TRADE RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS

WHAT IS AN IPR?

TYPES OF IPRs:

• COPYRIGHTS

• INDUSTRIAL PROPERTY RIGHTS

CHARACTERSTICS OF IPRs:

• Intellectual property is economically valuable information

• Intellectual property right is the legally enforceable power to exclude others from using the information created, or to set the terms on which it can be used

• Trips prescribes uniform minimum standards and periods for which protection should be granted to different intellectual property rights

• Most favoured nation and national treatment

GENERAL PRINCIPLES

• Paris convention on industrial patents; Berne convention on copyrights; Rome convention and treaty on intellectual property in respect of integrated circuit.

• Non-discrimination against foreigners and non-discrimination between foreign nationals.

• The concept of exhaustion of rights.

• The concept of jurisdiction across.

• Dispute settlement does not come into play so long as MFN and national treatment.

ENFORCEMENT OF IPRs

• TRIPS is the first WTO agreement to lay-down domestic enforcement provisions.

• Prescribes the institutional mechanism, procedures and remedies that members should adopt :

• To enable IPR holders to obtain redress under civil law;

• To prevent release by customs authorities of counterfeit, pirated and other goods that infringe IPRS

• To prosecute counterfeiters and pirates under criminal laws

DISPUTE SETTLEMENT

• Article XXII (consultations) and article XXIII (nullification or impairment of benefits) of GATT apply to TRIPS also.

• However Up To 1/1/2000, article XXIII applies only where there is failure of a member to carry out its obligations. non-violation clauses, thus, do not apply.

• Provision to be reviewed by 1/1/2000.

TRANSITION PERIODS

• Developed Countries – 1/1/1996.

• Developing Countries – 1/1/2000. in case patent protection not available to an area of technology, up to 1/1/2005 subject to mailbox and EMRS.

• Transition Economies – as above, if they are facing problems in reforming their IPR laws.

• LDCS – 1/1/2005. Developed Countries shall provide incentives for transfer of technology to LDCS.

• No transition period for MFN and National Treatment.

THE SEVEN IPRs IN THE TRIPS UNIVERSE

PATENTS

WHAT CAN BE PATENTABLE

• New, non-obvious, involves an inventive step, capable of industrial application

• Exception to patents: if it harms public order or public morality; harms humans, animals plant life; harmful to environment

NON PATENTABLE

• Diagnostic, therapeutic and surgical methods

• Plants, animals and essentially biological processes except micro-organisms, and non biological production of plants and animals

WHY PATENTS?

• Protects technological innovations by granting monopoly rights

• Encourages disclosure of information

• Encourages further development and exploitation of invention

WHEN CAN A PATENT BE USED WITHOUT AUTHORISATION

• National emergency or some other extreme urgency for public non-commercial use.

• In cases where user has failed despite efforts to get authorization from owner on reasonable commercial terms and conditions.

• Dependent patents.

• Failure to work or inability to meet demand through manufacturing can let the state grant a compulsory license

PATENTS ACT OF INDIA

• Product and process patents

• Mailbox system

• Exclusive marketing rights

• Restrictions to filing indian patents abroad removed

• Reversal of burden of proof from complainant to defendant

• Time period: twenty years

• Comes into force w.e.f. 1.1.2005

IMPLICATIONS FOR DEVELOPING COUNTRIES

• Application for patents :54000 (1997); industrial countries 97%; patents in developing countries 80% to residents of developed countries.

• Profit talks: cosmetic drugs & slow ripening tomato higher on priority than malaria vaccine/better crops.

• Tighter controls with large MNCs - smaller entities suffer.

• Tighter IPR regime leads to higher cost of transfer of technology

• Bio-piracy: silent theft of centuries of traditional knowledge from developing to developed countries.

• Cheaper processes cannot be used to compete with more expensive products - no reverse engineering

• Indian firms to pay royalty to foreign patent holders for 20 years; cannot freely produce as is done now

• Increase in the price of drugs and medicines?

• More investment required for in house R&D

• SMEs to be more R&D units for MNCs - technologically intensive as technology rather than product becomes more important

COPYRIGHTS

• Protection will be for expressions and not for ideas/concept. Computer programmes and such compilation of data will be treated as intellectual creations and protected as literary works.

• Performers have right to prevent (a) fixation of their unfixed performance; (b) reproduction of such fixation; (c) broadcasting.

• Producers of phonograms can control reproduction of their phonograms and commercial rental of phonogram.

TRADE MARKS

• Any sign capable of distinguishing the goods or services of an undertaking from those of others may constitute a trade mark

• Period seven years

• If use is condition for registration, non use for three years will result in cancellation

GEOGRAPHICAL INDICATIONS

• Two objectives: preventing misleading public and unfair competition

• Indicators which identify a product as originating in a particular region and where the quality or reputation is attributable to its particular origin. Examples: Darjeeling tea, Dehradun rice, Scotch whisky/Champagne.

• Members are required to prevent use of designation or presentation of a product which indicates that the product originates in a place different from where it actually originates.

GEOGRAPHICAL INDICATIONS, WINES AND SPIRITS

• For wines and spirits: such geographical indicators will be prevented even if true origin of the product is indicated. "Scotch Whisky" with indicators "Made In India" not permitted.

• Case: Basmati Rice.

INDUSTRIAL DESIGNS

• New or original industrial designs will be protected. "looks", "shape", "ornamentation", "pattern", configuration".

• Designs which are essentially technical or functional are specifically excluded.

• Period of protection ten years

LAY OUT DESIGN OF INTEGRATED CIRCUITS

• Reaffirmation of the treaty on intellectual property in respect of integrated circuits. Lobbied by the US Hardware/Software industry.

• Reproduction of a protected layout; importing selling or otherwise distributing for commercial purposes a layout design or an integrated circuit incorporating a protected layout or an article incorporating such an integrated circuit, not possible without right-holders permission.

• Reproduction for private purposes, evaluation, analysis, research and teaching allowed.

UNDISCLOSED INFORMATION

• Creates a system by which holders of secret information are not forced to part with to government or other bodies.

• Where secret information (best reports of chemicals and pharmaceuticals) is given to government, data to be kept secret.

• "Secret" information: information not generally known; has commercial value; person in control of the information has taken steps to keep it secret.