Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement)
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Introduction to the TRIPS Agreement
MODULE
2
ESTIMATED TIME: 3 hours
OBJECTIVES OF MODULE 2
To introduce the TRIPS Agreement.
At the end of the Module, you will have a better understanding of:
the structure of the TRIPS Agreement;
its general provisions and basic principles;
rules on procedures for the acquisition and maintenance of intellectual property
rights; and
transitional arrangements;
institutional arrangements, including the functions of the TRIPS Council.
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Overview
I. INTRODUCTION............................................................................................................ 3 I.A. GENERAL ........................................................................................................ 3 I.B. STRUCTURE OF THE TRIPS AGREEMENT.............................................................. 5
II. GENERAL PROVISIONS AND BASIC PRINCIPLES OF THE TRIPS AGREEMENT ........................ 8 T
II.A. OBJECTIVES .................................................................................................... 8 II.B. GENERAL PROVISIONS AND BASIC PRINCIPLES................................................... 8
III. PROCEDURES FOR THE ACQUISITION AND MAINTENANCE OF INTELLECTUAL PROPERTY
RIGHTS ..................................................................................................................... 12 IV. TRANSITIONAL ARRANGEMENTS AND OTHER MATTERS .................................................. 13
IV.A. TRANSITIONAL PERIODS................................................................................. 13 IV.B. PROTECTION OF EXISTING SUBJECT MATTER.................................................... 15 IV.C. TRANSFER OF TECHNOLOGY............................................................................ 15 IV.D. TECHNICAL COOPERATION.............................................................................. 16 IV.E. SECURITY EXCEPTIONS .................................................................................. 16
V. INSTITUTIONAL ARRANGEMENTS ................................................................................. 17 V.A. THE WORK OF THE COUNCIL FOR TRIPS ........................................................... 17
VI. SUMMARY.................................................................................................................. 21
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I. INTRODUCTION
I.A. GENERAL
In Module 1 you have already had an introduction to the WTO, its organizational structure and its main
agreements. You have also had an overview of intellectual property in WIPO's Distance Learning Course (001)
that you were advised to take before attempting this course
(http://www.wipo.int/academy/en/courses/distance_learning/catalog/dl001primer.html). That course – which
was not aimed at explaining the provisions of the TRIPS Agreement – gave you a basic understanding, among
other things, of various areas of intellectual property rights (IPRs) and their enforcement.
The purpose of this Module is to help you understand the TRIPS Agreement, in particular its general provisions
and basic principles and other horizontal provisions, as well as institutional arrangement relating to its
operation. Before we turn to this, we need to understand what IPRs are and why they are protected.
I.A.1. WHAT ARE IPRS?
IPRs are the rights given to persons over the creations of their minds.
IPRs usually give the creator an exclusive right over the use of his creation for a certain period of time.
IPRs are territorial rights, which means that they are valid only in the jurisdiction where they have been
registered or otherwise acquired.
IPRs are customarily divided into two main areas: copyright and rights related to copyright, and
industrial property.
a. COPYRIGHT AND RIGHTS RELATED TO COPYRIGHT
The rights of authors of literary and artistic works (such as books and other writings, musical compositions,
paintings, sculptures, computer programs and films) are protected by copyright, for a minimum period of 50
years after the death of the author. Also protected through copyright and related (sometimes referred to as
"neighbouring") rights are the rights of performers (e.g. actors, singers and musicians), producers of
phonograms (sound recordings) and broadcasting organizations.
b. INDUSTRIAL PROPERTY
Industrial property can usefully be divided into two main areas:
One area can be characterized as the protection of distinctive signs, in particular trademarks (which
distinguish the goods or services of one undertaking from those of other undertakings) and geographical
indications (which identify a good as originating in a place where a given characteristic of the good is
essentially attributable to its geographical origin). Trademark protection may last indefinitely, provided
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the sign in question continues to be distinctive. The same is true of a geographical indication that
continues to identify the geographical origin.
Other types of industrial property are protected primarily to stimulate innovation, design and the
creation of technology. In this category fall inventions (protected by patents; in a number of countries,
innovations that could embody lesser technical progress than patentable inventions may be protected
by utility models), industrial designs and trade secrets. The protection is usually given for a finite term
(typically 20 years in the case of patents).
I.B. WHY ARE IPRS PROTECTED?
a. ENCOURAGE AND REWARD CREATIVE WORK
The main social purpose of protection of copyright and related rights is to encourage and reward creative work.
This is also relevant to protection in other areas (e.g. industrial designs and patents).
b. TECHNOLOGICAL INNOVATION
Intellectual property rights are designed to provide protection for the results of investment in the development
of new technology, thus giving the incentive and means to finance research and development activities.
c. FAIR COMPETITION
The protection of distinctive signs and other IPRs aims to stimulate and ensure fair competition among
producers.
d. CONSUMER PROTECTION
The protection of distinctive signs should also protect consumers, by enabling them to make informed choices
between various goods and services.
e. TRANSFER OF TECHNOLOGY
A functioning intellectual property regime should also facilitate the transfer of technology in the form of foreign
direct investment, joint ventures and licensing.
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f. BALANCE OF RIGHTS AND OBLIGATIONS
It should also be noted that the exclusive rights given to the owners of intellectual property are generally
subject to a number of limitations and exceptions, aimed at balancing the legitimate interests of right holders
and of users.
Turning now to the TRIPS Agreement, as explained in Module 1, the TRIPS Agreement is Annex 1C of the WTO
Agreement of 15 April 1994, which entered into force on 1 January 1995. The TRIPS Agreement is an integral
Part of the WTO Agreement, and it is binding on each Member of the WTO from the date the WTO Agreement
becomes effective for it. However, the TRIPS Agreement gave original Members transitional periods, which
differ according to their stages of development, to bring themselves into compliance with its rules. (See IV.A.4
below for transition period for acceding countries)
The Agreement is administered by the Council for TRIPS, which is open to all Members and reports to the WTO
General Council.
