assets are involved, early, grated approach rather than slavishly following the legal, accounting or management labeling of issues. creative and disciplined outside the box legal thinking secures value.’’ But a multi-disciplinary approach is not easy to achieve. To implement it, legal advisors would have to build on their education, complementing it with IP protection best practice accounting, human resource management and other qualifications. Few do! Certainly, the multi- Protection of IP assets builds value for sellers. Before disciplinary approach is not always necessary, but it going to market, astute sellers build the quality and can greatly reduce buyer failure rates. level of legal protection of IP assets to at least a Going beyond legal minimum or base level of best practice. Ideally this due diligence work should be done at least 6 to 12 months before a sale. Best practice includes use of up-to-date IP registrations and documentation. This affects copy- Parts of the 75 percent can, and probably should, right, trade marks, trade secrets, industrial design be referred to specialist technologists, financiers or and patent assets. management consultants. However, even if the work is outsourced, a buyer’s risk will increase if the Lower levels of protection may lead the buyer and jigsaw puzzle of delivered miscellaneous advice is its advisers to discount the price sought by the sell- not pieced together cohesively to create a whole er. The effective solution for a seller involves prepa- picture of the target business. ration of an intellectual capital register, business documentation and IP registration or codification. All issues forming the 10 percent, 15 percent and 75 percent must be logically grouped through Pre-contract stage: risk communication and close work between disci- management for buyers plines. Here are some reasons why. For the buyer the absence of proper grouping In business transfers buyers usually have greater legal of important considerations would lead to needs than sellers. The first step for a buyer’s legal ad- missed signs and warnings regarding the busi- visers will be to audit the business, then logically ness now or in the future. group areas as to how they af- For the advisory team differences in the per- Photos.com fect the business now and spectives, jargon and procedures of lawyers, ac- how they will affect it in the countants and consultants create obstacles in future. This “due diligence” communication between and outside such process (a concept which specialist fields of work. originates in U.S. law) is rarely For both the buyer and the advisory team, if all comprehensive, holistic or in- issues are not addressed, pieces of the puzzle tegrated – it is purely legal. Its may be missing at the time the buyer signs the scope, by definition, does not contract for purchase. Buyers need experienced commercial and cover technology, culture, practical opinions and counsel. This requires management and organiza- Extrapolating on Professor Kerin’s statistic, it seems communication and close work between tional structure. To “get” the reasonable to postulate that 50 percent of takeovers disciplines. whole picture, buyers addi- are signed by buyers who do not have a complete tionally need experienced commercial and practical picture of the target business. Given this record, it is opinions and counsel. This is a challenge for many le- preferable for sellers and buyers to implement a multi-disciplinary process to risk management3 gal advisors. Here is why. rather than just applying under-defined (and most- Myopic professional view ly legal) due diligence. Properly implemented, it can broaden and deepen the scope of pre-contract en- Let us assume that legal advice deals with 10 per- quiries and become an important factor in mitigat- cent of the issues involved in a business that is up ing risks. The aim is to rigorously apply and integrate for sale and accounting 15 percent. This leaves 75 this process with other elements such as: percent of the business for the buyer’s team of man- intellectual property auditing; agers, consultants, shareholders or other principals asset evaluation; 3 See AS/NZS 4360:2004 Risk to sort. This is a relatively high share! To reduce the strategic planning; load, it would be more useful for the buyer and its enterprise structuring; and Management, SAI Global. team to receive advice that takes a holistic or inte- knowledge management.

