A short trip through Trade-related aspects of Intellectual Property Rights (TRIPS) ->START

Transcription

1 A short trip through Trade-related aspects of Intellectual Property Rights (TRIPS) ->START

2 Objectives of the course The purpose of this course is to help you: Understand what are intellectual property rights (IPRs) and why they are protected Understand the place of TRIPS in the WTO Familiarize with the structure of the TRIPS Agreement and with the main TRIPS Decisions Know the general provisions and basic principles of the TRIPS Agreement Understand the role of the TRIPS Council

3 Structure Module 1 Module 2 Module 3 Module 4 Module 5 Module 6 What are IPRs and why are they protected? Place of TRIPS in the WTO Overview of the TRIPS Agreement Lesson A: General provisions and basic principles Lesson B: Standards concerning the availability, scope and use of IPRs Lesson C: Enforcement, dispute settlement, transitional arrangements, transfer of technology and other provisions The work of the TRIPS Council TRIPS and Public Health Summary

4 Module 1 What are IPRs and why are they protected?

5 Objectives of Module 1 Module 1 will allow you to: Understand the main general characteristics of IPRs Get familiar with the two main categories of IPRs Understand the rationale and importance of protecting IPRs Understand the role of IPRs as tools of public policy aimed at balancing the legitimate interests of right holders and users

6 What are IPRs? Additional Resources IPRs are rights given to persons over the creations of their minds. IPRs take the form of a limited exclusive right Such right allows the creator to exclude others from using the creation without the creator s authorization for a certain period of time. The right holder can extract economic value from the IPRs by using them or by authorizing others to do so. IPRs are territorial rights They are valid only in the jurisdiction where they have been registered or otherwise acquired. IPRs are usually classified into two categories: Copyright & Industrial Property For purposes of this course, the term country will be used. The term country should be understood to refer to a WTO Member in the sense of Article XII of the WTO Agreement. Besides, it should be noted that IPRs can be acquired in more than one country if there is an agreement to that effect, as will be the case of the European Union when the unitary patent enters into force.

7 What are IPRs? Can be divided into two main areas Copyright Industrial Property It is worth noting that there are different classifications of IPRs. For instance, economists distinguish IPRs on the basis of whether they aim at preventing consumer deception (trademarks and GIs) or stimulating creativity and innovation (copyright and patents). Copyright Authors of artistic and literary works Related rights Performers Phonogram producers Broadcasting organizations Trademarks Geographical Indications (GIs) Patents (inventions) Plant variety protection Industrial Designs Layout-designs of integrated circuits Protection of undisclosed information

8 Copyright The rights of authors of literary and artistic works such as: Books and other writings Films Paintings, sculptures Computer Programmes Musical Compositions Authors, or those who derive the right from authors (such as publishers), have the right to determine how their works are used for a minimum period of time after the death of the author. The rights of authors, the permissible exceptions to those rights and the minimum term of protection will be introduced later on in this course.

9 Related rights Copyright in a wider sense also includes related rights, especially the rights of: Performers (e.g. actors, singers and musicians) over their performances Broadcasting organizations over broadcasts Producers over phonograms (sound recordings) The rights, permissible exceptions and the minimum term of protection concerning related rights will be introduced later on in this course.

10 Trademarks, Geographical indications Which protect distinctive signs In particular trademarks and geographical indications: Trademarks Trademarks distinguish the goods or services of one enterprise from those of other enterprises. Logo from: Logo from: Logo from: The rights of right holders and the permissible exceptions to those rights will be introduced later on in this course.

11 Trademarks, Geographical indications Which protect distinctive signs In particular trademarks and geographical indications: Geographical Indications (GIs) GIs identify a good originating in a place where a given characteristic of the good is essentially attributable to its geographical origin. Darjeeling for tea coming from that region of India Logo and picture from Tea Board of India - website: Cognac for a brandy coming from that region of France Map and picture from Bureau National Interprofessional du Cognac - website: The rights of right holders and the permissible exceptions to those rights will be introduced later on in this course.

12 Patents, Industrial designs and Undisclosed information Some types of IPRs provide the legal framework for the creation of new technologies and products. These types of IPRs include: inventions protected by patents (although, in a number of countries, innovations that could embody lesser technical progress than patentable inventions may be protected by utility models); industrial designs; and, the protection of undisclosed information (trade secrets, undisclosed test or other data). Industrial designs Patents Undisclosed information The rights given to right holders, the permissible exceptions and the minimum term of protection will be introduced later on in this course.

13 Why are IPRs protected? Intellectual property rights are a tool of public policy aimed at promoting economic, social and cultural progress by stimulating creative work and technological innovation. Type of IPR aim to Copyrights & Related rights Encourage and reward creative work Economic foundation for cultural industries and market for cultural products Patents Stimulate innovation & investment in research and development Promote transfer and dissemination of technology Trademarks & Geographical indications Inform consumers and prevent consumer deception Help ensure fair competition Watch our animated video! (just click on the icon)

14 Balance between competing policy interests As tools of public policy, intellectual property rights (or IPRs) are not absolute and unlimited. They are generally subject to a number of limitations and exceptions that aim to balance the legitimate interests of right holders and users. These limitations and exceptions, together with the carefully defined scope of protectable subject matter and a limited term of protection, are intended to maintain an appropriate balance between competing policy interests. This balance is intended to work in a positive sum way so that the system as a whole can meet its policy objectives of promoting innovation and creativity, while enabling the dissemination and adaptation of creative works and new technologies.

15 Additional resources The TRIPS Agreement: Basic introduction to TRIPS: World Intellectual Property Organization (WIPO): WIPO website What is IP?: WIPO online course - Primer on IP (DL OO1):

16 Take away Intellectual property rights (IPRs): are exclusive and territorial rights aim at stimulating creative work and technological innovation are subject to a number of limitations and exceptions that aim to balance the legitimate interest of right holders and users are usually classified into two categories: Copyright (copyright and related rights) & Industrial Property (trademarks, geographical indications, patents, etc.).

17 Test your knowledge! Match the following IPRs with the corresponding statement: Distinguish the goods or services of one enterprise from those of other enterprises Protect a new type of washing machine with a particular type of motor and pump Protect films Identify a type of cheese as originating in a place where a given characteristic of that cheese is essentially attributable to its geographical origin Patents Geographical Indications Copyright Trademarks

18 Test your knowledge! Answer: Distinguish the goods or services of one enterprise from those of other enterprises Protect a new type of washing machine with a particular type of motor and pump Protect films Identify a type of cheese as originating in a place where a given characteristic of that cheese is essentially attributable to its geographical origin Patents Geographical Indications Copyright Trademarks

19 Test your knowledge! True or False? True False IPRs allow the creator to exclude others from using the creation during the period of protection Patent protection aims at stimulating the transfer and dissemination of technology Related rights aim at preventing consumer deception Trademarks aim to ensure fair competition IPRs are absolute and unlimited IPRs are valid in any jurisdiction irrespective of where they have been registered or otherwise acquired

20 Test your knowledge! Answer: True False IPRs allow the creator to exclude others from using the creation during the period of protection Patent protection aims at stimulating the transfer and dissemination of technology Trademarks aim to ensure fair competition Related rights aim at preventing consumer deception IPRs are absolute and unlimited IPRs are valid in any jurisdiction irrespective of where they have been registered or otherwise acquired

21 Test your knowledge! Complete the following statements: 1. Intellectual property rights are usually classified into two categories: and. 2. Trademarks and Geographical indications are protected so as to, prevent consumer deception and ensure. 3. Intellectual property rights are generally subject to and aimed at the legitimate interests of right holders and users. 4. distinguish the goods or of one undertaking from those of other undertakings. 5. By requiring to disclose new technology, promote the and dissemination of technology. trademarks balancing copyright transfer fair competition services patents limitations inform consumers exceptions industrial property

22 Test your knowledge! Complete the following statements: 1. Intellectual property rights are usually classified into two categories: copyright and industrial property. 2. Trademarks and Geographical indications are protected so as to inform consumers, prevent consumer deception and ensure fair competition. 3. Intellectual property rights are generally subject to limitations and exceptions aimed at balancing the legitimate interests of right holders and users. 4. Trademarks distinguish the goods or services of one undertaking from those of other undertakings. 5. By requiring to disclose new technology, patents promote the transfer and dissemination of technology.

23 Module 2 Place of TRIPS in the WTO

24 Objectives of Module 2 Module 2 will help you to: Get acquainted with the place of the TRIPS Agreement within the WTO legal framework Get familiar with the main features of the TRIPS Agreement Understand that the monitoring of the WTO Agreements is supported by a multilateral organizational structure, which in the area of TRIPS is embodied in the TRIPS Council

25 Historical and legal background The TRIPS Agreement was a result of the Uruguay Round of negotiations, which also created the WTO in Before the WTO was created, the old GATT 1947 provided the rules for the bulk of world trade. The GATT 1947 contained rules applicable to trade in goods but did not deal with specific aspect of IPRs. It, however, included a number of provisions that were relevant for or made reference to IPRs, for example: Article III:4 (National Treatment) Article IX.6 (Marks of Origin) Article XX: d (General Exceptions) Want to know more? Recall: From GATT to the WTO - The building of an institution. The history of the WTO begins with the signing of the General Agreement on Tariffs and Trade (GATT) in 1947, which dealt only with trade in goods. From 1948 to 1994, before the WTO was created, the GATT provided the rules for the bulk of world trade. The GATT developed rules for the multilateral trading system (MTS) through eight rounds of trade negotiations. In the early years, the GATT trade rounds focused on reducing tariffs. Following GATT trade rounds covered not only tariffs, but also other trade barriers. The eighth round, known as the Uruguay Round, was the most comprehensive round and led to the creation of the WTO and a new set of agreements (the current WTO Agreements) - which cover also trade in services and TRIPS. The original GATT still exists as the WTO s general agreement on trade in goods. Video - From GATT to WTO: here The WTO in brief - history: here

26 Want to know more - Main GATT 1944 provision that make reference to IP Article III:4 (National Treatment) Requires treatment for imported products that is no less favourable than that accorded to like products of national origin in respect of laws, regulations and requirements; this includes, IP laws. Article IX.6 (Marks of Origin) Requires Contracting Parties to cooperate with each other to prevent the use of trade names in a manner that would misrepresent the true origin of a product, or that would be to the detriment of distinctive regional or geographical names of products protected in other parties territories by national legislation. Article XX:d (General Exceptions) Allows a general exception to the application of GATT obligations with respect to compliance with laws and regulations that are not inconsistent with GATT provisions, including those that deal with patents, trademarks and copyrights and the prevention of deceptive practices. Sub-paragraph d) is subject to the introductory paragraph in Article XX (the chapeau). The GATT 1994, which entered into force on 1 January 1995, sets out the basic obligations on trade in goods. The old GATT 1947, which provided the bulk of trade rules for around 50 years, is now the most important component of the GATT 1994.

27 The TRIPS Agreement Want to know more? The TRIPS Agreement is an integral part of the Marrakesh Agreement Establishing the WTO (WTO Agreement), which entered into force on 1 January The TRIPS Agreement is Annex 1C to the WTO Agreement. The TRIPS Agreement is binding on each Member of the WTO from the date the WTO Agreement becomes effective for that Member. However, the TRIPS Agreement gave original WTO Members transition periods, which differed according to their stages of development, to comply with TRIPS rules. These transition periods will be explained later on in this course. Except for LDC Members, all transition periods have expired. Click on the icon to see the structure of the WTO Agreement and the place of the TRIPS Agreement.

28 WTO Agreements Marrakesh Agreement Establishing the WTO The WTO Agreement The WTO Agreement / Marrakesh Agreement Establishing the WTO serves as an umbrella agreement for the TRIPS Agreement and all the other WTO agreements. WTO Agreement / Marrakesh Agreement 1A GATT 1994 And other Multilateral Agreements on Trade in Goods 1B GATS General Agreement on Trade in Services 1C TRIPS 2 Dispute Settlement Understanding 3 Trade Policy Review Mechanism 4 Plurilateral Trade Agreements

29 Want to know more - Historical background to TRIPS Tokyo Round (1973 to 1979): Draft Agreement on Measures to Discourage the Importation of Counterfeit (negotiators did not reach agreement). Trade ministers met in Punta del Este, Uruguay (1986): Decision on future trade negotiations, which included a mandate under the title Trade-related aspects of intellectual property rights, including trade in counterfeit goods. Mid-term review of the overall Uruguay Round negotiations (April 1989): Decision gave to the negotiating group on TRIPS a full mandate. Between 1989 and 1990: Several detailed proposals were submitted by all the major players. Differences continued on the forum for lodging the agreement and on dispute settlement, as well as on some twenty-five other outstanding issues (mainly relating to some provisions on patents and undisclosed information, copyright, GIs and transition periods). December 1991: Draft Final Act (MTN.TNC/W/FA) was released by the then Director-General of GATT, Arthur Dunkel (known as Dunkel Text ). Final Act (1993): Only two changes were made to TRIPS provisions: 1. Introduction of the moratorium on so-called non-violation complaints in dispute settlement cases (Article ); and, 2. To limit the scope of compulsory licensing of semi-conductor technology (Article 31(c)).