I.C. STRUCTURE OF THE TRIPS AGREEMENT
ANNEX 1C
AGREEMENT ON TRADE‐RELATED ASPECTS OF
INTELLECTUAL PROPERTY RIGHTS
PART I GENERAL PROVISIONS AND BASIC PRINCIPLES
PART II STANDARDS CONCERNING THE AVAILABILITY, SCOPE AND USE OF INTELLECTUAL PROPERTY RIGHTS
1. Copyright and Related Rights
2. Trademarks
3. Geographical Indications
4. Industrial Designs
5. Patents
6. Layout-Designs (Topographies) of Integrated Circuits
7. Protection of Undisclosed Information
8. Control of Anti-Competitive Practices in Contractual Licences
PART III ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS
1. General Obligations
2. Civil and Administrative Procedures and Remedies
3. Provisional Measures
4. Special Requirements Related to Border Measures
5. Criminal Procedures
PART IV ACQUISITION AND MAINTENANCE OF INTELLECTUAL PROPERTY RIGHTS AND RELATED INTER-PARTES PROCEDURES
PART V DISPUTE PREVENTION AND SETTLEMENT
PART VI TRANSITIONAL ARRANGEMENTS
PART VII INSTITUTIONAL ARRANGEMENTS; FINAL PROVISIONS
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I.C.1. GENERAL PROVISIONS AND BASIC PRINCIPLES
Part I of the TRIPS Agreement sets out general provisions and basic principles of the Agreement, such as
national treatment and most-favoured-nation treatment, and exhaustion of IPRs. These general provisions and
basic principles will be discussed in Part 2 of this Module.
I.C.2. STANDARDS CONCERNING THE AVAILABILITY, SCOPE AND USE OF IPRS
Part II of the Agreement sets out the minimum standards of intellectual property protection to be provided by
each Member. The areas of intellectual property that it covers are 1) copyright and related rights (i.e. the
rights of performers, producers of sound recordings and broadcasting organizations); 2) trademarks including
service marks; 3) geographical indications; 4) industrial designs; 5) patents including the protection of new
varieties of plants; 6) the layout-designs of integrated circuits; and 7) undisclosed information, including trade
secrets and test data. Part II also contains provisions on the control of anti-competitive practices in contractual
licences. These areas of intellectual property and control of anti-competitive practices will be discussed in
Modules 3-8.
In respect of each of these areas of intellectual property, 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,
where applicable, the minimum duration of protection.
IMPORTANT NOTE:
The Agreement sets these standards by requiring, first, compliance with the substantive obligations of the main
conventions of the World Intellectual Property Organization (WIPO), the Paris Convention and the Berne
Convention in their most recent versions. With the exception of the provisions of the Berne Convention on
moral rights, all the main substantive provisions of these two conventions are incorporated by reference and
thus become obligations under the TRIPS Agreement between Members.
The relevant provisions are to be found in Articles 2.1 and 9.1, which relate, respectively, to the Paris
Convention and to the Berne Convention. Secondly, the TRIPS Agreement adds a substantial number of
additional obligations on matters where the pre-existing conventions are silent or were seen as being
inadequate. The TRIPS Agreement is thus sometimes referred to as a "Berne-plus" and "Paris-plus" agreement.
See Note 2.1 for more details on the Paris Convention and the Berne Convention.
As explained in Module 3, the TRIPS provisions on related rights contain certain references to the Rome
Convention. The Section on the protection of layout-designs of integrated circuits, explained in Module 7,
incorporates most of the substantive provisions of the IPIC Treaty. Article 2.2 of the TRIPS Agreement contains
a safeguard clause, according to which the provisions of the Agreement cannot be understood to derogate from
the existing obligations that Members may have to each other under the Paris Convention, the Berne
Convention, the Rome Convention or the IPIC Treaty.
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I.C.3. ENFORCEMENT
Part III of the Agreement deals with domestic procedures and remedies for the enforcement of intellectual
property rights. The Agreement lays down certain general principles applicable to intellectual property
enforcement procedures. In addition, it contains provisions on civil and administrative procedures and
remedies, provisional measures, special requirements related to border measures and criminal procedures.
These provisions specify, in a certain amount of detail, the procedures and remedies that must be available so
that right holders can effectively enforce their rights and also provide for safeguards against the abuse of such
procedures and remedies as barriers to legitimate trade. These provisions will be discussed in Module 9.
I.C.4. CERTAIN OTHER MATTERS
Part IV of the Agreement contains general rules on procedures related to the acquisition and maintenance of
intellectual property rights. These rules are explained in III below.
Part V of the Agreement deals with dispute prevention and settlement. The Agreement makes disputes
between Members about the respect of obligations contained in it, whether in the field of substantive standards
or in the field of enforcement, subject to the WTO's dispute settlement procedures. Dispute prevention and
settlement will be discussed in Module 10.
Part VI of the Agreement contains provisions on transitional periods, transfer of technology and technical
cooperation. Part VII deals with institutional arrangements and certain cross-cutting matters such as the
protection of existing subject matter. These two Parts are covered below in IV of this Module.
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II. GENERAL PROVISIONS AND BASIC PRINCIPLES OF THE TRIPS AGREEMENT
II.A. OBJECTIVES
The general goals of the TRIPS Agreement are contained in the Preamble of the Agreement. These goals
include the reduction of distortions and impediments to international trade, promotion of effective and
adequate protection of intellectual property rights, and ensuring that measures and procedures to enforce
intellectual property rights do not themselves become barriers to legitimate trade. The Preamble essentially
reproduces the Uruguay Round mandates given to the negotiators of the TRIPS Agreement in the 1986 Punta
del Este Declaration and in the April 1988 mid-term review decision.
The general goals contained in the Preamble of the Agreement should be read in conjunction with Article 7,
entitled "Objectives". Article 7 reflects the search for a balanced approach to IPR protection in the societal
interest, taking into account the interests of creators and inventors. IPR protection is expected to contribute
not only to the promotion of technological innovation, but also to the transfer and dissemination of technology
in a way that benefits all stakeholders and that respects a balance of rights and obligations. More detailed
information on the Preamble and Articles 7 and 8 are included in Note 2.2.
