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FURTHER READING . THE WTO 2. STANDARDS OF PROTECTION IN RELATION TO SPECIFIC TYPES OF INTELLECTUAL PROPERTY RIGHTS • • • • • • • Copyright Trademark Geographical indications Industrial designs Patents Layout designs of integrated circuits Undisclosed information 7. FEATURES OF THE TRIPS AGREEMENT • • • Standards Enforcement Dispute resolution 5. THE TRIPS AGREEMENT AND INTERNATIONAL DEVELOPMENT 9. TYPES OF INTELLECTUAL PROPERTY RIGHTS 4.TABLE OF CONTENTS 1. IMPLEMENTATION 8. GENERAL PRINCIPLES • • Non-discrimination Exhaustion of intellectual property rights 6. THE TRIPS AGREEMENT 3.
but the stagnation of the most recent Doha Round suggests that the Uruguay Round. Intellectual property is property that takes the form of ideas or knowledge. Types of intellectual property rights The TRIPS Agreement covers the following main types of intellectual property rights: • • • copyright and related rights. The fundamental purpose of intellectual property rights is to encourage creative work. The traditional mercantilist approach was that close government regulation was necessary to encourage exports and discourage imports. 1 . Intellectual property rights are rights that certain people have to use intellectual property exclusively. which itself forms part of the Final Act embodying the results of the Uruguay Round of Multilateral Trade Negotiations. Whether that theory holds for all countries remains a matter for debate. However. during which the TRIPS Agreement was concluded. economists have produced a wealth of evidence suggesting that if individual countries focus on producing the goods and services that they can produce most efficiently (in relation to which they have a “comparative advantage”). trademarks. this principle was not widely accepted. originally signed in 1947 but since refined through a series of negotiations conducted over the succeeding fifty years (referred to as “rounds”).1. The WTO The Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement) is a multilateral agreement administered by the World Trade Organisation (the WTO). For example. such as agriculture. Historically. Economists argue that the protection of intellectual property rights has important implications for international trade and international development. 2. which allows him or her to use it and to prevent others from using it without his or her consent. The TRIPS Agreement focuses on the regulation of intellectual property rights and is designed to ensure that adequate protection exists for intellectual property rights internationally. Technically. all countries ultimately benefit. services. In addition to the TRIPS Agreement. The WTO. the TRIPS Agreement is not itself an independent treaty. which provides many of the general fundamental principles of the international trading systems. 3. It oversees a range of “covered agreements” which set out the results of specific trade discussions concluded between the WTO’s participant countries (referred to as “member states”). According to the theory. the covered agreements include the General Agreement on Tariffs and Trade (the GATT). The WTO continues to encourage trade negotiations. which diminish market access for legitimately traded goods and impact negatively on international trade (and therefore global welfare). the creator of a musical composition may obtain a copyright in respect of that composition. The efficacy of the theory from the perspective of international development is explored in more detail in section 8 below. it is Annex 1C to the Agreement Establishing the World Trade Organisation. and indeed the entire international trading system. More recently.1 The WTO was established in 1995 to facilitate negotiations within the international trading system. The TRIPS Agreement Apart from the GATT. whereas a compact disc containing a recorded performance of that composition is an item of physical property. may have provided the last major multilateral advances for some time. especially among developing countries. Somewhat confusingly. is founded on the principle that international trade is globally beneficial. a failure to protect intellectual property rights can result in piracy and counterfeiting. safeguards or dispute resolution. objections to free trade do remain and its effects are acknowledged to be economically painful in some circumstances. a musical composition is a piece of intellectual property. as opposed to property that takes tangible or physical form. geographical indications. the covered agreements tend to address a specific trade topic. For example.
