WIPO NATIONAL SEMINAR ON INDUSTRIAL PROPERTY AND ON THE IMPLEMENTATION OF TRIPS OBLIGATIONS IN THE PURSUANCE OF

NATIONAL PUBLIC POLICIES AND GOALSDamascus, May 28 and 29, 2008

International Protection of Industrial Property: Main Objectives, Principles,

Obligations and Flexibilities

WIPO Secretariat

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1. Objectives of international protection of IP

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. To prevent “free riding”

. To secure international transactions

. To obtain trade-related concessions

. To attract or maintain foreign direct investment

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2. Main principles of international protection of industrial property

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Under the Paris Convention:

- national treatment- independence (of patent and

trademark rights) - exceptions to novelty: priority and

temporary protection

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Under the TRIPS Agreement

- national treatment- most favoured nation treatment

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The national treatment under Paris gave rise to what was called the “asymmetries” in patent protection, in the sense that Parties could adapt the level of patent protection to their perceived national interests.

The TRIPS Agreement established horizontal minimum standards with the main objective of eliminating those asymmetries, in particular in the pharmaceutical field.*

*The entertainment industry was another major concern of the proponents of TRIPS negotiations

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Do you want the evidence? Just look at the TRIPS Agreement: it contains

6 provisions dealing explicitly with health and pharmaceutical products (8.1, 27.2, 27.3, 39.3, 70.8 and 70.9)

6 provisions dealing implicitly with health and pharmaceutical products (20, 27.1, 31(b), 65.4, 70.6, 70.7)

2 post-1994 measures dealing with health and pharmaceutical products: the Doha Declaration and proposed Article 31bis

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3. Main TRIPS obligations in the field of industrial property

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The TRIPS Agreement is formed by 6 components:

- general provisions and basic principles- standards in the areas of copyright and related rights,

trademarks, geographical indications, industrial designs, patents, layout-designs of integrated circuits, and undisclosed information; incorporation of most standards contained in the Paris and Berne Conventions as well as in the IPIC Treaty

- enforcement- acquisition and maintenance of IP rights and related

inter partes procedures- dispute prevention (transparency) and settlement- transitional arrangements- institutional arrangements and final provisions

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(i) In the field of trademarks, the TRIPS Agreement contains two new elements:

- protection of well-known trademarks against dilution- trademarks may be assigned without the need to assign the business to which it belongs and there shall be no compulsory licenses of trademarks

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(ii) In the field of geographical indications, 4 new elements:

- harmonization of their definition- obligation to protect them as such- additional protection for gi’s for wines and spirits- exceptions

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(iii) In the field of industrial designs, 2 new elements:

- protection may be granted on grounds of either novelty or originality - special regime for industrial designs of textiles

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(iv) In the field of patents, 6 new elements:

- prohibition against discrimination as to the field of technology

- proibition of the requirement of local exploitation- limits to exclusions from patentability- minimum mandatory conditions as regards compulsory licenses- minimum term of protection- swiss pipeline (mail box and exclusive marketing rights)

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(v) In the field of layout-designs, the IPIC Treaty (with amendments) was finally approved. The most important amendment was:

- limits to conditions under which compulsory licenses can be granted (the same that apply to patents also apply to layout-designs)

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(v) In the field of trade secrets, three new elements:

- acknowledgement that trade secrets are covered by the Paris Convention- definition of trade secrets and elements of protection- protection of test data in respect of certain products and provided certain conditions are met

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4. Flexibilities

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Even if the TRIPS Agreement eliminated (for WTO Members) the asymmetries of the Paris Convention, it has retained some flexibilities, which Members can use for pursuing national public policies, such as access to pharmaceutical products

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“Flexibilities” mean those alternative ways in which TRIPS Agreement obligations can be transposed into national law in a fashion that accommodates perceived national interests and yet complies with TRIPS requirements.

There are four “clusters” of flexibilities:

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1. Flexibilities as to the use of transitional periods

2. Flexibilities as to the method of implementing TRIPS obligations

3. Flexibilities as to substantive standards of protection (upwards or downwards)

4. Flexibilities as to mechanisms of enforcement

Additionally, WTO Members are free to extend protection to areas not covered by the TRIPS Agreement as they see fit (i.e., without the need to comply with TRIPS provisions and principles)

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In another way of putting the same broad notion of flexibilities, one can say that flexibilities can be used in three different moments:

(a) before the right is acquired;(b) once the right is acquired, in

dimensioning it; and(c) once the right is acquired and

dimensioned, in using and enforcing it.

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(a) Use of flexibilities to ensure that titles of industrial property rights are appropriately acquired

- in the field of trademarks

- formal requirements (measures that avoid the registration of functional marks; lists of nationally well-known marks; protection against dilution: registered or non-registered trademarks)

- substantive requirements (non-inherently distinctive marks [colors; non-visually perceptible marks; marks that are included in the farmacopeia of the WHO])

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(a) Use of flexibilities to ensure that titles of industrial property rights are appropriately acquired

- in the field of patents

- formal requirements (disclosure requirement)- substantive requirements (invention v.

discovery; invention v. quasi-invention [ex. second medical uses; new forms, etc];

- to obtain information on any search or examination carried out in other countries, results of those examinations, etc

- to accept the possibility of seeking technical advice from other governmental agencies (for example, the Ministry of Health)

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(a) Use of flexibilities to ensure that titles of industrial property rights are appropriately acquired

- in the field of test data

- substantive requirements (novelty of chemical entities; chemical entity v. uses, formulations, etc; non-disclosure; substantive efforts);

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(b) Use of flexibilities to ensure that industrial property rights are appropriately dimensioned

- in the field of trademarks

- exceptions and internal limitations (use of marks as information to consumers – comparative publicity)

- external limitations (limitations to use in medical prescriptions; obligation to use in conjunction with licensees’ marks)

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(b) Use of flexibilities to ensure that industrial property rights are appropriately dimensioned

- in the field of patents

- exceptions and internal limitations (such as compulsory licenses, including the Decision of the WTO GC of August 30, 2003; use for research purposes; exhaustion; etc)

- external limitations (price controls)- expropriation and revocation of rights

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(b) Use of flexibilities to ensure that industrial property rights are appropriately dimensioned

- in the field of test data

- exclusive or non-exclusive protection (right-to-remuneration)

- if exclusive protection: exceptions and internal limitations (such as compulsory licenses, use for research purposes, “Bolar-type” exemption, etc)

- external limitations (price controls)

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(c) Use of flexibilities to ensure that rights are appropriately used and enforced

- in the fields of trademarks, patents and test data

- IP abuses and antitrust practices (preventive control of abusive and anti-competitive clauses in licensing agreements [Art. 8.2 and 40])

- the principle of equity and the problem of injunctions

- ex officio v. private actions

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Thank you.

If you have any questions do not hesitate to send them to

nuno.carvalho@wipo.int