TRIPS Report2 (1)

8/12/2019 TRIPS Report2 (1)

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AGREEMENT ON TRADE-RELATED

ASPECTS OF INTELLECTUAL

PROPERTY RIGHTS

THE TRIPS AGREEMENT



What are intellectual property rights?



• Intellectual property rights are the rights

given to persons over the creations of

their minds. They usually give the creator

an exclusive right over the use of his/her

creation for a certain period of time.



Intellectual property rights are traditionally

divided into two main categories:

1) Copyright and rights related to copyright

2) Industrial property



COPYRIGHT AND RIGHTS RELATED TO

COPYRIGHT

• Protects the rights of authors of literary

and artistic works



The purpose of protection is

to encourage and reward creative work



INDUSTRIAL PROPERTY

I. Protection of distinctive signs (trademarks

and geographical indications)

The purpose of protection is

1) to stimulate and ensure fair competition and

2) to protect consumers by enabling them tomake informed choices between various

goods and services



II. Industrial Property (inventions protected by

patents, industrial designs and trade secrets)

The purpose of protection is to stimulate

innovation, design and the creation of

technology



Section 1 through 7 of Part II

of the TRIPS



• Right to prevent others from using their

inventions, designs or other creations

•

To use that right to negotiate payment inreturn for others using them



The extent of protection and

enforcement of these rights variedwidely around the world

These differences became a source

of tension in international economic

relations



TRIPS AGREEMENT



The TRIPS Agreement took effect on

1 January 1995

Annex 1C of the Marrakesh

Agreement Establishing the World

Trade Organization.



• Part of the “single undertaking”

resulting from the Uruguay Round

negotiations



• an international agreement administered by

the World Trade Organization (WTO) that sets

down minimum standards for many forms

of intellectual property (IP) regulation asapplied to nationals of other WTO Members.



• The TRIPS agreement does not require all

members’ rules on protection of intellectual

property to be identical.

• But Members may choose to implement laws

which give more extensive protection than is

required in the agreement, so long as the

additional protection does not contravene the

provisions of the agreement.



Goods Services Intellectual

Property

GATT GATS TRIPS



Existing Intellectual Property Laws

in the Philippines



The Philippines has always compliedwith the enactment of special laws

and/or amendments to the existing laws

in accordance with the WTO TRIPS

agreement.



The Philippine Constitution of 1987 embodiesthe concept of intellectual property protectionin Article 14, Section 13 as follows:

“The state shall protect the exclusive right ofscientists, inventors, artists and other giftedcitizens to their intellectual property andcreations, particularly when beneficial to the people for such period as may be provided bylaw.”



The protection of intellectual property rights are alsoembodied in Title II, Article 721 of the Civil Code of thePhilippines when it provides for “intellectual creation”as a mode of acquiring ownership. Thus, under the Civil

Code, the following acquire ownership:1) The author with regard to his literary, dramatic,historical, legal, philosophical, scientific or other work;

2) The composer, as to his musical composition;

3) The painter, sculptor, or other artist, with respect tothe product of his art; and

4) The scientist or technologist or any other person withregard to his discovery or invention.



• The basic law governing intellectual property

in the Philippines is the Intellectual Property

Code (IPC) (Republic Act No. 8293) enacted on

January 1, 1998.

• The enactment of the Intellectual Property

Code in 1998 was considered a step towards

the effective implementation of the WTO-TRIPS Agreement.



Intellectual Property-Related Treaties Acceded

to by the Philippines

a) WTO-TRIPS agreement ratified by the Philippine Senate in 14 December1994.

b) World Intellectual Property Organization Convention (WIPO) (1980).

c) The Berne Convention for the Protection of Literary and Artistic Works

(1951 for administrative provisions and 1997 for substantive provisions).

d) The Rome Convention for the Protection of Performers, Producers ofPhonograms (1984).

e) The Paris Convention for the Protection of Industrial Property as revised

at Lisbon on September 27, 1965 and to the revision done at Stockholm

on administrative matters on July 16, 1980.

f) The WIPO Copyright Treaty (WCT) ratified by the Philippine Senate,which took effect on October 2, 2002; and

g) The WIPO Performance and Phonograms Treaty (WPPT) ratified by the

Philippine Senate and which took effect on October 2, 2002.



• R.A. 9239 Optical Media Act

• R.A. 10088 Anti-Camcording Act

• R.A.8792 E-Commerce Act

• R.A. 3720 Food and Drug Administration

• R.A. 8203 Special Law on Counterfeit Drugs

• R.A. 10175 Cybercrime Act

• Supreme Court Rules on Procedure for Intellectual Property Rights Cases (A.M. No.

