Intellectual property (IP) rights are the legal rights given to persons over non-physical creations of the mind - such as valuable know-how, designs and expressions.
Although created by legislation, IP rights are similar to other forms of personal property - like land, or cash or works of art: they can be sold, exchanged, traded and even deeded in a will to the owner's heirs.
The most noticeable difference between intellectual property and many other forms of property is that intellectual property is intangible like ideas, or knowledge. You can't touch the intellectual property itself. A creation of the mind, however, must be expressed in some way that can be perceived - such as on a canvas, or on a CD or in a piece of metal, for example - to be identified and protected.
IP rights take several different forms depending on the way that the intellectual creation is expressed. For example books, paintings and films come under copyright; inventions can be patented; brand names and product logos can be registered as trademarks; and so on.
Intellectual property is all around us. It's embodied in the ordinary objects that we use every day: not just a component of high-tech goods.
IP is embedded in the trademarks on our clothing and in the registered designs on food wrappers. It is expressed in the patented technology of everyday living like electric lamps, bathroom fittings, radios, furniture, mobile telephones, cars and many more basic goods.
Every day we enjoy using someone's intellectual property: reading a newspaper, watching television, reading a book, and listening to music we are benefiting from copyright expressions or protected performances. How do we get to use someone's property like this? We pay for it in our newspaper subscriptions, or by watching ads on the television or by paying a premium for design or the latest gadgets.
We rely on brands in almost everything we do to tell us about quality, suitability and price.
Many products are valuable almost entirely for their design, or performance or innovative content: films, music recordings, books, computer software and on-line services, for example. In fact, innovation and design are basic components of the new technologies - more essential than silicon in a computer chip, more important than telephone wires to the Internet.
There are several reasons, but the most important is to encourage innovation and creativity. There is a danger that without legal protection, creators could be discouraged from taking up, or continuing, their work.
The creation of new technology, or a design or an original work of art usually demands hard work, experience, talent and (sometimes) great expense. But a peculiar property of such innovation and creativity is that it does not reside in a finite supply of tangible resources over which owners have physical control, but is potentially infinitely reproducible, often at little cost. This can make it difficult for the inventor or author to enjoy any benefit from his/her inventions or creations. This is sometimes called the `appropriability problem.'
If the inventor or author cannot reap benefits from his/her work, creativity is unlikely to disappear altogether. But invention in areas requiring expensive industrial research and development or the development of `human capital' such as the nurturing of creative talent could stop or be retarded. The level of creative work would probably slow down [and the benefits would spread more slowly]?. Creativity and innovation can improve the quality of life and the productivity - and therefore the wealth - of the society as a whole. So, very likely, economic growth would slow down if there were no protection for IP.
Governments make IP laws to offset the appropriability problem. The IP laws give inventors, authors etc. an exclusive right over the use of his/her creation for a certain period of time. The IP rights owner can take advantage of this exclusive right by selling the right to use the creation or innovation. In this way, IP rights allow prices in the marketplace to determine the value of the innovation or creation.
The IP laws are not for the sole benefit of the person who creates intellectual property, however. The laws attempt to balance the interests of the author or inventor and the interests of the society as a whole. We wish to reward the IP owner, but we also wish to access and employ these valuable creations on reasonable terms.
So IP laws limit the extent of the creator's exclusive rights, usually to a specified period of time. There are other limits, too, on the types of inventions or creations that can qualify for protection and on the scope or use of the exclusive rights.
If you are an inventor, or an author or an artist you face a problem in selling your work in the absence of IP protection: it is difficult to `appropriate' - that is, to secure for your private use - the benefits of your work so that you can charge for them. At least some of the benefits are likely to become `public', allowing everyone, including your competitors, to benefit from that work and you may not be able to do much about it.
Why is it so hard for individuals to appropriate the benefits from inventions and creations? Two reasons:
If you can't stop anyone from sharing an invention or creation (`non-excludable') and if there's no way to track or control who's benefited from your idea (`non-rival'), you've got very little chance of charging others - your marketplace competitors included - for the use of your innovations or creations.
Economists say that the production of these goods and services that are non-rival and non-excludable is characterized by market failure. This means that amount of these goods and services that firms will produce in a free-market economy will be too small relative to demand because the private incentives - the potentially appropriable benefits - do not adequately reflect the benefits to society that flow from their production. As a consequence, governments themselves supply many public goods such as national defense, clean air, and lighthouse services.
Government cannot supply all the knowledge and innovation needed for the growth of a modern economy, however. Other ways of dealing with the `market failures' surrounding the creation of knowledge are needed. This is a crucial function of IP laws.
It's very important to bear in mind that the incomplete appropriability of knowledge is not necessarily a bad thing. In fact, the tendency of knowledge to `leak' - create `spillover' benefits - is essential to the development of science and, according to some economists, to the development and growth of national economies - as we will see.
As is so often the case, the matter is a question of balance - in this case between providing sufficient private incentives for inventions and creations while not stifling long-term spillover benefits.
The benefits of some goods and services are partially appropriable by the producer. They offer a mixture of private benefits and public benefits, such as the lighted candle in Jefferson's example of a candle that gives light not only to the person holding the candle but to all others in the room, or a beautiful private garden that's visible from the street. The garden gives pleasure to the owner (a private benefit) - and to the passerby (a public benefit that is not `appropriated' by the garden owner). The public benefit from this garden is a `spillover' benefit of the gardener's work.
Even with IP protection, inventions and creations frequently have spillover benefits because, as we have seen, they are by nature public goods whose benefits are not easily appropriated by the producer.
There are many examples of advances in science and technology in which the spillover benefits were much greater than those appropriated by the innovators.
In both cases, even if the inventors' imaginations did reach such heights, today they receive no additional monetary benefit for the enormous advantages that society reaps from their insights. This does not mean that the scientists were not rewarded: the inventors of the Laser and the transistor profited from their research. But society at large profited to an even greater extent!
Many economic surveys have shown that advances such as these typically yield even higher returns to society than to the inventors themselves. A review of econometric studies concluded that the average private rate of return to an innovation seems to be between 20 and 30 percent, while the social rate of return is closer to 50 percent - that is, twice the rate of private return. In part this is because the spillover benefits include the transfer of the new knowledge to other firms and researchers whose own research compounds the benefits, including the spillover benefits. Here are some examples.
Although much innovation is communicated through dedicated channels such as scientific papers, conferences and technical journals, competitive markets also play an important role in spreading the benefits of innovation.
Competitors frequently learn from new technologies after they enter the marketplace
Consumers often share the benefit of new technologies or lower prices for existing products as a result of innovation
Sometimes, innovators intentionally create knowledge spillovers to accelerate development of complementary products or the market acceptance of their product. Sometimes innovations require changes in complementary products before they can be successfully marketed. A new means of burning fuel in an internal combustion engine may require changes to the chemical composition of fuel, for example, to work optimally. It may be to the advantage of the engine manufacturer to share the new knowledge about combustion - but not the patented combustion technology - with the petrol companies.
Patents, by making it worthwhile to invent, develop and bring innovation to the market as well as by requiring disclosure, have a similar effect in spreading knowledge to competitors as well as to firms making complementary products.
Commercial development and use of new knowledge in products sold in the market will also tend to spread new knowledge, even if the inventor tries to prevent it. When a product embodying new technology appears in the marketplace, it frequently reveals at least some aspects of the knowledge underlying that technology to others, especially to competitors who are likely to be skilled in very similar technologies. Hence the process of economically exploiting the knowledge in the market place tends to pass that knowledge to others.
Consumers benefit whenever a firm creates a new product, or reduces the cost of producing an existing product due to the natural operation of market forces.
The relationship between markets, products, IP rights and spillovers works in both directions and forms a sort of `virtuous cycle'.
Intellectual property rights are customarily divided into two main areas: copyright and rights related to copyright, and industrial property.
are protected by copyright, for a minimum period of 50 years after the death of the author.
Those who perform or broadcast these copyright works, or produce recordings of them, are also protected through copyright or through IP rights that are described as “related” - or sometimes "neighbouring" - rights, because they are closely associated with the copyright nature of the work performed, broadcast or recorded. Such related rights include the rights of
Industrial property
Industrial property can usefully be divided into two main areas:
IP rights do not apply to knowledge as such. They do protect, among other things, expressions or inventions based on knowledge. This is an important point that is not always appreciated: you should try to bear it in mind.
In fact, IP rights can assist in the dissemination of new knowledge and ideas. Patent applicants, for example, must reveal the novel aspects of their invention in such detail, including proportions and techniques where appropriate, so as to enable any other technically qualified person to make and use the invention.
Disclosure of the novel technique means that the technical advances on which the patent is based are immediately added to the public stock of knowledge or `know-how'. This is a trade-off for the exclusive rights of exploitation granted to the successful applicant: part of the balancing act involved in the legislation creating IP rights.
Most people with even a casual acquaintance with history would accept that technology has played an important role in the growth of the world economy. The importance of knowledge as a `factor of production' has been increasing for hundreds of years, since the spread of printing in the 15th century and the development of modern scientific methods and industrial production methods in the 17th and 18th centuries.
The invention of the printing press, the steam engine, low-cost steel production, the railway locomotive, the gasoline engine, electric light, synthetic fertilizers, the telegraph, effective pesticides, radio, plastics, antibiotics, computers, the Internet: all of these have undoubtedly contributed to a revolutionary growth in productivity - beginning with the industrial revolution of the 19th century.
Gradually, but at a faster and faster pace, the stock of knowledge has grown and the way in which it is stored, accessed, disseminated and reproduced has become less costly [Internet growth - Moore's Law]. Although the lower cost of spreading knowledge has itself contributed to growth, it has also made the `appropriability problem' more acute.
Economists generally agree that suitably designed IP laws are likely to result in higher levels of innovation by creating private rewards for creativity and innovation. They also have evidence from surveys that, although IP laws allow innovators to capture a share of the rewards, patented innovations have substantial `spillover' benefits. The rewards that are shared with the society as a whole as a result of the advances embodied in innovations are frequently as large or larger than those that accrue to the innovator.
But economists aren't yet able to make confident predictions about economic growth, development and international trade based on the strength of IP laws. This is due to factors such as:
`Imperfections' in the market for knowledge, some of which are due to the IP laws
Difficulties in specifying the mechanisms by which trade liberalization contributes to economic growth
The complex interplay between IP, technology transfer and a firm's choice of market access vehicles (foreign direct investment (FDI), licensing, joint-venture).
It's a very common assumption that the contribution of copyright to economic activity is limited to the creators of copyright works: authors, artists, musicians, computer programmers, database managers and so on.
But the economic impact of the creative act is much broader than that: copyright products and goods and services that benefit from protection related to copyright could be said to radiate activity throughout the economy. They include a wide range of industrial and services sectors from handicrafts to high-tech. All of these industries depend to some extent on the existence of the property right to control the reproduction of the `core' copyright materials that they help to produce, transform or distribute.
As the table illustrates, there are many industries that depend on the production of copyrighted works. These industries, typically, account for 3 - 5% of the total economic output of industrialized economies.
In the Netherlands, for example, the output of copyright related industries was estimated at 5.5% of the national GDP in 1998, making this sector about the same size as the construction sector and somewhat larger than the banking sector (5.2% of GDP).
Copyright industries
|
Category |
Definition |
Industries |
|
“Core” copyright industries |
Industries that produced copyright protected works. These industries would not exist without copyright material. |
Literature, the press
Music
Industrial design |
|
Copyright-dependent industries |
Industries in which operations essentially depend on copyright protected works. Without such works the output of the industry would be much smaller |
Manufacture and distribution of electronic equipment (TVs, radios, VCRs, audio equipment, CD players etc) Manufacture and distribution of computers Manufacture and distribution of musical instruments Photographic and cinematographic equipment Retail and wholesale industries and other intermediaries that specialize in the above products |
|
Other industries in which copyright materials are an essential input |
Industries whose operations depend on the use or distribution of material that is copyright-related. These industries would be somewhat smaller in the absence of copyright |
Jewellery Furniture Household china, glass Clothing and footwear Toys and games Wallcoverings and carpets Engineering |
Source: Finnish Copyright Institute
Furthermore, the copyright-related sectors of the economy have been shown to be growing faster than the economy as a whole in several industrialized countries (around twice as fast in some cases).
Estimated average real growth rate - US Copyright industries
|
1977-99 |
1987-99 |
1995-99 |
|
|
“Core” copyright industries |
7.2 |
7.2 |
10.4 |
|
Rest of US economy |
3.1 |
3.4 |
3.8 |
Source: AIIA
As an approximation, Copyright industries accounted for some 3 - 5% of the GDP of developed countries during this period. Why is this important? Because this is a high level of output for any single industry group - comparable with the output of, for example, the finance or farming sector in some of these economies. Please note that the data in this chart refers to different years between 1986 (Austria) and 1999-2000 in the case of Australia.
The share of knowledge-intensive goods in our economies is higher now than it has ever been and the value of high-tech production is growing faster than the value of other sectors of the economy.
In many countries, developed and developing, production of high-technology goods is growing at a faster rate than that of other manufactured goods, and economic activity in high-technology industries is driving national economic growth.
According to the United States' National Science Foundation, during the 18-year period 1980-97, global high-technology production grew at more than twice the rate of production of other manufactured goods: at an inflation-adjusted average annual rate of nearly 6.2 percent. Toward the end of this period (1994-97), high-technology industry output grew at more than 11 percent per year—more than four times the rate of growth for all other manufacturing industries. By 1997, the global output of the industries identified by the OECD as the most `knowledge intensive' (aerospace, computers and office machinery, electronics-communications, and pharmaceuticals) represented about 12 percent of global production of manufactured goods.
In 1997, high-technology manufactures were estimated to represent 15.7 percent of manufacturing output in Japan, 14.7 percent in the United States, 11.7 percent in the United Kingdom, and 8.3 percent each in France and Germany.
The experience of two Asian countries, China and South Korea, demonstrate the importance of knowledge-intensive industries to the newly industrialized economies. In 1980, high-technology manufactures accounted for less than 7 percent of China's total manufacturing output; this proportion jumped to 11.6 percent in 1989 and reached 14.8 percent in 1997—about the same as in the United States. In 1997, high-technology manufacturing in South Korea accounted for about the same percentage of total output as in Japan (15.8 percent) and almost twice the percentage of total manufacturing output in France and Germany.
Trade in high-tech goods has grown rapidly
Structural change: Since the 1970s the structure of international trade in non-fuel goods has changed significantly. Formerly goods trade was dominated by primary products such as grains, iron ore, coffee, and unprocessed cotton, it has been fundamentally changed by the growth of trade in technology-intensive goods. High-technology goods doubled their share of world merchandise exports from 11 percent in 1976 to 22 percent in 1996. Meanwhile the share of primary products dropped to less than 25 percent
Industrialized country shares fall: Between 1980 and 1997 the share of the U.S.A. in global high-technology exports - aerospace, computers and office machinery, electronics-communications, and pharmaceuticals - fell from 25 percent to 18 percent. Japan, Germany and the United Kingdom also saw their shares of world high-tech exports fall.
The `industrialized' countries' shares of global high-tech exports fell over the 18-year period in part because high-technology industries grew rapidly in newly industrialized economies, especially in Asia. Singapore and South Korea are two examples. In 1980, high-technology industries in Singapore and South Korea accounted for about 2.6 percent and 1.5 percent of world high-technology exports. Both nations' market shares doubled by the late 1980s. The latest data for 1997 show Singapore's share reaching 8.0 percent and South Korea's share reaching 5.4 percent.
How knowledge contributes to economic growth
Economists have found it difficult to develop a theory of economic growth that accounts for the contribution of technology. Up to the late 1980s, economic theory attributed economic growth to the accumulation of capital factors (physical capital, human capital and labor) and to technological advances. But the theories did not account for the origins of these technological advances: they were exogenous events, arriving `out of nowhere' as far as the economic model was concerned to propel growth to a new level.
