MODULE

7
Agreement on Trade-Related
Aspects of Intellectual Property
Rights (TRIPS Agreement)
ESTIMATED TIME: 4 hours

OBJECTIVES OF MODULE 7

 To introduce the Agreement on Trade-Related Aspects of Intellectual Property Rights

(TRIPS Agreement) as contained in Annex 1C to the Marrakesh Agreement
Establishing the WTO;

 to explain what intellectual property rights (IPRs) are and why they are protected;

 to examine the general provisions and basic principles set out in the TRIPS
Agreement; and

 to introduce the substantive standards of intellectual property (IP) protection,

enforcement and other provisions contained in the TRIPS Agreement.
 I. INTRODUCTION
As seen in Module 1, the Marrakesh Agreement Establishing the WTO (the Agreement Establishing the WTO) has
four Annexes. Annexes 1, 2, and 3, which include the "Multilateral Trade Agreements", are applicable to all WTO
Members.
 Annex 1 is divided into three sections:

 Annex 1A (The Multilateral Agreements on Trade in Goods);

 Annex 1B (General Agreement on Trade in Services (GATS)); and,

 Annex 1C (Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS)).

The Multilateral Agreements on Trade in Goods as contained in Annex 1A have been introduced in Modules 2 - 4.
We also have studied the GATS – Annex 1B - in Module 6. Now, we will introduce Annex 1C – the TRIPS Agreement.

The TRIPS Agreement, which entered into force on 1 January 1995, is binding on each Member of the WTO from
the date the WTO Agreement becomes effective for it. However, the TRIPS Agreement gave original Members
transitional periods, which depend on the level of their development, to bring themselves into compliance with its
rules.*

The Council of TRIPS administers the TRIPS Agreement and is open to all WTO Members. The Council reports
to the WTO General Council.

In this Module, we will explain what IPRs are and why they are protected. Then, we will present the general
provisions and basic principles of the TRIPS Agreement, as well as the substantive standards of IP protection,
enforcement and other provisions contained in the Agreement. The Specialized Course on TRIPS will further
develop the disciplines of the TRIPS Agreement.

*Where applicable, transition periods for acceding countries are set out in their protocols of accession. See also
Transitional Periods.
II. INTELLECTUAL PROPERTY RIGHTS (IPRs)

II.A. WHAT ARE IPRs?

What are IPRs?

IPRs are the rights given to persons over the creations of their minds. They usually give the creator an exclusive
right over the use of his/her creation for a certain period of time. IPRs are customarily divided into two main
areas: 1. copyright and rights related to copyright; and, 2. industrial property rights.

II.A.1. COPYRIGHT AND RELATED RIGHTS

The rights of authors of literary and artistic works (such as books and other writings, musical compositions,
paintings, sculptures, computer programs and films) are protected by copyright, for a minimum period of 50
years after the death of the author. Also protected through copyright and related rights (sometimes referred
to as "neighbouring rights") are the rights of performers (e.g. actors, singers and musicians), producers of
phonograms (sound recordings) and broadcasting organizations.

II.A.2. INDUSTRIAL PROPERTY

Industrial property can usefully be divided into two main areas:

One area can be characterized as the protection of distinctive signs, in particular trademarks (which distinguish
the goods or services of one undertaking from those of other undertakings) and geographical indications (which
identify a good as originating in a place where a given characteristic of the good is essentially attributable to
its geographical origin). Trademark protection may last indefinitely, provided the sign in question continues to
be distinctive and the registration is renewed. The same is true of a geographical indication that identifies the
geographical origin and that continues to be protected and used in its country of origin.

Other types of industrial property are protected primarily to stimulate innovation, design and the creation of
technology. In this category fall inventions (protected by patents; in a number of countries, innovations that
could embody lesser technical progress than patentable inventions may be protected by utility models),
industrial designs and trade secrets. Except for trade secrets, the protection is given for a finite term (typically
20 years in the case of patents).

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II.B. WHY ARE IPRs PROTECTED?

 Encourage and reward creative work - The main social purpose of protection of copyright
and related rights is to encourage and reward creative work. This is also relevant to protection
in other areas (e.g. industrial designs and patents);

 Technological innovation - IPRs are designed to provide protection for the results of
investment in the development of new technology, thus giving the incentive and means to finance
research and development activities;

 Fair competition - The protection of distinctive signs (such as trademarks) and other IPRs aims
to stimulate and ensure fair competition among producers;

 Consumer protection - The protection of distinctive signs should also protect consumers, by
enabling them to make informed choices between various goods and services; and,

 Transfer and dissemination of technology - A balanced IP regime should also facilitate the
transfer and dissemination of technology, including in the form of foreign direct investment, joint
ventures and licensing.

BALANCE OF RIGHTS AND OBLIGATIONS

The exclusive rights given to the owners of IP are generally subject to a number of limitations and exceptions
aimed at balancing the legitimate interests of right holders and of users.

EXERCISES

1. Why are IPRs protected?

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III. THE AGREEMENT ON TRADE-RELATED
ASPECTS OF INTELLECTUAL PROPERTY
RIGHTS – (THE TRIPS AGREEMENT)

IN BRIEF

The TRIPS Agreement is to date the most comprehensive multilateral agreement on IP. It contains specific
provisions in the following areas of IP: copyright and related rights (i.e. the rights of performers, producers of
sound recordings and broadcasting organizations); trademarks; geographical indications; industrial designs;
patents, including the protection of new varieties of plants; the layout designs of integrated circuits; and
undisclosed information, including trade secrets and test data.

The Agreement consists of seven parts:

 I. General provisions and basic principles (such as national treatment and most-favoured
nation treatment (MFN), and exhaustion of IPRs);

 II. Substantive standards of IP protection;

 III. Enforcement;

 IV. Procedures for the acquisition and maintenance of IPRs;

 V. Dispute prevention and settlement;

 VI. Transitional arrangements; and,

 VII. Institutional arrangements.

In respect of each of the main areas of IP regulated by the TRIPS Agreement, Part II of the Agreement sets
out the minimum standards of protection to be provided by each Member (except least developed countries
which benefit from extended transition periods). Each of the main elements of protection is defined, namely
the subject-matter to be protected, the rights to be conferred and permissible exceptions to those rights, and,
where applicable, the minimum duration of protection.

The Agreement sets these standards by requiring, first, that the substantive obligations of the main
conventions of the World Intellectual Property Organization (WIPO), the Paris Convention for the Protection of
Industrial Property ("Paris Convention") and the Berne Convention for the Protection of Literary and Artistic
Works ("Berne Convention") in their most recent versions, must be complied with. With the exception of the
provisions of the Berne Convention on moral rights, all the substantive provisions of these conventions are
incorporated by reference and thus become obligations under the TRIPS Agreement between Members. The
relevant provisions are to be found in Articles 2.1 and 9.1 of the TRIPS Agreement, which relate, respectively,
to the Paris Convention and to the Berne Convention.

Second, the TRIPS Agreement contains a substantial number of additional obligations on matters where the
pre-existing conventions are silent or were seen as being inadequate. The TRIPS Agreement is thus sometimes
referred to as a "Berne and Paris-plus Agreement".

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Part III of the Agreement deals with domestic procedures and remedies for the enforcement of IPRs. The
Agreement lays down certain general principles applicable to all IPR enforcement procedures. In addition, it
contains provisions on civil and administrative procedures and remedies, provisional measures, as well as special
requirements related to border measures and criminal procedures. These provisions specify, in a certain amount
of detail, the procedures and remedies that Members must make available so that right holders can effectively
enforce their rights and also provide for safeguards against the abuse of such procedures and remedies as
barriers to legitimate trade.

Part IV of the Agreement contains general rules on procedures related to the acquisition and maintenance of
IPRs.

Part V of the Agreement deals with dispute prevention and settlement. The Agreement makes disputes between
Members about the respect of obligations contained in it, whether in the field of substantive standards or in the
field of enforcement, subject to the WTO's dispute settlement procedures.

