International Governance of Patents

Prof. Anil B. Suraj IIM Bangalore April 2011

Session Objectives 
To

understand the basic concepts of global governance of IPRs especially within the WTO framework 

To

appreciate the working principles of IP enforcement and dispute settlement

Interests in Globalization 
Rebuilding

by developed economies UN, IBRD (WB), IMF, GATT/ITO incorporation of developing nation concerns UNCTAD & Part-IV PartGATT of consensus in WTO 

Strategic 

Building

WTO 
Most

Constitutional Principles

Favoured Nation (MFN) Treatment One Vote 

National  One

Member 

Reverse

Consensus Rule

WTO 

Principles
except in Plurilateral Form multi-tiered structure multi-

Single Undertaking Dispute Settlement Enforcement  

Sanctions and Countermeasures at all stages 

Supreme respect for Negotiations

WTO 


dilutes sovereignty?

Sovereignty vs. Interdependency vs. Classification and recognition of principles of constitutional democracy: democracy:
Human rights; rights;  Popular sovereignty; sovereignty;  Transparency; Transparency;  Limited government; government;  Democracy; Democracy;  Rule of law; law;  Checks and balances 

core

Evolution of IPR regime 
Early

17th Century Monopolies Statute
flexibility to national governments 

Maximum 

Paris

Convention (1883); 1883) Berne Convention (1886); Madrid Agreement 1886) (1891) for different forms of IPRs 1891) 
Minimum

obligations but with flexibilities  National Treatment; Reciprocal obligations Treatment;

TRIPs Regime  

Salient Features

Basic and Founding Principles
MFN status; National Treatment status; 

Forms of IPRs and bases of protection 

Aiming for uniformity 

Enforcement Mechanisms mandated 

Civil and Criminal; Border measures Criminal; 

Special Provisions and Dispute Settlement 


Accent on technology transfer & promotion NonNon-violation Complaints

TRIPs Regime 

TRIPs common institutional framework for IPRs related trade concerns 


In-built flexibilities: Novartis matter in India Inflexibilities: Complementary role of WIPO; Emerging RTAs WIPO; 

Balance between removing incentives for counterfeit trade and facilitating legitimate trade Enforcement mechanisms  

Autonomy given to Member nations to enforce law in general no need for specific judicial system

Principles of Enforcement 

Procedural fairness and equity 

Protection of confidentiality 

Evidentiary principles 

Use of adverse inference by some Nations 

Remedies through injunctions (ex parte), damages, costs, disposal and destruction Defendant safeguards if process is abused 

Systemic Flexibilities Enforcement measures 
    

Border enforcement measures 

CBEC

IPRs (Imported Goods) Enforcement Rules, 2007

Single authority determinations Provisional measures and procedures Right holder being informed Suo motu release of goods De minimis standards non-commercial non-

Dispute Settlement Process 

Built on the bedrock of Consultations Panel + Appellate Review = special regard to Developing country and Third Party interests Outcomes are recommendations to DSB ADRs in Dispute Settlement Process   

Issues and Concerns 

Panel and Appeal need to only conclude on the inconsistency of measures not HOW they could be made consistent 

Encourages non-compliance/delayed response? non- 

Appeal may uphold, modify or reverse the legal findings of the Panel
Appeal limited only to issues of law  No remand powers upon factual inadequacy 

only

Panel & Appellate jurisdiction 

Apex adjudication over Sovereign power? Public & political vs. Private economics FreeFree-Trade Constitution being interpreted an Understanding   

MultiMulti-disciplinary issues: Brown & Green issues:

International Patent Practice: Emerging issues 

Transfer of Technology 

IP Assets Valuation; Legal framework 

InnovationInnovation-driven management structure 
 

Return on Innovations (RoI) Intellectual asset management Strategic Licensing flexibilities under TRIPs 



AntiAnti-competitive & Confidentiality clauses NonNon-violation Complaints and Dispute settlement

Thank You! absuraj@iimb.ernet.in

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