[Hague-jur-commercial-law] IP&The Hague quick notes about yesterday

[Manon Ress]

Re 3-29-05 IP and The Hague project meeting

About 30 people attended the meeting held from 2 to 6pm (no break) in 
the posh conference room at the new USPTO offices.  More or less the 
same people, I've seen at every IP & The Hague meeting for the last few 
years.  Time Warner, AIPLA, INTA, Software Association, USPTO, LOC, 
State, Verizon, ALA, MPA and CPTech (and a few others).

Here is a summary of my notes:

The judgment project will be finish one way or another in June 2005, so 
even if the US never becomes a party to it... it better be the best 
possible.

We were asked to focus on what should be in and what should be out of 
the convention.  The discussion was about what was the "common 
understanding" and what was left to drafting.  The drafting committee 
will meet at The Hague April 18-20, to draft a new text that will be 
circulated.  It will be the lLAST draft before the June 14-30 diplomatic 
conference.

The informal (and unlikely) “group” of representatives from private 
sector focused on Article 2 (exclusions), Art 6 (Stay of proceedings), 
Art 10 (incidental questions) and some general issues that will be 
discussed again at the May 9 public advisory.

re  art 2 again the issue of how to exclude validity without taking 
infringement out was discussed at length. Maybe drafting can be 
improved?  It's still not clear. The “common ground “ was that it is 
better to leave courts of country x decide on its own IPR validity (I 
still have a nagging question: even if we're talking traditional 
knowledge or database rights?) but infringement must be in or what is 
the point of the convention (for the industry groups present).

re art 6, there was a proposal to add more balance language (as was 
achieved in Article 8) to ensure that the convention should not prevent 
nor require the chosen court from suspending the proceedings to allow 
the courts of the State where the IPR is registered to give judgment on 
its validity.

The most interesting part for me was that the industry representatives 
(IP owners) brought up non negotiated contracts.  One rep stated that if 
the assumption is that the convention will only deal with negotiated 
contracts, this has to be made clearer, "this is not what we have here!" 
  The industry groups were divided on this.  The software association 
rep spoke about differences between non negotiated contracts and click 
wrap and possible drafting difficulty (I heard that in other words it 
would be too difficult... so it's better to have ALL contracts whatever 
types 100% enforceable?).  Others talked about how difficult it would be 
to define a non negotiated contract (there were efforts in UCITA but it 
failed).

However, for AIPLA and INTA making sure that we were ONLY talking about 
negotiated contract was very important.  The expression “contract 
between consenting adults” (laughs)to define what kind of contracts we 
were- hoping- we- were- talking- about came coming back again and again.

So, it was more or less decided that the issue should be on the agenda 
of May 9 meeting (which might also be held at the USPTO).  Sadly, I 
heard that it is not on the Hague drafting committee agenda for new 
draft.  What are the other countries saying?  Except for Australia (loud 
and clear last year) are they all OK with non negotiated contracts?  Why 
are small businesses asking for "consumer protection" in some countries, 
then?

4 more interesting issues were brought up:

Re fraud.  question:...what is the purpose of enforcing judgments based 
on fraud? Answer:  fraud in underlying contract is not covered but if 
fraud is in procedures it is in.  There were some examples of a forged 
contract.  Judgment rendered in a court chosen in the forged contract 
would be enforced under the convention.

Re Disconnection clause.  Most agreed that a lot depended on the 
disconnection clauses that the Europeans were going to propose.  What 
would be our interest in the convention if they were “disconnected”?

Finally, there were discussions on why there should be a provision (such 
as Art 40 of TRIPS) that would allow countries to prevent 
anti-competitive practices in contractual licenses.  The issue on the 
first sale doctrine which is essential for rental rights, lending rights 
and re-importation (parallel trade) of medicines or other items was 
brought up at the end.  There should be provisions to ensure that the 
convention does not change global policy on parallel trade or the first 
sale doctrine (as in Art 6, 3 and 4 of the TRIPS).

If you have questions, send me an email.

Manon



-- 
Manon Anne Ress
manon.ress@cptech.org,
www.cptech.org

Consumer Project on Technology in Washington, DC PO Box 19367, 
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