The General Exception Clauses of the TRIPS Agreement Promoting Sustainable Development

Name: The General Exception Clauses of the TRIPS Agreement
Brand: Cambridge University Press
SKU: 9781107017481
Price: 1387.10 HKD
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Author: Edson Beas Rodrigues, Jr
ISBN: 9781107017481

By Edson Beas Rodrigues, Jr

Cambridge University Press April 2012

Specifications

ISBN-13: 9781107017481
Publisher: Cambridge University Press
Publication: April 2012
Format: Hardback , 400 pages
Jurisdiction: International ? Countri(es) for reference only

Details

The general exception clauses of the TRIPS Agreement of the World Trade Organization permit exceptions to copyrights and to the rights conferred by trademarks, industrial designs and patents. These clauses are intended to facilitate access to diverse forms of proprietary knowledge and therefore foster the interdependent pillars of sustainable development: economic progress, realization of human rights and the conservation of the environment. In this book, Edson Beas Rodrigues, Jr argues that the TRIPS Agreement, in its current configuration, does not hinder the establishment of exceptions to intellectual property rights, devised to promote vital socioeconomic interests such as the freedom to carry out creative and inventive activities, freedom of expression, the strengthening of free competition, and increased access to educational materials by underprivileged students and to technical knowledge for humanitarian purposes.

• Proposes a new interpretation to the general exception clauses which allows a reconciliation between the legitimate economic interests of intellectual property holders and the pressing interests of society at large

• Provides examples of TRIPS-compliant exceptions that are designed to overcome developmental challenges posed by current intellectual property regimes

• Covers all the general exception clauses of TRIPS, including the normative meaning of arts. 17, 26(2) and 30 of TRIPS