and the permissible exceptions to the standards of protection.1 In relation to each type of intellectual property right. and parties have an opportunity to have final administrative decisions reviewed by the courts. The main aspects of these standards of protection are: • • • • the subject matter to be protected. the permissible exclusions from the subject matter to be protected. is contained in section 6 below. and it provides for the resolution of disputes arising between member states in relation to the TRIPS Agreement in accordance with the WTO’s dispute resolution procedures. the TRIPS Agreement sets out minimum standards of protection that countries must provide. patents. The TRIPS Agreement establishes such standards of protection in two ways: • it obliges member states to comply with the Paris Convention for the Protection of Industrial Property (1967) (the Paris Convention) and the Berne Convention for the Protection of Literary and Artistic Works (1971) (the Berne Convention) – apart from the Berne Convention provisions on moral rights. 4. Standards 4. it provides rules for the enforcement of intellectual property rights in member states. and undisclosed information. decisions on the merits of a case are in writing and reasoned. and it places certain additional obligations on member states beyond those contained in the Paris Convention and the Berne Convention. are made available to parties without undue delay and are based on evidence in respect of which parties were offered the opportunity to be heard.• • • • industrial designs. layout design of integrated circuits. the substantive provisions of these conventions are incorporated by reference through the TRIPS Agreement and therefore apply to all member states. Enforcement • 4. For example. Features of the TRIPS Agreement The TRIPS Agreement has three main features: • • • it sets out minimum standards for the protection of intellectual property rights that member states must provide. are not unnecessarily complicated or costly and do not entail unreasonable time limits or unwarranted delays. along with the substantive provisions of the TRIPS Agreement that apply to it. A detailed discussion of each type of intellectual property right.2 The TRIPS Agreement sets out certain general principles in relation to the enforcement of intellectual property rights under the domestic law of member states. member states must ensure that: • • • enforcement procedures under domestic law are fair and equitable. the rights to be conferred (including the minimum duration of the protection). .
On the other hand. the holder of a parallel intellectual property right in another state is not entitled to control its importation or resale based on that parallel intellectual property right. This principle is not found in either the Paris Convention or the Berne Convention. if a member state applies the doctrine of domestic exhaustion. This principle is also found in both the Paris Convention and the Berne Convention. The doctrine of international exhaustion provides that if a product is lawfully placed on the market in one state. As such. the holder of the intellectual property right has no power to restrict that importation. The national treatment principle prohibits discrimination by a member state between its own nationals and the nationals of other member states. the issue of the exhaustion of intellectual property rights has important implications for trade. and the exhaustion of intellectual property rights. The two main types of general principles relate to: • • 5. 5.4. 5.1 non-discrimination. The doctrine of domestic exhaustion provides that if a product is lawfully placed on the market in one state. the general concept manifests itself in two more specific principles: • • the national treatment principle.2 Exhaustion of intellectual property rights The rules governing exhaustion of intellectual property rights determine whether intellectual property rights may be used to control the further disposition of a product after it is first sold (in other words. the holder of a parallel intellectual property right in another state is entitled to control its importation or resale based on that parallel intellectual property right. There are two different jurisprudential approaches to the exhaustion of rights: • • the doctrine of international (or universal) exhaustion. On one hand. the rules determine how far intellectual property rights extend). The rules relating to exhaustion of rights affect the issue of parallel (or grey-area) imports. This means that the WTO’s standardised dispute resolution provisions contained in the GATT and the Dispute Settlement Understanding apply. if a member state applies the doctrine of international exhaustion. The most-favoured nation principle prohibits discrimination by a member state between the nationals of two different member states. Non-discrimination The general principle of non-discrimination between products from different countries pervades all of the covered agreements. which are products that are lawfully placed on the market in one state and imported into another state without the approval of the intellectual property right holder.3 Dispute resolution Disputes between member states that arise out of the TRIPS Agreement are resolved pursuant to the WTO’s dispute settlement procedures. and the doctrine of domestic (or territorial) exhaustion. and the most favoured nation principle. In the TRIPS Agreement (as in most of the WTO’s other covered agreements). General principles The TRIPS Agreement also contains certain general principles that pertain to all types of intellectual property rights. . the holder of the intellectual property right has the power to restrict that importation.
