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A Handbook on the WTO TRIPS Agreement

A Handbook on the WTO TRIPS Agreement

Author: Antony Taubman; Hannu Wager; Jayashree Watal
Publisher: Cambridge University Press
ISBN: 9781107625297
Published In: April 2012
Format: Paperback , 410 pages
Jurisdiction: International ? Disclaimer:
Countri(es) stated herein are used as reference only

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This handbook describes the historical and legal background to the TRIPS Agreement, its role in the WTO and its institutional framework and reviews the following areas: general provisions and basic principles; copyright and related rights; trademarks; geographical indications; patents; industrial designs, layout-designs, undisclosed information and anti-competitive practices; enforcement of IPRs; dispute settlement in the context of the TRIPS Agreement; TRIPS and public health; and current TRIPS issues. It contains a guide to TRIPS notifications by WTO members and describes how to access and make use of the official documentation relating to the TRIPS Agreement and related issues. Furthermore, it includes the legal texts of the TRIPS Agreement and the relevant provisions of the WIPO conventions referred to in it, as well as subsequent relevant WTO instruments.

• Non-technical explanation of each section of the TRIPS Agreement, as well as later instruments and current policy issues, provides the reader with a clear understanding of the key provisions, their background and relevant developments

• Detailed analysis of and commentary on the later instruments pertaining to public health that were adopted in the WTO ensures that the reader is aware of the main changes that took place post-1995 in the context of public health

• Provides an overview of the institutional framework within the WTO that administers the TRIPS Agreement and describes some of the experience in analysing and interpreting it in the context of the WTO dispute settlement system, thereby enabling the reader to understand the TRIPS Agreement as part of the broader WTO trading regime and its institutional framework

