A Critical Analysis of TRIPS Standards Regarding PATENT Protection

  “Critical Analysis of TRIPS standards regarding PATENT protection” History of TRIPS TRIPS is an abbreviation of Agreement on Trade Related Aspects of Intellectual Property Rights. It is an international agreement between the member countries of the World Trade Organization (WTO). TRIPS agreement came after the General Agreement on Tariffs and Trade(GATT) in 1994. The main aim of the TRIPS Agreement is to uniform the laws related to Intellectual Property worldwide. It covers various areas of IP including patents, trademarks, copyrights, geographical indications, industrial designs, etc. For the same the agreement contains various standards for the member countries of WTO to follow. All the signatory countries of the agreement are bound to follow the minimum standards which are there in the agreement and implement the same in their laws. The TRIPS Agreement generally sets out the minimum standards regarding the grant of rights to the owner of IP, enforcement requirements in the national laws, and settlement of disputes and remedies to those whose IP rights get infringed. The objective of the TRIPS Agreement is mentioned under Article 7 of the said agreement which states that, the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations. The TRIPS agreement is considered to be the most comprehensive international agreement on intellectual property to date. When the developed countries stressed on narrow reading of the TRIPS Agreement, the same was discussed in the Doha Declaration where the ministers stressed that it was important toimplement and interpret the TRIPS Agreement in a way that supports public health — by promoting both access to existing medicines and the creation of new medicines. TRIPS not only requires WTO members to providecopyrightrights,geographical indications, industrial designs,patents, trademarks but it also specifies procedures to enforce the same, remedies if in the case of infringement or violation of right anddispute resolutionprocedures. The Agreement covers the following areas of Intellectual Property:

• Copyrights and Related rights (i.e. the rights of performers, producers of sound recordings and broadcasting organizations)
• Trademarks (including service marks)
• Geographical Indications (including appellations of origin)
• Industrial Designs
• Patents (including the protection of new varieties of plants)
• Layout-designs of Integrated Circuits
• Undisclosed Information (including Trade Secrets and Test Data)

The TRIPS agreement is such that the members of WTO are required to create such norms and enforcement measures and related procedures such that they meet the minimum standards which are prescribed in the agreement. The three important features of the Agreement are:

• Standards
• Enforcement
• Dispute Settlement

First, in respect of each of the areas of IP covered by the Agreement, each of the member nations is obliged to provide a minimum set of standards for protecting the respective IPR. Under each of the areas of IP covered by the Agreement, the main elements of protection are defined, namely the subject-matter to be protected, the rights to be conferred and permissible exceptions to those rights, and the minimum duration of protection. Second, each member nation is obliged to provide domestic procedures and remedies with respect to protection of IPR. The Agreement lays down certain general principles applicable to all IPR enforcement procedures. The Agreement also lays down certain other provisions on civil and administrative procedures and remedies, special requirements related to border measures and criminal procedures, which specify, in a certain amount of detail, the procedures and remedies that must be available so that right holders can effectively enforce their rights. Third, under the Agreement disputes between WTO member nations regarding the respect of the TRIPS obligations are subject to the WTO's dispute settlement procedures. Patent related provisions The TRIPS Agreement contains all the patent related provisions in Part-II which states “Standards concerning the availability, scope and use of Intellectual Property Rights”. Under Section 5, Patent related provisions are provided from Article 27 to Article 34. According to Article 27.1, the TRIPS agreement requires member countries to make patents available for any inventions, whether products or processes, provided that they are new, innovative and are capable of industrial application. It is further mentioned that the patents shall be available and also the patent rights shall be enjoyable without any discrimination. The same is irrespective of whether the patent product is imported or locally produced. Also there are three exceptions which are allowed for the subject of patentability,

• The first exception is for inventions which are contrary toordre publicor morality. This includes inventions which are dangerous to human, animal or plant life or health or the environment. There is a condition to the said exception that to it is necessary to protect ordre public or morality and so the commercial exploitation of the invention must also be prevented.
• The second exception is that patents of the diagnostics, therapies and surgical methods may be excluded as they are for the treatment of the animals and humans so if it is patented the same won’t be used by any other person in case of emergency. (Article 27.3(a))
• The third exception 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 country excluding plant varieties from patent protection must provide an effectivesui generissystem of protection. Moreover, the whole provision is subject to review, four years after entry into force of the Agreement (Article27.3(b)).

