TRIPS 2.0 Flashcards
What are Intellectual Property Rights?
Intangible Property/Private Rights
They are rights given to persons over the creation of their minds. They usually give creator/inventor an exclusive right over the use of his/her creations/inventions for a certain period of time.
Broadly divided into two categories: copyright and related rights, and industrial property.
The TRIPS Agreement covers seven types of IPRs
Types of Intellectual Property
- Copyright and Related Rights
- Trademarks
- Geographical Indications
- Industrial Designs
- Lay-out Designs (Topographies) of Integrated Circuits
- Patents (+ sui generis protection)
- Protection of Undisclosed Information
WHY PROTECT INTELLECTUAL PROPERTY RIGHTS?
Equity/Human Rights rationale
Public Interest/Utilitarian rationale
Incentive function
encourage and reward creative work: individual authors, cultural industries
Technological innovation: means to finance research and development
Fair Competition
Distinctive signs stimulate and ensure fair competition among producers and traders
Why Protect IP?
Consumer Protection
Distinctive signs enable informed choices
Product Safety
Transfer of Technology
FDI, Joint Ventures & Licensing
IP Holders’ Perspective
Recognized as an objective under Art. 7
Proactive measures for the benefit of LDCs under Art. 66.2
Weight of empirical evidence points towards positive correlation
WHY AN AGREEMENT ON TRIPS?
Growing trade in counterfeit (trademark) goods and lack of common rules to deal with the problem
Perceived flaws of WIPO Conventions:
Absence of detailed rules on national enforcement
Absence of binding and effective dispute settlement mechanism
Computerisation and digital technology
Why Agmt. on TRIPs
Devpd & Devping accepted because:
Uruguay Round Trade-Offs
Balance and flexibility in TRIPS
Multilateral rule of law in IP (& trade) area
Consistent with move to more open and market-based economic policies
Alternative would have meant negotiating bilateral (or plurilateral) agmts.
Balance: exclusive rts subject to limitations
Balance between competing authors/producers
Balance and flexibility in TRIPS
Long term interest in promoting creativity and short term social interest in maximizing access
Interests of generators and users of IP
Members have clarified balance and, in one respect, amplified flexibilities in area of public health
Pre - TRIPS Agreement
WIPO-Administered Agreements
Berne Convention for the Protection of Literary and Artistic Works
Paris Convention for the Protection of Industrial Property
Several Others – about 18
Also, numerous other regional and bilateral IP protection agreements
THE DEVELOPMENT OF MULTILATERAL DISCIPLINES
Proposals that action should be taken in the GATT to control trade in counterfeit and pirated products were made by developed countries during the Tokyo Round. During the Uruguay Round, the developed countries proposed that the negotiations should not only cover trade in counterfeit and pirated goods, but also aim at developing minimum standards of protection for adoption by member countries.
THE DEVELOPMENT OF MULTILATERAL DISCIPLINES
There were several reasons behind the proposal of developed countries:
the loss of competitiveness in traditional sectors such as steel, textiles and clothing and manufactures and the changing economic activity in most developed countries.
the gradual removal of restrictions on foreign investment by a large number of developing countries; conclusion of joint ventures etc
technological advances in reproduction and imitation of products
THE DEVELOPMENT OF MULTILATERAL DISCIPLINES
Response of Developing countries:
Lukewarm response. Entertained thought that stronger protection of IP rights would lead to an increase in the prices of drugs and agricultural chemicals. Debate as to whether IP could be used as a tool for economic and social development.
THE AIDS crisis in sub-Saharan Africa highlights this problem. Should IP rights be strengthened at the expense of other policy objectives including health policy of a country?
Would stronger protection of IP encourage FDI?
Developing countries were quite worried about these problems, but nevertheless agreed to negotiations on IP. Quid pro quo?
THE DEVELOPMENT OF MULTILATERAL DISCIPLINES
It was against these concerns that the TRIPS Agreement was negotiated.
