ADA University IP Law Section 11 PDF

SECTION № 11. ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS. by Dr. Narmin Miriyeva, PhD ADA University, 03 Dec, 2024.  CONTENTS Section № 11. Enforcement of Intellectual Property rights. Brief: 1. 1. Enforcement of industrial property...

SECTION № 11. ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS. by Dr. Narmin Miriyeva, PhD ADA University, 03 Dec, 2024.  CONTENTS Section № 11. Enforcement of Intellectual Property rights. Brief: 1. 1. Enforcement of industrial property rights. 2. 2. Enforcement of copyright and related rights. 3. 3. Enforcement under TRIPS Agreement. 4. 4. Enforcement in the national legislation. 5. 5. Administration of IP.  1. ENFORCEMENT OF INDUSTR I AL PROPERTY R IGHTS. General overview: Accessible, suffi cient and adequately funded arrangements for the protection of rights are crucial in any worthwhile intellectual property system. There is no point in establishing a detailed and comprehensive system for protecting intellectual property rights and disseminating information concerning them, if it is not possible for the right-owners to enforce their rights effectively in a world where expanding technologies have facilitated infringement of protected rights to a hitherto unprecedented extent. They must be able to take action against infringers in order to prevent further infringement and recover the losses incurred from any actual infringement. They must also be able to call on the state authorities to deal with counterfeits. All intellectual property systems need to be underpinned by a strong judicial system for dealing with both civil and criminal offenses, staffed by an adequate number of judges with suitable background and experience. Intellectual property disputes are in the main matters to be decided under civil law and the judicial system should make every effort to deal with them not only fairly but also expeditiously. Without a proper system for both enforcing rights and also enabling the grant of rights to others to be resisted, an intellectual property system will have no value. Avoiding Litigation: A competitor whose operations are obstructed by earlier rights will usually seek to avoid or overcome the problem in a legitimate way, e.g. by inventing around the protected area in the case of an earlier patent. Another approach is to seek a license or to negotiate some other agreement in a friendly way. In coming to agreements with competitors, of course, companies must be careful not to contravene competition policy rules aimed at avoiding distortion of competition. This normally means that the terms of any license must not contain anti-competitive or unreasonable provisions.  1. ENFORCEMENT OF INDUSTR I AL PROPERTY R IGHTS. A company affected by another’s right will carefully assess what its scope is and whether or not it is valid. This highlights a point of particular importance to the owners of patents, namely that claims must be well drafted and properly supported by the disclosure of the invention. They must clearly distinguish the protected subject matter from the prior art and must be neither over-covetous nor too modest. A well drafted patent will often be enough in itself to deter potential infringers. Similar arguments can apply to other rights such as trademarks and designs. It is up to a right-owner to act as his own policeman. He must keep an eye on the industrial and commercial markets in which he sells his products, or provides his services, or in which his processes might be used. He must keep abreast of his competitor’s activities. If he becomes aware of an apparent infringement he should not necessarily assume that the infringement is deliberate (though if the infringing item is an exact copy or counterfeit, infringement will almost certainly have been deliberate). He should first contact the competitor to point out the existence of his right. Laws in a number of countries concerning patents, designs and trademarks, provide that a right-owner may not make groundless threats against competitors or their distributors, for example threatening a court action when there is no ground for alleging infringement or when the right relied upon has expired, but he can send a simple letter drawing attention to the right so that the infringer cannot subsequently argue ignorance. Negotiation is an important aspect of protecting and enforcing rights. In negotiation, an infringer might well be persuaded to change what he is doing. During the attempts to negotiate, the supposed infringer may claim that he is not infringing; or he may allege that the right is of little value and does not justify significant royalties; or he may argue against the proposed license terms. It may well be worth suggesting that the services of a mediator be used or that the issue should be decided by arbitration. Of course, both sides need to agree to accept an arbitrator’s decision and a contract to that effect may be needed. 1.1.ENFORCEMENT OF INDUSTR I AL PROPERTY R IGHTS IN GENER AL 1.1.1. Action Before an Industrial Property Office: Industrial property offices frequently have quasi-judicial functions in the administration of industrial property systems, and provide a forum for procedures for contesting rights under consideration or granted by the office. Those procedures are often referred to as opposition procedures. The expression “opposition” may be construed widely, as referring to all possibilities open to third parties to intervene before the industrial property office both in proceedings leading to the grant of a right and in proceedings for contesting the grant after it has occurred. The possibilities for opposition arise particularly in relation to registrable rights such as patents and trademarks, because the registration can be disputed. The possibility of opposition rarely arises in relation to copyright and related rights, since these rights in the great majority of jurisdictions arise automatically on the creation of the protected work. Why do States provide for opposition? With even the most rigorous examination system, the State cannot guarantee that the rights which it grants are valid — there is always the possibility that a prior right has been overlooked or a specification misunderstood. Many systems are not particularly rigorous, which makes it all the more likely that rights might be granted in conflict with earlier rights. Thus, the owners of earlier rights must be able to object at some stage. This could of course be before a court. However, in everyone’s interests, opposition should be a relatively straightforward, speedy and inexpensive matter, handled as early as possible in the life of the right. Thus, many