List of tables	xii
Acknowledgements	xiii
Table of cases	xiv
List of Treaties, Declarations and Resolutions	xxii
List of Statutes	xxvi
List of abbreviations	xxxi
1 Introduction	1
1.1 Relationship between sustainable development and access to knowledge	1
1.2 Role of intellectual property rights in restricting access to knowledge	12
1.3 Purpose and plan of the work	15
1.4 Methodological approach	24
Part I Determining the normative meaning of the general exception clauses of the TRIPS Agreement	27
2 The customary rules of treaty interpretation and the elements in light of which the general exception clauses of TRIPS should be interpreted	29
Introduction	29
2.1 Ordinary meaning attributable to the terms of the treaty	32
2.2 Principle of good faith	33
2.2.1 Principle of effectiveness in the interpretation of treaties	34
2.2.2 Doctrine of abuse of rights	36
2.3 Object and purposes of the WTO system and the TRIPS Agreement	39
2.3.1 General objectives of the WTO system	41
2.3.2 Specific objectives of the TRIPS Agreement	42
2.3.3 Article 8 of the TRIPS Agreement and the guiding principles of the general exception clauses	44
2.3.3.1 Objectives pursued by the exceptions to IPRs	45
2.3.3.2 The necessity standard	46
2.3.3.2.1 The transformation of the necessity standard into a proportionality test	54
2.3.3.2.2 The necessity standard in the context of art. 8 of the TRIPS Agreement	61
2.3.3.3 The consistency standard of art. 8 of the TRIPS Agreement	63
2.3.3.3.1 Additional obligations that shall be observed by copyright exceptions	64
2.3.3.3.2 Additional obligations that shall be observed by the exceptions to the rights conferred by trademarks	66
2.3.3.3.3 Additional obligations that shall be observed by the exceptions to the rights conferred by protected industrial designs	66
2.3.3.3.4 Additional obligations that shall be observed by the exceptions to the exclusive rights conferred by a patent	67
2.3.3.3.4.1Guarantee of protection to all categories of inventions that shall be protected by all WTO Members	67
2.3.3.3.4.2Minimum term of protection of patents	68
2.3.3.3.4.3Respect for the area occupied by the TRIPS compulsory licensing system	68
2.3.3.3.4.4Non-discrimination based on national origins, the field of technology and the manner of exploitation of the invention	70
2.4 Context of the general exception clauses of the TRIPS Agreement	74
2.4.1 Interpretative agreements and subsequent State practices	75
2.4.2 Rules of international law applicable in the relations between the parties	78
2.4.2.1 Principle of proportionality	82
2.5 Supplementary means of interpretation	87
3 Determining the normative meaning of arts. 17, 26(2) and 30 of the TRIPS Agreement	90
3.1 Introduction	90
3.2 Art. 30 of TRIPS according to Canada – Pharmaceutical Patents	90
3.2.1 The first step of the test of art. 30	91
3.2.2 The second step of the test of art. 30	93
3.2.3 The third step of the test of art. 30	95
3.2.4 Obstacles created by Canada – Pharmaceutical Patents	96
3.3 Reframing the meaning of art. 30 in the light of the treaty interpretation rules of the VCLT	97
3.3.1 The first step of the test	97
3.3.2 The second step of the test	100
3.3.3 The third step of the test	103
3.3.4 Summary of the normative meaning of art. 30 resulting from the application of the general rule of interpretation of the VCLT	107
3.4 Assessment test of the legitimacy of exceptions to the rights conferred by trademarks (art. 17)	108
3.5 Assessment test of the legitimacy of exceptions to the rights conferred by protected industrial designs (art. 26.2)	114
4 Determining the normative meaning of art. 13 of the TRIPS Agreement and art. 9(2) of the Berne Convention	117
4.1 Introduction	117
4.2 Art. 13 of TRIPS according to US – Section 110(5) Copyright Act	121
4.2.1 First step: exceptions shall be confined to certain special cases	121
4.2.2 Second step: exceptions shall not conflict with a normal exploitation of the affected works	122
4.2.3 Third step: exceptions shall not unreasonably prejudice the legitimate interests of the copyright holders concerned	124
4.2.4 Why US – Section 110(5) Copyright Act is legally irrelevant to future disputes	124
4.3 Interpreting art. 13 TRIPS and art. 9(2) BC in accordance with the customary rules of treaty interpretation	127
4.3.1 The first step	127
4.3.2 The second step	130
4.3.3 The third step	136
4.3.4 Aids offered by the records of the Stockholm Revision Conference	140
Concluding remarks on Part I	148
Part II Putting to the test the capacity of the general exception clauses of the TRIPS Agreement to promote the pillars of sustainable development	157
5 Patents and the R&D and genetic diagnostic test exceptions	159
5.1 Introduction	159
5.2 Potential obstacles set by biotech patents to the progress of science and technology	163
5.2.1 Challenges created by gene patents	163
5.2.2 Patents on genes associated with disease and genetic tests	168
5.2.3 Genes and unique resources	171
5.2.4 Research tools	172
5.2.4.1 Definition	172
5.2.4.2 Problems caused by granting patents on research tools	173
5.2.5 Tragedy of the anti-commons	176
5.2.6 Royalty stacking	177
5.3 Research use exception and freedom in science and technology	178
5.4 Research use exceptions adopted by some members of the international community	182
5.5 The R&D and genetic diagnostic test exceptions	190
5.5.1 General rules applicable to both exceptions	192
5.5.1.1 Rule I: Mandatory character of the exceptions	192
5.5.1.2 Rule II: Duty to inform	193
5.5.1.3 Rule III: Guarantee of access to biological materials	193
5.5.1.4 Rule IV: Prohibition of reach-through patent claims and contractual clauses	193
5.5.1.5 Rule V: Establishment of a patent clearing house	195
5.5.1.6 Rule VI: De-bureaucratization of the procedures for granting compulsory licenses	197
5.5.1.6.1 Compulsory licensing for unique research tools	199
5.5.1.6.2 Compulsory licensing of blocking patents	200
5.5.2 R&D exception – first component: uses focused on generating knowledge on the subject matter of the patent and developing new innovations	201
5.5.3 R&D exception – second component: scientific and humanitarian uses	204
5.5.4 R&D exception – third component: dual inventions, when used as research tools	205
5.5.4.1 Differential treatment and graduated rates	207
5.5.5 R&D exception – fourth component: unique research tools	209
5.6 Assessment of the lawfulness of the R&D exception	211
5.6.1 First step: assessment of the limited character of the exception	211
5.6.2 Second step: assessment of the reasonableness of the interference caused by the exception	212
5.6.2.1 Proposals of exceptions governed by the TRIPS compulsory licensing system	214
5.6.2.2 Proposals based on the “fair use” defense	216
5.6.2.3 Proposals of sui generis patent exceptions	219
5.6.2.3.1 Janice Mueller’s proposal	219
5.6.2.3.2 Rochelle Dreyfuss’s proposal	221
5.6.2.3.3 Rebecca Eisenberg's proposal	223
5.6.2.4 Conclusions on the proposals examined	225
5.6.3 Third step: assessment of the reasonableness of the degree of harm caused by the R&D exception	226
5.7 The genetic diagnostic test exception and its functioning	227
5.8 Assessment of the lawfulness of the genetic diagnostic test exception in the light of art. 30 TRIPS	231
5.8.1 First step: assessment of the limited character of the exception	231
5.8.2 Second step: assessment of the reasonableness of the interference caused by the exception	233
5.8.2.1 Proposal of Lynn Rivers	233
5.8.2.2 Proposals based on a compulsory licensing scheme	234
5.8.3 Third step: assessment of the reasonableness of the prejudice caused by the exception	235
6 Trademarks and the parody and criticism exception	237
6.1 Introduction	237
6.2 Some cases involving conflicts between the exclusive right conferred by trademarks and freedom of expression	240
6.2.1 Laugh It Off case	240
6.2.2 Areva case	243
6.2.3 Esso case	245
6.2.4 Danone case	247
6.2.5 “Guaraná Power” case	248
6.2.6 Brazilian Olympic Committee case	250
6.2.7 Tata Sons case	252
6.2.8 Lessons to be drawn from the cases	255
6.3 Proposal of a parody and criticism exception	258
6.3.1 Assessment of the legality of the parody and criticism exception	262
7 Industrial designs and the repair exception	266
7.1 Introduction	266
7.2 ANFAPE case	268
7.2.1 SDE’s ruling	271
7.2.2 Efforts to reverse SDE’s ruling	276
7.3 European proposal for a repair exception	282
7.4 Assessment of the lawfulness of the European repair exception	287
7.4.1 First step	287
7.4.2 Second step	288
7.4.3 Third step	290
8 Copyright and the educational exception for underprivileged students and researchers	292
8.1 Introduction	292
8.2 The broadening of exclusive rights and the Brazilian Copyright Act of 1998	297
8.2.1 The cumbersome Brazilian private copying exception	301
8.2.2 The response of the Brazilian government	309
8.3 Proposal for an educational exception for underprivileged students and researchers	312
8.3.1 Assessment of the legality of the proposed educational exception	315
8.3.1.1 Assessment of the special character of the exception	315
8.3.1.2 Assessment of the ability of the exception to conflict with the normal exploitation of the affected works	318
8.3.1.3 Assessment of the unreasonable character of the prejudice caused by the exception to the legitimate interests of copyright holders	319
Concluding remarks on Part II	320
Final remarks	326
Bibliography	330
Index	351