CONCEPT OF INELLECTUAL PROPERTY RIGHTS (IPRs)

Intellectual Properties (IP) are those properties which are intangible in nature and which involves creative outputs of the human mind, for instance: novels, music, motion-pictures, industrial designs, inventions, trademarks, which have commercial value1.

Intellectual property (IP) is a legal field that refers to creations of the mind such as musical, literary, and artistic works; inventions; and symbols, names, images, and designs used in commerce, including copyrights, trademarks, patents, and related rights. Under intellectual property law, the holder of one of these abstract "properties" has certain exclusive rights to the creative work, commercial symbol, or invention by which it is covered.

Intellectual property rights are a bundle of exclusive rights over creations of the mind, both artistic and commercial. The former is covered by copyright laws, which protect creative works such as books, movies, music, paintings, photographs, and software and gives the copyright holder exclusive right to control reproduction or adaptation of such works for a certain period of time2.

The term "intellectual property" denotes the specific legal rights described above, and not the intellectual work itself.

The importance of intellectual property in India is well established at all levels- statutory, administrative and judicial. India ratified the agreement establishing the World Trade Organization (WTO). This Agreement, inter-alia, contains an Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) which came into force from 1st January 1995. It lays down minimum standards for protection and enforcement of intellectual property rights in member countries which are required to promote effective and adequate protection of intellectual property rights with a view to reducing distortions and impediments to international trade. The obligations under the TRIPS Agreement relate to provision of minimum standard of protection within the member countries legal systems and practices.

The Agreement provides for norms and standards in respect of following areas of intellectual property:

1. Copyrights and related rights

2. Trade Marks

3. Geographical Indications

4. Industrial Designs

5. Lay out Designs of Integrated Circuits

6. Protection of Undisclosed Information (Trade Secrets)

7. Patents

8. Plant varieties

Intellectual Property (IP) is the information and original expression that brings its original value from creative ideas with a commercial value. Intellectual property allows the people to have fully independent ownership for their innovations and creativity like that for their own physical property. By safeguarding such innovations, can lead to the owner of IP can be encouraged for further innovations to the benefit of the society in general.  It may not be possible to protect IP and obtain intellectual property rights unless they have been applied for the sanction obtained.

Most of the countries having large number of local industries with innovative designs have specific laws to safeguard the innovations by some regulations with respect to copying of inventions, identifying symbols and creative slogans. As in other developing countries, India too showed for quick enforcement of intellectual property right protection laws. India has to comply being a member of WTO for such implementation of laws at least by 2005. India's IPR scene is no deterrent to foreign companies. These laws consist of distinct types of intangible properties.

INTERNATIONAL TREATIES AND CONVENTIONS ON INTELLECTUAL PROPERTY

• Berne Convention for the Protection of Literary and Artistic Works

• Hague Convention

• Nice Agreement Concerning the International Classification of Goods and

Services for the Purposes of the Registration of Marks [1957]

• Paris Convention 1967 & 1979

• Patent Cooperation Treaty [PCT]

• Patent Cooperation Treaty - Regulations

• Trademark Law Treaty (TLT)(1994)

• Trademark Registration Treaty (Vienna, 1973)

• TRIPS Agreement on Trade-Related Aspects of Intellectual Property Rights

• Universal Copyright Convention [Paris, 1971]

• Agreement on Trade-Related Aspects of Intellectual Property Rights including trade in counterfeit goods (TRIPS Agreement) part of the GATT Uruguay Round signed in April 1994.

• Convention establishing the World Intellectual Property Organisation (WIPO), signed at Stockholm on 14 July 1967, amended on 28 September 1979

Patents

1. Patent Cooperation Treaty of 19 June 1970, signed at Washington on 19 June 1970, amended on 28 September 1979, modified on 3 February 1984 and 3 October 2001

2. Patent Law Treaty adopted at Geneva 2 June 2000

3. Strasbourg Agreement Concerning the International Patent Classification, signed on 24 March 1971, amended on 28 September 1979

