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XXI. Article 20
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A. Text of
Article 20
Article 20:
Other Requirements
The use of a
trademark in the course of trade shall not be unjustifiably encumbered
by special requirements, such as use with another trademark, use in a
special form or use in a manner detrimental to its capability to
distinguish the goods or services of one undertaking from those of other
undertakings. This will not preclude a requirement prescribing the use
of the trademark identifying the undertaking producing the goods or
services along with, but without linking it to, the trademark
distinguishing the specific goods or services in question of that
undertaking.
B. Interpretation
and Application of Article 20
82.
The dispute in Indonesia — Autos occurred before the end of the
transitional period for developing country Members to implement certain
provisions of the TRIPS Agreement. However, the complaint raised
Article 20 only in conjunction with two other articles to which the
transitional period did not apply. With respect to the claim concerning
national treatment under Article 3, the Panel did not consider the
provisions of the relevant Indonesian law as “requirements” within
the meaning of Article 20:
“In taking up the first of these questions,
[i.e. is the use of a trademark to which the Indonesian law and
practices at issue relates ‘specifically addressed’ by Article
20]
the issue to be considered initially is whether the Indonesian law and
practices in question constitute a special requirement that might
encumber the use of the trademarks of nationals of other WTO Members in
terms of Article 20 of the TRIPS Agreement. The United States has put
forward two basic arguments on this question, which are similar to the
arguments it has put forward also in regard to the maintenance of
trademarks …. The first argument is that a foreign company that enters
into an arrangement with a Pioneer company would be encumbered in using
the trademark that it used elsewhere for the model that was adopted by
the National Car Programme. We do not accept that this argument
establishes an inconsistency with the provisions of Article
20, for the
reason … that, if a foreign company enters into an arrangement with a
Pioneer company it does so voluntarily and in the knowledge of any
consequent implications for its ability to use any pre-existing
trademark. In these circumstances, we do not consider the provisions of
the National Car Programme as they relate to trademarks can be construed
as ‘requirements’, in the sense of Article 20.
The second United States argument is that
non-Indonesian car companies are encumbered in using their trademarks in
Indonesia by being put at a competitive disadvantage because the cars
produced under the National Car Programme bearing the Indonesian
trademark benefit from tariff, subsidy and other benefits flowing from
that programme. In regard to this argument, we also feel that the points
developed in our earlier discussion of the United States claims
regarding the maintenance of trademarks are relevant, in particular in
paragraph 14.273 above. Moreover, the United States has not explained to
our satisfaction how the ineligibility for benefits accruing under the
National Car Programme could constitute ‘requirements’ imposed on
foreign trademark holders, in the sense of Article 20 of the TRIPS
Agreement.”(74)
83. The Panel made the
same finding with respect to the claim concerning the commitment under
Article 65.5:
“The arguments put forward by the United States
in support of its claim are essentially the same as those that have been
considered in paragraphs 14.277 and 14.278 above. For the reasons set
out in those paragraphs above, we find that the United States has not
demonstrated that measures have been taken that reduce the degree of
consistency with the provisions of Article 20 and which would therefore
be in violation of Indonesia’s obligations under Article 65.5 of the
TRIPS Agreement.”(75)
XXII. Article 21
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A. Text of Article 21
Article 21: Licensing and Assignment
Members may
determine conditions on the licensing and assignment of trademarks, it
being understood that the compulsory licensing of trademarks shall not
be permitted and that the owner of a registered trademark shall have the
right to assign the trademark with or without the transfer of the
business to which the trademark belongs.
B. Interpretation and Application of
Article 21
No jurisprudence or decision of a competent WTO
body.
Section 3: Geographical Indications
XXIII. Article 22
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A. Text of
Article 22
Article 22: Protection of Geographical
Indications
1.
Geographical indications are, for the purposes of this Agreement,
indications which identify a good as originating in the territory of a
Member, or a region or locality in that territory, where a given
quality, reputation or other characteristic of the good is essentially
attributable to its geographical origin.
2. In respect
of geographical indications, Members shall provide the legal means for
interested parties to prevent:
(a) the use of any means
in the designation or presentation of a good that indicates or suggests
that the good in question originates in a geographical area other than
the true place of origin in a manner which misleads the public as to the
geographical origin of the good;
(b) any use which
constitutes an act of unfair competition within the meaning of Article
10bis of the Paris Convention (1967).
