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date: 19 November 2018

(p. 991) Index

(p. 991) Index

absolute grounds 528–9
see also subsistence
academics
claim to copyright and patents 829–44
community-centered arguments 835–7, 840–2
creator-centered arguments 837–9, 842–3
inventions and computer programs 840–3
justifying IP protection 832–4
overview 829–32, 843–4
works produced as part of university teaching and research 835–9
access to knowledge
capacity building and national IP reforms 818–22
debate on the TRIPS Agreement 814–18
debates on IP, public interest and A2K 794–800
developing countries and IP in the post-colonial era 804–7
developing countries in international standard-setting on IP 803–14
development
A2K in a complex global IP system 826–8
IP and 791–828
IP debate 800–3
early days of the global IP system 803–4
overview 791–3
post-TRIPS era: development and the public interest 814–25
public interest and development in IP decision-making 794–803
rise of developing counties in the international IP system 807–13
road to TRIPS: contested process and outcome 813–14
WIPO development agenda 822–5
actors and institutions 11–15
adaptation right 503–4
see also copyright
advertising technique 739
African Industrial Property Organization (ARIPO) 416–17
African IP law 409–30
African and Malagasy Office of Industrial Property (OAPI) 415–16
African Industrial Property Organization (ARIPO) 416–17
colonial period 412–13
emergence and development of 409–30
formation of regional IP organizations and their mandates 415–19
IP development and historical lessons 429–30
IP regional organization by AU region 415
overview 409–11, 429–30
plant variety protection 420–2
postcolonial period 414–19
post-TRIPS Agreement 419–28
precolonial period 411–12
proposal of the formation of a Continental IP organization 425–8
protection of traditional knowledge 422–3
RECs and implementation of TRIPS flexibilities 423–5
Regional Economic Communities (RECs) 417–19
African and Malagasy Office of Industrial Property (OAPI) 415–16
agency problems 151–2
alienation
attribute of IP 50–3
allied trade mark rights 546–71
see also trade marks
alternative dispute resolution 568–9
alternative enforcement mechanisms 718–21
arbitration 719–20
online privatized mechanisms 720–1
(p. 992) Andean Community
MERCOSUL and 449
South American IP law 450–2
anti-circumvention rules 865–8
see also Internet, the
anti-infectives 938–42
see also public health
antitrust law see competition policy
appellations of origin 218–19
applied art 494
Arab countries 393–407
Arab Republic of Egypt 396–9
Hashemite Kingdom of Jordan 399–401
Kingdom of Saudi Arabia 402–5
United Arab Emirates (UAE) 405–7
arbitration
cross-border IP enforcement 719–20
ASEAN countries
Asian IP law 372–6
Asian IP 348–77
ASEAN countries 372–6
Asian development policies and law reform debates 355–76
China 365–9
discourses about regionalism 348–51
history of IP in Asia 355–76
India 365, 369–72
IP law reform and Asian models of development 351–5
Japan 356–9
least developed countries (LDCs) 372–6
newly industrialized economies 359–64
overview 376–7
second tier NIEs 372–6
Singapore 360–3
South Korea 363–4
assignability 658
see also licensing
Australia and New Zealand IP law 291–314
divergence in the later Twentieth Century 304–9
emergence and development of 291–314
Federation for Australia 301–2
imperial push for uniformity 301–2
indigenous culture and traditional knowledge 311–13
mid-Century stability 303–4
Nineteenth Century 298–300
overview 313–14
political and legal institutions in the Antipodes 296–7
re-convergence 309–11
sibling relationship 291–2
sources and state of the scholarship 292–5
turn of the Century 301–2
Twentieth Century 301–13
authors
copyright protection 497
history and philosophies 487–9
as weaker parties 497
automatic injunction 73–7
bad faith framing 570–1
basic structure of IP law 25–56
acquisition of exclusive rights 29–36
alienation 50–3
attributes of IP 46–53
common vs private property 27–9
context 55
copyright 40–1
damages 49–50
duration 46–9
exclusion 49–50
exclusive rights in IP 36–45
injunctions 49–50
IP resources 28–9
map of the IP universe 25–6
misappropriation 43–5
nonobviousness/inventive step 39–40
patents 36–40
physical resources 27–8
protected subject matter 36–9
right of publicity 42–3
takings and unconstitutional conditions 53–5
trade marks 42
Berne Convention 4, 10, 45n99, 118, 121, 141, 194, 196, 200–11, 220–33, 247
Asia 357, 362, 368–9, 373
(p. 993)
Australia and New Zealand 301, 304n103, 307
Canada IP law 267–76
Central and Eastern Europe 318, 337
choice of law 702
copyright 498–500, 509–10, 513, 627
cross-border IP enforcement 702
design protection 575
impact of 267–9
Japan 358
membership 804, 808–9
Middle East 384, 387–9, 397, 400, 402, 406
overlapping rights 624, 631, 644
South America 431–7, 440–4, 456
traditional knowledge 777
United States 494
unregistered rights 221–3
blanket licenses
competition law 883–5
blurring 538–9
Bonn Guidelines 772–3
Britain see Great Britain
Canada IP law 265–90
changes to the 1921 Act (1924–1997) 273–6
colonial statutes 269–70
copyright 267–79
designs 284–5
early common law protection 280
early patent and patent-like instruments 285–6
emergence and development of 265–90
first Canadian statutes 280–1
first federal statutes 286–9
impact of the Berne Convention 267–9
impact of the Paris Convention 279
industrial property 279–90
modern patent legislation 289–90
overview 265–7, 290
patents 285–90
post-Confederation 270–3
recent reforms (1998–present) 276–7
recent trade marks legislation 281–4
Supreme Court of Canada, emergence as a key policy player 277–9
trade marks 279–84
Central and Eastern European IP law 315–47
