WTO jurisprudence. 4.1 India – Patent Protection In India – Patent Protection for Pharmaceutical and Agricultural Chemical Prod- ucts,17 the panel took the view that India had violated its obligation under Arti- cle 63 by failing to publish the details of its system for receiving and holding patent applications.18 In fact, the Indian Patent Act of 1970 excluded pharmaceutical and agricultural chemical products from patent protection. Under TRIPS, India among others is authorized to delay product patent protection in these areas un- til 1 January 2005, but must provide for a system of registration of applications for such patents prior to that date (“mailbox system”, Article 70.8).19 In addition, countries benefiting from the above transitional period have to grant to patent applicants, prior to 1 January 2005, exclusive marketing rights (EMRs) in defined circumstances (see Article 70.8).20 With a view to meeting its obligations under Article 70.8 and 9, the Indian Gov- ernment promulgated in 1994 the Patents Ordinance to amend the 1970 Patents Act until the entry into force of a corresponding parliamentary law. In accordance with Article 70.8 and 9, this Ordinance provided for the filing and handling of patent applications for pharmaceutical and agricultural chemical products prior to the date as of which India would have to implement TRIPS rules on product patent protection. The Ordinance also provided for the grant of EMRs for patent applicants. However, at the time this transitory Ordinance lapsed in 1995, the In- dian Parliament had not been able to conclude its discussions on a law amending the 1970 Patents Act, so that at that time, there was no legal basis in India for the operation of the mailbox system and the granting of EMRs. In order to ensure consistency with Article 70.8 and 9, the Indian executive authorities decided to instruct the patent offices to continue the application of these two instruments. However, no public notice of this administrative decision was issued, nor was it communicated to the TRIPS Council. The only public statement in this matter made on behalf of the Indian government was a written response by the Minister of Industry to a question asked by a Member of the Indian Parliament. The Min- ister confirmed that the mailbox system continued to apply on the sole basis of the administrative decision.21 In reaction to the U.S. complaint, India advanced two major substantive argu- ments.22 First, it argued that the transitional provision of Artic...
WTO jurisprudence. There have been no cases decided on this subject matter.
WTO jurisprudence. 4.1 Canada – Term of Patent Protection (“Canada – Patent Term”)145 In Canada – Patent Term the Appellate Body interpreted Articles 70.1 and 70.2 regarding subject matter existing prior to its application in a Member. This case involved a complaint by the United States against Canada for an alleged failure to apply the minimum 20-year patent term requirement of Article 33 to patents that were granted under pre-TRIPS patent legislation. Canada argued that it was not required to extend the term of patents that had been granted under an act that applied to patents granted up until 1989 (and which patents remained in force when Article 33 became applicable), because Article 70.1 excluded application of TRIPS to “acts” which occurred before the date of application. In Canada’s view, the grant of a patent was an “act” that occurred before Article 33 became applicable. Canada argued that Article 70.2, which establishes obligations regarding “subject matter existing at the date of application... and which is protected in that Member on the said date” covered patents granted prior to application of the Agreement, but did not obligate it to extend the patent term, which was excluded under Article 70.1 as prior “acts”.
WTO jurisprudence. 4.1 The particular nature of the TRIPS Agreement The complexities of the negotiations of TRIPS are reflected in its rather vague provisions, particularly in the field of exceptions. As Xxxxx pointed out, “. [W]hen a government is unable to secure true protection of certain interests, the first form of temporizing will usually be the imperfect legal commitment. [ ] International litigation can provide for second-stage temporizing.”220 In India – Patent Protection the question arose as to whether TRIPS should be interpreted by applying the same principles applicable to the other covered agree- ments. The panel decided that “We must bear in mind that the TRIPS Agreement, the entire text of which was newly negotiated in the Uruguay Round and occupies a relatively self-contained, sui generis, status in the WTO Agreement, nevertheless is an integral part of the WTO system, which itself builds upon the experience of nearly half a century 218 This Article reads as follows: “It shall be a matter for legislation in the countries of the Union to permit the reproduction of such works in certain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author.”(emphasis added). 219 See Cattaneo, p. 640.
