Learning from Intellectual Property: Operationalizing Multilateral Agreements Domestically to Protect the Environment, Part II – Georgetown International Environmental Law Review

Utsav Gupta - Learning from Intellectual Property

Learning from Intellectual Property: Operationalizing Multilateral Agreements Domestically to Protect the Environment, Part II

By Utsav Gupta, Staff Contributor

In Part II of this three-part series, Utsav Gupta explores the history of the intellectual property and its link to free trade. Part I, found here, discussed changes in our climate and the immediate need to develop enforcement mechanisms for environmental protection. Part III will discuss the application of the lessons learned from intellectual property and linking free trade to environmental law, using Mexico and the North American Free Trade Agreement (NAFTA) as case examples.

Domestic Harmonization in Intellectual Property Law

This series adopts the definition of the word ‘harmonization’ “broadly to mean the reduction of international differences in economic policies and measures.”1 For example:

“[I]f states agree to a minimum patent term of 20 years, that is seen as a harmonization measure even if all states actually set their patent terms to varying lengths greater than 20 years. Similarly, actions by patent offices to increase reliance on work done in foreign patent offices [are] also seen as harmonization as [they are] a coordination of policy to reduce international differences in prosecution.”2

Harmonization defeats the presumption “that states should choose their patent laws to maximize domestic welfare”3 from a recognition of externalities and the need to reduce collective action problems.4 For example, “it is in each country’s self-interest to minimize the scope and length of … domestic patent laws to minimize … profit outflows.”5

International institutions play a key role in increasing harmonization. They reduce transactions costs “by providing information” and “assisting in dispute resolution.”6 However, they cannot replace states.7 Instead, a key role for these institutions “has to be providing technical assistance to developing countries” so that they maintain compliance with international regimes.8

The History of Harmonization in Intellectual Property Law

“Nowhere is international cooperation in the progressive development and codification of international economic law more evident than in the sphere of intellectual property rights.”9 The international intellectual property regime is a reflection of domestic legislation harmonized within a comprehensive intergovernmental regime.10 Intellectual property rights include: copyrights, patents and trademarks.11

However, intellectual property law did not previously enjoy the extent of global harmonization that it does today. The history extends back over centuries of development. The international protection of intellectual property can be traced back to an initial domestic operationalization of the law. Today’s modern regime of international intellectual property law can be traced back to the French Decree of March 28, 1852. This Decree “unilaterally extended copyright protection to all works regardless of their country of origin.”12 The French extended this decree for two pertinent reasons. First, it had failed “to negotiate bilateral treaties with Belgium and the Netherlands.”13 Second, it believed that “bargaining was not the best method of securing international protection of authors’ rights.”14 By operationalizing the law domestically, the French believed that “the other governments would be more willing to take the same step.”15 The Decree likely accelerated the creation of a “multilateral copyright system.”16

This principle of national treatment was extended in the original Berne Convention.17 The Berne Convention, entered into force on December 5, 1887,18 “was the first truly multilateral copyright treaty in history . . . [and] established some important basic principles.”19 Importantly, the Convention only required treaty members to provide “minimum protection for translation and performance rights.”20 This provided “member states the freedom to augment protection through other bilateral or multilateral arrangements” and left room “for further expansion of … minimum rights.”21

“An instrument seeking to regulate interests, claims, and demands pressing upon the national and international level.”

The United States finally joined the Berne Convention in 1988.22 Had it not become a member of the Convention, it might have led to difficulty in pushing for stronger intellectual property rights in the future TRIPS agreement under the WTO.23 International patent law and trademark law have similar origins. International protection of patents and trademarks rights was “virtually nonexistent” in the eighteenth century. 24 Protection for trademarks “came in the form of bilateral treaties.”25 However, treaties protecting patents were in the minority, with only two of sixty-nine bilateral treaties covering trademarks. 26 These included “[t]he Treaty of Commerce of 1881 between Germany and Austria-Hungary, and the Customs Convention of 1879 between Austria-Hungary and Liechtenstein.”27

As discussions around a multilateral regime for patent protection matured around the formation of the Paris Convention28, “participants disagreed on whether it would be desirable, or even possible, to achieve … uniformity.”29 Participants eventually “settle[d] on some common ground of minimal unification.”30

Instead, the Convention realized several goals managing the regulation of patent interests domestically, and created a form of harmony between the contracting states regarding nondiscrimination as to national treatment, rights of priority, and the “independence of patents doctrine, which stated that a patent granted in one country is independent in time and validity from patents granted in other countries.”31 The Convention did not become “merely a compact between the individual countries party to it with reciprocal rights and obligations,” it was “rather an instrument seeking to regulate interests, claims, and demands pressing upon the national and international level.”32