systems provide that opposition can be considered by the national industrial property office acting in a quasi-judicial role, as well as by courts. Pre-grant opposition is invariably before the office. The first opportunity that others, for example competitor enterprises producing goods of the same character as those covered by the patent application, have to become aware that a patent which could affect their business is being applied for, is at the first publication stage, 18 months after the priority date. Enterprises, particularly those which own patents, should keep their eye on the activities of competitors and what is happening in the marketplace, and in particular on patent applications made in their areas of interest, for instance by scrutinizing patent office journals and published applications. Not only is it important to know if competitors are seeking to protect developments which come within the scope of one’s own patents, but it is also important to be warned if they are seeking to protect known technology or technology patented by others. One can also learn from the search report, published with the application, of the prior art which will be considered at the examination stage. 1.1.ENFORCEMENT OF INDUSTR I AL PROPERTY R IGHTS IN GENER AL Some systems allow for formal opposition before the grant of the patent or an opportunity for third parties to become a party in arguments about whether or not the patent should or should not be granted. The problem with such pre-grant opposition is that there is often very considerable delay in achieving a grant. Delay means that a patentee who needs a granted patent in order to pursue an infringement could not settle an action against the infringer quickly. It can be important to bring post-grant opposition proceedings in good time. If too long a delay occurs, the user of the later patent might argue that the owner of the earlier one has acquiesced in the grant of the later one and as a result should not be allowed to take action. This might make it difficult to enforce the earlier patent against products or processes covered by the later one. In some countries, such as the US, there is no provision for opposition. However, third parties concerned about a granted patent can ask for it to be re-examined by the patent office. Such parties do not become direct parties to the procedure, but may draw prior art, which may have been overlooked in the first examination, to the attention of the examiner. Re-examination may result in refusal or in a more tightly drafted patent. In many countries there is no provision at all for opposition because the industrial property office lacks the expertise. This can be the case in those countries, such as France, where no substantive examination is carried out. In such situations, revocation before the courts is the only possibility for securing cancellation or amendment of a competitor’s patent. Many countries provide for pre-registration opposition to trademark registration. Trademarks are published in the form in which they are to be registered, and a short period is allowed for opposition. In general, considerations are much more straightforward than those for patents and procedures can be much more rapid. In the United Kingdom, there are few oppositions of trademarks, probably because there is a rigorous examination involving search of earlier rights. In other countries, for example Germany, there are more oppositions because there is no official search against prior rights during examination; so opposition is the only way in which the owner of an earlier trademark can induce the industrial property office to take account of this earlier right. After registration of a trademark, in many countries it is possible for an aggrieved party to apply to the office for removal of the mark from the register, or to seek its modification. One of the main grounds for this would be non-use of the mark. As for registered designs, where there is no provision for pre-registration opposition, interested parties may seek cancellation of registrations by the office. 1.1.ENFORCEMENT OF INDUSTR I AL PROPERTY R IGHTS IN GENER AL 1.1.2.Civil Court Procedures: : Despite efforts to achieve friendly settlement, circumstances can and do arise where the owner of a right feels that he must take action against an infringer in order to protect his markets, present or future. In most jurisdictions this will be handled in the civil courts. In most situations, there will be considerable dispute as to whether for example the claims in a patent to be enforced should be of the scope claimed, and as to whether the alleged infringement actually falls within the valid scope. With trademarks, arguments also concern the scope of the registration and whether the allegedly infringing mark is confusingly similar to the earlier mark. Infringers may genuinely believe that they have a plausible case on such aspects. Most patent infringements are not slavish imitations but, arguably, take advantage of the protected inventive concepts of the patent and will have to be resolved on the basis of expert opinion. In an action for patent infringement in common-law countries (the procedure and terminology in civil-law countries differs to some extent), the patent owner, acting through his immediate lawyers (solicitors), arranges for a writ or complaint to be served on the alleged infringer. In the writ the patent owner, as plaintiff, will specify the nature of the alleged infringement and the remedy sought. Almost always, an injunction restraining the alleged infringer, the defendant, from continuing with what he has been doing, will be requested, as well as damages. The defendant will usually acknowledge the writ and give notice that he intends to defend. If he does not, the plaintiff may be entitled to a final or interlocutory ruling (one which decides the issue but leaves open the question of damages, etc.) forthwith. If the defendant does defend, and the issue is not settled out of court or dealt with summarily, pleadings will be exchanged, on the one hand stating the material facts of the claim and on the other the defenses or counterclaims. The purpose of pleadings is to define precisely the issues in dispute and eliminate agreed or irrelevant matters. They go back and forth and can take several months. A counterclaim may be an allegation that the patent is invalid; this will have to be defended by the patent owner. Once the pleadings have been completed the plaintiff will issue a summons for directions. Such directions, given by the judge, will deal with discovery and inspection of documents and in general with the trial preparations. Notice to inspect documents may be served on the other side by leave of the court. So may interrogatories, which take the form of written questions which the other side must answer under oath, e.g. by sworn affidavit, before the trial. 