Article 8, entitled "Principles", recognizes the rights of Members to adopt measures for public health and other
public interest reasons and to prevent the abuse of intellectual property rights, provided that such measures
are consistent with the provisions of the TRIPS Agreement.
II.B. GENERAL PROVISIONS AND BASIC PRINCIPLES
II.B.1. MINIMUM STANDARDS AGREEMENT
As discussed above, the TRIPS Agreement sets out the minimum standards of protection to be provided by
each Member. Article 1.1 makes it clear that Members may, but are not obliged to, implement in their law
more extensive protection than required by the Agreement, provided that such protection does not contravene
its provisions. For example, Members may provide for longer terms of protection than that mandated by the
TRIPS Agreement but Members are not required to do so.
Article 1.1 further clarifies that Members are free to determine the appropriate method of implementing the
provisions of the TRIPS Agreement within their own legal system and practice.
II.B.2. BENEFICIARIES
As in the main pre-existing intellectual property conventions, the basic obligation on each Member is to accord
the treatment in regard to the protection of intellectual property provided for under the Agreement to right
holders and users of other Members. Article 1.3 defines who these persons are. These persons are referred to
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as "nationals" but include persons, natural or legal, who have a close attachment to another Member without
necessarily having the nationality of that other Member. The criteria for determining which persons must thus
benefit from the treatment provided for under the Agreement are those laid down for this purpose in the pre
existing intellectual property conventions of WIPO referred to in the Agreement, applied of course with respect
to all WTO Members whether or not they are party to those conventions. For a clearer understanding of who
the beneficiaries are, please see a summary of the relevant provisions that apply to the different areas of
intellectual property in Note 2.3.
II.B.3. NATIONAL TREATMENT AND MOST‐FAVOURED‐NATION TREATMENT
You have already been introduced to these two terms in Module 1 as Part of the key principle of
non-discrimination in the WTO. The fundamental rules on national and most-favoured-nation (MFN) treatment
of foreign nationals can be found in Articles 3-5 of the TRIPS Agreement. These rules are common to all
categories of intellectual property covered by the Agreement.1
Article 3 on national treatment requires each Member to accord to the nationals of other Members treatment
no less favourable than that it accords to its own nationals with regard to the protection of intellectual
property. In respect of the national treatment obligation, the exceptions allowed under the four pre-existing
WIPO treaties (Paris, Berne, Rome and IPIC) are also allowed under TRIPS.
An important exception to national treatment is the so-called comparison of terms for copyright protection
allowed under Article 7(8) of the Berne Convention as incorporated into the TRIPS Agreement. If a Member
provides a term of protection in excess of the minimum term required by the TRIPS Agreement, it does not
need to protect a work for a duration that exceeds the term fixed in the country of origin of that work. In other
words, the additional term can be made available to foreigners on the basis of "material reciprocity". For
example if Member A provides for 70 years instead of 50 years in accordance with Article 12 of the TRIPS
Agreement while Member B provides for 50 years, Member A need not protect works from Member B for more
than 50 years.
In respect of performers, producers of phonograms (sound recordings such as CDs) and broadcasting
organizations, this obligation applies only in respect of rights provided under the TRIPS Agreement.
There are some conditions on the use of national treatment exceptions in the case of judicial and
administrative procedures. These can be seen in Note 2.4.
Article 4 on MFN treatment requires that, with regard to the protection of intellectual property, any advantage,
favour, privilege or immunity granted by a Member to the nationals of any other Member shall be accorded
immediately and unconditionally to the nationals of all other Members. For example, if Member A decides to
recognize and enforce the patents granted in Member B from a certain date in the past irrespective of whether
1 Footnote 3 to the TRIPS Agreement says that, for the purposes of Articles 3 and 4, "protection" shall include
matters affecting the availability, acquisition, scope, maintenance and enforcement of intellectual property
rights as well as those matters affecting the use of intellectual property rights specifically addressed in this
Agreement.
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the inventions covered meet the novelty criterion or not, Member A must extend the same advantage to
nationals of other Members.
Where exceptions to national treatment allow material reciprocity, a consequential exception to MFN treatment
is permitted under Article 4(b) and 4(c). Further limited exceptions to MFN are allowed under Article 4(a)
concerning international agreements on judicial assistance or law enforcement of a general nature and under
Article 4(d) concerning international agreements related to intellectual property that entered into force before
1 January 1995.
In addition, Article 5 of the TRIPS Agreement provides that national and MFN treatment obligations do not
apply to procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the
acquisition or maintenance of intellectual property rights.
To explain this further, Article 5 recognizes that certain WIPO agreements, such as the Patent Cooperation
Treaty, the Madrid Agreement Concerning the International Registration of Marks and the Protocol to that
Agreement, and the Hague Agreement Concerning the International Registration of Industrial Designs, provide
for a system of international applications only open to persons that are nationals or residents of signatory
countries or have a real and effective industrial or commercial establishment in those countries.
II.B.4. EXHAUSTION
The term "exhaustion" refers to the generally accepted principle in intellectual property law that a right
owner's exclusive right to control the distribution of a protected item lapses after the first act of distribution.
In many countries, once the item has been put on the market by or with the consent of the right owner, the
exclusive distribution right is "exhausted" (which is why the principle is referred to in some jurisdictions as
the "first
sale doctrine") and further circulation of that item can no longer be controlled by the right holder. In simple
terms, exhaustion describes the fact that once you have legitimately obtained e.g. a copyright
protected DVD or a patented mobile phone, you are free to further sell, transfer or otherwise distribute it
without further authorization from the right holder. This does not, of course, affect any other exclusive rights
the right holder may enjoy, for example to authorize activities such as reproduction or communication to the
public.
While it is generally accepted that intellectual property rights are exhausted within the jurisdiction where the
first sale took place, are such rights exhausted when the first sale takes place outside the jurisdiction in
question? The answer to this depends on whether a country applies a regime of national or international
exhaustion and thereby prevents or allows so-called parallel importation:
National exhaustion means that the right owner's distribution right is only considered exhausted if he
has put the protected item on the market in that country. His distribution right would not be considered
exhausted with regard to protected items that he had put on the market in another country, so that he
can still control the sale or import of such items into the first country. That means, for example, that in
a country with a national exhaustion regime, the right owner can prevent the importation into that
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country of DVDs which he has sold in other countries. Thus, parallel imports of products first sold on
other markets are illegal in a country with a national exhaustion regime.