10-3-10-SC)

• E.O 736 (Creation of National Committee on Intellectual Property Rights)

• Ordinances

• Rules and Regulations in the Exercise of Enforcement Functions and Visitorial

Power of the Intellectual Property Office, and Creating Thereby an Intellectual

Property Rights (IPR) Enforcement Office

•Implementing Rules and Regulations on Republic Act 10515 or the Anti-CableTelevision and Cable Internet Tapping Act of 2013

• Rules and Regulations in the Exercise of Enforcement Functions and Visitorial

Power of the Intellectual Property Office, and Creating thereby an Intellectual

Property Rights (IPR) Enforcement Office



PART I GENERAL PROVISIONS AND

BASIC PRINCIPLES



Article 1.3

3. Members shall accord the treatment provided for in this

Agreement to the nationals of other Members. In respect ofthe relevant intellectual property right, the nationals of other

Members shall be understood as those natural or legal

persons that would meet the criteria for eligibility for

protection provided for in the Paris Convention (1967), theBerne Convention (1971), the Rome Convention and the

Treaty on Intellectual Property in Respect of Integrated

Circuits, were all Members of the WTO members of those

conventions. Any Member availing itself of the possibilities

provided in paragraph 3 of Article 5 or paragraph 2 of Article 6

of the Rome Convention shall make a notification as foreseen

in those provisions to the Council for Trade-Related Aspects of

Intellectual Property Rights (the “Council for TRIPS”).



National treatment commitment

• Treating foreigners and locals equally

• The exceptions allowed under the pre-existing

intellectual property conventions of WIPO are

allowed under the TRIPS



Most-favoured-nation clause (MFN):

• any advantage a party gives to the nationals of

another country must be extended immediately

and unconditionally to the nationals of all other

parties• Exceptions to the MFN obligation are also

provided for in the TRIPS



Exempted from this obligation are any advantage,

favour, privilege or immunity accorded by a Member:

a) deriving from international agreements on judicial assistance or lawenforcement of a general nature and not particularly confined to the

protection of intellectual property;

b) granted in accordance with the provisions of the Berne Convention

(1971) or the Rome Convention authorizing that the treatment

accorded be a function not of national treatment but of thetreatment accorded in another country;

c) in respect of the rights of performers, producers of phonograms and

broadcasting organizations not provided under this Agreement;

d) deriving from international agreements related to the protection ofintellectual 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.



Additional important principle:

• intellectual property protection should contribute

to technical innovation and the transfer of

technology



PART II STANDARDS CONCERNING

THE AVAILABILITY, SCOPE AND USE

OF INTELLECTUAL PROPERTY RIGHTS



Types of intellectual property covered by

the TRIPS Agreement

• Copyright and related rights

• Trademarks, including service marks

• Geographical indications

• Industrial designs

• Patents

• Layout-designs (topographies) of integrated

circuits

• Undisclosed information, including trade secrets



Have to be registered in order to receive protection.

The registration includes a description of what is being

protected and this description is public information.

• Trademarks, including service marks

• Geographical indications

• Industrial designs

• Patents

• Layout-designs (topographies) of integrated

circuits



Protected automatically according to specified conditions.

They do not have to be registered, and therefore there is

no need to disclose

• Copyright and related rights

• Undisclosed information, including trade secrets



Starting point

• the Paris Convention for the Protection

of Industrial Property (patents, industrial

designs, etc)

• the Berne Convention for the Protection

of Literary and Artistic Works (copyright)



The text of the TRIPS Agreement also makes use of the

provisions of some other international agreements on

intellectual property rights:

• Treaty on Intellectual Property in Respect of

Integrated Circuits (IPIC Treaty)

• International Convention for the Protection

of Performers, Producers of Phonograms and

Broadcasting Organizations (Rome

Convention)



• All the main substantive provisions of theseconventions are incorporated by reference in theTRIPS, except the provisions of the BerneConvention on moral rights, and since they

become incorporated in the TRIPS, they becomeobligations under the TRIPS Agreement betweenTRIPS Member countries.

• The TRIPS Agreement adds a substantial number

of additional obligations on matters where thepre-existing conventions are silent or were seenas being inadequate.



• Article 2 of the TRIPS Agreement specifies that

nothing in Parts I to IV of the agreement shall

derogate from existing obligations that

members may have to each other under theParis Convention, the Berne Convention, the

Rome Convention and the Treaty on

Intellectual Property in respect of integratedcircuits.



The World Intellectual Property

Organization (WIPO)

• established by a convention of 14 July 1967, whichentered into force in 1970

• a specialized agency of the United Nations since 1974

• administers a number of international unions ortreaties in the area of intellectual property, such as theParis and Berne Conventions.