1.1.ENFORCEMENT OF INDUSTR I AL PROPERTY R IGHTS IN GENER AL It is noteworthy that only a small minority of cases actually get to the trial stage, and the rest are settled along the way, for reasons of time, effort and expense. Cases involving complex technology can take a very long time in court with expert witnesses being called and subjected to examination and cross-examination by both sides. In issuing his reasoned decision, the judge can make various awards. In addition to injunctions, the court may also award damages in respect of the infringement, namely compensation for sales and markets lost as a result of the infringing activity. As an alternative to damages, the owner of the patent can be awarded an account of profits. All the profits derived by the defendant as a result of the infringement may be surrendered to the patent owner. An order requiring the defendant to deliver up to the patent owner, or to destroy, any products or articles incorporating the patented invention can also be made. Finally, the patent owner can secure a declaration that the patent is valid and infringed. 1.1.3. Criminal Actions: Counterfeiting: As already mentioned, patent actions are essentially civil actions for infringement. In the case of trademarks and copyright, much of what has been explained about procedures in relation to civil actions applies to ordinary actions for infringement, but the serious criminal offenses of counterfeiting and piracy can also arise. A trader may knowingly manufacture, distribute or sell goods marked with a trademark where the marking has been done without the permission of the owner or where the goods have been illicitly copied. There are several ways that counterfeits can come to the attention of the authorities. Right-owners themselves may become aware of distributors or retailers trading in counterfeit goods and bring the trade to the attention of the police. Also, counterfeits may be detected by law enforcement officers who are specifically empowered under trademark legislation to take action against traders in counterfeit goods. Their powers may be extended to enable them to deal with copyright offenses. On conviction, traders in counterfeit goods can face stiff penalties, and seizure of all offending products is normal. In respect of items protected by copyright, such as sound recordings on tape or compact disk, the police are the normal enforcement authority and will take action on the basis of a complaint by the lawful right-owner. They often need little more than 24 hours’ warning in order to secure warrants and make checks. Another way in which action against counterfeit goods can be taken occurs at ports of entry of imports. If a mark owner becomes aware that consignments of counterfeit goods are on their way to the country, he can alert the customs authorities, who will keep watch for the goods and impound them when they arrive. Action can then be taken against the importer.  1.2.ENFORCEMENT OF PATENT R IGHTS : In most systems, a patent is the right enforceable in a court, usually to prevent the manufacture, sale and use of a patented invention. It is not, as many people think, permission to practice the patented invention, which may be subject to restrictions for other reasons such as security or public health. Application is made to the court to stop the unauthorized manufacture, sale or use of the invention, so that the court may grant the appropriate order and stop the infringement. In practice, however, the process is less straightforward than it sounds. 1.2.1.Assessing the Scope of Patent Rights: When thinking about patent enforcement, a patentee must first assess what he has patented. It is now a feature of just about all patent systems that a patent must include either a specification containing claims or a description, claims or any required drawings (depending on the terminology of the particular law). In most systems, the claims are decisive, as they define the scope of protection sought and eventually granted through the patent. The specification or the description and drawings may be used to interpret the claims, which must be fully supported by them. Most inventors use the services of a patent attorney to write the specification for them. An inventor may not fully understand the specification, and particularly may have difficulties in understanding the claims. Even where the patentee has some idea of the exclusive right granted to him in his own country, it is very rare for him to know with any precision what rights he may have in corresponding patents in other jurisdictions. The patentee’s first real understanding of the extent of his patent rights often only comes to him when he is considering enforcement. Thus, the basis for enforcement of patent rights is established at the start of the patenting process when the patent specification is written by the inventor or the inventor’s patent attorney. The examination process in the Patent Office can modify the original wording. The inventor will normally try to avoid any modification which will result in a limitation of the scope of protection, for any reduction in the scope of protection makes it easier for a competitor to avoid infringement. If a competitor can easily supply the market with something that is equivalent to the invention, but does not infringe the patent, then the patent may be of limited commercial value. Patent Office examiners should try to remember this when an applicant for a patent steadfastly resists amending his claims in order to overcome an objection, but instead tries to deal with the objection by argument. While acceding to an amendment might lead to the early grant of a patent on the application, it may also lead to a patent right of doubtful commercial utility.  