3. A Member
shall, ex officio if its legislation so permits or at the request
of an interested party, refuse or invalidate the registration of a
trademark which contains or consists of a geographical indication with
respect to goods not originating in the territory indicated, if use of
the indication in the trademark for such goods in that Member is of such
a nature as to mislead the public as to the true place of origin.
4. The
protection under paragraphs 1, 2 and
3 shall be applicable against a
geographical indication which, although literally true as to the
territory, region or locality in which the goods originate, falsely
represents to the public that the goods originate in another territory.
B. Interpretation and Application of
Article 22
84. With respect to
the review under Article 24.2 of the application of the provisions of
the Section of the TRIPS Agreement on geographical indications,
see paragraph 87 below.
XXIV. Article 23
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A. Text of Article 23
Article 23: Additional Protection for
Geographical Indications for Wines and Spirits
1. Each Member
shall provide the legal means for interested parties to prevent use of a
geographical indication identifying wines for wines not originating in
the place indicated by the geographical indication in question or
identifying spirits for spirits not originating in the place indicated
by the geographical indication in question, even where the true origin
of the goods is indicated or the geographical indication is used in
translation or accompanied by expressions such as “kind”, “type”,
“style”, “imitation” or the like.(4)
(footnote original) 4 Notwithstanding the
first sentence of Article 42, Members may, with respect to these
obligations, instead provide for enforcement by administrative action.
2. The
registration of a trademark for wines which contains or consists of a
geographical indication identifying wines or for spirits which contains
or consists of a geographical indication identifying spirits shall be
refused or invalidated, ex officio if a Member’s legislation so
permits or at the request of an interested party, with respect to such
wines or spirits not having this origin.
3. In the case
of homonymous geographical indications for wines, protection shall be
accorded to each indication, subject to the provisions of paragraph 4 of
Article 22. Each Member shall determine the practical conditions under
which the homonymous indications in question will be differentiated from
each other, taking into account the need to ensure equitable treatment
of the producers concerned and that consumers are not misled.
4. In order to
facilitate the protection of geographical indications for wines,
negotiations shall be undertaken in the Council for TRIPS concerning the
establishment of a multilateral system of notification and registration
of geographical indications for wines eligible for protection in those
Members participating in the system.
B. Interpretation and Application of
Article 23
1. General
85. With respect to
the review under Article 24.2 of the application of the provisions of
the Section of the TRIPS Agreement on geographical indications,
see paragraph 87 below.
2. Article 23.4
86. At its meeting of
27 February 1997, the Council for TRIPS agreed to initiate preliminary
work on issues relevant to the negotiations specified in Article 23.4 of
the TRIPS Agreement through an information-gathering activity.(76)
In this connection, at its meeting of 19 September 1997, the Council
requested the Secretariat to prepare a factual background note on
existing international notification and registration systems for
geographical indications relating to wines and spirits, according to an
agreed outline.(77) At its meeting of
17 February 1999, the Council agreed
to request the Secretariat to look to see what additional information it
could provide on national and international systems for the
protection of geographical indications relating to products other than
wines and spirits, taking into account certain matters.(78)
XXV. Article 24
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A. Text of Article 24
Article 24: International Negotiations;
Exceptions
1. Members
agree to enter into negotiations aimed at increasing the protection of
individual geographical indications under Article
23. The provisions of
paragraphs 4 through 8 below shall not be used by a Member to refuse to
conduct negotiations or to conclude bilateral or multilateral
agreements. In the context of such negotiations, Members shall be
willing to consider the continued applicability of these provisions to
individual geographical indications whose use was the subject of such
negotiations.
2. The Council
for TRIPS shall keep under review the application of the provisions of
this Section; the first such review shall take place within two years of
the entry into force of the WTO Agreement. Any matter affecting the
compliance with the obligations under these provisions may be drawn to
the attention of the Council, which, at the request of a Member, shall
consult with any Member or Members in respect of such matter in respect
of which it has not been possible to find a satisfactory solution
through bilateral or plurilateral consultations between the Members
concerned. The Council shall take such action as may be agreed to
facilitate the operation and further the objectives of this Section.
3. In
implementing this Section, a Member shall not diminish the protection of
geographical indications that existed in that Member immediately prior
to the date of entry into force of the WTO Agreement.
4. Nothing in
this Section shall require a Member to prevent continued and similar use
of a particular geographical indication of another Member identifying
wines or spirits in connection with goods or services by any of its
nationals or domiciliaries who have used that geographical indication in
a continuous manner with regard to the same or related goods or services
in the territory of that Member either (a) for at least 10 years
preceding 15 April 1994 or (b) in good faith preceding that date.
