“Institutional Process and Initiatives for Developing Country Positions for WTO Negotiations”

October 2008IRAN_ TEHRAN

Amir Houshang Fathizadeh

Islamic Republic Trade Representative

Office (IRTR)

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The IPR system does not exist in a vacuum. In order to truly empower it as a tool for technological development and economic growth, it has to be viewed in a broader context, together with national economic and development policies and strategies.

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•A number of countries have thus formulated national intellectual

property policies which are integrated in their scientific,

cultural. trade, economic and educational policies.

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The intellectual property policies support coherent and effective implementation of intellectual

property strategies nation-wide with

a view to optimizing the benefits derived from intellectual property

rights.

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IPRs under TRIPS Agreement Copyright • Artistic works• Literary works [computer software and data

bases]

Related (neighbouring) rights

• Performers• Phonogram producers• Broadcasters

Outside TRIPS: EC sui generis data bases

Industrial property• Trademarks• Geographical indications • Industrial designs• Patents• Plant varieties protection• Topographies of int. circ.• Undisclosed information

(e.g. trade secrets; know-how; test data)

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General remarks (1)Background

• Economic/trade/political importance. Dimension of innovation/research, of developmental needs

• Patents in the 80s, before the Uruguay Round: regulated in Paris, regional and national laws

• Undisclosed information: partly dealt with in Paris (art.10bis)

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General remarks (2)• Reminder: TRIPS = minimum level

• TRIPS: "Paris plus“

• Bern plus

TRIPS provisions to be read in conjunction with Paris Convention and Bern Convention

• Sections 5 and 7 of Part II have to be read in conjunction with other TRIPS, e.g. Parts I (basic principles), II (enforcement)

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IP world: Paris, Berne; Paris and Berne plus (TRIPS); beyond TRIPS

Paris

IPICRome

ParisBerne

IPIC Rome

Certain FTAs (bilateral or regional)

TRIPS

WIPO Internet treaties, etc.

Certain national laws

Certain regional laws

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Intellectual property rights (IPRs) are rights given to persons over the creation of their minds, at certain conditions. Not a blank cheque!

IPRs usually give the creator the (negative) right to prevent others from using without his/her authorization his/her creation for a limited period of time.

"Social contract": example of patents: grant of a patent against disclosure of the invention, and dissemination of knowledge and technology

Like any right on property: a right but also exceptions to that right (ex. property right on your house and garden but also obligation to give access to certain parts)

General remarks (1)

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General remarks (2)

• Patents in the Uruguay Round: area of IP where the discussion on pros and cons of IP protection has been most emotional and difficult. Delicate balance struck

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TRIPS StructurePart I: General provisions and basic principles

Part II: Standards concerning the availability, scope and use of IPRS• Copyright and related rights • Trademarks • Geographical indications • Industrial designs • Patents• Lay-out designs (topographies) of integrated circuits • Protection of undisclosed information • Control of anti-competitive practices in contractual licenses

Part III: Enforcement of IPRs • General obligations• Civil and administrative procedures and remedies• provisional measures• Special requirements related to border measures• Criminal procedures

Part IV: Acquisition and maintenance of IPRs and related inter partes procedures

Part V: Dispute prevention and settlement l

Part VI: Transitional arrangements

Part VII: Institutional arrangements; final provisions

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Article 6 - Exhaustion

• Exhaustion = loss of the right of the right-owner to prevent a third party from distributing the product protected by an IPR, once the product has been put on the market by himself or with his consent.

• Legitimacy of parallel imports depends on the exhaustion regime of a country (national / regional / international).

• Members are free to adopt the exhaustion regime it wants. Only obligation of national treatment and most-favoured nation.

See Doha Declaration, which reaffirms Members’ freedom to choose an exhaustion régime

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Exhaustion and parallel imports

Country B

ARV Drug at 5 USD/dose

Country C

international exhaustion

ARV Drug at 10 USD/dose

Country A

national exhaustion

ARV drug at 30 USD/dose

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General Provisions & Basic Principles (Part I)

• Article 7- Objectives – The protection and enforcement of IPRs should

contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.

See Doha Declaration, which reaffirms TRIPS objectives !