It was not until the mid-1980s that economists developed `endogenous growth' models that explained firms' research and development activities, in economic terms, as competitive activity designed to maintain a lead in the market place. In these models, returns on investment need not decrease in the long run (which created some theoretical challenges for the new growth theorists). Furthermore, according to some of these models, the growth of the economy as a whole depended not only on the competitive R&D activities of individual firms but also on the acceleration of growth due to `spillovers' from the creation of this new knowledge that spread the benefits of R&D to the society as a whole. On this point, the new growth economists were echoing conclusions that had been reached by more intuitive means decades earlier.
Will firms invest in R&D or in the assembly of knowledge - for example in a database - if they suspect that their competitors might benefit from the resulting knowledge? The answer to this question depends on how the benefits are shared. Firms are likely to invest in innovation if their likely share of the benefits can be expected to exceed their costs and such investment offers them more reward than other things they could be doing. This is where the role of government - public policy - can be crucial. IP laws help achieve both public interest in the growth of knowledge and technology and the private interests of firms in securing a sufficient share of the rewards to justify investment. Patent laws do this by
IP rights encourage technology `spillovers'
Patent laws directly promote valuable knowledge spillovers from innovation because they require successful applicants for patents to fully disclose their innovation in such a way as to make it possible for a sufficiently skilled person to be able to reproduce the innovation.
But IP laws also indirectly encourage spillover benefits by creating a framework in which the holders of IP rights can market the products of their intellectual effort without fear of the loss of their property rights.
This close relationship between IP rights, spillover benefits, markets and the products of innovation forms a sort of `virtuous cycle' that contributes to economic growth.
As you might guess, there are some disadvantages that arise from the grant of exclusive legal rights - which sometimes can constitute `monopolies' if they result in sufficient market power. With `normal' economic goods - goods that are rival and excludable - economics tells us clearly that a market with many suppliers and many buyers makes everyone better off than a market in which supply is in the hands of only one (monopoly) or a few (oligopoly) firms.
In terms of static use of resources and welfare, monopolists charge prices that are too high - and/or make too few products available in the marketplace - from the point of view of the rest of the society.
So, what about exclusive IP rights: are they good or bad? Well, they're a trade-off: a balance between the `static' anti-competitive effects created by the exclusive rights provided by e.g. patents and the dynamic, or longer-run, benefits that IP rights such as patents offer because they stimulate innovation and creativity.
In some countries, charging very high prices for a protected product or failing to make it available can in itself be an anti-competitive practice actionable under competition law. In other countries, anti-competitive abuses occur essentially when the right holder attempts to lever his/her legitimate market power in the protected product to gain power in another market. An example might be when a right holder makes use of another product a condition of use of the protected product.
Intellectual property itself can also contain safeguards against abusive practices. For example, failure by a patent owner to supply the market can be a ground for the grant of compulsory license in many countries.
Governments need to design their IP laws to ensure that patents that are granted are sufficiently broad to allow innovators to secure their rights to the direct products of their innovation, but not so broad that the monopoly could stifle innovation across a broad range of technologies. They also need to adopt effective laws to control abusive, anti-competitive behaviour.
IP rights contribution to development
Although most experts accept that IP rights do contribute to development and may be essential to the medium and upper-income developing countries, few would claim to clearly understand the relationship of IP rights to economic development. Surveys of recent economic literature find few empirical studies of the relationship of IP policies - specifically - to economic growth.
The issue is important, but it is also very complex. Analysts find it difficult to separate the effects of IP rights protection from other policy settings and factors that impact growth in developing economies. Also, the importance of IP rights to firms' investment intentions varies from industry to industry and among countries. Patent protection seems to have a different impact on the development of a pharmaceutical industry and an automobile industry, for example.
Several analysts have shown that the technology benefits that might be obtained from strong IP protection such as the effective transfer of technology from foreign investors may depend crucially on other factors that seem to influence the effectiveness of technology transfer and indigenous innovation
Although theoretical work explaining the relationship between IP rights and growth is far from complete, analysts endorse the common sense view that the guarantee of IP rights is important in all economies. Increasingly, their work is focussed on the impact of the way different policy choices and specific rules on IP protection affect development. The areas of study include: the exhaustion of exclusive patent rights and the treatment of parallel imports; IP-related tax policies; the relationship between IP laws and indigenous or traditional knowledge; new use of intellectual property such as the patenting of genetic material; the effects of different degrees of enforcement, or different breadths, of IP rights at different level of economic development; access to information in the digital environment; the interrelationship between competition law and IPRs law.
IP rights, foreign investment and the transfer of technology
As you might expect, interviews with multinational firms show that the apparent strength of a country's laws protecting IP rights has an important influence on their investment intentions in that country. But it turns out to be difficult to predict how different configurations of a country's IP laws might affect investor behavior. The difficulty arises from the wide variety of choices a firm has (direct investment, direct sales, licensing, joint-ventures) in accessing a market and the difficulty of isolating IP concerns from the many other factors that affect a firm's investment decision.
In two important empirical studies, Edwin Mansfield found that the strength or weakness of intellectual property protection has an important effect on the decision of firms industries such as chemicals, pharmaceuticals, machinery, and electrical equipment on whether to make foreign investments and on the nature of any investment made. Using opinion survey results and US, Japanese and German foreign direct investment data, Mansfield suggests that holding other factors constant, the strength or weakness of a country's system of intellectual property protection seems to have a substantial on the kinds of technology transferred to that country and the amount of direct investment in that country by Japanese and German firms.
The surveys showed that the strength of firms' concerns about IP rights depended on the nature of their business. For example, in the chemical and pharmaceutical industries, over 80 percent of firms interviewed in Germany, Japan, and the United States said that the strength of the IP regime was important with regard to investments in R and D facilities, but only about 20 percent said that it was important with regard to sales and distribution outlets. Some firms, particularly research-intensive firms with products or processes that are relatively easy to imitate, told researchers that they would not make substantial investments or transfer advanced technology to countries with weak intellectual property protection.
Most firms outside the chemical and pharmaceutical industries regard such protection as an important factor, but only one of a number of factors, influencing their investment decisions.
In a recent comprehensive review of the empirical literature, a leading academic is this area concludes that "The results strongly support the view that international trade, IP & technology licensing react positively, in some cases elastically, to the strength of patent protection across countries"
Origins of the TRIPS Agreement
The Uruguay Round of multilateral trade negotiations - under the auspices of the General Agreement on Tariffs and Trade (GATT) - were launched in 1986 in Punta del Este, Uruguay. The importance of IP for knowledge based industries and trade was growing. There was a perception that inadequate standards of protection and ineffective enforcement of IP rights were often unfairly depriving right holders the benefits of their creativity and inventiveness, and, as a result, prejudicing the legitimate commercial interests of their respective countries. This led to demands to address IP protection in this context.
The Punta del Este Declaration instructed negotiators to "clarify GATT provisions and elaborate as appropriate new rules and disciplines" "in order to reduce distortions and impediments to international trade". The Declaration specified that "negotiations shall aim to develop a multilateral framework of principles, rules and disciplines dealing with international trade in counterfeit goods". Developing countries interpreted this mandate to be limited to negotiations on how to discourage trade in counterfeit goods, while the United States and, to varying degrees, other developed countries, read into it a broader mandate to negotiate better protection for intellectual property.
At the 1998-1999 Mid-Term Review of the negotiations, this difference concerning the mandate was resolved. Ministers agreed that negotiations should encompass both adequate standards of the protection of IP rights and their enforcement. They also agreed that consideration would be given to underlying public policy objectives of national systems for the protection of IP, including developmental and technological objectives. They emphasized the importance of reducing tensions by reaching strengthened commitments to resolve IP disputes through multilateral procedures.
This led to the submission in the TRIPS Negotiating Group of a number of detailed national proposals dealing with standards for IP rights and enforcement. Eventually, a "Draft Final Act Embodying the Results of the Uruguay Round Multilateral Negotiations" was submitted to the 1990 Brussels ministerial conference. The TRIPS Agreement got its present form in the Draft Final Act Embodying the Results of the Uruguay Round of Multilateral Trade Negotiations of 20 December 1991 (GATT document MTN.TNC/W/FA, the so-called Dunkel draft). After this, only two further changes were made to the text of the TRIPS Agreement before its final adoption as an Annex to the Marrakesh Agreement Establishing the World Trade Organizations at a ministerial conference held in Marrakesh, Morocco in 1994.The differences between developed and developing country members of the GATT on this subject were in part due to differences in priorities and in part due to the large international transfers involved and the legal and commercial conflicts that lay behind the developed country demands. Eventually, the opportunity offered by the broad-ranging trade negotiations in the Uruguay Round to reconcile these different priorities and make trade-offs between different matters allowed the two groups of countries to reach a mutually acceptable solution. The inclusion of IP into the WTO trade regime also brought bilateral disputes under the multilateral rule of law.
Brief history of multilateral IP rights
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) came into effect on 1 January 1995. It was one of the major outcomes from the Uruguay Round of multilateral trade negotiations that led to the establishment of the World Trade Organisation (WTO). The TRIPS Agreement is not, however, the first agreement to protect IP rights on an international scale.
Because patent or copyright protection conferred by national legislation has little effect in preventing imitation or copying abroad there has been a long-standing interest in international coordination of standards and enforcement of IP rights. The first international agreements were the Paris Convention (1883) on industrial property (patents, trade marks and designs) and the Berne Convention (1886) on copyright. Although both conventions had been periodically updated and provided some measure of global IPR protection, by the 1980's there was growing frustration with their limits.
As technologies spread, the volume of infringing goods in international trade grew. In practice, the imitation of recent technologies is often difficult in the absence of complementary know-how. But the copying (so called `piracy') of literary works, sound recordings, films and computer software is fairly simple, using widely available duplication technologies.
It's no surprise, therefore, that the biggest demand for stricter global IP rights protection came from firms in industrialized countries, in sectors that are particularly vulnerable to imitation or copying: pharmaceuticals, speciality chemicals, entertainment (videos, computer games) and computer software.
History of copyright and the Berne Convention
Each country's copyright law usually offers protection only to works published in that country. The countries that joined the Berne Convention on copyright agreed to extend the protection of their national laws to works from the other member countries, thus protecting authors' rights internationally for the first time.
Although there is evidence of authors' concerns about their economic and `moral' rights dating back to ancient times, it was not until the sixteenth century, when printing began to spread throughout Western Europe that real pressures arose for copyright legislation.
Initially European monarchs were more concerned with taxing and regulating the content of printed material: the first laws related to printed materials required the licensing of publication and the prior deposit of all printed books in royal libraries. The first copyright law that gave authors ownership of copyright for a fixed period of years did not appear until 1709 (the British `Statute of Anne').
By the late nineteenth century, a growing demand for new printed materials led many publishers to reprint unauthorized versions of foreign works. Authors whose works were pirated had little recourse against the publisher because copyright laws were typically enacted on a national basis. Such laws gave copyright protection only to authors who were nationals of the country in which the laws were enacted.
A few countries negotiated bilateral treaties that protected the nationals of both countries, but such arrangements were rare. A non-government organization, the “Association Litteraire et Artistique Internationale”, founded in 1878 by the internationally popular French author Victor Hugo, led the movement for international copyright protection, drafting what eventually became the Berne Convention. The Convention was first adopted in1886, in Berne, Switzerland, and was later revised at several conferences: Paris, 1896; Berlin, 1908; Berne, 1914; Rome, 1928; Brussels, 1948; Stockholm, 1967; and Paris, 1971.
The original signatories of the Convention were Belgium, France, Germany, Haiti, Italy, Liberia, Spain, Switzerland Tunisia and the United Kingdom. As of […] 2002, […]States were party to the Convention
Patents, Trademarks and the Paris Convention
The word `patent' refers to `letters patent' - that is, `open letters' marked with the king's seal - that were issued by European monarchs from about the 15th century. The letters publicly recorded a grant of a protected monopoly over some commercial activity, often in return for a share of the profits.
The earliest recorded monopoly apparently granted to protect an invention is a Venetian law passed in 1474 to protect the silk trade. The English king Henry VI granted Flemish-born John of Utynam a patent in 1449 for a 20-year monopoly for a method of making stained glass, required for the windows of Eton College that had not been previously known in England.
Because patents have, from the outset, been a property and a monopoly created by the State - embodied by a monarch or by a parliament - their history is closely linked with constitutional development. During the course of the `revolution' that bought parliamentary rule in England, for example, the rights of the monarch to issue monopolies were curtailed in a way that fixed the breadth and duration of any monopoly. Eighteenth century political philosophers introduced notions of the grant as a `bargain' between the patent holder and the society, which was to be the residual beneficiary of any benefits created after the monopoly right expired. Many of these ideas are still reflected in patent legislation today.
The marking of goods for various purposes, including distinguishing them from those of other traders, can be traced back to ancient times. Similarly, the existence of rules governing the use of such marks, goes back to the medieval craft guilds.
It was only in the nineteenth century that the idea evolved that a mark that distinguished a particular trader's goods, and so attracted valuable goodwill, could be considered as a type of property. By the middle of that century courts began to accept complaints against infringement of a trademark, even where there was no intention to deceive on the part of the infringer. The creation of national registers of marks made it still easier to protect the property they represented.
As in the case of copyright, the first `globalization' of commerce in the 19th century revealed the need for an agreement to extend protection of industrial intellectual property granted under national (territorial) laws to a wider market place. The Paris Convention of 1883 achieved this goal by embodying principles of national treatment, mutual independence of patents and priority.
The Convention applies to industrial property rights, including patents, utility models, industrial designs, trademarks, trade names, indications of source or appellations of origin, and the repression of unfair competition. The Paris Convention does not define the subject matter to be protected, the rights to be conferred, permissible exceptions, or the minimum term of protection. Each member country may decide these things for itself. As of[more recent date], [160] States were party to the Convention.
The World Intellectual Property Organization - WIPO
The World Intellectual Property Organization (WIPO), based in Geneva, was established by a convention of 14 July 1967, which entered into force in 1970. It has been a UN specialized agency since 1974. It is the successor of the United International Bureaux for the Protection of Intellectual Property (best know by its French acronym BIRPI), that was established in 1893 to service the needs of members of the Paris Convention for the Protection of Industrial Property, and the Berne Conventionfor the Protection of Literary and Artistic Works (copyright law). The Organization counts 177 nations as member states.
WIPO administers 23 treaties (two of those jointly with other international organizations) and carries out a rich and varied program of work, through its member States and secretariat, that seeks to:
WIPO derives most of its funding from earnings from the three major industrial property registration systems it administers.
An agreement on cooperation between WIPO and WTO entered into force in January 1996. The agreement provides cooperation in three main areas
As the IP intensity of international trade increased it exposed the ineffectiveness of the WIPO treaties in establishing strong IP rights protection for trade. In the 1980s firms in industrialized countries increased pressure on governments to strengthen the international protection of IP rights. Since many developing countries were reluctant to embrace stronger protection of IP rights, an agreement had to be worked out that offered some compensating benefits to these countries, to induce them to join a binding international IP rights agreement.
The opportunity to negotiate such a balanced agreement was provided by the Uruguay Round trade negotiations. These comprehensive negotiations on a wide range of trade issues of interest to both developed and developing countries were launched under the auspices of the General Agreement on Tariffs and Trade (GATT) in 1986. Initially, the industrialized countries focussed on trade in `pirated' copyright protected material and `counterfeit' products bearing well-known trademarks. Later in the negotiations the agenda widened to include all IPR issues.
After protracted negotiations, developing countries agreed to join a new international IPR agreement, partly in exchange for the benefits of other agreements reached in the Uruguay Round negotiations on the liberalisation of agricultural and textile imports by developed nations.
There were also other factors, however, that helped the participating countries to reach agreement. There had been shift in the policies of many developing countries toward greater reliance on trade-led, market-oriented growth and away from so-called `autonomous' growth strategies. The greater openness to trade and to foreign investment, and the greater importance of technology-intensive industries in their economies, contributed to developing countries' acceptance of the objectives of the TRIPS Agreement. In fact, some developing countries had decided to strengthen their IPR systems well before the TRIPS Agreement was concluded.
