Intellectual Property in the WTO and Inter-Institutional Cooperation with

WIPO

Susan Isiko Štrba

Customised Training Programme for Officials from Taiwan Bilateral and Multilateral Trade Agreements Negotiation and Dispute

Settlement Geneva

16 September 2013 – 13 December 2013

The Graduate Institute Executive Education Program

Outline

1. Intellectual property at the WTO – Some definitions and examples

– Existing rules on intellectual property

– Doha Development Agenda – Hightlights on updating of these rules

2. Cooperation between WTO and WIPO – Conventional cooperation

– Unconventional cooperation

– implications

Some examples

Some examples

Intellectual property at the WTO

• Some definitions and examples

– Intellectual property – general

– Copyright and related rights

– Trademarks

– Geographical indications

– Industrial Designs

– Patents

– Undisclosed information

Why IP at WTO

• Reduce distortion and impediments to international trade … and ensure that measures and procedures to enforce IPRs do not themselves become barriers to legitimate trade

• Provide adequate standards and principles for availability, use and scope of trade-related IPRs

• Provide effective and appropriate means for enforcement • Provide effective and expeditious procedures for the

multilateral prevention and settlement of disputes between governments

• Provide international framework to deal with trade in counterfeit goods

• Desire to establish mutually supportive relationship with WIPO and other international organizations

IP in WTO – the Rules

• General provisions and basic principles

– Minimum standards

– Incorporates several provisions of conventions administered by WIPO, including the Paris Convention, the Berne Convention and the Rome Convention

– National treatment with regard to protection

– Most-Favoured-National Treatment

IP in TRIPS – the Rules (2)

• Objectives, Article 7:

“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.”

Copyright

• Incorporates provisions of the Berne Convention on scope and standards of protection (article 9.1), excludes moral rights

• Computer programs (software) protected as literary works under the Berne Convention. (Also protected by patents)

• compilations of data protected • Minimum duration of protection – life of the author plus 50

years • Rights protected include reproductions, translation,

distribution, rental • There are some exceptions to rights conferred, including

works in public domain

Trademarks

• Protects any sign or combination of signs capable of distinguishing the goods or services of one undertaking from those of other undertakings

• Has to be registered

• May provide limited exceptions, such as fair use of a TM, taking into account legitimate interests of the owner of a TM and of third parties (?)

Geographical indications – minimum level of protection

• GI are indications which identify a good as originating from a territory of a Member, or a region or locality in that territory where a given quality, reputation or other characteristics of the good is essentially attributable to the geographical origin (art. 22)

• Members obligation to provide legal means to prevent use which : – misleads the public as to the geographical origin of the goods – Constitutes unfair competition within meaning of art. 10bis

Paris Convention

• Refusal to register a TM if GI in a trademark would mislead the public

GI – Additional protection for wines and spirits (art. 23)

• Additional protection against use of a GI for wines on wines (and for spirits on spirits) not originating in the place indicated by the GI: – Without requirement to show misleading of the public or

act of unfair competition; – Even where the true origin of the good is indicated, and – Even where the GI is accompanied by expressions e.g.

kind, type, imitation

• Against registration as a trademark with respect to wines and spirits not having the origin indicated

• Members to negotiation higher level of protection of GIs for Wines and Spirits (art. 24)

Patents

• Available for any inventions, whether product or processes, in all fields of technology, provided they are new, involve and inventive step and are capable of industrial application

• May exclude from patentability to protect ordre public or morality

• May exclude from patentability a number of things including, plants and animals other than micro-organisms, and essentially biological and microbiological processes, but, must provide for protection of plant varieties, either by patents or sui generis. The provisions of this paragraph to be reviewed every four years (art.27.3(b))

Patents (2)

• Rights conferred by a patent consist in preventing third parties without the owner’s consent from using, selling, offering for sale, or importing for these purposes a product or (or product obtained directly by that process) (art 28)

• Protected for 20 years

• There are some exceptions to the rights – General like the three-step test

– Specific like compulsory licensing (art. 30), exhaustion of rights (art. 6 and 28 (a))

Transitional arrangements, review and amendment

• Art. 66, 67. Include transition provisions for implementing the Agreement. Still valid for LDCs until 2021 with possibility of further extension

• Art. 71.1. Council for TRIPS to review implementation after expiration of the transition period

The Doha Development Agenda – Updating the Rules

4 main issues on the Doha Ministerial Conference

• The negotiations on GIs (both the negotiations for a multilateral system for notifying and registering GIs and the issues of scope of additional protection)

• A separate Declaration on TRIPS and Public Health

• Work on clarifying the relationship btn TRIPS and the CBD (1992)

• A number of implementation issues, including non-violation complaints and the obligations in respect of technology transfer

Multilateral register for Wines and Spirits (art. 23.4)

• Mandate and objectives

– To facilitate protection of GI for wines

– Negotiations to take place in the Council for TRIPS

– Establishment of a multilateral system of notification and registration of GIs for wines

• Different negotiating positions

Extension of higher level of protection of GIs

• Members to negotiate increased protection of wines and spirits (art 24:1), But

• What do proponents want?

– Art. 23 apply to all GIs – extend protection to products other than wines and spirits

– Art. 24 exceptions apply mutatis mutandis

– Multilateral register to be opened to apply to all products

Articles 27.3(b) and 71.1

• Mandate of Doha Ministerial Conference to the Council for TRIPS: – Examine the relationship between TRIPS

Agreement and CBD, the protection of Traditional Knowledge and folklore and any other relevant new developments raised by Members pursuant to art 71.1

– Work to be guided by objectives and principles set out in arts 7 and 8 and should also take into account the development dimension

TRIPS and CBD

• On-going discussions, but in summary, a list o requirements for granting a patent

– Disclosure of origin of GR and TK; prior informed consent; and fair and equitable remuneration

• WIPO IGC – parallel discussions, working toward treaty or treaties on GR, TK and folklore

Cooperation between WTO and WIPO

Cooperation through conventional WIPO-WTO Agreement

• Laws and Regulations (art. 2) – Access to laws and regulations in WIPO collection by

WTO Members and their nationals, at no charge – Access to WIPO computerized database containing

laws and regulations – Access to laws and regulation in WIPO collection by

the WTO Secretariat and the TRIPS Council – Transmit to WIPO, free of charge, copies of laws and

Regulation received by WTO

• Legal-Technical Assistance and Technical Cooperation (art. 4)

Other channels of cooperation

• Dispute settlement

• Enforcement of IP or building respect for IP

• Research, eg medical technologies and innovation

• Accession

• Lessons from Marrakesh Treaty for the Blind?

– WIPO filling gaps in digital environment?

• Implications for non-WIPO members?

Summing up

• IP in TRIPS – trade orientation

• Doha, but

• Where to draw the line?

• Institutional vs individual “cooperation” – IP in FTAs (Panama, Nicaraguay),

– APEC (Asian-Pacific Economic Cooperation – 21 economies)

– TPPA

• Does the end justify the means?

Contact

Susan.isikostrba@graduateinstitute.ch