30 The TRIPS Council Additional Resources The TRIPS Agreement is administered by the Council for TRIPS (TRIPS Council), which reports to the General Council. The TRIPS Council, which is open to all WTO Members, is responsible for monitoring the operation of the TRIPS Agreement. The box (recall) provides more information about the organizational structure of the WTO. The TRIPS Council meets in Geneva formally three to four times a year, as well as informally as necessary. The last part of this course will explain the work of the TRIPS Council. Click on the icon to see the place of the TRIPS Council within the WTO organizational structure. Recall: WTO Organizational Structure and Decision-making The WTO has an institutional structure composed by different bodies. The top-most decision making body is the Ministerial Conference. The General Council constitutes the second tier in the WTO structure. It comprises representatives of all Member governments usually Ambassadors or permanent representatives based in Geneva. It may adopt decisions on behalf of the Ministerial Conference when the Conference is not in session. The General Council also meets as the Dispute Settlement Body (DSB) and as the Trade Policy Review Body (TPRB). The Council for TRIPS is one of the three sectoral (i.e. subject area) Councils operating under the General Council, the other two being the Council for Trade in Goods and the Council for Trade in Services. The WTO continues GATT s tradition of making decisions by consensus: a body is deemed to have decided by consensus if no Member, present at the meeting when the decision is taken, formally objects to the proposed decision. Where consensus is not possible, the WTO Agreement allows for voting. WTO detailed organization chart: click here More information about WTO decision-making: click here

31 WTO Organizational Structure Trade Negotiations Committee Plurilaterals Click on each one to find out more.

32 Additional resources WTO organization chart: WTO decision-making: WTO Members and Observers: The TRIPS Council: The Uruguay Round: Uruguay Round documents on TRIPS (code MTN.GNG/TRIPS/* or MTN.GNG/NG11/* - where * takes additional values):

33 Take away The TRIPS Agreement: was one of the major outcomes of the Uruguay Round of trade negotiations ( ), which inserted IP within the WTO system. came into force in 1995 as an integral part of the WTO Agreements, which are binding on each WTO Member. is administered by the TRIPS Council, composed by representatives of all WTO Members.

34 Test your knowledge! True or False? True False The TRIPS Agreement is an integral part of the WTO Agreement Establishing the WTO.. The GATT 1947 made no reference to IPRs. The General Council is the WTO body in charge of dealing specifically with TRIPS issues. The TRIPS Agreement is binding on each Member of the WTO. Before the WTO was created, there was no specific international agreement dealing with specific trade-related aspects of intellectual property.

35 Test your knowledge! Answer: True False The TRIPS Agreement is an integral part of the WTO Agreement Establishing the WTO.. The TRIPS Agreement is binding on each Member of the WTO. The GATT 1947 made no reference to IPRs. The General Council is the WTO body in charge of dealing specifically with TRIPS issues. Before the WTO was created, there was no specific international agreement dealing with specific trade-related aspects of intellectual property..

36 Test your knowledge! Complete the following statements: 1. are examples of provision contained in the GATT 1947 which referred to IPRs. 2. The TRIPS Agreement entered into force on. 3. is in charge of the administration of the TRIPS Agreement. 4. The TRIPS Agreement is of the WTO Agreement. Article III.4, Article XX: d or Article IX.6 of GATT January 1995 The TRIPS Council Annex 1C

37 Test your knowledge! Answer: Article III.4, Article XX: d or Article IX.6 of GATT 1947 are examples of provision contained in the GATT 1947 which referred to IPRs. The TRIPS Agreement entered into force on 1 January The TRIPS Council is in charge of the administration of the TRIPS Agreement. The TRIPS Agreement is Annex 1C of the WTO Agreement.

38 Module 3 Overview of the TRIPS Agreement

39 Objectives of Module 3 This Module is the longest as it will introduce you to the main provisions and obligations contained in the TRIPS Agreement. It is divided into three lessons, which will help you to: Get acquainted with the structure of the TRIPS Agreement Understand the relevance of the pre-existing WIPO Conventions when studying the TRIPS Agreement Know the general provisions and basic obligations of the TRIPS Agreement, which apply to all types of IPRs covered by the Agreement Get acquainted with the different types of IPRs covered by the Agreement Get familiar with other horizontal provisions contained in the Agreement, in particular, those applicable to the enforcement of IPRs and to the resolution of TRIPS disputes under the WTO dispute settlement mechanism (DSM)

40 Overview of the TRIPS Agreement The TRIPS Agreement is a comprehensive multilateral agreement on IP. It deals with each of the main categories of IPRs and establishes minimum standards of protection. The Agreement also contains rules on administration and enforcement of IPRs, and provides for the application of the WTO dispute settlement mechanism to resolve disputes between Members concerning compliance with its standards. The TRIPS Agreement includes VII Parts. Each Part will be introduced in this course. But before doing so, you should know about the relationship between the TRIPS Agreement and the pre-existing WIPO Conventions.

41 Relationship between the TRIPS Agreement and the pre-existing WIPO conventions (1) Key Provisions Articles 2.1, 2.2 & 9.1 of the TRIPS Agreement The TRIPS Agreement sets the minimum standards of IP protection firstly by requiring compliance with the substantive obligations of the main conventions of the World Intellectual Property Organization (WIPO) in their most recent versions: Berne Convention for the Protection of Literary and Artistic Works (Copyright) Paris Convention for the Protection of Industrial Property (Industrial Property) All the main substantive provisions of these two conventions have been incorporated by reference into the TRIPS Agreement, with the exception of the provisions of the Berne Convention on moral rights. Thus, those substantive provisions are now obligations between WTO Members under the TRIPS Agreement, separately from the obligations they mostly have to one another under those conventions. The TRIPS Agreement then adds a substantial number of additional obligations on matters where the pre-existing conventions were silent or were seen as being inadequate. The TRIPS Agreement is thus sometimes referred to as a Berne-plus and Paris-plus agreement.

42 Relationship between the TRIPS Agreement and the pre-existing WIPO conventions (2) The Agreement also incorporates most of the substantive provisions of the Treaty on Intellectual Property in Respect of Integrated Circuits (IPIC Treaty). In addition, the TRIPS provisions on related rights contain certain references to the Rome Convention. Important Note - Safeguard Clause: You must remember that according to the TRIPS Agreement, WTO Members cannot derogate from the existing obligations they may have to each other under the Paris, Berne and Rome Conventions or IPIC Treaty (Art. 2.2).

43 Structure of the TRIPS Agreement Annex 1C of the WTO Agreement Part I: Part II: GENERAL PROVISIONS AND BASIC PRINCIPLES STANDARDS CONCERNING THE AVAILABILITY, SCOPE AND USE OF IPRs 1. Copyright and Related Rights 2. Trademarks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Layout-Designs (Topographies) of Integrated Circuits 7. Protection of Undisclosed Information 8. Control of Anti-competitive Practices in Contractual Licences Part III: ENFORCEMENT OF IPRs 1. General Obligations 2. Civil and Administrative Procedures and Remedies 3. Provisional Measures 4. Special Requirements related to Border Measures 5. Criminal Procedures Part IV: Part V: Part VI: ACQUISITION AND MANTENANCE OF IPRS AND RELATED INTER-PARTES PROCEDURES DISPUTE PREVENTION AND SETTLEMENT TRANSITIONAL ARRANGEMENTS Part VII: INSTITUTIONAL ARRANGEMENTS; FINAL PROVISIONS

44 Lesson A. General Provisions and Basic Principles

45 Objectives of Lesson A Lesson A will allow you to: Know the general provisions and basic obligations of the TRIPS Agreement, which apply to all types of IPRs covered by the Agreement Understand why the TRIPS Agreement is known as a minimum standards Agreement Understand how the main WTO obligations on non-discrimination (national treatment and MFN) apply in the field of TRIPS Understand the concept of exhaustion for IPRs and the policy space provided by the Agreement

46 1. Objectives and principles Key Provisions Articles 7 & 8 The general goals of the TRIPS Agreement are set out in its Preamble and include: Reducing distortions and impediments to international trade Promoting effective and adequate protection of IPRs, and Ensuring that measures and procedures to enforce IPRs do not themselves become barriers to legitimate trade. The general goals contained in the Preamble of the Agreement should be read in conjunction with Article 7 ( Objectives ). Objectives Article 7 reflects the search for a balanced approach to IP protection in the societal interest, taking into account the interests of both producers and users. IP protection is expected to contribute not only to the promotion of technological innovation, but also to the transfer and dissemination of technology in a way that benefits both its producers and users and that respects a balance of rights and obligations, with the overall goal of promoting social and economic welfare.

47 General provisions and basic principles Principles Article 8 recognizes the rights of Members to adopt measures for public health and other public interest reasons and to prevent the abuse of IPRs, provided that such measures are consistent with the provisions of the TRIPS Agreement. The Preamble and Articles 7 and 8 express the general goals, objectives and principles of the TRIPS Agreement. As recognized by WTO dispute settlement panels, they are to be borne in mind when the substantive rules of the Agreement are being examined. Important Note: The 2001 Doha Declaration on the TRIPS Agreement and Public Health provides that in applying the customary rules of interpretation of public international law, each provision of the TRIPS Agreement shall be read in the light of the object and purpose of the Agreement as expressed, in particular, in its objectives and principles. Click on the icon to see the Doha Declaration on TRIPS and Public Health The last lesson of this course will introduce you the Doha Declaration on TRIPS and Public Health.

48 2. Minimum Standards Agreement Key Provision Article 1.1 The TRIPS Agreement sets out minimum standards of protection to be provided by each Member. Article 1.1 makes it clear that Members may, but are not obliged to, implement in their law more extensive protection than required by the Agreement, provided that such protection does not contravene its provisions. This provision further clarifies that Members are free to determine the appropriate method of implementing the provisions of the TRIPS Agreement within their own legal system and practice. Important Note: Given the long history of international cooperation on IP matters, the national laws in this area are often fairly similar. However, if you want to know how the law applies in a concrete practical situation, you will have to consult the applicable national law.

49 3. Beneficiaries Key Provision Article 1.3 As in the main pre-existing IP conventions, the basic obligation on each Member is to accord the treatment in regard to the protection of IP provided for under the Agreement to right holders of other Members. Article 1.3 defines who these persons are. They are referred to as nationals but include persons, natural or legal, who have a close attachment to a Member without necessarily having the nationality of that Member. The criteria for determining which persons must thus benefit from the treatment provided for under the Agreement are those laid down for this purpose in the pre-existing IP conventions of WIPO referred to in the TRIPS Agreement, applied of course with respect to all WTO Members whether or not they are party to those conventions. Additional Resources Additional information: Beneficiaries

50 Additional information - Beneficiaries pursuant to the pre-existing IP Conventions of WIPO (1) The following clarifies who the beneficiaries are for industrial property rights and for copyright and related rights, as the rules differ slightly between these categories. 1. Industrial property Pursuant to Articles 2 and 3 of the Paris Convention, protection is granted in the case of industrial property to natural or legal persons who: are nationals of a Member; are domiciled in a Member; or have real and effective industrial or commercial establishments in a Member. Pursuant to Article 5 of the IPIC Treaty, similar criteria for determining eligible beneficiaries are applied in relation to layout-designs or integrated circuits.

51 Additional information - Beneficiaries pursuant to the pre-existing IP Conventions of WIPO (2) 2. Copyright and related rights a) Copyright Pursuant to Articles 3 and 4 of the Berne Convention, protection is granted to authors of literary or artistic works who: are nationals of a Member; have their habitual residence in a Member; have their works first (or simultaneously) published in a Member; are authors of cinematographic works the maker of which has his headquarters or habitual residence in a Member; or are authors of works of architecture erected in a Member or of other artistic works incorporated in a building or other structure located in a Member. b) Performers Pursuant to Article 4 of the Rome Convention, protection is granted to performers whose: performance takes place in another Member; performance is incorporated in a phonogram as defined below; or performance is covered by a broadcast as defined below.

52 Additional information - Beneficiaries pursuant to the pre-existing IP Conventions of WIPO (3) c) Producers of phonograms Pursuant to Article 5 of the Rome Convention, protection is granted to producers of phonograms: if the producer is a national of another Member; if the first fixation of sound (i.e. recording) was made in another Member; or if the phonogram was first published in another Member. In accordance with the provisions of Article 5(3) of the Rome Convention as incorporated into the TRIPS Agreement, a Member may declare that it does not apply either the criterion of fixation or that of publication. The criterion of nationality, however, may not be excluded. d) Broadcasting organizations Pursuant to Article 6 of the Rome Convention, protection is granted to broadcasting organizations: whose headquarters are situated in another Member; or when the broadcast was transmitted from a transmitter in another Member. In accordance with the provisions of Article 6(2) of the Rome Convention as incorporated into the TRIPS Agreement, a Member may declare that it will protect broadcasts only if both relevant conditions are met, i.e. that the headquarters of the broadcasting organization are situated in another Member and the broadcast was transmitted from a transmitter situated in the same Member.