Negotiations launched in Punta del Este (Uruguay) - September 1986
Negotiations concluded towards the end of 1993
Text adopted at Marrakech (Morocco) - April 1994
“Incorporation” technique
The TRIPS Agreement builds on the main international conventions on IP rights by incorporating (by reference) most of their provisions. To ensure coherence To avoid re-opening of texts To negotiate the + elements To have a short but comprehensive text
STRUCTURE AND APPROACH OF THE TRIPS AGREEMENT
Basic principles and general obligations
Minimum standards of protection covering (i) the subject-matter to be protected, (ii) rights conferred; and (iii) term of protection
Domestic procedures and remedies for the enforcement of IPRs
Transitional provisions
STRUCTURE AND APPROACH OF THE TRIPS AGREEMENT
Minimal requirements/Minimum standards: Members can provide higher protection
“Shall provisions” and “may provisions”
TRIPS to be read in conjunction with certain Treaties
Each section dealing with a particular type of IP right:
Definition (if possible)
Conditions for protection
Exclusive rights
Exceptions and limitations to exclusive rights
Minimum duration of protection
Nature and Scope of Obligations
Article 1:
Members MAY provide greater protection
Members free to determine appropriate method of implementation
“Intellectual Property” refers to types of IP referred to in the Agreement
Beneficiaries
Article 1: Treatment to be applied to nationals of other Members Refer to relevant Conventions Industrial Property Copyright Related rights
Basic Principles
The cornerstone of the TRIPS Agreement is the non-discrimination principle.
Article 3 provides for national treatment:
“[e]ach Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals …”
Basic Principles
Article 4 provides for most-favoured-nation treatment:
“[w]ith regard to the protection of intellectual property, 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…”.
Exemptions:
Treaties on judicial assistance or law enforcement of a general nature
Berne/Rome Convention advantages granted on basis of treatment granted in another country
“Related rights” not provided for under Agreement
Rights under international agreements entered into before TRIPS Agreement came into force
Objectives: Preamble
Main Elements:
Reduction of distortions and impediments to trade
Promotion of effective and adequate IPR protection
Enforcement should not lead to barriers to trade
Cater to the special needs of Developing and Least-Developed countries.
Objectives : Art. 7
PROTECTION and ENFORCEMENT of IPRs to contribute to:
Promotion of technological innovation
Transfer and dissemination of technology
To mutual advantage of PRODUCERS and USERS of technological knowledge
In manner conducive to SOCIAL and ECONOMIC welfare
To BALANCE rights and obligations
Objectives : Art. 8
Members MAY adopt measures necessary to:
Protect public health and nutrition
Promote the public interest in sectors of vital importance to socio-economic and technological development
Prevent abuse of IPRs or practices which
Unreasonably restrain trade OR
Adversely affect international transfer of technology
Copyright:Substantive Principles
Berne Convention (1971) Three basic principles National treatment Automatic protection Independence of protection Works protected Minimum standards of protection Permissible exceptions Term of protection Appendix
Copyright:Berne Convention
The Berne Convention for the Protection of Literary and Artistic Works was concluded in 1886, but has been revised several times. 176 States party.
Article 9(1) of the TRIPS Agreement incorporates Articles 1-21 of the Berne Convention (Paris Act 1971) and the Appendix thereto by reference.
Exception is Article 6bis dealing with moral rights on which there was no consensus among WTO Members.
Copyright:NT, Automatic & Independence of Protection
National Treatment: No discrimination between nationals and foreigners
Automatic protection: Protection should not be made subject to any formality of registration, deposit or the like.
Independence of Protection: Enjoyment and exercise of rights granted is independent of the existence of protection in the country of origin
Coypright:Subject Matter
What IS protected?
Art. 9(2) TRIPS and Article 2 Berne Convention
All forms of “expressions ” –
Every production in the literary, scientific and artistic domain, whatever the mode or form of its expression
Article 10 TRIPS
Computer programs -
Source or object code
Compilations of data -
Machine-readable or other form which by reason of selection or arrangement
Involve intellectual creation
Coypright:Subject Matter
What IS NOT protected?