17 Tools for the process This type of pre-contact report reduces risk and provides to a buyer long-term record keeping and decision making benefits. To help avoid IP issues in business sale and purchase matters and commercial transactions generally, lawyers can develop the following materi- In closing, in the pre-contract stage, where IP assets als: are involved early, creative and disciplined “outside Template contracts, clause libraries, and management documents. the box” thinking by professionals secures value for Checklists, questionnaires, and instruction sheets specifically for busi- both buyers and sellers. Early enquiries deserve a ness sale and purchase matters. great deal of emphasis and may take four to six Intellectual property auditing workbooks. months to finalize. Intellectual property register. Contract stage – transaction structuring Case Study: and customization The stats of a failed acquisition All business transfers require transaction structur- What’s wrong with this picture? Photo: Rosemont ing and contract customization. This is where good 1. In 2000 Southcorp Ltd’s had a slate of over 25 well- lawyers can be particularly useful. In the IP area known wine brands included Penfolds, Lindemans, alone, the lawyer may need to structure and cus- Wynns, Seppelt, Seaview and Devil’s Lair. tomize the transaction and contract for the buyer 2. In early 2001 Southcorp paid A$1.49 billion in a cash or seller to cover the following: and shares deal for the single-branded Rosemont use of a confidential information agreement or Estate business. The following year Southcorp posted confidentiality provisions in the agreement or a net loss of A$923 million. memorandum of understanding; 3. In early 2005 the Foster Group Ltd made a bid which valued all of review of consents and other considerations for Southcorp at A$3.1 billion for the whole company. moral rights and privacy law compliance; tax and other revenue law implications of any Did Southcorp pay too much for Rosemont? Commentators have noted apportionment in the contract of the sale price the very high level of the purchase price for the Rosemont label (item 2) between the various assets being sold, that is relative to the many labels Southcorp owned at the time (item 1). Paying apportioning values to specific brands, copy- too much is often the price of inadequate pre-purchase assessments as rights, patents or other IP; recommended in the accompanying article. warranties, indemnity, personal guarantees and other security arrangements given by the sell- 2. Failure to formally issue written assignment no- er’s directors or principals relevant to title and tices – for example the assignment of a busi- other risks to the IP assets; and ness sale agreement, an option, a guarantee for non-competition restraints on the seller and its a debt, a trade mark or patent. principals, for example preventing hiring of for- 3. Failure to prepare updated and comprehensive mer employees, starting a similar business or IP and domain name registers, leading to missed soliciting customers of the business. deadlines, lost registrations and certificates and wrong addresses on official registers. In the typical hot-house, time-pressured and mis- 4. Failure to act on gaps in IP protection such as sion-critical environment of business sale and pur- those evident from a pre- or post-purchase par- chase transactions, these considerations are tial or full IP audit. among many which require efficient treatment. 5. Failure to appoint appropriate IP specialists to deal with IP issues such as improving the tem- Post-contract stage – plate license or terms of trade. services for avoiding issues 6. A general failure to employ best practices for IP protection, record keeping and general man- At the post-contract stage, IP is at the root of six agement after the purchase. common reasons for business failures. These can also affect franchises. Once the deal is done and the Failure 6 is often an outcome of a lack of alignment transaction finalized, buyers should be cautious of and integration between the businesses manage- these six pitfalls. ment, commercial, technological and legal processes and systems. This takes us full circle back to the 1. Failure to address all IP issues properly or fully in need for pre-contract communication between dif- the completed contract – issues keep arising af- ferent disciplines. ter completion of the contract.

18 AUGUST 2008 COMMITTEE MEETINGS Implementation of the WIPO Development Agenda Moves Forward The second meeting of the Com- www.wipo.int/edocs/mdocs/en/ plementation of agreed recom- mittee on Development and Intel- cdip_2/cdip_2_summary.doc). mendations. It will further call on lectual Property (CDIP), held from Further, the CDIP discussed imple- the General Assembly to make July 7 to 11, moved forward in mentation of adopted recommen- resources available in a manner discussing the implementation dations 3, 4, 6, 7 and 11 and agreed consistent with WIPO’s program of the 45 recommendations in to the proposed associated activi- and budgetary processes. the WIPO Development Agenda ties, as contained in Annex I. Address by adopted by the General Assembly WIPO Director in 2007 – 19 of which were ear- The CDIP reviewed and com- General-Elect marked for immediate implemented on activities being im- mentation by WIPO and 26 for plemented under adopted re- which the CDIP is required to commendation 12 in the list of 19. Speaking at the invitation of develop a work program. It was agreed that the Secretariat Ambassador C. Trevor Clarke, would make the necessary the Chairman of the CDIP, WIPO The meeting built on the modifications and would pro- Director General-Elect Francis achievements of its inaugural vide the next session of the Gurry emphasized his commit- session in March, and agreed on CDIP with a progress report on ment to the effective implemen- the indicative figures for human the implementation of these 19 