In contrast, if a country has an international exhaustion regime, this means that the right owner's
distribution right in that country is exhausted regardless of where the first act of distribution took place.
Thus, the right owner can not use his intellectual property rights to prevent the importation and sale of
DVDs that he has sold in another country. Therefore, in countries with an international exhaustion
regime, parallel imports are legally possible.
Note that the products imported under so-called parallel importation are not counterfeit or pirated goods, but
genuine original products that have been sold in other countries.
Note also that regional exhaustion, which may apply in free trade areas or customs unions, is a variant where
the right owner's IPRs are exhausted once the first sale takes place anywhere within the specified region.
It is generally understood that national exhaustion favours market segmentation, whereas international
exhaustion facilitates parallel importation of the same product sold at lower prices in other countries.
During the Uruguay Round negotiations, Members negotiated a text that left them considerable discretion as to
how to regulate the question of exhaustion. Article 6 of the TRIPS Agreement provides that, for the purposes of
dispute settlement under the TRIPS Agreement, nothing in the Agreement shall be used to address the issue of
the exhaustion of intellectual property rights, provided that the national and MFN treatment obligations are
complied with. This was clarified in the 2001 Ministerial Declaration on the TRIPS Agreement and Public Health.
It confirmed that the effect of the TRIPS provisions relevant to exhaustion of intellectual property rights was to
leave each Member free to establish its own regime for exhaustion without challenge, subject to the MFN and
national treatment provisions of Articles 3 and 4. This Declaration will be discussed further in Module 8.
EXERCISES:
1. Is a Member free to provide higher levels of protection than those required under the TRIPS minimum
standards?
2. What is the main difference between national treatment and MFN treatment?
3. Did the TRIPS Agreement establish a completely new international intellectual property system?
4. Do national and MFN treatment obligations only apply to substantive standards of intellectual property
protection?
5. Does a person need to be a citizen to be considered as a "national" of a Member and thus a beneficiary
under the TRIPS Agreement?
6. Are Members obliged to prohibit the parallel importation of products covered by IPRs?
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III. PROCEDURES FOR THE ACQUISITION AND MAINTENANCE OF INTELLECTUAL PROPERTY RIGHTS
On the whole, the TRIPS Agreement does not deal in detail with procedural questions concerning acquisition
and maintenance of intellectual property rights. Part IV of the Agreement contains some general rules on these
matters, the purpose of which is to ensure that unnecessary procedural difficulties in acquiring or maintaining
intellectual property rights are not employed to impair the protection required by the Agreement. Certain more
specific rules are to be found in the sections of Part II dealing with individual categories of IPRs and in the
provisions of the Paris Convention and the IPIC Treaty incorporated by reference.
Part IV consists of a single article, Article 62. It allows Members to require, as a condition of the acquisition or
maintenance of rights related to trademarks, geographical indications, industrial designs, patents and
layout-designs, compliance with reasonable procedures and formalities (paragraph 1).
Where the acquisition of an intellectual property right is subject to the right being granted or registered, the
procedures must permit the granting or registration of the right within a reasonable period of time so as to
avoid unwarranted curtailment of the period of protection (paragraph 2).
Paragraph 4 of Article 62 requires that procedures concerning the acquisition or maintenance of intellectual
property rights and, where a Member's law provides for such procedures, administrative revocation and
inter partes procedures such as opposition, revocation and cancellation, must be governed by the general
principles concerning decisions and review set out in paragraphs 2 and 3 of Article 41 of the Agreement. These
general principles requiring that procedures must be fair and equitable will be discussed in Module 9.
Final administrative decisions in such procedures must generally be subject to review by a judicial or quasi-
judicial authority (paragraph 5).
EXERCISES:
7. Does the TRIPS Agreement allow Members to require the compliance with procedures and formalities as a
condition of the acquisition of (i) copyright, (ii) trademarks and (iii) patents?
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IV. TRANSITIONAL ARRANGEMENTS AND OTHER MATTERS
IV.A. TRANSITIONAL PERIODS
The TRIPS Agreement gave all Members transitional periods so that they can meet their obligations under it.
The transitional periods, which depend on the level of development of the country concerned, are contained in
Articles 65 and 66. Except for least-developed country Members, these transitional periods have already
expired.
IV.A.1. DEVELOPED COUNTRIES AND NON‐DISCRIMINATION (ALL MEMBERS)
Developed country Members have had to comply with all of the provisions of the TRIPS Agreement since
1 January 1996. Moreover, all Members, including those availing themselves of the longer transition periods,
have had to comply with the national and MFN treatment obligations as of 1 January 1996 (Article 65.1).
IV.A.2. DEVELOPING COUNTRIES AND ECONOMIES IN TRANSITION
For developing countries, the general transition period was five years, i.e. until 1 January 2000 (Article 65.2).
In addition, the Agreement allowed countries in transition from a centrally-planned into a market economy to
delay application until 2000, if they met certain conditions (Article 65.3).
The TRIPS Agreement provided special transition rules in the situation where a developing country did not
provide product patent protection in a given area of technology on 1 January 2000. This provision was
especially relevant to pharmaceutical or agricultural chemical inventions. According to Article 65.4, such a
developing country could delay the application of the TRIPS obligations on product patents to that area of
technology until 1 January 2005.
The TRIPS Agreement includes some additional, somewhat complicated, transitional arrangements in the
situation where a country does not yet provide patent protection for pharmaceutical and agricultural chemical
products commensurate with the TRIPS provisions.
In accordance with the "mail-box" provision contained in Article 70.8, the country concerned must provide a
means by which patent applications for such inventions can be filed. These applications do not need to be
examined for their patentability until the country starts applying product patent protection in that area.
However, at that time, the application must be examined by reference to the prior art as it existed at the time
the application was made (e.g. to assess if the invention was "new" as of that date). If the application is
successful, product patent protection would then have to be granted for the remainder of the patent term
counted from the filing date of the application.
