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WIPO/AEPPI INTERNATIONAL SYMPOSIUM ON INTELLECTUAL PROPERTY: CHALLENGES FOR
DEVELOPING COUNTRIES IN A GLOBAL ECONOMY
Cairo, Egypt, December 2 and 3, 2007
IP Provisions in Free Trade Agreements
WIPO Secretariat
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FTAs
1. Objectives of trade-related international IP protection
(besides providing for a guaranty as to the origin of goods)
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1. To prohibit «free riding» (if my citizens have to pay, why shouldn’t your citizens also pay?)
2. To secure international transactions (I want to be sure that here in Cairo I also own the luggage that I checked at the airport of Geneva)
3. To obtain trade-related concessions (you reduce your tariffs and subsidies, I will give you IP)
4. To attract or maintain FDI («mi casa es tu casa»)
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FTAs
In the Uruguay Round GATT Contracting Parties felt the need to adopt mandatory harmonized IP standards so as to reduce (non-tariff) barriers to trade.
During the Uruguay Round there were two different, opposite views on how IP could generate barriers to trade.
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Developing countries in general believed that the abuse of market power generated by IP was responsible for the existence of barriers to trade.
Developed countries understood that differences in the levels of protection permitted intangibles assets generated in those countries to be misappropriated in developing countries, thus making it difficult for inventors and merchants in developed countries to access the markets in developing countries for IP-incorporating goods.
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The major developed country trading partners did not obtain in the TRIPS Agreement everything they wanted.
To the EC, protection of geographical indications in the TRIPS Agreement is clearly inadequate to the extent it tolerates « past sins »
To the US, protection of patents and test data is not sufficient; moreover, after the TRIPS was approved (December 1991) new technologies emerged that were not attended to by the Agreement, namely optical disk technology and gene sequencing
To Switzerland, as a Member of the EFTA, protection of test data is not adequate
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Those aspects in which the TRIPS Agreement is seen as inadequate by major trading partners are those that are more extensively covered in the IP chapters of recent bilateral trade agreements with their trading partners.
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FTAs
Main objective of industrialized countries: to obtain additional concessions in the areas of industrialized goods, services and intellectual property
Main objective of developing countries: to obtain additional concessions in the fields of agriculture and sanitary and phitosanitary measures
They generally contain numerous IP-related provisions that reflect the interests of the signatories
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2. Two important notes
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a) We should not reject the idea of «TRIPS plus» concessions merely because they are beyond minimum obligations; some of those concessions may indeed correspond to national specific needs; to reject the idea of «TRIPS plus» in principle (or on principle) is an expression of inflexibility…
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FTAs
b) The fact that most of recent FTAs contain «TRIPS plus» concessions has not eliminated the possibility of the creative use of flexibilities. These have been reduced, it is true, but they have not been eliminated. Developing countries still have the possibility of resorting to «creative thinking» in the context of the implementation of their obligations.
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3. IP Provisions in FTAs – in general
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FTAs
Sample – US/Morocco – FTA, Chapter 15, 2004
1. Ratification of or accession to a number of WIPO Treaties and UPOV and general provisions
2. Trademarks (extending registrability to non-visually perceptible signs; extending protection against dilution to non-registered well-known marks; establishing a system of electronic filing
3. Geographical indications (government’s intervention in registration shall not be required; information and opposition
4. Domain names on the Internet (ICANN’s Uniform Domain Name Dispute Resolution Policy)
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FTAs
5. Copyright and Related Rights (very detailed and extensive provisions, including on the abolition of hierarchy between authors’ rights and performers’ rights; on hired works; on technological measures; on rights management information; government’s legitimate use of software.
