TRADE RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS)

GROUP 6
NIKHIL GUPTA (063029) NIKHIL GURG (063030) SHASHWAT DHAMY (063047) URVASHI MISHRA (063059) VAIBHAV BHATIA (063060)

ROLE PLAY
DISPUTE DS50 INDIA PATENT PROTECTION FOR PHARMACEUTICAL AND AGRICULTURAL CHEMICAL PRODUCTS

TRIPS
Intellectual property rights are the rights given to persons over the creations of their minds. They usually give the creator an exclusive right over the use of his/her creation for a certain period of time. Main Areas of TRIPS 1. Copyright and rights related to copyright 2. Industrial property

COPYRIGHT AND RIGHTS RELATED TO COPYRIGHT

The rights of authors of literary and artistic works (such as books and other writings, musical compositions, paintings, sculpture, computer programs and films) are protected by copyright, for a minimum period of 50 years after the death of the author.

Also protected through copyright and related (sometimes referred to as neighbouring) rights are the rights of performers (e.g. actors, singers and musicians), producers of phonograms (sound recordings) and broadcasting organizations. The main social purpose of protection of copyright and related rights is to encourage and reward creative work.

INDUSTRIAL PROPERTY
Industrial property can usefully be divided into two main areas:

One area can be characterized as the protection of distinctive signs, in particular trademarks (which distinguish the goods or services of one undertaking from those of other undertakings) and geographical indications (which identify a good as originating in a place where a given characteristic of the good is essentially attributable to its geographical origin).
The protection of such distinctive signs aims to stimulate and ensure fair competition and to protect consumers, by enabling them to make informed choices between various goods and services. The protection may last indefinitely, provided the sign in question continues to be distinctive. Other types of industrial property are protected primarily to stimulate innovation, design and the creation of technology. In this category fall inventions (protected by patents), industrial designs and trade secrets.

BASIC INTRODUCTION TO TRIPS AGREEMENT

The

WTOs Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), negotiated in the 1986-94 Uruguay Round, introduced intellectual property rules into the multilateral trading system for the first time. WTOs TRIPS Agreement is an attempt to narrow the gaps in the way these rights are protected around the world, and to bring them under common international rules. It establishes minimum levels of protection that each government has to give to the intellectual property of fellow WTO members.

The

BROAD ISSUES COVERED UNDER TRIPS

how basic principles of the trading system and other international intellectual property agreements should be applied how to give adequate protection to intellectual property rights

how countries should enforce those rights adequately in their own territories
how to settle disputes on intellectual property between members of the WTO special transitional arrangements during the period when the new system is being introduced.

STANDARDS CONCERNING THE AVAILABILITY, SCOPE AND USE OF INTELLECTUAL PROPERTY RIGHTS

GENERAL PROVISIONS AND BASIC PRINCIPLES

Article 1 Nature and Scope of Obligations

Members shall give effect to the provisions of this Agreement. Members may implement in their law more extensive protection than is required by this Agreement, however there is no obligation.
For the purposes of the Agreement, the term "intellectual property" refers to all categories of intellectual property that are the subject of Sections 1 through 7 of Part II i.e. Copyright and Related Rights, Trademarks, Geographical Indications, Industrial Designs, Patents, Layout-Designs (Topographies) of Integrated Circuits and Protection of Undisclosed Information.

ARTICLE 2 INTELLECTUAL PROPERTY CONVENTIONS

In

respect of Parts II, III and IV of this Agreement, Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967). in Parts I to IV of this Agreement shall derogate or detract from existing obligations that Members may have to each other under the Paris Convention, the Berne Convention, the Rome Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits.

Nothing

Article 3

National Treatment
Each

Member shall accord to the nationals of other Members treatment no less favorable than that it accords to its own nationals with regard to the protection of intellectual property, subject to the exceptions already provided in, respectively, the Paris Convention (1967), the Berne Convention (1971), the Rome Convention or the Treaty on Intellectual Property in Respect of Integrated Circuits. may avail themselves of the exceptions permitted under paragraph 1 in relation to judicial and administrative procedures.

Members

ARTICLE 4 MOST-FAVOURED-NATION TREATMENT

With

regard to the protection of intellectual property, any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members from this obligation are any advantage, privilege or immunity accorded by a Member: 1. deriving from international agreements on law enforcement of a general nature and not particularly confined to the protection of intellectual property, 2. granted in accordance with the provisions of the Berne Convention (1971) or the Rome Convention 3. the rights of performers, producers of phonograms and broadcasting organizations not provided under this Agreement;

Exempted

ARTICLE 5 MULTILATERAL AGREEMENTS ON ACQUISITION OR MAINTENANCE OF PROTECTION

The obligations under Articles 3 and 4 i.e. National treatment and Most Favored Nation Treatment do not apply to procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the acquisition or maintenance of intellectual property rights.