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If a product that has been the subject of such a mailbox patent application in a Member obtains marketing
approval before the decision on the grant of the patent is taken, there is an obligation under Article 70.9 to
grant exclusive marketing rights for a period of up to five years to tide over the gap. This is subject to a
number of safeguards to ensure that the product concerned is a genuine invention: subsequent to the entry
into force of the WTO Agreement, a patent application must have been filed, a patent granted and marketing
approval obtained in another Member for the product in question.
These provisions were addressed in reports adopted by the Dispute Settlement Body in cases India – Patents I
and II.
IV.A.3. LEAST‐DEVELOPED COUNTRIES
To know more about the determination of LDC status of a country in the WTO, please refer to Note 2.5.
Article 66.1 originally provided LDC Members a transitional period until 1 January 2006, with an extension upon
a duly motivated request.
Pursuant to the Doha Declaration on the TRIPS Agreement and Public Health, the TRIPS Council decided
in 2002 to extend the transition period for LDCs for certain obligations with respect to pharmaceutical products
until 1 January 2016. This Decision can be found in document IP/C/25.
Supplementing this Decision, the General Council adopted a waiver for the same period in respect of the
obligations of LDC Members under Article 70.9 concerning so-called exclusive marketing rights. Thus, LDC
Members availing themselves of the extended transition period are required to provide a "mail-box" if they do
not already provide patent protection for pharmaceutical products, but the obligations in respect of exclusive
marketing rights for such products have been waived until 1 January 2016. This decision can be found in
document WT/L/478.
In 2005, upon a request of LDCs, the TRIPS Council extended the general transitional period for LDCs until
1 July 2013. This Decision calls for enhanced technical cooperation and capacity building by developed country
Members and by the WTO in cooperation with WIPO and other international organizations. It provides that LDC
Members will ensure that any changes in their laws, regulations and practice made during the additional
transitional period do not result in a lesser degree of consistency with the provisions of the TRIPS Agreement.
It is without prejudice to the earlier extension with respect to pharmaceutical products and to the right of LDC
Members to seek further extensions. This Decision is contained in document IP/C/40.
IV.A.4. ACCEDING COUNTRIES
Any transition periods for acceding countries are set out in their protocols of accession. With the exception of
least-developed countries, newly acceded countries have generally agreed to apply the TRIPS Agreement as of
the date of entry into force of their membership in the WTO.
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IV.B. PROTECTION OF EXISTING SUBJECT MATTER
IV.B.1. APPLICATION OF THE RULES
An important aspect of the transition arrangements under the TRIPS Agreement are the provisions relating to
the treatment of subject-matter existing at the time that a Member starts applying the provisions of the
Agreement (e.g. already existing works, inventions or distinctive signs). These rules are contained in
Article 70.
As provided in Article 70.2, the rules of the TRIPS Agreement generally apply to subject-matter existing on the
date of the application of the Agreement for the Member in question (i.e. at the end of the relevant transition
period) and which is protected in that Member on that date, or which is still capable of meeting the criteria for
protection (e.g. undisclosed information or distinctive signs not yet protected as trademarks). The
interpretation of Article 70.2 was addressed in reports adopted by the Dispute Settlement Body on Canada –
Patent Term.
For additional requirements in respect of pre-existing works and phonograms, please see Note 2.6.
IV.C. TRANSFER OF TECHNOLOGY
Article 7 of the TRIPS Agreement recognizes that the protection and enforcement of intellectual property rights
should contribute to the transfer and dissemination of technology (see II.A above).
Article 66.2 of the TRIPS Agreement requires developed-country Members to provide incentives to enterprises
and institutions in their territories for the purpose of promoting and encouraging technology transfer to
least-developed country Members in order to enable them to create a sound and viable technological base. The
precise nature of such incentives has not been further elaborated upon in the TRIPS Agreement. Examples of
incentives reported to the TRIPS Council by developed countries can be found in the annual reports submitted
under this provision cited in the annual reports of the Council (IP/C/-/- series of documents).
In 2003, pursuant to instructions given by ministers at the Doha ministerial meeting, the Council adopted a
decision on "Implementation of Article 66.2 of the TRIPS Agreement" that put in place a mechanism for
ensuring the monitoring and full implementation of the obligations in question. Under this Decision, developed
county Members shall submit annually reports on actions taken or planned in pursuance of their commitments
under Article 66.2. These submissions are reviewed by the Council at its end of year meeting each year. The
review meetings are intended to provide Members an opportunity to, inter alia, discuss the effectiveness of the
incentives provided in promoting and encouraging technology transfer to least-developed country Members in
order to enable them to create a sound and viable technological base.
This Decision can be found in document IP/C/28. Annual reports submitted pursuant to it are available on the
WTO Documents Online database at http://docsonline.wto.org in IP/C/W/ -series of documents.
More detailed information on the transfer of technology to LDC Members can be found in Note 2.7.
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IV.D. TECHNICAL COOPERATION
Article 67 of the TRIPS Agreement requires developed country Members to provide, on request and on mutually
agreed terms and conditions, technical and financial cooperation in favour of developing and least-developed
country Members. According to this provision, the objective of such cooperation is to facilitate the
implementation of the Agreement. The Article specifies that such assistance shall include assistance in the
preparation of laws and regulations on the protection and enforcement of intellectual property rights as well as
on the prevention of their abuse, and support regarding the establishment or reinforcement of domestic offices
and agencies relevant to these matters, including the training of personnel.
In order to ensure that information on available assistance is readily accessible and to facilitate the monitoring
of compliance with the obligation of Article 67, developed country Members present descriptions of their
relevant technical and financial cooperation programmes and to update this annually. For the sake of
transparency, intergovernmental organizations, such as WIPO and the World Health Organization (WHO), have
also presented, on the invitation of the Council, information on their activities. The information from developed
country Members, intergovernmental organizations and the WTO Secretariat on their technical cooperation
activities in the area of TRIPS is available on the WTO Documents Online database at http://docsonline.wto.org
in IP/C/W/ -series of documents.