List of figures	xvi
List of boxes	xvii
List of tables	xviii
Preface	xix
Acknowledgements	xxii
List of acronyms and abbreviations	xxiii
I Introduction to the TRIPS Agreement	1
A Introduction	1
1 General	1
2 Historical and legal background to TRIPS	4
3 Place of TRIPS in the World Trade Organization	8
4 Overview of TRIPS provisions	10
(a) General provisions and basic principles	10
(b) Standards concerning the availability, scope and use of intellectual property rights	10
(c) Enforcement	12
(d) Certain other matters	12
B General provisions and basic principles of the TRIPS Agreement	12
1 Objectives and principles	12
2 Minimum standards agreement	13
3 Beneficiaries	14
(a) Industrial property	14
(b) Copyright	15
(c) Performers	15
(d) Producers of phonograms	15
(e) Broadcasting organizations	15
4 National treatment and most-favoured-nation treatment	16
5 Exhaustion	18
C Procedures for the acquisition and maintenance of intellectual property rights	20
D Transitional arrangements and other matters	21
1 Transition periods	21
(a) Developed countries and non-discrimination (all Members)	21
(b) Developing countries and economies in transition	21
(c) Least-developed countries	22
(d) Acceding countries	23
2 Protection of existing subject matter	23
(a) Application of the rules	23
(b) Additional requirements in respect of pre-existing works and phonograms	24
3 Transfer of technology	24
4 Technical cooperation	25
5 Security exceptions	26
E Institutional arrangements	26
1 Decision-making procedures	27
2 The work of the Council for TRIPS	30
(a) Notifications	30
(b) Review of national laws and regulations	32
(c) Forum for consultations	32
(d) Forum for further negotiation or review	33
(e) Cooperation with the World Intellectual Property Organization	34
II Copyright and related rights	36
A Introduction	36
1 General	36
2 What are copyright and related rights?	36
3 What is the relationship of the TRIPS Agreement with the pre-existing provisions of the Berne and Rome Conventions?	37
B TRIPS provisions on copyright	39
1 What is the subject matter to be protected?	39
(a) ‘Literary and artistic works’	39
(i) Computer programs	39
(ii) Databases	40
(b) Derivative works	40
(c) Certain other categories of works	41
(d) Certain principles governing eligibility for copyright protection	41
(i) Idea/expression dichotomy	41
(ii) Originality	41
(iii) Automatic protection	42
(iv) Independence of protection	43
2 What are the rights to be conferred on authors?	43
(a) General	43
(b) Reproduction right	44
(c) Rental right	44
(d) Rights of public performance, broadcasting and communication to the public	44
(e) Rights of translation and adaptation	45
(f) Moral rights	46
3 What are the permissible limitations and exceptions?	46
4 Term of protection	48
C TRIPS provisions on related rights	51
1 Relevant rights under the TRIPS Agreement	52
(a) Performers	52
(b) Producers of phonograms	52
(c) Broadcasting organizations	52
2 Limitations and exceptions	53
3 Term of protection	53
III Trademarks	54
A Introduction	54
1 General	54
2 What is the role of trademarks?	54
3 What is the relationship of the TRIPS Agreement with the pre-existing provisions of the Paris Convention?	56
B TRIPS provisions on trademarks	57
1 What is the subject matter to be protected and what are the conditions for registration?	57
(a) Subject matter of trademark protection	57
(i) Distinctive signs	57
(ii) Trade names	59
(iii) Collective marks and certification marks	59
(b) Conditions for registration as a trademark	60
(i) Priority	60
(ii) Publishing requirement	60
(iii) Reasons which may not constitute grounds for refusal of trademark registrations	61
(iv) Reasons which may constitute grounds for refusal of trademark registrations	63
(v) Reasons which must constitute grounds for refusal or invalidation of trademark registration in Members	63
2 What are the rights to be conferred on trademark owners?	66
(a) General	66
(b) Trademark rights	66
(c) Rights with respect to well-known trademarks	69
(d) Licensing and assignment of rights	71
(e) Other requirements	71
3 What are the permissible exceptions to trademark rights?	72
(a) Permissible exceptions	72
(b) No compulsory licensing permitted	73
4 Term of protection	75
IV Geographical indications	76
A Introduction	76
1 General	76
2 Background	76
3 What is the relationship with the pre-existing provisions of the Paris Convention?	77
B TRIPS provisions on GIs	78
1 What is the subject matter to be protected?	78
(a) TRIPS definition of geographical indications	78
(b) Elements of the Article 22.1 definition	78
(i) It is a sign	79
(ii) Function of identification	79
(iii) Subject matter of identification	79
(iv) The geographical origin identified by the geographical indication	80
(v) Quality, reputation, or other characteristics essentially due to the geographical origin	80
(c) Geographical indications, indications of source, rules of origin, appellations of origin and trademarks	80
(i) Geographical indications and indications of source	83
(ii) Geographical indications and rules of origin	83
(iii) Geographical indications and appellations of origin	83
(iv) Geographical indications, trademarks and certification marks	83
(d) Right holders and eligible users	84
2 What are the conditions for getting protection?	84
3 Protection and rights conferred	85
(a) For geographical indications for all goods (Article 22)	85
(i) Protection against use by others (Article 22.2)	85