4. Convention on the Grant of European Patents of 5 October 1973

5. Community Patent Regulation - proposal for a Council Regulation agreed on in 2003

Trademarks

1. Trademark Law Treaty (TLT) adopted at Geneva on 27 October 1994

2. The Madrid Agreement (April 1891) and Protocol (June 1989) concerning the International Registration of Marks

3. Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks signed at Nice on 15 June 1957

4. Vienna Agreement establishing an international classification of the Figurative elements of Marks, signed at Vienna on 12 June 1973, as amended on 1 October 1985

5. Community Trademark Regulation no. 40/94 of 20 December 1993

Industrial designs

1. The Hague Agreement for the international deposit of industrial design, signed 28 November 1960. With one simple filing with the WIPO Office located in Geneva, the holder enjoys protection in one or several of the 29 countries party to the Agreement.

2. Locarno Agreement establishing an International Classification for Industrial Designs signed at Locarno on 8 October 1968, as amended on 28 September 1979

3. The Community Design (98/71/EC). As of 1 April 2003 a uniform protection system, requiring registration at the Alicante Office for Harmonisation in the internal market, and valid throughout the Community, came into force. This system, set up under a Regulation adopted by the EU Council of Ministers on 12 December 2001 (98/71/EC), basically aims at fostering creativity and innovation, and reducing counterfeiting and piracy within the internal market. The registration procedure is simple and inexpensive.

Some types of designs are not covered by the Community design, such as component parts not visible once incorporated into complex projects or designs dictated by function of the product. This Community Design protection coexists with national protection systems and does not replace them.

Copyright and related rights

1. The Berne Convention for the Protection of Literary and Artistic Works (1986)

2. Universal Copyright Convention (1952)

3. International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations, the Rome Convention (1961)

4. Trade Related Aspects of Intellectual Property Rights, the TRIPS Agreement (1994)

5. Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite, adopted at Brussels on 21 May 1974

6. World Intellectual Property Organization Copyright Treaty (WCT) adopted in Geneva on 20 December 1996.

 

TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS “TRIPS AGREEMENT ”

The WTO3 Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement) is the Uruguay Round agreement covering the protection and enforcement of intellectual property rights. Intellectual property rights were a key area of concern for the United States during the Uruguay Round negotiations.

The TRIPs4 Agreement incorporates by reference most of the substantive provisions of two earlier multilateral IPR conventions: the Paris Convention for the Protection of Industrial Property (1967)(covering patents, trademarks, trade names, utility models, industrial designs and unfair competition) and the Berne Convention for the Protection of Literary and Artistic Works (1971) (covering copyrights).

The TRIPs Agreement applies to all WTO Members; it is not a plurilateral agreement (such as the Agreement on Government Procurement).

WTO Dispute Settlement Understanding applies to the TRIPs Agreement (including right of cross-retaliation in products and services).

Dispute Resolution and Parallel Importation ("International Exhaustion of Intellectual Property Rights"): "For purposes of dispute settlement under this Agreement" (other than regarding national treatment and most favored nation obligations), "nothing in this Agreement shall be used to address the issue of the exhaustion of intellectual property rights." (Article 6)

The TRIPs Agreement explicitly covers patents, trademarks, copyrights and related rights, geographical indications, lay-out designs (topographies) of integrated circuits (usually called semiconductor mask works in the U.S.), industrial designs and undisclosed information (trade secrets).

Articles 3 and 45 contain national treatment and most favored nation obligations, respectively, concerning the "protection of intellectual property," subject to specified exceptions--particularly those contained in international conventions such as the Berne Convention for the Protection of Literary and Artistic Works (1971), the Paris Convention for the Protection of Industrial Property (1967) and the Rome Convention ("International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, adopted at Rome on 26 October 1961.")

Transition Periods: Developed countries must have fully implemented the TRIPs Agreement by January 1, 1996; Developing countries and countries converting from planned to market economies must have fully implemented by January 1, 2000 (except that developing countries/countries in transition which did not have TRIPs consistent product patent protection (e.g., no product patent protection for pharmaceuticals and agricultural chemicals) have until January 1, 2005 to implement that obligation; those members that availed themselves of the transition period for providing product patent protection for pharmaceuticals and agricultural chemical inventions are obligated to provide a "mail box" system, and exclusive marketing rights for such products as of January 1, 1995.