1.2.ENFORCEMENT OF PATENT R IGHTS 1.2.2. Evaluating Validity and Infringement of a Patent: Having assessed the scope of the patent right, the next task is for the patentee to decide if there is infringement. Before committing himself to the financial risk of a patent case — which can be among the most time-consuming and expensive of all forms of litigation — a patentee, unless he is very wealthy and relaxed about money, must make some attempt to forecast whether he can be successful. The issue of infringement is very rarely considered on its own. Patents, like other forms of intellectual property, do not only affect the parties to a dispute; they have an effect on the public at large. This being the case, it is normally considered that a patent which can be shown to be invalid cannot be enforceable. In spite of the examination of patent applications during prosecution, no patent system guarantees the validity of a granted patent. In a patent enforcement action, therefore, a defendant will usually add to any defense of non-infringement a further defense, often in the form of a counterclaim, that the patent is invalid and hence not enforceable even if infringed. In some jurisdictions, the issues of infringement and validity are heard together. In others, the question of validity is heard separately by a different court, or it may be referred to the Patent Office. Because of the principle that no invalid patent should be enforceable, the defendant in a patent action is usually allowed to bring in evidence of invalidity at any stage of the proceedings, and in some jurisdictions even during the trial itself. As a result, the position of the patentee during patent enforcement proceedings tends to deteriorate as a defendant makes searches and often finds evidence which is relevant to validity. As already stated, the task of the court in the determination of infringement is the assessment of the scope of protection defined by the patent and whether the alleged infringement falls within that assessed scope. In the determination of validity, the court (or whatever tribunal is considering validity) should take the same scope of protection as has been defined for the purposes of infringement and consider whether the evidence produced by the defendant renders the patent invalid with respect to, and to the extent of, the scope of protection claimed by the patentee. Different issues will almost always arise in these two assessments.  1.2.ENFORCEMENT OF PATENT R IGHTS The technical content in many patent cases can be very complex indeed, and the resolution of the technical points of dispute may not only involve one or more expert witnesses, but may need experimental evidence as well. For instance, in a case concerning the alleged infringement of a patent granted for an invention consisting of an air plasma cutting torch, the claim included a feature which defined what was happening within the torch when it was operated. To prove infringement, an experiment was necessary to define the temperature gradient of the plasma genic air within the torch itself. A probe inserted into the torch has the effect of modifying the air flow through the torch, which in turn will affect the temperature gradient. A better means of evaluation is thermal imaging, but it is expensive to set up. No sooner has one side carried out experiments, than the other side may feel obliged to carry out experiments themselves to check the worth of the first set of experiments or with the aim of disproving the first experiments. Assisted by arguments, which in turn are supported by expert evidence and experimental evidence, the court will reach a conclusion about whether or not an infringement has occurred. But most patents contain more than one claim. The inclusion of a number of claims is to give the patentee extra chances of preventing an infringement. If one claim is held invalid, the patentee may still succeed in restraining infringement if it is held that another claim is valid and an infringement has occurred with respect thereto. Where the patent in suit has a number of claims with respect to which the patentee alleges an infringement, the court will have to consider each claim separately to see if it is infringed. Similar expert evidence and experiments may be needed in order to deal with validity. As with the determination of infringement, the court will need to decide whether the known information is sufficient to invalidate the claims; and that exercise needs to be carried out for all the claims.  1.2.ENFORCEMENT OF PATENT R IGHTS 1.2.3. The Cost of Patent Litigation: Whether the submission and evidence concerning infringement and validity are made in writing or given orally at a hearing, or a combination of both, the parties to a patent dispute will find themselves involved in lengthy consideration of the issues and preparation of material for the court. It is mainly the borderline cases that go to trial. This has the effect of extending the arguments by which each side hopes to secure a decision in its favor. Where the patent dispute occurs in a field of high commercial value, and most disputes are because of their high cost, the parties may be inclined to drag any point into the dispute, however peripheral, if it appears to help their case. The costs arising from all of this can become outrageous. This is really the key point about patent enforcement. However carefully one makes an estimate of the costs at the start of the litigation, they almost invariably have to be revised upwards as new issues come to light during the development of the case. Patent enforcement, or defense against enforcement, occurs because someone wishes to receive a commercial advantage, in other words, to make money. That advantage must constantly be reviewed against the cost of the litigation.  2.ENFORCEMENT OF COPYR IGHT AND R ELATED R IGHTS: Introduction: The evolution of international standards for the enforcement of copyright and related rights has been dramatic in recent years, and this evolution has been driven principally by two factors. The first is the advance of technological means for the creation and use (both authorized and unauthorized) of protected material, including, most recently, the advent of digital technology, which makes it possible to transmit and make perfect copies of any information existing in digital form, including works and productions protected by copyright and related rights. The second factor is the increasing economic importance of goods and services protected by intellectual property rights in the realm of international trade; simply put, trade in products embodying protected intellectual property rights is now a booming, worldwide business. 