WTO jurisprudence. Apart from the case India – Patent Protection for Pharmaceutical and Agricultural Chemical Products,140 there has been no WTO jurisprudence specifically concern- ing Article 64 as such.
WTO jurisprudence. To date no dispute concerning these provisions has been brought before the dis- pute settlement body of the WTO.
WTO jurisprudence. 4.1 EC – Protection of Trademarks and GIs Following separate requests by Australia400 and the USA,401 the WTO Dispute Settlement Body (DSB) at its meeting on 2 October 2003 established a single 399 Although under the Madrid registration system a xxxx xxx during a limited period be lost based on invalidation in the country of origin. 400 WT/DS290/18 of 19 August 2003. 401 WT/DS174/20 of 19 August 2003. 308 Geographical indications panel402 to examine complaints with respect to EC Council Regulation (EEC) No. 2081/92 of 14 July 1992403 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs. The complaints are based, inter alia, on alleged violations of TRIPS Articles 22.1 (definition of GIs), 22.2 (a) and (b) (obligation to provide the legal means for the prevention of misleading use of GIs and the prevention of any use of GIs constituting an act of unfair competition), and 24.5 (good faith application, registration or use of trademarks).404
WTO jurisprudence. 4.1 Havana Club The subject matter scope of TRIPS, including its relationship to the WIPO Conven- tions, is considered in some detail by the WTO Appellate Body (AB) in the United States – Section 211 Omnibus Appropriations Act of 1998 (“Havana Club”)121 case. The panel in the Havana Club case decided that trade names were not “intellec- tual property” within the meaning of Article 1.2 because they were not a “category” of Sections 1 through 7, Part II.122 The panel said: “We interpret the terms ‘intellectual property’ and ‘intellectual property rights’ with reference to the definition of ‘intellectual property’ in Article 1.2 of the TRIPS Agreement. The textual reading of Article 1.2 is that it establishes an inclusive definition and this is confirmed by the words ‘all categories’; the word ‘all’ indicates that this is an exhaustive list. Thus, for example, the national and most-favoured- nation treatment obligations contained in Articles 3 and 4 of the TRIPS Agreement that refer to the ‘protection of intellectual property’ would be interpreted to mean the categories covered by Article 1.2 of the TRIPS Agreement. We consider the correct interpretation to be that there are no obligations under those Articles in relation to categories of intellectual property not set forth in Article 1.2, e.g., trade names, consistent with Article 31 of the Vienna Convention.” (para. 8.26) The panel went on to consider whether Article 2.1, by incorporating Article 8, Paris Convention (obligating parties to provide trade name protection), brought trade names within the scope of intellectual property covered by the agreement. The panel reasoned that since Article 2.1 provided that the referenced Paris Convention articles were to be complied with “in respect of” Parts II, III and IV of TRIPS, and since those parts did not refer to trade names, Article 8, Paris Convention did not add obligations regarding trade names. The panel referred to negotiating history 119 For example, Article 10.1, TRIPS Agreement, provides that computer programs are protected by copyright. Prior state practice under the Berne Convention had accepted this view prior to conclusion of the TRIPS Agreement, so this article supplements the Convention by confirming that practice. 120 For example, Article 16.2, TRIPS Agreement, provides new rules regarding the meaning of well-known trademarks which arguably modify Article 6bis, Paris Convention. To the extent that Article 16.2, TRIPS Agreement, creates new rule...
WTO jurisprudence. None of the WTO Dispute Settlement Body, Appellate Body nor any panel has been asked to interpret Article 6. There are no dispute settlement decisions that discuss it. However, as noted above, Ministers meeting in Doha adopted the Declaration on the TRIPS Agreement and Public Health that expressly addresses “the provi- sions in the TRIPS Agreement that are relevant to the exhaustion of intellectual property.” Paragraph 5(d) of the Doha Declaration does not limit its reference to Article 6 precisely to account for arguments from some Members and industry groups that other Articles (such as Article 28) override it by implication. 245 For a consideration of the purpose and effect of these Articles addressing national and MFN treatment, respectively, see Chapter 4.
WTO jurisprudence. So far, there have been no cases before a panel or the Appellate Body dealing specifically with Article 71.
