Main Legal Options and Flexibilities under the TRIPS Agreement

Main Legal Options and Flexibilities under the TRIPS Agreement

Islamabad, 27 November 2007

Octavio Espinosa

WIPO

WIP

OLegal options and flexibilities under

international agreements

• Basic principle: National sovereignty

– National law is established by the competent bodies of a sovereign State. Those bodies have sovereign power and freedom (under a national constitution) to implement national policies and attain national objectives

– A State may accede to an international treaty that may limit the freedom of that State to legislate. However, accession to such treaty and the consequential limitation to that State’s freedom to legislate are an exercise of the State’s sovereignty

– Tacit freedom: national sovereignty and freedom to legislate remain intact in all areas not covered by an international treaty

WIP

OLegal options and flexibilities under TRIPS

Agreement

• Different sorts of legal options and flexibilities

– Tacit options and flexibilities:

• WTO Members are free to legislate on IP matters not covered by TRIPS (provided such legislation is consistent with TRIPS)

– General legal options and flexibilities:

• TRIPS recognizes expressly Members’ freedom to legislate or take other action (or not to do so) in respect of certain matters

• Apply to all objects of IP covered by TRIPS

– Specific legal options and flexibilities:

• apply specifically in respect of certain objects of IP covered by TRIPS

WIP

OGeneral legal options and flexibilities under

TRIPS Agreement (1/2)

• Nature and scope of obligations (Art. 1.1):

– Freedom to implement more extensive protection

– Freedom to determine the method of implementing TRIPS provisions within own legal system and practice

• Exceptions to national treatment and most favoured-nation treatment (Art. 3.2 and Art. 4)

• Rule of “exhaustion” of rights (“first sale” doctrine) (Art. 6): national (or regional), international

– parallel imports

• Objectives of TRIPS in protecting IPRs (Art. 7)

• Principles on legislating on IPRs and on prevention of abuse of IPRs (Art. 8)

WIP

OGeneral legal options and flexibilities under

TRIPS Agreement (2/2)

• Control of anticompetitive practices (Art. 40):

– Freedom to specify in national legislation licensing practices or conditions that may constitute an abuse of intellectual property rights having an adverse effect on competition in the relevant market

• Transitional periods for LDCs (Art. 65.4 and Art. 66):

– General TRIPS obligations come into force on July 1, 2013

– Obligations relating to protection of pharmaceutical inventions and to related undisclosed information come into force on January 1, 2016

WIP

OSpecific legal options and flexibilities –

Copyright and Related Rights (1/2)

• Definition of protected “work” (Berne Art. 2)

• Recognition of moral rights (Art. 9.1 + Berne Art. 6bis)

• Rights of broadcasting organizations: attributed to the authors of subject matter of the broadcasts (Art. 14.3)

• Rental of phonograms: option of equitable remuneration in lieu of exclusive rights (Art. 14.4)

• Limitations and exceptions under Rome Convention (Art. 14.6)

• Phonograms and broadcasts : choice of criteria of attachment (Rome Arts. 5.3 and 6.2)

• Performers: scope of rights after performance is broadcast with consent (Rome Art. 7.2(1))

• Sharing of single remuneration for performers and producers of phonograms (Rome Art. 12)

WIP


Copyright and Related Rights (2/2)

• Limitations and exceptions to exclusive rights (Art. 13):

– Limitations and exceptions must meet the three-step test

– Some usual limitations and exceptions:

• Private reproduction of a single copy for personal use• Temporary reproduction of a work during digital transmission• Quotations from a published work (Berne Art. 10.1))• Reproduction and other uses for teaching (Berne Art. 10.2)• Reproduction by libraries and archives including exchange• Reproduction, broadcasting or other communication of articles

published on current topics or of a broadcast • Use of work for purpose of comment, review, criticism thereon• Reproduction or adaptation of a computer program for proper use by

owner, or for backup purposes• Reverse engineering of a computer program • Other fair use: e.g. adaptation for visually impaired; ephemeral

recordings made by broadcasting organizations

WIP


Trademarks (1/2)

• Definition of “sign capable of distinguishing” (Art. 15.1)

• Require a mark to have distinctiveness acquired through use (“secondary meaning”) (Art. 15.1)

• Require a mark to be “visually perceptible” (i.e. exclude signs that are not visually perceptible (Art. 15.1)

• Require use of a mark as condition for registration (Art. 15.3)

• Freedom to establish grounds for refusal of registration (Art. 15.2 + Paris Art. 6(1))

• Term of registration of mark: not less than seven years (Art.18)

• Requirement of use of mark to maintain registration, and period of non-use for cancellation of registration (Art. 19.1)

WIP


Trademarks (2/2)



• Fair use of descriptive terms for characteristics, provenance, features, etc. of goods or services offered in commerce

• Fair use by traders of their own name, address, place of business and other true information in the course of trade

• Use of a third party’s trademark to indicate intended use, compatibility or adequacy of competing spare parts, accessories, etc.