Part VI of the Agreement contains provisions on transitional periods, transfer of technology and technical
cooperation.

Part VII deals with institutional arrangements and certain cross cutting matters such as the protection of existing
subject matter.

III.A. TRIPS: MAIN FEATURES – GENERAL PROVISIONS AND

BASIC PRINCIPLES (PART I)

III.A.1. GENERAL GOALS: PREAMBLE OF THE TRIPS AGREEMENT

The general goals of the TRIPS Agreement are set out in its Preamble, and include reducing distortions and
impediments to international trade, promoting effective and adequate protection of IPRs, and ensuring that
measures and procedures to enforce IPRs do not themselves become barriers to legitimate trade.

III.A.2. MINIMUM STANDARDS AGREEMENT

The TRIPS Agreement sets out the minimum standards of protection to be provided by each Member. Article 1.1
makes it clear that Members may, but are not obliged to, implement in their law more extensive protection than
required by the Agreement, provided that such protection does not contravene its provisions. Article 1.1 further
clarifies that Members are free to determine the appropriate method of implementing the provisions of the TRIPS
Agreement within their own legal system and practice.

III.A.3. BENEFICIARIES

As in the main pre-existing IP conventions, the basic obligation on each WTO Member is to accord the treatment
in regard to the protection of IP provided for under the Agreement to persons of other Members. Article 1.3
defines who these persons are. These persons are referred to as "nationals" but include persons, natural or legal,
who have a close attachment to other Members without necessarily being nationals. The criteria for determining

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which persons must thus benefit from the treatment provided for under the Agreement are those laid down for
this purpose in the main pre-existing IP conventions of WIPO, applied of course with respect to all WTO Members
whether or not they are party to those conventions.

III.A.4. NATIONAL AND MFN TREATMENT

The rules on most favoured nation (MFN) and national treatment of foreign nationals can be found in Articles 3
and 4 of the TRIPS Agreement. These rules are common to all categories of IP covered by the Agreement and
also apply to least developed countries notwithstanding the extended transition periods.

a. NATIONAL TREATMENT AND EXCEPTIONS

Article 3 on national treatment requires each Member to accord to the nationals of other Members treatment no
less favourable than that it accords to its own nationals with regard to the protection of IP. In respect of the
national treatment obligation, the exceptions allowed under the four pre-existing WIPO treaties (Paris and Berne
Conventions, the International Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organizations ("Rome Convention") and the Treaty on Intellectual Property in Respect of Integrated
Circuits (IPIC)) are also allowed under theTRIPS Agreement.

An important exception to national treatment is the so-called comparison of terms for copyright protection
allowed under Article 7(8) of the Berne Convention as incorporated into the TRIPS Agreement. If a Member
provides a term of protection in excess of the minimum term required by the TRIPS Agreement, it does not need
to protect a work for a duration that exceeds the term fixed in the country of origin of that work. In other words,
the additional term can be made available to foreigners on the basis of "material reciprocity".

In respect of performers, producers of phonograms and broadcasting organizations, this obligation applies only
in respect of rights provided under the TRIPS Agreement.

There are some conditions on the use of national treatment exceptions in the case of judicial and administrative
procedures.

b. MOST-FAVOURED NATION (MFN) AND EXCEPTIONS

Article 4 on MFN treatment requires that, with regard to the protection of IP, any advantage, favour, privilege or
immunity granted by a Member to the nationals of any other country shall be accorded immediately and
unconditionally to the nationals of all other Members.

Where exceptions to national treatment allow material reciprocity, a consequential exception to MFN treatment
is permitted under Article 4(b) and (c). Further limited exceptions to MFN are allowed under Article 4(a)
concerning international agreements on judicial assistance or law enforcement of a general nature and under
Article 4(d) concerning international agreements related to IP that entered into force before 1 January 1995.

In addition, Article 5 of the TRIPS Agreement provides that national and MFN treatment obligations do not apply
to procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the
acquisition or maintenance of IPRs.

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III.A.5. EXHAUSTION

What is "exhaustion"?

The term "exhaustion" refers to the generally accepted principle in IP law that a right owner's exclusive right
to control the distribution of a protected item lapses after the first act of distribution. In many countries, once
the item has been put on the market by or with the consent of the right owner, the exclusive distribution right
is "exhausted" (the principle is referred to in some jurisdictions as the "first sale doctrine") and further
circulation of that item can no longer be controlled by the right holder.

In simple terms, exhaustion describes the fact that once you have legitimately obtained e.g. a copyright-
protected DVD or a patented mobile phone, you are free to sell, transfer or otherwise distribute it without further
authorization from the right holder. This does not affect any other exclusive rights the right holder may enjoy,
for example to authorize activities such as reproduction or communication to the public.

While it is generally accepted that IPRs are exhausted within the jurisdiction where the first sale took place, are
such rights exhausted when the first sale takes place outside the jurisdiction in question? The answer to this
depends on whether a country applies a regime of national or international exhaustion and thereby prevents or
allows so-called parallel importation.

National exhaustion means that the distribution right of the IPR owner is only considered exhausted if it has put
the protected item on the market in that country. The IPR owner's distribution right would not be considered
exhausted with regard to protected items that it put on the market in another country. Therefore, the right holder
can still control the sale or import of such items into the first country. Thus, parallel imports of products first sold
on other markets are illegal in a country with a national exhaustion regime.

In contrast, if a country has an international exhaustion regime, this means that the right owner's distribution
right in that country is exhausted regardless of where the first act of distribution took place. Therefore, in
countries with an international exhaustion regime, parallel imports are legally possible.

An alternative approach is taken in some free trade areas or customs unions, namely regional exhaustion: in this
case, the right holder's IPRs are exhausted once the first sale takes place anywhere within the specified region
while parallel imports from third countries would infringe the IPR(s) concerned.

Article 6 of the TRIPS Agreement provides that, for the purposes of dispute settlement under the TRIPS
Agreement, nothing in the Agreement shall be used to address the issue of the exhaustion of IPRs, provided that
the national and MFN treatment obligations are complied with. This was clarified in the 2001 Doha Declaration
on the TRIPS Agreement and Public Health (WT/MIN(01)/DEC/2). It confirmed that the effect of the TRIPS
provisions relevant to exhaustion of IPRs was to leave each Member free to establish its own regime for
exhaustion without challenge, subject to the MFN and national treatment provisions of Articles 3 and 4.

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III.A.6. OBJECTIVES OF THE TRIPS AGREEMENT

The TRIPS Agreement

Article 7 - Objectives

The protection and enforcement of intellectual property rights should contribute to the promotion of
technological innovation and to the transfer and dissemination of technology, to the mutual advantage of
producers and users of technological knowledge and in a manner conducive to social and economic welfare,
and to a balance of rights and obligations.

The general goals contained in the Preamble of the Agreement should be read in conjunction with Article 7,
entitled "Objectives". Article 7 reflects the search for a balanced approach to IPR protection in the societal
interest, taking into account the interests of creators and inventors. IP protection and enforcement are expected
to contribute not only to the promotion of technological innovation, but also to the transfer and dissemination of
technology in a way that benefits all stakeholders and that respects a balance of rights and obligations.

III.A.7. PRINCIPLES OF THE TRIPS AGREEMENT

The TRIPS Agreement

Article 8 - Principles

1. Members may, in formulating or amending their laws and regulations, adopt measures necessary to
protect public health and nutrition, and to promote the public interest in sectors of vital importance to their
socio-economic and technological development, provided that such measures are consistent with the
provisions of this Agreement.

2. Appropriate measures, provided that they are consistent with the provisions of this Agreement, may be
needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which
unreasonably restrain trade or adversely affect the international transfer of technology.

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 IPRs, provided that such measures are consistent with the
provisions of the TRIPS Agreement. In other words, this is not an exception to the minimum standards that must
be provided under the Agreement.