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General Provisions & Basic Principles (Part I)

Article 8 - Principles– Members may, in formulating or amending their laws

and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to socio-economic and technological development.

– Appropriate measures may be needed to prevent the abuse of IPRS by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.

See Doha Declaration, which reaffirms TRIPS Article 8 principles!

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Patents (1)• No definition of invention• No definition of patent but only of patentable

invention• Principle of non-discrimination in many respects but

with possible exceptions• Incorporation of Paris Convention provisions,

including Article 5A (on compulsory licensing)• Rights of patentee (i.e. right holder) but also rights

of third parties. • .

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• Patentable subject matter

• Patent application

• Rights conferred

• Exceptions to patentability

• Disclosure

• Exceptions, limitations

Patents (2)

Balance struck between various interests and considerations, e.g.:

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Patents (3) Article 27.1• Any invention, product or process • Three requirements:

1. An invention has to be new– World wide or local?

2. It must involve an “inventive step” (US: non-obvious)• Overlap with the concept of invention?• Person skilled in the art?

3. It must have “industrial applicability” (US: useful)• Utility?

• See also requirement of disclosure (Art. 29)

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Patents (4)

Article 27.1

Principle of non-discrimination

1. As to fields of technology (but see other provisions in Article 27 + public health)

2. As to place of invention• First-to-file vs. First-to-invent (US)

3. As to whether products are locally produced or imported• Issue of requirement for local working

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Patents (5) Article 27.2

An invention may be eligible for protection (3 criteria fulfilled), nevertheless Members can provide that authorities can refuse to grant a patent for that invention:– If prevention of commercial exploitation is necessary to

protect ordre public or morality, • Including to protect human, animal or plant life or health • Or to avoid serious prejudice to the environment

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Patents (6)

Article 27.3

Members may decide to exclude certain categories of inventions from patent protection:1. diagnostic, therapeutic and surgical methods of

treatment fields of technology) from patent

2. plants and animals (other than micro-organisms), or essentially biological processes for the production of plants and animals

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Patents (7) Article 27.3(b)• Members shall not exclude (= shall protect):

– Micro-organisms– Non-biological and microbiological processes

• Members shall protect plant varieties– By patents or– By an effective sui generis system or– By any combination thereof

• Provisions to be reviewed 4 years after 1995 i.e. 1999

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Patents (8)

Article 28: exclusive rights

1. Product patent: – To prevent others from making, using, offering for sale,

selling or importing the patented product– Footnote 6: reference to exhaustion Article 6

2. Process patent: – To prevent others from using the patented process or

doing any of the above acts with respect to the product directly obtained by that process

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Article 29• To disclose the invention in a manner sufficiently

clear and complete• So that invention can be made/used by a “person

skilled in the art”• Disclosure of “best mode” is optional• Provision of information on corresponding foreign

applications and grants is optional

Discussion in the context of TRIPS-CBD

Patents (9)

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Article 30: exceptions to patent rights• No list of exceptions in TRIPS • Exceptions to patent rights may be provided (such

as prior use, private non-commercial use, experimental use) if they meet the three-step test:

1. They are limited

2. Do not unreasonably conflict with the normal exploitation of the patent

3. Do not unreasonably prejudice the legitimate interests of the patent owner

•Taking account of legitimate interests of third parties

Patents (10)

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Article 31: compulsory licences (CL), government use and dependent licenses

• No restriction on grounds (except in the case of semi-conductor technology: 31(c))

• but subject to 11 conditions (next slide)• Special exceptions for public non-commercial use (Article

31(b)) and for use as remedy for anti-competitive practices (Article 31(k)).

• Dependent patents dependent licences (Article 31(l)) • Art. 44.2 limits remedies (of use by governments or parties

authorized by governments) to remuneration. See Doha Declaration on Members’ rights to grant CLs

and freedom to determine the grounds

Patents (13)

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Conditions for grant of use without patentee’s authorization (Articles 31+27.1)

• Without discrimination whether locally produced or imported (Article 27.1)

• Applications to be considered on their individual merits (a)

• First, an unsuccessful attempt of contractual licensing except in certain cases (b)

• Scope and duration to be limited to purpose of grant (c)

• Non-exclusive, non-assignable (d, e)

• Predominantly for supply of domestic market (f)

