1 wipo national seminar on intellectual property rights and the protection of pharmaceutical...

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WIPO NATIONAL SEMINARON INTELLECTUAL PROPERTY RIGHTS

AND THE PROTECTION OF PHARMACEUTICAL PRODUCTS

Damascus, April 25 and 26, 2005

Effective Protection and Enforceability of Industrial Property Rights as an Incentive for

the Transfer of Technology

WIPO Secretariat

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Effective protection

1. Introduction

2. International transfer of technology

3. The impact of industrial property on technology transfer

4. Building trust by the licensor and the licensee

5. Do developing country governments have a role to play in technology transfer?

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1. Introduction

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Technology is a systematic and organized set of information that enables the production of goods and services

Transfer of technology is the transmission of technology by the holder of the information and the reception of such information by the recipient in a manner that enables the latter to practice it in an autonomous manner

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Transfer of technology and dissemination of technology are not synonymous

Transfer: communication by the licensor+reception/absorption/adaptation by the licensee

Dissemination: communication (TRIPS Article 29 and Paris Convention, Article 12)

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2. International transfer of technology

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Mechanisms:

a) imports of machinery

b) technical and industrial cooperation

c) technical assistance

d) space concentration

e) transferring rights in intangible goods (i.e. building partnerships)

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3. The impact of industrial property on technology transfer

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Imports of machinery:the role of IP is peripheral, although relevant,

particularly in sectors where international competition is stronger (such as the petrochemical and the cement industries); relevance as to the breadth of the know-how transferred; trade secret protection may be also very important when it comes to enforcement

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Technical and industrial cooperation and technical assistance (contracts of maintenance, training, etc)

The role of industrial property protection has a crucial importance as a guaranty of the protection of non-proprietary information

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Space concentration (industry and business clusters)

knowledge spillovers (“the mysteries of the trade become no mysteries, but are as it were in the air,” Alfred Marshall)

market for specialized skills

backward and forward linkages associated with large local markets

IP is important as a background framework, in particular for promoting the establishment of the pioneering industries

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Transferring rights in intangible goods (i.e. building partnerships)

IP is of the essence!

a) IP provides for a legal framework that generates trust

b) IP reduces transaction costs

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There is no partnership where there is no trust:

(i) trust by the licensor that the licensee shall comply with his obligations;

(ii) trust by the licensee that the technology is adequate to achieve its purposes and that the licensor shall honor the guaranty of performance

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b) IP reduces transaction costs

(i) technology transfer in a weak IP environment

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(i) technology transfer in a strong IP environment

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4. Building trust by the licensor and the licensee

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Building trust by the licensor:Proprietary rights in technical creations (patents, utility

models, layout-designs, industrial designs, plant varieties)

Distinctive signs (marks)

Non-proprietary competitive advantages (unfair competition, trade dress, trade secrets, test data)

Enforcement (rules that permit effective action against any act of infringement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements).

All these elements combined are a guaranty that the licensee will not free ride on the information received from the licensor

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Building trust by the licenseea) partly covered by the disclosure requirements of

patents

b) negotiating ability and experience, so as to avoid the usual traps in licensing agreements

c) a good and effective commercial law that protects the contractual rights of the licensee.

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5. Do developing country governments have a role to play in technology

transfer?

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a) governments are not supposed to directly interfere in private contracts (experience shows that government interference hinders more than it helps; private parties tend to conceal information and circumvent red tape)

b) but governments can have an important role: they can fill the gap in information between the parties; they can establish incentives for technology transfer; they can contribute to the climate of reciprocal trust by establishing and enforcing effective ip protection

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Thank you.

Nuno Pires de CarvalhoActing Director-Advisor

Industrial Property Legislation for Development

If you have any questions regarding this presentation do not hesitate to contact me at

nuno.carvalho@wipo.int