EXERCISES

2. What is the effect of the non-discrimination principles for higher standards of IP protection to which trading
partners commit in an RTA?

3. Explain the general goals, objectives and principles of the TRIPS Agreement.

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 III.B. SUBSTANTIVE PROTECTION OF IPRs (PART II)

III.B.1. COPYRIGHT

What are copyright and related rights?

The term copyright is usually used to refer to the rights of authors in their literary and artistic works. Related
rights are the rights of performers (e.g. actors, singers and musicians), producers of phonograms (sound
recordings) and broadcasting organizations. The main purpose of protecting copyrights and related rights is
to encourage and reward creative work.

Examples

a. INCORPORATION OF THE SUBSTANTIVE PROVISIONS OF THE BERNE

CONVENTION (1971)
During the Uruguay Round negotiations, it was recognized that the Berne Convention already, for the most
part, provided adequate basic standards of copyright protection. Thus, it was agreed that the point of departure
should be the existing level of protection under the latest Act, the Paris Act of 1971, of that Convention.

The point of departure is expressed in Article 9.1 of the TRIPS Agreement, under which Members are obliged
to comply with Articles 1 through 21 of the Berne Convention (1971) and the Appendix thereto. However,
Members do not have rights or obligations under the TRIPS Agreement in respect of the rights conferred under
Article 6bis of that Convention, i.e. the moral rights (the right to claim the authorship and to object to any
derogatory action in relation to a work, which would be prejudicial to the author's honour or reputation), or of
the rights derived there from.

b. CLARIFICATIONS AND ADDITIONAL OBLIGATIONS

In addition to requiring compliance with the basic standards of the Berne Convention, the TRIPS Agreement
clarifies and adds some specific points.

c. WHAT IS THE SUBJECT MATTER TO BE PROTECTED?

Copyright protects "literary and artistic works". This expression includes "every production in the literary,
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scientific and artistic domain, whatever may be the mode or form of its expression". Such works include
computer programs and databases (Article 10).

Copyright protection does not cover any information or ideas contained in a work; it only protects original
expressions (Article 9.2).

The TRIPS Agreement covers three categories of related rights: protection of performers, producers of
phonograms (sound recordings) and broadcasting organizations.

d. WHAT ARE THE RIGHTS CONFERRED ON HOLDERS OF COPYRIGHT AND RELATED

RIGHTS?

The economic rights of an author of a work include, inter alia, the reproduction right; rental rights (Article 11);
rights of public performance, broadcasting and communication to the public; and rights of translation and
adaptation. As noted above, authors' moral rights are not covered by the TRIPS Agreement.

Performers have the possibility of preventing certain unauthorized acts, such as fixation of their live performance
on a phonogram and its unauthorized broadcasting (Article 14.1). Producers of phonograms have an exclusive
reproduction right (Article 14.2) and a rental right (Article 14.4). Broadcasting organizations have the right to
prohibit certain acts in respect of their broadcasts, such as re-broadcasting (Article 14.3).

e. WHAT ARE THE PERMISSIBLE EXCEPTIONS TO THESE RIGHTS?

The provisions of the Berne Convention as incorporated into the TRIPS Agreement allow free uses for certain
specified purposes, such as quotation, illustration for teaching purposes, and reporting of current events. They
also allow limitations to the reproduction right. Minor exceptions can be made to the public performance right.

Non-voluntary licences can be applied to broadcasting and communication to the public of works broadcast, as
well as to the recording of musical works. Developing countries may provide compulsory licences, subject to
certain conditions, in respect of reproduction and translation of works for educational purposes.

Article 13 of the TRIPS Agreement is a clause governing limitations and exceptions. It sets out the so called
"three step test". It permits limitations or exceptions to exclusive rights only if three conditions are met:
(1) the limitations or exceptions are confined to certain special cases; (2) they do not conflict with a normal
exploitation of the work; and, (3) they do not unreasonably prejudice the legitimate interests of the right holder.

As regards related rights, a Member may provide certain specific limitations such as private use. In general, it
may also provide for the same kinds of limitations as it provides for in respect of literary and artistic works
(Article 14.6).

f. THE TERM OF PROTECTION

In general, the minimum term of copyright protection is the life of the author plus fifty years after its death
(Article 7(1) of the Berne Convention). As regards related rights, the term of protection is at least 50 years for
performers and producers of phonograms, and 20 years for broadcasting organizations (Article 14.5). Article 12
provides that whenever the term of protection of a 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, such term shall be no less than fifty years
from the end of the calendar year of authorized publication or, failing such authorized publication within fifty

11
years from the making of the work, fifty years from the end of the calendar year of making.

EXERCISES

4. Are computer programs and databases to be protected by copyright under the TRIPS Agreement?

5. Does copyright protection cover the ideas contained in a work?

6. Explain the "three-step test" set out in Article 13 of the TRIPS Agreement.

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III.B.2. TRADEMARKS

What is a trademark?

A trademark is a sign, or a combination of signs, which is used to distinguish the goods or services of one
enterprise from those of others.

a. WHAT IS THE SUBJECT MATTER TO BE PROTECTED ?

Signs that are capable of distinguishing the goods or services of one undertaking from those of others are eligible
for trademark protection. There are no constraints on the types of signs to be protected as a trademark (such as
words, numbers, figurative elements or combinations of colours) but Members may make registration of signs
dependent on visual perceptibility. Where a sign is not inherently capable of distinguishing goods and services,
Members may limit registration to cases where the sign has acquired distinctiveness as a result of use (Article
15.1).

While the conditions for the filing and registering of a trademark are in principle determined by the domestic
legislation of each Member, there are a number of common rules that have to be observed by all Members.

Examples of Trademarks from different Members

b. WHAT ARE THE RIGHTS CONFERRED BY A TRADEMARK?

In a Member, the owner of a registered trademark must at least be able to prevent the unauthorized use of an
identical or similar sign on similar goods or services in the course of trade, which would create a likelihood of
confusion among consumers as to whether those goods or services originate from the right holder's undertaking.

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 HYPOTHETICAL EXAMPLES: TRADEMARK RIGHTS (whether the use of a sign on particular products
causes a likelihood of confusion with a registered trademark)

EXAMPLE 1

Duly registered for "document delivery services, paper envelopes and wrapping material".

Used for the products "refreshments, especially fruit juices and ice cream".
While the sign used (namely Ferdex) is very similar to the registered sign FedEx, the products on which it is
used are quite different. An overall assessment could come to the conclusion that hardly any consumer would
think that a fruit juice labelled "Ferdex" could possibly come from the provider of the document delivery
services FedEx, and that therefore, there is no likelihood of confusion.

EXAMPLE 2

Duly registered for "restaurant and catering services; especially self-service restaurants, foods,
drinks, refreshments; paper wrappings, entertainment services".

Used for "hot self-service meals obtainable from machines in gas stations on
motorways or bus stations in cities".

Although the signs used are quite dissimilar, the strong similarity of the products for which they are used may
well result in a situation where consumers might believe that a hot self-service meal labelled Donald's Burger
that can be obtained from a machine at a bus station comes from the same enterprise that runs self-service
restaurants under the trademark M-I'm loving it. Thus an overall assessment of the situation may well result
in the view that here there is a likelihood of confusion.

If the trademark is considered a well-known trademark, such protection would apply even if the trademark is not
registered in the country where protection is claimed and, in certain circumstances, extend to use of such signs
also on products which are not similar to those in respect of which the trademark is registered (Article 16).

EXAMPLE: WELL-KNOWN TRADEMARK

Take the trademark "COCA-COLA", which is known in almost all markets beyond its
main product (i.e. non-alcoholic beverages). Now imagine, someone else would
start selling designer clothes under the label "COCA-COLA" – i.e. use the
mark on goods not similar to those for which the original mark is registered. Because of the wide consumer
knowledge of this mark, consumers may still wonder whether the beverage producer "COCA COLA" had now
started also producing clothes under the same trademark. This confusion in the market could negatively affect
the interests of the owner of the well-known trademark.

