EU and US´s takes on third countries IP systems: a focus in Latin America

Vicente Zafrilla Díaz-Marta
Scientific Coordinator for Innovation and Intellectual Property Projects
OGPI- Universidad de Alicante

With just a three-days difference, the European Commission and the US Trade Representative have published their Report on the protection and enforcement of intellectual property rights in third countries and 2021 Special 301 Report, respectively. While the nature of both documents is similar the conclusions reached are not necessarily the same in as much as EU and US priorities and interests do not always coincide, neither do the consequences of being included in one or the other – as a matter of general trade policy in the EU and US. Nevertheless, reading both of them in conjunction is a useful way to get a picture of the state-of-the-art of IP systems worldwide (vis-à-vis EU/US IP and trade priorities)

With regards to the Latin American countries, the EU report does not include any Latin American country in priority lists 1 and 2, yet Argentina, Brazil and Ecuador are included in Priority 3 which means that from the Commission perspective, some serious IP problems – yet not systemic in the country – are causing harm to EU businesses.

The list of Latin American countries in the 301 Special Report happens to be more prolific, where Argentina, Chile and Venezuela are included within the Priority Watch List whilst Bolivia, Brazil, Colombia, Ecuador, Guatemala, Mexico, Paraguay and Peru are within the Watch List. Worth noting also that from the Caribbean region, Barbados, Dominican Republic, and Trinidad and Tobago are listed too.

As for Argentina, both Reports highlight some major challenges in the patent area – notably with regards back-log and patentability criteria – and the enforcement area both online and in physical markets. The EU report stresses also the need for Argentina to fulfil some of its commitments related to already ratified treaties – UPOV 78 and WIPO Performances and Phonograms Treaty. Unsurprisingly, the US seemed much concerned about the availability of “common” names with a view to the implementation of the Geographical Indications (GIs) provisions included within the EU-Mercosur FTA. The issue here is that what the US understands as “common names” include some EU-protected GIs, hence it is one of the most conflicting points between EU and US.

Among the improvements, both reports remark the implementation of e-filing for patents, trade marks and designs and echo the views of some stakeholders with regards to the improvements in trade mark registration proceedings.

According to the 301 Report, Bolivia´s IP legal framework – including national substantive IP law and (lack of) ratification of key WIPO treaties – affects negatively IP protection as such. Moreover, lack of means and capability to act ex officio makes it extremely difficult to act against infringers. Similar concerns are also included by both reports with regards to Ecuador, whose new IP law (Código Ingenio) deems to be insufficient to address most of the concerns. The EU report points at the broad range of exceptions and limitations for copyright uses and the lack of compliance with international commitments related to the EU- Colombia, Peru and Ecuador Trade Agreement (Copyright) and UPOV-78 and Andean Community Decision 345/1993 (Plant Varieties).

Despite both reports reflect improvements in the area, one of the main concerns in Brazil remains the lack of capability of INPI to process the existing backlog in IP registrations. Likewise, enforcement of IPRs remains a concern although positive steps – such as the role of the National Council against Piracy and Intellectual Property Crimes and a more proactive stand of authorities against infringements – are also reported. The 301 Report insists on the issue of availability of “common names” – including some EU-protected GIs, and echoes the problematics related to the de facto second patentability examination that ANVISA conducts within the market authorisation proceedings for pharma products. The EU report also reflects some concerns related to the confidentiality of undisclosed tests and other data in the framework of marketing authorisation proceedings, whose lack of explicit exclusivity leads to legal uncertain in the case of pharmaceutical products.

The US concerns regarding Chile – in the Priority Watch List – are related to the implementation of Chilean commitments included within the US-Chile FTA which requires a clearer – and more demanding – framework against unlawful circumvention of technical protection measures, the ratification of UPOV-91 and additional improvements with regards pharmaceutical patents market authorisation and data confidentiality.

In 301 Report, both Colombia and Peru remain in the Watch List for reasons linked to the implementation of IP provisions of their respective Trade Promotion Agreement with the US. In the case of Colombia, concerns revolve around regulatory approval of (pharma) compounds, the ratification of UPOV-91 and digital and physical piracy, whereas in the case of Peru, its inclusion can be read more as an encouragement (?) to follow the path that INDECOPI and judicial authorities have followed to fight against IP infringements in recent times.

Mexico remains in the 301 Report Watch List despite improvements in the IP legislative framework. Digital and physical piracy are still a concern to the view of the USTR, who urges Mexico to be more proactive in enforcement actions, calls for better coordination among public bodies and requests additional funding for enforcement-related actions, among others. It does also (preventively) voice concerns related to the recognition of GIs.

Paraguay is included as a result of insufficient compliance with the Memorandum of Understanding signed with the US back in 2015. Lack of deterrence of fines and penalties and the high volume of illicit goods in Ciudad del Este are among the most important concerns. Likewise, the mantra related to GIs and common names is also included.

Finally, Venezuela presents major challenges in its IP environment and the absence of significant progress to a point that justifies its inclusion within the Priority Watch List. Its IP law in force – from 1955 – is inconsistent with nowadays IP protection standards and even more, with Venezuelan commitments in the framework of ratified international treaties. Severe problems related to registration, granting and enforcement of IPRs are also reported.