|
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
|