The path to agreement on TRIPS in the Uruguay Round was, nevertheless, long and difficult. The WTO has released documentation from the negotiating group detailing the contributions of all sides and the nature of their concerns as they worked through 8 years towards the final agreement.
The WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) 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. When there are trade disputes over intellectual property rights, the WTO's dispute settlement system is now available.
The Agreement covers the main areas of intellectual property:
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Copyright Trademarks Geographical indications Industrial designs Patents Layout designs of integrated circuits Undisclosed information, including trade secrets. |
For each of these, the Agreement
The Agreement contains a statement of basic principles, provides for potential anti-competitive effects of IP rights and transitional arrangements during the period when the new system is being introduced that provide more time for developing countries to bring their administration of IP rights into line with its requirements.
The TRIPS Agreement is an integral part of the WTO, all members are bound by its rules.
Like the other WTO Agreements, the TRIPS agreement is based on principles of non-discrimination in trade:
National treatment, which requires that laws and regulations in Member states should offer foreigners' IP rights at least the same level of protection as the IP rights of their own nationals. National treatment is also a key principle in other intellectual property agreements outside the WTO.
Most-favoured-nation treatment, which means that each Member must offer equal treatment for right holders from all trading partners in the WTO
The persons whose intellectual property is protected by the TRIPS agreement may be natural persons like you and I, or `legal' persons such as a company. They do not necessarily have to be `nationals' of a WTO member country: the rules vary slightly among the different IP rights because they are `inherited' by the TRIPS Agreement from the different WIPO Treaties. But, in brief, anyone who has acquired IP rights in some WTO member country, whether or not a national of that country, may be protected by the TRIPS agreement.
An IP right - such as a patent or copyright - gives an inventor or creator the right to stop other people making unauthorized copies. Society at large sees this temporary intellectual property protection as an incentive to encourage the development of new technology and creations that will eventually be available to all. The TRIPS agreement recognizes the need to strike a balance between the interests of authors/inventors and the interests of users. It says intellectual property protection should contribute to technical innovation and the transfer of technology. Both producers and users should benefit, and economic and social welfare should be enhanced, the agreement says.
For more details see — A Close Reading
The existing `ground rules'
The second part of the TRIPS agreement has rules for several different kinds of intellectual property rights and how to protect them. The purpose is to ensure that adequate standards of protection exist in all member countries. Here, the starting point is the obligations of the main international agreements of the World Intellectual Property Organization (WIPO) that already existed before the WTO was created:
The Paris Convention for the Protection of Industrial Property (patents, industrial designs, etc).
The Berne Convention for the Protection of Literary and Artistic Works (copyright).
Some areas are not covered by these conventions. In some cases, the standards of protection prescribed were thought inadequate. So the TRIPS agreement adds a significant number of new or higher standards.
For more details see — A Close Reading
The TRIPS agreement ensures that computer programmes will be protected as literary works under the Berne Convention and outlines how databases should be protected. It also expands international copyright rules to cover rental rights. Authors of computer programmes must have the right to prohibit the commercial rental of their works to the public.
A similar exclusive right applies to films where commercial rental has led to widespread copying, affecting copyright-owners' potential earnings from their films.
The agreement says performers must also have the possibility to prevent unauthorized recording, reproduction and broadcast of live performances (bootlegging) for no less than 50 years. Producers of sound recordings must have the right to prohibit the reproduction and commercial rental of recordings for a period of 50 years. Broadcasting organizations have certain rights in respect of their broadcasts for no less that 20 years.
For more details see — A Close Reading
Trademarks and Geographical indications
The TRIPS Agreement defines what types of signs must be eligible for protection as trademarks, and what the minimum rights conferred on their owners must be. It says that service marks must be protected in the same way as trademarks used for goods. Marks that have become well known in a particular country enjoy additional protection.
Place names are sometimes used to identify a product. Well-known examples include “Champagne”, “Scotch”, “Tequila”, and “Roquefort” cheese. Wine and spirits makers are particularly concerned about the use of place-names to identify products, and the TRIPS agreement contains special provisions for these products. But the issue is also important for other types of goods. The use of a place name to describe a product in this way — a “geographical indication” — usually identifies both its geographical origin and its characteristics.
Using a geographical place name when the product was made elsewhere or when it does not have the usual characteristics can mislead consumers, and it can lead to unfair competition. The TRIPS agreement says countries have to prevent the misuse of place names. For wines and spirits, the agreement provides higher levels of protection, i.e. even where there is no danger of the public being misled.
Some exceptions are allowed, for example if the name is already protected as a trademark or if it has become a generic term. For example, “cheddar” now refers to a particular type of cheese not necessarily made in Cheddar. But any country wanting to make an exception for these reasons must be willing to negotiate with the country that wants to protect the geographical indication in question. The agreement provides for further negotiations in the WTO to establish a multilateral system of notification and registration of geographical indications for wines.
For more details see — A Close Reading
Industrial designs, circuit layouts and trade secrets
Under the TRIPS agreement, industrial designs must be protected for at least 10 years. Owners of protected designs must be able to prevent the manufacture, sale or importation of articles bearing or embodying a design that is a copy of the protected design.
The basis for protecting integrated circuit designs (“topographies”) in the TRIPS agreement is the Washington Treaty on Intellectual Property in Respect of Integrated Circuits, which comes under the World Intellectual Property Organization. This was adopted in 1989 but has not yet entered into force. The TRIPS agreement adds a number of provisions: for example, protection must be available for at least 10 years.
Trade secrets and other types of “undisclosed information” which have commercial value must be protected against breach of confidence and other acts contrary to honest commercial practices. But reasonable steps must have been taken to keep the information secret. Test data submitted to governments in order to obtain marketing approval for new pharmaceutical or agricultural chemicals must also be protected against unfair commercial use.
For more details see — A Close Reading
The agreement says patent protection must be available for inventions for at least 20 years. Patent protection must be available for both products and processes, in almost all fields of technology. Governments can refuse to issue a patent for an invention if its commercial exploitation is prohibited for reasons of public order or morality. They can also exclude diagnostic, therapeutic and surgical methods, plants and animals (other than microorganisms), and biological processes for the production of plants or animals (other than microbiological processes).
Plant varieties, however, must be protectable by patents or by a special system (such as the breeder's rights provided in the conventions of UPOV — the International Union for the Protection of New Varieties of Plants).
The agreement describes the minimum rights that a patent owner must enjoy. But it also allows certain exceptions. A patent-owner could abuse his rights, for example by failing to supply the product on the market. To deal with that possibility, the agreement says governments can issue “compulsory licences”, allowing a competitor to produce the product or use the process under licence. But this can only be done under certain conditions aimed at safeguarding the legitimate interests of the patent-holder.
If a patent is issued for a production process, then the rights must extend to the product directly obtained from the process. Under certain conditions alleged infringers may be ordered by a court to prove that they have not used the patented process.
For more details see — A Close Reading
Remedies, enforcement and competition provisions
Having intellectual property laws is not enough. They must be enforceable. The rules in Part 3 of the TRIPS Agreement tread a narrow path between the need to take account of the different legal systems used by Members and the need to be precise enough to define meaningful requirements.
The aim of effective enforcement has also to be balanced against the risk of creating barriers to legitimate trade and the need to discourage abuse of the procedures and remedies. The procedures must be fair and equitable, and not unnecessarily complicated or costly. They must not entail unreasonable time limits or unwarranted delays. People involved should be able to ask a court to review an administrative decision or to appeal a lower court's ruling.
The agreement describes in some detail how members should enforce laws on IP rights, including rules for obtaining evidence, provisional measures, injunctions, damages and other penalties. It says courts must have the right, under certain conditions, to order the disposal or destruction of pirated or counterfeit goods. Wilful trademark counterfeiting or copyright piracy on a commercial scale must be criminal offences.
Governments have to make sure that intellectual property rights owners can receive the assistance of customs authorities to prevent imports of counterfeit and pirated goods.
The TRIPS agreement recognizes that the terms of a licensing contract could restrict competition or impede technology transfer. It says that under certain conditions, governments have the right to take action to prevent anti-competitive licensing that abuses intellectual property rights. It also says governments must be prepared to consult each other on controlling anti-competitive licensing.
For more details see — A Close Reading:
When the WTO agreements took effect on 1 January 1995, developed countries were given one year to ensure that their laws and practices conformed to the TRIPS agreement. Developing countries and - under certain conditions - transition economies were given five years. Least developed countries have 11 years.
If a developing country did not provide product patent protection in a particular area of technology when the TRIPS Agreement came into force (1 January 1995), it has up to 10 years to introduce the protection. But for pharmaceutical and agricultural chemical products, the country must accept the filing of patent applications from the beginning of the transitional period, though the patent need not be granted until the end of this period. If the government allows the relevant pharmaceutical or agricultural chemical to be marketed during the transition period, it must — subject to certain conditions — provide an exclusive marketing right for the product for five years, or until a product patent is granted, whichever is shorter.
Subject to certain exceptions, the general rule is that obligations in the agreement apply to intellectual property rights that exist at the end of a country's transition period, as well as to new ones.
A Council for Trade-Related Aspects of Intellectual Property Rights monitors the working of the agreement and governments' compliance with it.
The Preamble is broadly similar to those in other Uruguay Round agreements. It reproduces the basic Uruguay Round negotiating objectives for TRIPS established by the 1986 Punta del Este Declaration and the 1988/89 Mid-Term Review.
The objectives are similar to those in other GATT/WTO agreements - e.g. agreements dealing with anti-dumping or technical or phytosanitary regulations that may affect trade:
The list (a) to (e) detailing the rules needed to achieve these ends summarizes the main elements of the Agreement: the basic principles; standards for the protection of intellectual property rights; enforcement of these rights; dispute settlement; and transitional arrangements.
Item (b) on this list - the `provision of adequate standards and principles'- gives rise to the most unusual feature of the TRIPS Agreement compared with other WTO Agreements: the obligation on each member to enact specific minimum standards of protection.
Another point worth noting is the Preamble's separate references both to the fact that "intellectual property rights are private rights" and to "the underlying public policy objectives of national systems for the protection of intellectual property, including developmental and technological objectives".
A further goal of the agreement identified in the Preamble, to ensure that TRIPS disputes are settled through `multilateral procedures', reflects the fundamental role of WTO in reducing and managing conflicts between governments that may arise from commercial relations.
The Preamble concludes with a reference to Members' desire `to establish a mutually supportive relationship' between the WTO and WIPO, as well as with other relevant international organizations. This is an unusual inclusion among the objectives of WTO Agreements that reflects the decision to include many of the substantive standards by reference to treaties overseen by WIPO.
Rights, beneficiaries and scope
Member countries must provide the intellectual property protection specified in sections 1 to 7 of Part I of the Agreement, making it available to persons who are described as the `nationals' of any other WTO member.
Although Article 1.3 refers to these persons as "nationals", the benefits of the Agreement extend in fact to persons, natural or legal, who have a close attachment to other WTO Member economies without necessarily being nationals. This is because the criteria used to determine who benefits are those laid down for this purpose in the main pre-existing intellectual property conventions of WIPO applied with respect to all WTO Members whether or not they are party to the WIPO conventions.
These conventions are the Paris Convention for the Protection of Industrial Property, the Berne Convention for the Protection of Literary and Artistic Works, the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (the Rome Convention), and the Treaty on Intellectual Property in Respect of Integrated Circuits (the IPIC Treaty).
WTO Members are free to give greater protection than is provided in the TRIPS Agreement (Art 1.1), as long as this does not contravene the provisions of the Agreement. Members may choose any legal systems and practices through which they wish to give effect to the protection required by the Agreement, provided they comply with the provisions of the Agreement.
Article 2 of the Agreement requires all members to comply with the main provisions of the Paris Convention - which deals with `industrial rights' - in relation to IP standards, enforcement of IP rights and the acquisition and maintenance of IP rights. The corresponding obligations to adhere to provisions of the Berne and Rome Conventions and the IPIC (Intellectual Property in Respect of Integrated Circuits) treaty are found later in the Agreement.
A further clause has been added to ensure that nothing in the agreement can be interpreted to justify avoidance of obligations countries may already have under this convention or the Berne or Rome Conventions or the IPIC Treaty.
Articles 3 and 4 contain the fundamental rules on national and most-favoured-nation (MFN) treatment of foreign nationals, which are common to all categories of intellectual property covered by the Agreement.
National treatment and MFN apply to the standards of protection offered to foreigners and also to the availability, acquisition, scope, maintenance and enforcement of foreigners' intellectual property rights. These principles must also be respected by regulations affecting the use of intellectual property rights specifically addressed in the Agreement.
National treatment: Each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals.
MFN: Any advantage, favour, privilege or immunity granted by a Member to the nationals of any other Member shall be accorded immediately and unconditionally to the nationals of all other Members.
Exceptions: In several cases the Agreement requires Members to notify the TRIPS Council of WTO if they wish to take advantage of these exceptions.
National treatment: The exceptions allowed under the pre-existing intellectual property conventions of WIPO are also allowed under TRIPS although Article 3.2 places conditions on the use of national treatment exceptions in the case of administrative or judicial action. Where the exceptions in the WIPO treaties allow material reciprocity, a consequential exception to MFN treatment is also permitted under Article 4(b). For example, reciprocal grant of terms for copyright protection in excess of the minimum term required by the TRIPS Agreement, as provided under Article 7(8) of the Berne Convention as incorporated into the TRIPS Agreement.
As regards related rights, national treatment obligation only applies in respect of the rights provided in the Agreement. A similar exception to MFN obligation is provided under Article 4(c).
MFN: There are further limited exceptions available in Article 4 (a) that concern international agreements on judicial assistance or law enforcement of a general nature and in Article 4 (d) that concern pre-existing international agreements related to intellectual property.
Article 5 of the TRIPS Agreement exempts the application of national treatment or MFN to procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the acquisition or maintenance of intellectual property rights.
Article 6 deals briefly with the exhaustion of rights. It is generally accepted in law that the holder of intellectual property rights in a product loses ("exhausts") those rights over the further distribution in a particular market once he has sold the product: he has no control over whether the buyer re-sells the product in that market. There is less agreement over the issue of "parallel imports". In this case, the question concerns the extent to which a right holder in one jurisdiction can use his or her intellectual property right to prevent the import into, or sale in, that country of products that he or she has authorized for sale in another country. The TRIPS Agreement states that whatever a member does in this respect cannot be challenged under WTO dispute settlement procedures, provided that the TRIPS national treatment and MFN obligations have been complied with.
Objectives: Article 7, entitled "Objectives" amplifies the general goals contained in the Preamble of the Agreement. It says that 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.
Principles: Article 8, entitled "Principles", recognizes the rights of Members to adopt measures for public health and other public interest reasons and to prevent the abuse of intellectual property rights, provided that such measures are consistent with the provisions of the TRIPS Agreement.
During the Uruguay Round negotiations most participants said that they were satisfied that the Berne Convention provided adequate basic standards of copyright protection. So the TRIPS Agreement provisions on the protection of copyright and related rights begins - in Article 9 - by requiring that WTO Members comply with the substantive provisions of the Berne Convention (Articles 1 through 21), and with its Appendix.
These provisions deal with
“Moral rights” not included: The TRIPS Agreement does not in itself give rights or set obligations with respect to Article 6bis of the Berne Convention, which deals with what are known as "moral rights". These are the rights of authors to have their authorship acknowledged and to prevent their work from being changed in ways that distort or mutilate it.
“Berne +”: The TRIPS Agreement's extensions to the provisions of the Berne Convention are the provisions of Articles 10, 11 and 13 on computer programs and databases, rental rights, limited exceptions and certain other matters (more information is available in other topics).
IP rights apply to expressions not ideas: Article 9.2 of the TRIPS Agreement confirms that copyright protection shall extend to expressions and not to ideas, procedures, methods of operation, or mathematical concepts as such.