5. Where a
trademark has been applied for or registered in good faith, or where
rights to a trademark have been acquired through use in good faith
either:
(a) before the date of
application of these provisions in that Member as defined in Part
VI; or
(b) before the
geographical indication is protected in its country of origin;
measures adopted to implement this Section shall
not prejudice eligibility for or the validity of the registration of a
trademark, or the right to use a trademark, on the basis that such a
trademark is identical with, or similar to, a geographical indication.
6. Nothing in
this Section shall require a Member to apply its provisions in respect
of a geographical indication of any other Member with respect to goods
or services for which the relevant indication is identical with the term
customary in common language as the common name for such goods or
services in the territory of that Member. Nothing in this Section shall
require a Member to apply its provisions in respect of a geographical
indication of any other Member with respect to products of the vine for
which the relevant indication is identical with the customary name of a
grape variety existing in the territory of that Member as of the date of
entry into force of the WTO Agreement.
7. A Member
may provide that any request made under this Section in connection with
the use or registration of a trademark must be presented within five
years after the adverse use of the protected indication has become
generally known in that Member or after the date of registration of the
trademark in that Member provided that the trademark has been published
by that date, if such date is earlier than the date on which the adverse
use became generally known in that Member, provided that the
geographical indication is not used or registered in bad faith.
8. The
provisions of this Section shall in no way prejudice the right of any
person to use, in the course of trade, that person’s name or the name
of that person’s predecessor in business, except where such name is
used in such a manner as to mislead the public.
9. There shall
be no obligation under this Agreement to protect geographical
indications which are not or cease to be protected in their country of
origin, or which have fallen into disuse in that country.
B. Interpretation and Application of
Article 24
1. Article 24.2
87. At its meeting of
12 May 1998, the Council for TRIPS, in its review under Article 24.2 of
the application of the provisions of the section of the TRIPS
Agreement on geographical indications, took note of a Checklist of
Questions(79) and invited those Members already under an obligation to
apply the provisions of the section on geographical indications to
provide responses, it being understood that other Members could also
furnish replies on a voluntary basis. Further, at its meeting of 16 July
1998, the Council for TRIPS took note of some additional questions and
agreed that those questions be included in the Checklist.(80) At its
meeting of 7-8 July 1999, the Council for TRIPS requested the
Secretariat to prepare a paper summarizing the responses to the
Checklist of Questions on the basis of an outline, on the understanding
that it would be made explicit that the paper would be without prejudice
to the rights and obligations of Members and that its purpose was merely
to facilitate an understanding of the more detailed information that had
been provided in national responses to the Checklist.(81)
Section 4: Industrial Designs
XXVI. Article 25
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A. Text of Article 25
Article 25: Requirements for Protection
1. Members
shall provide for the protection of independently created industrial
designs that are new or original. Members may provide that designs are
not new or original if they do not significantly differ from known
designs or combinations of known design features. Members may provide
that such protection shall not extend to designs dictated essentially by
technical or functional considerations.
2. Each Member
shall ensure that requirements for securing protection for textile
designs, in particular in regard to any cost, examination or
publication, do not unreasonably impair the opportunity to seek and
obtain such protection. Members shall be free to meet this obligation
through industrial design law or through copyright law.
B. Interpretation and Application of
Article 25
No jurisprudence or decision of a competent WTO
body.
XXVII. Article 26
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A. Text of Article 26
Article 26: Protection
1. The owner
of a protected industrial design shall have the right to prevent third
parties not having the owner’s consent from making, selling or
importing articles bearing or embodying a design which is a copy, or
substantially a copy, of the protected design, when such acts are
undertaken for commercial purposes.
2. Members may
provide limited exceptions to the protection of industrial designs,
provided that such exceptions do not unreasonably conflict with the
normal exploitation of protected industrial designs and do not
unreasonably prejudice the legitimate interests of the owner of the
protected design, taking account of the legitimate interests of third
parties.
3. The
duration of protection available shall amount to at least 10 years.
B. Interpretation and Application of
Article 26
1. Article 26.2
88. With respect to
the relationship of Article 26.2 to Article 9(2) of the Berne Convention
(1971) and Articles 13, 17, and
30 of the TRIPS Agreement, see footnote
104.