2.1.Provisions on Enforcement of Rights in International Copyright and Related Rights Conventions: While the international copyright and related rights conventions administered by WIPO do not contain extensive provisions dealing with enforcement of rights, the obligation of States to provide adequate means for enforcement of rights is clearly present in these conventions. The Berne Convention contains two specific provisions on the enforcement of rights, on the one hand Art.16(1) and (2), which provides that infringing copies of a work are subject to seizure in any country of the Berne Union where the work enjoys protection, even when the copies come from a country where the work is not or no longer protected, and on the other hand Art.13(3), which provides for seizure of copies of certain recordings of musical works imported without permission of the author or other owner of copyright in the country of importation. The Berne, Rome and Phonograms Conventions also contain provisions indirectly requiring appropriate enforcement measures in any country party to the conventions. For example, Art.36(1) of the Berne Con. provides that “Any country party to this Convention undertakes to adopt, in accordance with its constitution, the measures necessary to ensure the application of this Convention”; paragraph (2) of the same Art provides that “It is understood that, at the time a country becomes bound by this Convention, it will be in a position under its domestic law to give effect to the provisions of this Convention.” Similar provisions are found in Art.26(1) and (2) Contracting State to protect producers of phonograms against the making of duplicates (copies) without the consent of the producers and against the importation and distribution of such duplicates of the Rome Con. Art.2 of the Phonograms Convention obligates each;  2.ENFORCEMENT OF COPYR IGHT AND R ELATED R IGHTS: 2.3.2. Evolution of International Standards for the Enforcement of Rights: It is obvious that the above provisions of the Berne, Rome and Phonograms Conventions cannot be respected without appropriate measures for the enforcement of rights provided under the national laws of their member States. It has become obvious that such provisions alone do not provide national governments with the necessary guidance concerning appropriate and modern standards for the enforcement of rights. Thus, evolution of new standards for enforcement of rights has taken place in a number of contexts, including the activities of WIPO. Since the beginning of the 1980s, WIPO has devoted ever greater attention to questions relating to the enforcement of rights. A short list is illustrative: two WIPO Worldwide Forums on Piracy were held in 1981 and 1983; extensive and detailed recommendations for measures to combat piracy of audiovisual works, phonograms and the printed word were developed in the series of meetings on categories of works (1986 to 1988); a committee of experts was convened in 1988 to elaborate measures against both piracy and counterfeiting, which were included by reference in the draft WIPO Model Law on Copyright prepared by the International Bureau and discussed by a Committee of Experts in 1989 and 1990; a detailed chapter on enforcement of rights was included in a draft WIPO Model Law on the Protection of Producers of Sound Recordings considered by a Committee of Experts in 1992, which, in addition to provisions on conservatory measures, civil remedies and criminal sanctions, contained proposed sanctions against the abuse of technical means applied for the protection of copyright. The experience gained in all of the above activities since the 1980s has been reflected in the work of a Committee of Experts towards development of a Protocol to the Berne Convention, which began in 1991, and on the development of a possible international instrument on the protection of the rights of performers and producers of phonograms, which began in 1993. Naturally, provisions on enforcement of rights have figured prominently in the discussions of both Committees. These deliberations were part of a process leading to a Diplomatic Conference in 1996, which resulted in the adoption of the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty; both contain provisions on the enforcement of rights.  3. ENFORCEMENT PROVISIONS OF THE TR IPS AGR EEMENT It is worth recalling that the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which forms part of the overall Agreement establishing the World Trade Organization (WTO), requires the members of the WTO to ensure that effective enforcement procedures are available. The TRIPS Agreement also includes provisions requiring action by customs authorities against suspected counterfeit or pirated goods. Intellectual Property Litigation: Introduction: In many intellectual property systems, it is common to have some form of internal appeal against a patent or trademark examiner’s decision. Boards of Appeal exist for instance in the European Patent Office and the US Patent and Trademark Office. While in the UK Patent and Trademark Office there is no formal internal appeal, a dispute between the applicant and examiner can be taken to a hearing before a senior officer. Whatever the arrangement for internal appeal may be, in most intellectual property systems the courts play an important role in hearing appeals from decisions of the Industrial Property Office and in adjudicating infringement actions. Review of Industrial Property Office Decisions: Introduction: The functions of Patent Offices in most countries are administrative in character rather than judicial. However, because Commissioners and Registrars are obliged to interpret the law in order to carry out their functions properly, and because third parties’ rights and the public interest must be taken into account, there is at times a tendency to treat office decisions as sacrosanct. In a number of countries, the Commissioner or Registrar is able to summon witnesses, administer oaths, require the production of documents or articles and award costs. His functions are therefore often referred to as “quasi-judicial.” It must not be forgotten, however, that a Patent Office decision is administrative in character, notwithstanding that certain functions of the Commissioner or Registrar have quasi- judicial features. Generally speaking, appeals can be lodged against decisions taken during or at the end of the procedure relating to an application for a patent for invention — in the case of the former, “pre-grant appeals,” and in the case of decisions taken after the grant of a patent for invention, “post-grant appeals.” “Pre-grant appeals” only involve a third party, in addition to the owner of the patent for invention and the Patent Office. Similar appeals exist in relation to decisions of the Trademark Office.  