53 4. Non-discrimination: National Treatment and MFN Key Provisions Articles 3 to 5 As you probably already know, nondiscrimination is a key principle of the WTO. It applies to trade in goods, trade in services and TRIPS. In the case of TRIPS, the fundamental rules on national treatment and most-favoured nation (MFN) treatment apply to nationals natural and legal persons who own the IPRs. These principles can be found in Articles 3 to 5 of the Agreement. The rules are common to all categories of IP covered by the Agreement. These obligations cover not only the substantive standards of protection but also matters affecting the availability, acquisition, scope, maintenance and enforcement of IPRs, as well as those matters affecting the use of IPRs specifically addressed in the Agreement. Recall: National Treatment and MFN principles Non-discrimination is a fundamental principle of the WTO. The principle of non-discrimination has two components: (i) the national treatment principle; and (ii) the most-favoured nation (MFN) principle. Under the GATT 1994, the subject of the MFN and national treatment is goods, while under the GATS the subjects are services and services suppliers. Instead, in the context of TRIPS, the subject of protection is nationals, which as mentioned before, include natural and legal persons who are the owners of the IPRs. While the national treatment clause forbids discrimination between a Member s own nationals and the nationals of other Members; the MFN treatment clause forbids discrimination among the nationals of WTO Members. The MFN principle requires to accord to nations of WTO Members any advantage given to nationals of any other country - Member or not of the WTO. If you want to know more about the national treatment and MFN principles in the WTO, click on here.

54 National Treatment Suppose that Rachel, national of Vanin, has an invention protected in her country. Her invention is protected in Vanin for 20 years, plus an additional 5 years to compensate her for unreasonable curtailment of the patent term as a result of processing delays in the patent office. Note that this extension of the patent term of protection beyond 20 years is NOT an obligation under the TRIPS Agreement. Patent His invention is protected for 20 years without considering any processing delays in the Vanin patent office. The reason is that he is a national of Tristat, a foreign nation, and not a Vanin national, and this provision is only available to domestic nationals. Suppose now that, George, an inventor national of Tristat, has also patented an invention in Vanin.

55 Most-favoured nation (MFN) treatment His invention is protected for 20 years, plus an additional 5 years to compensate him for unreasonable curtailment of the patent term as a result of processing delays in the patent office. Note that this extension of the patent term of protection beyond 20 years is NOT an obligation under the TRIPS Agreement. Patent The invention of George, national of Tristat, is protected for 20 years, even though it experienced similar processing delays in the patent office as Tony's application. Suppose that Tony, an inventor national of Medatia, has an invention protected in Vanin. Suppose now that, George, an inventor national of Tristat, also patents an invention in Vanin.

56 National Treatment (1) Key Provision Article 3 A. National Treatment Under the TRIPS Agreement, the national treatment obligation contained in Article 3 requires each Member to accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection of IP. Exceptions to national treatment The exceptions allowed under the four preexisting WIPO treaties (Paris, Berne, Rome and IPIC) are also allowed under TRIPS. An important exception to national treatment is the so-called comparison of terms for copyright. Pursuant to this exception, allowed under Article 7(8) of the Berne Convention as incorporated into the TRIPS Agreement, if a Member provides a term of protection in excess of the minimum term required by the TRIPS Agreement, it does not need to protect a work for a duration that exceeds the term fixed in the country of origin of that work. In other words, the additional term can be made available to foreigners on the basis of material reciprocity.

57 National Treatment (2) Key Provision Article 3 With respect to performers, producers of phonograms and broadcasting organizations, the national treatment obligation applies only with respect to rights provided under the TRIPS Agreement (i.e. does not cover other rights that holders of related rights may have under domestic laws or other international agreements). Other exceptions to national treatment Exceptions can be allowed to the national treatment principle for judicial and administrative procedures. National treatment exceptions in the case of judicial and administrative procedures Exceptions can be allowed to the national treatment principle for judicial and administrative procedures for instance, foreign applicants for IP protection may be required to provide an address for service or a local agent in that jurisdiction. Article 3.2 of the Agreement requires that such exceptions be necessary to secure compliance with laws and regulations which are consistent with the TRIPS Agreement and that such practices not be applied so as to constitute a disguised restriction on trade.

58 Most-favoured Nation (MFN) Key Provision Article 4 B. Most-Favoured Nation (MFN) While the pre-existing multilateral IP conventions also provide for national treatment, they do not contain obligations on MFN treatment. Article 4 on MFN treatment requires that, with regard to the protection of IP, any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members. Want to know more? Background of TRIPS MFN rule

59 Want to know more - Background of the MFN provision in the TRIPS Agreement As mentioned earlier, the MFN rules is one of the main principles of the WTO. While the pre-existing multilateral IP conventions also provide for national treatment, they do not contain obligations on MFN treatment. In these conventions, national treatment is an across-the-board obligation with relatively minor exceptions. Given that the same treatment has to be given to nationals of other convention members as to a member s own nationals, it would normally follow that the same treatment would be given to the nationals of each of the other members. This leaves little scope for discrimination between the nationals of other members of those conventions. However, during the TRIPS negotiations, suggestions for the incorporation of an MFN provision into the Agreement were made since some countries had agreed to give, as a result of bilateral negotiations, more favourable protection to IPRs of the nationals of one or more of their trading partners than they gave to their own nationals. As a result, MFN treatment was incorporated into the Agreement.

60 Exceptions to MFN Key Provision Article 4 Where exceptions to national treatment allow material reciprocity, a consequential exception to MFN treatment is permitted under Article 4(b) and 4(c) of the TRIPS Agreement. Limited exceptions to MFN are also allowed under Article 4(a) concerning international agreements on judicial assistance or law enforcement of a general nature. In addition, Article 4(d) of the TRIPS Agreement exempts from the MFN obligation advantages deriving from international agreements related to IP that entered into force prior to the entry into force of the WTO Agreement, that is, before 1 January This exception is subject to the conditions that such agreements are notified to the TRIPS Council and they do not constitute an arbitrary or unjustifiable discrimination against nationals of other Members. Important Note - What about agreements related to IP that entered into force after 1995?: It is important for you to remember that the exemption in Article 4(d) does NOT cover advantages deriving from international agreements that entail higher standards than required by the TRIPS Agreement which enter into force after 1 January This means that any such higher standards must be available to nationals of all WTO Members.

61 Exception related to Multilateral Agreements on Acquisition or Maintenance of IPRs - common to National Treatment and MFN Key Provision Article 5 The national and MFN treatment obligations do not apply to procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the acquisition or maintenance of IPRs. Article 5 - Multilateral Agreements on Acquisition or Maintenance of Protection Article 5 recognizes that certain WIPO agreements provide for a system of international applications only open to persons that are nationals or residents of signatory countries or have a real and effective industrial or commercial establishment in those countries. This exception does not apply in respect of the substantive standards of protection themselves. It is not limited to pre-existing WIPO agreements. Examples of such agreements are the Patent Cooperation Treaty, the Madrid Agreement Concerning the International Registration of Marks and the Protocol to that Agreement, and the Hague Agreement Concerning the International Registration of Industrial Designs.

62 5. Exhaustion (1) Key Provision Article 6 The term exhaustion refers to the generally accepted principle in IP law that a right owner s exclusive right to control the distribution of a protected item lapses after the first act of distribution. In many countries, once the item has been put on the market by or with the consent of the right owner, the exclusive distribution right is exhausted (which is why the principle is referred to in some jurisdictions as the first-sale doctrine ) and further circulation of that item can no longer be controlled by the right holder.

63 Exhaustion (2) Key Provision Article 6 This doctrine of exhaustion does not, of course, affect any other exclusive rights the right holder may enjoy, for example, the right to authorize activities such as reproduction or communication to the public. In other words, the entitlement to distribute a legitimately purchased CD does not in itself extend to an entitlement to make reproductions or public performances of the recorded music. While it is generally accepted that IPRs are exhausted within the jurisdiction where the first sale took place, are such rights exhausted when the first sale takes place outside the jurisdiction in question? The answer depends on whether a country applies a regime of national or international exhaustion and thereby prevents or allows so-called parallel importation.

64 Exhaustion (3) National Exhaustion The right owners distribution rights are only considered exhausted once they put the protected item on the market in that country. Distribution rights would not be exhausted with regard to protected items that were put on the market in another country, so that right holders can still control the sale or import of those items into the first country. Parallel imports of products first sold on other markets are ILLEGAL International Exhaustion The right owner s distribution right in that country is exhausted regardless of where the first act of distribution took place. In the example, right holders cannot use IPRs to prevent the importation and sale of DVDs that they have sold in another country. Parallel imports of products first sold on other markets are LEGAL International Exhaustion Products imported as parallel imports are NOT counterfeit or pirated goods, but genuine original products that have been sold in other countries with the authorization of the right holder; they do not infringe IPRs in the country of origin. A country may adopt different exhaustion regimes (national or international exhaustion) for different categories of IPRs.!

65 Exhaustion and parallel imports Suppose a sound recording company, MUSICLAND, which has copyright and related rights in Vanin over certain music CDs, decides to sell its CDs at 15 US$ each in Vanin. Medatia is a WTO Member. MUSICLAND sell its CDs at 23 US$ each in Medatia. Another company, MUSICAL, decides to buy CDs from MUSICLAND in Vanin and sell them in MEDATIA at 20 US$. Since Medatia has adopted an international system of exhaustion for all IPRs, including copyright, parallel imports of these CDs in Medatia are legal. Tristat is another WTO Member. MUSICLAND sells its CDs at 23 US$ each in Tristat. Since Tristat has adopted a national regime of exhaustion for all IPRs, including copyright, parallel imports of those CDs are illegal in Tristat. Thus, MUSICAL cannot sell the CDs in TRISTAT at a lower price. 65 Note that the CDs imported as parallel imports are NOT pirated goods, but genuine CDs that have been sold with the authorization of the right holder (MUSICLAND).

66 Exhaustion (4) Regional Exhaustion An alternative approach is taken in some free trade areas (FTAs) or customs unions, namely regional exhaustion. In this case, the right holder s IPRs are exhausted once the first sale takes place anywhere within the specified region.

67 Exhaustion: National or International? (5) Key Provisions Article 6 of the TRIPS Agreement & Doha Declaration (para. 5 d) The TRIPS Agreement leaves Members considerable discretion as to how to regulate the question of exhaustion. Article 6 provides that, for the purposes of dispute settlement under the TRIPS Agreement, nothing in the Agreement shall be used to address the issue of the exhaustion of IPRs, provided that the national and MFN treatment obligations are complied with. It is generally understood that national exhaustion favours market segmentation as well as differential pricing, product differentiation and differing release dates, whereas international exhaustion facilitates parallel importation of the same product sold at lower prices in other countries. Important Note: This provision was confirmed in the Doha Declaration on the TRIPS Agreement and Public Health. It stated that the effect of the TRIPS provisions relevant to exhaustion of IPRs was to leave each Member free to establish its own regime for exhaustion without challenge, subject to the MFN and national treatment obligations.

68 Additional Resources The TRIPS Agreement: World Intellectual Property Organization (WIPO): Paris Convention refers to the Paris Convention for the Protection of Industrial Property (the Stockholm Act of 14 July 1967): Berne Convention refers to the Berne Convention for the Protection of Literary and Artistic Works (the Paris Act of 24 July 1971): Rome Convention refers to the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, adopted at Rome on 26 October 1961: IPIC Treaty refers to the Treaty on Intellectual Property in Respect of Integrated Circuits, adopted at Washington on 26 May 1989:

69 Take away The TRIPS Agreement: is a comprehensive multilateral agreement on IP which establishes minimum standards of protection for each of the main categories of IPRs. it incorporates most provisions of the main WIPO Conventions (mainly Berne and Paris Conventions), while adding a number of obligations. includes the national treatment and MFN obligations, which apply to nationals owners of IPRs. leaves policy space for each Member to choose its own regime of exhaustion for IPRs according to its policy objectives.

70 Test your knowledge! 1. Minimum standards agreement Does the TRIPS Agreement require Members to provide more favourable protection than that required by the Agreement? Is the following statement True or False? Members may provide more extensive protection than that required under the TRIPS Agreements to IPRs holders, but it is not an obligation. Is the following statement True or False? To know how the IP rules applicable in any concrete practical situation, the national law of the Member concerned will have to be consulted. 2. MFN Does MFN prohibit discrimination between nationals and foreigners? Is the following statement True or False? The TRIPS Agreement incorporates the MFN obligation contained in previous WIPO Conventions. Is the following statement True or False? The MFN obligation applies to all categories of IP covered by the Agreement. 3. National Treatment Does national treatment prohibit discrimination among foreigners? Does national treatment prohibit discrimination between nationals and foreigners? Is the following statement True or False? The exception knows as comparison of terms for copyright was incorporated into the TRIPS Agreement. 4. Exhaustion Is the following statement True or False? The TRIPS Agreement prohibits parallel imports. Is the following statement True or False? The TRIPS Agreement leaves discretion for Members to choose their own regime for exhaustion, subject to the non-discrimination obligations. Is the following statement True or False? The freedom of Members to choose their own regime for exhaustion was confirmed by the Doha Declaration on TRIPS and Public Health.