Article 9(2) TRIPS Ideas, procedures, methods of operation or mathematical concepts -
Coypright:Exclusive Rights
Berne Convention:
Right of translation
Right of reproduction
Right of public performance, including communication to public
Right of broadcasting, including communication to public
Right of public recitation
Right of adaptation, arrangement and other alteration
Coypright:Exceptions
Berne Convention
Reproduction in special cases
Quotations and use of works by way of illustration for teaching purposes
Reproduction of newspapers to report current events
Ephemeral recordings
TRIPS Agreement, Art. 13:
Limitations/Exceptions to exclusive rights confined to
Special cases which
Do not conflict with normal exploitation
Do not unreasonably prejudice legitimate interests of right holder
Coypright:Term of Protection
Berne Convention, Art. 7
Life of author + 50 years after death
TRIPS Agreement, Art. 12:
If term of protection calculated on basis OTHER than life of natural person
>= 50 years from end of calendar year of authorised publication
if no authorised publication within 50 years from making of work, 50 years from end of calendar year of making
Related Rights:Performers
Art 14. 1 TRIPS Agreement
Prevent unauthorised broadcasting and communication to public of performance
Prevent unauthorised fixation
Prevent reproduction of fixation
Other Related Rights:
Producers of Phonograms Broadcasters Right to prohibit Fixation Reproduction of fixations Rebroadcasting
Related Rights:Exceptions and Limitations
Art. 14.6 TRIPS Agreement
Refers to Rome Convention:
Private Use
Short excerpts for reporting current events
Ephemeral fixation by broadcasting organisations for its own broadcasts
Teaching or scientific research
Related Rights:Term of Protection
Art. 14.5 TRIPS Agreement
For Performers and Phonogram producers:
>= 50 years from end of calendar year in which:
Fixation was made OR
Performance took place
For Broadcasting Organizations:
>= 20 years from end of calendar year in which broadcast took place
Trademarks:Paris Convention
Refer to Paris Convention (1967) including Articles
4 : Priority
- C: Use
6bis: Well-known Marks
6quinquies: Registration & eligibility for protection in countries other than country of origin
6sexies: Protection of service marks
7: Nature of goods not obstacle to registration
7bis: Registration of collective marks
Trademarks:Subject Matter
Article 15 : SHALL obligation
Definition:
Sign or combination of signs
Capable of distinguishing the goods or services of one undertaking from those of other undertakings
Shall be capable of constituting a TM
Such signs shall be eligible for registration as TMs
Factors relevant to criterion of “distinctiveness”
TMs (ctnued)
Art. 15(2) – other grounds
Distinctiveness is the most important factor regarding TM registrability, but Art. 15(2) of TRIPs, Members not prevented from denying registrations of TMs on other grounds (eg against morality/public order (my own example), provided they do not derogate from provisions of Paris Convention.
Trademarks:Subject Matter
Illustrative list of signs capable of constituting a TM
Inclusive List:
Personal names e.g.
Letters e.g.
Numerals
Figurative elements
Combinations of colours
Trademarks:Registration
Additional Requirements for Registration
Art. 15.1 : MAY provision
Where signs are not inherently capable of such distinction, registrability may be made dependent on distinctiveness acquired through use
Members may require, as a condition of registration, that signs be visually perceptible.
Art. 15.3: MAY provision
Where registrability is made dependent on use, actual use of a trademark shall not be a condition for filing an application for registration
Note that Service marks must be protected in same way as marks distinguishing goods
Trademarks:Exclusive Rights
Article 16.1: What can a TM owner do?