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c. WHAT ARE THE PERMISSIBLE EXCEPTIONS TO THESE RIGHTS?
The TRIPS Agreement provides in Article 17 a general clause which sets out the criteria that permissible
exceptions to trademark rights must meet. Under this provision, Members are allowed to provide for limited
exceptions to trademark rights if these take into account the legitimate interests of the right owner and those of
third parties. This is a variation of the "three-step test" also applied in the copyright, industrial design and patent
areas as can be seen from the relevant sections of this chapter.

Article 20 provides that the use of the trademark in the course of trade must not be unjustifiably encumbered
by special requirements.

While Members can set conditions on how trademark rights can be licensed and transferred, they must ensure
that compulsory licences are not available for trademark rights and that the transfer or assignment of a trademark
is possible without (i.e. independently of) the transfer of the corresponding business (Article 21).

d. THE TERM OF PROTECTION

The initial term of protection for registered trademarks in Members must be a minimum of seven years, which
must be renewable indefinitely (Article 18). This means that protection of a trademark, if continuously renewed,
may last for an indefinite period of time.

If Members require the actual use of a trademark for maintaining its registration, a period of at least three years
of uninterrupted non-use must be allowed before the registration of a trademark is cancelled (Article 19.1).

EXERCISES

7. What is the subject matter to be protected by trademarks?

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III.B.3. GEOGRAPHICAL INDICATIONS

What is a geographical indication?

A geographical indication (GI) identifies 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 is essentially attributable to
its geographical origin.

a. WHAT IS THE SUBJECT MATTER FOR PROTECTION?

The TRIPS Agreement requires Members to provide protection for geographical indications, which are defined
under Article 22.1. The definition has been interpreted or implemented by Members in various ways. The
definition is limited to goods. The main requirement is that there is a linkage between the quality, reputation
or other characteristics of the good and its geographical origin as identified by the GI. An appellation of origin
is a more specific form of a geographical indication. The Geneva Act of the WIPO Lisbon Agreement – which
does not form a part of the TRIPS Agreement – defines, in Article 2(1)(i), an appellation of origin as: any
denomination protected in the Contracting Party of Origin consisting of or containing the name of a
geographical area, or another denomination known as referring to such area, which serves to designate a
good as originating in that geographical area, where the quality or characteristics of the good are due
exclusively or essentially to the geographical environment, including natural and human factors, and which
has given the good its reputation.

b. WHAT ARE THE CONDITIONS FOR GRANTING PROTECTION?

The TRIPS Agreement does not specify the legal form that the protection to be provided should take. It leaves
to Members to determine if and where the acquisition and maintenance of protection should depend on meeting
prior procedural requirements and formalities. In practice various means of protecting geographical indications
are used by Members, including: laws on business practices (e.g. on unfair competition and on consumer
protection); trademark law (i.e. certification or collective marks); and, sui generis (i.e. a system created
especially for this purpose) GI laws.

Examples of GIs:

Example 1 - Pinggu Peach is a GI for peaches from the Pinggu region, registered as a
certification mark in China. Chinese GI logo for GIs registered as certification marks at the
Chinese trademark office.

Example 2 - Café de Colombia: "Denominación de origen" in Colombia and protected

designation of origin (PDO) in the European Union; "Colombian" as applied to coffee is a
certification mark in the United States and several other countries.

c. WHAT ARE THE RIGHTS CONFERRED?

The TRIPS Agreement requires two basic forms of protection to be available in respect of all GIs: against use
in a manner that would mislead the public as to the true origin of the product; and against use that would
constitute an act of unfair competition within the meaning of Article 10bis of the Paris Convention (Article
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22.2).

Under Article 23, the level of protection required for geographical indications for wines and spirits is higher. It
is not dependent on meeting tests of misleading the consumer or unfair competition and applies even if the
true place of origin is indicated or the use is accompanied by certain qualifying terms such as "type" or "kind",
or the use is in translation. Under both Article 22 and Article 23, the right to take action must be available to
any interested party, i.e. not only the right holder but also, for example, distributors.

Under Article 22.3, where a geographical indication is used as, or in, a trademark for goods not originating from
the place identified by that indication, Members are required to provide legal means to reject the application for,
or to invalidate the registration of, that trademark if that use would mislead the public as to the true origin of
the goods.

Under Article 23.2, the use of a geographical indication as, or in, a trademark, on a wine or spirit not originating
from the place identified by that geographical indication must as a general rule be prevented, whether or not the
public would be misled.

Protection against the use of a homonymous geographical indication (i.e. geographical indications that are
identical but designate different geographical areas) must be provided where it would mislead the public as to
the true origin of the goods. For wines, the Members concerned will have to determine the practical conditions
for the co-existence of homonymous GIs, notably in order to avoid the public being misled (Article 23.3).

The question of whether the additional protection required under Article 23 for GIs for wines and spirits should
be extended to other products is being addressed as an outstanding implementation issue pursuant to paragraph
12 of the Doha Ministerial Declaration (WT/MIN(01)/DEC/1).

d. WHAT ARE THE EXCEPTIONS TO THESE RIGHTS?

Article 24 provides for a range of exceptions to the protection that would otherwise have to be given, notably in
respect of terms that have become generic in the local language, certain prior trademark rights and certain other
forms of prior use that pre-date the TRIPS Agreement.

The exceptions are accompanied by a commitment on the part of Members to be willing to enter into negotiations,
bilaterally or multilaterally, including about the continued applicability of the exceptions. A specific role is also
given to the Council for TRIPS to review the application of the TRIPS rules in this area and consult about
compliance issues.

e. NEGOTIATIONS ON A GI REGISTER
Article 23.4 gives the TRIPS Council the mandate to negotiate a multilateral system of notification and registration
of GIs for wines eligible for protection in those Members participating in the system, with a view to facilitating
their protection. The mandate has been extended to cover spirits as well. Negotiation of the system takes place
in Special Sessions of the Council for TRIPS.

17
EXERCISES

8. What is a geographical indication?

9. Are all geographical indications subject to the same protection?

10. What is the mandate in Article 23.4 of the TRIPS Agreement?

18
III.B.4. INDUSTRIAL DESIGNS

What is an industrial design?

The term "industrial design" is generally understood to refer to the ornamental or aesthetic aspect of an
article.

Examples

The TRIPS Agreement provides in Articles 25 and 26 that at least 10 years' protection must be available for
independently created industrial designs that are new or original.

Textile designs, which typically have a short life cycle, are particularly liable to copying and require protection
in large numbers, are given special attention: requirements for obtaining protection should not unreasonably
impair the possibility of gaining that protection (Article 25.2).

Owners of protected designs must be able to prevent the unauthorized manufacture, sale or importation, for
commercial purposes, of articles bearing or embodying a design which is a copy of the protected design (Article
26.1).

The language on permissible exceptions to the rights conferred on the owner of industrial designs tracks closely
that in Articles 13, 17 and 30 and is drawn from the so-called three-step test referred to first under the
copyright section above (Article 26.2).

III.B.5. PATENTS

What is a patent?

A patent is the title given to the IPR owner that is granted to protect inventions. It gives inventors an exclusive
right to prevent others from exploiting the patented invention, during a limited period of time and requires the
disclosure of the invention.

a. WHAT IS THE SUBJECT MATTER TO BE PROTECTED?

The TRIPS Agreement requires Members to make patents available for any inventions, whether products or
processes, in all fields of technology without discrimination, subject to the tests of novelty, inventiveness and
industrial applicability. It also requires that patents be available and patent rights enjoyable without
19
discrimination as to the place of invention and whether products are imported or locally produced
(Article 27.1).

Members shall require that an applicant for a patent disclose the invention in a manner sufficiently clear and
complete for the invention to be carried out by a person skilled in the art and may require the applicant to
indicate the best mode for carrying out the invention known to the inventor at the filing date or, where priority
is claimed, at the priority date of the application (Article 29.1).

b. WHAT ARE THE PERMISSIBLE EXCLUSIONS TO PATENTABLE SUBJECT MATTER?