Such works include written works. reputation or another characteristic of a good is essentially attributable to the geographic origin of the good. 6. lectures.3 Geographical indications Member states must provide protection for geographical indications. . which are indications that identify a good as originating in the territory of a member state.1 Copyright Under the TRIPS Agreement. since such a description suggests that the wine has a particular quality or reputation. 6. where the quality. Member states must provide a copyright holder with the rights set out in the Berne Convention. Limitations or exceptions to the copyright holder’s rights are restricted to cases which do not conflict with a normal exploitation of the work and which do not unreasonably prejudice the legitimate interests of the copyright holder. Limited exceptions to the rights of a trademark owner are permitted. or any combination of signs. drawings. and must ensure that registration is renewable indefinitely. 6. sculptures. These vary depending on the type of literary or artistic work. 6. and even then the owner of a trademark may prevent the cancellation by providing valid reasons for such non-use based on the existence of obstacles to use. paintings. architecture.The TRIPS Agreement expressly states that it contains no uniform rule of exhaustion of rights. The Doha Declaration on the TRIPS Agreement and public health (the Doha Declaration). where that use would result in a likelihood of confusion. Such protection must be given to the copyright holder for the life of the author of the relevant work plus fifty years after the author’s death. Member states must provide initial registration for a period of not less than seven years. but generally involve exclusive rights of use and rights to authorise others to use the work. capable of distinguishing the goods and services of one undertaking from those of any other undertaking. choreographic works. or any use which constitutes an act of unfair competition. musical compositions. This section briefly summarises those rules. or a region forming part of the territory of a member state. dramatic works. The TRIPS Agreement also extends the Berne Convention definition to include computer programs. provided that the exceptions take account of the legitimate interests of the trademark owner and of third parties. in a manner that misleads the public as to the geographical origin of the good. and state practice is divergent. Cancellation of a trademark is only permitted on the grounds of non-use if the non-use has continued for an uninterrupted period of three years. Standards of protection in relation to specific types of intellectual property rights The bulk of the TRIPS Agreement is devoted to setting out the rules governing relating the standards of protection that member states must apply to each type of intellectual property right. member states are required to provide copyright protection to certain literary and artistic works (as defined in the Berne Convention). cinematographic works. An example of a geographical indication is the description of a wine as being from Bordeaux. an important recent declaration of member states regarding the impact of the TRIPS Agreement on public health.2 Trademark Member states are required to provide trademark protection available in relation to any sign. photographic works and maps. confirms that states may elect to deal with exhaustion in a way that best fits their domestic policy objectives. The owner of a trademark must be granted the exclusive right to prevent third parties that do not have the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered. Interested parties must be given legal means to prevent: • • any aspect of the designation or presentation of a good that suggests that the good originates in a geographical area other than its true place of origin.
from making. therapeutic and surgical methods for the treatment of humans or animals. For example. “type”. where that wine or spirit does not in fact originate from the place indicated by the geographical indication.4 Industrial designs Member states must provide protection for independently created industrial designs that are new or original. “style” or “imitation”. that: • • • are new. and are capable of industrial application. the field of technology. For those goods. even if: • • the true origin of the wine or spirit is indicated. or whether the products are imported or locally produced. involve an inventive step. There are a number of exceptions to the protection of geographical indications. Patents must also be available without discrimination as to: • • • the place of invention. interested parties must be given the legal means to prevent the use of a geographical indication identifying a particular wine or spirit. diagnostic. 6. without the owner’s consent. or the geographical indication is used in translation or accompanied by expressions like “kind”. The owner of a protected industrial design must be granted the right to prevent third parties. Member states may exclude from patentability: • • • inventions. Limited exceptions may be provided to the protection of industrial designs. and protection is not available for designs dictated essentially by technical or functional considerations. .There are also particular rules that protect geographical indications for wines and spirits. provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the design. a member state need not provide protection for a geographical indication that has become a generic term for describing the good in question. The duration of the protection must be at least ten years. in all fields of technology. 6. selling or importing articles bearing a design which is a copy of the protected design. taking account of the legitimate interests of third parties. the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality.5 Patents Member states are required to make patents available in relation to inventions (whether products or processes). and plants and animals other than micro-organisms and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. when such acts are undertaken for commercial purposes. Member states may provide that: • • designs are not new or original if they do not differ significantly from known designs or combinations of known design features.