• Use of a third party’s trademark to indicate availability or offer of (genuine) goods or services bearing that trademark

• Coexistence of a later geographical indication with an earlier registered mark (WTO panel report in US+ AU vs. EU)

• Other fair use: e. g. comparative advertising

WIP


Geographical Indications (1/2)

• Freedom to decide on the type of “legal means” to be made available for the protection of GIs (Arts. 22.2 and 23.1)

• Determination of the practical conditions under which homonymous indications will be differentiated from each other (Art. 23.3)

• Freedom to establish grounds for refusal of registration of a GI

WIP


Geographical Indications (2/2)

• Exceptions to the obligation to protect GIs (Art. 24):

– Continued use of GIs for wines & spirits (“grandfather clause”) (Art. 24.4)

– Acquired rights in trademarks that conflict with GIs (Art. 24.5)

– GIs identical with a term customary in common language as the common name for same goods or services (Art. 24.6)

– Fair use by other traders of their own name, place of business and other true information (Art. 24.8)

– Statute of limitations to challenge registration or use of adverse trademark (minimum five years) (Art. 24.7)

– GIs not protected in country of origin (Art. 24.9)

WIP


Industrial Designs

• Choice of criterion for protecting industrial designs and definition thereof:

novelty or originality (Art. 25.1)

• Option to protect textile designs via copyright (Art. 25.2)

• Duration of protection: minimum 10 years (Art. 26.3)

• Limitations and exceptions to exclusive rights (Art. 26.2):



• protection does not extend to features of shape that are determined by technical considerations or are functional

• “must fit” exception (e.g. spare parts, accessories, etc.)• “must match” exception (e.g. spare parts, crash parts)• reproduction and other uses for teaching, education, research • private reproduction for personal non-commercial use

WIP


Patents for Inventions (1/7)

• Definition of “invention” and of matter not regarded as

invention (Art. 27.1). Some examples:

• discoveries; laws of nature; products of nature; organisms found in nature and parts thereof

• methods of doing business, methods of playing games

• mathematical methods and formulae

• computer programs, software as such

• aesthetical creations, works of art

• matter and solutions that are not of “technical” nature

• Definition of “novelty”, “inventive step” and “industrial applicability” (Art. 27.1)

WIP



• Exclusions from patentability (Art. 27.2 and 3)

– The following matter may be excluded from patentability (even if they could be regarded as inventions):

• inventions the commercial exploitation of which would be detrimental to

– public order or morality– human, animal or plant life or health, or– the environment

• plants, animals (other than micro-organisms)

• essentially biological processes for the production of plants or animals

• diagnostic, therapeutic and surgical methods for treatment of humans or animals : under some laws these are not regarded as “industrially applicable”

WIP



• Patenting procedure (Arts. 29 and 62.1): Freedom to regulate matters such as:

– specification of invention: written description (plus deposit of biological material for certain biotechnological inventions)

• enabling disclosure: sufficient to put the invention to work

• indication of existing state of the art: disclosure of starting material, disclosure of source or origin of genetic resource or traditional knowledge used in invention

• indication of “best mode” for carrying out the invention

– claims: content and structure; unity of invention

– examination procedures

• formalities; substantive• reliance on earlier examination results in applicant’s corresponding foreign

applications and grants

WIP






• experimental use: only in respect of the invention itself, i.e. to test the invention, determine if disclosure (specification) is enabling

• regulatory approval: use for purposes of a procedure to obtain marketing clearance (e.g. “Bolar exemption”)

• use for academic, teaching or research purposes: e.g. in universities, R & D institutes, technical schools, etc.

WIP



• Other limitations and exceptions to exclusive rights (Art. 30):

– in case of biotechnological inventions:

+ farmer’s privilege – saving seed and reusing it in own farm

+ animal breeder’s privilege – using for own agricultural purpose

+ plant breeder’s exemption – use to breed new varieties

– private, non commercial use: use in private environment, not for profit

– prior user: invention was being used bona fide by a third person before priority date of patent application

– extemporaneous preparation of medicine under prescription

– inventions embodied in vehicles in transit (Paris Art. 5ter)

WIP



• Compulsory licenses and government use (Arts. 31 and 31bis; Paris Art. 5A(2))

– Grounds for compulsory licenses and government use are established by national law. Possible grounds include:

• public interest (including health, environment)

• emergency (including health, environment)

• national security

• anticompetitive practices: restrictive business practices, abuse of dominant market position; patent abuse or misuse (failure to supply market, excessive pricing, refusal to deal ?)

• technological link (dependency) on another patent or PBR

– Conditions, procedure and formalities for grant of compulsory licenses and for government use

WIP



• Term of patent: minimum 20 years (Art. 33)

– Maintenance fees

– Restoration or extension of patent term for in certain cases:

• Unreasonable delays

• Inventions subject to regulatory marketing approval

• Reversal of burden of proof in case of infringement of process patents: choice of criteria to shift the burden (Art. 34)

WIP

OSpecific legal options and flexibilities – Layout-Designs of Integrated Circuits

• Freedom of choice regarding legal form of protection (IPIC Art. 4)

• Conditions for protection (IPIC Art.7):

– Prior commercial exploitation

– Registration and time limit for filing

• Compulsory licenses possible (Art. 37.2)

• Term of protection: minimum 10 years (Art. 38)

– Choice of criteria to compute term

– Choice of “cap” at 15 years from creation

WIP

OSpecific legal options and flexibilities – Protection against Unfair Competition

• Freedom of choice regarding legal form of protection against acts of unfair competition (Paris Art. 10bis(1))

• Definition of “honest practices” (Paris Art. 10bis(2))

• Freedom of choice regarding legal form of protection of undisclosed information (Art. 39.1)

• Freedom of choice regarding legal form of protection of test or other data in connection with marketing approval procedures (Art. 39.3)

– Definition of “unfair commercial use” of data

– Definition of “disclosure” of data

– TRIPS-plus approaches in FTAs ?

WIP

O

Concluding remarks

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Main Legal Options and Flexibilities under the TRIPS Agreement

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