(ii) Protection against use as a trademark (Article 22.3)	87
(iii) Factually true but misleading use (Article 22.4)	87
(b) Additional protection for geographical indications for wines and spirits (Article 23)	88
(i) Protection against use by others (Article 23.1)	89
(ii) Protection against use as a trademark (Article 23.2)	90
(iii) Homonymous geographical indications for wines (Article 23.3)	90
(iv) Negotiation of a multilateral register of geographical indications for wines (Article 23.4)	90
4 Exceptions and international negotiations	91
(a) Exceptions	91
(i) Generic terms (Article 24.6)	91
(ii) Prior trademark rights (Article 24.5)	92
(iii) Prior use of the geographical indication (Article 24.4)	92
(iv) Time limit to challenge trademarks under Article 22.3 and Article 23.2 (Article 24.7)	93
(v) Use by a person of his name (Article 24.8)	93
(vi) GIs not protected in their country of origin or which have fallen into disuse in their country (Article 24.9)	93
(b) International negotiations, review and standstill	94
(i) International negotiations (Article 24.1)	94
(ii) Standstill (Article 24.3)	94
V Patents	95
A Introduction	95
1 What are patents?	95
2 What is the relationship with the pre-existing provisions of the Paris Convention?	96
B TRIPS provisions on patents	97
1 What is the subject matter to be protected by patents?	97
(a) In which areas must inventions be eligible for protection?	97
(b) What conditions must inventions meet to be eligible for patent protection?	98
(i) Novelty, inventive step and industrial applicability	98
(ii) Disclosure	100
(iii) What are the permissible exclusions from patentable subject matter?	102
(iv) Review of Article 27.3(b)	104
(v) Relationship between the TRIPS Agreement and the Convention on Biological Diversity (CBD) and the protection of traditional knowledge and folklore	104
2 What are the rights to be conferred on patent owners?	105
(a) What are the rights to be conferred on owners of product patents?	105
(b) What are the rights to be conferred on owners of process patents?	105
(i) Rights of process patent owners	105
(ii) Burden of proof	106
(c) Non-discrimination with respect to enjoyment of patent rights	107
(i) The place of invention	107
(ii) The field of technology	107
(iii) Whether products are imported or locally produced	107
(d) What other rights do patent owners have?	108
3 What are the permissible exceptions to patent rights?	108
(a) Limited exceptions	108
(b) Compulsory licences	109
4 What is the minimum period of protection to be accorded?	114
(a) Term of protection	114
(b) Revocation	115
VI Industrial designs, layout-designs of integrated circuits, undisclosed information, anti-competitive practices	116
A Introduction	116
B Industrial designs	116
1 What is an industrial design?	117
2 What has to be eligible for protection as an industrial design?	117
(a) General formalities for the protection of industrial designs	118
(i) Formalities	118
(ii) Priority	118
(b) Provisions regarding formalities for industrial designs in the textile sector	118
3 What are the rights to be conferred on an owner of a protected industrial design?	119
4 What are the permissible exceptions to the rights conferred?	120
5 How long does the protection of an industrial design have to last?	120
C Layout-designs (topographies) of integrated circuits	121
1 What is a layout-design (topography) of an integrated circuit?	121
2 What has to be eligible for protection as a layout-design of an integrated circuit?	122
3 What are the rights to be conferred on the owner of a protected layout-design?	123
4 What are the permissible limitations and exceptions to the rights conferred?	124
(a) Reproduction for private or research purposes	124
(b) Parallel creation	124
(c) Innocent infringement	124
(d) Exhaustion	125
(e) Compulsory licensing	125
5 How long does the protection of a layout-design have to last?	125
D Undisclosed information	126
1 Undisclosed information (trade secrets)	126
2 Undisclosed test and other data	128
E Control of anti-competitive practices in contractual licences	129
1 Introduction	129
2 Overview of the relevant provisions of the TRIPS Agreement	131
VII Enforcement	135
A Introduction	135
1 Background	135
2 What is IPR enforcement?	136
3 Application of basic principles	137
4 What is the relationship of the TRIPS Agreement with pre-existing provisions in other conventions and treaties?	138
B General obligations	138
C Civil and administrative procedures and remedies	140
1 Fair and equitable procedures	140
2 Evidence	141
3 Remedies	141
(a) Injunctions	141
(b) Damages	142
(c) Other remedies	142
4 Right of information	143
5 Indemnification of the defendant	143
D Provisional measures	144
1 Why and what type of provisional measures?	144
2 Procedural requirements and safeguards against abuse	144
E Border measures	146
1 Scope and coverage	146
(a) Mandatory coverage of pirated copyright goods and counterfeit trademark goods	146
(b) Optional coverage	147
2 Procedural requirements and safeguards against abuse	148
(a) Application, including evidence and description of goods	148
(b) Notice of suspension	149
(c) Duration of suspension	149
(d) Posting of security/payment of compensation	149
3 Right of inspection and information	150
4 Remedies	150
5 Special rules for ex officio action	151
F Criminal procedures	151
1 Scope and coverage	151
2 Remedies	151
(a) Measures and intellectual property rights at issue	152