Section 5: Patents
XXVIII. Article 27
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A. Text of Article 27
Article 27: Patentable Subject Matter
1. Subject to
the provisions of paragraphs 2 and 3, patents shall be available for any
inventions, whether products or processes, in all fields of technology,
provided that they are new, involve an inventive step and are capable of
industrial application.(5) Subject to paragraph 4 of Article
65, paragraph
8 of Article 70 and paragraph 3 of this
Article, patents shall be
available and patent rights enjoyable without discrimination as to the
place of invention, the field of technology and whether products are
imported or locally produced.
(footnote original) 5 For the purposes of this
Article, the terms “inventive step” and “capable of industrial
application” may be deemed by a Member to be synonymous with the terms
“non-obvious” and “useful” respectively.
2. Members may
exclude from patentability inventions, the prevention within their
territory of the commercial exploitation of which is necessary to
protect ordre public or morality, including to protect human, animal or
plant life or health or to avoid serious prejudice to the environment,
provided that such exclusion is not made merely because the exploitation
is prohibited by their law.
3. Members may
also exclude from patentability:
(a) diagnostic,
therapeutic and surgical methods for the treatment of humans or animals;
(b) plants and animals
other than micro-organisms, and essentially biological processes for the
production of plants or animals other than non-biological and
microbiological processes. However, Members shall provide for the
protection of plant varieties either by patents or by an effective sui
generis system or by any combination thereof. The provisions of this
subparagraph shall be reviewed four years after the date of entry into
force of the WTO Agreement.
B. Interpretation and Application of
Article 27
1. Article 27.1
(a) “Without discrimination”
89. In Canada
— Pharmaceutical Patents, in explaining its understanding of the term “without
discrimination” in Article 27, the Panel advised against using the
term “discrimination” whenever “more precise standards are
available”, given the potentially “infinite complexity” of the
term:
“The primary TRIPS provisions that deal with
discrimination, such as the national treatment and most-favoured-nation
provisions of Articles 3 and 4, do not use the term ‘discrimination’.
They speak in more precise terms. The ordinary meaning of the word ‘discriminate’
is potentially broader than these more specific definitions. It
certainly extends beyond the concept of differential treatment. It is a
normative term, pejorative in connotation, referring to results of the
unjustified imposition of differentially disadvantageous treatment.
Discrimination may arise from explicitly different treatment, sometimes
called ‘de jure discrimination’, but it may also arise from
ostensibly identical treatment which, due to differences in
circumstances, produces differentially disadvantageous effects,
sometimes called ‘de facto discrimination’. The standards by which
the justification for differential treatment is measured are a subject
of infinite complexity. ‘Discrimination’ is a term to be avoided
whenever more precise standards are available, and, when employed, it is
a term to be interpreted with caution, and with care to add no more
precision than the concept contains.
…
In considering how to address these conflicting
claims of discrimination, the Panel recalled that various claims of
discrimination, de jure and de facto, have been the subject of legal
rulings under GATT or the WTO. These rulings have addressed the question
whether measures were in conflict with various GATT or WTO provisions
prohibiting variously defined forms of discrimination. As the Appellate
Body has repeatedly made clear, each of these rulings has necessarily
been based on the precise legal text in issue, so that it is not
possible to treat them as applications of a general concept of
discrimination. Given the very broad range of issues that might be
involved in defining the word ‘discrimination’ in Article 27.1 of
the TRIPS Agreement, the Panel decided that it would be better to defer
attempting to define that term at the outset, but instead to determine
which issues were raised by the record before the Panel, and to define
the concept of discrimination to the extent necessary to resolve those
issues.”(82)
90. The Panel also
attributed two different meanings to the term “de facto discrimination”
under Article 27.1 in the following terms:
“[D]e facto discrimination is a general term
describing the legal conclusion that an ostensibly neutral measure
transgresses a non-discrimination norm because its actual effect is to
impose differentially disadvantageous consequences on certain parties,
and because those differential effects are found to be wrong or
unjustifiable. Two main issues figure in the application of that general
concept in most legal systems. One is the question of de facto
discriminatory effect — whether the actual effect of the measure is to
impose differentially disadvantageous consequences on certain parties.
The other, related to the justification for the disadvantageous effects,
is the issue of purpose — not an inquiry into the subjective purposes
of the officials responsible for the measure, but an inquiry into the
objective characteristics of the measure from which one can infer the
existence or non-existence of discriminatory objectives.”(83)
91. With respect to
the anti-discrimination rule in Article 27.1 and
Articles 30 and 31, see
paragraphs 94-95 below.