71 Test your knowledge! 1. Minimum standards agreement Does the TRIPS Agreement require Members to provide more favourable protection than that required by the Agreement? No Members may provide more extensive protection than that required under the TRIPS Agreements to IPRs holders, but it is not an obligation. True To know how the IP rules applicable in any concrete practical situation, the national law of the Member concerned will have to be consulted. True 2. MFN Does MFN prohibit discrimination between nationals and foreigners? No The TRIPS Agreement incorporates the MFN obligation contained in previous WIPO Conventions. False The MFN obligation applies to all categories of IP covered by the Agreement. True 3. National Treatment Does national treatment prohibit discrimination among foreigners? No Does national treatment prohibit discrimination between nationals and foreigners? Yes The exception knows as comparison of terms for copyright was incorporated into the TRIPS Agreement. True 4. Exhaustion The TRIPS Agreement prohibits parallel imports. False The TRIPS Agreement leaves discretion for Members to choose their own regime for exhaustion, subject to the non-discrimination obligations. True The freedom of Members to choose their own regime for exhaustion was confirmed by the Doha Declaration on TRIPS and Public Health. True

72 Test your knowledge! Crosswords: Statement 1. Members may provide more extensive protection than that required by the TRIPS Agreement, but it is not an obligation; however they cannot contravene the Agreement. 2. Prohibits discrimination between a Member s own nationals and the nationals of other Members. 3. The right owner s exclusive right to control the distribution of a protected item lapses after the first act of distribution. 4. Prohibits discrimination between the nationals of WTO Members

73 Test your knowledge! Answer: E M X 2. F H M I N I M U M S T A N D A R D S T U S T I O N

74 Test your knowledge! True or False? True False A person needs to be a citizen to be considered as a national of a Member and thus a beneficiary under the TRIPS Agreement. Members must prohibit the parallel importation of products protected by IPRs. The TRIPS Agreement established a completely new international IP system. The goals of the TRIPS Agreement include to reduce distortions and impediments to international trade, promote effective and adequate protection of IPRs, and to ensure that measures and procedures to enforce IPRs do not become barriers to legitimate trade. The MFN and national treatment obligations only apply to substantive standards of IP protection. Members may adopt measures necessary to protect public health provided that such measures are consistent with the TRIPS Agreement. With regard to the protection of IP, advantages deriving from international agreements that entered into force after 1 January 1995 must be available to the nationals of all WTO Members.

75 Test your knowledge! Answer: True False Members may adopt measures necessary to protect public health provided that such measures are consistent with the TRIPS Agreement. With regard to the protection of IP, advantages deriving from international agreements that entered into force after 1 January 1995 must be available to the nationals of all WTO Members. The goals of the TRIPS Agreement include to reduce distortions and impediments to international trade, promote effective and adequate protection of IPRs, and to ensure that measures and procedures to enforce IPRs do not become barriers to legitimate trade. A person needs to be a citizen to be considered as a national of a Member and thus a beneficiary under the TRIPS Agreement. Members must prohibit the parallel importation of products protected by IPRs. The TRIPS Agreement established a completely new international IP system. The MFN and national treatment obligations only apply to substantive standards of IP protection.

76 Test your knowledge! Match the following IPRs with the corresponding statement: Exception to national treatment National Exhaustion Exception to MFN International Exhaustion Advantages deriving from international agreements related to the protection of IP that entered into force before 1 January 1995 are exempted provided that such agreements are notified and they do not constitute an arbitrary or unjustifiable discrimination against nationals of other Members. If a Member provides a term of protection in excess of the minimum term required by the TRIPS Agreement, it does not need to protect a work for a duration that exceeds the term fixed in the country of origin of that work. The right owner s distribution right in a country is exhausted regardless of where the first act of distribution took place. The right owners distribution rights are only considered exhausted once the protected items are put on the market in that country.

77 Test your knowledge! Answer: Exception to national treatment National Exhaustion Exception to MFN International Exhaustion Advantages deriving from international agreements related to the protection of IP that entered into force before 1 January 1995 are exempted provided that such agreements are notified and they do not constitute an arbitrary or unjustifiable discrimination against nationals of other Members. If a Member provides a term of protection in excess of the minimum term required by the TRIPS Agreement, it does not need to protect a work for a duration that exceeds the term fixed in the country of origin of that work. The right owner s distribution right in a country is exhausted regardless of where the first act of distribution took place. The right owners distribution rights are only considered exhausted once the protected items are put on the market in that country.

78 Lesson B. Standards concerning the availability, scope and use of IPRs

79 Objectives of Lesson B Lesson B will allow you to: Get acquainted with the IPRs covered by the TRIPS Agreement in order to Identify the different types of IPRs covered by the Agreement Understand the main elements corresponding to each type of IPR Get familiar with the main TRIPS provisions applicable to those IPRs

80 Overview The TRIPS Agreement sets out the minimum standards of IP protection to be provided by each Member in the following fields: Fields of IP 1. Copyright and related rights 2. Trademarks, including service marks 3. Geographical indications (GIs) 4. Industrial designs 5. Patents, including the protection of new varieties of plants 6. The layout-designs of integrated circuits 7. Undisclosed information, including trade secrets and test data. In respect of each of these fields of IP, the main elements of protection are defined: Main elements of protection the subject matter eligible for protection the scope of rights to be conferred permissible exceptions to those rights where applicable, the minimum duration of protection

81 1. Copyright (1) Key Provisions Articles 9 to 13 a) What is the subject matter to be protected by copyright? Copyright protects literary and artistic works, that is, every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression. Such works include computer programmes and databases. b) Relevant WIPO Convention Berne Convention c) What are the rights given to authors? The TRIPS Agreement incorporates most of the provisions of the Berne Convention (except the moral rights). The economic rights of an author of a work include the reproduction right, rental right, rights of public performance, broadcasting and communication to the public and right of translation and adaptation. Additional Resources (a)

82 Copyright (2) Key Provisions Articles 9 to 13 d) What are the permissible limitations and exceptions? The Berne Convention allows free uses for certain specified purposes, such as quotation, illustration for teaching purposes, and reporting of current events. They also allow limitations to the reproduction right. Minor exceptions can be made to the public performance right. Non-voluntary licences (allowing use of protected work without authorization but with the obligation to pay equitable remuneration) can be applied to broadcasting and communication to the public of works broadcasts, as well as to the recording of musical works. Developing countries may provide compulsory licences, subject to certain conditions, in respect of reproduction and translation of works for educational purposes. In addition, according to Article 13 of the TRIPS Agreement, limitations and exceptions are allowed if three conditions are met (known as "three step test"): STEP 1 The limitations or exceptions are confined to certain special cases STEP 2 They do not conflict with a normal exploitation of the work STEP 3 They do not unreasonably prejudice the legitimate interests of the right holder e) What is the term of protection for copyright? In general, the minimum term of copyright protection is the life of the author and 50 years after his death.

83 Rights related to copyright Key Provision Article 14 a) What are the rights conferred to holders of related rights? Performers have the possibility of preventing certain unauthorized acts, such as fixation of their performance on a sound recording (e.g. CD) and its unauthorized broadcasting. Producers of phonograms have an exclusive reproduction right and rental right. Broadcasting organizations have the right to prohibit certain acts in respect of their broadcasts, such as rebroadcasting. b) The TRIPS Agreement includes certain references to the Rome Convention c) What are the permissible exceptions to these rights? Members may provide certain specific limitations such as private use. In general, Members may also provide for the same kinds of limitations as they provide for in respect of literary and artistic works. d) What is the term of protection? The term of protection is at least 50 years for performers and producers of phonograms, and 20 years for broadcasting organizations.

84 2. Trademarks (1) Key Provisions Articles 15 to a) What is the subject matter to be protected by trademarks? Signs that are capable of distinguishing the goods and services of one undertaking from those of others are eligible for trademark protection. There are no constraints on the types of signs that can be protected as a trademark (such as words, numbers, figurative elements or combinations of colours or signs), but Members may make registration of signs dependent on visual perceptibility. Members may allow distinctiveness to be acquired by use. While the conditions for the registering of a trademark are in principle determined by the domestic law of each Member, there are some common rules that have to be observed by all Members. b) Relevant WIPO Convention: Paris Convention c) What are the rights covered by trademarks? The owner of a registered trademark must at least be able to prevent the unauthorized use of an identical or similar sign on identical or similar goods or services in the course of trade, which would create a likelihood of confusion among consumers. For well-known trademarks, such protection would apply even if the trademark is not registered in the country where protection is claimed or, in some cases, extends to products which are not similar to those in respect of which the trademark is registered.

85 Trademarks (2) Key Provisions Articles 15 to 21 d) What are the permissible exceptions to trademark rights? Members are allowed to provide for limited exceptions to trademark rights if these take into account the legitimate interests of the right owner and those of third parties. This is a variation of the three-step test referred to in the section on copyright. e) What is the term of protection? The initial term of protection for trademarks must be 7 years, which must be renewable indefinitely. This means that protection of a trademark, provided that certain conditions are met, may last for an indefinite period of time. Additional Resources (b)

86 3. Geographical Indications (1) Key Provisions Articles 22 to 24 a) What is the subject matter to be protected? Geographical indications (GI) 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 geographical origin (e.g. "Champagne" from France or "Tequila" from Mexico). The definition is limited to goods. The main requirement is that there is a linkage between the quality, reputation or other characteristics of the good and its geographical origin. The Agreement does not specify the legal form that the protection should take. In practice, GIs are protected, for example, by laws on business practices (e.g. on unfair competition or consumer protection), trademark law or sui generis (i.e. a system created specifically for this purpose) GI laws. b) Relevant WIPO Convention Paris Convention Additional Resources (c)

87 Geographical Indications (2) Key Provisions Articles 22 to 24 c) What are the rights covered? The TRIPS Agreement requires protection to be available for all GIs against use in a manner that would mislead the public as to the true origin of the product; and, against use that would constitute an act of unfair competition. GIs for wines and spirits enjoy an additional, higher level of protection. It is not dependent on meeting tests of misleading the consumer or unfair competition and applies even if the true place of origin is indicated or the use is accompanied by certain qualifying terms such as 'type' or 'kind', or the use is in translation. The right to take action must be available to any interested party, that is, not only the right holder but also, for example distributors. d) What are the permissible exceptions? The Agreement provides for a range of exceptions to the protection that would otherwise have to be given, notably in respect of terms that have become generic in the local language, certain prior trademark rights and certain other forms of prior use that predate the TRIPS Agreement. The exceptions are accompanied by a commitment on the part of Members to be willing to enter into negotiations, bilaterally or multilaterally, including about the continued applicability of the exceptions. A specific role is also given to the Council for TRIPS to review the application of the TRIPS rules in this area and consult about compliance issues.

88 Negotiations on GI register Key Provisions Articles 22 to 24 Members have a mandate to negotiate a multilateral system of notification and registration of GIs for wines eligible for protection in those Members participating in the system, with a view to facilitating their protection (Article 23.4). The negotiations are being pursued in the Doha Round, where the mandate has been extended to cover spirits as well. These negotiations are handled in the special sessions of the TRIPS Council - created by the Trade Negotiations Committee (TNC). Module 4 will introduce the work of the TRIPS Council, including its special sessions. If you want to know more about the negotiations on a multilateral system of notification and registration of wines and spirits taking place in the special session of the TRIPS Council, please refer to: m#wines_spirits

89 4. Patents (1) Key Provisions Articles 27 to 34 a) What is the subject matter to be protected? The TRIPS Agreement requires Members to make patents be available for any inventions, whether products or processes, in all fields of technology without discrimination, subject to the invention meeting the tests of novelty, inventiveness and industrial applicability. It also requires that patents be available and patent rights enjoyable without discrimination as to the place of the invention, the field of technology and whether products are imported or locally produced. Members shall require that an applicant for a patent disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art. They may also require the applicant to indicate the best mode for carrying out the invention. b) Relevant WIPO convention Paris Convention Additional Resources (d)

90 Patents (2) Key Provisions Articles 27 to 34 c) What are the permissible exclusions to patentable subject matter? There are three permissible exclusions to patentability: 1. Inventions contrary to ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment. The use of this exception is subject to the condition that it must be necessary to prevent the commercial exploitation of the invention for the protection of ordre public or morality. 2. Diagnostic, therapeutic and surgical methods for the treatment of humans or animals. 3. Plants and animals and essentially biological processes for their production. Members are required to give protection for micro-organisms and non-biological and microbiological processes for the production of plants and animals. Members must also protect plant varieties by patents or by an effective sui generis system or by a combination of both. This provision (Article 27.3(b)) was made subject to review four years after the entry into force of the Agreement. The review started in 1999 and is continuing. The Council for TRIPS has examined also the relationship between the TRIPS Agreement and the Convention on Biological Diversity (CBD) as well as the protection of traditional knowledge and folklore. The relationship between the TRIPS Agreement and the CBD has also been addressed as an outstanding implementation issue pursuant to paragraph 12 of the Doha Ministerial Declaration.