Under Article 28 of the TRIPS Agreement the rights conferred on its owner are mentioned. The rights that must be conferred by a patent of a product are the ones of making, using, offering for sale, selling, and importing for these purposes. In case of the process patent, rights are 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 (Article28). As per the Article 29, the member of the agreement shall require that an applicant for a patent should disclose the invention in such a clear and complete manner that a person who is skilled in that art can carry out such invention. He is also required to indicate the best method, for carrying out the invention, which is known to him at the time of filling of the application. According to Article 30, the 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 33 of the agreement mentions regarding the term of protection. The term available shall not end before the expiration of a period of 20 years counted from the filing date. Before the TRIPS Agreement came into force, the patent duration was shorter in many countries. For example, many countries provided 15 to 17 years of protection. In certain developing countries, patents were granted for shorter terms of 5 to 7 years. The TRIPS Agreement requires countries to provide patent protection for both processes and products, in all fields of technology. Article 34 of the agreement talks regarding the burden of proof in case of infringement. It states that if the there is any infringement in case of process patent 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. Or for the same he needs to show that the owner of the patent is unaware about the process through which he made the product. In other Articles there are provisions related to compulsory licensing and government use. Under the agreement compulsory licensing and government use without the authorization of the right holder are allowed, but the interest of the legitimate owner is protected and for the same necessary steps are taken. The conditions are mainly contained in Article 31. These include the obligation, as a general rule, to grant such licenses only if an unsuccessful attempt has been made to acquire a voluntary license on reasonable terms and conditions within a reasonable period of time; the requirement to pay adequate remuneration in the circumstances of each case, taking into account the economic value of the license; and a requirement that decisions be subject to judicial or other independent review by a distinct higher authority. Analysis Patent law over last many decades has been quite controversial apart from any other Intellectual Property. The TRIPS Agreement contains two specific provisions which created concerns in the countries like India and Brazil which are still developing. The said provisions talked about the scope of the patentable subject matter and the term of protection of the patent. Article 27(1) provides that “patents shall be available without discrimination as to…the field of technology…” and Article 33 states, “The term of protection available shall not end before the expiration of a period of twenty years counted from the filing date.” These two provisions were of great interest to the developed countries as they could get lots of benefits from the same. Firstly they are already developed so in the field of technology they were far more ahead than developing countries and so they could get things patented and this acted as a barrier to the developing countries as they could not get their products patented. But as the time passed the discussions which were focused on a limited set of issues like subject matter coverage and patent term is now shifted to the other issues like patent claim scope. With emergence of TRIPS gradually when all the countries became member of the same the issues could be dealt easily as several conventions and treaties came into the picture which made all the doubts clear. However, till there exists variations between the courts in matter of the interpretation of the patent claims, it would be difficult to set a minimum standard on a global level. And even there are cases which illustrate how such inconsistencies may occur even within a country, thus impeding the evolution of a consistent patent jurisprudence upon which one can rely when filing claims. In theory and in practice, for TRIPS to be truly effective, there must be a uniformly accepted set of principles for the interpretation of claims and patent scope. Thus provisions in the agreement allows the members to,

1. Provide limited exceptions to the exclusive patent rights;
2. 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;
3. Adopt measures “needed to prevent the abuse of intellectual property rights by the right holders.

An abuse of intellectual property rights includes a refusal to authorize use on “reasonable commercial terms” or a “resort to practices which…adversely affect the international transfer of technology.” These provisions offer developing countries certain freedom from the weight of TRIPS minimum standards. Before TRIPS, many countries provided only process — but not product — patents. Product patents provide for absolute protection of the product, whereas process patents provide protection in respect of the technology and the process or method of manufacture. Protection for process patents would not prevent the manufacture of patented products by a process of reverse engineering, where a different process or method from that which has been invented (and patented) is used. For example, national legislation requiring only process patent protection has enabled manufacturers in certain countries to make generic versions of patented medicines. These countries have opted to make use of the transition period that permitted countries to delay, until 2005, patent protection in the areas of technology that had not been so protected before the TRIPS Agreement. References

• The Suspension of Intellectual Property Obligations Under TRIPS: A Proposal for Retaliating Against Technology-Exporting Countries in the World Trade Organization : https://georgetown.lawreviewnetwork.com/files/pdf/97-5/Slater.PDF visited on the date: 29/10/2014.
• Is Indian Patent Law TRIPS Compliant? https://spicyip.com/2008/01/is-indian-patent-law-trips-compliant.html visited on 30/10/204.
• https://www.wto.org/english/tratop_e/trips_e/tripfq_e.htm visited on 31/10/2014
• Overview of Intellectual Property Rights and the TRIPs Agreement: https://www.osec.doc.gov/ogc/occic/ipr.html visited on: 31/10/2014.
• Standards concerning the availability, scope and use of Intellectual Property Rights: https://www.wto.org/english/tratop_e/trips_e/t_agm3c_e.htm#Footnote5 visited on 31/10/2014.
• “INFLUENCE OF TRIPS ON INDIAN PATENT LAW” : https://shodhganga.inflibnet.ac.in/bitstream/10603/21666/9/chapter-vi.pdf visited on 1/11/2014
• TRIPs & PATENTS by Dr. Gopakumar G. Nair, https://www.gnaipr.com/Articles/TRIPs & Patents.pdf , visted on 1/11/2014
• The Effect of TRIPs on Indian Patent Law: by Suresh Koshy, https://128.197.26.3/law/central/jd/organizations/journals/scitech/volume1/KOSHY.pdf , visted on 2/11/2014
• THE INDIAN JOURNAL OF LAW AND TECHNOLOGY :Volume 2, 2006 PATENTABILITY UNDER TRIPS: THE NEED FOR UNIFORMITY by Donald S.Chisum,https://www.ijlt.in/archive/volume2/Chisum Patentability Under TRIPS [2 Indian J. L. & Tech. 1].pdf, visited on 2/11/2014
• The Suspension of Intellectual Property Obligations Under TRIPS: A Proposal for Retaliating Against Technology-Exporting Countries in the World Trade Organization by GABRIEL L. SLATER, https://georgetown.lawreviewnetwork.com/files/pdf/97-5/Slater.PDF, visited 4/11/2014
• WTO and the TRIPS Agreement https://www.who.int/medicines/areas/policy/wto_trips/en/ visited on 7/11/2014.
• DECLARATION ON PATENT PROTECTION :Regulatory Sovereignty under TRIPS
• Prospects and Limits of the Patent Provision in theTRIPS Agreement: The Case of India
• TRIPS Agreement, An overview : IPpro Services (India) Pvt. Ltd

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