Berne Convention (1971)
Except for the provisions on moral rights, all the substantive provisions of the latest act of the Berne Convention, the so-called “Paris Act” of 1971, have been incorporated by reference into the TRIPS Agreement. Because they are incorporated the substantive rules of the Convention have become part of the TRIPS Agreement and must be read as applying to WTO Members.
National treatment: the Convention provides that works originating in one of the contracting States must be given the same protection in each of the other contracting States as the latter grants to the works of its own nationals (Article 5(1)).
Automatic protection: protection may not be subject to any formality of registration, deposit, or the like (Article 5(2)).
Independence of protection: enjoyment and exercise of the rights granted is independent of the existence of protection in the country of origin (Article 5(2)).
Works protected: Protection must include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression (Article 2(1)).
Exclusive rights: The exclusive rights granted to authors include rights over
Members may optionally (Article 14ter) grant copyright holders an `artist's resale right', the so-called "droit de suite", concerning original works of art and original manuscripts.
Permissible exceptions: the Convention provides for the possibility of using protected works in particular cases without having to obtain the authorization of the right holder, and without having to pay any remuneration for such use.
These exceptions include reproduction in certain special cases (Article 9(2)), quotations and use of works by way of illustration for teaching purposes (Article 10), reproduction of newspaper or similar articles and use of works for the purpose of reporting current events (Article 10bis), and ephemeral recordings (Article 11bis(3)).
The Convention also provides the possibility of compulsory licences for the right of broadcasting, and of communication to the public by wire, by rebroadcasting or by loudspeaker or any other analogous instrument of the broadcast of the work (Article 11bis(2)), and for the right of recording of musical works (Article 3(1)).
Term of protection: Article 7 of the Convention provides that the term of protection shall be the life of the author and 50 years after his death. Paragraphs 2 through 4 specifically allow for shorter terms in certain cases. For photographic works and works of applied art, the minimum term of protection is 25 years from the making of the work.
Appendix: The Appendix allows developing countries, under certain conditions, to make some limitations to the right of translation and the right of reproduction. Information on the way the Appendix is applied under the TRIPS Agreement can be found in documents IP/C/14 and IP/C/W/103
Computer programs, databases, rental rights
Article 10.1 of the TRIPS Agreement says that computer programs, whether in source format or object code, must be given copyright protection as `literary works' under the Berne Convention (1971). The source format of a computer program is normally a text file containing statements in a computer language. The object code is a digital file of instructions for the computer: the file that we normally call `the program file' is an object file.
The obligation to protect computer programs as literary works means that the term of protection that applies to computer programs is at least 50 years. Certain other types of work - namely photographic works and works of applied art - may have shorter terms of protection.
Compilations of data: Article 10.2 makes it clear that copyright protection extends to databases and to other compilations of data or other material that “by reason of the selection or arrangement of their contents constitute intellectual creations”. Copyright is available for databases in machine-readable or in other forms even when the database includes data that are not protected under copyright. The protection does not extend to the data itself and does not affect any copyright subsisting in the data itself.
Rental rights: Article 11 provides that authors of computer programs and, in certain circumstances, authors of cinematographic works (films or videos) may have the right to authorize or to prohibit the commercial rental to the public of originals or copies of their copyright works. The right to exclude the rental of films or videos is subject to the so-called impairment test: there is no obligation to accord this right to the copyright owner unless rental has led to widespread copying of such works, materially impairing the exclusive right of reproduction conferred in that Member on authors and their successors in title. Owners of copyright in computer programs must be given the exclusive rental right only where the program is the main thing being rented.
Term of protection, Exceptions
Term of protection: According to the general rule contained in Article 7(1) of the Berne Convention as incorporated into the TRIPS Agreement, the term of protection must be the life of the author plus 50 years.
Paragraphs 2 through 4 of that Article specifically allow shorter terms in certain cases. Article 12 of the TRIPS Agreement adds that whenever the term of protection of work, other than a photographic work or a work of applied art, is calculated on a basis other than the life of a natural person, the protection must last no less than 50 years from the end of the calendar year in which publication was authorized. If, however, there was no authorized publication within 50 years of the making of the work, then the term of protection must be 50 years from the end of the calendar year in which the work was made.
Limitations and exceptions: Article 13 requires Members to confine limitations or exceptions to exclusive rights to certain special cases that do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.
The interpretation of the provisions of Article 13 was subject to a detailed examination by a dispute settlement panel in United States - Section 110(5) of the US Copyright Act (DS160).
Performers, Producers and Broadcasting Organizations
The TRIPS Agreement also covers what it refers to as "related rights" (also called "neighbouring rights"). These are the rights of performers, producers of sound recordings ("phonograms") and broadcasters, when not covered by copyright. Although the Rome Convention provided these rights it had few signatories, particularly among the countries with a common law tradition.
The TRIPS agreement thus provided the first truly multilateral recognition that performers, as well as authors, should benefit from protection, although it permits substantial differences between countries in the amount of protection they give.
Performers must be given the possibility of preventing unauthorized sound recording or broadcasting of their performances, and of copying of such recordings. The Agreement uses terms such as “the fixation of their unfixed performance and the reproduction of such fixation” and “the broadcasting by wireless means and the communication to the public of their live performance”.
Producers of sound recordings must have exclusive rights over reproduction of these recordings, as well as exclusive rental rights for them. Paragraph 4 of Article 14 says that the provisions on rental rights apply also to any other holders of rights in sound recordings as determined in national law.
This right has the same scope as the rental right for computer programs: the impairment test that applies to cinematographic works does not apply but there is a so-called “grand fathering clause”. A Member who on 15 April 1994 had in force a system of equitable remuneration for holders of rights in sound recordings - for example a regulation that permitted rental or reproduction against the deposit of royalties in a central fund - may maintain such system provided that the commercial rental of the recordings does not make it difficult for the rights holders to exercise their right to control reproduction
Broadcasters must have the right to prohibit unauthorized recording, copying of recordings, and re-broadcasting of their broadcasts, or, where this is not done, authors must have such rights over the subject matter of broadcasts. The rights of performers and producers must be protected for at least 50 years, and those of broadcasters for at least 20 years.
Trademarks - protectable subject matter
Any sign, or any combination of signs, capable of distinguishing the goods and services of one `undertaking' from those of other undertakings must be eligible for registration as a trademark. The signs could comprise words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of signs.
Where signs are not inherently capable of distinguishing the relevant goods or services, Member countries are allowed to require, as an additional condition for eligibility for registration as a trademark, that distinctiveness has been acquired through use.
Members are free to determine whether to allow the registration of signs that are not visually perceptible (e.g. sounds or aromas).
Members may make registration depend on use of the trademark. However, Members may not require use of a trademark should be a condition for filing an application for registration. Nor may members refuse an application solely because the applicant failed to give effect to an `intent to use' until at least three years after the filing date (Article 15.3).
Service marks: The Agreement requires service marks to be protected in the same way as marks distinguishing goods (see e.g. Articles 15.1, 15.4 16.2 and 62.3).
Rights conferred, exceptions, term of protection
Rights conferred: The owner of a registered trademark must be granted the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for similar goods or services where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion must be presumed (Article 16.1).
Well-known marks: The provisions on well-known marks supplement the protection required by Article 6bis of the Paris Convention, as incorporated by reference into the TRIPS Agreement. The Paris Convention obliges Members to refuse or to cancel the registration, and to prohibit the use of, marks conflicting with a mark which is well known.
The TRIPS Agreement
The TRIPS Agreement requires members to deny a trademark that is similar to a registered well-known mark even when the goods or services to which it applies are not similar to the goods or services that bear the well-known mark. This is so if the use of the trademark would indicate a connection between those goods or services to which it is applied and the owner of the registered well-known trademark, and if the interests of the owner are likely to be damaged by such use (Article 16.3).
Limited exceptions: Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties (Article 17).
Registration: at least 7 years and renewable: Initial registration and each renewal of registration of a trademark must be for a term of at least seven years. The registration of a trademark must be renewable indefinitely (Article 18).
Trademarks - Other requirements
Requirement of use: Cancellation of a mark on the grounds of non-use cannot take place before three years of uninterrupted non-use has elapsed unless the trademark owner shows valid reasons based on the existence of obstacles to such use. Obstacles recognized by the authorities should include circumstances outside the control of the owner of the trademark such as import restrictions or other governmental restrictions. Article 19 says that use of a trademark by another person, when subject to the control of its owner, must be recognized as use of the trademark for the purpose of maintaining the registration.
No special requirements: The use of the trademark must not be unjustifiably encumbered by special requirements, such as use in conjunction with another trademark, use in a special form, or use in a manner detrimental to its capability to distinguish the goods or services (Article 20).
Licensing and assignment: Member governments must not `compulsorily license' a trademark, approving its use by someone other than the owner of the trademark without the owner's consent. This rule contrasts with the rule on Patents were compulsory licenses may be permitted. The owner of a registered trademark must be allowed to assign the trademark with or without the transfer of the business to which it belongs (Article 21).
Geographical indications, wines and spirits
Definition: “Geographical indications” are defined as 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 (Article 22.1).
General standard of protection: Members must provide owners of geographical indications with the legal means to prevent use of indications that mislead the public as to the geographical origin of the good, and any use that constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention.
This includes prevention of use of a geographical indication which although literally true "falsely represents" that the product comes from somewhere else.
Misleading trademarks: The registration of a trademark which uses a geographical indication in a way that misleads the public as to the true place of origin must be refused or invalidated ex officio if the legislation so permits or at the request of an interested party (Article 22.3)
Wines and spirits: Article 23 provides that interested parties must have the legal means to prevent the use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication. This applies even where the public is not being misled, there is no unfair competition and the true origin of the good is indicated or the geographical indication is accompanied by expressions such as "kind", "type", "style", "imitation" or the like. Similar protection must be given to geographical indications identifying spirits. Protection against registration of a trademark must be provided accordingly.
Geographical Indications - negotiations and exceptions
Article 24 provides a number of exceptions to the protection of geographical indications that are particularly relevant for geographical indications for wines and spirits. For example, Members are not obliged to bring a geographical indication under protection, where it has become a generic term for describing the product in question (paragraph 6). Measures to implement these provisions shall not prejudice prior trademark rights that have been acquired in good faith (paragraph 5). Under certain circumstances - including long-established use - continued use of a geographical indication for wines or spirits may be allowed on a scale and nature as before (paragraph 4).
Members are not obliged to protect geographical indications that are not protected or used in their country or origin (paragraph 9). The exceptions may not be used to diminish the protection of geographical indications that existed prior to the entry into force of the TRIPS Agreement (paragraph 3).
Members agreed (Article 24.1) to enter into further negotiations aimed at increasing the protection of individual geographical indications for wines and spirits. Members who take advantage of these exceptions must be willing to negotiate about their continued application to individual geographical indications (paragraph 1). The TRIPS Council will keep the application of the provisions on the protection of geographical indications under review. (paragraph 2).
The agreement provides that at least ten years' protection must be available for independently created industrial designs that are new or original. Members may require that designs must differ significantly from known designs or combinations of known design features in order to be `new or original'. Members may provide in their laws that protection does not extend to designs dictated essentially by technical or functional considerations.
Textile designs, which typically have a short life cycle, exist in large numbers and are widely subject to copying, are given special attention. Members must not set requirements for obtaining protection such as the cost, procedures for examination of the design or publication requirements that unreasonably stand in the way of gaining protection for a design. The owner of a protected design must have the right to stop production, sales or imports for commercial purposes by unauthorized third parties, of products which copy the design or substantially copy it.
The duration of protection for these designs must amount to at least 10 years (Article 26.3). The wording "amount to" allows the term to be divided into, for example, two periods of five years.
Members may adopt limited exceptions to the protection of industrial designs as long as the exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonable prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties.
The Paris Convention, which has been the main multilateral agreement on industrial property (patents, trademarks etc), does not define which inventions may be patentable, what rights must flow from ownership of a patent, what exceptions to those rights are permissible, or how long the protection should last. On all these important issues in patent protection, as in the other areas of intellectual property covered, the TRIPS Agreement sets out binding standards.
Subject matter: the Agreement says that patents must be available in principle for any inventions, whether they concern products or processes, in all fields of technology. Patents must be available and patent rights enjoyable for imported or locally produced products and for patentable inventions wherever the invention took place.
To qualify for a patent, the invention must be:
The basic rules on patentability are subject to three exceptions:
Any country that excludes plant varieties from patent protection must provide an effective “sui generis” system of protection - that is, a system of protection that applies specifically to plant varieties.
These provisions on the patenting of plants and animals are subject to review four years after the entry into force of the Agreement (Article 27.3(b)). In this context, delegations have provided information on their legislation in this area. The Secretariat has summarized this information in document IP/C/W/273, which is available in the WTO documents database at http://www.wto.org.
Patents - Rights conferred, Term of protection, Revocation
Rights conferred
When the patent covers a product: the rights owner must be allowed to prevent unauthorized persons from making, using, or selling the product and from importing it for these purposes.
When the patent covers a process: the rights owner must have the right not only to prevent unauthorized use of the process but also to prevent the use, sale or importation for use or sale of, at least, products directly obtained by that process
Patent owners must also have the right to assign the patent, or transfer it by succession, and to conclude licensing contracts
The term of protection available must be at least 20 years from the filing date (Article 33). The agreement does not explicitly deal with the well-known difference between national patent systems: the adoption by some countries (notably including the United States) of the date of invention rather than the filing date as the date for determining priority between two claims for the same invention. But Article 27.1 lays down that members may not discriminate according to place of invention in the patent protection they give.
Members must provide for judicial review of decisions on the revocation or forfeiture of a patent
Patents - Conditions, exceptions and burden of proof
Conditions on issue of patents: Members must make the issue of patents conditional on the applicant “disclosing” the invention in a manner sufficiently clear and complete for the invention to be reproduced “by a person skilled in the art”.
Members may also
Exceptions to exclusive rights: Members may provide limited exceptions - not specified in the Agreement - to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interest of the patent owner - taking into account, also, the legitimate interests of third parties.
The interpretation of the provisions of these exceptions contained in Article 30 was subject to a detailed examination by a dispute settlement panel in Canada - Patent Protection of Pharmaceutical Products (DS114).
Burden of proof in process patent disputes: In a dispute over a process patent, Members must provide their judicial authorities with the power in certain circumstances to require the defendant, not the patent owner, to bear `the burden of proof'. That is, in these circumstances, the court must be able to find that the patent was infringed unless the defendant proves that the product was obtained by some other process and not by the patented process (Article 34). Members must provide in their legislation that at least one of the following `circumstances' would justify the reversal of the burden of proof:
Process patents: burden of proofPatents - compulsory licensing
The issue by a government to itself (“government use”) or to another individual (“compulsory licensing”) of a license to exploit a patent without the authorization of its owner, is permitted, subject to a list of conditions aimed at protecting the legitimate interests of the right holder. The main conditions are:
Applications to be considered on their individual merits: Each decision to issue a compulsory license must be made on its individual merits. In other words, governments must not decide to compulsorily license a “class” of patents such as, for example, patented remedies for hypertension.
Prior efforts to obtain authorization: Except in an emergency - and in certain other circumstances - an attempt must be made first to obtain a voluntary license on reasonable commercial terms and conditions within a reasonable period. This condition may be relaxed when the government grants a compulsory license to remedy anti-competitive practices.
Scope and duration of license limited by purpose: The scope and duration of such use without the authorization of the right holder must be limited to the purpose for which it was authorized. In the case of semiconductor technology such use may be authorized only for public non-commercial use or to remedy a practice determined after judicial or administrative process to be anti-competitive. Compulsory licenses should be liable to termination when the circumstances that justified their creation no longer apply.
Licences to be non-exclusive, non-assignable: the licensee must not have rights to exclude the use of the license by others or to assign the license as if they were the patent holder
Predominantly for supply of domestic market: Compulsory licenses must be predominantly for the supply of the domestic market of the Member authorizing such use. This condition may be relaxed when the government grants a compulsory license to remedy anti-competitive practices.