There are three permissible exclusions allowed to the basic rule on patentability. One is for inventions contrary
to ordre public or morality; Members may refuse to patent inventions dangerous to human, animal or plant
life or health or seriously prejudicial to the environment. The use of this exception is subject to the condition
that the commercial exploitation of the invention must be prevented and this prevention must be necessary
for the protection of ordre public or morality (Article 27.2).

The second exclusion is that Members may exclude from patentability diagnostic, therapeutic and surgical
methods for the treatment of humans or animals (Article 27.3(a)).

The third exclusion under Article 27.3(b) is that Members may exclude 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, any Member excluding plant varieties from patent protection must
provide an effective sui generis system of protection. They may also opt for a combination of patents and sui
generis protection. Article 27.3(b) was made subject to review four years after entry into force of the
Agreement. The review started in 1999 and is continuing.

Under the review and subsequently under a mandate agreed at Doha, the Council for TRIPS has examined also
the relationship between the TRIPS Agreement and the Convention on Biological Diversity (CBD) as well as the
protection of traditional knowledge and folklore. The relationship between the TRIPS Agreement and the CBD
has also been addressed as an outstanding implementation issue pursuant to paragraph 12 of the Doha
Ministerial Declaration.

c. WHAT ARE THE RIGHTS CONFERRED ON PATENT OWNERS?

The exclusive rights that must be conferred by a product patent are the ones of making, using, offering for
sale, selling, and importing for these purposes. Process patent protection must give rights not only over use
of the process but also over products obtained directly by the process. Patent owners shall also have the right
to assign, or transfer by succession, the patent and to conclude licensing contracts (Article 28).

If the subject matter of a patent is a process for obtaining a product, the judicial authorities shall have the
authority to order the defendant to prove that the process to obtain an identical product is different from the
patented process, where certain conditions indicating a likelihood that the protected process was used are met
(Article 34).

d. WHAT ARE THE PERMISSIBLE EXCEPTIONS TO THESE RIGHTS?

Exceptions to patent rights can be placed into two categories: limited exceptions and other uses without the
authorization of the right holder which cover compulsory licences and government use.

20
1. LIMITED EXCEPTIONS

Members may provide limited exceptions 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 interests of the patent owner, taking account of the legitimate interests of third parties
(Article 30). The exception is thus subject to a variation of the "three-step test" referred to in the copyright
section above. Two types of TRIPS Article 30 exceptions to patent rights which may be of particular relevance in
the context of the current health crisis are the research and experimental use exception and the regulatory
review (or "Bolar") exception. The research exception or experimental use exception is one of the most commonly
used types of "limited exceptions" to national patent laws pursuant to Article 30 of the TRIPS Agreement. Under
this exception, use of the patented product for scientific experimentation, during the term of the patent and
without consent, is not an infringement. This exception enables researchers to examine the patented inventions
and to conduct research on improvements without having to fear that they are infringing the patent. Another key
exception to patent rights, confirmed in TRIPS dispute settlement practice, is the regulatory review (or "Bolar")
exception. It allows potential competitors to use a patented invention during the patent term without the consent
of the patent owner for the purpose of obtaining marketing approval for a prospective generic product. Because
marketing approval may take several years, the inability to use the patented invention during the approval
process, prior to patent expiration, would delay market entry of generic versions. The regulatory review exception
mitigates this situation by entitling use of a patented invention during the patent term without the consent of
the patent holder for the purposes of developing information to obtain marketing approval.

2. COMPULSORY LICENCES

Compulsory licensing, including government use without the authorization of the right holder, are allowed without
limitation as to grounds but subject to conditions aimed at protecting the legitimate interests of the right holder.
The conditions are contained in Article 31. These include the obligation, as a general rule, to grant such licences
only if an unsuccessful attempt has been made to acquire a voluntary licence on reasonable terms and conditions
within a reasonable period of time; to pay adequate remuneration in the circumstances of each case, taking into
account the economic value of the licence; that the licence be authorized predominantly for the supply of the
domestic market of the issuing Member; and that decisions be subject to judicial or other independent review by
a distinct higher authority. Members may relax certain of these conditions in cases of emergency and public non-
commercial use and where compulsory licences are employed to remedy practices that have been established as
anticompetitive by a legal process. See also the section on TRIPS and Public Health below, for a discussion of the
Special Compulsory Licensing System for medicines which removes certain compulsory licensing conditions the
event that specific requirements are met.

e. WHAT IS THE MINIMUM PERIOD OF PATENT PROTECTION TO BE ACCORDED ?

The term of protection available shall not end before the expiration of a period of 20 years counted from the
filing date (Article 33). An opportunity for judicial review of any decision to revoke or forfeit a patent shall be
available (Article 32).

21
EXERCISES

11. Do Members have to impose an obligation on patent applicants to "disclose" the working of an invention?

12. Can a Member refuse to provide patent protection to plant varieties?

13. Can a Member grant compulsory licenses as an exception to a patent owner's exclusive rights?

22
III.B.6. LAYOUT-DESIGNS

What is a layout-design?

A layout-design is the three-dimensional layout of an integrated circuit (or "chip").

Examples

TREATY ON INTELLECTUAL PROPERTY IN RESPECT OF INTEGRATED CIRCUITS (IPIC TREATY)

The TRIPS Agreement requires Members to protect the layout-designs ("topographies") of integrated circuits in
accordance with the provisions of the IPIC Treaty, together with the additional provisions of Articles 36 and 38
of the TRIPS Agreement. These articles relate to the term of protection, the treatment of innocent infringers, the
applicability of the protection to articles containing infringing integrated circuits, and compulsory licensing.

Members are to consider unlawful, if not authorized by the right-holder of the design, the reproduction and the
importation, sale or other commercial distribution of a protected layout design, of integrated circuits
incorporating such a design, or of articles which contain such integrated circuits (Article 36).

Innocent infringers, who import, sell or distribute integrated circuits that use unlawfully-copied layout-designs,
must not be held to have acted unlawfully. They may sell remaining stocks after having been notified of the
infringement, upon payment of a reasonable royalty to the right-holder (Article 37.1).

As regards compulsory licensing, the same conditions apply as those applying in the patent area under Article
31. This includes the provision that in the area of semiconductor technology compulsory licences can only be
granted for public non-commercial use or to remedy anti-competitive practices (Article 37.2 read with Article
31(c)).

The protection is to last for a minimum of 10 years counted from the date of filing an application for registration
or from the first commercial exploitation, wherever it occurs in the world (Article 38).

III.B.7. UNDISCLOSED INFORMATION

What is undisclosed information?

Undisclosed information refers to trade secrets and test or other data submitted to government agencies to
obtain regulatory approval for pharmaceuticals and agro-chemical products.

23
 Examples

The TRIPS Agreement requires Members to provide for the protection of information that is secret, has
commercial value and has been subject to reasonable steps to keep it secret. 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 the person's consent in a manner contrary to honest commercial practices, including at least breach of
contract, breach of confidence, inducement to breach of contract or confidence, 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 (Articles 39.1 and 39.2). The TRIPS Agreement requires Members to protect
against unfair commercial use of undisclosed test or other data whose submission is required by governments
as a condition of approving the marketing of pharmaceutical or agricultural chemical products which use new
chemical entities. Members are also required to protect such data against disclosure, except where necessary to
protect the public, or unless steps are taken to ensure that the data is protected against unfair commercial use
(Article 39.3).

III.B.8. ANTI-COMPETITIVE PRACTICES

What are anti-competitive practices?

Anti-competitive practices are practices or conditions that may, in particular cases, constitute an abuse of IPRs
having an adverse effect on competition in the relevant market.