ARTICLE 6 EXHAUSTION

Under this article for the purposes of dispute settlement under this Agreement, subject to the provisions of Articles 3 and 4 i.e. National Treatment and MFN Treatment nothing in this Agreement shall be used to address the issue of the exhaustion of intellectual property rights.

ARTICLE 7 OBJECTIVES

The protection and enforcement of intellectual property rights 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.

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 their socio-economic and technological development.
measures may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.

Appropriate

STANDARDS CONCERNING THE AVAILABILITY, SCOPE AND USE OF INTELLECTUAL PROPERTY RIGHTS

SECTION 1: COPYRIGHT AND RELATED RIGHTS

Article 10 Computer Programs and Compilations of Data 1. Computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention (1971) Article 11 Rental Rights In respect of at least computer programs and cinematographic works, a Member shall provide authors and their successors in title the right to authorize or to prohibit the commercial rental to the public of originals or copies of their copyright works.

SECTION 2: TRADEMARKS
ARTICLE 15 Protectable Subject Matter

1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks.
Members may make registrability depend on use. However, actual use of a trademark shall not be a condition for filing an application for registration. An application shall not be refused solely on the ground that intended use has not taken place before the expiry of a period of three years from the date of application.

SECTION 3: GEOGRAPHICAL INDICATIONS

Protection of Geographical Indications

Article 22

1. Geographical indications are, for the purposes of this Agreement, 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. 2. In respect of geographical indications, Members shall provide the legal means for interested parties to prevent: (a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good; (b) any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967).

SECTION 4: INDUSTRIAL DESIGNS

Article 25

Requirements for Protection

1. Members shall provide for the protection of independently created industrial designs that are new or original. Members may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features. Members may provide that such protection shall not extend to designs dictated essentially by technical or functional considerations. 2. Each Member shall ensure that requirements for securing protection for textile designs, in particular in regard to any cost, examination or publication, do not unreasonably impair the opportunity to seek and obtain such protection. Members shall be free to meet this obligation through industrial design law or through copyright law.

SECTION 5: PATENTS
Article 27 Patentable Subject Matter

patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.

SECTION 6: LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS

Article 35 - Relation to the IPIC Treaty

Members agree to provide protection to the layout-designs (topographies) of integrated circuits (referred to in this Agreement as "layout-designs") in accordance with Articles 2 through 7 (other than paragraph 3 of Article 6), Article 12 and paragraph 3 of Article 16 of the Treaty on Intellectual Property in Respect of Integrated Circuits Article 36 Scope of the Protection Subject to the provisions of paragraph 1 of Article 37, Members shall consider unlawful the following acts if performed without the authorization of the right holder:9 importing, selling, or otherwise distributing for commercial purposes a protected layout-design, an integrated circuit in which a protected layout-design is incorporated, or an article incorporating such an integrated circuit only in so far as it continues to contain an unlawfully reproduced layout-design.

SECTION 7: PROTECTION OF UNDISCLOSED INFORMATION

1. In the course of ensuring effective protection against unfair competition as provided in

Article 10bis of the Paris Convention (1967), Members shall protect undisclosed information in accordance with paragraph 2 and data submitted to governments or governmental agencies in accordance with paragraph 3.

2. Natural and legal persons shall have the possibility of preventing information lawfully within

their control from being disclosed to, acquired by, or used by others without their consent in a manner contrary to honest commercial practices10 so long as such information: (a) is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; (b) has commercial value because it is secret; and (c) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

SECTION 8: CONTROL OF ANTI-COMPETITIVE PRACTICES IN CONTRACTUAL LICENCES

Article 40
1. Members agree that some licensing practices or conditions pertaining to intellectual property rights which restrain competition may have adverse effects on trade and may impede the transfer and dissemination of technology. 2. Nothing in this Agreement shall prevent Members from specifying in their legislation licensing practices or conditions that may in particular cases constitute an abuse of intellectual property rights having an adverse effect on competition in the relevant market. As provided above, a Member may adopt, consistently with the other provisions of this Agreement, appropriate measures to prevent or control such practices, which may include for example exclusive grant back conditions, conditions

preventing challenges to validity and coercive package licensing, in the light of the relevant laws and regulations of that Member.

INDIA AND TRIPS AGREEMENT

INDIA AND TRIPS AGREEMENT

As

per the Uruguay Round, Government of India is committed to implement final act of GATT Negotiations from 1st January 2005.
India preferred to keep Intellectual Property Right out of purview of WTO because of its concern that it may be harmful for its domestic industries like chemicals, pharmaceuticals etc India had to agree and implement them in form of TRIPS at the end of negotiations.