Prevent 3rd parties
Using
In course of trade
Identical/similar signs
For goods/services
Identical/similar to registered trademark
Likelihood of confusion
Likelihood of confusion PRESUMED in case of
identical sign for idential goods/services
Trademarks:Exceptions
Article 17
Limited exceptions to exclusive rights such as:
Fair use of descriptive terms
Take account of legitimate interests of:
Owner
3rd Parties
Trademarks:Cancellation
Article 19
If use is required to maintain registration, cancellation cannot take place before three years of uninterrupted non-use
Circumstances beyond control of owner recognised as legitimate, e.g. import or other government restrictions
Art 20: Use of the trademark shall not be unjustifiably encumbered by special requirements, such as use with another trademark, in special form, or in a manner detrimental to its capability of being distinguished from other goods or services
Trademarks:Term of Protection
Article 18
Initial registration and each renewal:
>= 7 years
Renewable indefinitely
Geographical Indications:Subject Matter
Article 22.1 Definition: Indication Identify a good as originating in Member's territory Region or locality in that territory Quality, reputation or other characteristic of good Essentially attributable to its geographical origin
GIs
Relatively wide definition
Reflected in great majority of WTO Members’ laws
Only goods
Geographical Indications:Exclusive Rights
Article 22.2(a): Applies to ALL goods and is a SHALL provision
Prevent use of any means
In designation or presentation of a good
Indicates/suggests
Good in question originates in a geographical area
Other than true place of origin
Manner which misleads the public as to geographical origin of the good
Geographical Indications:Exclusive Rights
Article 22.2(b): Applies to ALL goods and is a SHALL provision
Prevent any use
Constitutes an “act of unfair competition” under Article 10bis Paris Convention (1967):
“Act of competition contrary to honest practices in industrial or commercial matters”
Geographical Indications:Wines and Spirits
Article 23:
Additional Protection
ONLY for wines and spirits
Geographical Indications:Exceptions
Article 24:
- 4: Continuous use
- 5: Prior trademark rights
- 6: Generic terms
- 8: Use of person’s name or name of person’s predecessor in business
- 9: No/cessation of protection in country of origin OR fallen into disuse
Geographical Indications:Multilateral Register-Wines
Article 23.3 & 4:
Facilitate protection of GIs for wines
Art. 23.4: Establishment of a multilateral system of notification and registration of
Geographical Indications for wines
Eligible for protection in participating Members
Industrial Designs:Subject Matter
Article 25.1:
NO definition BUT
Members SHALL provide protection:
“Independently created industrial designs”
Members MAY provide that NO protection:
Designs dictated essentially by technical OR functional considerations
Industrial Designs:Conditions for Protection
Article 25.1:
Independently Created
New or Original
Significantly differ from known designs or combinations of known designs
Industrial Designs:Textiles
Article 25.2:
Requirements for protecting textile designs
Shall not unreasonably impair opportunity to seek and obtain protection
Industrial design law OR copyright law
Industrial Designs:Exclusive Rights
Article 26.1:
Right to prevent 3rd parties from Making Selling Importing Articles embodying protected design Copy/substantially a copy of protected design For commercial purposes
Industrial Designs:Exceptions
Article 26.2
Limited exceptions to exclusive rights
Do not unreasonably conflict with the normal exploitation
Do not unreasonably prejudice legitimate interests of
Owner
Taking into account legitimate interests of third parties
Industrial Designs:Term of Protection
Article 26.3
at least 10 years
Integrated Circuits:Subject Matter
Article 35:
Layout-designs (topographies) of integrated circuits
In accordance with
Articles 2 - 7 (except Article 6(3)), Article 12 and Article 16(3) of IPIC
AND to comply with additional provisions in the TRIPS Agreement
Integrated Circuits:Term of Protection
Article 38 -
at least 10 years from
Date of filing of an application for registration OR
First commercial exploitation
Patents
Article 27.1:
Members must make “patents“ available
Patents must be availabe and patent rights enjoyable without discrimination as to:
place of invention
field of technology
whether products are imported or locally produced
Patents: Definition
Article 27 defines “patentable subject-matter“ as:
Any inventions
Whether products or processes
In all fields of technology
Patents:Conditions for Patentability
Article 27.1 specifies the conditions for patentability:
New (i.e. novelty)
Involve an inventive step (non-obvious)
Capable of industrial application (useful)
Patents:Exceptions (1)
Article 27.2: Ordre Public or Morality
Inventions may be excluded from patentability if:
prevention of commercial exploitation of invention is necessary within Member´s territory
to protect ordre public or morality
Including to:
protect human, animal or plant life or health
avoid serious prejudice to the environment
Patents:Exceptions (3
Article 27.3 (b): Other
Members may exclude from patentability:
plants and animals and biological process
May not exclude micro-organisms such as bacteria, yeast etc.