The TRIPS Council has agreed that each developed country Member should notify a contact point for technical
cooperation on TRIPS, in particular for the exchange of information between donors and recipients of technical
assistance. These notifications are being circulated in IP/N/7 –series of documents, which are available on the
WTO Document Online database.
IV.E. SECURITY EXCEPTIONS
In line with other WTO Agreements, Article 73 permits Members certain actions under security exceptions.
EXERCISES:
8. Which Members can still avail themselves of transitional periods under the TRIPS Agreement and for how
long?
9. What specific incentives does the TRIPS Agreement call for in relation to the transfer of technology?
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V. INSTITUTIONAL ARRANGEMENTS
V.A. THE WORK OF THE COUNCIL FOR TRIPS
V.A.1. GENERAL
You will recall from Module 1 that the Council for TRIPS is one of the three sectoral Councils operating under
the General Council. It is the body, open to all Members of the WTO, responsible for the administration of the
TRIPS Agreement and in particular for monitoring the operation of the Agreement. The Council meets in
Geneva formally some four times a year as well as informally as necessary.
The basic provision on the role of the TRIPS Council is contained in Article 68 of the TRIPS Agreement. It
should be read together with the provisions of the WTO Agreement concerning the structure and operation of
the WTO that were discussed in Module 1.
Below we will look at some of the main functions and working methods of the TRIPS Council.
V.A.2. NOTIFICATIONS
The TRIPS Agreement obliges Members to make certain notification to the Council for TRIPS. These
notifications facilitate the Council's work of monitoring the operation of the Agreement and promote the
transparency of Members' laws and policies on intellectual property protection. In addition, Members wishing to
avail themselves of certain flexibility provided in the Agreement that relate to the substantive obligations have
to notify the Council.
Article 63.2 of the TRIPS Agreement requires Members to notify the laws and regulations by which they give
effect to the Agreement's provisions. The Article specifies that the purpose is to assist the TRIPS Council in its
review of the operation of the Agreement.
The Council has agreed that laws and regulations should be notified without delay as of the time that the
corresponding substantive TRIPS obligation starts to apply. Also any subsequent amendments should be
notified without delay. These procedures can be found in document IP/C/2.
Given the difficulty of examining legislation relevant to many of the enforcement obligations in the
TRIPS Agreement, Members have undertaken, in addition to notifying legislative texts, to provide information
on how they are meeting these obligations by responding to a Checklist of Issues on Enforcement. This
questionnaire can be found in document IP/C/5.
Articles 1.3 and 3.1 allow Members to avail themselves of certain options in regard to the definition of
beneficiary persons and national treatment, provided that notifications are made to the Council for TRIPS.
Article 4 on MFN treatment provides that, with regard to the protection of intellectual property, any advantage,
favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded
immediately and unconditionally to the nationals of all other Members. There are certain exceptions to this
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obligation. According to sub-paragraph (d) of that Article, exempted from this obligation are any advantage,
favour, privilege or immunity accorded by a Member deriving from international agreements related to the
protection of intellectual property which entered into force prior to the entry into force of the WTO Agreement,
provided that such agreements are notified to the Council for TRIPS and do not constitute an arbitrary or
unjustifiable discrimination against nationals of other Members.
Article 69 of the Agreement requires Members to establish and notify contact points in their administrations for
the purposes of cooperation with each other aimed at the elimination of trade in infringing goods.
A number of notification provisions of the Berne and Rome Conventions are incorporated by reference into the
TRIPS Agreement but without being explicitly referred to in it. A Member wishing to make such notifications
has to make them to the Council for TRIPS, even if the Member in question had already made a notification
under the Berne or the Rome Convention in regard to the same issue.
All of the notifications referred to above are circulated in IP/N –series of documents that are available at the
WTO Documents Online database at http://docsonline.wto.org.
We will discuss notifications pursuant to Article 6ter of the Paris Convention as incorporated into the
TRIPS Agreement below.
V.A.3. REVIEW OF NATIONAL LAWS AND REGULATIONS
One of the key mechanisms for monitoring is the examination of each Member's national implementing
legislation by other Members, in particular at the end of its transition period. The notifications made pursuant
to Article 63.2 discussed above form the basis for these reviews. The procedures for these reviews provide for
written questions and replies prior to the review meeting, with follow-up questions and replies during the
course of the meeting. At subsequent meetings of the Council, an opportunity is given to follow up points
emerging from the review session which delegations consider have not been adequately addressed. The
records of these reviews are circulated in IP/Q –series of documents, which are available on the WTO
Documents Online database at http://docsonline.wto.org.
V.A.4. CONSULTATIONS
The TRIPS Council constitutes a forum for consultations on any problems relating to the TRIPS Agreement
arising between countries, as well as for clarifying or interpreting provisions of the Agreement.
V.A.5. FORUM FOR FURTHER NEGOTIATION OR REVIEW
The WTO constitutes a forum for negotiations among its Members concerning their multilateral trade relations
in the area of intellectual property, as in other areas covered by the WTO Agreement. Certain specific areas of
further work are called for in the text of the TRIPS Agreement. These areas include: the negotiation of a
multilateral system of notification and registration for geographical indications for wines; the review of
Article 27.3(b) (which concerns the option to exclude from patentability certain plant and animal inventions);
and the examination of the applicability to TRIPS of non-violation complaints under the dispute settlement
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process. Furthermore, the Doha Ministerial Declaration and the Declaration on the TRIPS Agreement and Public
Health, both adopted in 2001, and certain subsequent ministerial declarations have given specific tasks to the
Council's regular and special sessions. Past and ongoing work on such matters will be discussed in the
subsequent modules in the context of the substantive area concerned.
V.A.6. COOPERATION WITH WIPO
To facilitate the implementation of the TRIPS Agreement, the WTO concluded with WIPO an agreement on
cooperation between the two organizations, which came into force on 1 January 1996. As explicitly set out in
the Preamble to the TRIPS Agreement, the WTO aims to establish a mutually supportive relationship with
WIPO. The Agreement provides for cooperation in three main areas, namely (1) notification of, access to and
translation of national laws and regulations; (2) implementation of procedures for the protection of national
emblems; and (3) technical cooperation.