(b) “the field of technology”
92. In Canada
— Patent Term, addressing a claim of discrimination in terms of the field
of technology, the Panel stated that it had ascertained neither de jure
nor de facto discrimination:
“In sum, the Panel found that the evidence in
record before it did not raise a plausible claim of discrimination under
Article 27.1 of the TRIPS Agreement. It was not proved that the legal
scope of Section 55.2(1) was limited to pharmaceutical products, as
would normally be required to raise a claim of de jure discrimination.
Likewise, it was not proved that the adverse effects of Section 55.2(1)
were limited to the pharmaceutical industry, or that the objective
indications of purpose demonstrated a purpose to impose disadvantages on
pharmaceutical patents in particular, as is often required to raise a
claim of de facto discrimination. Having found that the record did not
raise any of these basic elements of a discrimination claim, the Panel
was able to find that Section 55.2(1) is not inconsistent with Canada’s
obligations under Article 27.1 of the TRIPS
Agreement. Because the
record did not present issues requiring any more precise interpretation
of the term ‘discrimination’ in Article 27.1, none was made.”(84)
2. Article 27.3
93. At its meeting of
1-2 December 1998, the Council for TRIPS agreed to initiate the review
due under Article 27.3(b) of the provisions of that subparagraph through
an information-gathering exercise. In this connection, the Council
invited Members that were already under an obligation to apply Article
27.3(b) to provide information on how the matters addressed in this
provision were presently treated in their national law. Other Members
were invited to provide such information on a best endeavours basis.
While it was left to each Member to provide information as it saw fit,
having regard to the specific provisions of Article
27.3(b), the Council
requested the Secretariat to provide an illustrative list of questions
relevant in this regard, in order to assist Members to prepare their
contributions. The Council also requested the Secretariat to establish
contact with the FAO, the Secretariat of the Convention on Biological
Diversity and UPOV, to request factual information on their activities
of relevance. It was understood that this information-gathering was
without prejudice to the nature of the review provided for in Article
27.3(b).(85) At its meeting of 2-5 April 2001, the Council agreed that
the Secretariat re-issue the illustrative list of questions and invited
Members to provide their responses to it, if they had not yet done so.(86)
At its meeting of 5-7 March 2002, the Council requested the
Secretariat to update the synoptic tables annexed to its note with the
list, based on the further information submitted by Members.(87)
3. Relationship with other Articles
94. In Canada
— Pharmaceutical Patents, rejecting Canada’s argument that Article 27.1
did not apply to exceptions granted under Article
30, the Panel
addressed the relationship between these provisions:
“The text of the TRIPS Agreement offers no
support for such an interpretation. Article 27.1 prohibits
discrimination as to enjoyment of ‘patent rights’ without qualifying
that term. Article 30 exceptions are explicitly described as ‘exceptions
to the exclusive rights conferred by a patent’ and contain no
indication that any exemption from nondiscrimination rules is intended.
A discriminatory exception that takes away enjoyment of a patent right
is discrimination as much as is discrimination in the basic rights
themselves. The acknowledged fact that the Article 31 exception for
compulsory licences and government use is understood to be subject to
the non-discrimination rule of Article 27.1, without the need for any
textual provision so providing, further strengthens the case for
treating the non-discrimination rules as applicable to Article
30.
Articles 30 and 31 are linked together by the opening words of
Article 31 which define the scope of Article 31 in terms of exceptions not
covered by Article 30.(88) Finally, the Panel could not agree with Canada’s
attempt to distinguish between Articles 30 and
31 on the basis of their
mandatory/permissive character; both provisions permit exceptions to
patent rights subject to certain mandatory conditions. Nor could the
Panel understand how such a ‘mandatory/permissive’ distinction, even
if present, would logically support making the kind of distinction
Canada was arguing. In the Panel’s view, what was important was that
in the rights available under national law, that is to say those
resulting from the basic rights and any permissible exceptions to them,
the forms of discrimination referred to in Article 27.1 should not be
present.”(89)
95. Rejecting Canada’s
related arguments, the Panel also provided guidance as to the policy
considerations contained in Article 27:
“Nor was the Panel able to agree with the policy
arguments in support of Canada’s interpretation of Article
27. To
begin with, it is not true that being able to discriminate against
particular patents will make it possible to meet Article 30’s
requirement that the exception be ‘limited’. An Article 30 exception
cannot be made ‘limited’ by limiting it to one field of technology,
because the effects of each exception must be found to be ‘limited’
when measured against each affected patent. Beyond that, it is not true
that Article 27 requires all Article 30 exceptions to be applied to all
products. Article 27 prohibits only discrimination as to the place of
invention, the field of technology, and whether products are imported or
produced locally. Article 27 does not prohibit bona fide exceptions to
deal with problems that may exist only in certain product areas.