adherence to international treaties 318–19
ambivalent attitude to concept of IP 322–6
basic features of national laws 319–22
Civil Code dogma 319–22
collective management of rights 340–5
common and differing characteristics 317–18
copyright 336–7
differences between IP branches 329
emergence and development of 315–47
enforcement of rights 345–6
existing and missing CMOs 343–5
governmental organizations 340–1
ideological nature of IP legislation 319
nature and original ownership of rights 329–37
Office of the United States Trade Representative (USTR) Special 301 Report 346
organizational structure transformation in the transition period 341–3
overview 315–17, 347
private organizations 340–1
public administration of IP rights 327–9
rights in innovations and trade marks 329–36
semi-governmental organizations 340–1
sleeping and neglected rights 343–5
special features allowed by gaps and flexibilities in international treaties 326–7
transferability of rights and contractual systems 337–40
chattel rights
copyright 498
China
Asian IP law 365–9
choice of law
lex loci delicti 702–4
lex loci protectionis 702–6
Paris and Berne Conventions 702
territoriality, effects of 704–5
Civil Code dogma
Central and Eastern European IP law 319–22
(p. 994) climate change 958–990
boundaries and the bigger picture 959–60
acquiring patents more quickly 977–8
building and new relationship 976–88
climate change 961–4
climate change, data and technology post-2008 971–6
climate change, IP and human rights 982–7
climate change, technology and IP 968–71
competition, IP and climate change 987–8
engagement with IP 976–7
information regimes 966–8
intellectual property 960–1, 964–6
IP, secrecy and information with a climate change focus 964–8
legal landscape 964–71
legal regimes 982–8
new approaches to existence and reach of IP rights 978–81
overview 958–9, 964, 968, 971, 989–90
political and structural landscape 960–4
sharing approach 981–2
technology and IP, relationship with 971–89
trade secrets 966
collective management of rights 340–5
collective management organizations (CMOs) 343–5
governmental organizations 340–1
organizational structure transformation 341–3
private organizations 340–1
semi-governmental organizations 340–1
sleeping and neglected rights 343–5
collusion 879–85
blanket licenses 883–5
market division 879–80
patent pools 883–5
price-restricted licenses 882–3
settlements of patent litigation 880–2
colonial period
African IP law 412–13
British colonial practices 239–40
colonial statutes in Canada 269–70
commissioned works
copyright 496
common law protection 104, 487, 489–91, 498, 500
trade marks 280
community-centered arguments 832, 834
computer programs 840–2
internet, the 845–71
inventions 840–2
traditional knowledge 758–90
university research and teaching 835–42
user innovation 725–57
works produced 835–7
compensation 657–8
see also damages; licensing
competition law 872–97
blanket licenses 883–5
climate change 987–8
collective exclusion 894–5
collusion 879–85
competition law and limitation of IP 896–7
effects of market power 876
exclusion 886–95
IP and limitation of competition law 874–9
leverage and foreclosure 887–8
manipulation of a standard-setting organization 892–3
market division 879–80
misuse 895–6
no valid IP claim 886–7
overview 872–3, 896–7
patent pools 883–5
policy limitations 875–9
price-restricted licenses 882–3
product design 891–2
refusals to deal 888–91
settlements of patent litigation 880–2
statutory limitations 874–5
competitions policy
copyright 162–7
economics and policy implications 162–7
network effects 167
policy 166–7
relief 167
Schumpeterian competition 167
trade marks 162–7
(p. 995) computer programs
access to 514
back-up copies 916n71
created by employees 496
database operation 595n5
design and 573
directories, information compiled by 597n14
EU legislation 194
as group-created assets 90
as inventions 979
as literary and artistic works 221, 400, 644n169
patents for 305, 404
principle of inalienability of copyright 340
protection of/for 5, 222, 227, 274, 397
international treaties 493n21
reproduction of 278
results of intellectual activity 324n27
rights in 276, 446
database 600–1
distribution 507
economic 339
patent/copyright overlap 618–22, 624, 643–5, 832
university teaching and research 835, 840–3
confidentiality
data and information rights 606–14
privacy and 606–14
consumer confusion 535–7
consumer protection 105–7
Continental Europe see Western European IP law
Continental IP organizations
African IP law 425–8
contract law 914–15
contractual exclusivity 909–13
evaluation 911–13
foundation of the exclusivity 909–10
contractual systems 898–930
Central and Eastern European IP law 337–40
Convention on Biological Diversity 772–3
copyright 487–516
academics 829–44
adaptation (derivative works) right 503–4
Africa 409–30
applied art 494
Australia and New Zealand 291–314
Canada 267–79
chattel rights 498
competition policy 162–7
contractual avoidance of the exhaustion doctrine 508
copyright management information 513–15
derivative works and compilations 492–3
developing countries 803–14
digital age 848–52
distribution right 506–9
droit de suite 509
duration 498–9
economic 501–6
economics and policy 162–5
employee and commissioned works 496
enforcement measures 852–7
entitlement/ownership 495–8
Europe and the European Union 171–97, 591–2
Central and Eastern Europe 336–7
Western Europe 177–83
European perspective 194–5
exceptions and limitations 509–12
exclusive rights 40–1
extension of 865–8
fixation 491
formalities 494–5
history and philosophies of (authors’ right) 487–9
idea/expression distinction 493
initial ownership 495–6
liability of intermediaries 515
Middle East 378–408
monopoly-innovation tradeoff 162–3