Least developed countries do not have to fully implement TRIPs until January 1, 2006. The Doha Declaration on the TRIPs Agreement and Public Health further extended the transition period for least developed countries until January 1, 2016 with respect to the TRIPs obligations concerning pharmaceutical product patent protection and the protection of undisclosed pharmaceutical test data against unfair commercial use (Sections 5 and 7 of Part II of the TRIPs Agreement). On June 27, 2002, the WTO's Council for Trade-Related Aspects of Intellectual Property Rights (TRIPs Council) agreed to grant a waiver to least-developing countries concerning the obligation to provide exclusive marketing rights for pharmaceutical products (TRIPs Article 70.9) until January 1, 2016. This waiver is subject to approval by the WTO's General Council. There is no waiver of the obligation to adopt "mail box" provisions (TRIPs Article 70.8) for pharmaceutical product patent applications.

There is no transition period for the national treatment and most favored nation obligations in Articles 3-5. All WTO Members were required to implement national treatment and most favored nation obligations by January 1, 1996.

A. Patents

A patent consists of a disclosure of an invention to the public in exchange for a limited period of time to exclude others from using the invention without the owner's consent.A patent may be granted if the invention meets the statutory requirements of novelty (it’s new), utility (it’s capable of practical application), and non-obviousness (the invention would not be obvious to someone of ordinary skill who practiced in the technical field in question). These statutory requirements apply to both product and process inventions6.

A patent contains "claims" which define the scope of invention–these are like the "metes and bounds" in land titles. A patent often contains a drawing illustrating the invention claimed. The patent applicant must disclose the "best mode"–the best method known at the time of application–of practicing the invention.

There are two basic types of patents: product patents (covering the composition of a product–e.g., the chemical composition of an antibiotic) and process patents (covering a method of producing a product. Both product and process patents are collectively referred to as "utility patents" because they are capable of industrial application. Patents are territorial in nature.

TRIPs Requirements for Patents

The TRIPs Agreement permits Members to exclude from patentability: diagnostic, therapeutic and surgical methods for the treatment of humans or animals; and plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members must provide for the protection of plant varieties either by patents or by "an effective sui generis system" (e.g., plant breeders rights) or any combination thereof. (Article 27.3)

Subject to the provisions on transition periods, permissible exclusions from patentable subject matter, and "mailbox requirements" for pharmaceutical and agricultural chemical product patent applications (see below), "patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced." (Article 27.1)

TRIPs Agreement requires that a patent must exist for a minimum period of 20 years from the date of filing of the patent application. (TRIPs Article 33). All patents in force on January 1, 1996 and all patents resulting from patent applications pending on January 1, 1996 are entitled to a minimum term of 20 years from date of filing:

-The WTO Appellate Body has ruled that Canada violated the TRIPs Agreement by not providing a patent term of at least 20 years from date of filing to those patents in force on January 1, 1996 that were issued as a result of applications filed before October 1, 1989.

A product patent confers on its owner the right to prevent third parties not having the owner's consent from making, using, offering for sale, selling or importing for such purposes the patented product. (Article 28.1). A process patent confers on its owner the right to prevent third parties not having the owner's consent from the act of using the process, and from using, offering for sale, selling or importing for such purposes at least the product obtained directly by that process. (Article 28.1)

Members Not Providing Article 27 Consistent Product Patent Protection for Pharmaceutical and Agricultural Chemicals on January 1, 1995 Must Comply with the Mail Box/Exclusive Marketing Rights Requirements in Articles 70.8 and 70.9.The "mail box" requirements in Article 70.8 enable foreign patent applicants to preserve their filing dates (a critical issue in "first to file" patent systems) for the eventual award of pharmaceutical and agricultural chemical product patents once the transition period has expired.

B. Trade Secrets ("Undisclosed Information")

What is a trade secret? Secret information that has commercial value, which the person lawfully in control of such information is taking reasonable steps under the circumstances to keep secret (e.g., keeping the information locked in a safe when not in use, non-disclosure clauses in employment agreements).

Trade secrets are valuable. Some examples of trade secrets are the Coca Cola formula, customer lists, and confidential pharmaceutical test data used to obtain governmental marketing approval.

