[A2k] EU ACTA Negotiator Confirms EU Wants Patent Provisions In ACTA

[Heesob Nam]

Inside US Trade
Copyright 2009 Inside Washington Publishers. All Rights Reserved.

May 8, 2009

Volume 27; Issue 18

EU ACTA Negotiator Confirms EU Wants Patent Provisions In ACTA

The European Union is insisting that the Anti-Counterfeiting Trade
Agreement (ACTA) cover all intellectual property rights, including
patents, and not focus exclusively on copyright and counterfeit items
-- and this has been a topic of discussion with other countries
involved in the talks, according to Pedro Velasco Martins, an EU
official involved in the ACTA talks.

While Martins declined to elaborate on the positions of other ACTA
participants, leaked U.S. and Japanese proposals for the ACTA focus
almost exclusively on copyright and counterfeit items and largely
exclude patents, signaling a lesser interest in expanding patent
protections under ACTA.

The EU favors greater inclusion of patent protections in the talks
because EU law treats all civil IPR violations under the same terms
and the EU would like other countries to do the same. In particular,
it wants patent protections to be subject to ACTA chapters on border
measures, civil enforcement and the Internet.

However, the EU is not pushing for patent infringements to be subject
to ACTA criminal enforcement, and the other parties agree, Martins
said. All ACTA parties also agree that violations of geographical
indications, designs and plant genes should also not be subject to
criminal enforcement, he said.

Some non-governmental organizations (NGOs) fear that covering patents
under ACTA provisions, such as one granting customs authorities the
ability to seize goods without a prior rightholder complaint, could
disrupt the trade in essential medicines among developing countries.

The EU has come under fire for seizures by Dutch customs authorities
of drugs made outside of patent in India that were headed to South
American countries but routed through the Netherlands, where the drugs
enjoy patent protection. These NGOs fear the ACTA would replicate this
scenario in other countries.

The EU is also cool to prohibit the recording of films in movie
theaters using hand-held devices under the ACTA. Martins said the EU
does not want to single out specific methods for piracy under the ACTA
such as so-called camcording because EU law applies more generally to
piracy regardless of specific technology or techniques.

On a possible ACTA dispute settlement mechanism, Martins said that the
EU does not favor replicating the World Trade Organization judicial
process, replete with trade penalties for violations of the agreement.
Instead, a system of peer review would be preferable, although Martins
said the EU considers this issue to be less important and favors
completing work on the rest of the ACTA before finalizing the dispute
settlement process.

Martins said there has still not been any discussion of a non-paper on
possible Internet provisions circulated by the U.S. earlier this year.
However, the EU has made clear it is not prepared to go beyond
existing EU law on any Internet provisions, he said.

Possible Internet provisions in the ACTA are controversial because
they may involve liability for Internet service providers that host
Internet copyright pirates. Additionally, the chapter could involve
requirements that these providers monitor usage by private citizens,
something that could violate EU privacy directives, and a requirement
that Internet usage be cut off for repeated violators of intellectual
property rights.

On May 6, as part of a telecommunications law, the European Parliament
approved an amendment which would define Internet access as a
fundamental freedom and require judicial due process before suspending
access to the Internet.

Martins said ACTA negotiators are still waiting for the U.S. to finish
its review of the agreement before scheduling another round of talks
in Morocco. The EU would like talks to proceed this month, he said.

ACTA negotiations have been largely shrouded in secrecy, a point of
contention with NGOs that the Obama administration is trying to
address. The new administration has pledged to be more transparent
than its predecessor, but the results thus far appear to be limited.

The Electronic Frontier Foundation and Public Knowledge, two NGOs
following the ACTA negotiations, have requested release of ACTA
negotiating documents under the Freedom of Information Act, but USTR
this week only released 36 pages of heavily redacted documents that
reveal little about the ACTA talks.

"We are very disappointed with the USTR's decision to continue to
withhold these documents," said EFF Senior Counsel David Sobel in a
May 6 press release. "The president promised an open and transparent
administration. But in this case and others we are litigating at EFF,
we've found that the new guidelines liberalizing implementation of the
Freedom of Information Act haven't changed a thing," he charged.

EFF and Public Knowledge in a press release this week said their
lawsuit for more ACTA negotiating documents will continue in U.S.
district court. The lawsuit charges that USTR is unnecessarily
withholding documents under this argument that disclosing documents
endanger national security and reveal USTR's deliberative process.

EFF International Affairs Director Eddan Katz said EFF has now made a
new FOIA request for Kirk's appointment calendar as well.

In addition, NGO groups including EFF and Knowledge Ecology
International (KEI) have not yet been able to schedule a follow-up
meeting on transparency practices with USTR. The first meeting
occurred on March 19, and at that time both sides agreed to try to
have a second meeting within one month.

At the meeting, EFF will propose opening up Industry Trade Advisory
Committees to more participation by Internet companies, consumer
groups and freedom of information NGOs. It will also ask that the
Special 301 process of designating countries with weak IPR protections
be opened up to greater public participation, according to Katz.

The ACTA documents released do show that Internet provisions were
under discussion at USTR as early as August 2007, two months before
the ACTA talks were launched. They also show that customs laws as
applied to foreign trade zones, illicit labels and customs bonding
were also under analysis in emails between USTR, U.S. Customs and
Border Protection and the Justice Department as USTR sought to clarify
current U.S. practice.

In answer to a query about whether the U.S. has a law on "in-transit"
seizures of counterfeit goods, one email reveals seizures are dealt
with as either imports or exports under the law. On customs bonding,
it states the U.S. can impose bonding in IPR cases. Customs requires
copyright owners to post 120 percent of the value of a shipment which
is recoverable if a shipment is found to contain pirated or
counterfeit works. If the shipment does not contain such goods,
importers may seek to recover losses by claiming some of the value of
the bond.

Leaked copies of ACTA discussion drafts have included provisions on
illicit labeling, requiring customs bonds and have specifically
required targeting in-transit goods.

The ACTA agreement is being negotiated by Australia, Canada, the EU,
Japan, South Korea, Mexico, Morocco, New Zealand, Singapore,
Switzerland and the U.S. Jordan, the United Arab Emirates and Uruguay
were involved in initial discussion but dropped out, Martins said.