moral 500
neighboring rights 631–2
new copyright obligations 513–15
online activities 857–65
open source 164–5
overlapping rights 627–31
overview 516
patent and 643–5
performing rights organizations 506
(p. 996)
protection of technological protection measures 513–15
protections of authors as weaker parties 497
public interest in private rights 96–9
public performance/communication to the public 504–6
public, the 505
quantum of creativity 492
reimagining reward 163–4
remedies 512–15
reproduction right 501–3
rights 500–9
subject matter 490–4
trade marks 632–7
transfers of ownership 496–7
United States 243–9, 582–3
creativity, quantum of 492
creator-centered arguments 842–3
computer programs 842–3
inventions 842–3
university research and teaching 837–9, 842–3
works produced 837–9
cross-border IP enforcement 687–722
alternative enforcement mechanisms 718–21
applicable law 701–12
arbitration 719–20
balanced remedies 711–12
balancing territoriality with effective domestic regulation 710
choice of law and the Paris and Berne Conventions 702
consolidating actions with multiple defendants 697–8
court application of ‘foreign’ IP laws 701
exclusive jurisdiction, exclusivity of 698–700
extra-territorial application 705–6
foreign activities—local effects 706–9
general jurisdiction—Defendant’s forum 691–2
identification of domestic IP enforcement structures through
private international law 689–717
infringement jurisdiction 693–5
jurisdiction 691–701
jurisdictional specificities for ubiquitous infringement 695–7
lex loci delicti 702–4
lex loci protectionis 702–4
local activities—foreign effects 709–10
overview 687–9, 721–2
privatized mechanisms of online IP enforcement 720–1
recognition and enforcement 712–15
special private international law rules in regional IP systems 715–17
territoriality, limitation of the effects through choice of law 704–5
territoriality, persistence of 700–1
trade and investment-related dispute settlement fora 717–18
cross-licensing 653–4
see also licensing
cumulative innovation 155–9
intergenerational problems 156–7
combining multiple inventions 158–9
foundational technologies 156–7
quality ladders 157–8
damage or harm, forms of 558
damages
attribute of IP 49–50
augmented 674–5
calculating the award 670–5
compensatory 670–1
determining compensation by 667–9
monetary 664–75
monetary, general principles of 667–75
monetary, historical development of 665–7
proximate cause 667–8
punitive 674
rules 149–50
standard of certainty 668–9
standards 161
statutory damages 673
statutory enhanced 674–5
unjust enrichment damages 671–3
data and information rights 594–617
climate change 971–6
confidentiality and privacy 606–14
context and introduction 596–9
(p. 997)
copyright protection for databases 599–600
data exclusivity 615–17
data privacy 613–14
database right 600–6
database rights in the EU 596–606
exceptions 606, 612–13
first ownership 604
informational privacy and data protection 611–14
infringement 604–6
jurisdictional basis and key elements 607–11
key elements 601
misuse of private information 611–12
nature of the data 601–2
overview 594–6, 606–7, 611
requirements for subsistence 602–3
term of protection 603–4
see also technology
database right 600–6
exceptions 606
first ownership 604
infringement 604–6
key elements 601
nature of the data 601–2
requirements for subsistence 602–3
term of protection 603–4
deadweight loss
monopoly and 145–6
derivative works
compilations and 492–3
right 503–4
see also copyright
design protection 572–93
design, definition of 573–4
copyright protection 582–3, 591–2
design patent protection 577–9
design protection schemes 593
EU design protection 584–8
European Union 584–93
international sources of 574–6
national design protection 588–9
overview 572, 593
schemes 593
trade mark protection 579–81, 589–91
United States 577–84
US design protection schemes 583–4
designs
Continental Europe 188–90
copyright and 627–31
European perspective 196–7
France 188–90
Great Britain 190–1
patents and 645–6
trade marks and 638–41
Western European IP law 188–91
developing countries 803–14
early days of the global IP system 803–4
post-colonial era 804–7
rise of 807–13
road to TRIPS 813–14
diffusion see peer diffusion
dilution 537–8
diseases 942–6
see also public health
distinctiveness 526–8
see also subsistence
distribution right 506–9
droit de suite 509
exhaustion doctrine 508
see also copyright
doctrine of equivalents 34n40, 44–5, 150, 159, 253, 645
patent infringement 466–8
domain names 566–71
alternative dispute resolution 568–9
bad faith 570–1
legal options 567–8
protection 567–70
pre-emptive solutions 569–70
trade marks as 566–7
double identity 534–5
droit d’auteur 181–2
droit de suite 509
duration
attribute of IP 46–9
economic rights 97, 323, 336, 338–40
adaptation (derivative works) right 503–4
copyright 501–6, 643–4
public, the 505
public performance/communication 504–6
performing rights organizations 506
reproduction right 501–3
UN Charter of 811
(p. 998) economics and policy 144–68
intergenerational allocation 156–7
agency problems 151–2
balancing costs and benefits 147–9
breadth 149–50
combining multiple inventions 158–9
comparing patents against other incentives 151–4
competition policy 166–7
copyright 162–5
copyright, trade marks and competitions policy 162–7
cumulative innovation 155–9
current law 159–60
damages rules 149–50
damages standards 161
eliciting private knowledge 152
estoppel 161
foundational technologies 156–7
fundamentals 145–54
ideas model 155–9
improving the monopoly-innovation trade-off 162–3
independent invention 161
injunctions 149–50
inventors 151–2
investing the right amount 152
laches 161
monopoly and ‘deadweight loss’ 145–6
multiple independent inventors 154–61