The Berne and Paris Conventions have “similar origins” and “provide the foundations of the current international intellectual property regime.”33 However, neither convention contains an effective enforcement procedure.34 Each instead contains an identical provision with an optional dispute resolution mechanism. 35 This mechanism requires parties to bring their claims before the International Court of Justice (“ICJ”).36 Moreover, “[l]itigation is uncertain, time consuming, and troublesome.”37 In addition, the provision is entirely voluntary, making the conventions “virtually unenforceable.”38 Thus far, no member of either convention has brought a case before the ICJ.39

The Post-War Period

After World War II, developed countries like the United States desired stronger intellectual property protections, especially given the increased economic importance intellectual property had to their economies.40 The United States decided to focus its attention on the GATT forum for several reasons. The country had a more advantageous bargaining position in the GATT forum than in the WIPO; and, the country could link intellectual property to international trade, “such as agricultural subsidies and quotas in textiles.”41

“In 1988, Congress introduced the Omnibus Trade and Competitiveness Act to bolster the leverage of U.S. trade negotiations.”42 It amended section 301 of the Trade Act and required the U.S. Trade Representative to “identify foreign countries that provide inadequate intellectual property protection.”43 This amendment further linked intellectual property to international trade.

The World Trade Organization (“WTO”) was eventually formed. The WTO “laid down the foundation of the multilateral trading system and became the forum for the negotiations of the Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) agreement.44 The TRIPS agreement effectively “marr[ied] intellectual property to international trade” and “revolutionized international protection of intellectual property rights.”45 Not only that, it “play[ed] a new and important role in the international economic system.”46

Moreover, “the Agreement is the first multilateral trade accord that aims at achieving partial harmonization in an extensive area of business regulation.”47 TRIPS has two essential components that provides this harmony: it “delineated international standards for the enforcement of intellectual property rights for the first time” and it “includes [a] mandatory dispute settlement procedure[] that require[s] all disputes … to be settled by the WTO dispute settlement process.”48

Harmonization continues today. The Patent Law Treaty (“PLT”) was adopted in 2000.49 As a result of WIPO initiative, it harmonizes “the formal requirements set by patents offices for granting patents.”50 The European Patent Convention sets up a common patent office among thirty-six European countries.51

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1 Alexander Stack, International Patent Law 3 (2011).

2 Id.

3 Id. at 6.

4 See id. at 7.

5 Id.

6 Id. at 9.

7 Id. at 120.

8 Cf. id. at 120.

9 James A.R. Nafziger, Nafta’s Regime for Intellectual Property: In the Mainstream of Public International Law, 19 Hous. J. Int’l L. 807, 808 (1997).

10 See id.

11 Masaaki Kotabe, Evolving Intellectual Property Protection in the World: Promises and Limitations, 1 U. Puerto Rico Bus. L.J. 1, 4 (2010).

12 Peter K. Yu, Currents and Crosscurrents in the International Intellectual Property Regime, 38 Loy. L.A. L. Rev. 323, 335-36 (2004).

13 Id. at 336.

14 Id. (footnotes omitted).

15 Id.

16 Id.

17 Id. at 339.

18 Id. at 338.

19 Id. at 339 (citing Barbara A. Ringer, The Role of the United States in International Copyright–Past, Present, and Future, 56 Geo. L.J. 1050, 1053 (1968)).

20 Id.

21 Id.

22 Id. at 342.

23 Id.

24 Id. at 344.

25 Id. at 346.

26 See id. at 345.

27 Id.

28 Enacted in 1883. Kotabe, supra note 32, at 12.

29 Id. at 348-49.

30 Id. at 349.

31 Id. at 352.

32 Id. at 352-53.

33 Id. at 354.

34 Id.

35 Id.

36 Id.

37 Id.

38 Id. at 355.

39 Id.

40 See id. at 356.

41 Id. at 357-58.

42 Id. at 361.

43 Id. at 361-62.

44 Id. at 362.

45 Id. at 364.

46 Id. at 364-65 (quoting Keith E. Maskus, Intellectual Property Rights in the Global Economy 2 (2000)).

47 Id. (quoting Keith E. Maskus, Intellectual Property Rights in the Global Economy 2 (2000)).

48 Id. at 366.

49 Kotabe, supra note 32, at 13.

50 Id.

51 Id.

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