Moreover, to the extent the prohibition of discrimination does limit the
ability to target certain products in dealing with certain of the
important national policies referred to in Articles 7 and
8.1, that fact
may well constitute a deliberate limitation rather than a frustration of
purpose. It is quite plausible, as the EC argued, that the TRIPS
Agreement would want to require governments to apply exceptions in a
non-discriminatory manner, in order to ensure that governments do not
succumb to domestic pressures to limit exceptions to areas where right
holders tend to be foreign producers.”(90)
96. In India
— Patents (US), the Appellate Body addressed the relationship between
Article 27 and Article 70.8 and held that the latter provision applies
in a situation where a Member does not make available patents pursuant
to the former provision:
“The introductory clause to Article 70.8
provides that it applies ‘[w]here a Member does not make available as
of the date of entry into force of the WTO Agreement patent protection
for pharmaceutical and agricultural chemical products commensurate with
its obligations under Article 27 …’ of the TRIPS Agreement.
Article
27 requires that patents be made available ‘for any inventions,
whether products or processes, in all fields of technology’, subject
to certain exceptions. However, pursuant to paragraphs
1, 2 and 4 of
Article 65, a developing country Member may delay providing product
patent protection in areas of technology not protectable in its
territory on the general date of application of the TRIPS Agreement for
that Member until 1 January 2005. Article 70.8 relates specifically and
exclusively to situations where a Member does not provide, as of 1
January 1995, patent protection for pharmaceutical and agricultural
chemical products.”(91)
97. With respect to
the relationship of Section 5 of Part II and Article 70.2, see paragraph
165 below.
XXIX. Article 28
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A. Text of Article 28
Article 28: Rights Conferred
1. A patent
shall confer on its owner the following exclusive rights:
(a) where the subject
matter of a patent is a product, to prevent third parties not having the
owner’s consent from the acts of: making, using, offering for sale,
selling, or importing(6) for these purposes that product;
(footnote original) 6 This right, like all other
rights conferred under this Agreement in respect of the use, sale,
importation or other distribution of goods, is subject to the provisions
of Article 6.
(b) where the subject
matter of a patent is a process, to prevent third parties not having the
owner’s consent from the act of using the process, and from the acts
of: using, offering for sale, selling, or importing for these purposes
at least the product obtained directly by that process.
2. Patent
owners shall also have the right to assign, or transfer by succession,
the patent and to conclude licensing contracts.
B. Interpretation and Application of
Article 28
98. In Canada
— Pharmaceutical Patents, the Panel was called on to examine a complaint
that a Canadian measure was in violation of Article 28.1:
“There was no dispute as to the meaning of
Article 28.1 exclusive rights as they pertain to Section 55.2(2) of
Canada’s Patent Act. Canada acknowledged that the provisions of
Section 55.2(2) permitting third parties to ‘make’, ‘construct’
or ‘use’ the patented product during the term of the patent, without
the patent owner’s permission, would be a violation of Article 28.1 if
not excused under Article 30 of the Agreement. The dispute on the claim
of violation of Article 28.1 involved whether Section 55.2(2) of the
Patent Act complies with the conditions of Article
30.”(92)
XXX. Article 29
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A. Text of Article 29
Article 29: Conditions on Patent Applicants
1. Members
shall require that an applicant for a patent shall disclose the
invention in a manner sufficiently clear and complete for the invention
to be carried out by a person skilled in the art and may require the
applicant to indicate the best mode for carrying out the invention known
to the inventor at the filing date or, where priority is claimed, at the
priority date of the application.
2. Members may
require an applicant for a patent to provide information concerning the
applicant’s corresponding foreign applications and grants.
B. Interpretation and Application of
Article 29
No jurisprudence or decision of a competent WTO
body.
XXXI. Article 30
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A. Text of Article 30
Article 30: Exceptions to Rights Conferred
Members may
provide limited exceptions to the exclusive rights conferred by a
patent, provided that such exceptions do not unreasonably conflict with
a normal exploitation of the patent and do not unreasonably prejudice
the legitimate interests of the patent owner, taking account of the
legitimate interests of third parties.