The TRIPS Agreement recognizes, in Article 40, the right of Members to take measures to prevent or control anti-
competitive abuses of IPRs as long as these measures are consistent with the TRIPS Agreement. The Agreement
establishes a consultation procedure for mutual assistance between Members in such cases.

III.C. TRIPS AND PUBLIC HEALTH

The Doha Declaration on the TRIPS Agreement and Public Health

The Doha Declaration on the TRIPS Agreement and Public Health (WT/MIN/(01)/DEC/2) responded to concerns
about the possible implications of the TRIPS Agreement for public health, in particular access to patented
medicines. It emphasized that the TRIPS Agreement does not and should not prevent Members from taking
measures to protect public health. It reaffirmed the right of Members to use, to the full, the provisions of the
TRIPS Agreement that provide flexibility for this purpose.

The Declaration also made it clear that the TRIPS Agreement should be interpreted and implemented in a way

24
that supports Members' right to protect public health and, in particular, to promote access to medicines for all.
Further, it highlighted the importance of the objectives and principles of the TRIPS Agreement regarding the
interpretation of its provisions.

Moreover, the Declaration clarified some of the flexibilities contained in the TRIPS Agreement, in particular that
each Member: is free to determine the grounds upon which compulsory licenses are granted; has the right to
determine what constitutes a national emergency or other circumstances of extreme urgency, recognizing that
public health crises, including those relating to HIV/AIDS, tuberculosis, malaria, and other epidemics, can
represent such circumstances; and is free to establish its own exhaustion regime without challenge - subject to
the general TRIPS provisions that prohibit discrimination on the basis of the nationality of persons.

In the Declaration, Members also agreed to extend the period for least developed countries (LDCs) to
implement and enforce TRIPS provisions specifically relating to patents and test data with respect to
pharmaceutical products until the beginning of 2016. This transition period was subsequently further extended
until January 2033, or until an LDC ceases to be an LDC Member, whichever comes first. While emphasizing the
flexibility in the TRIPS Agreement to take measures to promote access to medicines, the Declaration recognized
the importance of IP protection for developing new medicines and reaffirmed Members' commitment to the
TRIPS Agreement.

* For more details, see Transitional Periods.

What is the Special Compulsory Licensing System about?

Paragraph 6 of the Doha Declaration recognized the problem of Members with insufficient or no
manufacturing capacities in the pharmaceutical sector in making effective use of compulsory licensing
when they need to call upon sources of supply from generic producers in third countries where the
medicines needed are patent protected. In order to address this problem, a General Council Decision of 30
August 2003 established the Special Compulsory Licensing System.

Members subsequently agreed in a General Council Decision of 6 December 2005 (WT/L/641), to

transform the waivers contained in the 2003 Decision into a permanent amendment to the TRIPS
Agreement and submitted it to Members for acceptance. The amendment closely tracked the text of the
2003 Decision and made no substantive changes to the Special Compulsory Licensing System. Both
decisions were adopted in the light of identical Chair statements setting out several key shared
understandings of Members on how the Decisions would be interpreted and implemented.

The amendment, which inserted a new Article 31bis and Annex to the Agreement, entered into force on
23 January 2017 and is applicable to those Members who have accepted it. Members that have yet to
accept the amendment continue to operate under the 2003 Decision.

The Special Compulsory Licensing System provides for three distinct derogations from the obligations set
out in subparagraphs (f) and (h) of Article 31 with respect to pharmaceutical products, subject to certain
conditions:
 First, a derogation from the obligation of an exporting Member under Article 31(f) that a
compulsory licence be predominantly for the supply of the domestic market, to the extent
necessary to produce and export needed pharmaceutical products to Members that lack sufficient
capacity to manufacture them. This derogation is subject to certain conditions that only Members
with insufficient domestic capacity import under it, and that the Member takes reasonable
measures within their means, proportionate to their administrative capacities and to the risk of
trade diversion, to prevent the diversion of the pharmaceutical products to markets for which they
were not intended;
 Second, a derogation from the obligation under Article 31(h) on the importing Member to provide
adequate remuneration to the right holder in situations where remuneration in accordance with
Article 31(h) is being paid in the exporting Member for the same products. The purpose of this
derogation is to avoid double remuneration of the patent owner for the same product consignment;
and,
 Third, a further derogation from the obligation under Article 31(f) for any developing or LDC
Member that is party to a regional trade arrangement of which at least half of the current
membership is made up of countries presently on the United Nations list of LDCs. The purpose of
this derogation is to enable such Members to better harness economies of scale for the purposes
of enhancing purchasing power for, and facilitating the local production of, pharmaceutical
products.

25
EXERCISES

14. Did the clarifications provided by the Doha Declaration on the TRIPS Agreement and Public Health only
address public health problems resulting from HIV/AIDS, tuberculosis and malaria?

15. What was the problem recognized in paragraph 6 of the Doha Declaration and addressed by the Special
Compulsory Licensing System?

26
III.D. IPRS ENFORCEMENT (PART III)

What is enforcement?

Infringement of an IPR occurs when an act is undertaken which is inconsistent with the rights of the owner of
the IPR and which is not subject to an admissible exception. Enforcement procedures allow the right holder to
take effective action against the infringement of IPRs.

III.D.1. WHAT ARE THE GENERAL OBJECTIVES OF THE TRIPS

ENFORCEMENT PROVISIONS?

Under Article 41, enforcement procedures, which Members are required to make available under the TRIPS
Agreement, are to permit prompt and effective action against any act of infringement of IPRs covered by the
Agreement. The general obligations contained in Article 41 also aim to ensure that certain basic principles of due
process are met, in particular with respect to fair and equitable procedures and the right to appeal. They further
stipulate that enforcement procedures are to be applied in a manner which avoids the creation of barriers to
legitimate trade and provides for safeguards against their abuse. Finally, they address some general
understandings about resource constraints and the relation with other areas of law enforcement.

III.D.2. WHAT ARE THE OBLIGATIONS WITH RESPECT TO CIVIL AND

ADMINISTRATIVE PROCEDURES?

The obligations provide that a right holder must be able to initiate civil judicial or, where applicable, administrative
procedures against an IPR infringer. Those procedures must be fair and equitable (Article 42). Certain rules on
evidence are established (Article 43). Members are required to provide judicial authorities with the authority to
award three types of remedies: injunctions, damages and other remedies, such as destruction or disposal of
infringing goods outside the channels of commerce (Articles 44-46). As part of the safeguards against abuse, the
obligations include provision for indemnification of the defendant where enforcement procedures have been
abused by the right holder (Article 48).

III.D.3. WHAT ARE THE OBLIGATIONS ON PROVISIONAL MEASURES?

Provisional measures are temporary injunctions which constitute an important tool pending the solution of a
dispute at a trial. The TRIPS Agreement under Article 50 obliges Members to allow their judicial authorities to
order prompt and effective provisional measures to take action against alleged infringements. Those measures
aim to prevent an IPR infringement from occurring and to preserve relevant evidence concerning the alleged
infringement. Given the nature of these measures, most of the obligations on provisional measures concern
certain procedural and other safeguards against the abuse of such measures.

27
III.D.4. WHAT ARE THE OBLIGATIONS ON BORDER MEASURES?

Border measures enable the right holder to obtain the cooperation of customs administrations to intercept
infringing goods at the border and to prevent the release of such goods into circulation. The TRIPS Agreement
makes this mandatory at least in regard to imports of counterfeit trademark and pirated copyright goods;
Members may also make them available for infringement of other IPRs and infringing goods destined for
exportation (Article 51). Border measures are subject to certain procedural requirements and safeguards against
abuse, similar to those applying to provisional measures (Articles 52-58). As regards remedies, the competent
authorities must be empowered to order the destruction or disposal outside the channels of commerce of
infringing goods (Article 59).

III.D.5. WHAT ARE THE OBLIGATIONS WITH RESPECT TO CRIMINAL

PROCEDURES?