3. ENFORCEMENT PROVISIONS OF THE TR IPS AGR EEMENT Pre-Grant Appeals: Chronologically, the first decision of the Patent Office is the decision by which it does or does not accord a filing date. The applicant may disagree with the date accorded and may wish to appeal against a decision. As an example, supposing the payment of the application fee in a particular country is one of the requirements for according a filing date, and the Patent Office and the applicant disagree as to when the application fee was actually paid. The Patent Office alleges that the application fee was paid two days after the date on which the documents constituting the application were filed, whereas the applicant claims that it was paid on the same day the application itself was filed. If the invention claimed in the application was published the day after the application itself was filed, the decision of the Patent Office according a filing date is crucial. If the applicant is not able to convince the Patent Office that the application fee was paid before the publication of the invention, the application will eventually be rejected for lack of novelty of the invention. Therefore, it is important for the applicant to have the right to appeal against the decision according a filing date. Another decision against which the applicant may appeal to the court is the decision, taken during the preliminary (or formal) examination, by which the Patent Office declares that the application is deemed to be withdrawn. Such a decision may be taken, for example, on the ground that a formal defect in the application has not been eliminated in due time or that the invention claimed in the application is contrary to public order or morality. The most frequent decision against which the applicant may appeal to the court is the decision, taken as a result of the examination of the application as to substance, by which the Patent Office rejects the application. Such a decision may be taken, for example, on the ground that the invention claimed in the application is not new, does not involve an inventive step or is not industrially applicable. Another possible ground for rejection of the application might be that the claims or the description contain substantive defects which have not been eliminated by the applicant. Post-Grant Appeals: After the grant of the patent for invention, there may also be cases where an appeal may be lodged against a decision of the Patent Office. For example, the Patent Office may have declared that the patent for invention has lapsed because an annual fee has not been paid in due time. On the other hand, the owner of the patent for invention may allege that the annual fee was paid in due time and, as a consequence, may wish to appeal to the court against the declaration of lapse. In such a case, the appeal only involves the owner of the patent for invention and the Patent Office. Another example of a “post-grant appeal” would be against a decision by the Patent Office to grant a compulsory license. Where the law so provides, a similar appeal would also be possible against a decision by the Patent Office to refuse to grant a compulsory license. In both cases, the appeal would involve three parties, namely, the owner of the patent for invention, the party requesting the grant of a compulsory license and the Patent Office.  4. NAT IO NA L LEG I S LAT I O N CO NC ER N I NG EN FO RC EM EN T O F R I GH TS : The availability of appropriate provisional (conservatory) measures is an indispensable element of any efficient mechanism for the enforcement of copyright. The most important objectives of such measures are the prevention of acts of infringement and the seizure of infringing copies, reproducing equipment and other implements that could be used for (further) infringements, constitute essential evidence and could disappear if not brought under the control of the court. These measures must be available on an ex parte basis where giving the defendant prior notice would be counterproductive. In particular, it should be possible for right-owners to be granted temporary preliminary injunctions to prohibit the committing, or the continuation of the committing, of infringements. Also, courts must be able to order the search, temporary seizure and temporary impounding of suspected unauthorized copies of works and other protected subject matter, packaging materials, implements for the making of such copies and documents, accounts or business papers relating to such copies. The purposes of civil remedies are (i) to provide compensation for the prejudice caused by infringements, (ii) to dispose appropriately of the infringing copies (typically through destruction or other disposal outside the normal channels of commerce), (iii) to dispose appropriately of implements used for infringing activities and (iv) to grant injunctions to prohibit further infringements. Such remedies should always be available irrespective of whether the infringement has been committed willfully and/or for profit-making purposes. Civil remedies are not always sufficient deterrents. Where infringement becomes a business, the closing down of one plant with the assistance of courts and law enforcement authorities may only mean that the plant will re-open somewhere else. Infringements committed willfully and for profit-making purposes should be punished by criminal sanctions, and the level of the sanctions must make it clear that such infringements of copyright are serious offenses. It is normally preferable that criminal sanctions are also applicable in case of infringements committed through gross negligence, for profit-making purposes, because it may be difficult to prove that infringements are committed willfully. Increased punishments in cases of recidivism are also justified. The criminal sanctions available should comprise both fines and imprisonment, and, where merited by the case, courts  4. NAT IO NA L LEG I S LAT I O N CO NC ER N I NG EN FO RC EM EN T O F R I GH TS : In certain cases, the only practical means of preventing copying is through so-called “copy-protection” or “copy- management systems”, that is, systems containing technical devices that either entirely prevent the making of copies or render the quality of the copies made so poor that they are unusable. Technical devices are also used to prevent the reception of encrypted commercial television programs except with the help of decoders, which would-be viewers have to buy or rent. However, it is technically possible to make devices by means of which copy-protection and copy-management systems as well as encryption systems may — although illegally — be circumvented. Where such devices are manufactured or imported and distributed unlawfully, the normal exploitation of the works is undermined and may cause serious prejudice to the authors of, or other owners of copyright in, those works. Such activities are violations of the protected rights and should be sanctioned in a way similar to that of other kinds of infringements. 