May not exclude non-biological and microbiological processes:
for producing plants or animals
resulting in useful substances etc.
Patents:Exceptions
Debate spawned by Article 27.3(b): Biodiversity Traditional knowledge Farmers´ rights Recent progress in biotechnology and genetic engineering has raised many issues including whether compensation should be provided to traditional communities when inventions draw on knowledge existing in these communities. For centuries, parts of plants (roots, barks, leaves, flowers and fruits) have been used in some traditional communities to treat certain sicknesses such as malaria and arthritis, etc.
Relevance of Doha Ministerial Declaration
Para 12 mandates examination of:
Relationship between the TRIPS Agreement and the CBD
Traditional knowledge
Other new developments raised under TRIPS Article 71.1
Para 12 also states that: “In undertaking this work, the TRIPS Council shall be guided by the objectives and principles set out in Articles 7 and 8 of the TRIPS Agreement and shall take fully into account the development dimension.”
Relevance of Doha Ministerial Declaration
Para 4 of Doha Ministerial Declaration on the TRIPS Agreement and Public Health:
"We agree that the TRIPS Agreement does not and should not prevent Members from taking measures to protect public health. Accordingly, while reiterating our commitment to the TRIPS Agreement, we affirm that the Agreement can and should be interpreted and implemented in a manner supportive of WTO Members' right to protect public health and, in particular, to promote access to medicines for all."
Relevance of Doha Ministerial Declaration
A Proposal received from a group of developing countries stresses the need to modify the TRIPS Agmt, as it contains no provisions to prevent biopiracy (illegal access and use) or ensure prior informed consent and the fair and equitable sharing of benefits.
Relevance of Doha Ministerial Declaration
Proposal that applicants for patents should be able to disclose source of origin of the biological resource & associated traditional knowledge; and evidence of prior informed consent and benefit-sharing.
Developed countries, particularly EU, US & Japan opposed amendment of TRIPS Agmt as, in their view, there is no conflict between CBD and TRIPS.
It is the view of the US that the disclosure requirements being demanded by developing countries would be incompatible with the TRIPS Agmt, as it would add a new condition which is not specified in the Agreement.
Patents:Exclusive Rights
Article 28:”Rights Conferred”
Products: to prevent third parties not having the owner´s consent from the acts of making, using, offering for sale, selling, or importing for these purposes that product;
Processes: to prevent third parties not having the owner´s consent from the acts of using the process, and from the acts of using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process.
Patents:Exclusive Rights
Nature of exclusive rights
NEGATIVE right of the patentee to PREVENT third parties from engaging in acts without patent-holder´s authorization
The patent-holder does NOT have a right to do anything he or she wants in relation to the patent!
Patents
Article 29: Conditions on patent applications
Members shall require patent applicants to disclose invention:
manner sufficiently clear and complete for invention to be carried out by man skilled in the art AND
Members may require patent applicants to indicate:
Best mode for carrying out the invention known to inventor
Patents:Exceptions
Article 30: Exceptions to Rights Conferred
Members may provide limited exceptions to exclusive rights
Exceptions cannot unreasonably conflict
with normal exploitation of patent
do not unreasonably prejudice the legitimate interests of the patent owner
taking account of the legitimate interests of third parties.
Patents:Other Use
Article 31: Other Use Without Authorization of the Right Holder - Compulsory Licensing
Without discrimination
Applications to be considered on their individual merits
First, an unsuccessful attempt to reach agreement…
Scope and duration to be limited to purposes for which granted
Licences to be non-exclusive
Predominantly for supply of domestic market (F)
Right holder: adequate remuneration
Decisions on grant and remuneration to be subject to judicial or other independent review
Remember: Paragraph 6
Is addional flexibility made available to Members
Has to be seen in broader context, as part of wider national/int’l action (Doha Declaration)
Only applies to narrowly defined situations
Facilitates imports of medicines produced under CL elsewhere
Is primarily not about local production
Remember: Paragraph 6
Is about addressing a HEALTH problem in the importing Member
And a LEGAL problem in the exporting Member
Amendment to WTO AGMT
Amendment to TRIPS approved by WTO Members on Dec. 6, 2005.
