Older Conventions and TRIPS
The Paris Convention 1883 provides for a national treatment principle. It does not set any minimum standard for patents. State party states are obliged to accept trademarks properly registered in the country of registration.
The Berne Convention 1885 provides for a national treatment principle and most favourite nation principle. It provided for minimum protection for copyright of 50 years. Both conventions are administered by United Nations World Intellectual Property Organisation (WIPO)
The trade-related aspects of intellectual property (TRIPS) agreement was entered in the Uruguay Round of GATT/ WTO negotiations. States must apply a national treatment principle and a most favoured nation principle in respect of nationals of other states in respect of protection of intellectual property rights.
TRIPS requires member states of the World Trade Organisation to adopt intellectual property laws in accordance with the minimum standards provided, including adoption of the above Conventions. The are minimum standards, for copyright, trademarks, patents, geographical indications of origin, industrial designs, circuit boards and trade secrets.
Some General Principles
The national exhaustion principle is to the effect that once goods are sold by the holder of intellectual property, it can no longer control transactions in those goods in that market. This does not necessarily exclude the exercise of rights in other markets where the intellectual property owner has rights.
Under the doctrine of international exhaustion, the first sale in any market extinguishes all intellectual property rights in all markets. This principle and the Agreement uphold this broad principle, but do not go so for as to preclude action against the import or other circulation of counterfeit goods in breach of domestic intellectual property rights.
Article VII of the Agreement recognises that the protection and enforcement of IP rights should contribute to the promotion of technological innovation and the transfer and dissemination of technology to the mutual advantage of producers and users of technological knowledge and in a manner, which is conducive to social and economic welfare and to a balance of rights and obligations.
The Agreement provides that members may in formulating or amending laws and regulations adopt measures to protect public health and nutrition or to promote the public interest in sectors of vital importance to socio-economic and technological developments. The measures must be consistent with the agreement.
Patents
Each member state must provide patents to protect inventions followed by processes or products which are new, involve an inventive step and are capable of industrial application. Patent rights must be available without discrimination, as to the field of technology, the place of invention and regardless of whether goods are produced domestically or imported.
States may exclude patent protection for inventions within their territory, the commercial exploitation of which is necessary to protect public order, morality including the protection of human animal or plant life or health or to avoid serious prejudice to the environment. States may also deny patentability to diagnostic, therapeutic, or surgical methods for treatments of humans and plants and animals other than microorganisms.
A patent is to confer on its owner, the exclusive right to prevent third parties without the owner’s consent from making using, offering for sale or selling the product, the subject of the patent. States may provide exceptions to exclusive rights if they do not unreasonably conflict with the normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, having regard to the legitimate interest of third parties.
Compulsory licensing is permitted subject to conditions. The licensee must have made efforts to obtain authorisation on reasonable terms and conditions which are not been granted within a reasonable time. This requirement may be waived in case of a national emergency, circumstances of extreme urgency or public non-commercial use. The use must be non-exclusive. It must be authorised predominantly for the supply of the domestic market of the state member.
The rights holder must be paid adequate remuneration in the circumstances taking account the economic value of the authorisation.The period of protection must be at least 20 years from the filing date.
States must also protect undisclosed information including that provided as a condition for the approval of marketing of a pharmaceutical, agricultural and chemical product.
States may adopt measures to prevent anti-competitive practices in relation to intellectual property licenses. This may include conditions preventing challenges to validity, exclusive grant back conditions and coercive licensing.
Member states must provide for the protection of plants varieties either by way of patents or a separate system.
Trade Marks and Designs
The Agreement provides that trade mark signs which are significantly distinct must be accepted for registration by all state members. Registration may be cancelled only after 3 years of non-use unless there are valid reasons for non-use. The initial period of registration is for not less than 7 years.
State members must provide the legal means for parties with a legitimate interest to prevent the use of the means of the designation and presentation of goods that indicate an origin in a geographical area, other than their true place of origin or in a manner which is misleading to the public.
State members must provide protection for independently created new/original industrial designs. The period of protection must be at least 10 years.
Required Enforcement Rights
State agrees to ensure that there are enforcement procedures in relation to intellectual property rights that are not unnecessarily complicated, costly or protracted. The TRIPS rights themselves are not directly enforceable by individuals. They may have recourse only to the rights provided by States which must comply with their TRIPS obligations.
There must be judicial review of administrative decisions. Courts must have the power to award damages and injunction as well as giving interim relief to protect intellectual property rights against infringement.
Member states must provide for criminal procedures and penalties in the case of wilful trademark counterfeiting or copyright piracy on a commercial scale.
States must adopt procedures to allow intellectual property rights holders to lodge an application with the authorities for suspension by the customs authority of the release of infringing goods into free circulation in the state member.
Public Health and Medicines
A declaration on the TRIPS agreement and public health was made at the Doha conference. Members reaffirmed the rights of the WTO members to protect public health and promote access to medicines for all. Each state may determine what constitutes the national emergency or other circumstances of extreme emergency. Each state may provide its own regime for the exhaustion of intellectual property rights without challenge pursuant to this direction.
A decision at the WTO General Council in 2003 adopted provisions for compulsory licensing of pharmaceuticals in the case of WTO members with insufficient or no manufacturing capacity in the pharmaceutical sector. Compulsory licenses can be issued to generic drug manufacturers in exporting countries and compulsory licenses may be issued by importing countries which lack domestic manufacturing capacity.
In order to prevent generic pharmaceuticals from entering other markets, products issued under the compulsory license must be distinguished through special packaging, colouring, shape et cetera. The decision waives inconsistent provisions of the TRIPS agreement. It was contemplated that more formal agreements and more formal amendments of the TRIPS agreement will be entered once accepted by two-thirds of the members. The deadline for this was 2015.
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