(b) Summary of key Panel findings	152
G Cooperation and contact points	153
1 Cooperation between Members	153
2 Contact points	154
VIII Dispute prevention and settlement	155
A Introduction	155
B Dispute prevention and the review of national implementing legislation	156
C Dispute settlement	157
1 General	157
2 Non-violation and situation complaints	159
D Description of the dispute settlement procedures	161
1 Consultations between the parties	161
2 Panel examination	163
3 Appellate review	163
4 Adoption of the Panel/Appellate report(s) and implementation	164
E Experience in the area of TRIPS	166
1 A guide to resources	176
IX TRIPS and public health	179
A Introduction	179
B Doha Declaration on the TRIPS Agreement and Public Health	180
1 Concerns that triggered the discussions	180
2 Scope	180
3 General statements	181
4 Clarification of flexibilities	181
5 Transfer of technology	182
6 Follow-up	183
C Paragraph 6 System	184
1 The issue	184
2 The solution: establishment of the Paragraph 6 System	184
3 Description of the System	186
(a) Scope and coverage	186
(b) Eligible importing Members	187
(c) Exporting Members	187
(d) Notifications	187
(e) Safeguards against diversion	188
(f) Avoidance of double remuneration	189
(g) The special case of regional trade agreements	190
4 Chairman's statement	190
5 Domestic implementing legislation	191
6 Use of the Paragraph 6 System	193
7 Review of the Paragraph 6 System's functioning	193
D Access to medicines: the broader picture	194
X Current TRIPS issues	196
A Introduction	196
1 Current issues	196
2 The mandates for work on TRIPS issues	198
B Current issues	200
1 Geographical indications	200
(a) Background	200
(b) The multilateral register for wines and spirits	202
(c) Extending the ‘higher level of protection’ beyond wines and spirits	204
2 The ‘triplets’: biotechnology, traditional knowledge, biodiversity	205
(a) Article 27.3(b) review	205
(b) Traditional knowledge and folklore	206
(c) Relationship between the TRIPS Agreement and the Convention on Biological Diversity	207
3 Non-violation complaints	210
4 Least-developed countries and TRIPS	210
5 The TRIPS Agreement and transfer of technology	212
6 Electronic commerce	213
C The TRIPS Agreement in other multilateral policy processes	214
1 The TRIPS Agreement and public health beyond the World Trade Organization	214
2 TRIPS and human rights	216
3 TRIPS and development issues	217
4 Intellectual property and competition policy	218
5 TRIPS and environmental agreements	218
Appendix 1 Guide to TRIPS notifications	220
A General	220
B Relevant notification procedures	222
1 Notification of laws and regulations under Article 63.2	222
(a) Procedures for the notification of laws and regulations	222
(b) Availability of the information received	225
2 Notifications of contact points under Article 69	226
3 Notification requirements for Members availing themselves of certain possibilities under the TRIPS Agreement	227
(a) Articles 1.3 and 3.1	227
(b) Article 4(d)	228
(c) Article 6ter of the Paris Convention	228
(d) Other notification requirements under the Berne Convention and the Rome Convention incorporated by reference into the TRIPS Agreement	229
4 Notification requirements for Members making use of the additional flexibilities relating to TRIPS and public health	232
5 Notification requirements for developed country Members agreed by the TRIPS Council in the context of Articles 66.2 and 67	234
(a) Reports under Article 66.2	234
(b) Contact points for technical cooperation and reports under Article 67	235
(i) Contact points for technical cooperation on TRIPS	235
(ii) Reports under Article 67	235
6 Certain other information flows	236
(a) Records of reviews of national implementing legislation	236
(b) Responses provided in the context of the review of the provisions of the Section on geographical indications under Article 24.2	237
(c) Responses provided in the context of the review of the provisions of Article 27.3(b)	237
Appendix 2 Guide to TRIPS documents	239
A General	239
B TRIPS notifications	241
C Reviews of national legislation	241
D Dispute settlement	243
E Reports and decisions	243
F Minutes	243
G Working documents	244
H Documents of the Council for TRIPS in special session	245
Annexes	246
1 Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) 1994	247
2 Provisions of the Paris Convention for the Protection of Industrial Property (1967) referred to in the TRIPS Agreement	289
3 Provisions of the Berne Convention for the Protection of Literary and Artistic Works (1971) referred to in the TRIPS Agreement	308
4 Provisions of the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (the Rome Convention) (1961) referred to in the TRIPS Agreement	337
5 Provisions of the Treaty on Intellectual Property in Respect of Integrated Circuits (1989) (‘Washington Treaty’) referred to in the TRIPS Agreement	343
6 Declaration on the TRIPS Agreement and Public Health (2001)	350
7 Decision on Implementation of Paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health (2003)	352
8 Decision on Amendment of the TRIPS Agreement (2005)	359
9 Decision on Extension of the Transition Period under Article 66.1 of the TRIPS Agreement for Least-Developed Country Members for Certain Obligations with Respect to Pharmaceutical Products (2002)	367
10 Decision on Extension of the Transition Period under Article 66.1 for Least-Developed Country Members (2005)	368
Index	371