91 Patents (3) Key Provisions Articles 27 to 34 d) What are the rights given to patent owners? The exclusive rights that must be conferred are mainly the ones of making, using, offering for sale, selling, and importing for these purposes. Process patent protection must be given not only over use of the process but also over products obtained directly by the process. Patent owners shall also have the right to assign, or transfer by succession, the patent and to conclude licensing contracts. If the subject matter of a patent is a process for obtaining a product, the judicial authorities shall have the authority to order the defendant to prove that the process to obtain an identical products is different from the patented process, where certain conditions indicating a likelihood that the protected process was used are met. e) What are the permissible exceptions to patent rights? Exceptions to patent rights can be placed into two categories: limited exceptions and other uses without the authorization of the right holder which cover compulsory licences and government use. 1. Limited exceptions Members may provide for limited exceptions provided that they do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties. This is a variation of the three-step test discussed in the copyright section.

92 Patents (4) Key Provisions Articles 27 to Compulsory licences Compulsory licensing, including government use without the authorization of the right holder, are allowed without limitation as to the grounds or underlying reasons but subject to conditions aimed at protecting the legitimate interests of the right holder. The conditions are contained in Article 31. These conditions include the obligation, as a general rule, to grant such licences only if an unsuccessful attempt has been made to acquire a voluntary licence on reasonable terms and conditions within a reasonable period of time; to pay adequate remuneration in the circumstances of each case, taking into account the economic value of the licence; and that decisions be subject to judicial or other independent review by a distinct higher authority. Members may relax certain of these conditions in cases of emergency and public noncommercial use and where compulsory licences are employed to remedy practices that have been established as anticompetitive by a legal process. The last module on TRIPS and Public Health will provide further information. f) What is the term of protection for patents? The minimum term of protection for patents is 20 years counted from the filling date of the patent application.

93 5. Industrial Designs Key Provisions Articles 25 to 26 a) What is the subject matter to be protected by industrial designs? Protection must be available for designs that are new or original and independently created. Members may provide that design protection shall not extend to designs dictated essentially by technical or functional considerations. Textile designs, which typically have a short life cycle and particularly liable to copying, are given special attention. Requirements for obtaining protection should not unreasonably impair the possibility of gaining that protection. b) Relevant WIPO convention Paris Convention c) What are the rights given to owners of protected industrial designs? Owners of protected designs must be able to prevent the unauthorized manufacture, sale or importation for commercial purposes of articles bearing or embodying a design which is a copy of the protected design. d) What are the permissible exceptions? WTO Members are allowed to provide for limited exceptions (another variation of the three-step test also available for copyright, trademarks and patents). e) What is the term of protection for industrial designs? The minimum term of protection is 10 years. Additional Resources (e)

94 6. Layout-designs (topographies) of integrated circuits Key Provisions Articles 35 to 38 a) What is a layout-design of integrated circuits? An integrated circuit (or chip ) is a three-dimensional layout of an integrated circuit. b) What is the subject-matter to be protected? Protection extends to layout-designs that are: original and not commonplace among creators of layout-designs and manufacturers of integrated circuits at the time of their creation. c) Relevant WIPO convention IPIC Treaty d) What are the rights conferred? Right holders have the right to prevent unauthorized reproduction and importation, sale or other distribution for commercial purposes of protected layout-designs. These prohibitions extent to integrated circuits incorporating such a design or articles which contain such integrated circuits. e) What are the permissible exceptions? There are a number of limitations and exceptions including compulsory licenses. As to compulsory licenses, the same conditions applicable in the patent area apply to layout-design of integrated circuits. f) What is the term of protection? The minimum term of protection is 10 years counted either from the date of filing or date of first commercialization.

95 7. Undisclosed information Key Provision Article 39 a) Trade secrets Protection must be provided to information that is secret, has commercial value and has been subject to reasonable steps to keep it secret. A person lawfully in control of such information must have the possibility of preventing it from being disclosed to, acquired by, or used by others without his consent in a manner contrary to honest commercial practices. b) Undisclosed test and other data The Agreement also requires Members to protect undisclosed test or other data, whose submission is required by governments as a condition of approving the marketing of pharmaceutical or agricultural chemical products which use new chemical entities. There are two forms of protection to be accorded to such test and other data. First, Members are required to protect such data against unfair commercial use. Second, they must protect it against disclosure, except where necessary to protect the public, or where steps are taken to ensure that the data are protected against unfair commercial use.

96 8. Control of Anti-competitive practices in contractual licences Key Provision Article 40 An important element of the overall balance embodied in the TRIPS Agreement is a recognition of the legitimate role of competition law and policy (laws and related policies that address anticompetitive practices of enterprises) vis-a-vis IPRs and licensing practices. Anti-competitive practices are practices or conditions that may constitute an abuse of IPRs having an adverse effect on competition on the relevant market. The TRIPS Agreement recognizes the right of Members to take measures to prevent or control anti-competitive abuses of IPRs as long as these measures are consistent with the Agreement. It contains a short illustrative list of practices that may be treated as abuses. The Agreement establishes a consultation procedure for mutual acceptance between Members in such cases.

97 Additional resources 1) Understanding the WTO Agreement Basic introduction to TRIPS: _e/agrm7_e.htm E-Learning course on TRIPS: 2) WIPO website What is IP? a) WIPO - What is copyright? b) WIPO - What is a trademark? c) WIPO - What is a geographical indication? e) WIPO - What is an industrial design? 3) WIPO online course: Primer on IP (DL OO1): _learning/dl001.html Case studies a) Copyright: Rock n Roll in Bangladesh - Protecting Intellectual Property Rights in Music: udies_e/case3_e.htm b) Protecting the Geographical Indication for Darjeeling Tea: udies_e/case16_e.htm d) WIPO - What is a patent?

98 Take away Copyright Related rights What?/ Categories of holders Relevant WIPO Convention Main rights Main limitations and exceptions Minimum term of protection Literary and artistic works Berne Convention Economic rights (reproduction, rental, public performance ) - Free uses, non-voluntary licences - Limitations and exceptions (three-step test) Life of author + 50 years Performers, producers of phonograms, broadcasting organizations Rome Convention Economic rights Depending on the right holder (fixation, reproduction, rebroadcasting...) Similar to copyright 50 years (performers and phonogram producers), 20 years for broadcasters TRIPS provisions Articles 9-13 Article 14

99 Take away Trademarks Geographical indications Covers Goods, services Goods Relevant WIPO Convention Paris Convention Paris Convention Main rights Against likelihood of confusion Against misleading, act of unfair competition Higher protection for wines and spirits Main limitations and exceptions Minimum term of protection Under negotiations/ discussions Limited exceptions (variation of three-step test) 7 years (renewable indefinitely) Generic terms, prior rights Negotiations on GI register for wines and spirits Extension of higher protection beyond wines and spirits TRIPS provisions Articles Articles 22 24

100 Take away Patents What? Possible exclusions from patentability Condition Relevant WIPO Convention Main rights Main limitations and exceptions Minimum term of protection Under review/discussions Inventions over products, processes (new, inventive step, industrial applicability) - Contrary to public order or morality - Methods for treatment of humans or animals - Plants, animals (plant varieties must be protected) Disclosure Paris Convention Making, using, selling, importing Limited exceptions (variation of three-step test) Compulsory licences 20 years - Option to exclude plants and animals inventions subject to review under DDA - Relationship between TRIPS & CBD, protection of traditional knowledge and folklore TRIPS provisions Articles 27 34

101 Test your knowledge! Match each type of IPR with the corresponding WIPO convention or treaty: Berne Convention Paris Convention IPIC Treaty Rome Convention Patents Trademarks Copyright Industrial designs Rights related to copyright Layout-designs of integrated circuits Geographical indications

102 Test your knowledge! Answer: Berne Convention Paris Convention IPIC Treaty Rome Convention Copyright Patents Layout-designs of integrated circuits Rights related to copyright Trademarks Geographical indications Industrial designs

103 Test your knowledge! Match the following concepts with the corresponding statement: Plant varieties Test applicable to permissible exceptions and limitations to copyright (a variation of this test applies to trademarks and patents). Three-step test Geographical indications for these products enjoy a higher level of protection. Wines and spirits They are protected even if the trademark is not registered in the country where protection is claimed. Well-known trademarks Members must protect them by patents, by an effective sui generis system or by a combination of both.

104 Test your knowledge! Answer: Plant varieties Test applicable to permissible exceptions and limitations to copyright (a variation of this test applies to trademarks and patents). Three-step test Geographical indications for these products enjoy a higher level of protection. Wines and spirits They are protected even if the trademark is not registered in the country where protection is claimed. Well-known trademarks Members must protect them by patents, by an effective sui generis system or by a combination of both.

105 Test your knowledge! 1. Copyright and related rights Are the following statement s True or False? Copyright protects literary and artistic works, which cover computer programmes and databases. According to the three step test: 1. The limitations or exceptions must be confined to certain special cases; 2. They shall not conflict with a normal exploitation of the work; and, 3.They shall not unreasonably prejudice the legitimate interests of the right holder. The minimum term of copyright protection is the life of the author and 70 years. 2. Trademarks Are the following statement s True or False? Signs that are capable of distinguishing the goods and services of one undertaking from those of others are eligible for trademark protection. The concept of likelihood of confusion is key to trademark protection. The minimum term of protection for trademarks is 7 years. 3. Geographical indications Are the following statement s True or False? The main requirement for GI protection is that there is a linkage between the quality, reputation or other characteristics of the good and its geographical origin. All GIs for all goods enjoy the same level of protection. Negotiations on a multilateral system of notification and registration of GIs for wines and spirits eligible for protection in those Members participating in the system are being pursued in the TRIPS Council. 4. Patents Are the following statement s True or False? Inventions contrary to ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment may be excluded from patentability. Article 27.3(b)) concerning the option to exclude from patentability certain plant and animal inventions is currently being reviewed by the Members. Compulsory licensing, including government use without the authorization of the right holder, are allowed but with limitations as to the grounds or underlying reasons.

106 Test your knowledge! 1. Copyright and related rights Copyright protects literary and artistic works, which cover computer programmes and databases. True According to the three step test: 1. The limitations or exceptions must be confined to certain special cases; 2. They shall not conflict with a normal exploitation of the work; and, 3.They shall not unreasonably prejudice the legitimate interests of the right holder. True The minimum term of copyright protection is the life of the author and 70 years. False 2. Trademarks Signs that are capable of distinguishing the goods and services of one undertaking from those of others are eligible for trademark protection. True The concept of likelihood of confusion is key to trademark protection. True The minimum term of protection for trademarks is 7 years. False 3. Geographical indications The main requirement for GI protection is that there is a linkage between the quality, reputation or other characteristics of the good and its geographical origin. True All GIs for all goods enjoy the same level of protection. False Negotiations on a multilateral system of notification and registration of GIs for wines and spirits eligible for protection in those Members participating in the system are being pursued in the TRIPS Council. True 4. Patents Inventions contrary to ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment may be excluded from patentability. True Article 27.3(b)) concerning the option to exclude from patentability certain plant and animal inventions is currently being reviewed by the Members. True Compulsory licensing, including government use without the authorization of the right holder, are allowed but with limitations as to the grounds or underlying reasons. False

107 Test your knowledge! Complete the following statements: 1. With the exceptions of the provisions on, all other provisions of the Berne Convention are incorporated by reference into the TRIPS Agreement. 2. The minimum term of copyright protection is the life of the author and after his death. 3. Signs that are capable of distinguishing the goods and of one enterprise from those of another are eligible for protection. 4. One of the exceptions to the protection of GIs applies in respect of terms that have become in the local language. 5. An applicant for a patent must the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art. 6. and are the two exceptions allowed to patent rights. compulsory licences disclose moral rights fifty years generic trademark limited exceptions services

108 Test your knowledge! Answer: With the exceptions of the provisions on moral rights, all other provisions of the Berne Convention are incorporated by reference into the TRIPS Agreement. The minimum term of copyright protection is the life of the author and fifty years after his death. Signs that are capable of distinguishing the goods and services of one enterprise from those of another are eligible for trademark protection. One of the exceptions to the protection of GIs applies in respect of terms that have become generic in the local language. An applicant for a patent must disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art. Limited exceptions and compulsory licences are the two exceptions allowed to patent rights.

109 Lesson C. 1st Part Enforcement of IPRs, WTO Dispute Settlement & other provisions

110 Objectives of Lesson C Lesson C will allow you to: Get familiar with certain horizontal provisions contained in the TRIPS Agreement, in particular: Understand why there are provisions on the enforcement of IPRs Understand that different enforcement obligations may apply according to the type of IPR Understand the role of the WTO inter-governmental dispute settlement mechanism (DSM) for the resolution of TRIPS disputes among Members

111 1. Enforcement (1) Key Provisions Articles 41 to 61 In a Nutshell: Enforcement refers to the procedures that have to be made available by Members to permit prompt and effective action against any act of infringement of IPRs covered by the TRIPS Agreement. As you have seen in this course, IPRs grant exclusive rights to their owners, which enable them to prevent others from undertaking certain acts without their authorization. Those rights may be infringed in several ways, either accidentally or deliberately. Infringement occurs when an act, which is inconsistent with the rights of the owner of the IPR and is not subject to an admissible exception, is undertaken. Typical examples are:

112 Enforcement (2) Key Provisions Articles 41 to 61 There is little value in developing substantive standards of IP protection if the right holder is not in a position to enforce them effectively through fair and expeditious procedures, in particular in an environment in which modern technologies have significantly facilitated the infringement of IPRs. Part III of the TRIPS Agreement specifies the procedures and remedies that must be available so that right holders can effectively enforce their rights. The Agreement also provides for safeguards against the abuse of such procedures and remedies as barriers to legitimate trade. The basic principles of the TRIPS Agreement apply to the provisions on enforcement of IPRs along with other aspects of IP protection. The TRIPS Agreement is the first multilateral treaty with detailed rules on the enforcement of IPRs, although earlier IP treaties, notably the Paris and Berne Conventions, do have some provisions specifically on enforcement.