• Licences shall be terminated when circumstances terminate (g)

• Right holder: adequate remuneration based on economic value (h)

• Decisions on legal validity of grant and remuneration to be subject to judicial or other independent review (i, j)

Patents (14)

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Duration of protection (Article 33)– At least 20 years from the date of filing of the patent application – Extension of term of protection not required, for e.g. in case of regulatory delays in grant of marketing approval

Revocation of patents (Art. 32 (+ 5A Paris))– Opportunity for judicial review to be provided and time limits to be respected if revocation on grounds of failure to work

Patents (15)

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Transition periods to apply TRIPSArticle 65, 66.1 (and Decisions)

1996 2000 2005 2013 2016_________________________________ ↓ ↓ ↓ ↓ ↓

Developed DCs DCs LDCs 1) LDCsCountries Economies products ·

in Transition 1) not previously pharma patented (EMRs) (patents &

test data)

· EMRs waived

1) National treatment and MFN treatment obligations apply as of 1996EMR = exclusive marketing rights

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Article 39: unfair commercial practices; trade secrets – know how; protection of test data

Paragraph 1: reference and application of Paris Article 10bis on unfair competition

Paragraph 2: trade secret for the first time defined in a multilateral treaty

Undisclosed information (1)

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Conditions for protection– Information is secret– Has commercial value because it is secret– Has been subject to reasonable steps to keep it secret

Right of owner of undisclosed information to prevent acquisition, disclosure or use without his consent in a manner contrary to honest commercial practices

Importance of footnote 10 (non exhaustive and minimum list of unfair commercial practices)

Undisclosed information (2)

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Undisclosed information (3)Paragraph 3: Test Data ProtectionMembers• when requiring submission of undisclosed test or other

data for approving the marketing of– pharmaceutical or– agricultural chemical products which

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• where origination of data involves a considerable effortHave two obligations:• Shall protect against disclosure,• except to protect public or steps taken to protect

against unfair commercial use• Shall protect such data against unfair commercial use

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Doha Round (2)

• “July Package” in 2004 (WT/L/579) • Hong Kong, China Ministerial Conference in

December 2005 and TRIPS (WT/MIN(05)/DEC)– Para. 29 (TRIPS Special Session); Para. 35

(S&D); Para. 39 (Implementation); [Para. 40 (TRIPS-public health)]; Para. 44 (para. 19 Doha Declaration/biot-TK-CBD, etc.); Para. 45 (moratorium / non-violation)

• Overall process since 2007– The 2008 phase

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• Trademarks and GIs: similarities and differences

• Both are identifiers and distinctive signs

• Debate on signs for private/individual use and for collective use

• Relatively greater harmonization at national and international levels for trademarks, less for GIs

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• Both are great marketing tools but are vulnerable as well (need strong support (i.e. product) in terms of quality and defence)

• A trademark can become generic, a GI too (in certain jurisdictions, in others not)

• Both are not "life insurances": reputation is easy to damage and difficult to recover

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A product considered in Switzerland as a good example of IPRs used: patent, trademark and GIs (name and representation)

Product using an individual, a collective mark and a GI Product using an

individual trademark and a GI

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Certification mark (verbal and image) registered under WIPO’s Madrid Agreement / Protocol system (Nr. 583629, 628658, 750133, 773899, 955818)

Well-known certification mark protected in over 140 countries

Source: WIPO

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Signs or logos used for GIs (in addition to the GI)

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Geographical names protected as GI and/or certification or collective marks

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ÜLKEMİZDEN COĞRAFİ İŞARETLER

Antep Fıstığı

Hereke Halısı

Malatya Kayısısı

Erzincan Bakır İşlemeciliği

İzmit Pişmaniyesi

Görece Nazar Boncuğu

Slide by Gonca Ilicali, Turkish Patent Institute

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Damal Bebeği

Kayseri Pastırması

Afyon Pastırması

Mustafakemalpaşa Tatlısı

Siirt Battaniyesi

Isparta Gülü

Adana Kebabı

Güney Ege Zeytinyağı

Devrek Bastonu

Gümüşhane Kömesi, Pestili

Slide by Gonca Ilicali, Turkish Patent Institute

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Complex and controversial issue both at national and international levels; commercial, economic, socio-historical, cultural; "New World – Old World" in the Uruguay Round

Area less harmonized than copyright, patents or trademarks

Pre-Uruguay RoundWIPO:

Lisbon Agreement

Paris Convention revision conference: draft Article 10quater

GATT 1947 provisions

Uruguay Round and the "deal". The unfinished business.