negative factors 145–6
network effects 150–1, 167
new knowledge and products 146–7
open source 164–5
overview 144–5, 167–8
patent law and theory implementation 159–61
positive factors 146–7
price discrimination 150–1
prospect theory and racing 154–5
public choice 152
quality ladders 157–8
reforms 160–1
reimagining reward 163–4
relief 167
Schumpeterian competition 167
sponsors 152
trade secrets and sui generis statutes 165
trademarks 165–6
transaction costs 150–1
England see Great Britain
entitlement see ownership
equity
balance of the hardships 682
civil seizures 683
continuing developments 683–6
equitable defences 679–81
general principles of 679–82
historical development of 677–9
injunctive relief 683
no equitable remedy at law 681–2
no jury 679
procedural aspects 679–81
public interest 682
remedial aspects of 681–2
specific equitable remedies 682–6
see also remedies
estoppel 161
European Patent Convention (EPC) see regional IP organizations
European Union (EU) 584–93
copyright protection 591–2
database rights 596–606
design protection schemes 593
EU design protection 584–8
national design protection 588–9
trade mark protection 589–91
exclusion
attribute of IP 49–50
collective 894–5
competition law 886–95
foreclosure 887–8
leverage 887–8
no valid IP claim 886–7
product design 891–2
refusals to deal 888–91
standard-setting organization 892–3
(p. 999) exclusive agreements
non-exclusive agreements vs 654–6
exclusive jurisdiction
exclusivity of 698–700
exclusive rights
acquisition of 29–36
in IP 36–45
misappropriation 43–5
patents 36–40
trade marks 42
exhaustion doctrine 508
expression/idea distinction 493
extra-territorial application
cross-border IP enforcement 705–6
fixation 491
foreclosure
competition law 887–8
foreign IP laws
activities, local effects of 706–9
court application of 701
local activities, foreign effects of 709–10
France
designs 188–90
rise of the droit d’auteur 181–2
free revealing 730–3
benefits of 743–4
direct costs of 744
free riding and patents 744–5
motivations for 743–4
patent disclosure vs 743
user innovation and incentives to disclose 743–5
free riding 540–1
free revealing and patents 744–5
user innovation and patents 743
freedom of contract
confinement of 914–17
functionality 110, 480, 530, 532, 574, 578–81, 586–7, 591–2, 627, 634, 642, 671, 727, 729, 867, 891, 914, 920
see also subsistence
geographical indications 560–6
contemporary issues 564–6
definition 560–1
as a distinct category 563–4
international origins 561–3
sui generis protection 561–3
German-speaking territories 182–3
goodwill 555–6
governmental organizations
Central and Eastern European IP law 340–1
Great Britain
designs 190–1
English Statute of Anne and Successors 180–1
patent law, origins of 175–6
trade marks 185–6
group ownership 89–91
Hashemite Kingdom of Jordan 399–401
health see public health
Hohfeld approach 64–71
claim right/duty 65–7
immunity/disability 70–1
overview 71
power/liability 70
privilege/ no claim 68–9
human rights 117–43
climate change and 982–7
distinct IP and human rights regimes (pre mid-1990s) 118–21
absence of cross-regime engagement 120–1
actor strategies 118–23, 125–8, 134–40
alternative conceptual frameworks 129–31
conceptual frameworks 128–34
empirical studies of IP law in action 133–4
expansion of the international IP regime (mid 1990s-2000) 121–5
historical record, rediscovery of 131–2
history 128–34
institutions 118–23, 125–8, 134–40
international IP system 231–3
international regime complexity 132–3
IP backlash and increasing the legalization of (2000–2010) 125–34
law in action 128–34
legal norms 118–23, 125–8, 134–40
(p. 1000) mainstreaming and stocktaking 140–2
mobilization strategies 132–3
overview 117–18, 142–3
proposals for exceptions and limitations treaties 134–43
proposals for multilateral agreements 135–6
public interest values in international IP law 123–5
raising arguments in IP litigation (2010–present) 134–43
raising arguments in IP litigation and arbitration 136–40
strategy 128–34
idea/expression distinction 493
ideas model 155–9
incentive justifications for patents 463, 726, 734–8
incentive to commercialize justifications 736–8
incentive to disclose justification 735–6
incentive to invent justification 734–5
incentives
patents vs 151–4
independent invention 161
India
Asian IP law 365, 369–72
indications of source 218–19
indigenous culture
Australia and New Zealand IP law 311–13
traditional knowledge and 311–13, 758–90
indigenous communities
definition 765–6
local communities 765–70
traditional knowledge, scope of 765–70
industrial design 215
industrial property
Canada IP law 279–90
designs 284–5
Paris Convention, impact of 279
patents 285–90
trade marks 279–84
unregistered rights 219–20
informational privacy
data protection 611–14
database protection 41, 165, 604
rights of publicity 19, 25, 102, 263, 559–60, 568
infringement jurisdiction 693–5
infringement liability 20, 66, 752, 754n132
contributory 853–4, 896
experimental use exception to 831
user exemptions from 756–7
injunctions 676, 679, 681–6
attribute of IP 49–50
innovation
Central and Eastern European IP law 329–36
cumulative 155–9
rights in 329–36
insurance
public and private 951–2
see also public health
international IP system 198–234
ancillary protections under associated or special agreements 213–19
authors’ and related rights 220–5
Berne Convention 221–3
connecting IPRs with other international arrangements 231
emergence and development of 198–234
evolving and multifaceted system 234
harmonization of substantive standards and revision process 204
human rights overlay 231–3
independence of protection and territoriality 204–5
Madrid System and other trade mark agreements 213–15
most favoured nation (MFN) obligation 206