4.1. Enforcement of Intellectual Property in the National Legislation of the Republic of Azerbaijan Introduction: Intellectual Property (IP) rights are a cornerstone of fostering innovation, creativity, and economic growth in modern economies. In the Republic of Azerbaijan, the enforcement of IP rights has evolved significantly since the country gained independence in 1991. With the increasing importance of globalization and technological advancement, the Azerbaijani government has taken notable steps to align its IP enforcement mechanisms with international standards. This section examines the current framework for IP enforcement in Azerbaijan, its challenges, and potential areas for improvement. Historical Development of IP Legislation in Azerbaijan: The foundations of Azerbaijan’s IP legislation were laid during the Soviet era, where a centralized approach to innovation and creativity prevailed. Post-independence, Azerbaijan began developing a comprehensive IP legal framework to promote market-based incentives for creators and innovators. The ratification of key international treaties, such as the Berne Convention for the Protection of Literary and Artistic Works and the Paris Convention for the Protection of Industrial Property, marked Azerbaijan’s commitment to upholding global IP standards. Additionally, the country became a member of the World Intellectual Property Organization (WIPO) in 1995, further emphasizing its focus on protecting IP rights.  4. NAT IO NA L LEG I S LAT I O N CO NC ER N I NG EN FO RC EM EN T O F R I GH TS : Current Legislative Framework: Azerbaijan’s IP rights are primarily governed by the Law on Copyright and Related Rights (1996), the Patent Law (1997), and the Law on Trademarks and Geographical Indications (1998). These laws provide comprehensive protections for authors, inventors, and businesses. Key enforcement bodies include: State Agency for Intellectual Property (SAIP): Oversees the registration and protection of IP rights. Customs Authorities: Prevent the import and export of counterfeit goods. Judiciary: Handles disputes and ensures legal remedies for IP infringements. Enforcement Mechanisms: The enforcement of IP rights in Azerbaijan involves administrative, civil, and criminal remedies. These mechanisms are crucial for addressing infringements such as piracy, counterfeiting, and unauthorized use of IP. Administrative Remedies: These include penalties imposed by SAIP for non-compliance with IP laws. For example, businesses found selling counterfeit goods may face fines or confiscation of infringing items. Civil Remedies: IP holders can file lawsuits seeking injunctions, damages, or other equitable relief. The Civil Procedure Code of Azerbaijan facilitates efficient resolution of IP disputes. Criminal Remedies: Under the Criminal Code of Azerbaijan, severe IP infringements, such as large-scale piracy, are punishable by fines or imprisonment. Challenges in IP Enforcement: Despite a solid legislative framework, IP enforcement in Azerbaijan faces several challenges: Public Awareness: Many individuals and businesses remain unaware of the importance of IP rights, leading to frequent violations. Judicial Expertise: Limited specialization in IP law among judges can result in inconsistent rulings. Counterfeit Trade: Azerbaijan’s position as a transit country in the Caucasus has made it vulnerable to counterfeit goods. Technological Piracy: The rise of digital platforms has exacerbated issues of copyright infringement.  4. NAT IO NA L LEG I S LAT I O N CO NC ER N I NG EN FO RC EM EN T O F R I GH TS : Impact of Strengthened IP Enforcement: Strengthening IP enforcement has a significant impact on Azerbaijan’s economy and innovation landscape. Robust IP protection attracts foreign direct investment, promotes local innovation, and ensures a level playing field for businesses. For instance, improved trademark protection has encouraged international brands to operate in Azerbaijan, boosting consumer trust. Future Directions and Recommendations: To enhance IP enforcement, Azerbaijan could: Enhance Public Awareness: Conduct educational campaigns highlighting the value of IP rights. Judicial Training: Establish specialized IP courts or train judges in handling complex IP disputes. Strengthen Cross-Border Cooperation: Collaborate with neighboring countries to curb the trade of counterfeit goods. Leverage Technology: Implement digital tools for tracking and protecting copyrighted works. Conclusion: The enforcement of IP rights in Azerbaijan has come a long way, demonstrating the country’s commitment to fostering innovation and creativity. While challenges remain, targeted reforms and increased awareness can pave the way for a more robust IP regime. By aligning its enforcement mechanisms with international best practices, Azerbaijan can ensure sustained economic growth and strengthen its position in the global innovation ecosystem.  5. A D M I N I ST R AT I O N O F I N D UST R I A L PROPERT Y Introduction: The organizational structures which need to be established by the government of a country for industrial property laws to operate effectively fall into three categories: - bodies operated directly as part of the government machinery — namely an Industrial Property Office and a Policy Unit; - bodies outside the government machinery but which may call for government supervision — namely patent and trademark agents; - special arrangements in the courts. The Industrial Property Office is often called the Patent Office for short, even though it handles trademarks and designs as well as patents. In some countries the three functions are, for historical or other reasons, operated independently by separate offices, but it is usually more efficient to combine the functions in one office. The Industrial Property Office is essentially a government institution. Its precise position in the government organization as a whole can vary according to the administrative structure of the government of the country in question. The Office may be integrated completely into a Ministry concerned, being staffed by civil servants who can be transferred into and out of the Office from other parts of the Ministry. The advantage of frequent transfers is that the Office receives a regular intake of staff with wider experience and perhaps fresh ideas; the disadvantage is that experienced officials are lost as they move elsewhere. The Office may be organized as a semi-autonomous body, able to recruit and train its own staff on its own terms, to control its own fees and other charges and to manage its own finances. It may then have a management board representing both the government and the people who use the Office’s services. The advantages are freedom from general government restrictions on manpower and spending, more freedom to finance investment in new developments, greater ease in responding to user and consumer interests, and more retention of experienced staff. The disadvantage, particularly for a small Office, is that the staff’s career is more restricted and that might affect the quality of the recruits to the Office. Whatever administrative structure is adopted the Office must be judicially autonomous. The decisions of the Office to grant, refuse or revoke an industrial property right, or to resolve disputes between parties, are quasi-judicial decisions, not administrative ones. The Office must, therefore, be free from any interference in particular decisions, being answerable only to the court in so far as there is a right of appeal from an Office decision to the court.  