6. Copyright comprises the exclusive right of communicating in the sense of making works available
7. Related Rights8. Protection of Encrypted Program-Carrying Satellite
Signals (contributory infringement by means of making devices or receiving or redistributing signals)
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FTAs
9. Patents (very detailed provisions, including extension of patentability to plants and animals as well as new uses of known substances; national exhaustion; clarification of grounds for revocation; limitation of the Bolar-exception; extension of patent terms; SPLT issues)
10. Measures related to certain regulated products (protection of test data and patent linkage in the case of pharmaceuticals)
11. Enforcement (very detailed provisions, corresponding essentially to clarifications of TRIPS language and providing for limitations on liability for service providers)
12. Transitional provisions
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Sample – EC/Albania, Interim Agreement, 2006
1. Albania shall take all the necessary measures in order to guarantee no later than four years after the date of entry into force of this Agreement a level of protection of intellectual, industrial and commercial property rights similar to that existing in the Community, including effective means of enforcing such rights.
2. Albania undertakes to accede, within four years after the date of entry into force of this Agreement, to a number of multilateral Conventions on intellectual, industrial and commercial property rights. ...
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2. ...The Stabilisation and Association Council* may decide to oblige Albania to accede to specific multilateral Conventions in this area.
3. If problems in the area of intellectual, industrial and commercial property affecting trading conditions occur, they shall be referred urgently to the Stabilisation and Association Council, at the request of either Party, with a view to reaching mutually satisfactory solutions.
* Created under the Stabilisation and Association Agreement between the EC and Albania, of 2006.
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FTAs
(i) Some US/DC FTAs provisions concerning patents
a) (new) Patent subject matterb) SPLT issuesc) Extension of patent term (compensation for
unreasonable delays)d) Challenges to patentse) Limits of grounds for compulsory license
grantsf) Limits to exhaustiong) Restrictions to the use of the“Bolar-type”
exemption
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FTAs
(ii) Some US/DC FTAs provisions concerning test data for pharmaceutical products
a) Data exclusivityb) Requirements (reduction in their scope)c) Extraterritorial effects (recognition of
approvals granted in other countries)d) Patent linkage
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(iii) Side-letters (understandings) on access to pharmaceutical products
Bahrain, CAFTA-DR, Oman“The obligations of Chapter [...] do not affect the ability of either Party to
take necessary measures to protect public health by promoting access to medicines for all, in particular concerning cases such as HIV/AIDS, tuberculosis, malaria, and other epidemics as well as circumstances of extreme urgency or national emergency.
“In recognition of the commitment to access to medicines that are supplied in accordance with the Decision of the General Council of 30 August 2003 on the Implementation of Paragraph Six of the Doha Declaration on the TRIPS Agreement and public health (WT/L/540) and the WTO General Council Chairman’s statement accompanying the Decision (JOB(03)/177, WT/GC/M/82) (collectively the “TRIPS/health solution”), Chapter [...] does not prevent the effective utilization of the TRIPS/health solution.”
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(iv) Recent revision of FTAs US/Peru and US/Colombia
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a) Protection of test data for pharmaceutical products
- requirements of protection made stricter (confidentiality of data, their nature, efforts and financial costs); normal term of 5 years, which can be reduced by 6 months in special circumstances
- reference to the Doha Declaration, to possible waivers (provided they are consistent with the WTO Agreement) and to future amendments of the TRIPS Agreement
- the patent linkage becomes voluntary and third parties shall have recourse to challenge the patent expeditiously; rewards shall be given to those third parties that successfully challenge a patent
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b) Patents for pharmaceutical products
- extension of the patent term to compensate for unreasonable delays in patent grants or in marketing approvals is mandatory for all inventions, except pharmaceutical products
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c) Other aspects
(i) the side letter has been integrated in the FTA
(ii) more importantly, now the FTA has a safeguard clause, albeit confined to the IP Chapter, and which refers to an upwards adjustment of levels of protection in the event the economic development of Peru and Colombia progresses favourably:
“The Parties shall periodically review the implementation of this Chapter and shall have the opportunity to undertake further negotiations to modify any of its provisions, including, as appropriate, consideration of an improvement in a Party’s level of economic development.”
(iii) However, the mfn treatment principle together with the operation of Article 27.1 may raise some concerns...
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4. Two questions
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a) Article 1.1 of the TRIPS Agreement: a safeguard clause?
B) FTAs and the mfn principle – is a new acquis born for a future multilateral round of negotiations?