GIs: background

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TRIPS and GIs

Relevant provisions in TRIPS• Section 3 of Part II• Also provisions of Section 2 of Part II• Part I: Art. 1.1.; National and MFN treatment (Art.

3-5)• Procedures of acquisition & maintenance of rights if

registration is foreseen (Art. 62)• Enforcement (Part III)• Transition periods (Art. 65, 66.1(+ IP/C/40))• Dispute settlement (Art. 64)

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TRIPS and GIs [Outside TRIPS, i.e. optional, higher level

for all secors: national laws, bilateral, regional and other multilateral agreements]

________________________

TRIPS: Article 23 - higher protection for wines and spirits (minimum, mandatory)

(+ Art. 24.2-9)___________________

TRIPS: Article 22(minimum, mandatory)

- Misleading/confusion test - Unfair competition

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Article 22

Article 22.1 Definition

"...indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin."

• Reflected in the great majority of WTO Members’ laws• Only goods !• Some clarifications:

– GIs and indications of source – GIs and appellations of origin

• Direct (terms or names) or indirect (figurative) GIs

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Basic level of protection: Article 22.2 and 22.3

For all products other than wines and spirits, obligation of Members to provide legal means for interested parties to prevent

• Use which:– misleads the public as to the geographical

origin of the good;– constitutes an act of unfair competition (Art.

10bis Paris Convention)

• Registration as a trademark if use of the GI in the trademark would mislead the public as to origin

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Additional protection for wines and spirits (Art. 23)

• Additional protection against use of a GI for wines on wines (and for spirits on spirits) not originating in the place indicated by the GI:– without requirement to show misleading of the

public or act of unfair competition– even where the true origin of the good is indicated;

and– even where the GI is accompanied by expressions,

e.g. kind, type, style, imitation

• Against registration as a trademark with respect to wines and spirits not having the origin indicated (no misleading test applicable)

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Article 24 exceptions The protection under Article 23 is to be read in

conjunction with the exceptions under Article 24. • Generic terms (“customary”) (Article 24.6) • Prior trademark rights (Article 24.5):• Certain other prior uses (Article 24.4) (grand-

father clause):• Personal names (Article 24.8)• GIs not protected or used in their country of origin

(Article 24.9)

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Homonymous GIs (Art. 22.4, 23.3)

Art. 22.4 (for all GIs) – protection against use which, though literally

true, falsely represents to the public that the goods originated in another country

Art. 23.3 (for GIs for wines): subject to Article 22.4, coexistence subject to:– practical conditions under which the indication

will be differentiated– taking into account the need to ensure

equitable treatment of the producers concerned and that consumers are not misled

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Article 24.1; Article 24.2

• Art. 24.1: International negotiations "aimed at increasing the protection of individual geographical indications under Article 23. The provisions of paragraphs 4 through 8 ... shall not be used by a Member to refuse to conduct negotiations or to conclude bilateral or multilateral agreements. ... “

• Article 24.2 (built-in agenda): TRIPS Council to keep under review the application of the section on GIs

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In order to facilitate the protection of geographical indications for wines, negotiations shall be undertaken in the Council for TRIPS concerning the establishment of a multilateral system of notification and registration of geographical indications for wines eligible for protection in those Members participating in the system.

Register: Article 23.4

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Register of GIs for wines and spirits

Paragraph 18, first sentence:

With a view to completing the work started in the Council for Trade-Related Aspects of Intellectual Property Rights (Council for TRIPS) on the implementation of Article 23.4, we agree to negotiate the establishment of a multilateral system of notification and registration of geographical indications for wines and spirits by the Fifth Session of the Ministerial Conference.

The Doha Declaration and GIs (1)

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The Doha Declaration and GIs (2)

Extension• Paragraph 18, second sentence

"We note that issues related to the extension of the protection of geographical indications provided for in Article 23 to products other than wines and spirits will be addressed in the Council for TRIPS pursuant to paragraph 12 of this Declaration."

