Who is on the IP naughty list this year?May 14, 2021

Every year the Office of the U.S. Trade Representative (USTR) releases two lists of countries that have concerns surrounding their intellectual property (IP) laws and enforcement and may provide insight if considering filing an application in a certain country. These two lists are the Special 301 Report and the Notorious Markets List, available here. The main difference between the two lists is the Notorious Markets List is concerned with only copyright and trademark protections. The Special 301 Report, however, is concerned with all four main areas of IP: patents, trade secrets, copyrights, and trademarks and summarizes both the improvements and concerns of the actions followed by the countries analyzed for that year. The Special 301 list is further divided into a watch list and a priority watch list depending on severity of the concern for nation’s laws and enforcement.

To get put on the Special 301 naughty list, a country must raise a concern in one or more of the following categories:

1. border and criminal enforcement against counterfeits, including in the online environment;
2. high level of online and broadcast piracy including through illicit stream devices;
3. inadequacies in trade secret protection and enforcement in China, Russia, and elsewhere;
4. troubling “indigenous innovation” and forced technology transfer policies that may unfairly disadvantage U.S. right holders in markets abroad; and
5. other ongoing, systemic issues as well as market access, which include issues such as tariffs, taxes, and forced tech transfer.

The 2021 Special 301 Report includes an analysis of 100 trading partners, with 33 of them being put on the 301 lists. Of those 33 countries, Argentina, Chile, China, India, Indonesia, Russia, Saudi Arabia, Ukraine, and Venezuela have the infamous privilege of being on the Priority Watch List, with the rest of the 33, including Brazil, Canada, and Mexico, on the Watch List. The UAE was also removed from the Watch List this year due to the improvements they have made to their IP protections.

There are some large and important markets in the Report, particularly Brazil, Canada, China, and India. For example, while China is a huge market, the Report found that even for a U.S. person who has IP rights, “severe challenges persist because of excessive regulatory requirements and informal pressure and coercion to transfer technology to Chinese companies, continued gaps in the scope of IP protection, incomplete legal reforms, weak enforcement channels, and lack of administrative and judicial transparency and independence.” While India has other concerns, such as “the potential threat of patent revocations, lack of presumption of patent validity, and the narrow patentability criteria under the India Patents Act burden companies across different sectors,” and the sometimes extremely costly, in both time and money, oppositions, long pendency, and excessive reporting requirements. Of particular concern in India is the unfair commercial use of a pharmaceutical or agricultural chemical product or disclosure of test information to obtain approval for their use. Therefore, both China and India remain countries where special consideration may be warranted before applying for IP protection.

Compared to the system wide concerns in China and India, Brazil and Canada have much more narrowed concerns. Both have severe issues with copyright protection, particularly with online piracy. Both countries have concerns over the transparency and fairness of geographic indications in trademarks. Brazil, like India, also has concerns over unfair commercial use of a pharmaceutical or agricultural chemical product or disclosure of test information to obtain approval for their approval, while Canada has limited patent term restoration for pharmaceuticals due to delays related to marketing approval. Canada also has concerns over the enforcement of counterfeit or pirated goods at the border and within Canada. However, it is noted that both countries have taken positive steps toward addressing these issues.

The Special 301 Report is useful to provide the knowledge of what to expect both during application for protection and what to expect from each country about their enforcement of your IP once it is obtained, and knowing is half the battle.