Makes permanent a decision (“waiver”) on patents and public health 1st adopted in 2003
Makes it easier for poorer countries to obtain cheaper generics of patented medicines
Enters into force when two-thirds accept. Set themselves until December 1, 2007 for that
Amendment WTO Agmt (ctnued
In December 2007, extended to Dec. 31, 2009, then to Dec. 2011
In Nov 2011, extended again to Dec. 2013, then to Dec. 2015
Again extended to Dec. 2017
Entered into force January 2017
As at March 2018, applies to 125 WTO Members
Nov. 30, 2017, GC extended to Dec. 31, 2019
Types of Enforcement
Two types of “Enforcement” available under TRIPs
National procedures and remedies for effective enforcement of IPRs (“Enforcement”)
Mechanism for settlement of disputes between WTO Members about compliance with TRIPS obligations (“Dispute settlement”)
Enforcement: General
Five sections
(1) General obligations; (2) Civil and administrative procedures and remedies; (3) Provisional measures; (4) Border Measures; and (5) Criminal procedures
Two main objectives:
To permit effective action against IPR infringement including
expeditious remedies to prevent infringement
deterrent remedies
To avoid creation of barriers to legitimate trade and to provide for safeguards against abuse of procedures
Enforcement: General
General obligations
Members obliged to have procedures that permit effective action against infringement, but should ensure that such procedures do not impede legitimate trade
They must meet basic requirements of due process, such as being fair and equitable
They should not be unduly complicated or costly, nor operating without unreasonable time-limits or delays
Members must provide for judicial review
Enforcement: Civil and Administrative Procedures and Remedies
Civil judicial procedures to be made available to rights owners to enforce their legitimate rights
Requiring the opposing party to produce relevant evidence
Injunctions to prevent infringement of rights
Damages to be awarded against infringers to compensate for injury as well as legal costs
Forfeiture of infringing goods, and of materials and instruments used to produce them, and to their disposal or destruction
Enforcement: Provisional Measures
Judicial authorities should be able to order prompt and effective judicial measures to prevent:
any intellectual property right being infringed
the preservation of evidence relating to the alleged infringement
Under certain circumstances (irreparable damage to the interests of the rights holder, the imminent destruction of evidence), measures could be taken without a prior hearing of the views of the infringer
Prompt notice of action to be given thereafter to the infringer
The revocation of the provisional measures if action not commenced by the rights owner at the request of the infringer
Payment of compensation when provisional measures are revoked or no infringement found
Enforcement: Border Measures
Rights owners must be capable of obtaining the cooperation of customs authorities to suspend release of infringing goods into free circulation
Application must be in writing and prima facie evidence of infringement provided to customs. Information about the subject goods to permit identification must also be provided
Customs must inform the right-holder if application has been accepted and how long the measures will be taken
Remedies should include destruction or disposal of the infringing goods in a way that avoids harm to the right-holder, e.g., goods may not be re-exported unaltered
De minimis provision
Right-owner may be required to lodge security and provide compensation when infringement is not found
Alleged infringers to be promptly informed of the decision to suspend circulation of goods and provision to be made for the review of the decision
Goods to be released if no follow-up action taken to the original application within 10-20 working days
Enforcement: Criminal Procedures
Criminal procedures and penalties should be available to deal with wilful trademark counterfeiting or copyright piracy on a commercial scale. Remedies should include imprisonment and fines sufficient to provide a deterrent
Forfeiture of infringing goods, and of materials and instruments used to produce them, and to their disposal or destruction
Note that under Art. 69 of the TRIPS Agreement, contact points are required to be established by Members to exchange information on trade in infringing goods, and generally promote cooperation between customs on trade in counterfeit and pirated goods
Transitional Arrangements
1 January 1995: Entry into force
1 January 1996: Developed countries
1 January 2000: Developing countries & Economies in Transition
1 January 2006: Least-developed countries (possibility of extension). For pharmaceutical patents, extended to 2016 (subsequently to 2033). For others, to 2013
June 2013, extended to “July 2021, or until such a date on which they cease to be LDC, whichever is earlier”