multilateralism 230–1
national implementation 206–7
national treatment obligation 202–4
objectives 199–201
organizing or system principles 201–4
other treaties 225–6
Paris Convention 219–20
points of attachment 201–2
(p. 1001)
pressures on the present 229–33
principal actors in the system 207–9
principal components of the system: treaties 209–29
priority periods 201–2
registered rights 209–19
rights specially granted 211–13
Rome Convention 223–5
special agreements on indications of source and appellations of origin 218–19
special agreements on industrial design 215
special agreements on patents 216–18
special agreements on trade marks 213–15
substantive reciprocity 202–4
system, definition of 198–9
TRIPS Agreement 226–9
unregistered industrial property rights 219–20
unregistered rights 219–25
international treaties see international IP system
Internet, the 845–71
anti-circumvention rules 865–8
copyright in the digital age 848–52
copyright enforcement measures 852–7
copyright extension 865–8
copyright and online activities 857–65
IP rights and 846–8
legal questions 857–65
overview 845–6, 869–71
technical protections 865–8
injunctions 149–50
inventions
incentives to invent 741–3
independent 161
prevalence of 729–30
quality of 729–30
patents 463, 466, 470–6, 483–6
scope of user invention 729–30
university teaching and research 840–3
user motivations for 741–2
inventors 151–2
multiple independent 154–61
user inventors and patents 743
inventive step
patents and exclusive rights 39–40
Israel, Gaza and the West Bank 385–93
culture 385–7
economy 385–7
foundations 388–9
Israeli Construction 389–91
multi-layered law 388–91
Palestinian Authority 392–3
politics 385–7
Japan
Asian IP law 356–9
jurisdiction 691–701
action consolidation with multiple defendants 697–8
exclusive 698–700
general 691–2
infringement 693–5
specificities for ubiquitous infringement 695–7
territoriality, persistence of 700–1
Kingdom of Saudi Arabia 402–5
laches 161
Latin America see South American IP law
least developed countries (LDCs) 354, 411, 799–800, 815n136, 954, 966
Asian IP law 372–6
legal exclusivity 906–9
evaluation 907–9
foundation of the exclusivity 906–7
legal regimes
climate change 982–8
colonial period 411, 804
competition 987–8
developing countries 819
human rights 117, 125, 129, 141, 982–7
IP subject matter 4–5, 46, 235, 263
patent 840
trade marks 519
leverage
competition law 887–8
lex loci delicti 702–4
(p. 1002) lex loci protectionis 702–4
liability of intermediaries 515
see also copyright
licensing 652–63
assignability 658
compensation and royalty provisions 657–8
cross-licensing 653–4
evolution of monetization 659–62
exclusive vs non-exclusive agreements 654–6
license agreement essentials 654–9
licensed patents 656–7
licensed products 657
licensing in 653–4
licensing out 653–4
monetization techniques 662–3
naked patent licenses vs licenses with know-how or joint development 659
overview 652
overview of key patent license agreement provisions 656–8
patent licensing, definition of 652–3
scope of license 656
local communities
definition 765–6
indigenous communities 765–70
traditional knowledge 765–70
Madrid System 213–15
mainstreaming 140–2
see also human rights
manufacturing process 740
market division
competition law 879–80
medical procedure 740
MERCOSUL
Andean Community and 449
current composition 449
South American IP law 452–3
Middle East IP law 378–408
Arab countries 393–407
Arab Republic of Egypt 396–9
culture 379–87
economy 385–7
emergence and development of 378–408
foundations 388–9
Hashemite Kingdom of Jordan 399–401
Israel, Gaza and the West Bank 385–93
Israeli Construction 389–91
Kingdom of Saudi Arabia 402–5
multi-layered law 388–91
Ottoman Times 384–5
overview 378–9, 407–8
Palestinian Authority 392–3
political economy 379–83
politics 379–83, 385–7
United Arab Emirates (UAE) 405–7
misappropriation
exclusive rights 43–5
misrepresentation 556–7
monetary damages see damages
monetization
evolution of 659–62
techniques 662–3
monopoly
deadweight loss and 145–6
monopoly-innovation tradeoff 162–3
moral rights 500
most favoured nation (MFN) obligation 206
multilateral agreements see international IP system
multilateralism 230–1
multiple defendants 697–8
multiple independent inventors 154–61
cumulative innovation 155–9
ideas model 155–9
patent law and theory implementation 159–61
prospect theory and racing 154–5
Nagoya Protocol 772–3
national treatment obligation 203–4, 702
neglected rights
Central and Eastern European IP law 343–5
neighboring rights 193, 200, 219, 223, 275, 303, 341, 490, 499, 504, 506, 620
copyright and 631–2
newly industrialized economies (NIEs)
Asian IP law 359–64, 372–6
(p. 1003)
second tier 372–6
non-conventional marks 530–2
non-excludable innovations 946–8
see also public health
nonobviousness see inventive step
Office of the United States Trade Representative (USTR)
Special 301 Reports 346
open source 164–5
original ownership of rights 327, 340, 490–4, 505, 507
Central and Eastern European IP law 329–37
Ottoman Times 384–5
overlapping rights 618–51
comparison of countries regarding rules 627–49
copyright and designs 627–31
copyright and neighboring rights 631–2
copyright and trade marks 632–7
current outlook and future directions 649–51
definition and origin 618–20
patent and copyright 643–5
patents and designs 645–6
patents and plant variety rights 646–9
problems posed by overlaps and general principles 622–7
solutions 650–1
trade marks and designs 638–41
trade marks and patents 642
types of overlap 620–2
overview of intellectual property 15–22
ownership
academic works 830–2, 836–7, 842–4
author protection 497
chattel rights 498
commissioned works 496
copyright 495–8
employee works 496
initial 495–6