• WIPO’s objectives are to promote intellectual propertyprotection throughout the world through cooperationamong states and, where appropriate, in collaborationwith any other international organization.



• An agreement on cooperation between WIPO

and the WTO came into force on 1 January

1996. The agreement provides cooperation in

three main areas: – notification of, access to and translation of

national laws and regulations

–implementation of procedures for the protectionof national emblems

– technical cooperation.





Copyright

• During the Uruguay Round negotiations, it was

recognized that the Berne Convention for the

Protection of Literary and Artistic Works already, for

the most part, provided adequate basic standards of

copyright protection.

• However, members do not have rights or obligations

under the TRIPS Agreement in respect of the rights

conferred under Article 6bis of that Convention, i.e. themoral rights (the right to claim authorship and to

object to any derogatory action in relation to a work,

which would be prejudicial to the author's honour or

reputation), or of the rights derived therefrom.



• The TRIPS agreement ensures that computer programs

will be protected as literary works under the Berne

Convention and outlines how databases should be

protected.

• It also expands international copyright rules to cover

rental rights. Authors of computer programs and

producers of sound recordings must have the right to

prohibit the commercial rental of their works to thepublic. A similar exclusive right applies to films where

commercial rental has led to widespread copying,

affecting copyright-owners’ potential earnings from

their films.

Copyright



• The agreement says performers must also have the

right to prevent unauthorized recording, reproduction

and broadcast of live performances (bootlegging) for

no less than 50 years.

• Producers of sound recordings must have the right to

prevent the unauthorized reproduction of recordings

for a period of 50 years.

Copyright



Trademarks

• The agreement defines what types of signs must be eligible

for protection as trademarks, and what the minimum rights

conferred on their owners must be. It says that service marks

must be protected in the same way as trademarks used for

goods.• Where signs are not inherently capable of distinguishing the

relevant goods or services, Member countries are allowed to

require, as an additional condition for eligibility for

registration as a trademark, that distinctiveness has beenacquired through use. Members are free to determine

whether to allow the registration of signs that are not visually

perceptible (e.g. sound or smell marks).



• Members may make registrability depend on use.

However, actual use of a trademark shall not be

permitted as a condition for filing an application for

registration, and at least three years must have passed

after that filing date before failure to realize an intent

to use is allowed as the ground for refusing the

application (Article 14.3).

Trademarks



• The TRIPS Agreement contains certain provisions on

well-known marks, which supplement the protection

required by Article 6bis of the Paris Convention, as

incorporated by reference into the TRIPS Agreement,

which obliges Members to refuse or to cancel the

registration, and to prohibit the use of a mark

conflicting with a mark which is well known.

Trademarks



Geographical indications

• Geographical indications says where the product was

made and it identifies the product’s special

characteristics, which are the result of the product’s

origins.

• Well-known examples include “Champagne”, “Scotch”,

“Tequila”, and “Roquefort” cheese.

• Using the place name when the product was made

elsewhere or when it does not have the usualcharacteristics can mislead consumers, and it can lead

to unfair competition. The TRIPS Agreement says

countries have to prevent this misuse of place names.



• For wines and spirits, the agreement provides higher

levels of protection, i.e. even where there is no danger

of the public being misled.

•

Some exceptions are allowed, for example if the nameis already protected as a trademark or if it has become

a generic term. For example, “cheddar” now refers to a

particular type of cheese not necessarily made in

Cheddar, in the UK. But any country wanting to makean exception for these reasons must be willing to

negotiate with the country which wants to protect the

geographical indication in question.




• The agreement provides for further negotiations in the

WTO to establish a multilateral system of notification

and registration of geographical indications for wines.

These are now part of the Doha Development Agenda

and they include spirits.

• Also debated in the WTO is whether to negotiate

extending this higher level of protection beyond wines

and spirits.




Industrial designs

• Under the TRIPS Agreement, industrial designs must be

protected for at least 10 years.

• Owners of protected designs must be able to prevent

the manufacture, sale or importation of articlesbearing or embodying a design which is a copy of the

protected design.



Patents

• The agreement says patent protection must beavailable for inventions for at least 20 years.

• Patent protection must be available for both productsand processes, in almost all fields of technology.

• Governments can refuse to issue a patent for aninvention if its commercial exploitation is prohibitedfor reasons of public order or morality. They can alsoexclude diagnostic, therapeutic and surgical methods,

plants and animals (other than microorganisms), andbiological processes for the production of plants oranimals (other than microbiological processes).



• Governments can issue “compulsory licences”, allowing

a competitor to produce the product or use the

process under licence. But this can only be done under

certain conditions aimed at safeguarding the legitimate

interests of the patent-holder.

• If a patent is issued for a production process, then the

rights must extend to the product directly obtained

from the process.