How do patents and trade secrets differ? Patents expire at the end of their term (e.g., 20 years from date of filing); trade secrets have no expiration date as long as they remain secret.

TRIPs Agreement for Trade Secrets

Article 39.1 requires Members to enable persons who lawfully are in control of "undisclosed information" (trade secrets) to prevent such information "from being disclosed to, acquired by, or used by others without their consent in a manner contrary to honest commercial practices" as long as the information remains a trade secret.

Prohibits unfair commercial use of test or other data, the origination of which involved considerable effort, used in approving the marketing of pharmaceutical and agricultural chemical products employing new chemical entities. (TRIPs Article 39.3)

C. Trademarks

A trademark (or service mark) is any sign or combination of signs capable of distinguishing the goods or services of one firm from another7.

Trademarks are territorial; if you want trademark protection in another country, you must file in that country; international protection through the Madrid Protocol (U.S. Senate is currently considering accession to the Madrid Protocol). The Madrid Protocol permits the nationals of Madrid Protocol members to file a single international trademark application to obtain protection in multiple members of the Madrid Protocol.

TRIPs Agreement and Trademarks

TRIPs Agreement incorporates the substantive obligations of Articles 1 through 12 and Article 19 of the Paris Convention for the Protection of Industrial Property (1967). The TRIPs Agreement mandates protection for both trademarks and service marks. Trademarks and service marks must have a minimum term of seven years and must be renewable indefinitely. (Article 18)

Restrictions on cancellation of trademark registrations for non-use:

-"If use is required to maintain a registration, the registration may be cancelled only after an uninterrupted period of at least three years of non-use, unless valid reasons based on the existence of obstacles to such use are shown by the trademark owner. Circumstances arising independently of the will of the owner of the trademark which constitute an obstacle to the use of the trademark, such as import restrictions on or other government requirements for goods or services protected by the trademark, shall be recognized as valid reasons for non-use." (Article 19.1)

The TRIPs Agreement states that the owner of a registered trademark has the "exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion." (Article 16.1)

Enhanced Protection for "well-known" marks:

-"In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark." (Article 16.2)

Under the Paris Convention (which is generally incorporated by reference into the TRIPs Agreement), well-known marks are entitled to protection in all Paris Convention/TRIPs Members, regardless of whether the mark is registered.

D. Geographical Indications (TRIPs Articles 22-24)

The 1994 Agreement on Trade Related Aspects of Intellectual Property Rights ("TRIPS Agreement") came into force in 1995, and had effect in developed countries – including the United States – as of January 1, 1996.

Developing countries had until January 1, 2000 to comply with the TRIPs standards with respect to geographical indications and least-developed countries have until January 1, 2006 in which to comply.

TRIPS sets forth standards to regulate international intellectual property protection and enforcement, and establishes international minimum standards for "geographical indications." Part II, Section 3 of TRIPS, in Articles 22 24,  specifies the minimum standards of protection that WTO Members must provide for geographical indications.

Geographical indications are, for purposes of the TRIPS Agreement, a type of intellectual property ("IP"). "Geographical Indications," ("GIs") are defined, at Article 22(1) of the TRIPS Agreement, as "indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin.8"

The TRIPS Agreement also provides for an "enhanced" minimum level of protection for GIs that identify wines and spirits. WTO Members are required to provide the legal means for interested parties to prevent the use of GIs9 even if they do not imply that the wines or spirits originate in a place other than the true place of origin. (In other words, for wines and spirits, even if the public would not be deceived by use of a particular GI, a GI may not be used if the wines or spirits do not originate in the place indicated by the GI.)

The TRIPS Agreement provides some exceptions to these requirements. For instance, TRIPS does not require that a WTO Member extend protection to a GI if that GI is the "generic" name for the goods in the Member. As an example, in the United States the word "CHABLIS" is often used to refer to any sort of white wine. Since "CHABLIS" is a generic term in the United States, the United States can continue to permit use of word "CHABLIS" as a synonym for "white wine."(The word "champagne" is another prominent example of a generic term, which in the United States means any light colored wine with bubbles.)