tation of the WIPO Development and financial resource require- recommendations. The Committee Agenda, pledging to personally ments associated with the im- also noted that there was a need supervise this important initiative plementation of adopted rec- to coordinate the CDIP’s activi- in the future. ommendations 2, 5, 8, 9 and 10 ties with that of other relevant in the list of 26 recommenda- WIPO bodies in implementing Mr. Gurry said, “I would like to re- tions. The CDIP also discussed the adopted recommendations. peat my assurance of the impor- implementation of adopted rec- To this end, the CDIP decided to tance which I attach to the ommendations 20, 22 and 23 in begin discussions on a mecha- Development Agenda. It is a Cluster B of the list of 26. They nism to monitor and assess such major achievement for this agreed that the proposed activ- coordination at its next session. Organization to have adopted ities, as modified following dis- by consensus a Development cussions, would be sent to the The draft report of the second Agenda.” He said that the Secretariat to assess associated session of the CDIP will be post- Development Agenda is “a ma- human and financial resource ed on WIPO’s website for com- jor opportunity to address the requirements and would be ment by Member States and ob- role of intellectual property in submitted to Member States server organizations and will be development and the contribu- prior to the CDIP’s third session. formally adopted at the third tion of intellectual property to session of the CDIP in 2009. A narrowing the knowledge gap The CDIP also discussed adopted report outlining the delibera- and the digital divide.” He fur- recommendation 1 in the list of tions of the CDIP sessions will ther added “it is my firm view 19 recommendations and agreed be presented to the September that the successful implementa- to the proposed activities out- 2008 WIPO General Assembly. tion of the Development Agenda lined in document CDIP/2/2 with The report will recommend ad- is vital to the future success of some modifications, (see Annex I justments to the revised program this Organization.” Mr. Gurry un- of Summary of the Chair at and budget for 2009 to allow im- derlined the important chal-

19 lenge of establishing a work activities with respect to the fices of developing countries to program that “ensures an appro- Development Agenda.” enable them to participate more priate implementation of the fully in the knowledge econo- Development Agenda.” Mr. Gurry, who is currently Deputy my. He also assured delegations Director General of WIPO, made that the appropriate budgetary “The development dimension specific reference to proposals resources would be made avail- must be taken into account hori- that seek to improve access to able to support the implemen- zontally across the Organization,” and efficient use of technologi- tation of the proposals contained he added. Mr. Gurry said that he cal information contained in in the Development Agenda. intended to personally supervise patent documents and scientific the work of the Development papers by research institutes The CDIP was attended by 101 Agenda, “not only to signal its im- and universities in developing member states, 8 inter-govern- portance but also because it is countries. He further alluded to mental organizations and 37 non- appropriate to ensure the coordi- the need to enhance the infra- governmental organizations. nation of all of the Organization’s structure and capacity of IP of- SCP Agrees on future work WIPO Member States attending the Standing ments until the end of October 2008 and for dis- Committee on the Law of Patents (SCP) from June 23 cussion at the next session of the SCP in early 2009. to 26 began a comprehensive review of issues relating to the international patent system. Discussions in the The SCP also requested that the WIPO Secretariat SCP meeting focused on a report on the international prepare preliminary studies on four issues for dis- patent system prepared by the WIPO Secretariat to fa- cussion at its next session. The studies, which are cilitate the process of establishing a work program for not to be considered prioritized over the other is- the SCP. The report provides an overview of current in- sues identified in the above-mentioned non-ex- ternational patent issues, and attempts to cover the haustive list, include: dissemination of patent infor- different needs and interests of all Member states. mation (including, inter alia, the establishment of a database on search and examination reports); ex- The report touches on three broad areas, namely, ceptions from patentable subject matter and limi- the economic rationale of the patent system and its tations to the rights, inter alia, research exemption role in innovation and technology dissemination, le- and compulsory licenses; patents and standards gal and organizational aspects of the patent system and client-attorney privilege. and issues that are particularly relevant to broader policy considerations and development concerns. The Committee also recommended that the Director General consider including provision in Many Committee members recognized that the re- the revised Program and Budget for 2009 for a port covered a wide range of issues relating to the Conference on issues relating to the implications – patent system and constituted a good basis for dis- including public policy implications – of patents on cussion. However, mindful of the mandate given to certain areas of public policy, such as health, the it by the WIPO General Assembly in 2007 and thus environment, climate change and food security. working towards a work program, the SCP identified a non-exhaustive list of issues for further elab- The meeting was attended by 85 Member States oration and discussion. The Committee agreed that and 24 observer delegations and was chaired by the report should remain open for written com- Mr. Maximiliano Santa Cruz of Chile.