As regards notification of, access to and translation of national laws and regulations, the WTO Secretariat
transmits to the WIPO Secretariat copies of the laws and regulations it has received from Members under
Article 63.2 of the TRIPS Agreement. The International Bureau of WIPO places such copies in its paper
collection. WIPO makes laws and regulations contained in its collection available to the public in various ways,
including in its Collection of Laws for Electronic Access (CLEA), available at:
http://www.wipo.int/clea/en/index.jsp.
Note 2.8 provides further information on the notification requirements related to the Paris and Berne
Conventions.
As regards the implementation of procedures for the protection of national emblems under Article 6ter of the
Paris Convention for the purposes of the TRIPS Agreement, the cooperation agreement provides that the
procedures relating to communication of emblems and transmittal of objections under the TRIPS Agreement
shall be administered by the WIPO Secretariat in accordance with the procedures it applies under Article 6ter of
the Paris Convention. See Note 2.9 for more details.
As regards technical cooperation, the agreement provides that the WIPO and WTO Secretariats are to enhance
cooperation in their legal-technical assistance and technical cooperation activities relating to the
TRIPS Agreement for developing countries, so as to maximize the usefulness of those activities and ensure
their mutually supportive nature. The assistance they make available to the members of their own organization
will be made available also to the members of the other organization.
An example of this cooperation is the WIPO WTO Joint Initiative on Technical Cooperation for Least-Developed
Countries that was launched in 2001. It is aimed at helping LDC Members of the WTO comply with their
obligations under the TRIPS Agreement and make best use of the intellectual property system for their
economic, social and cultural development. It is open to other LDCs as well.
The TRIPS Council Decision on the extension of LDCs' transition period discussed above calls upon the WTO to
seek to enhance its cooperation with WIPO and other relevant international organizations.
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EXERCISES:
10. Is the functioning of the TRIPS Council regulated exhaustively in Article 68 and other relevant provisions
of the TRIPS Agreement?
11. What material forms the basis of the TRIPS Council's reviews of national implementing legislations?
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VI. SUMMARY
INTRODUCTION TO THE TRIPS AGREEMENT
The TRIPS Agreement is an integral Part of the WTO Agreements, and it is binding on each Member of the
WTO.
The Agreement contains certain general provisions and basic principles, such as national and most-favoured-
nation treatment, and exhaustion of rights.
The areas of intellectual property that the TRIPS Agreement covers are: copyright and related rights (i.e. the
rights of performers, producers of sound recordings and broadcasting organizations); trademarks including
service marks; geographical indications; industrial designs; patents, including the protection of new varieties
of plants; the layout-designs of integrated circuits; and undisclosed information, including trade secrets and
test data.
In respect of each of these areas of intellectual property, the Agreement sets out the minimum standards of
protection to be provided by each Member. Each of the main elements of protection is 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. The standards build on those in the main pre-existing WIPO
Conventions, substantive provisions of which are incorporated into the Agreement by reference.
The second main set of provisions in the Agreement lays down requirements for national procedures and
remedies for the enforcement of these intellectual property rights (IPRs): general principles applicable to all
IPR enforcement procedures; civil and administrative procedures and remedies; provisional measures;
special border enforcement measures; and criminal procedures. These procedures and remedies must
enable right holders to enforce their rights effectively and also provide for safeguards against the abuse of
such procedures and remedies as barriers to legitimate trade.
The Agreement contains some general rules to ensure that procedural difficulties in acquiring or maintaining
IPRs do not nullify the substantive benefits that should flow from the Agreement.
The Agreement makes disputes between Members about the respect of TRIPS obligations subject to the
WTO's integrated dispute settlement procedures.
The TRIPS Agreement gives Members transitional periods, which differ according to their stages of
development, to bring themselves into compliance with its rules. Least-developed country Members continue
to benefit from extended transitional periods. It also contains provisions on transfer of technology and
technical cooperation.
The Agreement is administered by the Council for TRIPS, open to all Members, which reports to the WTO
General Council.
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IMPORTANT NOTES
NOTE 2.1
Unless otherwise indicated, in this training package "Paris Convention" refers to the Paris Convention for the
Protection of Industrial Property (the Stockholm Act of 14 July 1967); "Berne Convention" refers to the Berne
Convention for the Protection of Literary and Artistic Works (the Paris Act of 24 July 1971); "Rome Convention"
refers to the International Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organizations, adopted at Rome on 26 October 1961; and the IPIC Treaty to the Treaty on
Intellectual Property in Respect of Integrated Circuits, adopted at Washington on 26 May 1989. You can access
these and other WIPO-administered treaties on the WIPO website at http://www.wipo.int/treaties/en/.
NOTE 2.2
The Preamble and Articles 7 and 8 express the general goals, objectives and principles of the Agreement. As
recognized by WTO dispute settlement panels, they are to be borne in mind when the substantive rules of the
Agreement are being examined. It might also be noted that paragraph 5(a) of the Doha Declaration on the
TRIPS Agreement and Public Health provides that "[i]n applying the customary rules of interpretation of public
international law, each provision of the TRIPS Agreement shall be read in the light of the object and purpose of
the Agreement as expressed, in particular, in its objectives and principles".
NOTE 2.3
Industrial property (similar for layout-designs of integrated circuits)
Pursuant to Articles 2 and 3 of the Paris Convention, protection is granted in the case of industrial property to
natural or legal persons who are either:
nationals of a Member;
are domiciled in a Member; or
have real and effective industrial or commercial establishments in a Member.
Pursuant to Article 5 of the IPIC, similar criteria for determining eligible beneficiaries are applied in relation to
layout-designs or integrated circuits.
Copyright
Pursuant to Articles 3 and 4 of the Berne Convention, protection is granted to authors of literary or artistic
works who:
are nationals of a Member;
have their habitual residence in a Member;
whose works are first (or simultaneously) published in a Member;
are authors of cinematographic works the maker of which has his headquarters or habitual residence in
a Member; or
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are authors of works of architecture erected in a Member or of other artistic works incorporated in a building or
other structure located in a Member.