113 Enforcement (3) Key Provisions Articles 41 to 61 The Agreement provides general obligations and specifies the civil and administrative procedures and remedies, including provisional measures, which must be available in respect of acts of infringement of any covered intellectual property right. In addition, as regards trademark counterfeiting and copyright piracy, Members are required to make available border measures and, when counterfeiting or piracy is wilful and on a commercial scale, criminal procedures. General obligations Civil and administrative procedures and remedies Provisional measures Border measures Criminal procedures All infringements Trademarks counterfeiting and copyright piracy

114 2. Acquisition and maintenance of IPRs Key Provision Article 62 In a Nutshell: To ensure that unnecessary procedural difficulties in acquiring or maintaining IPRs are not employed to impair the protection required by the Agreement. Part IV contains only general rules on procedures related to the acquisition and maintenance of IPRs, particularly concerning how applications for IP protection are administered and the kind of appeals or reviews that should be available. Certain more specific rules are to be found in Part II and the relevant WIPO conventions. The TRIPS Agreement allows Members to require, as a condition of the acquisition or maintenance of rights related to trademarks, GIs, industrial designs, patents and layout-designs, compliance with reasonable procedures and formalities. Want to know more?

115 Want to know more - Acquisition and maintenance of IPRs Key Provision Article 62 The TRIPS Agreement allows Members to require, as a condition of the acquisition or maintenance of rights related to trademarks, GIs, industrial designs, patents and layoutdesigns, compliance with reasonable procedures and formalities. In addition: Where the acquisition of an IPR is subject to the right being granted or registered, the procedures must permit the granting or registration within a reasonable period of time so as to avoid unwarranted curtailment of the period of protection. Procedures concerning the acquisition or maintenance of IPRs and, where a Member s law provides for such procedures, administrative revocation and inter partes procedures such as opposition, revocation and cancellation, must be fair and equitable. Final administrative decisions must generally be subject to review by a judicial or quasijudicial authority. Certain more specific rules are found in Part II dealing with individual categories of IPRs and in the Paris Convention and the IPIC Treaty, which are incorporated by reference into the TRIPS Agreement.

116 3. Dispute Prevention and Settlement (1) Key Provision Article 64 In a Nutshell: An important feature of the TRIPS Agreement is that Member governments who wish to take action against an alleged violation of a TRIPS obligation may have recourse to the WTO dispute settlement mechanism (DSM). The WTO DSM allows WTO Member governments to enforce the rights and obligations under the TRIPS Agreement. The TRIPS provisions on dispute settlement are contained in Part V of the Agreement. Part V also provides rules on transparency, which will be introduced in the section explaining the work of the TRIPS Council (institutional arrangements). Important Note - Dispute settlement and TRIPS The TRIPS Agreement provides an operational system for the settlement of disputes between Members about compliance with their obligations relating to IPRs. Preexisting international law did not provide any practical means of recourse, at the multilateral level, to a government for enforcing IP obligations. Member governments who wish to take action against an alleged violation of a TRIPS obligation have recourse to the DSM. The DSM also applies to alleged violations of the Berne and Paris Convention, and other treaties, where incorporated into the TRIPS Agreement. Additional Resources (a)

117 Dispute Prevention and Settlement (2) As you will see later on in this course, the TRIPS Council constitutes a forum for consultations on any problems relating to TRIPS arising between Members. The aim is, whenever possible, to resolve differences between Members without the need for formal resource to the WTO DSM. Typically a dispute arises when a WTO Member adopts a trade policy measure that one or more Members consider to be contrary to the obligations set out in the WTO covered agreements, which include the TRIPS Agreement. The rules and procedures of the WTO DSM, as set forth in the Dispute Settlement Understanding ( DSU ), apply to formal consultations and the settlement of disputes under the TRIPS Agreement. Members are committed, if they wish to seek redress of a violation of a TRIPS obligation, to have recourse to and be abide by, the WTO dispute settlement procedures. Who can be party to WTO disputes? Only Member governments (including states or customs territories) can be party to WTO disputes. Additional Resources (a) Key Provision Article 64 Recall The WTO Dispute Settlement System The WTO dispute settlement system is one of the major results of the Uruguay Round. The system underscores the rule of law and makes the trading system more secure and predictable through the impartial an effective resolution of disputes between Members. The DSU sets out in considerable detail the procedures and the timetable for the various stages of a WTO dispute. The first formal stage is consultations. If no agreement is reached, the next stage is adjudication before the panels and, in case of appeal, before the Appellate Body. The rulings of panels and the Appellate Body have to be adopted by the Dispute Settlement Body (DSB) - the General Council - composed of all Members-, which is responsible for overseeing the entire dispute settlement process. A solution mutually acceptable to the parties to a dispute, and consistent with the covered Agreements, is to be preferred. The rules and procedures of the WTO dispute settlement system are embodied in the Understanding on Rules and Procedures Governing the Settlement of Disputes (DSU), contained in Annex 2 of the Agreement Establishing the WTO. If you want to know more about the WTO DSM, click on here.

118 4. TRIPS and Non-violation & situation complaints (1) Key Provision Article 64 A matter still unresolved concerns the applicability of the so-called non-violation and situation complaints to the settlement of disputes related to the TRIPS Agreement. Most complaints brought to the WTO DSS concern an alleged failure by another Member to carry out its obligations under WTO Agreements, including the TRIPS Agreement (known as violation complaints ). The second and third grounds for complaint allow a government to initiate proceedings even when an agreement has not been violated, so-called non-violation complaints and situation complaints. While the latter can be raised about other WTO Agreements, Members have agreed on a moratorium on the use of non-violation and situation complaints in the area of TRIPS most recently extended until the next ministerial meeting. What are non-violation & situation complaints? Non-violation complaints deal with a government s ability to bring a dispute to the WTO, based on loss of an expected benefit caused by another Member s actions even if no WTO Agreement or commitments have actually been violated. Situation complaints cover any other situation that results in nullification or impairment or through which the achievement of an objective is impeded. In general, the aim is to help preserve the balance of benefits struck during multilateral negotiations, recognizing that it is not possible or desirable to seek to regulate all government measures that may affect the value of such benefits. Additional Resources (b)

119 TRIPS and Non-violation & situation complaints (2) Key Provision Article 64 The moratorium on non-violation and situation complaints Initially, Article 64.2 of the TRIPS Agreement prevented the application of non-violation and situation complaints to disputes under the TRIPS Agreement within the first 5 years of the entry into force of the Agreement. Article 64.3 instructed the TRIPS Council to examine the extent and way ( scope and modalities ) in which complaints of this type could be made and make recommendations to the General Council. The moratorium on the use of non-violation and situation complaints has been extended a number of times. At the same time, the TRIPS Council has been instructed to continue its examination of the scope and modalities for these type of complaints and make recommendations (see also the section explaining the work of the TRIPS Council). Additional Resources (b) & (c) TRIPS Disputes As of April 2014, 34 disputes (out of 474) have cited the TRIPS Agreement in the request for consultations. This represents about 7% of cases filed under all WTO Agreements. A number of adopted reports refers mainly to the scope of allowable exceptions. For more information on WTO disputes concerning the TRIPS Agreement, including a list of all disputes, please visit the WTO website (disputes citing the TRIPS Agreement see also additional resources). To know more about the discussions taking place in the TRIPS Council on non-violation complaints: Secretariat summary note on non-violation complaints (IP/C/W/349/*). See also section explaining the work of the TRIPS Council.

120 5. Other provisions Key Provision Article 64 Other Provisions Security Exceptions In line with other WTO Agreements (the GATT for trade in goods and the GATS for trade in services), the TRIPS Agreement provides that it cannot be construed to require a Member to furnish information or to take action against essential security interests, nor to prevent action in pursuance of obligations under the UN Charter for the maintenance of international peace and security.

121 Additional Resources (a) WTO dispute settlement: spu_e.htm (a) WTO Interactive course on dispute settlement: sp_settlement_cbt_e/signin_e.htm (b) TRIPS and non-violation complaints: nviolation_e.htm (b) More information about non-violation complaints: rip_ss_25feb14_e.htm#nonviolation (b) Background note about the experience with non-violation complaints under the GATT/WTO: IP/C/W/124 also available in Documents online. (c) WTO disputes referring to TRIPS: ispu_agreements_index_e.htm?id=a26 (a) E-Learning course on Dispute settlement: (available soon) (a) WTO Analytical Index: alytic_index_e/analytic_index_e.htm (b) Secretariat summary note on non-violation complaints: IP/C/W/349/*) also available in Documents online.

122 Take away This lesson dealt with two different issues: 1. Enforcement: procedures and remedies that Member governments must make available so that IPR owners can enforce their rights. For all IPRs covered under TRIPS: general obligations, civil and administrative procedures and remedies, and provisional measures must be available. For trademark counterfeiting and copyright piracy only: also border measures and, when counterfeiting or piracy is wilful and on a commercial scale, criminal procedures. 2. The WTO dispute settlement mechanism (DSM): compulsory inter-governmental mechanism for the resolution of international trade disputes, including over TRIPS There have been more than 30 disputes in the area of TRIPS. Members have agreed on a moratorium on the use of non-violation and situation complaints in the area of TRIPS.

123 Test your knowledge! Complete the following statements: 1. There is little value in developing substantive standards of IP protection if the right holder is not in a position to them effectively. 2. Members are required to make available border measures for and. 3. Any Member who wishes to take action against an alleged violation of a TRIPS obligation can have recourse to the. 4. Only have the right to participate as a party in WTO disputes. 5. Members have agreed on a on the use of non-violation and situation complaints in the area of TRIPS. Member governments enforce trademark counterfeiting WTO dispute settlement mechanism (DSM) copyright piracy moratorium

124 Test your knowledge! Answer: 1. There is little value in developing substantive standards of IP protection if the right holder is not in a position to enforce them effectively. 2. Members are required to make available border measures for trademark counterfeiting and copyright piracy. 3. Any Member who wishes to take action against an alleged violation of a TRIPS obligation can have recourse to the WTO dispute settlement mechanism (DSM). 4. Only Member governments have the right to participate as a party in WTO disputes. 5. Members have agreed on a moratorium on the use of non-violation and situation complaints in the area of TRIPS.

125 Test your knowledge! Drag and match: All infringements Trademarks counterfeiting and copyright piracy General obligations Provisional measures Criminal procedures Border measures Civil and administrative procedures and remedies

126 Test your knowledge! Answer: All infringements Trademarks counterfeiting and copyright piracy General obligations Border measures Provisional measures Criminal procedures Civil and administrative procedures and remedies

127 Test your knowledge! True or False? True False WTO Members may initiate dispute settlement proceedings even when an obligation of the TRIPS Agreement has not been violated. Disputes among Member governments about compliance with TRIPS obligations can be subject to the WTO dispute settlement mechanism. Unauthorized reproduction of trademarks with the intention of passing off the good as a genuine product of the trademark owner would enable the right holder to use IPR enforcement procedures. Provisional measures must be available only for trademark counterfeiting and copyright piracy.

128 Test your knowledge! Answer: True False Disputes among Member governments about compliance with TRIPS obligations can be subject to the WTO dispute settlement mechanism. Unauthorized reproduction of trademarks with the intention of passing off the good as a genuine product of the trademark owner would enable the right holder to use IPR enforcement procedures. WTO Members may initiate dispute settlement proceedings even when an obligation of the TRIPS Agreement has not been violated. Provisional measures must be available only for trademark counterfeiting and copyright piracy.

129 Lesson C. 2nd Part Transitional arrangements, transfer of technology and technical cooperation

130 Objectives of Lesson C Lesson C will allow you to: Understand the rationale behind giving WTO Members and, in particular LDCs, transition periods to meet their TRIPS obligations Understand that technology transfer is one of the objectives of the TRIPS Agreement, which includes provisions aimed at promoting and encouraging the transfer of technology Get familiar with technical cooperation provision in favour of developing and LDC Members aimed at helping them to implement the Agreement

131 Transitional arrangements, technology transfer and technical cooperation When the TRIPS Agreement entered into force in 1995, many developing countries already had significant IP laws and administrative systems in place. But to implement the full set of TRIPS standards presented a significant challenge for most developing countries, as it involved substantial development of their laws and administrative systems. Developing countries were concerned, when implementing TRIPS standards, to ensure that their IP systems operated in a balanced and effective way as a tool of public policy since achieving this objective can call upon a wide array of technical, legal and policy expertise. An extended period was provided for developing countries and LDCs to implement TRIPS. In addition, to facilitate this implementation, developed countries agreed to provide, on request and on mutually agreed terms and conditions, technical and financial cooperation in favour of developing and LDC Members. Besides, the WTO Secretariat provides technical assistance to help developing and LDC Members implement the TRIPS Agreement and to better participate in the WTO work on TRIPS matters. 1. Transitional arrangements The TRIPS Agreement gave all Members transition periods to meet their obligations under it. These transition periods depend on the level of development of the country concerned. Except for LDC Members all transition periods have expired.