20 AUGUST 2008 INTER-REGIONAL FORUM ON DEVELOPMENT AND SERVICE-ORIENTED IP ADMINISTRATION “Intellectual property administrations and offices have a major role to play in transforming the vast development potential of IP into concrete and tangible benefits for the countries.”Deputy Director General Narendra K. Sabharwal A WIPO Inter-Regional Forum on Development and Service-Oriented Intellectual Property (IP) Administration, which took place in Geneva on July 1 and 2, was the first of its kind to take an in- depth look at the needs and expectations of IP administrations of all countries. Intensive discussions focused on IP-related institutional and policy challenges, opportunities and reforms in the context of overall national development strategies with a view to making a positive and tangible contribu- tion to social, cultural and economic development. The Forum covered ten broad themes of vital interest to IP administrations to meet the challenges and seize the emerging opportunities in the field of IP and in making such administrations more responsive to and consistent with the attainment of national development objectives. Among the core issues discussed was the need to heighten awareness of IP and its critical role in promoting development. Participants also discussed the importance of a development dimension in the formulation of IP policies and strategies, in line with the WIPO Development Agenda. Information technology in IP management and the role of IP administrations in international negotiations were also addressed. The Forum also underscored the significance of sub-regional, regional and international cooperation in meeting the institutional challenges in the creation and management of IP assets. The Forum focused on practical measures to improve and expand the range of value-added services available to all stakeholders, including the public, to forge relations with the IP user community and to ensure that IP administrations are better able to support national development objectives. Participants also explored new approaches to the challenges currently facing IP administrations, in terms of workload, organizational efficiency and the delivery of value-added services. Participating in the closing session, WIPO Director General-elect Francis Gurry reconfirmed that WIPO would continue to support capacity building initiatives and underlined the need for WIPO to be responsive to the specific needs, expectations, policies and strategies of member states in the use of IP for development. In this context, Mr. Gurry identified the strengthening of WIPO’s cooperation with Member States and the effective implementation of the WIPO Development Agenda as areas of utmost priority.

21 IN THE NEWS Formulation and Implementation of IP Development Plans Some 30 senior IP officials from technical assistance. When for- man, institutional Courtesy: Ministry of Foreign Affairs of Singapore 24 countries in Asia and the mulated in close consultations and infrastructur- Pacific region participated in a ca- with national authorities and on al capacities; en- pacity building workshop, held in the basis of a thorough assess- sure effective co- Singapore from June 2 to 4, on ment (audit) of IP needs and re- hesion of assist- the formulation and implemen- quirements, taking into account ance programs tation of IP development plans. national IP policies and develop- and optimal use Jointly organized by WIPO and ment objectives, IP development of resources; and the Government of Singapore, plans enable more targeted, sys- help develop partnerships and Representatives of the Asia-Pacific Economic the workshop discussed IP devel- tematic and effective technical synergies by providing a com- Cooperation (APEC), the opment plans from conception assistance from WIPO. mon reference point for intensify- Association of Southeast to implementation. ing cooperation. WIPO aims to Asian Nations (ASEAN), the Pacific Islands Such plans, which include con- employ such plans increasingly Forum Secretariat (PIFS) The aim of IP development plans crete targets and deliverables as in delivering legal and technical and the South Asian is to address the specific IP needs well as mechanisms for monitor- assistance to developing and Association for Regional Cooperation (SAARC) of a country in the context of a ing and evaluation, permit coun- least developed countries. participated in the time-bound, objective-oriented tries to better coordinate and as- workshop. and result-based framework of sess progress in strengthening hu- Green Apple®? Your iPod, iPhone and MacBook may soon run on solar re-powered batteries. The U.S. Patent and Trademark Office has just published a patent application by Apple (US 20080094025) for a thin film of solar cells to be integrated into portable devices. The multiple cell solar film is designed to produce the desired voltage to run a handheld device even if a number of the cells are obstructed. But where will they put it? The limited space on portable devices is the principal reason why none – so far – have been solar powered. Apple’s novel approach is to place the solar film, protected by shock absorbent materials, behind the LCD screen of the portable devices. Green Apple devices, paired with the company’s innovative design, may provide just the right boost for sales in a slowing global market. 