Right holder: adequate remuneration: Despite the compulsory action, the patent holder must be paid adequate remuneration in the circumstances of each case, taking into account the economic value of the license. This condition may be relaxed when the government grants a compulsory license to remedy anti-competitive practices.
Judicial or other independent review: Members must provide for judicial or other independent review of the legal validity of the compulsory license and of the remuneration provided to the patent holder
This restriction is among the matters that have bee referred to the TRIPS Council for further consideration by the Doha Ministerial declaration on the TRIPS Agreement and Public Health. See the Topic: Trips and Public Health
Layout-Designs of Integrated Circuits
The TRIPS Agreement requires WTO members to protect the layout-designs ("topographies") of integrated circuits in accordance with certain provisions of the IPIC Treaty of 1989 concerning the definitions of "integrated circuit" and "layout-design (topography)", requirements for protection, exclusive rights, and limitations.
An "integrated circuit" means a product in which at least one active element, and some or all of the interconnections are integrally formed in and/or on a piece of material and which is intended to perform an electronic function.
A "layout-design (topography)" is defined as the three-dimensional disposition, however expressed, of the elements of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture.
The TRIPS agreement clarifies or builds on the IPIC treaty in four areas:
Term of protection: A minimum of 10 years (8 years under the IPIC Treaty).
Scope: Members are to consider unlawful, if not authorized by the right-holder of the design, the reproduction of a protected design, as well as the importation, sale or other commercial distribution of a protected layout-design, of integrated circuits incorporating such a design, or of articles that contain such integrated circuits.
Innocent infringers who import, sell or distribute integrated circuits that use unlawfully-copied layout-designs, must not be held to have acted unlawfully, but if they sell remaining stocks after being told of the infringement must be liable to pay a reasonable royalty to the right holder.
Compulsory licensing: The provisions of the TRIPS Agreement (Article 31) apply to layout-designs, in place of the provisions of the IPIC Treaty on compulsory licensing (Article 37.2). TRIPS Article 31(c) provides that in the case of semi-conductor technology, use without right holder's permission may only be authorized for public non-commercial use or to remedy a practice that judicial or administrative procedures have determined is anti-competitive.
Protection of Undisclosed Information
Trade secrets or know-how are also protected by the TRIPS Agreement.
Scope: Protection must be given to information that is
Preventing disclosure: The Agreement does not require undisclosed information to be treated as a form of property, but it does require that a person lawfully in control of such information must have the possibility of preventing it from being disclosed to, acquired by, or used by others without his or her consent in a “manner contrary to honest commercial practices”. This includes breach of contract, breach of confidence and inducement to breach, as well as the acquisition of undisclosed information by third parties who knew, or were grossly negligent in failing to know, that such practices were involved in the acquisition.
Undisclosed test and other data: The Agreement requires Members to protect against unfair commercial use of any undisclosed test and other data that is submitted to governments as a condition of approving the marketing of pharmaceutical or agricultural chemical products that include new chemical components. An exception to this obligation is available where disclosure is necessary to protect the public or where steps are taken to ensure that the data are protected against unfair commercial use.
Control of Anti-Competitive practices
Article 40 of the TRIPS Agreement recognizes that some practices in the licensing of IP rights and aspects of IP rights that limit competition can have adverse effects on trade and competition and may hamper the transfer and spread of technology. WTO Members may adopt measures that are consistent with the other provisions of the agreement to prevent or control practices that are abusive and anti-competitive. Examples of such practices might be exclusive grant-back conditions, or contract conditions preventing challenges to the validity of a license or coercive package licensing.
If a Member wants to take action against practices involving companies of another WTO Member, that other Member must be willing to consult with the Member taking action and to provide relevant information, subject to the provisions of domestic law and arrangements to safeguard confidential information.
Enforcement - General obligations
General obligations that all Members must meet include a broad requirement that each member shall have procedures that permit effective action against infringement of intellectual property rights covered by the agreement, while avoiding the creation of barriers to legitimate trade and providing safeguards against abuse of the procedures.
The procedures must meet the basic requirements of due process:
The Agreement does not oblige Members to put in place a judicial system for the enforcement of intellectual property rights distinct from that for the enforcement of law in general.
Article 69 supports the enforcement provisions by requiring members to nominate contact points in their administrations who are to exchange information on trade in infringing goods and, in particular, promote cooperation between customs authorities on trade in counterfeit and pirated goods.
Civil and Administrative Procedures
Fair and equitable procedures: Article 42 says that IP rights holders must be able to take civil action in the courts against any activity infringing the intellectual property rights covered by the Agreement. It details certain due process procedures that must be available in such civil cases
Evidence: Article 43 describes how the rules on evidence should be applied in certain situations. Where evidence that is likely to be important for one party is in the possession of the opposing party, the court must have the power to order that the evidence be produced. Also, if a party refuses without good reason to provide access to evidence that is in his or her possession, courts may be authorized to make their decisions on the basis of the information available to them as long as they provide the parties an opportunity to be heard.
Injunctions: Article 44 requires that the courts have the power to stop any actions that may infringe an IP right. This could include stopping imports that may infringe an IP right from being distributed on the domestic market. Members are not obliged to provide that authority where a person has unknowingly imported infringing goods.
Remedies, Right of Information, Indemnification and Administrative procedures
Damages: Members must give the Courts the power to order an infringer who has acted in bad faith to pay the right holder adequate damages and expenses, which may include attorney's fees. The courts may also be authorized to order recovery of profits and/or payment of pre-established damages even where the infringer did not know - or have any reason to know - that the action was an infringement (Article 45)
Other remedies: In order to create an effective deterrent to infringement, Article 46 says that the judicial authorities must have the authority to order the non-commercial disposal of infringing goods including the destruction of the goods. In the case of counterfeit trademark goods the simple removal of the phoney trademark would not normally be sufficient to permit release of the goods for sale. It must be possible, also, to dispose of materials and instruments predominantly used in the production of the infringing goods. (Article 46) In considering such requests, the courts must ensure that the remedy is proportional to the seriousness of the infringement and takes account of the interests of third parties.
Right of information: Judicial authorities may be authorized to order the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the infringing goods or services and of their channels of distribution (Article 47). This option is aimed at assisting the right holders to find the source of infringing goods and to take appropriate action against other persons in the distribution channels. This provision must be applied in a way that is in proportion to the seriousness of the infringement.
Indemnification of the defendant: In cases where an applicant may have abused the enforcement procedures Article 48 says that the judicial authorities must have the authority to order the applicant - including public authorities if they acted in bad faith - to pay an adequate compensation to the defendant who has been wrongfully enjoined or restrained
Application of the principles to administrative procedures: Article 49 says that administrative tribunals dealing with infringements must also conform to the principles set out for judicial tribunals.
Prompt and effective: Article 41 of the Agreement says that authorities must be able to act quickly to stop an infringement. As judicial procedures may take time to complete, courts must have the authority to order provisional measures in order to stop an alleged infringement immediately. Article 50 requires each Member to ensure that courts have the authority to order provisional measures in two situations
Without prior notice: To be effective, provisional measures may have to be taken without giving prior notice to the other side (“inaudita altera parte”), for example where any delay could cause irreparable harm to the right holder, or where there is a risk of evidence being destroyed. The parties affected must, however, be given notice without delay: at the latest, after the measures have been taken. The defendant has a right to ask for the Court for a review within a reasonable period after the notification of the measures of the questions whether these measures should be modified, revoked or confirmed.
Further procedures: The courts may require the applicant to prove that he/she is the right holder and that his/her right is being infringed or that infringement is imminent. The applicant may also be required to supply information necessary for the identification of the goods.
Safeguards against abuse: The judicial authority may require the applicant to provide a security (bond) or equivalent assurance sufficient to protect the defendant and to prevent abuse (paragraph 3). The measures must be revoked or otherwise cease to have effect, if the applicant fails to initiate proceedings leading to a decision on the merits of the case within a reasonable period to be determined by the judicial authority ordering the measures but in any case not more than 20 working days or 31 calendar days, whichever is the longer (paragraph 6).
Where the provisional measures are revoked or where they lapse because of something that the applicant did or did not do, or where the Court finds that there has been no infringement or threat of infringement of an intellectual property right, the Court must have the authority to order the applicant to compensate the defendant (paragraph 7).
Administrative procedures: These principles also apply to administrative tribunals that may be authorized to take provisional action (paragraph 8).
Special Requirements Related to Border Measures
The emphasis in the enforcement part of the TRIPS Agreement is on internal enforcement mechanisms, which, if effective, enable infringing activity to be stopped at the point of production.
However, the Agreement recognizes that such enforcement at source will not always be possible and that in any event not all countries are WTO Members, and therefore bound by the TRIPS Agreement. The Agreement therefore provides for border enforcement procedures.
Coverage: Members must provide border enforcement procedures to prevent counterfeit trademark and pirated copyright goods from entering the domestic market. Members may also provide border enforcement of other IP rights.
Members may - but are not required to - apply these procedures to
Parallel imports (footnote to Article 51)
De minimis imports, i.e. small quantities of goods of a non-commercial nature contained in travellers' personal luggage or sent in small consignments (Article 61)
Goods destined for exportation from their territories or goods in transit (Article 51)
Application: Each Member must designate an administrative or judicial "competent authority" with whom right holders may lodge applications for provisional customs action. The application must include evidence of a prima facie infringement of the IP right and supply a sufficiently detailed description of the goods to allow the customs authorities to easily recognize them. The authority must tell the applicant whether it accepts the application and, if so, for what period the suspension will apply (Article 52)
Security: The competent authority may require the applicant to provide a security or equivalent assurance sufficient to protect the defendant and the competent authorities and to prevent abuse. However the security must not be such as to unreasonably deter recourse to these procedures (Article 53.1).
Notice and Duration of suspension: The importer and the applicant must be promptly notified of the detention of goods (Article 54). If the right holder fails to initiate proceedings leading to a decision on the merits of the case within ten working days of the suspension of import clearances, the goods should be released (Article 55).
Where the alleged infringement concerns industrial designs, patents, layout-designs or undisclosed information, the importer must be entitled to obtain their release from customs on the posting of a security sufficient to protect the right holder from any infringement, even if proceedings leading to the decision on the merits have been initiated (Article 53.2).
Indemnities, Right of inspection, Ex officio action, Remedies
Indemnification of the importer: The applicant may be required to pay appropriate compensation to persons whose interests have been adversely affected by the wrongful detention of goods or through detention of goods released pursuant to the failure of the applicant to initiate in time proceedings leading to a decision on the merits of the case (Article 56).
Ex officio action: Members must be able to take action on the basis of an application from a right holder. The authorities are not compelled to act upon their own initiative, but, where they have prima facie evidence of an infringement, they may act. Article 58 contains certain additional provisions applicable to such ex officio action.
Right of inspection and information: The competent authorities must be able to give the right holder sufficient opportunity to have any goods detained by the customs authorities inspected in order to substantiate his or her claims. Where goods have been found infringing as a result of a decision on the merits, the Agreement leaves it to Members whether the right holder should be assisted with other persons in the distribution channel so that appropriate civil action could also be taken against them (Article 57)
Remedies: The competent authorities must have the power to order the destruction or disposal of goods in such a manner as to avoid any harm to the right holder. The principles contained in Article 46 on civil remedies, such as the need for proportionality, apply also to border measures. The defendant must have a right to seek review by a judicial authority of any administrative decisions on remedies (Article 59).
A final brief, but important, section on enforcement deals with criminal procedures for dealing with infringements of intellectual property rights. According to Article 61, provision must be made for these to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale.
The Agreement leaves it to Members to decide whether to provide for criminal procedures and penalties to be applied in other cases of infringement of intellectual property rights, in particular where they are committed wilfully and on a commercial scale
Sanctions must include imprisonment and/or monetary fines sufficient to provide a deterrent, consistent with the level of penalties applied for crimes of a corresponding gravity. When appropriate, the infringing goods, and any materials and equipment used to produce them, shall be subject to seizure, forfeiture and destruction.
Acquisition and maintenance of IP rights
The Agreement does not deal in detail with procedural questions concerning acquisition and maintenance of intellectual property rights. The purpose of the single article of Part IV of the Agreement is to ensure that unnecessary procedural difficulties in acquiring or maintaining intellectual property rights do not weaken the protection for IP rights required by the Agreement.
Compliance with reasonable procedures: Members may require compliance with reasonable procedures and formalities as a condition of the acquisition or maintenance of rights related to trademarks, geographical indications, industrial designs, patents and layout-designs.
Registration of a right (paragraph 2): Where the acquisition of an intellectual property right is subject to the right being granted or registered, the procedures must permit the granting or registration of the right within a reasonable period of time so as to avoid unwarranted curtailment of the period of protection.
Certain other requirements (paragraph 4): Administrative and regulatory procedures surrounding the acquisition or maintenance of intellectual property rights and administrative revocation and inter partes procedures such as opposition, revocation and cancellation of an IP right, must be governed by the general principles concerning decisions and review set out in paragraphs 2 and 3 of Article 41 of the TRIPS Agreement.
Final administrative decisions in these procedures must - with minor exceptions - be subject to review by a judicial or quasi-judicial authority (paragraph 5).
Dispute prevention and settlement
The task of monitoring the transparency of each country's laws and other measures affecting intellectual property, and of monitoring compliance with the TRIPS Agreement is in the hands of the WTO Council for TRIPS, as is the discussion of problems that may arise.
The agreement requires (Article 63) publication, of all national laws, measures and decisions of general application affecting the availability, scope, acquisition, enforcement and prevention of abuse of intellectual property rights “in such a manner as to enable governments and right holders to become acquainted with them”.
The Agreement also requires Members to notify laws and regulations to the TRIPS Council and to be ready to respond to a written request for information from another Member on IP-related laws and regulations, judicial or administrative decisions, or bilateral agreements that may have affected the other Member's interests (paragraph 3).
When, however, a problems between members reach the stage of a notification of a dispute and a request for formal consultations under the WTO disputes procedures, the matter moves beyond the responsibility of the specialized Council concerned -- in this case, the Council for TRIPS.
The WTO dispute settlement procedures apply to the obligations under the TRIPS Agreement (Article 64) except that the so-called `non-violation' grounds for dispute were not to apply to rights created under the TRIPS Agreement for the first 5 years - while the TRIPS Council deliberated on their application. The fourth Ministerial Conference, held in November 2001, directed the TRIPS Council to continue these deliberations and to make recommendations to the fifth Ministerial Conference. It was agreed that in the meantime Members will not initiate such complaints under the TRIPS Agreement.
Provision has been made, in agreement with WIPO, to avoid unnecessary duplication of notification requirements with those of that organization. The Agreement between the World Intellectual Property Organization and the World Trade Organization, signed in Geneva on 22 December 1995, includes provisions which result in most notifications on such matters as national intellectual property laws made to one organization being regarded as having been made to both.
Transitional arrangements and technical cooperation
The Agreement gives all WTO Members transitional periods so that they can meet their new obligations.
1 January 1996: developed countries + non-discrimination (all Members): Developed country Members had to comply with all of the provisions of the TRIPS Agreement by 1 January 1996. All Members, including developing countries, had had to comply with the national and MFN treatment obligations as of this date.
1 January 2000: developing countries & economies in transformation: For developing countries, the general transition period was five years, i.e. until January 2000. In addition, the Agreement allowed countries in transition from a centrally-planned into a market economy to delay application until 2000, if they met certain conditions.
1 January 2006: least-developed countries: For those countries on the United Nations list of least-developed countries, the transitional period is eleven years. The Agreement offers a further extension of the transition period for these countries on a `duly motivated request'. The fourth Ministerial Conference, held in November 2001, decided to allow least-developed countries to delay, with respect to pharmaceutical products, the implementation of the provisions on patents and undisclosed information in Sections 5 and 7 of Part II until 1 January 2016.