B. Interpretation and Application of
Article 30
1. General
99. In Canada
— Pharmaceutical Patents, the Panel addressed the basic structure of
Article 30, outlined the conditions for its application and then found
that these conditions apply cumulatively:
“Article 30 establishes three criteria that must
be met in order to qualify for an exception: (1) the exception must be
‘limited’; (2) the exception must not ‘unreasonably conflict with
normal exploitation of the patent’; (3) the exception must not ‘unreasonably
prejudice the legitimate interests of the patent owner, taking account
of the legitimate interests of third parties’. The three conditions
are cumulative, each being a separate and independent requirement that
must be satisfied. Failure to comply with any one of the three
conditions results in the Article 30 exception being disallowed.
The three conditions must, of course, be
interpreted in relation to each other. Each of the three must be
presumed to mean something different from the other two, or else there
would be redundancy. Normally, the order of listing can be read to
suggest that an exception that complies with the first condition can
nevertheless violate the second or third, and that one which complies
with the first and second can still violate the third. The syntax of
Article 30 supports the conclusion that an exception may be ‘limited’
and yet fail to satisfy one or both of the other two conditions. The
ordering further suggests that an exception that does not ‘unreasonably
conflict with normal exploitation’ could nonetheless ‘unreasonably
prejudice the legitimate interests of the patent owner’.”(93)
100. For a similar analysis of
Article 13, see paragraph 58 above.
101. The Panel then considered
both the systemic importance of Article 30 within the TRIPS Agreement
and the extent to which other provisions of the Agreement can impart
meaning to Article 30:
“In the Panel’s view, Article 30’s very
existence amounts to a recognition that the definition of patent rights
contained in Article 28 would need certain adjustments. On the other
hand, the three limiting conditions attached to Article 30 testify
strongly that the negotiators of the Agreement did not intend Article 30
to bring about what would be equivalent to a renegotiation of the basic
balance of the Agreement. Obviously, the exact scope of Article 30’s
authority will depend on the specific meaning given to its limiting
conditions. The words of those conditions must be examined with
particular care on this point. Both the goals and the limitations stated
in Articles 7 and 8.1 must obviously be borne in mind when doing so as
well as those of other provisions of the TRIPS Agreement which indicate
its object and purposes.”(94)
2. “limited exceptions”
102. In Canada
— Pharmaceutical
Patents, the Panel addressed the question whether the “stockpiling”
exception was exempted under Article 30, in the light of the requirement
under Article 30 that exceptions to Article 28 be “limited”. The
Panel first agreed with the proposition that the “limited” character
of an exception is to be assessed with respect to their impact on the
rights of the patent owner:
“The Panel agreed with the EC interpretation
that ‘limited’ is to be measured by the extent to which the
exclusive rights of the patent owner have been curtailed. The full text
of Article 30 refers to ‘limited exceptions to the exclusive rights
conferred by a patent’. In the absence of other indications, the Panel
concluded that it would be justified in reading the text literally,
focusing on the extent to which legal rights have been curtailed, rather
than the size or extent of the economic impact. In support of this
conclusion, the Panel noted that the following two conditions of Article
30 ask more particularly about the economic impact of the exception, and
provide two sets of standards by which such impact may be judged. The
term ‘limited exceptions’ is the only one of the three conditions in
Article 30 under which the extent of the curtailment of rights as such
is dealt with.”(95)
103. The Panel, however, rejected
suggested approaches to measure the curtailment of the patent owner’s
rights by counting the number of rights impaired or by considering
whether the exclusive right to sell during the patent term is affected:
“The Panel does not agree, however, with the EC’s
position that the curtailment of legal rights can be measured by simply
counting the number of legal rights impaired by an exception. A very
small act could well violate all five rights provided by Article 28.1
and yet leave each of the patent owner’s rights intact for all useful
purposes. To determine whether a particular exception constitutes a
limited exception, the extent to which the patent owner’s rights have
been curtailed must be measured.