2008 IDEA Award The results of the 2008 International Design The competition attracted 1,517 entries from 26 For more information see Excellence Awards (IDEAs) are in and for the first countries. Students were among 2008’s big win- www.idsa.org/IDEA2008/ time the jury has bestowed two Best in Show ners, taking 33 of the 206 jury awards – 6 of the 35 index.html awards. One went to SizeChina, a design research gold prizes. 2008 also marked the inaugural year of project that assembled data from a representative IDEA/Brasil, organized by Objeto Brasil and en- cross-section of people from mainland China to dorsed by Industrial Design Society of America, to create the first-ever digital database of Chinese spur interest in design from Brazilian corporations head and face shapes and the other – no surprise as well as to heighten global awareness of Brazil’s here – to Apple’s iPhone. rich design heritage.

22 AUGUST 2008 LETTERS AND COMMENT Kerala State (India) IPR Policy – rights creation on Traditional Knowledge Readers of your article Digitizing Traditional Culture “deemed licence” which immediately applies on © WIPO/Maasai Cultural Heritage Foundation (Issue 3/2008) may be interested to learn of the the user of TK, the moment he decides to employ it Kerala IPR Policy 2008 which proposes legislation to for any purpose. prevent misappropriation of Traditional Knowledge (TK) and knowledge associated with biodiversity. The custodians/preservers of the TK (viz. tribal com- The Policy outlines the Government’s concern munity, family etc) will be acknowledged as the about protecting its rich traditional wealth, com- right holders, but they are obliged to subject the TK prising TK practices, tribal medicines, Ayurveda possessed by them for the non-commercial pur- practices and biodiversity, which attribute to and poses of all. Hence the knowledge is revealed for doc- forms the basis of livelihoods of many TK practi- umentation, and enabling further research thereof. tioners and which, in the absence of legal property However these right holders can license the TK un- rights, may be appropriated by private businesses. der their possession to others for commercial purposes on negotiated terms and conditions in ac- cordance with the provisions of “Commons Codification of TK into Digital Libraries is not a complete solution to misappropriation. Hence the Licence”. Policy document finds that the possible solution could be to create rights on Traditional Knowledge In respect of such TK, where it is the livelihood of nu- and make its potential right holders aware of their merous practitioners strewn across Kerala, the State rights. The Policy proposes to commit all traditional will be deemed to have rights over such Traditional knowledge to the realm of “Knowledge Commons” Knowledge. Even though State holds the ownership and not to the “Public Domain”. While the Policy en- on such TK, all the actual practitioners of this TK will visages creating property rights on traditional knowl- have an autonomous license for right of commercial edge, all the right holders will be deemed to be holding use from the State. But these Licensees are not em- their rights under a “Commons License”, wherein the powered to sub-license this right of commercial use right holders shall permit others the use of the know- to anybody else, and right for transferring licenses will solely be enjoyed by the State. ledge in their possession for non-commercial purposes. It is further stipulated that any development made using this knowledge licensed under the above obliga- Kerala Traditional Knowledge Authority (KTKA) will tion should be put back to the realm of “Knowledge be set up for registering right holders and for rec- Commons”, say “Traditional Knowledge Commons”, ommending legal action against the violators of the and hence denying the scope of patenting thereof. rights and “Common License”. The word “Commons License” used here is based on Though the Policy envisages to put the develop- the fundamental concept of “Creative Commons” ments made on TK back to the realm of “Knowledge From R. S. Praveen Raj, employed by open source advocates, but its scope Commons”, path breaking inventions like develop- Scientist – IP Management varies significally from that of “Creative Commons ment of a new drug molecule or the process thereof & Technology Transfer, License”. Specific provisions for such “Traditional Know- which involves substantial developmental cost National Institute for ledge Commons License” will be worked out to ensure need not form part of the “Knowledge Commons” Interdisciplinary Science in the strict sense even if TK may form the basis of free, non-commercial reproduction and codifica- & Technology (NIIST), tion of the Traditional Knowledge. It is a kind of its origin. India