Developing countries that will be required by the Agreement to extend product patent protection into areas of technology that they did not formerly treat as patentable have a further 5 years, up to 1 January 2005, to come into line with the rules on patents in Section 5 of Part II of the Agreement, subject to the so-called `mail-box' provisions of Article 70.
The `no-backsliding' provision of Article 65 (paragraph 5) forbids countries from using any transition period to reduce the level of protection of intellectual property in a way that would result in a lesser degree of consistency with the requirements of the Agreement.
Article 67 requires developed country Members to provide, on request and on mutually agreed terms and conditions, technical and financial cooperation in favour of developing and least-developed country Members. According to this provision, the objective of such cooperation is to facilitate the implementation of the Agreement. The Article specifies that such assistance shall include assistance in the preparation of laws and regulations on the protection and enforcement of intellectual property rights as well as on the prevention of their abuse, and support regarding the establishment or reinforcement of domestic offices and agencies relevant to these matters, including the training of personnel.
Institutional arrangements - Council, International Cooperation
The Council for TRIPS: (Article 68) is open to all Members of the WTO and provides the formal channel for consultation among Members on TRIPS matters. It meets at WTO headquarters in Geneva and normally brings together the Geneva-based representatives of Members as well as capitals-based officials when required.
The TRIPS Council is the body responsible for the administration of the Agreement and for monitoring the operation of the Agreement - particularly the notifications required under Article 63. These notifications are the basis for reviews of implementing legislation carried out by the Council.
The Agreement says that the Council should also carry out “such other responsibilities as assigned to it by the Members, and it shall, in particular, provide any assistance requested by them in the context of dispute settlement procedures.”
The Council is also the main forum for review and negotiations - between meetings of the Ministerial Conference - on TRIPS issues including some reviews and negotiations specified in the Agreement:
The Agreement calls for a review of the Agreement after five years. The Council has the authority to review the Agreement at any time in the light of any relevant new developments that might warrant modification and amendment but only the Ministerial Conference may make definitive interpretations of the Agreement or make changes to the Agreement itself.
Cooperation with WIPO: Article 68 (paragraph 2) directed the Council for TRIPS to establish “appropriate arrangements” for cooperation with WIPO. An agreement between WIPO and WTO came into force on 1 January 1996 that, in accordance with the Preamble to the TRIPS Agreement establishes a “mutually supportive relationship”. The Agreement provides for cooperation in
International cooperation (Article 69): The Agreement calls for Members to cooperate with each other - including establishing contact points in their administrations - with a view to eliminating trade in goods that infringe IP rights. Members have also agreed to establish cooperation between customs agencies to facilitate exchange of information on counterfeit and pirated goods.
Final provisions - Protection of existing subject matter
Subject to some exceptions detailed in Article 70, the general rule is that at the end of the transition period applying to each country (Articles 65 and 66), the obligations in the TRIPS Agreement will apply to existing patents, works, trademarks and other rights, as well as to new rights.
In certain situations, pre-existing works, performances and sound recordings must be brought under protection even if they are not already protected.
Copyright, and phonograms: The principal exception to the non-retrospective application of the TRIPS provisions arises because Articles 9.1, 14.6 and 70.2 of the TRIPS Agreement oblige WTO Members to comply with Article 18 of the Berne Convention as it applies not only to the rights of authors but also to the rights of performers and producers of phonograms.
Article 18 of the Berne Convention includes the so-called rule of retroactivity, according to which the Agreement applies to all works that have not fallen into the public domain either in the country of origin or the country where protection is claimed through the expiry of the term of protection.
Link: Article 65
Topic: Transitional arrangements
Final provisions - Review, reservations and security exceptions
Review: After the agreement has come into force for all members except least-developed countries --that is, after January 2000-- the Council for TRIPS is to review how its provisions have worked out in practice. Further reviews are to take place every two years thereafter, or in the light of developments which might call for the agreement to be modified or amended.
Reservations: There are none, unless with the consent of Members.
Security exceptions: Article 73 details security exceptions that are standard in GATT and GATS. Nothing in the Agreement may be construed in a way that:
Why are there notification requirements?
There are two ways to answer this question.
From a `self-interested' viewpoint, every member needs to keep an eye on its trading partners' laws, policies and regulations. This is because WTO agreements are reciprocal: the benefits that any member derives from its own compliance with the rules depend to a great extent on the compliance of its trading partners with those same rules. That's the balance that negotiations and agreements attempt to achieve.
We can look at the same issue from a `global' perspective. The system of rules, obligations and concessions between WTO members is a valuable good, won through more than half a century of international effort, that all member countries `own' in common. The weakening of the rules or respect for obligations in any member economy affects - to however small a degree - the value of this global asset. So Members have a joint interest in ensuring the highest possible level of compliance.
Monitoring compliance is particularly difficult in matters such as customs administration or the imposition of anti-dumping duties, or the management and enforcement of IP rights where the volume of regulations and administrative activity is large and there is a high level of specific detail.
The solution adopted in GATT and WTO is that each member is required to keep everyone informed of its own laws and regulations, and of how they are applied, and of any changes that are made so that members have an opportunity to review this information collectively.
Among the Ministerial decisions reached in the Uruguay Round package is one on notification procedures. The decision set up a central registry in the WTO Secretariat to track all notifications received, to remind members of their notification obligations, and to provide members with information on the content of notifications.
What notifications are required by the TRIPS Agreement?
Explicit in the Agreement
Article 63.2: Notification of laws and regulations
Articles 1.3 and 3.1:
Notification of certain options concerning:
The definition of beneficiary persons (Art. 1.3);
National treatment (Art. 3.1).
Article 4(d): Notification of international agreements that justify certain MFN exemptions
Article 69: Notification of contact points
Other notification requirements
Obligations under Article 2 of the TRIPS Agreement stemming from the provisions of Article 6ter of the Paris Convention for the Protection of Industrial Property, Stockholm Act (1967) ("Paris Convention");
Other obligations under notification provisions of intellectual property conventions incorporated by reference into the TRIPS Agreement but not explicitly referred to in it, notably those stemming from the Berne Convention for the Protection of Literary and Artistic Works ("Berne Convention") or the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations ("Rome Convention"):
Article 14bis(2)(c) of the Berne Convention
Article 14bis(3) of the Berne Convention
Article 15(4) of the Berne Convention
Article I of the Appendix to the Berne Convention
Article II(3)(b) of the Appendix to the Berne Convention
Article IV(2) of the Appendix to the Berne Convention
Article IV(4)(c)(iv) of the Appendix to the Berne Convention
Article V of the Appendix to the Berne Convention
Article 17 of the Rome Convention
Article 18 of the Rome Convention
As agreed by the TRIPS Council under Article 67 of the Agreement on technical cooperation
Notifications under Article 63.2
What must be notified? Article 63.2 of the TRIPS Agreement, in conjunction with Article 63.1, says: “Members shall notify the laws and regulations made effective pertaining to the subject matter of the Agreement (the availability, scope, acquisition, enforcement and prevention of the abuse of intellectual property rights).”
The TRIPS Council has adopted procedures for the notification of laws under Article 63.2 (documents IP/C/2, 4 and 5 are relevant). The basic requirements are:
When must Members notify? According to the decision of the TRIPS Council (IP/C/2 paragraph 2.1): "As of the time that a Member is obliged to start applying a provision of the TRIPS Agreement” members must notify their laws and regulations “without delay (normally within 30 days, except where otherwise provided by the TRIPS Council)". For some of the obligations under the TRIPS Agreement, this time is the same for all Members. But for other obligations, the timing depends on whether the Member in question is a developed, developing, transition economy, least-developed or acceding country. A detailed schedule is here.
Notifications of amendments and advance notifications are covered in the next topic.
How should Members notify?
In accordance with the Decision of the TRIPS Council reflected in document IP/C/2, the full texts of the relevant legislation must be made available to the TRIPS Council (for the modalities concerning form, translation and distribution, see paragraph 13 above).
Two options are available:
Submission of the text of the law or regulation in question directly to the WTO Secretariat.
Communication of a statement that the full text of the law or regulation in question can be found in the WIPO collection of laws. Such a statement should be accompanied by a list specifying the laws and regulations in question, so as to allow the WTO Secretariat to request WIPO to send copies for distribution to the TRIPS Council.
Notification of Amendments: In case of amendments to laws and regulations introduced after the initial notification of these laws or regulations under Article 63.2, or in case of other changes in a country's legislation, document IP/C/2, paragraph 2 says that a notification must be made to the TRIPS Council without delay after entry into force of the amendment (normally within 30 days where no translation is required and within 60 days where translation is necessary).
Advance Notifications: In case a Member brings a law or regulation into conformity with provisions of the TRIPS Agreement before it is obliged under the TRIPS Agreement to begin applying those provisions, that Member will use its best endeavours to notify such law or regulation as soon as possible after its entry into force (see document IP/C/2, paragraph 3).
Article 63 notifications during transition periods
Obligations that may apply to any WTO Member as of 1 January 1995
Articles 70.8 and 70.9: require Members who do not provide the standard of patent protection for agricultural and pharmaceutical chemicals required by Article 27 of the Agreement and who are availing themselves of a transition period under the TRIPS Agreement to provide for patent applications to be filed (`mailbox' provisions) and, under certain conditions, for exclusive marketing rights to be granted to the person making the filing.
These provisions entail notification obligations under Article 63.2 of the TRIPS Agreement that must be made promptly after the date of entry into force of the WTO Agreement including by Members to whom the TRIPS Agreement as a whole does not yet apply.
Members - whether or not availing themselves of a transition period - that provide product patent protection for pharmaceuticals and agricultural chemical products commensurate with the requirements of Article 27 are not concerned by these obligations.
Obligations applying to all Members as of 1 January 1996
Articles 3, 4 and 5: One year after the date of entry into force of the WTO Agreement, all Members were obliged to comply with the national treatment and MFN provisions of Articles 3, 4 and 5 of the Agreement and, consequently, to notify the corresponding implementing legislation.
In practice, the notification of all IP laws and regulations under Article 63.2 also satisfies the requirement to notify the implementation of national and most-favoured-nation treatment obligations. You will find more information on this notification obligation in document IP/C/9
Notifications under Articles 1.3 and 3.1
What should be notified?
Article 1.3 of the Agreement defines the persons whose IP rights must be eligible for the protection under the Agreement. The Article does so by referring to the criteria for eligibility as laid down in the Paris Convention, the Berne Convention, the Rome Convention and the Washington Treaty for the relevant areas of intellectual property. Thus, the same criteria have to be applied among WTO Members as well, whether or not they are member States to any of the Conventions or Treaty themselves.
Article 3.1 of the Agreement requires national treatment to be given to persons whose IP rights are eligible for protection under Article 1.3, subject to the exceptions allowed under the Conventions and Treaty mentioned above. As under Article 1.3, certain of these exceptions under Article 3.1 are allowed only if they are notified to the TRIPS Council.
Certain of the exceptions allowed under Articles 1.3 and 3.1, notably those stemming from the Berne Convention or the Rome Convention, are allowed only if they are notified to the TRIPS Council, whether or not they have been notified to the Director General of WIPO under the Berne Convention or to the Secretary General of the United Nations under the Rome Convention themselves.When are Members required to notify?
Notification under Articles 1.3 and 3.1 is required only if a Member wishes to avail itself of one of the exceptions concerned.
Since notifications under these Articles are relevant to a Member's national treatment and MFN obligations under the Agreement, it should be noted that obligations relating to national treatment and MFN are effective for all WTO Members as of 1 January 1996.
How should Members notify?
There are no special procedures. These notifications are being circulated in the IP/N/2 series of documents, which are available on the WTO documents database.
Notifications under Article 4(d)
What are Members required to notify?
Under the MFN provisions of Article 4 of the Agreement, each Member has to ensure that any advantage, favour, privilege or immunity that is available in its territory to certain foreign right holders is accorded to persons eligible under Article 1.3 for protection under the Agreement.
Article 4 specifies the exemptions to such MFN treatment allowed by the Agreement. One of these exceptions, that in sub-paragraph (d), requires a notification, namely where the advantage in question derives from an international agreement related to the protection of intellectual property which entered into force prior to the entry into force of the WTO Agreement. The conditions for such exemptions are that the agreement in question is notified to the TRIPS Council and does not constitute an arbitrary or unjustifiable discrimination against persons eligible under Article 1.3 from other WTO Members.
When are Members required to notify?
Notification under Article 4(d) is required only if a Member wishes to avail itself of the exception concerned, but obligations under Article 4 - being relevant to a Member's MFN obligations - are effective for all WTO Members as of 1 January 1996.
How should Members notify?
There are no special procedures. These notifications are being circulated in the IP/N/4 series of documents, which are available on the WTO documents database.
Notification obligations under Article 69
What are Members required to notify?
Article 69 of the Agreement requires Members to establish and notify contact points in their administrations for the purposes of cooperation with each other aimed at the elimination of trade in infringing goods.
When are Members required to notify?
At the meeting of the TRIPS Council of 21 September 1995, Members agreed that notifications should be made by 1 January 1996 and that any subsequent changes to the information should be notified promptly.
How should Members notify?
The Council has agreed to invite each Member to notify the following information relating to the contact point, or each of the contact points, that it establishes for the purposes of Article 69:
The name of the authority in question;
Its address; and
Its telephone and Fax numbers, email address and , where appropriate, to identify at each contact point a contact official.
The contact points notified by Members under Article 69 can be found in the latest revision document IP/N/3 and its addenda, which are available on the WTO documents database.
Notifications under Article 6ter of the Paris Convention
Article 6ter of the Paris Convention concerns the protection of state emblems, official hallmarks and the abbreviations and emblems of intergovernmental organizations against the registration or use as trademarks. Article 6ter applies in the TRIPS context by virtue of Article 2.1 of the TRIPS Agreement
The International Bureau of WIPO administers the procedures relating to communication of emblems and transmittal of objections under the TRIPS Agreement. You will find further information on these procedures in Article 3 of the Agreement between WIPO and the WTO and in the Decision of the TRIPS Council of 11 December 1995 in document IP/C/7.
Other notifications under incorporated provisions of Berne Convention
What are Members required to notify?
Articles 14bis(2)(c) and 14bis(3) of the Berne Convention Article 14bis(2)(b) of the Berne Convention as incorporated into the TRIPS Agreement applies to WTO Members whose legislation includes among the owners of copyright in a cinematographic work authors who have brought contributions to the making of the work. In these Members it must be presumed that the authors have consented, in the absence of any contract to the contrary, to certain ways in which the film may be exploited. If such Member's legislation requires that the consent of the authors must have been in writing, Article 14bis(2)(c) requires that Member to inform other Members of this requirement by means of a notification. Article 14bis(3) requires that a Member the law of which does not make the presumption binding on the principal director of the film must similarly make a notification. The purpose of these notification requirements is to allow those concerned to know the Members the legislation of which applies the presumption in such a restricted way and to make their arrangements accordingly.
Article 15(4) of the Berne Convention: as incorporated into the TRIPS Agreement is mainly directed at the protection of folklore. It deals with unpublished works where the identity of the author is unknown, but where there is every ground to presume that he or she is a national of a given WTO Member. In such a situation the Member concerned may designate a competent authority to protect the interests of the author. Other Members should be informed about this authority by means of a notification giving full information.
Appendix to the Berne Convention: Article 9.1 of the TRIPS Agreement requires Members to comply with the Appendix to the Berne Convention (1971). The Appendix contains special provisions for developing countries that allow them, under certain conditions, to apply compulsory licences for translations and reproductions of literary works. Paragraph (1) of Article I of the Appendix requires a developing country Member wishing to avail itself of the possibilities provided in the Appendix to declare that it will avail itself of the faculty provided in Article II and/or Article III of the Appendix by means of a notification. For further details on these notification possibilities, click here.
When should Members notify?
Notifications under these provisions are required only if a Member wishes to take advantage of the provisions in question.
Articles 14bis(2)(c) and 14bis(3): Date of application of the TRIPS Agreement
Article 15(4) of the Berne Convention: At any time, but preferably as soon as possible.