5. A D M I N I ST R AT I O N O F I N D UST R I A L PROPERT Y The Office must be subject to administrative supervision by the Ministry in charge of its general performance, on the level of its fees and on the appointment of the head of the Office or members of any management board. In addition, it is highly desirable to establish an advisory committee of representatives of user organizations (such as patent and trademark agents’ institutes, chambers of commerce, industrial federations and consumer groups). Administrative Structure in the Industrial Property Office: The managers of many of today’s Industrial Property Offices are increasingly called upon to plan and organize their operations with optimum efficiency in mind. In recent years, Industrial Property Offices have become much more active in the promotion and delivery of services related to the role of industrial property information as important factors for technological development, in addition to the carrying out of the traditional functions of search and examination related to the granting of industrial property rights. Most Industrial Property Offices have also experienced, in recent years, substantial increases in workloads because of rises in filing rates, which have not always been accompanied by corresponding increases in human resources. Consequently, managers have been looking at various ways and means, including automation, to increase the efficiency of their operations and deliver more with the same or fewer resources. In this context, managers have been studying different organizational set-ups in order to promote the most efficient use of their human resources. The current trend is to group all the industrial property activities under one authority, since this results in the more efficient use of management skills and the interchangeability of a certain number of employees, particularly in the support areas. Such an organizational structure allows having managers with specific technical and operational knowledge and experience at certain levels but liberates others to concentrate on primarily management issues.  5. A D M I N I ST R AT I O N O F I N D UST R I A L PROPERT Y The structure also reduces the number of managers requiring in-depth knowledge of industrial property. Other advantages are: - providing a variety of advancement paths for employees; - possibility of amalgamation of certain functions and avoidance of duplication of certain others; - management teams with a variety of experience and background; - making optimum use of management skills by having them applied over wider areas; - presents the possibility of shared services, often reducing costs and the amount of equipment and office space required. This structure also has some disadvantages — of certain employees having to become generalists rather than acquiring in-depth experience in any one field, and of certain managers being called upon to deal with a multitude of areas that are quite different in nature. Others are: - because the educational requirements are different in the different sectors, the employees of one sector can tend to dominate the managerial levels; - because of fewer management positions at certain levels, there are fewer prospects of advancement to those levels. There is also an increasing tendency to merge the industrial property administration with the copyright administration, as in Indonesia, Malaysia, Mongolia, Singapore and Thailand. Directorate General: The Directorate General is the authority to which all the organizational centers report. The actual title of this position may vary as, for instance, Commissioner of Patents, Registrar of Trademarks, etc., as well as that of Director General. The officer holding this position is responsible for the management of all operations related to industrial property. In practically every Industrial Property Office, this responsibility would be too vast for only one manager. The situation may be handled by the appointment of Deputy Directors General who are responsible for specific operations, or by dividing the Directorate General into legal and administrative areas of responsibility.  THE ENFORCEMENT OF IP R IGHTS R ELATED CASES Case 1: Tintinimaginatio v. Xavier Marabout (2024) Introduction: This French case dealt with the balance between copyright infringement and the parody exception. Xavier Marabout, an artist, created paintings inspired by The Adventures of Tintin, claiming they were parodic. The copyright holders, Tintinimaginatio (formerly Moulinsart), filed a lawsuit alleging unauthorized use of copyrighted characters for commercial purposes. Impact: The case raised critical questions about the limits of parody under French copyright law. It highlighted the conflict between artistic freedom and the rights of creators, emphasizing the criteria for what qualifies as parody, including humor and transformative intent. Result: The Rennes Court of Appeal ruled in favor of Tintinimaginatio, finding that Marabout’s works did not meet the legal definition of parody and amounted  THE ENFORCEMENT OF IP R IGHTS R ELATED CASES Case 2.Oracle v. Google (2021) Introduction: This landmark case involved copyright infringement claims by Oracle against Google over the use of Java APIs in the Android operating system. Oracle alleged that Google's replication of Java's application programming interfaces (APIs) for Android violated Oracle's copyright. Impact: The case had major implications for software development, particularly the balance between innovation and the proprietary nature of software code. A decision in favor of Oracle could have made it harder for developers to use existing programming tools, potentially stifling innovation. Result: The U.S. Supreme Court ruled in favor of Google, holding that its use of the Java APIs constituted "fair use." The decision emphasized the transformative nature of Google's use, which created a new platform for mobile devices. This ruling underscored the importance of fair use in  THANKS FOR YOUR ATTENTION.