Under Article 61, Members are obliged to provide for criminal procedures and penalties to be applied in cases of
wilful trademark counterfeiting or copyright piracy on a commercial scale. Their application to other cases of IPR
infringement is optional. In terms of remedies, the agreement stipulates that sanctions available must include
imprisonment and/or monetary fines, and, in appropriate cases, also seizure, forfeiture and destruction of the
infringing goods and of materials and equipment used to produce them.

EXERCISES

16. Explain the general objectives of the TRIPS enforcement provisions.

28
III.E. OTHER PROVISIONS

III.E.1. ACQUISITION AND MAINTENANCE OF IPRS

On the whole, the TRIPS Agreement does not deal in detail with procedural questions concerning the acquisition
and maintenance of IPRs. Article 62 in Part IV of the Agreement contains some general rules on these matters,
the purpose of which is to ensure that unnecessary procedural difficulties in acquiring or maintaining IPRs are not
employed to impair the protection required by the Agreement. Certain more specific rules are to be found in the
sections of Part II dealing with individual categories of IPRs and in the provisions of the Paris Convention and the
IPIC Treaty incorporated by reference.

III.E.2. TRANSITIONAL ARRANGEMENTS

1 JANUARY 1995: ENTRY INTO FORCE

The TRIPS Agreement gives all WTO Members transitional periods so that they can meet their obligations under
it. The transitional periods, which depend on the level of development of the Member concerned, are contained
in Articles 65 and 66. Except for LDC members, these transition periods have already expired.

1 JANUARY 1996: DEVELOPED COUNTRIES + NON-DISCRIMINATION (ALL MEMBERS)

Developed country Members have had to comply with all of the provisions of the TRIPS Agreement since 1 January
1996.

Moreover, all Members, even those availing themselves of the longer transition periods, have had to comply with
the national and MFN treatment obligations as of 1 January 1996 (Article 65.1).

1 JANUARY 2000: DEVELOPING COUNTRIES & ECONOMIES IN TRANSFORMATION

For developing countries, the general transition period was five years, i.e. until January 2000. The Agreement
allowed countries in transition from a centrally-planned into a market economy to delay application until 2000, if
they met certain conditions (Article 65.2 and 65.3).

Under Article 65.4 developing countries were allowed to delay the application of the provisions on product patents
in areas of technology not so protected as of 1 January 2000 by a further period of five years, namely up to 1
January 2005. However, any Member availing itself of this transition period with respect to pharmaceutical and
agricultural chemical products had to allow the filing of patent applications as of the date of entry into force of
the WTO Agreement (1 January 1995), sometimes referred to as a "mailbox" (Article 70.8). If certain conditions
were met, as specified in Article 70.9, exclusive marketing rights had to be made available to applicants under
Article 70.8, pending the final decision on patent grant.

LEAST-DEVELOPED COUNTRIES (LDCS)

Article 66.1 originally provided LDC Members a transitional period until 1 January 2006, with an extension upon
a duly motivated request.
29
By decisions taken in 2005, 2013 and 2021, upon successive requests of LDC Members, the TRIPS Council
extended the general transitional period for LDCs until 1 July 2034 or until they cease to be an LDC Member,
whichever comes first. The 2005 Decision also called for enhanced technical cooperation and capacity building
by developed country Members and by the WTO in cooperation with WIPO and other international organizations
to help LDCs implement TRIPS within their national IP regimes. It further provided that LDC Members would
ensure that any changes in their laws, regulations and practice made during the additional transitional period
would not result in a lesser degree of consistency with the provisions of the TRIPS Agreement. In the 2013 and
2021 decisions, LDC Members expressed their determination to preserve and continue progress towards
implementing the Agreement. These decisions also state that nothing in them shall prevent LDCs from making
full use of the flexibilities provided by the Agreement. The three decisions can be found in documents IP/C/40,
IP/C/64, and IP/C/88. Each of the decisions are without prejudice to separate extensions specific to
pharmaceutical products and to the right of LDC Members to seek further extensions.

Pursuant to the Doha Declaration on the TRIPS Agreement and Public Health (see section III.C above), the TRIPS
Council extended the transition period for LDCs for certain obligations with respect to pharmaceutical products,
first until 1 January 2016 and then until 1 January 2033, or until they cease to be an LDC Member, whichever is
earlier. These decisions can be found in documents IP/C/25 and IP/C/73.

Supplementing these extensions, the General Council waived for the same period the obligations of LDC Members
under Article 70.9 concerning exclusive marketing rights. In 2015, the General Council also waived for LDC
Members the obligation under Article 70.8 to provide for the possibility of filing 'mailbox' applications, again until
1 January 2033 or until they cease to be a LDC member, whichever is earlier. These decisions can be found in
documents WT/L/478 and WT/L/971.

ACCEDING COUNTRIES
Any transition periods for acceding countries are set out in their protocols of accession. Newly acceded countries
have generally agreed to apply the TRIPS Agreement as of the date of their membership in the WTO.

III.E.3. PROTECTION OF EXISTING SUBJECT MATTER

An important aspect of the transition arrangements under the TRIPS Agreement is the treatment of subject
matter existing at the time that a Member starts applying the provisions of the Agreement (e.g. already existing
works, inventions or distinctive signs). These rules are contained in Article 70.

As provided in Article 70.2, the rules of the TRIPS Agreement generally apply to subject-matter existing on the
date of the application of the Agreement for the Member in question (i.e. at the end of the relevant transition
period) and which is protected in that Member on that date, or which is still capable of meeting the criteria for
protection (e.g. undisclosed information or distinctive signs not yet protected as trademarks). There are
additional requirements in respect of pre-existing copyrighted works and phonograms based on the provisions in
Article 18 of the Berne Convention incorporated by reference into the TRIPS Agreement.

30
III.F. IMPLEMENTATION

III.F.1. NOTIFICATION

The TRIPS Agreement obliges Members to make certain notifications to the Council for TRIPS. These
notifications facilitate the Council's work of monitoring the operation of the Agreement and promote the
transparency of Members' laws and policies on IP protection. In addition, Members wishing to avail themselves
of certain flexibilities provided in the Agreement that relate to the substantive obligations have to notify the
Council.

a. LAWS AND REGULATIONS BY WHICH MEMBERS GIVE EFFECT TO THE AGREEMENT'S

PROVISIONS

Article 63.2 of the TRIPS Agreement requires Members to notify the laws and regulations by which they give
effect to the Agreement's provisions. This Article specifies that the purpose is to assist the TRIPS Council in its
review of the operation of the Agreement.

The Council has agreed that laws and regulations should be notified without delay as of the time that the
corresponding substantive TRIPS obligation starts to apply. Also, any subsequent amendments should be
notified without delay. These procedures can be found in document IP/C/2.

b. MEMBERS WISHING TO AVAIL THEMSELVES OF CERTAIN OPTIONS PROVIDED IN THE

AGREEMENT
Articles 1.3 and 3.1 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.

Article 4 on MFN treatment provides that, with regard to the protection of IP, any advantage, favour, privilege
or immunity granted by a Member to the nationals of any other country shall be accorded immediately and
unconditionally to the nationals of all other Members. According to sub-paragraph (d) of that Article, exempted
from this obligation are any advantage, favour, privilege or immunity accorded by a Member deriving from
international agreements related to the protection of IP 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.

c. CONTACT POINTS
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.

d. NOTIFICATION PROVISIONS UNDER THE BERNE AND ROME CONVENTIONS

A number of notification provisions of the Berne and Rome Conventions are incorporated by reference into the

31
TRIPS Agreement but without being explicitly referred to in it. A Member wishing to make such notifications has
to make them to the Council for TRIPS, even if the Member in question had already made a notification under
the Berne or the Rome Convention in regard to the same issue.