The Appendix to the Berne Convention as incorporated into the TRIPS Agreement: Notification under Article I(1) of the Appendix may be deposited at the time of depositing the instrument of ratification or accession, or any time thereafter. Notifications made under the Appendix are effective for the duration of 10 years. For the purposes of the TRIPS Agreement, the relevant periods are calculated in a similar way both under the TRIPS Agreement and the Berne Convention. More information on the calculation of the renewable periods of 10 years can be found in document IP/C/14
How should Members notify?
The TRIPS Council has invited each Member wishing to make notifications under any of these provisions to make them to the TRIPS Council, even if the Member in question had already made a notification under the Berne Convention or the Rome Convention in regard to the same issue. Otherwise, no special procedures apply.
Other notifications under incorporated provisions of Rome Convention
What should Members notify?
Article 17 of the Rome Convention: Article 14.6 of the TRIPS Agreement allows a WTO Member to avail itself the exception in Article 17 of the Rome Convention. This exception applies to a state that, on 26 October 1961 granted protection to producers of phonograms solely on the basis of the criterion of fixation to continue to do so, provided it makes a notification to this effect at the time of ratification, acceptance or accession.
Article 18 of the Rome Convention: Articles 1.3, 3.1 and 14.6 of the TRIPS Agreement relate to certain exceptions under the Rome Convention the invocation of which requires notification. Article 18 of the Rome Convention provides that any state that has invoked such an exception by means of notifications under Articles 5(3), 6(2), 16(1) or 17 of the Rome Convention may, by a further notification, reduce the scope of or withdraw the notification in question.
When are Members required to notify?
A notification under Article 17 of the Rome Convention has to be made at the time of ratification, acceptance or accession. A further notification under Article 18 of the Rome Convention as incorporated into the TRIPS Agreement can be made at any time.
How should Members notify?
The TRIPS Council has invited each Member wishing to make notifications under any of these provisions to make them to the TRIPS Council, even if the Member in question had already made a notification under the Berne Convention or the Rome Convention in regard to the same issue. Otherwise, no special procedures apply. Notifications are circulated in IP/N/5-series of documents available in the WTO documents database
Notification by developed countries under Article 67
What are Members required to notify?
The Council for TRIPS has agreed that each developed country Member should notify a contact point for technical cooperation on TRIPS, in particular for the exchange of information between donors and recipients of technical assistance.
When are Members required to notify?
Developed country Members have been requested to notify their contact point(s) by 1 September 1996.
How should Members notify?
The Council has agreed to invite each Member to notify the following information relating to the contact point(s)
The name of the authority in question;
Its address; and
Its telephone and Fax numbers, email address and , where appropriate, to identify at each contact point a contact official.
In addition, a number of Members have offered to provide assistance to other Members specifically to help them in notifying their IP laws to the TRIPS Council in a transparent fashion. The list of Members who have notified a contact point for technical assistance on TRIPS notifications between WTO Members is contained in the latest revision of document IP/C/W/256.
The contact points for technical cooperation notified by Members, including the contact points for technical assistance on TRIPS notifications, can be found in the latest revision of document IP/N/3 and its addenda, which are available on the WTO documents database.
Like the Council for Goods and the Council for Trade in Services and the Dispute Settlement Body, the Council for TRIPS is in fact the General Council meeting for the purpose of discussing matters arising out of one of the three `subject areas' of the Marrakech Agreement establishing the WTO.
This arrangement reflects, in part, the concerns of developing countries at the outset of the Uruguay Round that there should be separate negotiations on goods, services and IP Symbolically, the four `faces' of the General Council recalls the `single undertaking' of the Marrakech Agreement, and the single disputes mechanism applying to all WTO Agreements. More practically, however, it could be seen as a necessary subdivision of the very wide range of detailed matters that the Council must handle.
The Council for TRIPS is responsible for the administration of the TRIPS Agreement. Article 68 of the Agreement defines the role of the Council as the monitoring the operation of the Agreement and its implementation by Members as well as the facilitation of consultation among Members. Its working methods include the administration of notification procedures and reviews of and information exchange concerning Members implementation of the obligations. It also provides a forum for negotiation and review of the agreement. Technical cooperation, Transfer of Technology, Notification and Disputes are considered in detail in other topics.
Documents: The Council's annual reports are circulated in the IP/C/- series of documents. The Council's decisions are circulated in the same series of documents. The minutes of the Council's meetings are circulated in the IP/C/M series of documents, and its working documents in the IP/C/W series of documents. Under the procedures for the circulation and derestriction of WTO documents (document WT/L/160/Rev.1), these documents are generally considered for de-restriction six months after the date of their circulation. Once derestricted, they are available through the WTO document database.
The notifications required by Article 63.2 are the basis for reviews of implementing legislation carried out by the TRIPS Council.
Initially, the reviews focused on those WTO Members who no longer benefit from a transition period, i.e. the developed countries. The Council started reviews in July 1996 with an examination of the legislation of developed country Members in the area of copyright and related rights. It continued in November 1996 with the legislation in the areas of trademarks, geographical indications and industrial designs, and in 1997 with the legislation in the areas of patents, layout-designs of integrated circuits, undisclosed information and the control of anti-competitive practices in contractual licences and enforcement.
In 2000 reviews began for countries that had delayed the full implementation of the TRIPS Agreement until 2000. This set of reviews took place in 2000 and 2001.
The procedures for these reviews provide for written questions and replies prior to the review meeting, with follow-up questions and replies during the course of the meeting. At subsequent meetings of the Council, an opportunity is given to follow up points emerging from the review session which delegations consider have not been adequately addressed.
Documents: Questions posed to and responses given by a Member in the course of a review of the review of its implementing legislation are available on the WTO document database in document series IP/Q (copyright and related rights), IP/Q2 (trademarks, geographical indications and industrial designs), IP/Q3 (patents, layout-designs of integrated circuits, protection of undisclosed information and control of anticompetitive practices in contractual licences) and IP/Q4 (enforcement).
Members' technical cooperation in TRIPS
Technical cooperation has been a prominent issue in the TRIPS Council.
Article 67 of the Agreement obliges each developed-country Member to provide, on request and on mutually agreed terms, technical and financial cooperation in favour of developing and least-developed Member countries. According to this provision, the objective of such cooperation is to facilitate the implementation of the Agreement. The Article says that such assistance should include assistance in the preparation of laws and regulations on the protection and enforcement of intellectual property rights as well as on the prevention of their abuse, and support regarding the establishment or reinforcement of domestic offices and agencies relevant to these matters, including the training of personnel.
To ensure that information on available assistance is readily accessible and to facilitate the monitoring of compliance with the obligation of Article 67, developed-country Members annually update descriptions of their technical and financial cooperation programmes.
For the sake of transparency, intergovernmental organizations observers to the TRIPS Council also present information on their activities, on the invitation of the Council. The WTO Secretariat regularly provides the Council with information on its technical cooperation in the TRIPS area. The discussion in the Council on the basis of this material provides an opportunity for developing countries to identify their needs, in particular any gaps in the assistance available.
Developed-country Members have notified contact points in their administrations which can be addressed by developing countries seeking technical cooperation on TRIPS.
Technical support from the WTO Secretariat
The Secretariat's technical cooperation activities in the area of intellectual property have focussed on assisting Members to understand the rights and obligations which flow from the TRIPS Agreement. The Secretariat has helped Members to
The Secretariat has helped Members to participate fully in the TRIPS Council and to meet their procedural obligations under the Agreement, such as the reviews of legislation and notification procedures. The Secretariat has also provided assistance to countries joining the WTO by helping them to prepare for the accession negotiations and training officials. Assistance to least-developed countries on these issues remains a priority.
Most of the assistance given has been by means of information and advice given to Members in Geneva, study programmes, training courses, seminars and workshops for developing countries in Geneva and elsewhere, and, to a lesser extent, NGO conferences.
Cooperation with WIPO, based on the cooperation agreement between the two Organizations, has been a key feature of WTO Secretariat technical cooperation on TRIPS. This cooperation has taken many forms, including the organization of joint conferences, workshops and other activities, and the provision of resource persons for events organized by the other organization. The WTO and WIPO Secretariats have contributed to each other's training activities in Geneva, including WIPO Worldwide Academy and WTO trade policy courses.
In June 2001, WIPO and the WTO launched a Joint Initiative on Technical Cooperation for Least-Developed Countries. It is aimed at helping least-developed country Members of the WTO comply with their obligations under the TRIPS Agreement and make best use of the intellectual property system for their economic, social and cultural development.
The TRIPS Council has discussed the implementation of Article 66.2 of the Agreement, which requires developed-country Members to provide incentives to enterprises and institutions in their territories for the purpose of promoting and encouraging technology transfer to least-developed country Members in order to enable them to create a sound and viable technological base.
The Council agreed, in December 1998, that developed-country Members be invited to supply information on how this provision was being implemented. Up to the end of 2001, 20 Members had submitted information.
The fourth Ministerial Conference, held in November 2001, directed the TRIPS Council to put in place a mechanism for ensuring the monitoring and full implementation of the obligations under Article 66.2. To this end, developed-country Members shall submit prior to the end of 2002 detailed reports on the functioning in practice of the incentives provided to their enterprises for the transfer of technology in pursuance of their commitments under Article 66.2. These submissions shall be subject to a review in the TRIPS Council and Members shall update information annually.
WTO dispute settlement procedures for TRIPS
An important feature of the TRIPS Agreement is that disputes between governments about compliance with obligations under it can be subject to the integrated dispute settlement system of the WTO.
Before the TRIPS Agreement was concluded as part of the WTO `single undertaking', international law in the intellectual property area did not provide any practical means of recourse, at the multilateral level, to a government that believed that another government was not living up to its obligations.
Under the Dispute Settlement Understanding of the WTO (DSU), governments are committed, if they wish to seek redress of a violation of a TRIPS obligation, to have recourse to, and to abide by, the multilateral WTO dispute settlement procedures and not to make a determination that a violation has occurred except in accordance with these procedures and not to retaliate except in accordance with authorization from the WTO's Dispute Settlement Body (DSB). The WTO dispute settlement system is designed so as to ensure the rule of law in international trade relations through the impartial and effective resolution of disputes between governments.
Most disputes about matters of compliance with the requirements of the TRIPS Agreement are resolved in bilateral consultations between the Members concerned, either in Geneva or in capitals, without invoking the dispute settlement procedures in the DSB. Many issues have also come up in the review of the national TRIPS implementing legislation carried out by the TRIPS Council, but only very rarely do these issues get a follow-up in dispute settlement proceedings.
Even after the invocation of formal dispute settlement procedures, developing a mutually acceptable solution consistent with the WTO provisions to a problem between Members is encouraged throughout the dispute settlement process. In fact, the settlement rate has so far been quite high in the area of TRIPS, as it has been also in other areas.
For more details on the WTO dispute settlement procedures see the WTO `Guide to Dispute Settlement'.
There have been 24 `requests for consultations' - some related to the same matter - notified to the TRIPS Council as of January 2001. A `request for consultations' is the first stage of a formal WTO `dispute'. Of these, 10 resulted in the subsequent notification of `mutually agreed solutions'. This means, that the parties were able to work out an agreement among themselves without proceeding to a dispute Panel. This is the preferred outcome of any WTO dispute.
A table detailing each of the cases with references to WTO documents in the cases, available on-line from the WTO website, is included on the CD.
As of early 2002, disputes on seven separate matters had been adjudicated by a Panel and decided by the Dispute Settlement Body of the WTO.
United States - Section 211 Omnibus Appropriations Act of 1988 (WT/DS176)
Canada - Patent Protection of Pharmaceutical Products (WT/DS114)
The following two cases are examples of decisions that shed light on rights and obligations under the Agreement that are of broad interest to Members:
In Canada - Patent Protection of Pharmaceutical Products, the Panel found that a provision of the Canadian Patent Law that permitted the use of patents by drug manufacturers to prepare `generic' versions of a patented drug for approval and marketing after the expiry of the patent on the proprietary version of the drug was consistent with the TRIPS Agreement. The Panel found, however, that another part of the Canadian law that allowed the manufacture and stockpiling of these `generic' drugs before the expiry of the patent (so that they could be marketed immediately after the expiry of the patent) infringed on patent rights and was inconsistent with the TRIPS Agreement.
In United States - Section 110(5) of the US Copyright Act, the dispute centred on the compatibility of two exemptions provided for in Section 110(5) of the US Copyright Act with Article 13 of the TRIPS Agreement, which allows certain limitations or exceptions to exclusive rights of copyright holders, subject to the condition that such limitations are confined to certain special cases, do not conflict with a normal exploitation of the work in question and do not unreasonably prejudice the legitimate interests of the right holder.
The so-called "business" exemption, provided for in sub-paragraph (B) of Section 110(5), allowed the amplification of music broadcasts, without an authorization and a payment of a fee, by food service and drinking establishments and by retail establishments, provided that their size did not exceed a certain square footage limit
The so-called "homestyle" exemption, provided for in sub-paragraph (A) of Section 110(5), allowed small restaurants and retail outlets to amplify music broadcasts without an authorization of the right holders and without the payment of a fee, provided that they used only audio equipment of a kind commonly used in private homes
The panel found that:
The "business" exemption provided for in sub-paragraph (B) of Section 110(5) of the US Copyright Act did not meet the requirements of Article 13 of the TRIPS. The panel noted, among other points, that a substantial majority of eating and drinking establishments and close to half of retail establishments were covered by the business exemption
The "homestyle" exemption provided for in sub-paragraph (A) of Section 110(5) of the US Copyright Act met the requirements of Article 13 of the TRIPS Agreement. Here, the panel noted certain limits imposed on the beneficiaries of the exemption, permissible equipment and categories of works as well as the practice by US courts.
You should be aware, too, that the reports to the TRIPS Council of the terms of `mutual agreements' that bring a dispute to an end also shed an interesting light on the way in which Members intend to manage global cooperation on TRIPS.
The Fourth Ministerial Meeting of the WTO at Doha (Qatar) in November 2001 provided the mandate for negotiations on a range of subjects, including on intellectual property. The negotiations will take place in the Trade Negotiations Committee and its subsidiaries. Other work under the work programme will take place in other WTO councils and committees.
On TRIPS, the Doha Declaration:
In paragraph 12 of the Ministerial Declaration, ministers underscored that they had taken a decision on the 50 or so measures in a separate ministerial document - the 14 November 2000 decision on Implementation-Related Issues and Concerns - and pointed out that “negotiations on outstanding implementation issues shall be an integral part of the Work Programme” in the coming years. The ministers established a two-track approach. Those issues for which there was an agreed negotiating mandate in the declaration would be dealt with under the terms of that mandate. Those implementation issues where there is no mandate to negotiate, would be the taken up as “a matter of priority” by relevant WTO councils and committees. These bodies are to report on their progress to the Trade Negotiations Committee by the end of 2002 for “appropriate action”.
The decision on Implementation-Related Issues and Concerns addresses the following TRIPS issues:
“Non-violation” complaints: While non-violation complaints are possible in the areas of goods and services, the TRIPS Agreement set a temporary moratorium on non-violation complaints. During that time, the TRIPS Council started looking at the extent and way (“scope and modalities”) non-violation complaints could be applied.
The Doha Implementation Decision directs the TRIPS Council to continue to discuss this and to make recommendations to the 2003 Fifth Ministerial Conference. Until then, members have agreed not to file non-violation complaints under TRIPS.
Technology transfer to least-developed countries: Article 66.2 of the TRIPS Agreement says developed countries have to provide incentives for their private sector and institutions, in order to promote and encourage technology transfer to least-developed countries. In Doha, ministers agreed that the TRIPS Council would “put in place a mechanism for ensuring the monitoring and full implementation of the obligations”. Before the end of 2002, developed-countries are to submit detailed reports on how their incentives are functioning in practice.