of patents 779
of trade marks 445n61, 447n70
transfers of 496–7
see also copyright
pan-American Conventions
inconsistencies 439–41
main features 435–9
Paris Convention 4, 22, 118–19, 121, 187, 190n54
Asia 362, 371
Australia and New Zealand 301
Canada 279, 288
Central and Eastern Europe 318–19
choice of law 702
cross-border IP enforcement 702
design protection 575, 585
developing countries 228
Egypt 397–8
impact on industrial property 215, 279, 628, 804
Jordan 401
Middle East 379
reform and revision of 232, 808, 810, 812–13
Saudi Arabia 404
signatories 444, 804
South America 432, 434, 436–7
Soviet Union 331, 334
trade marks and patents 195–233, 525, 551, 561, 642
TRIPS Paris-plus provisions 227
United Arab Emirates 405–6
unregistered rights 219–20
passing off 554–9
damage 558
definition 554–5
evolving tort 555–9
goodwill 555–6
misrepresentation 556–7
tort in transition 558–9
patent pools
competition law 883–5
patents 461–86
academics 829–44
Africa 409–30
Arab countries 393–407
Australia and New Zealand 291–314
Canada 285–90
China 365–9
climate change 977–8
competition law 880–5
copyright and 643–5
(p. 1004)
current law 159–60
damages standards 161
design protection 577–9
designs and 645–6
doctrine of equivalents 466–8
early patent and patent-like instruments 285–6
eligibility 470–3
enforcement 468–70
estoppel 161
European perspective 193–4
Central and Eastern Europe 315–47
Western Europe 172–6
exclusive rights 36–40
exemptions 476–8
first federal statutes 286–9
formalities 463–8
free revealing and 743–5
free riding and 743–5
health technologies 948–57
incentive justifications for 734–8
incentives vs 151–4
independent invention 161
inventive step 39–40
laches 161
law and theory implementation 159–61
license agreement provisions 656–8
licensed 656–7
Middle East 378–408
modern patent legislation 289–90
naked licenses 659
national origins 172–6
nonobviousness 39–40
overview 461–3, 486
patent disclosure 743
patent licensing, definition of 652–3
patent litigation, settlements of 880–2
patentability requirements 473–5
patentable subject matter exemptions 753–6
peer diffusion and 750
plant breeder’s rights 484–6
plant variety rights 646–9
protected subject matter 36–9
public interest in private rights 96–9
quick acquisition of 977–8
reforms 160–1
related rights 482–4
remedies 478–82
restrictions on 953–7
software subject matter 472–3
special agreements on 216–18
student approaches 734–8
trade marks and 642
United States 249–57
user innovation doctrine 738, 750–7
Venetian Model 173
peer diffusion
communication after 749–50
dissemination and incentives to commercialize 745–50
dissemination by 746–9
limitations 747–9
modes of disseminating user innovations 745–6
patents and incentives to commercialize 750
stages of dissemination 746–7
performing rights organizations 506
permission
freedom and 84–6
historical perspective 86–7
plant breeder’s rights
patents 484–6
plant variety protection
African IP law 420–2
plant variety rights 646–9
post-TRIPS Agreement 420–2
postcolonial period
African IP law 414–19
developing countries 804–7
precolonial period
African IP law 411–12
price controls 952–3
price discrimination 150–1, 949–51
price-restricted licenses
competition law 882–3
printing
early management of 177–9
invention of 177–9
(p. 1005) private information
data protection 611–14
misuse of 611–12
private international law
domestic IP enforcement 689–717
special rules in regional IP systems 715–17
private ordering 898–930
antitrust (competition) law 917
confinement of freedom of contract 914–17
confinement of unilateral conduct 917–19
contract law and special legislation 914–15
contractual exclusivity 909–13
evaluation 903–9, 911–13
factual exclusivity 901–6
foundation of the exclusivity 901–3, 906–7, 909–10
further existing or potential areas for 923–7
general stocktaking 913–14
IP legislation 915–16
legal exclusivity 906–9
motivations and conditions for 921–2
new regulatory approaches 919–20
problems and risks of 901–13
regulating self-regulation 921–7
remedies 913–17
technical standards as a prime example of 922–3
product design
competition law 891–2
product marking
history of 518–20
property
common vs private 27–9
conception of IP as 71–93
IP as constitutional 91–3
rights 58–9
prospect theory 154–5
public, the see public interest
public administration
Central and Eastern European IP law 327–9
of IP rights 327–9
public choice 152
public communication 504–6
public health 931–57
anti-infectives 938–42
neglected diseases 942–6
non-excludable innovations 946–8
overview 931–2, 957
price controls 952–3
price discrimination 949–51
public and private insurance 951–2
public and private interests and limits of IP incentives 932–48
restricted access to patented health technologies 948–57
restrictions on patents 953–7
vaccines 933–8
public interest
as boundary 99–102
consumer protection 105–7
copyright 96–9
criticisms and revisions 111–15
debates on 794–800
definition of 109–11
development in IP decision-making 794–803
dilution 107–8
limitations 109–11
mechanism 95–116
overview 95, 115–16
patent 96–9
post-TRIPs era 814–25
in private rights 96–9
right of publicity 107–8
scope and limitations 99–102
trade mark as protector of 102–5
trade mark and related rights 102–11
values in international IP law 123–5
publicity see right of publicity
quality ladders 157–8
quantum of creativity 492
racing 154–5
refusals to deal
competition law 888–91
(p. 1006) Regional Economic Communities (RECs)
African IP law 417–19, 423–5
TRIPS flexibilities 423–5
regional IP organizations
African IP law 415–19
African Union regions 415
European Patent Convention (EPC) 10, 14, 44n96, 193, 304, 328n36, 462, 621, 716, 977
mandates 415–19
regionalism
Asian IP law 348–51