Another exception to the protection afforded GIs arises in situations where a trademark already exists. Where a trademark has been applied for or registered in good faith, or where the rights to the trademark have been acquired through actual use in good faith, either (1) before the date of application of the TRIPS Agreement for a particular WTO member, or (2) before the GI was protected in its country of origin, the trademark maintains its legal presumption of superiority, based on the principle of "first in time first in right."

Geographical indications are used to indicate the regional origin of particular goods, whether they are agricultural products or manufactured goods   provided that those goods derive their particular characteristics from their geographic origin. Any producer who meets the standards set by the GI owner can use a GI. In the United States, the owner of a GI can be any legal entity—be it a government, an association of producers, or even an individual.

The TRIPS definition highlights the source indicating capacity of the indication. Not every indication can rise to the level of a GI. There must be a link between some characteristic of the good and the particular region where it was produced. That link must inform consumers of some important characteristic of the product which is material in their decision to purchase the good.

E. Copyrights and Related Rights

The Law protects a wide range of subject matters by the use of copyrights– e.g., books, sound recordings, computer programs, motion pictures, etc. There is a key difference between a copyright and a patent. A copyright protects the expression of the idea, but not the idea itself. By contrast, a patent protects the use of the idea. The law has recently adopted a copyright term of life of the author plus 70 years10.

Many foreign countries use a system of "neighboring" (related) rights to protect sound recording producers, performers, and broadcast organizations. Several of these countries, are members of the "International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, adopted at Rome on 26 October 1961" ("Rome Convention").

A copyright, except for the case of sound recordings, provides the copyright owner with broad exclusive rights (e.g., exclusive right to reproduce, publicly distribute, translate, transmit, publicly perform, etc.).

TRIPs Agreement and Copyright

The agreement Incorporates substantive obligations of Berne Convention (1971) other than provisions on moral rights of authors (i.e., right to be acknowledged as the author and right of the author to object to changes in a copyrighted work that would reflect adversely on the author).

Copyright protection is only available for expression, and not for ideas, procedures, methods of operation, or mathematical concepts. (Article 9.2)

Articles 3 and 4 of the TRIPs Agreement contain fairly broad exceptions to national treatment and most favored nation obligations regarding copyrights and related rights, including the exceptions in the Berne Convention for the Protection of Literary and Artistic Works (1971) and the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations ("Rome Convention"). The intellectual property chapter of the North American Free Trade Agreement (NAFTA), by contrast, contains a stronger national treatment provision regarding copyrights and sound recordings. (NAFTA Article 1703.1)

Members must permit authors and their successors in interest the right to bar rental of computer programs, sound recordings and cinematographic works (exemption permitted if no widespread copying of such cinematographic works has occurred in a Member because of rentals).

Copyrighted works originating in a WTO/Berne member are automatically protected in all other WTO/Berne members without formalities (i.e., copyright registration and copyright notices are not required).

Scope of exceptions: "Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder." (TRIPs Article 13) Computer programs, whether in object code or source code, must be protected as literary works under the Berne Convention. (Article 10) Provides protection to performers, producers of phonograms (sound recordings) and broadcasting organizations; fifty-year minimum term of protection to performers and producers of sound recordings; twenty-year minimum term of protection for broadcasting organizations. (Article 14) Extends Article 18 (concerning restoration of copyright protection) in the Berne Convention for the Protection of Literary and Artistic Works (1971) to the rights of performers and producers of sound recordings in sound recordings. (Article 14.6).

G. Industrial Designs

WTO Members must provide at least 10 years of protection to independently created industrial designs that are new or original. Designs that are functional may be excluded from protection. (Article 25.1 and 26.3)

Members must provide reasonable cost-effective protection to textile designs. Textile designs may be protected either through industrial design law or copyright law. (Article 25.2) The design patent law and copyright law comply with TRIPs requirements on industrial designs.

PROVISIONS RELATING TO ENFORCEMENT ACCORDING TO TRIPS

Part III of the TRIPs Agreement --"Enforcement of Intellectual Property Rights"--contains provisions on general obligations, civil and administrative procedures and remedies, provisional measures, border measures and criminal procedures. It should be noted that Part III contains only a general description of mandatory and permissive provisions, but not detailed rules governing the application of such provisions. Enforcement issues are becoming increasingly important as more countries enact laws which are generally TRIPs consistent. Increasingly, the compliance issues in the IPR area will not be inadequate foreign laws, but rather inadequate enforcement of TRIPs-consistent IPR laws11.