23 P2P in Mexico Photos.com Following your article Pursuing the P2P Pirates – Balancing Copyright and Privacy Rights (Issue 2/2008), I would like to highlight Mexico’s experience in this area. In Mexico different musical firms have used the same legal tactic mentioned in the article, that is denouncing Internet providers in criminal trials for the purposes of obtaining data from Internet users. It should be stated that in Mexico there is no national regulation protecting personal data and so users are at a disadvantage regarding these questionable practices insofar as these tactics are used for industrial property protection. Despite the above, lawyers from such firms have encountered major problems in trying to institute civil pro- ceedings against Internet users denounced by their service providers. The first problem is the fact that it is almost impossible to prove that the person that signed the Internet contract is the same person that has used said means to infringe copyright, since on many occasions it may be a family member, dependant or From Sergio A. Bravo Valle, employee that is responsible for such conduct, without there being objective responsibility for the holder National Deputy Director of the Internet account. The second is proving that the person distributed or benefited from the transfer of of Litigation, Alvarez Puga archives, and the third is the notable lack of civil procedure expertise in these lawsuits, including missing and Associates, S.C., deadlines and forgetting to exercise basic rights. Mexico. Intellectual Property Rights and the curriculum of Law Schools I read with interest your Book re- to a financial onus on the State, it proached from the aspect of com- view: Teaching of Intellectual Property is necessary that it acts in partner- mercial law, keeping out the hu- – Principles and Methods (Issue ship with initiatives in the private man and holistic approach; or 2/2008). IP is an extensive and sector for the execution of all its from the aspect of constitutional complex subject. It relates simulta- constitutional obligations. law, keeping out the economic neously and compulsorily to the and holistic approach. Both ap- protection of the social and eco- In these circumstances, it is nec- proaches ignore the necessary in- nomic order, at both the national essary that law schools join in the ternational foundation, which es- and international level, as a human endeavor, recognize IP as an im- tablishes a minimum harmony so right needed for sustainable devel- portant subject in its own right, that all those interested in development. For Brazil, as a developing and educate future professionals oping, trading and consuming the country, this systematic inter-rela- in the very diverse fields of IP. results of intellectual production tion is all the more important. Some educational institutions in may work across national borders. Brazil are already in the forefront. The State is responsible for bring- But it needs to go further. IP This is a daring project for all those ing into harmony two difficult, but should be included in the manda- law school directors and coordina- necessary functions of IP, namely tory curriculum of all graduate tors willing to aim beyond a stan- the defense of private property in- schools. This way, everybody dard preparation of graduates, to- From Professor Maristela terests (contractual), which seeks wins: business, society, the State wards a more proactive attitude Basso, University of São profit and produces economic de- and the judicial community. regarding the national economic Paulo, and velopment; and the defense of so- and social system, in order to fur- Professor Patrícia Luciane cial interests, which is about ac- The compulsory inclusion of IP ther sustainable development. de Carvalho, University of cess to knowledge, education, would also correct some prob- Curitiba, culture, health and life with digni- lems, such as the fact that the sub- Brazil. ty. Since these rights correspond ject currently tends only to be ap-