Patents



• An issue that has arisen recently is how to ensurepatent protection for pharmaceutical products doesnot prevent people in poor countries from havingaccess to medicines — while at the same time

maintaining the patent system’s role in providingincentives for research and development into newmedicines.

• Flexibilities such as compulsory licensing are written

into the TRIPS Agreement, but some governmentswere unsure of how these would be interpreted, andhow far their right to use them would be respected.

Patents



• Compulsory licensing is when a government

allows someone else to produce the patented

product or process without the consent of the

patent owner.

Patents



• Article 31(f) of the TRIPS Agreement says

products made under compulsory licensing must

be “predominantly for the supply of the domesticmarket”.

• This applies to countries that can manufacture

drugs — it limits the amount they can exportwhen the drug is made under compulsory license.

• And it has an impact on countries unable to make

medicines. They would find it difficult to find

countries that can supply them with drugs made

under compulsory licensing.



• The 2001 Doha Ministerial Conference

decided that this should be changed so that

countries unable to manufacture the

pharmaceuticals could obtain cheaper copieselsewhere if necessary.



The 2003 decision sometimes called the

“Paragraph 6” decision

(because it refers to that paragraph of the Doha declaration)

• The legal means of making the change was

agreed on 30 August 2003 when the General

Council decided to waive the provision (Article

31(f) of the TRIPS Agreement), allowing

generic copies made under compulsory

licenses to be exported to countries that lackproduction capacity



• That waiver made it easier for poorer

countries to obtain cheaper generic versions

of patented medicines by setting aside a

provision of the TRIPS Agreement that couldhinder exports of pharmaceuticals

manufactured under compulsory licenses to

countries that are unable to produce them.



• WTO members on 6 December 2005 approved changes

to the WTO’s intellectual property (TRIPS) agreement

making permanent a decision on patents and public

health originally adopted in 2003.

• This will now be formally built into the TRIPS

Agreement when two thirds of the WTO’s membershave accepted the change.

• They originally set themselves until 1 December 2007

to do this. The latest General Council decision of

26 November 2013 (document WT/L/899) extendedthe deadline to 31 December 2015.



• Once two thirds of members have formally accepted it,

the amendment will take effect in those members and

will replace the 2003 waiver for them. For each of the

remaining members: the waiver will continue to apply

until that member accepts the amendment and it takes

effect.



• Article 35 of the TRIPS Agreement requires Membercountries to protect the layout-designs of integratedcircuits in accordance with the provisions of the IPICTreaty (the Treaty on Intellectual Property in Respect of

Integrated Circuits), negotiated under the auspices ofWIPO in 1989.

• These provisions deal with, inter alia, the definitions of“integrated circuit” and “layout-design (topography)”,

requirements for protection, exclusive rights, andlimitations, as well as exploitation, registration anddisclosure.

Integrated circuits layout designs




• An “integrated circuit” means a product, in its finalform or an intermediate form, in which the elements,at least one of which is an active element, and some orall of the interconnections are integrally formed inand/or on a piece of material and which is intended toperform an electronic function.

• A “layout-design (topography)” is defined as the three-dimensional disposition, however expressed, of theelements, at least one of which is an active element,

and of some or all of the interconnections of anintegrated circuit, or such a three-dimensionaldisposition prepared for an integrated circuit intendedfor manufacture.



• The exclusive rights include the right of reproduction

and the right of importation, sale and other

distribution for commercial purposes. Certain

limitations to these rights are provided for.

• The TRIPS agreement adds that protection must be

available for at least 10 years.




Undisclosed information

• According to Article 39.2, the protection must apply to

information that is secret, that has commercial value

because it is secret and that has been subject to

reasonable steps to keep it secret.



• The Agreement does not require undisclosedinformation to be treated as a form of property, but itdoes require that a person lawfully in control of suchinformation must have the possibility of preventing itfrom being disclosed to, acquired by, or used by otherswithout his or her consent in a manner contrary tohonest commercial practices.

• “Manner contrary to honest commercial practices”includes breach of contract, breach of confidence and

inducement to breach, as well as the acquisition ofundisclosed information by third parties who knew, orwere grossly negligent in failing to know, that suchpractices were involved in the acquisition.




• The Agreement also contains provisions on undisclosedtest data and other data whose submission is requiredby governments as a condition of approving themarketing of pharmaceutical or agricultural chemical

products which use new chemical entities.• In such a situation the Member government concerned

must protect the data against unfair commercial use.

• In addition, Members must protect such data against

disclosure, except where necessary to protect thepublic, or unless steps are taken to ensure that the dataare protected against unfair commercial use.


Documents

TRIPS Report2 (1)