But

Though

CHANGES REQUIRED IN INDIAN PATENT ACT

The right of importation and the prohibition of discrimination between local production and importation, Broadening patentable subject-matter to include micro-organisms, Limiting compulsory licensing to comply with the conditions set forth in Article 31, Increasing the term of protection to twenty years uniformly for all subject matters,

Allowing product patents,

Shifting the burden of proof in matters of processpatent infringement proceedings.

TIMELINE OF INDIAS ACCEPTANCE TO TRIPS

2nd July 1996 - US calls for a consultation with India under article 4 on settlement of Intellectual property dispute. 20th Nov 1996 Panel setup considering the violation of TRIPS obligation by India. Sept 1997 Panel rules out that India has failed to comply with TRIPS obligations by stating that article 70 is read incorrectly by India and comply immediately to the article. Appellate Body recommended that DSB should request India to change Indian Patent Act by April 1999. 23rd Dec 2003 Amendment Patent Bill Fully complied to TRIPS was passed and became effective on 1st Jan 2005

STAKEHOLDERS OPINION

Pharmaceutical substances and specially the drug chemical entity should be specifically mentioned in the articles

Inventions which are not patentable should be clearly provided in an exhaustive list.
Patentability of all life forms and microorganism should be avoided whereas a specific technical terms must be defined to maximum extent to avoid ambiguity. With considerable development in exploitation of Indias rich biodiversity and continuous applications of patents, it will be beneficial for the country to align it with the TRIPS agreement at international level.

Influence of big powers on WTO and its agreements can have a serious effect on many developing economies and their principles specifically in TRIPS.

FEATURES OF PATENT (AMENDED) BILL 2003

Extension of product patents to all sectors of Indian economy.

Provisions to safeguard Exclusive Marketing Rights(EMR) for the ones already granted.
Provisions of granting compulsory license exclusively for the purpose of exporting drugs to countries without the capacity or with insufficient capacity to manufacture them themselves. Provisions to change the procedure of processing of patent application to be more user friendly. Introduction of a tiered mechanism for representation against patent applications and also for oppositions and revocations of Patents.

DISPUTE SETTLEMENT CASE FOR TRIPS IN WTO

DISPUTE SETTLEMENT CASE

Measure at Issue
Measure at issue: EC Regulation related to the protection of geographical indications and trademarks Product at issue: Agricultural products and foodstuffs affected by the EC Regulation.

Complainant: United States Respondent: European Communities

Third Parties: Argentina; Australia; Brazil; Canada; China; Chinese Taipei; Colombia; Guatemala; India; Mexico; New Zealand; Turkey

CONTINUED

Agreements cited: (as cited in request for consultations) GATT 1994: Art. I, III:4 Intellectual Property (TRIPS): Art. 1.1, 2, 2.1, 3, 3.1, 4, 16, 16.1, 20, 22, 22.1, 22.2, 24, 24.5, 41.1, 41.2, 41.4, 42, 44.1, 63, 63.1, 63.3, 65, 65.1
Request for Consultations received: 1 June 19991 June 1999 Panel Report circulated: 15 March 2005

SUMMARY
1.

Complaint by the United States

Lack of protection of trademarks and geographical indications (GIs) for agricultural products and foodstuffs in the EC.

2.

EC Regulation 2081/92, as amended, does not provide national treatment with respect to geographical indications .It limits the GIs that the EC will protect and limits the access of nationals of other Members to the EC GI procedures and protections provided under the Regulation

COMPLAINT BY AUSTRALIA

EC measure may diminish the legal protection for trademarks

EC measure may not be consistent with the ECs obligation to provide the legal means for interested parties to prevent misleading use of a geographical indication. EC may not have met its transparency obligations in respect of the measure EC measure seems not to accord to the nationals and/or products of each WTO Member treatment no less favourable than that it accords to its own nationals and/or like products of national origin,

PANEL AND APPELLATE BODY FINDINGS

Violated the national treatment obligations under TRIPS Art. 3.1 and GATT Art.III:4 by according less favorable treatment to non-EC nationals and products, than to EC nationals and products.
Application and objection procedures: The Panel found that the Regulation's procedures requiring non-EC nationals, or persons resident or established in non-EC countries, to file an application or objection in the European Communities through their own government (but not directly with EC member states) Providing an "extra hurdle" to applicants for GIs in third Countries and their products, and that the GATT violation was not justified by Art. XX(d)

IMPLEMENTATION OF ADOPTED REPORTS

The European Communities stated its intention to implement the DSBs recommendations and indicated that it would need a reasonable period of time to do so.
The reasonable period of time for implementation shall be 11 months and 2 weeks The EC fully implemented the DSBs recommendations and rulings by adopting a new regulation which entered into force on 31 March 2006.

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