132 1. Transitional arrangements Additional Resources (1) Developed Members and Non- Discrimination Obligation Developed Members have had to comply with all provisions of the TRIPS Agreements since 1 January All Members, including those availing themselves of longer transitional periods, have had to comply with the NT and MFN obligations since According to the UN list of LDCs 1 January LDCs The transition periods depend on the level of development of the Member Developing countries and Economies in transition For developing countries, the general transition period was 5 years (until 1 January 2000). The same period was available for Members in transition from a centrally-planned into a market economy, subject to certain conditions. Developing countries that did not provide product patent protection in a given area of technology on 1 January 2000 could delay the application of the TRIPS obligations to such areas until 1 January Some special transitional arrangements apply to pharmaceutical and agricultural chemical products according to the mail-box provision by which patent applications for inventions can be filed (click on here to know more about this provision). The TRIPS Agreement recognizes the special needs of LDCs. It originally provided LDC Members a transition period until 1 January 2006, with an extension upon duly motivated request. With respect to certain obligations concerning pharmaceutical products, the TRIPS Council decided in 2002 to extend the transition period until 1 January In this connection, a waiver was also adopted concerning so-called exclusive marketing rights (click on here to know more). The general transition period for LDCs (except nondiscrimination) has been extended twice. First, it was extended until 1 July 2013, and then, until 1 July 2021 or when a country ceases to be in the LDC category. A process has also been set up to help LDCs implement TRIPS within their national IP regimes (click on here to know more). Acceding governments Any transition periods for acceding governments are set out in their protocols of accession. Apart from LDCs, newly acceded governments generally apply all relevant provisions of the TRIPS Agreement as of the date of entry into force of their membership to the WTO.

133 Want to know more (1) - Transitional arrangements Developing Countries mail box provision If a country did not provide patent protection for pharmaceutical and agricultural chemical products commensurate with the TRIPS provisions as of January 1995, some additional transitional arrangements apply. In accordance with the mailbox provision in Article 70.8 of the TRIPS Agreement, the country concerned is required to provide a means by which patent applications for such inventions can be filed. These applications do not need to be examined for their patentability until the country starts applying product patent protection in that area. However, when that time comes, the application has to be examined by reference to the prior art that had been disclosed when the application was first filed (i.e. the invention has to be assessed whether it was new as of that earliest date). If the application is successful, product patent protection would then have to be granted for the remainder of the patent term counted from the filing date of the application. If a product that is the subject of such a mail-box patent application has obtained a patent and marketing approval in another WTO Member jurisdiction, and obtains marketing approval before the decision on the grant of the patent is taken, there is an obligation under Article 70.9 to grant exclusive marketing rights for a period of up to five years or until the patent is granted or rejected, whichever is shorter. This is therefore subject to a number of conditions: subsequent to the entry into force of the WTO Agreement, a patent application must have been filed, a patent granted and marketing approval obtained in another Member for the product in question. These provisions were addressed in reports adopted by the Dispute Settlement Body in cases India Patents I and II (DS50 and 79). To know more about these disputes, click here (DS50) or here (DS79).

134 Want to know more (2) - Transitional arrangements LDCs - certain obligations with respect to pharmaceutical products Pursuant to the Doha Declaration on the TRIPS Agreement and Public Health, the TRIPS Council decided in 2002 to extend the transitional period for LDCs for certain obligations with respect to pharmaceutical products until 1 January 2016 (see document IP/C/25). Supplementing this Decision, the General Council adopted a waiver for the same period in respect of the obligations of LDC Members under Article 70.9 concerning so-called exclusive marketing rights. Thus, LDC Members availing themselves of the extended transition period are required to provide a mail-box if they do not already provide patent protection for pharmaceutical products, but the obligations in respect of exclusive marketing rights for such products have been waived until 1 January 2016 (see document WT/L/478). LDCs Extension of transitional period until 1 July 2021 The general transition period for LDCs to implement the TRIPS Agreement has been extended until 1 July 2021, or until such a date on which they cease to be an LDC Member, whichever date is earlier (IP/C/64). In the decision, LDC Members express their determination to preserve and continue the progress towards implementation of the TRIPS Agreement. This compromise replaced the non-rollback commitment of 2005 ( rollback is when an LDC that already complies with IP protection under the TRIPS Agreement in some form reduces the level of compliance). The decision also states that nothing shall prevent LDC Members from making full use of the TRIPS flexibilities to address their needs. That includes to create a sound and viable technological base and to overcome their capacity constraints supported by, among other steps, implementation of Article 66.2 by developed Members. This decision is without prejudice to the Decision of the TRIPS Council on extension of the transition period for certain obligations with respect to pharmaceutical products (IP/C/25), and to the right of LDC Members to seek further extensions of the period provided for in paragraph 1 of Article 66 of the Agreement.

135 To sum up: TRIPS Transitional arrangements Key Provision Article 65 and 66 LDCs Original Deadline 1 January 2006 LDCs 1 st Extension General Deadline 1 July 2013 LDCs 2 nd Extension General Deadline 1 July 2021 LDCs Certain Pharmaceutical Obligations 1 January 2016 Developed Members 1 January 1996 Developing countries & economies in transition 1 January 2000 Acceding governments As set out in their Protocol of Accession (apart from LDCs, generally as of the date of entry into force of their membership) 1995 WTO

136 2. Protection of existing subject-matter Want to know more? Key Provision Article 70 In a Nutshell: It relates to the treatment of subject matter existing at the time that a Member starts applying the provisions of the Agreement (e.g. already existing works, inventions or distinctive signs). The TRIPS Agreement generally applies to subject matter existing on the date of the application of the Agreement for the Member in question (i.e. at the end of the relevant transition period) and which is protected in that Member on that date, or which is still capable of meeting the criteria for protection (e.g. undisclosed information or distinctive signs not yet protected as trademarks). Additional Requirements in respect of pre-existing works and phonograms In respect of copyright and the rights of producers of phonograms (sound recordings) and performers in existing phonograms, there is an additional requirement to comply with Article 18 of the Berne Convention (so-called rule of retroactivity ). To know more about the rule of retroactivity, click on here. The interpretation of Article 70.2 was addressed in reports adopted by the Dispute Settlement Body on Canada Patent Term (DS170). To know more about the dispute, click on here. Additional Resources

137 Want to know more - Protection of existing subject-matter Additional Requirements in respect of pre-existing works and phonograms Article 18 of the Berne Convention includes the so-called rule of retroactivity, which applies not only in respect of the rights of authors but also of the rights of performers and producers of phonograms in phonograms. According to the rule of retroactivity, the Agreement applies to all works which have not fallen into the public domain either in the country of origin or the country where protection is claimed through the expiry of a term of protection. The provisions of Article 18 allow some transitional flexibility where a country is, as a result, taking subject matter out of the public domain and putting it under protection, to safeguard the interests of persons who have in good faith already taken steps on the basis of the material in the public domain (for example: a film producer that has already invested in the making of a film using a work that is brought under copyright). The application of Article 18 of the Berne Convention to the rights of producers of phonograms and performers in existing phonograms was addressed in two disputes in Japan Measures Concerning Sound Recordings (DS28 and 42). Both cases were settled bilaterally without panel reports.

138 3. Transfer of Technology Key Provisions Articles 7 and 66.2 Developing countries, in particular, see technology transfer as part of the bargain in which they have agreed to protect IPRs. The TRIPS Agreement includes a number of provisions on technology transfer. Specifically, the TRIPS Agreement requires developed Members to provide incentives to enterprises and institutions in their territories for the purpose of promoting and encouraging technology transfer to LDC Members in order to enable them to create a sound and viable technological base. In 2011, at the Doha Ministerial Conference, Ministers agreed that the TRIPS Council will put in place a mechanism for ensuring the monitoring and full implementation of these obligations. Additional Resources (2) To know more about technology transfer and to have access to documents, please click here. Recall that Article 7 (Objectives) recognizes that the protection and enforcement of IPRs should contribute to the transfer and dissemination of technology. In 2003, the TRIPS Council adopted a decision that put in place such mechanism (see document IP/C/28). Accordingly, developed Members submit annually reports on actions taken or planned in pursuance of their commitments on technology transfer under TRIPS (circulated in the IP/C/W series). (These submissions are reviewed by the TRIPS Council each year in order to provide Members an opportunity to, inter alia, discuss the effectiveness of the incentives provided in promoting and encouraging technology transfer to LDCs). See also Decision on Implementation of Paragraph 6 (introduced in the last lesson) and the Protocol amending it.

139 4. Technical Cooperation Key Provision Article 67 Developed Members are required to provide, on request and on mutually agreed terms and conditions, technical and financial cooperation in favour of developing and LDC Members in order to facilitate the implementation of the Agreement. The latter includes assistance in the preparation of laws and regulations on the protection and enforcement of IPRs, as well as on the prevention of their abuse. It also includes support regarding the establishment or reinforcement of domestic offices and agencies relevant to these matters, including the training of personnel. To facilitate the monitoring of compliance with this obligation and to make information on available assistance accessible, developed Members present descriptions of their technical and financial cooperation programmes and update them annually (they are available in the IP/C/W/- series of documents). In addition, each developed Member should notify a contact point for technical cooperation on TRIPS (see document IP/N/7 and revisions). See also Technical assistance provided by the WTO Secretariat. The WTO Secretariat also provides technical cooperation aimed at assisting Members to understand their rights and obligations, including the available policy options, which flow from the TRIPS Agreement and relevant decisions (see section on cooperation with WIPO). Additional Resources (3)

140 Additional Resources 1. Transitional arrangements: Transfer of technology: IP/C/W series of documents 3. Technical cooperation: Contact points for technical cooperation: IP/C/W series of documents Information on technical cooperation provided in the area of TRIPS, including by developed Members & their contact points, can be found in the WTO Documents Online Database.

141 Take away The TRIPS Agreement includes special and differential treatment provisions in favour of developing and LDC Members: Transitional arrangements: TRIPS gave developing and LDC Members longer transition periods to meet their obligations. At present, only LDCs still benefit from transitional arrangements. Technology transfer: developed Members are required to provide incentives to enterprises and institutions in their territories for the purpose of promoting and encouraging technology transfer to LDC Members. Technical cooperation: developed Members are required to provide, on request and on mutually agreed conditions, technical and financial cooperation in favour of developing and LDC Members to facilitate the implementation of the Agreement.

142 Test your knowledge! True or False? True The TRIPS Agreement recognizes the special needs and concerns of LDCs with regard to the IP system. Only the WTO Secretariat provides technical cooperation to developing and LDC Members for the implementation of the TRIPS Agreement. All newly acceded governments must apply all provisions of the TRIPS Agreement as of the date of entry into force of their WTO membership. False The TRIPS Agreement explicitly requires developed Members to provide incentives to enterprises and institutions in their territories for the purpose of promoting and encouraging technology transfer to LDC Members.

143 Test your knowledge! Answer: True False The TRIPS Agreement recognizes the special needs and concerns of LDCs with regard to the IP system. The TRIPS Agreement explicitly requires developed Members to provide incentives to enterprises and institutions in their territories for the purpose of promoting and encouraging technology transfer to LDC Members. Only the WTO Secretariat provides technical cooperation to developing and LDC Members for the implementation of the TRIPS Agreement. All newly acceded governments must apply all provisions of the TRIPS Agreement as of the date of entry into force of their WTO membership.

144 Test your knowledge! Match the following IPRs with the corresponding statement: They are required to comply with all provisions of the TRIPS Agreement since 1 January The general transition period for these Members to meet their TRIPS obligations ended on 1 January 2000, subject to certain conditions. Those Members that did not provide patent protection in a given area of technology on 1 January 2000 could delay the application of the TRIPS obligations to those areas until 1 January 2005 subject to the mail -box provision applicable to pharmaceutical and agricultural products. With respect to certain obligations concerning pharmaceutical products, the transition period for these countries was extended until 1 January The general transition period has been extended until 1 July LDC Members Economies in transition Developing Members All Members Developed Members They have to comply with the MFN and national treatment obligations since 1 January 1996.

145 Test your knowledge! Answer: They are required to comply with all provisions of the TRIPS Agreement since 1 January The general transition period for these Members to meet their TRIPS obligations ended on 1 January 2000, subject to certain conditions. Those Members that did not provide patent protection in a given area of technology on 1 January 2000 could delay the application of the TRIPS obligations to those areas until 1 January 2005 subject to the mail -box provision applicable to pharmaceutical and agricultural products. With respect to certain obligations concerning pharmaceutical products, the transition period for these countries was extended until 1 January The general transition period has been extended until 1 July LDC Members Economies in transition Developing Members All Members Developed Members They have to comply with the MFN and national treatment obligations since 1 January 1996.