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Doha Declaration and GIs (3)

"Work programmeImplementation-Related Issues and Concerns12. ... we agree that negotiations on outstanding

implementation issues shall be an integral part of the Work Programme... and that agreements reached at an early stage in these negotiations shall be treated in accordance with the provisions of paragraph 47 below. In this regard, we shall proceed as follows: (a) where we provide a specific negotiating mandate in this Declaration, the relevant implementation issues shall be addressed under that mandate; (b) the other outstanding implementation issues shall be addressed as a matter of priority by the relevant WTO bodies, which shall report to the Trade Negotiations Committee, established under paragraph 46 below, by the end of 2002 for appropriate action.”

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TRIPS Council since Doha: regular session and Special

Session

TRIPS COUNCIL

REGULAR SESSION,Review of legislation,

public health, Biotech./TK/biodiversity,

GIs (extension until end 2002), etc.

SPECIAL SESSIONNegotiations /mult. System

of notif. & reg. of GIs for wines and spirits

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Ongoing discussion/work and proposals on GIs in the WTO

1. Art. 63.2 notification/review + Art. 24.2 review (examination of implementation)

2. Negotiations on the establishment of a multilateral system of notification and registration of GIs for wines and spirits (Art. 23.4 + Doha)

3. Issues related to the extension of the protection of GIs provided in Art. 23 to products other than wines and spirits

4. “Other issues: ...V. [...B. GIs]” (TN/AG/W/4/Rev.2)

1. TRIPS Council (regular session)

2. TRIPS Council Special Session

3. GC/TNC DG/DDG consultations

4. Committee Agriculture, Special Session

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• The main actors in the Special Session:– European Communities, supported by Switzerland and some

developing countries – Joint Proposal Group: Argentina, Australia, Canada, Chile,

Colombia, Costa Rica, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Japan, Mexico, New Zealand, Nicaragua, Paraguay, Philippines, Chinese Taipei, US, etc.

• Hong Kong, China• Less or no interest from other delegations

Special Session (1): the actors

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• Secretariat’s document TN/IP/W/12: side-by-side presentation of:

-TN/IP/W/8 by Hong Kong, China: in Annex AAlternative Model for a Multilateral System of Notification and Registration of Geographical Indications Established under Article 23.4 of the TRIPS Agreement

- TN/IP/W/10 by the Joint proposal Group (Argentina, Australia, Canada, Chile, Costa Rica, Dom. Rep., Ecuador, El Salvador, Guatemala; Honduras, Japan, Mexico, New Zealand, Nicaragua, Paraguay, Chinese Taipei and US): Draft Decision by the Council for TRIPS

- TN/IP/W/11 by the European Communities: in Annex: Multilateral System of Notification and Registration of Geographical Indications. + new thinking in November 2007.

Special Session (2): proposals on the table

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Extension: the main actors

• Main actors: – EU, other European countries, certain DCs (China, India, Guinea,

Jamaica, Kenya, Morocco, Pakistan, Sri Lanka, Thailand, Tunisia, Turkey, etc.)

– Argentina, Australia, Canada, Chile, Ecuador, Guatemala, New Zealand, Philippines, Chinese Taipei, United States, etc.

• Proposed coverage for products: agricultural, foodstuffs, handicrafts, industrial products?

• One of the "outstanding implementation issues"• After 2002 DG’s / DDG’s technical level consultations• Secretariat’s compilation of points made and issues

(WT/GC/W/546 -TN/C/W/25)

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Current state of negotiations/discussions (3)

Situation as of 18 June 2008• GI Register - TRIPS SS: Chairman’s report =

TN/IP/18 of 9 June 2008• GI extension and TRIPS-CBD: DG’s report (in

his capacity as DG) = WT/GC/W/591 - TN/C/W/50 of 9 June 2008

Both are factual reports on work done and discussions held, and take into account – within their mandates - positions of both sides on horizontal process

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How one side sees the issue of linkages

AG

GI register

Implementation issues

(GI extension)

Implementation issues

(TRIPS-CBD)

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How another side sees the issue of linkages

AG

GI register

Implementation issue of

GI extension

Implementation issue of

TRIPS-CBD

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• Fathizadeh@yahoo.com