There have been no WTO panel reports or Appellate Body decisions to date regarding inadequate enforcement of Intellectual Property Rights. There has been only one complaint filed in the WTO against inadequate IPR enforcement--a complaint filed by the United States in June 1998 against Greece and the European Union because of the Greek Government's failure to enforce its intellectual property laws effectively against television stations that broadcasted U.S. copyrighted works without authorization. On March 22, 2001, after extensive consultations, Greece, the European Union and the United States formally resolved this WTO dispute without a decision by a dispute settlement panel.

A. General Obligation: Members Must Permit "Effective Action" Against Infringement

Article 41 describes the general obligation of Members, both with respect to enforcement of intellectual property rights and procedural due process.  From the perspective of intellectual property owners, Article 41.2 contains a critically important general enforcement obligation:

"Members shall ensure that enforcement procedures...are available under their law so as to permit effective actions against any act of infringement of intellectual property rights covered by this Agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements. These procedures shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse." (Article 41.1)

It should be noted that this language is mandatory, not merely permissive; extends to all intellectual property rights covered by the TRIPs Agreement; and specifically requires "expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements."This paragraph is the cornerstone for IPR enforcement obligations under the TRIPs Agreement.

B. Injunctions, Damages and Disposition of Infringing Goods

Members must make available to IPR rights holders "civil judicial procedures concerning the enforcement of any intellectual property right covered" by the TRIPs Agreement. (Article 42)

Courts in WTO Members must have the authority to order a party to desist from an infringement, including to prevent the entry into domestic commerce of imported goods that involve the infringement of IPR’s, immediately after customs clearance. Courts must also have the authority to award damages for infringements. (Articles 44 and 45)

Courts must have "the authority to order that goods that they have found to be infringing be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder, or unless this would be contrary to constitutional requirements, destroyed."

Courts must also have "the authority to order that materials and implements the predominant use of which has been in the creation of the infringing goods be, without compensation of any sort, disposed outside the channels of commerce in such a manner as to minimize the risks of further infringements."  Except in "exceptional cases", simply removing the unlawfully used trademark does not permit the release of the goods into the channels of commerce. (Article 46)

C. Deterrent Criminal Sanctions Required: Trademarks and Copyright Infringement on a Commercial Scale

Members must "provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale. Remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity."

Members must also provide, in "appropriate cases", for seizure, forfeiture and destruction of the infringing goods and of any materials or implements the predominant use of which has been in the commission of the criminal offense. (Article 61)

D. Administrative Procedures

Many countries rely heavily upon administrative procedures in providing a remedy to owners of intellectual property rights. Article 49 makes it clear that the requirements described above govern such proceedings on the merits of a case:

"To the extent that any civil remedy can be ordered as a result of administrative procedures on the merits of a case, such procedures shall conform to principles equivalent in substance to those set forth in this Section [i.e., Article 42-49]"

E. Provisional Measures

Courts must have the authority to grant provisional relief (e.g., preliminary injunctions): (1) to prevent infringements of intellectual property rights from occurring, in particular to prevent infringing goods from entering channels of commerce after customs clearance; and (2) to preserve relevant evidence of alleged infringement. (Article 50.1) The actual (as opposed to theoretical) ability to obtain such provisional relief is critically important in securing effective protection of intellectual property rights.

Courts must have the authority to issue provisional measures inaudita altera parte (e.g., ex parte search and seizure orders–i.e., with no prior notice to the alleged infringer), in particular in those cases where any delay is likely to cause irreparable harm to the right holder or there is demonstrable risk of evidence being destroyed. (Article 50.2)

Administrative agencies that can order provisional measures must comply with the requirements in Article 50. (Article 50.8)

F. Border Enforcement

Trademark and copyright owners must have the right to petition customs authorities for orders barring the release of imported goods into free circulation, where they have "valid grounds for suspecting that the importation of counterfeit trademark or pirated copyright goods m