but are subject to conditions designed to protect the legitimate interests of the patent holder. offering for sale. to keep it secret. taking into account the legitimate interests of third parties. has commercial value because it is secret. in the sense that they are the result of their creators' own intellectual effort and are not commonplace among creators of layout designs and manufacturers of integrated circuits at the time of their creation. including those of reproduction. at least one of which is an active element.The minimum rights that must be provided to the holder of a patent are as follows: • • • where the subject matter of the patent is a product. selling or importing the product obtained directly from that process. protection is available to layout designs of integrated circuits that are original. Under IPIC. are integrally formed in and/or on a piece of material and which is intended to perform an electronic function. A layout design is the three-dimensional disposition of the elements. using. taken by the person lawfully in control of the information. and some or all of the interconnections. or such three-dimensional disposition prepared for an integrated circuit intended for manufacture. . 6. According to IPIC. but only if the following conditions are satisfied: • • • the exception is limited. offering for sale. These rights must be provided to the patent holder for a minimum period of twenty years from the filing date. and of some or all of the interconnections of an integrated circuit. 6.6 Layout designs of integrated circuits Member states are required to protect layout designs of integrated circuits in accordance with the provisions of the Treaty on Intellectual Property in Respect of Integrated Circuits (IPIC). the holder of rights in respect of a layout design of an integrated circuit has certain exclusive rights. where the subject matter of the patent is a process. and whether the subject matter of the patent is a product or a process. at least one of which is an active element. the right to prevent third parties from making. and has been subject to reasonable steps under the circumstances. sell or otherwise distribute the layout design of the integrated circuit for commercial purposes. According to IPIC. The TRIPS Agreement further provides that the right holder has exclusive rights to import. and the exception does not unreasonably prejudice the legitimate interests of the patent holder. Compulsory licensing and government use without the authorisation of the patent holder are allowed. selling or importing the product. The minimum period of protection is ten years from the filing date or the first commercial exploitation.7 Undisclosed information Member states must provide protection to information that: • • • is secret (in the sense that it is not generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question). Member states may provide for an exception to the rights of a patent holder. importation. the exception does not unreasonably conflict with the normal exploitation of the patent. sale and distribution for commercial purposes. the right to assign or transfer by succession the patent and to conclude licensing contracts. the right to prevent third parties from using the process and from using. an integrated circuit is a product in which the elements. concluded under the auspices of World Intellectual Property Organisation.
The eventual conclusion of the TRIPS Agreement was fundamentally a marriage of convenience between these two bargaining positions. such as agriculture. however. . The initial solution to this problem was the compulsory licensing regime. Inevitably. but a person lawfully in control of such information must have the possibility of preventing it from being disclosed to. Until 2005. since those countries would be in violation of their obligations under the TRIPS Agreement if they continued to permit domestic companies to produce generic pharmaceuticals for export in violation of patents held by other companies. From 1 January 2005. public health in developing countries was largely unaffected by the TRIPS Agreement. Developed countries and developing countries have tended to take different views on the benefits associated with protecting intellectual property rights. The TRIPS Agreement and international development • 8. member states were required to implement patent protection. This meant that exports of generic pharmaceutical products from developing countries became restricted. Implementation The TRIPS Agreement entered into force on 1 January 1995. The TRIPS Agreement was itself only concluded by means of significant compromises between developed countries and developing countries. However. Countries like India freely and legitimately permitted such manufacturing. Perhaps the clearest manifestation of this tension is the debate surrounding the impact of the TRIPS Agreement on public health in developing countries. which allows governments to permit the use of patented subject matter in contravention of a patent holder’s rights (see section 6. and were therefore willing to reach a compromise on intellectual property rights. Since the TRIPS Agreement did not require developing countries to recognise pharmaceutical patents in their domestic laws. The fundamental criticism of such protection by developing countries is that the costs of protecting intellectual property rights outweigh the sovereign benefits that accrue to them. The following timetable governs its implementation: • • developed countries were required to ensure that their domestic laws complied with it within one year (ie by 1 January 1996). developing countries were determined to open up trade in other areas. and made a concerted effort to open negotiations on intellectual property rights during the Uruguay Round. that regime was actually of limited assistance. since it requires the products to be supplied predominantly to the domestic market (see article 31(f) of the TRIPS Agreement).Undisclosed information is not to be treated as property. and least developed countries were required to ensure that their domestic laws complied with it within eleven years (ie by 1 January 2006). 