More details on notification obligations can be found in the Technical Cooperation Handbook on Notification
Requirements in the TRIPS Agreement, available at:
https://www.wto.org/english/tratop_e/trips_e/ip_handbook_on_notifications_e.pdf.

e. CHECKLIST OF ISSUES ON ENFORCEMENT

Given the difficulty of examining legislation relevant to many of the enforcement obligations in the TRIPS
Agreement, Members have undertaken, in addition to notifying legislative texts, to provide information on how
they are meeting these obligations by responding to a Checklist of Issues on Enforcement. This questionnaire
can be found in document IP/C/5.

III.F.2. TECHNOLOGY TRANSFER

The TRIPS Agreement requires developed country Members to provide incentives to enterprises and institutions
in their territories for the purpose of promoting and encouraging technology transfer to LDCs in order to enable
them to create a sound and viable technological base (Article 66.2). In February 2003, the TRIPS Council, at the
request of the Ministerial Conference, established a mechanism for ensuring the monitoring and full
implementation of this obligation (IP/C/28).

Developed country Members are to submit annual reports on actions taken or planned in pursuance of their
commitments under Article 66.2. To this end, they are to provide new detailed reports every third year and, in
the intervening years, to provide updates to their most recent reports. The Council reviews the reports during its
end-of-year meeting.

III.F.3. TECHNICAL COOPERATION

Article 67 of the TRIPS Agreement requires developed country Members to provide, on request and on mutually
agreed terms and conditions, technical and financial cooperation in favour of developing and LDC 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 IPRs 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.

In order 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 have agreed to present descriptions
of their relevant technical and financial cooperation programmes and to update them annually.

For the sake of transparency, intergovernmental organizations, such as WIPO and the World Health Organization
(WHO), have also presented, on the invitation of the Council, information on their activities.

The TRIPS Council has also 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.
32
III.F.4 SUBMITTING AND ACCESSING NOTIFICATIONS, REPORTS, AND
OTHER TRIPS DOCUMENTATION

The notifications and reports referred to above, as well as other TRIPS Council documentation related to meetings
and reviews are available online via the e-TRIPS Gateway at http://e-trips.wto.org and WTO Documents Online
at https://docs.wto.org.

Members may submit notifications, reports, responses to the Checklist of Issues on Enforcement, and information
pursuant to reviews under Articles 24.2 and 27.3(b) via the restricted access e-TRIPS Submission System. Access
credentials may be requested at [email protected].

33
IV. MONITORING BODIES: COUNCIL FOR TRIPS

IV.A. MONITORING THE OPERATION OF THE AGREEMENT

The Council for TRIPS, open to all Members of the WTO, is the body responsible for the administration of the
Agreement and in particular for monitoring the operation of the Agreement.

One of the key mechanisms for monitoring is the examination of each Member's national implementing legislation
by other Members, in particular at the end of its transition period. The notifications made pursuant to Article 63.2
discussed above form the basis for these reviews. 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. The records of these reviews are
available online via the e-TRIPS Gateway at http://e-trips.wto.org and WTO Documents Online at
http://docsonline.wto.org/.

IV.B. CONSULTATIONS

The TRIPS Council constitutes a forum for consultations on any problems relating to the TRIPS Agreement arising
between countries, as well as for clarifying or interpreting provisions of the Agreement.

IV.C. FORUM FOR FURTHER NEGOTIATION OR REVIEW

The WTO constitutes a forum for negotiations among its Members concerning their multilateral trade relations in
the area of IP, as in other areas covered by the WTO Agreement. Certain specific areas of further work are called
for in the text of the TRIPS Agreement ("built-in agenda"). These areas include: the negotiation of a multilateral
system of notification and registration for geographical indications for wines; the review of Article 27.3(b) (which
concerns the option to exclude from patentability certain plant and animal inventions); and the examination of
the applicability to TRIPS of non-violation complaints under the dispute settlement process. Furthermore, the
Doha Ministerial Declaration and the Declaration on the TRIPS Agreement and Public Health, both adopted in
2001, and certain subsequent ministerial declarations have given specific tasks to the Council's regular and
special sessions.

Negotiations on the GI register are being pursued in the special session of the TRIPS Council. Work on the
relationship between the TRIPS Agreement and the CBD takes place in the regular session of the Council. In
addition, consultations on two outstanding implementation issues, namely on the extension of the higher level
of protection required for GIs for wines and spirits to other products and the relationship between the TRIPS
Agreement and the CBD have been undertaken, pursuant to paragraph 12 of the Doha Ministerial Declaration
and subsequent Declarations. For further and more updated information, please visit the WTO website.

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EXERCISES

17. List the main functions of the Council for TRIPS.

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V. SUMMARY

IPRs are the rights given to persons over the creations of their minds. They usually give the creator an exclusive
right over the use of their creation for a certain period of time. The purpose of protection of IPRs is to encourage
and reward creative work, encourage technological innovation, stimulate and ensure fair competition, inform
and protect consumers, as well as to facilitate transfer of technology. The exclusive rights given to the owners
of IP are generally subject to a number of limitations and exceptions, aimed at balancing the legitimate
interests of right holders and of users.

The TRIPS Agreement is an integral Part of the WTO Agreements and it is binding on each Member of the WTO.
It is to date the most comprehensive multilateral agreement on IP. The TRIPS Agreement contains certain
general provisions and basic principles, such as national and most-favoured-nation treatment, and exhaustion
of rights.

The TRIPS Agreement contains specific provisions in the following areas of IP: copyright (protects literary and
artistic works) and related rights (i.e. the rights of performers, producers of sound recordings and broadcasting
organizations); trademarks (signs capable of distinguishing the goods and services of one enterprise from
those of other enterprise); geographical indications (signs used on goods to state that a production originated
in a geographical area possess qualities or reputation due to its place of origin); patents (inventions), including
the protection of new varieties of plants; industrial designs; the layout-designs of integrated circuits; and
undisclosed information, including trade secrets and test data.

In respect of each of these areas of IP, the Agreement sets out the minimum standards of protection to be
provided by each Member. Each of the main elements of protection is defined, namely the subject-matter to
be protected, the rights to be conferred and permissible exceptions to those rights, and, when applicable, the
minimum duration of protection. The Agreement sets these standards by requiring, first, that the substantive
obligations of the main conventions of the World Intellectual Property Organization (WIPO) must be complied
with. Most of the substantive provisions of these conventions are incorporated by reference and thus become
obligations under the TRIPS Agreement between Members. The TRIPS Agreement contains a substantial
number of additional obligations on matters where the pre-existing conventions are silent or were seen as
being inadequate.

The Doha Declaration on the TRIPS Agreement and Public Health recognized the importance of IP protection
for the development of new medicines and responded to concerns about the possible implications of the TRIPS
Agreement for public health, in particular access to patented medicines. In its paragraph 6, the Doha
Declaration recognized the problem of countries with insufficient or no manufacturing capacities in the
pharmaceutical sector in making effective use of compulsory licensing when they need to call upon sources of
supply from generic producers in third countries where the medicines needed are patent protected. In 2017,
an amendment to the TRIPS Agreement addressing this issue entered into force and legally formalized the
Special Compulsory Licensing System initially set forth in a 2003 General Council decision.

The TRIPS Agreement also requires Members to make available enforcement procedures to permit prompt and
effective action against any act of infringement of IPRs covered by the Agreement. These include: the principles
of due process; obligations with respect to civil and administrative procedures and remedies; adoption of
provisional measures; special border measures; and, criminal procedures. Enforcement procedures are to be
applied in a manner which avoids the creation of barriers to legitimate trade and provides for safeguards
against their abuse.

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The TRIPS Agreement gives Members transitional periods, which differ according to their stages of
development, to bring themselves into compliance with its rules. LDC Members continue to benefit from
extended transitional periods. It also contains provisions on transfer of technology and technical cooperation.

The Council for TRIPS, open to all WTO Members, is the body in charge of administering the TRIPS Agreement.
Members are required to make certain notifications to the Council. These notifications facilitate its work of
monitoring the operation of the Agreement and promote the transparency of Members' laws and policies on IP
protection.

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