The Fourth Ministerial Conference of the World Trade Organization, which was held in Doha, Qatar, adopted on 14 November 2001 by consensus a Declaration on the TRIPS Agreement and Public Health to respond to the concerns that have been expressed about the possible implications of the TRIPS Agreement for access to drugs - particularly in developing countries.
The TRIPS Agreement enshrines in public international law the right of countries to take various kinds of measures which can qualify or limit intellectual property rights, including for public health purposes. However, some doubts had arisen about whether these provisions in the TRIPS Agreement were sufficiently flexible to support Members' public health objectives, especially in promoting affordable access to existing medicines, while also promoting research and development into new medicines. try.
The Declaration addresses these issues, making it clear that
The Declaration instructed the TRIPS Council to continue work on one matter that continues to cause some concern: the ability of countries with limited manufacturing capacities to make effective use of compulsory licensing. There is not dispute that Members can issue compulsory licences for import as well as for domestic production of patented goods. The question is whether sources of supply from generic producers in other countries to meet such demand will be available, in particularly in the light of Article 31(f) of the TRIPS Agreement which says that any compulsory licences granted to e.g. the producers of generic drugs in any country should be "predominantly for the supply of the domestic market of the Member." The TRIPS Council is to report to WTO Ministers before the end of 2002 on this matter.
The Declaration also recognizes the importance of intellectual property protection for the development of new medicines and reaffirms the commitments of WTO Members in the TRIPS Agreement.
TRIPS Frequently asked questions (FAQ)
Intellectual property rights can be defined as the rights given to people over the creations of their minds. They usually give the creator an exclusive right over the use of his/her creations for a certain period of time.
Intellectual property rights are traditionally divided into two main categories:
Copyright and rights related to copyright: i.e. rights granted to authors of literary and artistic works, and the rights of performers, producers of phonograms and broadcasting organizations. The main purpose of protection of copyright and related rights is to encourage and reward creative work.
Industrial property: This includes (1) the protection of distinctive signs such as trademarks and geographical indications, and (2) industrial property protected primarily to stimulate innovation, design and the creation of technology. In this category fall inventions (protected by patents), industrial designs and trade secrets.
For the purposes of the TRIPS Agreement, “intellectual property” refers to all categories of intellectual property that are the subject of Sections 1 through 7 of Part II of the agreement (Article 1:2). This includes
Yes. The TRIPS Agreement is part of the “single undertaking” of the WTO: that is, it is one of the agreements to which all members belong
But the agreement allows countries different periods of time to begin applying its provisions. These delays define the transition from before the agreement came into force (before 1 January 1995) until it is applied in member countries. The main transition periods are:
Developing Countries: WTO members can make use of the general transition periods without having to notify the WTO and fellow-members. The TRIPS Council reviews the legislation of members after their transition periods have expired. The review of the legislation of the following members whose transition periods expired on 31 December was scheduled for 2000 and 2001:
Antigua and Barbuda; Argentina; Bahrain; Barbados; Belize; Bolivia; Botswana; Brazil; Brunei Darussalam; Cameroon; Chile; Colombia; Congo; Costa Rica; Cote d'Ivoire; Cuba; Cyprus; Dominica; Dominican Republic; Egypt; El Salvador; Estonia; Fiji; Gabon; Ghana; Grenada; Guatemala; Guyana; Honduras; Hong Kong, China; India; Indonesia; Israel; Jamaica; Kenya; Korea; Kuwait; Macau, China; Malaysia; Malta; Mauritius; Mexico; Morocco; Namibia; Nicaragua; Nigeria; Pakistan; Papua New Guinea; Paraguay; Peru; Philippines; Poland (areas which were not reviewed in '96-'98); Qatar; Saint Lucia; Singapore; Sri Lanka; St. Kitts and Nevis; St. Vincent and Grenadines; Suriname; Swaziland; Thailand; Trinidad and Tobago; Tunisia; Turkey; United Arab Emirates; Uruguay; Venezuela; Zimbabwe
Please note, nonetheless, that many of these members put into effect national legislation to implement much of the TRIPS Agreement before 1 January 2000.
Least Developed Countries: In the WTO, least developed country members are those recognized as least developed countries by the United Nations.
The WTO recognizes as least-developed countries those countries that have been designated as such by the United Nations. There are currently 48 least-developed countries on the UN list, 30 of which to date have become WTO Members. These are:
Angola, Bangladesh, Benin, Burkina Faso, Burundi, Central African Republic, Chad, Democratic Republic of the Congo, Djibouti, Gambia, Guinea, Guinea Bissau, Haiti, Lesotho, Madagascar, Malawi, Maldives, Mali, Mauritania, Mozambique, Myanmar, Niger, Rwanda, Senegal, Sierra Leone, Solomon Islands, Tanzania, Togo, Uganda, Zambia
Several additional least-developed countries are in the process of accession to the WTO.
New Members: The general transitional periods apply to the original members of the WTO, i.e. governments that were members on 1 January 1995. Since the WTO came into being, a number of countries have joined it. These countries have generally agreed in their membership agreements (their “accession protocols”) to apply the TRIPS Agreement from the date when they officially became WTO members, without the benefit of any transition period.
The latest list of countries (and “customs territories”) applying to join the WTO can be found on the WTO web site.
All members, even those availing themselves of the longer transitional periods, have had to comply with obligations on national treatment (equal treatment for foreign and domestic individuals and companies, Article 3) and most-favoured-nation treatment (non-discrimination between foreign individuals and companies, Article 4) from 1 January 1996.
Special transition rules apply in the situation where a developing country does not provide product patent protection in a given area of technology.
More specifically, if a developing country did not provide product patent protection in a particular area of technology when the TRIPS Agreement came into force (1 January 1995), it has up to 10 years (to 1 January 2005) to introduce the protection (Art 65.4).
But for pharmaceutical and agricultural chemical products, the country must accept the filing of patent applications from the beginning of the transitional period, even though the decision on whether or not to grant any patent itself need not be taken until the end of this period (Art 70.8). This is sometimes called the “mailbox” provision.
If the government allows the relevant pharmaceutical or agricultural chemical product to be marketed during the transition period, it must — subject to certain conditions — provide the patent applicant an exclusive marketing right for the product for five years, or until a decision on granting a product patent is taken, whichever is shorter (Art 70.9).
In addition, Article 65.5 of the TRIPS Agreement says countries using the transition period should not backslide — members availing themselves of a transitional period (under paragraphs 1, 2, 3 or 4 of Article 65) must ensure that any changes in their laws, regulations and practice made during the transition period do not result in a lesser degree of consistency with the provisions of the agreement.
Before the 1986-94 Uruguay Round negotiations, there was no specific agreement on intellectual property rights in the framework of the GATT multilateral trading system.
However, some principles contained in the GATT had a bearing on intellectual property measures taken on imports or exports.
Article XX(d) of GATT 1947 (now Article XX(d) of GATT 1994) specifically referred to intellectual property rights. Under this provision, measures which would otherwise be inconsistent with the General Agreement could be taken (subject to certain conditions) to secure compliance with laws or regulations relating, among other things, to intellectual property rights.
One of the fundamental characteristics of the TRIPS Agreement is that it makes protection of intellectual property rights an integral part of the multilateral trading system, as embodied in the WTO.
The TRIPS Agreement is often described as one of the three “pillars” of the WTO, the other two being trade in goods (the traditional domain of the GATT) and trade in services.
The TRIPS Agreement is part of the “single undertaking” resulting from the Uruguay Round negotiations. That implies that the TRIPS Agreement applies to all WTO members. It also means that the provisions of the agreement are subject to the integrated WTO dispute settlement mechanism which is contained in the Dispute Settlement Understanding (the “Understanding on Rules and Procedures Governing the Settlement of Disputes”).
The TRIPS Agreement says WTO member countries must comply with the substantive obligations of the main conventions of WIPO — the Paris Convention on industrial property, and the Berne Convention on copyright (in their most recent versions).
With the exception of the provisions of the Berne Convention on moral rights, all the substantive provisions of these conventions are incorporated by reference. They therefore become obligations for WTO member countries under the TRIPS Agreement — they have to apply these main provisions, and apply them to the individuals and companies of all other WTO members.
The TRIPS Agreement also introduces additional obligations in areas which were not addressed in these conventions, or were thought not to be sufficiently addressed in them.
The TRIPS Agreement is therefore sometimes described as a “Berne and Paris-plus” Agreement.
The text of the TRIPS Agreement also makes use of the provisions of some other international agreements on intellectual property rights:
WTO members are required to protect integrated circuit layout designs in accordance with the provisions of the Treaty on Intellectual Property in Respect of Integrated Circuits (IPIC Treaty) together with certain additional obligations.
The TRIPS Agreement refers to a number of provisions of the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (Rome Convention), without entailing a general requirement to comply with the substantive provisions of that Convention.
Article 2 of the TRIPS Agreement specifies that nothing in Parts I to IV of the agreement shall derogate 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.
The World Intellectual Property Organization (WIPO) was established by a convention of 14 July 1967, which entered into force in 1970. It has been a specialized agency of the United Nations since 1974, and administers a number of international unions or treaties in the area of intellectual property, such as the Paris and Berne Conventions.
WIPO's objectives are to promote intellectual property protection throughout the world through cooperation among states and, where appropriate, in collaboration with any other international organization. WIPO also aims to ensure administrative cooperation among the intellectual property unions created by the Paris and Berne Conventions and sub-treaties concluded by the members of the Paris Union.
The administration of the unions created under the various conventions is centralized through WIPO's secretariat, the “International Bureau”. The International Bureau also maintains international registration services in the field of patents, trademarks, industrial designs and appellations of origin. WIPO also undertakes development cooperation for developing countries through advice, training and furnishing of documents.
An agreement on cooperation between WIPO and the WTO came into force on 1 January 1996. The agreement provides cooperation in three main areas:
notification of, access to and translation of national laws and regulations
implementation of procedures for the protection of national emblems
and technical cooperation.
No, the TRIPS Agreement requires members to comply with certain minimum standards for the protection of intellectual property rights covered in it.
But Members may choose to implement laws which give more extensive protection than is required in the agreement, so long as the additional protection does not contravene the provisions of the agreement.
This is why the TRIPS Agreement is sometimes described as a “minimum standards” agreement.
In addition, the agreement gives members the freedom to determine the appropriate method of implementing the provisions of the agreement within their own legal system and practice. The agreement thus takes into account the diversity of members' legal frameworks (for instance between common law and civil law traditions).
Article 31 allows compulsory licensing and government use of a patent without the authorization of its owner.
But this can only be done under a number of conditions aimed at protecting the legitimate interests of the right holder. For example: (unless there is an emergency) the person or company applying for a licence must have first attempted, unsuccessfully, to obtain a voluntary licence from the right holder on reasonable commercial terms, and adequate remuneration must be paid to the right holder.
The authorization granted under compulsory licensing must also meet certain requirements. In particular, it cannot be exclusive, and it must as a general rule be granted predominantly to supply the domestic market.
Article 27.3(b) allows members to exclude some types of plant and animal inventions from patenting in their countries.
More specifically, it allows them to exclude from patentability “plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes”.
However, the agreement says members must provide for the protection of plant varieties, either by patents or by an effective sui generis system (i.e. a system created specially for this purpose) or by any combination of the two.
These agreement calls for a review of the provisions of Article 27.3(b) four years after the agreement entered into force (i.e. in 1999). This review is underway in the TRIPS Council.
The TRIPS Council comprises all WTO members. It is responsible for monitoring the operation of the agreement, and, in particular, how members comply with their obligations under it.
The reviews are central to the TRIPS Council's task of monitoring what is happening under the agreement.
Each country has to make sure its laws comply with the obligations of the agreement, according to the timetable spelt out in the agreement. Most have to enact laws implementing the obligations.
These laws are notified to the TRIPS Council, allowing members to review each others' legislation, and promoting the transparency of members' policies on intellectual property protection.
The requirement to notify comes under Article 63.2 of the TRIPS Agreement. Members have to supply the TRIPS Council with copies of their laws and regulations that deal with the TRIPS Agreements' provisions.
These notifications are then used as the basis the Council's reviews of members' legislation.
In these reviews, countries supply written questions about each others' laws before the review meetings. The answers are also in writing. Follow-up questions and replies are made orally during the course of the meeting, and further follow-up is possible at subsequent meetings.
The TRIPS Council is also a forum that countries can use to consult each other on problems they may have with each other to do with the TRIPS Agreement.
It can also clarify or interpret provisions of the agreement.
The Council follows a work programme on technical cooperation with a view to monitoring how developed countries fulfil their obligations under Article 67 of the TRIPS Agreement.
This article sets out the developed countries' commitments on technical cooperation. The work programme ensures that developing countries can have adequate information on the assistance on offer. It also ensures any of their unfulfilled needs are identified and responded to.
The WTO is a forum for further negotiations aimed at enhanced commitments in the area of intellectual property, as in other areas covered by the WTO agreements.
The TRIPS Agreement calls for further work in specified areas, including:
The TRIPS Council will hold a general review of the agreement after five years; but it is also empowered to review it at any time in the light of any relevant new developments which might warrant modification and amendment (Article 71).
What are members' main notification obligations under the TRIPS Agreement?
The TRIPS Agreement obliges WTO members to make certain notifications to the TRIPS Council. These notifications allow members to review each others' legislation, an important part of the council's work. They also promote the transparency of members' policies on intellectual property protection.
In addition, members wishing to avail themselves of certain options allowed under the Agreement have to notify the Council.
In order to implement these notification obligations, the Council has adopted procedures and guidelines relating to them.
Article 63.2 of the TRIPS Agreement says members must notify the laws and regulations on the subject-matter of the agreement (the availability, scope, acquisition, enforcement and prevention of abuse of intellectual property rights).
The procedures for the notification of national laws and regulations under Article 63.2 are contained in document IP/C/2.
Articles 1.3 and 3.1 of the TRIPS Agreement allow members to avail themselves of certain options in regard to the definition of beneficiary persons and national treatment, provided that notifications are made to the Council for TRIPS.
Notifications made under Articles 1.3 and 3.1 are circulated in the IP/N/2/- series of documents. Further background information on these notification possibilities can be found in document IP/C/W/5.
In accordance with Article 4(d), a Member may exempt from the most-favoured-nation obligation any advantage, favour, privilege or immunity according by that member deriving from international agreements related to the protection of intellectual property which entered into force prior to the entry into force of the WTO Agreement, provided that such agreements are notified to the Council for TRIPS and do not constitute an arbitrary or unjustifiable discrimination against nationals of other members.
Article 69 of the agreement requires members to establish and notify contact points in their administrations for the purposes of cooperation with each other aimed at the elimination of trade in infringing goods.
The information on such contact points is circulated in document IP/N/3, and addenda, corrigenda and periodic revisions.
In addition to notification obligations specifically provided for in the agreement, a number of notification provisions of the Berne and the Rome Conventions are incorporated by reference into the TRIPS Agreement but without being explicitly referred to it.
At its meeting in February 1996, the council invited each member wishing to make such notifications to make them to the TRIPS Council, even if the member in question had already made a notification under the Berne or the Rome Convention in regard to the same issue.
Further background information on these notification possibilities can be found in document IP/C/W/15. Notifications of this kind are circulated in the IP/N/5/- series of documents.
Detailed information on the notification procedures can be found in the Technical Cooperation Handbook on Notification Requirements: Agreement on Trade-Related Aspects of Intellectual Property Rights (document WT/TC/NOTIF/TRIPS/1).
How can I get information on technical cooperation available from developed country members?
Article 67 of the TRIPS Agreement says developed country members must provide, on request and on mutually agreed terms and conditions, technical and financial cooperation in favour of developing and least-developed country members.
To ensure access to relevant information in this regard, developed country members have agreed to present annually to the TRIPS Council a description of their technical cooperation activities in the area of intellectual property. This information is circulated in the IP/C/W/- series of documents. In addition, developed country members have notified contact points in their administrations to which requests for technical assistance may be addressed and from which information on technical cooperation can be obtained.
A list of these contact points is contained in document IP/N/7, and addenda, corrigenda and periodic revisions.
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