7. although such countries are now only required to ensure that their domestic laws comply with the patent protection provisions in respect of pharmaceutical patents within twenty-one years (ie by 1 January 2016). Following the conclusion of the Tokyo Round in 1979.5 above). except that such countries were only required to ensure that their domestic laws complied with the patent protection provisions within ten years (ie by 1 January 2005). The divergent perspectives on the benefits (or otherwise) of the TRIPS Agreement have resulted in ongoing disagreements between developed and developing countries as the TRIPS Agreement has been applied over the past decade. Developed countries respond with the contention that the protection of intellectual property rights achieves an overall welfare improvement for all participants in the international trading community (developed and developing) through the incentives such protection provides for research and innovation. At that point. acquired by or used by others without his or her consent in a manner contrary to honest commercial practices. the countries in greatest need of inexpensive pharmaceuticals are those with the least manufacturing capacity. companies in developing countries could produce unlimited volumes of generic (cheap) pharmaceutical products for export to other developing countries and least developed countries. the United States in particular was frustrated at the reluctance of developing countries to adopt high normative standards and strict enforcement rules for intellectual property rights. developing countries were required to ensure that their domestic laws complied with it within five years (ie by 1 January 2000).
The original decision by the United States (the home of many of the world’s major pharmaceutical companies) not to block the waiver was driven by several factors. Ultimately. and a proposal to fundamentally develop public health in developing countries by permitting subsidies or some other trade remedy. This publication provides general information and comments on the subject matter covered and is not comprehensive. it has subsequently adopted alternative means of protecting its interests.htm. Possible longer term solutions have been discussed. because enhancing the protection of intellectual property rights will only advance international development in a delayed manner and at a macroeconomic level. tension is always likely to exist between the two goals. but that recognise and assist those adversely affected. and other unilateral commitments by mainly developed countries not to apply the waiver. agreed to waive the application of article 31(f) of the TRIPS Agreement.wto. such as: • • pharmaceutical companies acting as donors of essential medicines. Disclaimer Where sources have not been cited the information does not necessarily reflect a non-biased view. including a lack of developed country support and a diversity of WTO interests (requiring it to compromise on certain issues). However. the interaction of the TRIPS Agreement with public health in developing countries serves mainly to exemplify the difficulties associated with reconciling the diversity of developed and developing countries' interests and agendas in this area. However.org/english/tratop_e/trips_e/trips_e. or assistance provided by the Global Fund. The challenge for the international community is to recognise that inherent tension and to work towards solutions that safeguard the advance of intellectual property rights. highlights the increasing importance of the TRIPS Agreement for international development. Although the waiver was subject to certain specified procedural requirements and was limited to public health matters. particularly in developing countries. Further reading a dedicated section on the TRIPS Agreement: The WTO has an excellent website with http://www. It is not intended to provide legal advice. these alternatives have generated limited support so far. of course. It also. . It remains to be seen how this issue will be resolved. it has been reasonably widely applied by developing countries and is generally viewed by commentators as something of a victory for developing countries in advancing their WTO agenda. Trade theory suggests that the protection of intellectual property rights and international development are not mutually exclusive objectives. the effectiveness of the waiver will perhaps be increasingly limited (to the likely detriment of public health in affected countries). However.The international community recognised this as an important and pressing matter and. More likely to be implemented are private initiatives. including: • • a proposal to introduce an amendment to the TRIPS Agreement. in the Doha Declaration. As such. 9. there is no easy or obvious solution. The multilateral system promoted through the waiver is now being undermined by: • • pressure from the United States on countries to sign regional trade agreements incorporating agreements not apply the waiver.
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