Performers
Pursuant to Article 4 of the Rome Convention, protection is granted to performers whose:
performance takes place in another Member;
performance is incorporated in a phonogram as defined below; or
performance is covered by a broadcast as defined below.
Producers of phonograms
Pursuant to Article 5 of the Rome Convention, protection is granted to producers of phonograms:
which are nationals of another Member;
if the phonogram was first fixed in another Member; or
if the phonogram was first published in another Member.
Please note: In accordance with the provisions of Article 5(3) of the Rome Convention as incorporated into the
TRIPS Agreement, a Member may declare that it does not apply either the criterion of fixation or that of
publication. The criterion of nationality may not be excluded.
Broadcasting organizations
Pursuant to Article 6 of the Rome Convention, protection is granted to broadcasting organizations:
whose headquarters are situated in another Member; or
when the broadcast was transmitted from a transmitter in another Member.
Please note: In accordance with the provisions of Article 6(2) of the Rome Convention as incorporated into the
TRIPS Agreement, a Member may declare that it will protect broadcasts only if both relevant conditions are
met, i.e. that the headquarters of the broadcasting organization is situated in another Member and the
broadcast was transmitted from a transmitter situated in the same Member.
NOTE 2.4
Article 3.2 of the Agreement places two conditions on the use of national treatment exceptions in the case of
judicial and administrative procedures. The conditions are that such exceptions are necessary to secure
compliance with laws and regulations which are consistent with the TRIPS Agreement and that the application
of such practices would not constitute a disguised restriction on trade.
NOTE 2.5
For the purposes of determining the LDC status of a country, the WTO uses the United Nations list of
least-developed countries.
NOTE 2.6
Additional requirements in respect of pre-existing works and phonograms
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In respect of copyright and the rights of producers of phonograms (sound recordings) and performers in
existing phonograms, there is an additional requirement to comply with Article 18 of the Berne Convention, not
only in respect of the rights of authors but also in respect of the rights of performers and producers of
phonograms in phonograms (Articles 9.1, 14.6 and 70.2 of the TRIPS Agreement). Article 18 of the Berne
Convention includes the so-called rule of retroactivity, according to which the Agreement applies to all works
which have not fallen into the public domain either in the country of origin or the country where protection is
claimed through the expiry of a term of protection. The provisions of Article 18 allow some transitional
flexibility where a country is, as a result, taking subject-matter out of the public domain and putting it under
protection, to safeguard the interests of persons who have in good faith already taken steps on the basis of the
material in the public domain (for example, a film producer that has already invested in the making of a film
using a work that is brought under copyright). The application of Article 18 of the Berne Convention to the
rights of producers of phonograms and performers in existing phonograms was addressed in two dispute
settlement complaints on Japan – Measures Concerning Sound Recordings (DS28 and DS42). Both cases were
settled bilaterally without panel reports.
NOTE 2.7
Transfer of technology to LDC Members is also addressed in the 2003 Decision on Implementation of
Paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health and the 2005 Protocol
Amending the TRIPS Agreement. This will be discussed in Module 8 – Chapter III.E.
NOTE 2.8
Parties to the Paris and Berne Conventions are required to notify their relevant laws to the WIPO Secretariat.
The Assemblies of the Paris and Berne Unions have decided that the requirements under these conventions to
communicate national laws to the WIPO Secretariat can be fulfilled by communication of such laws through the
WTO Secretariat. WIPO also makes available to developing countries assistance for translation of their laws and
regulations.
NOTE 2.9
Article 6ter of the Paris Convention, as incorporated into the TRIPS Agreement, provides for the communication
of emblems and of objections thereto among Members. The TRIPS Council has decided to recognize that their
communication through the WIPO Secretariat would be considered as communications for the purposes of the
TRIPS Agreement.
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PROPOSED ANSWERS:
1. Yes, under Article 1.2 of the TRIPS Agreement Members may, but are not obliged to, implement in their
law more extensive protection than required by the Agreement, provided that such protection does not
contravene its provisions. They still need to respect the national and MFN treatment obligations.
2. The national treatment clause forbids discrimination between a Member's own nationals and the nationals
of other Members. The MFN treatment clause forbids discrimination between the nationals of other
Members.
3. No, the TRIPS Agreement builds on the main pre-existing WIPO conventions, in particular the Berne and
Paris Conventions. It incorporates by reference their substantive provisions, and makes certain additions
and clarifications.
4. No. These two principles apply to all aspects of intellectual property protection. They cover not only the
substantive standards of protection, but also matters affecting the availability, acquisition, scope,
maintenance and enforcement of intellectual property rights as well as those matters affecting the use of
intellectual property rights specifically addressed in the Agreement.
5. No. Nationals include natural or legal persons who have certain links to a Member without necessarily
being citizens.
6. No. Members are free to decide their national policy on the issue of exhaustion of IPRs and thus on
parallel importation.
7. Article 62 of the TRIPS Agreement allows Members to require the compliance with procedures and
formalities as a condition of acquisition of industrial property rights, such as a trademark or a patent,
provided that such requirements are reasonable. However, this does not apply to copyright and related
rights and to undisclosed information. As will be explained in Module 3, Article 5(2) of the Berne
Convention as incorporated into the TRIPS Agreement provides that copyright protection may not be
subject to any formality.
8. The TRIPS Council has extended LDC Members' transition period until 1 July 2013. For certain obligations
with respect to pharmaceutical products, they may delay the application of the TRIPS Agreement until
1 January 2016.
9. Under Article 66.2, developed country Members have committed themselves to provide incentives to
enterprises and institutions in their territories for the purpose of promoting and encouraging technology
transfer to least-developed country Members in order to enable them to create a sound and viable
technological base.
10. No. You have to read Article 68 and other relevant provisions of the TRIPS Agreement together with the
provisions of the WTO Agreement concerning the structure and operation of the WTO.
11. The laws and regulations notified pursuant to Article 63.2 of the TRIPS Agreement, including the
responses to the Checklist of Issues on Enforcement.
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