discourses about 348–51
registered rights 209–19
ancillary protections 213–19
rights specially granted 211–13
regulation
approaches to 919–20
contrast with IP 78–87
freedom and permission 84–6
permissions in historical perspective 86–7
types 78–84
remedies 512–15, 664–86
augmented damages 674–5
balance of the hardships 682
balanced 711–12
calculating the damages award 670–5
civil seizures 683
compensatory damages 670–1
continuing developments 683–6
copyright management information 513–15
determining compensation by damages 667–9
equitable defences 679–81
general principles of equity 679–82
general principles of monetary damages 667–75
historical development of equity 677–9
historical development of monetary damages 665–7
injunctive relief 683
interest 675–6
liability of intermediaries 515
monetary damages for infringement of IP rights 664–75
new copyright obligations 513–15
no equitable remedy at law 681–2
no jury 679
nonmonetary remedies for the infringement of IP rights 676–86
overview 664
patents 478–82
private ordering 913–17
procedural aspects 679–81
proximate cause 667–8
public interest 682
punitive damages 674
remedial aspects of 681–2
specific equitable remedies available in IP lawsuits 682–6
standard of certainty 668–9
statutory damages 673
statutory enhanced damages 674–5
technological protection measures 513–15
trade marks 544–5
unjust enrichment damages 671–3
reproduction right 501–3
Rome Convention 193–4, 200–1, 205n17, 318, 337, 344, 406
unregistered rights 219, 223–5, 227
royalty provisions 657–8
see also licensing
Schumpeterian competition 167
secrecy
climate change and 964–8
trade secrecy 463, 735, 737, 739, 745, 750, 754, 756, 847, 902, 966
self-regulation
areas 923–7
motivations and conditions for 921–2
regulation of 921–7
technical standards 922–3
(p. 1007) semi-governmental organizations
Central and Eastern European IP law 340–1
Singapore
Asian IP law 360–3
slavish imitation 553–4
software subject matter
copyright 493n21, 496, 614
patents 472–3, 643–4, 650
South American IP law 431–57
adherence to Conventions and TRIPS Agreements 434
Andean Community 449–52
bilateralism and fragmentation of IP systems 453–6
emergence and development of 431–57
emergence of national IP systems 441–4
evolving landscape for national IP regimes 441–7
historical foundations of the IP system 432–41
inconsistencies within the old pan-American Conventions 439–41
main features of the old pan-American IP Conventions 435–9
MERCOSUL 449, 452–3
overview 431–2, 456–7
regional systems of IP 447–53
South American Constitutions and IP rights 444–7
South Korea
Asian IP law 363–4
special agreements in the areas of trademarks and patents.
ancillary protections and access 213–19
appellations of origin 218–19
indications of source 218–19
industrial design 215
Madrid System 213–19
patents 216–18
trade marks 213–15
sponsors 152
stocktaking 140–2
general 913–14
see also human rights
sports equipment 739–40
subject matter
copyright 490–4
definition 526, 530
exemptions for processes 755–6
of intellectual property 4–6, 546
patentable exemptions 753–6
protected 36–9
software 472–3
trade marks 523–5, 552, 555, 561–2, 566, 571
subsistence 526–32
distinctiveness 526–8
functionality 530
non-conventional marks 530–2
other absolute grounds 528–9
substantive reciprocity 202–4
sui generis protection
emergence of 561–3
takings
IP as constitutional property 91–3
structure of IP law 53–5
tarnishment 539–40
technology
climate change and 971–6, 968–89
foundational 156–7
post-2008 971–6
protection measures 513–15
territoriality
domestic regulation and 710
limitation of effects through choice of law 704–5
persistence of 700–1
theory of intellectual property 3–4
tort see passing off
trade and investment-related dispute settlement fora 717–18
trade secrets
climate change 966
economics and policy 165
sui generis statutes 165
trade marks
allied rights and 517–71
alternative dispute resolution 568–9
as a distinct category 563–4
bad faith framing 570–1
beginnings of modern trade mark law 185–7
blurring 538–9
Canada IP law 279–84
Canadian statutes 280–1
(p. 1008)
categories of infringement 534–41
Central and Eastern European IP law 329–36
competitions policy 162–7
contemporary issues 564–6
contested foundations 547–51
Continental Europe 186–7
damage 558
defenses and limitations 541–5
definitions 546–7, 554–5, 560–1
dilution 537–8
distinctiveness 526–8
domain names 566–71
double identity 534–5
early common law protection 257–8, 280
early uses of 184
economics and policy 165–6
EU protection 589–91
European perspective 195–6
evolving tort 555–9
exclusive rights 42
existing legal options 567–8
formalities 522–6
free riding or unfair advantage 540–1
functionality 530
geographical indications 560–6
goodwill 555–6
Great Britain 185–6
history and justifications 517–21
history of product marking 518–20
international origins 561–3
international protection 525–6
Industrial Revolution and change 184–5
justifying trade mark protection 520–1
likelihood of confusion 535–7
misrepresentation 556–7
non-conventional marks 530–2
other absolute grounds 528–9
overview 571
passing off 554–9
pre-emptive solutions 569–70
public interest mechanism 102–11
publicity rights 559–60
recent legislation 281–4
relationship with IP 551–2
remedies 544–5
rights and infringement 532–41
rights in 329–36
rise of law in the US 258–60
slavish imitation 553–4
subsistence 526–32
sui generis protection, emergence of 561–3
tarnishment 539–40
threshold criteria 533–4
tort in transition 558–9
trade marks 517–45, 566–7
unfair competition and 257–63, 546–54
United States
expansion of the law 260–2
legal developments 262–3
legal protection 257–63, 579
Western European IP law 183–7
traditional knowledge 758–90