146 Module 4 The work of the TRIPS Council & other matters

147 Objectives of Module 4 Module 4 will help you to: Understand the role of the TRIPS Council within the WTO organizational structure as the main forum for any issue concerning the functioning of the TRIPS Agreement Know the main fields of work of the TRIPS Council related to the monitoring of the Agreement Identify those issues that are at the moment subject of negotiations or review in special or regular sessions

148 The TRIPS Council As you already know, the TRIPS Council is the main forum for work on the TRIPS Agreement and is in charge of overseeing the functioning of the Agreement. The TRIPS Council is formed by representatives of all WTO Members and elects every year its own chairperson (a Member s representative, normally an Ambassador) to organize the work of the Council. The Council meets in regular sessions and special sessions, which are both open to all WTO Members. Other WTO mechanisms to promote dialogue between Members - including on TRIPS matters Beyond the TRIPS Council, other mechanisms can be used to promote dialogue between WTO Members, such as the consultations on TRIPS implementation issues that have been convened directly by the WTO Director-General, in line with the mandate given by the Hong Kong Ministerial Declaration pursuant to the Doha Declaration (paragraph 12). In addition, the Trade Policy Review Mechanism (TPRM) undertakes regular reviews of the trade policies of the WTO Members and this process regularly looks at IP policies as one of a wide range of policy fields covered. Key Provision Article 68 Recall Remember that Article 68 of the TRIPS Agreement should be read together with the provisions of the WTO Agreement, which serves as an umbrella Agreement for all other agreements and sets forth provisions on the functions, structure and decision-making bodies and procedures of the WTO. To see the WTO organization chart and the place of the TRIPS Council click on here. See also section on place of TRIPS in the WTO. A list of all current Chairpersons for all WTO bodies (including the TRIPS Council - regular and special sessions) can be found here. Additional Resources (1)

149 The TRIPS Council Key Provision Article 68 Monitoring the operation of the TRIPS Agreement Notifications Regular Session Review of national laws and regulations TRIPS Council Forum for consultations Click on each one to go to that corresponding section in the module Special Session Forum for further reviews Negotiations on the multilateral register for wines and spirits

150 The Council for TRIPS Regular Sessions Key Provision Article 63 In its regular sessions, the TRIPS Council mostly serves as a forum for discussion between governments of WTO Members on key issues. This work is often facilitated by the collection of information about the comparative approaches taken by Members in their national laws and policies through the notification process and through more specific surveys and questionnaires. a) Notifications Transparency is a fundamental principle of the WTO. Notifications allow all WTO Members to be informed about other Member s policies affecting trade. The TRIPS Agreement promotes transparency by requiring Members to make certain notifications to the TRIPS Council. The purpose is to assist the Council s work in monitoring the operation of the Agreement. What to notify? Laws and regulations by which they give effect to the Agreement, including any subsequent amendment, should be notified without delay as of the time that the corresponding TRIPS obligation has effect. In addition, Members respond to a Checklist of Issues on Enforcement (see document IP/C/5). Members availing themselves of certain possibilities provided for in the Agreement relating to substantive obligations (e.g. exceptions on beneficiaries eligible for protection on national treatment, MFN exceptions) have to notify to the Council. Members shall establish and notify contact points in their administrations for the purposes of cooperation with each other aimed at the elimination of trade in infringing goods. TRIPS Transparency toolkit webpage: Provides easy access to notifications and other reports from Members, related formats, guidelines and background materials. Notifications are circulated as IP/N/* -series of documents. To know more about notifications in the area of TRIPRS, please refer to Guide to TRIPS Notifications. Additional Resources (a)

151 The Council for TRIPS Regular Sessions b) Review of national laws and regulations A key mechanism for monitoring implementation of the TRIPS Agreement is the examination of each Member s national legislation by other Members, in particular at the end of its transition period. The procedures for the reviews provide for written questions and replies prior to the review meeting, with follow-up questions and replies during the meeting. At subsequent meetings of the Council an opportunity is given to follow up points emerging from the review session that delegations consider to have not been adequately addressed. The records of these reviews are circulated in the IP/Q/* series of documents. c) Forum for consultations The TRIPS Council is a forum for consultations on any problems relating to the TRIPS Agreement arising between Members, as well as for clarifying or interpreting its provisions. Members occasionally bring such issues before the Council for the purposes of sharing information, clarification or discussion. To the extent they involve differences between Members, the aim is, whenever possible, to resolve them without the need for formal recourse to dispute settlement. Additional Resources (b)

152 The Council for TRIPS Regular Sessions d) Forum for further negotiations and review The TRIPS Council also constitutes a forum for further reviews of the TRIPS Agreement. Certain specific areas of further work are called for in the text of the Agreement ( built-in agenda ). These areas include: Negotiations of a multilateral system of notification and registration for GIs for wines (see next section: Special session of the TRIPS Council). Review of Article 27.3(b) (which concerns the option to exclude from patentability certain plant and animal inventions); and, Other reviews Besides, Article 71.1 provides for a general review of the implementation of the TRIPS Agreement in the year 2000, and each two years after that date. The Council may also undertake reviews in the light of any relevant new developments which might warrant modification or amendment of the Agreement. These provisions have led to an item appearing on the agenda of the TRIPS Council regularly. Additional Resources (c) Examination of the applicability to TRIPS of non-violation complaints under the dispute settlement mechanism (DSM). (See also section on dispute settlement and nonviolation complaints)

153 The Council for TRIPS Regular Sessions Work on the relationship between the TRIPS Agreement and the Convention on Biological Diversity (CBD), and the protection of traditional knowledge and folklore also takes place in regular session of the TRIPS Council. In addition, consultations on two outstanding implementation issues, namely on the extension of the higher level of protection required for GIs for wines and spirits to other products and the relationship between the TRIPS Agreement and the CBD have been undertaken pursuant to para. 12 of the Doha Ministerial Declaration and subsequent declarations. Additional Resources (c)

154 The Council for TRIPS Special Sessions The Trade Negotiations Committee (TNC), set up by the Doha Ministerial Declaration, was assigned to create subsidiary negotiating bodies to handle negotiations for different topics, among them the special sessions of the TRIPS Council. The special session serves as a forum for negotiations on the establishment of a multilateral system for notification and registration of GIs for wines and spirits, as mandated by Article 23.4 of the TRIPS Agreement and the Doha Ministerial Declaration (para. 18). Additional Resources (d)

155 Cooperation with WIPO and other international organizations The WTO Secretariat cooperates with a range of intergovernmental organizations on intellectual property issues, as appropriate. Cooperation with the World Intellectual Property Organization (WIPO) As set out in the Preamble to the TRIPS Agreement, the WTO aims to establish a mutually supportive relationship with WIPO. To facilitate the implementation of the TRIPS Agreement, the WTO concluded with WIPO an agreement on cooperation between the two organizations, which came into force on 1 January The agreement provides for cooperation with WIPO in three main areas: Notification of, access to and translation of national laws and regulations Implementation of procedures for the protection of national emblems Technical cooperation Additional Resources (2)

156 Cooperation with WIPO and other international organizations a) Notification of, access to, and translation of national laws and regulations The WTO Secretariat transmits to the WIPO Secretariat copies of the laws and regulations it has received from Members. The International Bureau of WIPO places such laws and regulations in its collection and makes them available to the public through the WIPO Lex search facility, which can be accessed through the WIPO GOLD online database (see box below). In 2010, the two organizations established a WIPO WTO Common Portal that allows countries to simultaneously electronically submit texts of IP laws and regulations to the two organizations. WIPO also makes available to developing countries assistance for translation of their laws and regulations. b) Implementation of procedures protection of national emblems The procedures relating to communication of national emblems and transmittal of objections under the TRIPS Agreement shall be administered by the WIPO Secretariat in accordance with the procedures it applies under Article 6ter of the Paris Convention which has been incorporated into the TRIPS Agreement. Their communication through WIPO Secretariat is considered as communications for purposes of the TRIPS Agreement. WIPO Gold database: WIPO WTO Common Portal: tal.html

157 Cooperation with WIPO and other international organizations c) Technical cooperation The Agreement provides that the WIPO and WTO Secretariats enhance cooperation in their legal- technical assistance and technical cooperation activities relating to the TRIPS Agreement for developing countries, so as to maximize the usefulness of those activities and ensure their mutually supportive nature. The assistance they make available to the members of their own organization will be made available also to the members of the other organization.

158 Additional resources WTO official website on TRIPS: s_e.htm 1. TRIPS Council Work of the TRIPS Council - Regular Session: /intel6_e.htm a) Notifications TRIPS Transparency toolkit: /trips_toolkit_e.htm Guide to TRIPS Notifications: /ta_docs_e/app1_e.pdf c) TRIPS Council - Regular Session Article 37.3(b), traditional knowledge, biodiversity: e/art27_3b_e.htm The Doha Declaration explained: /dohaexplained_e.htm#trips d) TRIPS Council- Special Session: e/intel6_e.htm Multilateral register for wines and spirits: e/gi_background_e.htm#wines_spirits b) Review of Implementing Legislation: /intel8_e.htm

159 Additional resources 2. Cooperation with other intergovernmental organizations: WIPO: WIPO Gold database: WIPO WTO Common Portal: World Health Organization (WHO): WIPO-WHO-WTO cooperation on IP and public health:

160 Take away The TRIPS Council is the WTO body in charge of overseeing the functioning of the TRIPS Agreement. It has the following main functions: Notification and review of national laws and regulations Forum for consultations among Members on any concern relating to the Agreement Forum for further negotiations and review: Negotiations of a multilateral system of notification and registration of GIs for wines and spirits Review of Article 27.3(b) which concerns the option to exclude from patentability certain plant and animal inventions Examination of the applicability to TRIPS of non-violation and situation complaints under the WTO DSM Work on the relationship between the TRIPS Agreement and the CBD and the protection of traditional knowledge and folklore Extension of the higher level of protection required for GIs for wines and spirits to other products

161 Test your knowledge! Match the following IPRs with the corresponding statement: Notifications Review of national laws and regulations TRIPS Council regular session TRIPS Council special session It serves as a forum for consultations among Members on any matter concerning the TRIPS Agreement. They allow all WTO Members to be informed about other Member s policies affecting trade. Forum created by the Trade Negotiations Committee (TNC) to handle negotiations on TRIPS matters. It enables monitoring the implementation of the TRIPS Agreement in particular at the end of its transition period.

162 Test your knowledge! Answer: Notifications Review of national laws and regulations TRIPS Council regular session TRIPS Council special session It serves as a forum for consultations among Members on any matter concerning the TRIPS Agreement. They allow all WTO Members to be informed about other Member s policies affecting trade. Forum created by the Trade Negotiations Committee (TNC) to handle negotiations on TRIPS matters. It enables monitoring the implementation of the TRIPS Agreement in particular at the end of its transition period.

163 Test your knowledge! Match the following concepts with the corresponding statement: The WTO aims to establish a mutually supportive relationship with it to facilitate the implementation of the TRIPS Agreement Their purpose is to assist the TRIPS Council in its monitoring of the Agreement Forum for negotiations on the establishment of a multilateral system for notification and registration of GIs for wines and spirits Forum for further reviews of the TRIPS Agreement Their purpose is to resolve differences between Members without need of formal recourse to dispute settlement TRIPS Council-Special session TRIPS Council-Regular session Informal consultations Notifications Cooperation with WIPO

164 Test your knowledge! Answer: The WTO aims to establish a mutually supportive relationship with it to facilitate the implementation of the TRIPS Agreement Their purpose is to assist the TRIPS Council in its monitoring of the Agreement Forum for negotiations on the establishment of a multilateral system for notification and registration of GIs for wines and spirits Forum for further reviews of the TRIPS Agreement Their purpose is to resolve differences between Members without need of formal recourse to dispute settlement TRIPS Council-Special session TRIPS Council-Regular session Informal consultations Notifications Cooperation with WIPO

165 Module 5 TRIPS and Public Health

166 Objectives of Module 5 Module 5 will allow you to: Understand the rationale and importance behind the adoption of the Doha Declaration on TRIPS and Public Health Understand in what way certain TRIPS flexibilities were clarified by this Declaration Get familiar with other important issues pertaining to TRIPS and public health in particular the paragraph 6 system

167 Doha Declaration on TRIPS and Public Health You have read about the Doha Declaration on the TRIPS Agreement and public health several times in this course. This section will introduce this important Declaration adopted by the Members at the Fourth Ministerial Conference in Doha, Qatar, in Background The TRIPS Agreement represents an attempt to balance, on the one hand, the interest of providing incentives for research and development of new pharmaceutical products and, on the other, of making these drugs as widely accessible as possible to patients needing them. The Declaration on TRIPS and Public Health responded to concerns about the possible implications of the TRIPS Agreement for public health, in particular access to patented medicines. What does the Declaration on TRIPS and public health say? The Declaration emphasized that the TRIPS Agreement does not and should not prevent Members from taking measures to protect public health and reaffirmed the right of Members to fully use the flexibilities available in the Agreement for that purpose. It made clear that the Agreement should be interpreted and implemented in a manner supportive of Members right to protect public health and, in particular, to promote access to medicines for all. It highlighted the importance of the objectives and principles of the Agreement regarding the interpretation of its provisions. Additional Resources (1 & 4)