24 AUGUST 2008 UNDERSTANDING BOOK REVIEW AND PROFITING FROM INTELLECTUAL PROPERTY By Deli Yang Ms Yang is currently Reader in International Business perceived strength in its ability to enforce its dispute at Bradford University School of Management in the settlements and WIPO’s perceived weakness there- U.K., and subtitles her book A Guide for Practitioners in: their respective terms of reference and their cor- and Analysts. She explains that the aim is to “investi- responding structural and functional differences are gate intellectual property in the context of interna- such that WTO may enforce – but with the risks that tional business,” so that business practitioners (in- greater political empowerment brings. cluding business managers and IP owners) and IP analysts (corporate analysts and academic re- Another grey area for analysis is the effect of philoso- searchers) may understand and benefit from IP. phies and religions on attitudes to IP. Motivations are immensely difficult to unravel. For example, the au- Publisher: Palgrave Macmillan Part I (IP Fundamentals) outlines the nature of the thor suggests that an individualistic Western society www.palgrave.com various types of IP, including both industrial prop- will more easily resort to litigation, whereas the col- ISBN: 978-1-4039-9172-0 erty and copyright, as well as the systems, national lectivist ethos and emphasis on social harmony in Price: £55 and international, under which it operates. Part II China discourages it as the very last resort. Which (IP Environments) examines IP in the context of po- comes first, the chicken or the egg? As Ms Yang indi- litical economy, education and culture in deve- cates earlier in her book, the reward system for cre- loped and developing countries. The next part ators in the Soviet Union and pre-reform China are (IP Management) deals with the management of IP now history, and she gives the increase in the num- assets, personnel and products/services. The final ber of lawyers in China as from 19 in 1979 to 70,000 part (IP Strategies) is possibly the most advisory, in 2000; moreover, there is now increased spending and goes into the global commercialization of IP, power there for lawsuits. A counter-argument could considering matters such as marketing concerns, also be that litigation as a very last resort is advice contracting and licensing IP, combating piracy and not infrequently given by lawyers in market-econo- counterfeiting and using the most suitable partner- my Western countries. ships to maximize benefits from IP. Ms Yang has enlivened what could have been a dry, The author has undertaken a formidable task with specialists-only book by including diagrams, statis- serious scholarship (viz. her copious references to tics and illuminating case studies. It is enlightening other works) and analytical intent – no less than the to learn that in the 18th century, Millar won a case whole socio-economic and political scope of IP in claiming perpetual copyright based on common the national and international business context. law (shades rise again in the perpetual copyright Her dilemma, as she realizes, is that, though analyze demanded in some quarters today!), but that this she must, her material does not always permit de- was overturned by a ruling that the base law (the finitive judgments. She is commendably cautious Statute of Anne of 1710) prevailed; also interesting about using an economist’s tools to extrapolate are the measures to protect the recipe of Coca Cola hard evidence, commenting that the use of empir- when it is reconstituted in various parts of the ical study to determine the effects of IP on foreign world. This is a well-researched and thought-pro- direct investment is hampered by “lack of data on voking read for both the academic and business international FDI flows and measurement stan- communities. dards, and the inadequacy of econometric models.” Such caution should also be extended to her direct comparison between the World Trade Organization’s

NEW PRODUCTS Nivilo:Class 2.2 – Nice, Vienna, Locarno Classifications (CD-ROM) Bilingual English/French No. CD Nivilo 60 Swiss francs (plus shipping and handling) Managing Creative Enterprises – Creative industries – Booklet No. 3 English No. 938E 50 Swiss francs (plus shipping and handling) Patent Cooperation Treaty (PCT) and Regulations under the PCT – 2007 Arabic No. 274A 20 Swiss francs (plus shipping and handling) Teaching of Intellectual Property – Principles and Methods (Cambridge University Press) English No. CUP/001 80 Swiss francs (plus shipping and handling) Guide OMPI de gestion de la propriété intellectuelle à l’intention des musées French No.1001F Free of charge The International Patent System in 2007 – PCT Yearly Review English No. 901E, French No. 901F Free of charge World Patent Report: A Statistical Review – 2008 English No. 931E Free of charge Purchase publications online: www.wipo.int/ebookshop Download free information products: www.wipo.int/publications/ The above publications may also be obtained from WIPO’s Design, Marketing, and Distribution Section: 34, chemin des Colombettes, P.O. Box 18, CH-1211 Geneva 20, Switzerland | Fax: +41 22 740 18 12 | e-mail: publications.mail@wipo.int Orders should indicate: (a) the number or letter code of the publication desired, the language, the number of copies; (b) the full address for mailing; (c) the mail mode (surface or air).

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How To Successfully Sell A Business With Ip Assets

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