African IP law 422–3
Australia and New Zealand IP law 311–13
Bonn Guidelines 772–3
Convention on Biological Diversity 772–3
frameworks for defining the scope of 767–70
future prospects 789–90
indigenous culture and 311–13
indigenous and local communities 765–70
indigenous communities, definition 765–6
intellectual property frameworks and 775–84
international bodies and 770–5
IP interface 783–4
IP misfit 778–82
local communities, definition 765–6
Nagoya Protocol 772–3
national protection regimes 785–9
overlap of traditional knowledge and IP 777–84
overview 758–65
post-TRIPS Trade Agreements 773–5
protection of 422–3
public domain as the home of - 7
TRIPS Agreement 773–5
WIPO negotiations 770–2
WTO TRIPS Council 773–5
transaction costs 150–1
transferability of rights
Central and Eastern European IP law 337–40
see also licensing
transfers of ownership
copyright 496–7
(p. 1009) TRIPS Agreement
African IP law 419–28
contested process and outcome 813–14
debates 814–18
developing countries 813–14
overlay 226–9
post-TRIPS era 814–25
post-TRIPS Trade Agreements 773–5
regional economic communities (RECs) 423–5
traditional knowledge 773–5
treaties 226–9
WTO TRIPS Council 773–5
types of IP rights 57–94
automatic injunction, lack of 73–7
basic features of IP as property 60–4
claim right/duty 65–7
first sense of ‘Regulation’ 78–81
freedom and permission 84–6
group ownership 89–91
Hohfeld and IP 64–71
immunity/disability 70–1
IP acquisition and misunderstandings about what it means to be a right 72–3
IP as constitutional property: the takings problem 91–3
IP rights as property rights 58–9
IP rights as rights 57–64
limitations on IP rights 64
obstacles to conceiving IP as property 71–89
overview 71, 87–9, 94
permissions in historical perspective 86–7
power/liability 70
privilege/ no claim 68–9
problems with conceiving IP as property 89–93
regulation, why IP rights are not 78–87
right to control uses 61
right to transfer 62
second sense of ‘Regulation’ 82–4
special case of waiver 62–4
ubiquitous infringement 695–7
unconstitutional conditions
structure of IP law 53–5
unfair advantage 540–1
unfair competition 546–54
contested foundations 547–51
definition 546–7
relationship with IP 551–2
slavish imitation 553–4
trade mark law in the US 257–63
unilateral conduct 917–19
United Arab Emirates (UAE) 405–7
United Kingdom see Great Britain
United States IP law 235–64, 577–84
British 239–40
colonial practices 240–1
contextual web 236–9
copyright law 243–9
copyright protection 582–3
design patent protection 577–9
design protection schemes 583–4
emergence and development of 235–64
examination system 251–3
later developments 247–9, 255–7, 262–3
origins 239–43
overview 235–6, 263–4
patent law 249–57
State antecedents 242–3
trade mark law
early law 257–8
expansion of the law 260–2
protection and 579–81
rise of 258–60
unfair competition and 257–63
unjust enrichment
damages 671–3
unregistered rights 219–25
authors’ and related rights 220–5
Berne Convention 221–3
Paris Convention obligations 219–20
Rome Convention 223–5
unregistered industrial property rights 219–20
user innovation 725–57
advertising technique 739
benefits of free revealing 743–4
communication after peer diffusion 749–50
comparing free revealing and patent disclosure 743
competition 738–40
definition 726–8
(p. 1010)
diffusion, dissemination and incentives to commercialize 745–50
direct costs of revealing 744
dissemination by peer diffusion 746–9
free revealing
free riding and patents 744–5
sharing of user innovations 730–3
user innovation and incentives to disclose 743–5
free riders, user inventors and patents 743
general considerations 753–4
incentive justifications for patents 734–8
incentive to commercialize justifications 736–8
incentive to disclose justification 735–6
incentive to invent justification 734–5
invention, disclosure and dissemination of embodiments 738–50
lead users 741–2
manufacturing process 740
medical procedure 740
modes of disseminating user innovations 745–6
modifying patent doctrine to account for user innovation 752–7
motivations for free revealing 743–4
obvious to an innovative user 752–3
overview 725–6, 757
patent doctrine
innovation policy and 750–7
user innovation and 738
patent law scholar’s approach 734–8
patentable subject matter exemptions 753–6
patents, peer diffusion, and incentives to commercialize 750
peer diffusion and stages of dissemination 746–7
peer diffusion’s limitations 747–9
promoting user communities 750–2
scope, prevalence and quality of user invention 729–30
sports equipment 739–40
subject matter exemptions for processes 755–6
time and money 728
unusual needs and preferences 742
user communities 733–4
user exemptions from infringement liability 756–7
user innovation 726–34
incentives to invent and 741–3
user motivations for invention 741–2
user skills and expertise 728
user’s capacity for innovation 728
vaccines 933–8
see also public health
Venetian Model 173
Western European IP law 171–97
beginnings of modern trade mark law 185–7
Continental Europe 173–5, 186–7
copyright 177–83, 194–5
designs 188–91, 196–7
early management of printing 177–9
early uses of 184
emergence and development of 171–97
English Statute of Anne and Successors 180–1
European perspective 191–7
France
Continental Europe and 188–90
rise of the droit d’auteur 181–2
German-speaking territories 182–3
Industrial Revolution and change 184–5
international context 191–3
invention of printing 177–9
overview 171–2, 197
patent law’s national origins 172–6
patents 172–6, 193–4
trade marks 183–7, 195–6
Venetian Model 173
World Intellectual Property Organization (WIPO)
Conventions and South American countries 434
development agenda 822–5
negotiations 770–2