The Panel could not accept Canada’s argument
that the curtailment of the patent owner’s legal rights is ‘limited’
just so long as the exception preserves the exclusive right to sell to
the ultimate consumer during the patent term. Implicit in the Canadian
argument is a notion that the right to exclude sales to consumers during
the patent term is the essential right conveyed by a patent, and that
the rights to exclude ‘making’ and ‘using’ the patented product
during the term of the patent are in some way secondary. The Panel does
not find any support for creating such a hierarchy of patent rights
within the TRIPS Agreement. If the right to exclude sales were all that
really mattered, there would be no reason to add other rights to exclude
‘making’ and ‘using’. The fact that such rights were included in
the TRIPS Agreement, as they are in most national patent laws, is strong
evidence that they are considered a meaningful and independent part of
the patent owner’s rights.”(96)
104. Subsequently, the Panel
stated that while economic impact was addressed by two of the conditions
under Article 30, the “limited exception” condition was not related
to economic concerns:
“After analysing all three conditions stated in
Article 30 of the TRIPS Agreement, the Panel was satisfied that Article
30 does in fact address the issue of economic impact, but only in the
other two conditions contained in that Article. As will be seen in the
analysis of these other conditions below, the other two conditions deal
with the issue of economic impact, according to criteria that relate
specifically to that issue. Viewing all three conditions as a whole, it
is apparent that the first condition (‘limited exception’) is
neither designed nor intended to address the issue of economic impact
directly.”(97)
3. “do not unreasonably conflict with a
normal exploitation of the patent”
105. In Canada
— Pharmaceutical
Patents, the Panel addressed the meaning of the term “normal
exploitation” contained in the second condition under Article
30, i.e.
the phrase “do not unreasonably conflict with a normal exploitation of
the patent”.
“The Panel considered that ‘exploitation’
refers to the commercial activity by which patent owners employ their
exclusive patent rights to extract economic value from their patent. The
term ‘normal’ defines the kind of commercial activity Article 30
seeks to protect. The ordinary meaning of the word ‘normal’ is found
in the dictionary definition: ‘regular, usual, typical, ordinary,
conventional’. As so defined, the term can be understood to refer
either to an empirical conclusion about what is common within a relevant
community, or to a normative standard of entitlement. The Panel
concluded that the word ‘normal’ was being used in Article 30 in a
sense that combined the two meanings.
The normal practice of exploitation by patent
owners, as with owners of any other intellectual property right, is to
exclude all forms of competition that could detract significantly from
the economic returns anticipated from a patent’s grant of market
exclusivity. The specific forms of patent exploitation are not static,
of course, for to be effective exploitation must adapt to changing forms
of competition due to technological development and the evolution of
marketing practices. Protection of all normal exploitation practices is
a key element of the policy reflected in all patent laws. Patent laws
establish a carefully defined period of market exclusivity as an
inducement to innovation, and the policy of those laws cannot be
achieved unless patent owners are permitted to take effective advantage
of that inducement once it has been defined.”(98)
106. After holding that the term
“normal” referred to both what is common and to a “normative
standard of entitlement”, the Panel deliberated regarding what could
be considered “normal” in the specific circumstances of the case at
issue:
“Canada has raised the argument that market
exclusivity occurring after the 20-year patent term expires should not
be regarded as ‘normal’. The Panel was unable to accept that as a
categorical proposition. Some of the basic rights granted to all patent
owners, and routinely exercised by all patent owners, will typically
produce a certain period of market exclusivity after the expiration of a
patent. For example, the separate right to prevent ‘making’ the
patented product during the term of the patent often prevents
competitors from building an inventory needed to enter the market
immediately upon expiration of a patent. There is nothing abnormal about
that more or less brief period of market exclusivity after the patent
has expired.
The Panel considered that Canada was on firmer
ground, however, in arguing that the additional period of de facto
market exclusivity created by using patent rights to preclude
submissions for regulatory authorization should not be considered ‘normal’.
The additional period of market exclusivity in this situation is not a
natural or normal consequence of enforcing patent rights. It is an
unintended consequence of the conjunction of the patent laws with
product regulatory laws, where the combination of patent rights with the
time demands of the regulatory process gives a greater than normal
period of market exclusivity to the enforcement of certain patent
rights. It is likewise a form of exploitation that most patent owners do
not in fact employ. For the vast majority of patented products, there is
no marketing regulation of the kind covered by Section 55.2(1), and thus
there is no possibility to extend patent exclusivity by delaying the
marketing approval process for competitors.”(99)
107. In this context, the Panel
found that “normal exploitation” could not simply refer back to the
general concern to protect Article 28 exclusionary rights as such:
“The Panel could not agree with the EC’s
assertion that the mere existence of the patent owner’s rights to
exclude was a sufficient reason, by itself, for treating all gains
derived from such rights as flowing from ‘normal exploitation’. In
the Panel’s view, the EC’s argument contained no evidence or
analysis addressed to the various meanings of ‘normal’ — neither a
demonstration that most patent owners extract the value of their patents
in the manner barred by Section 55.2(1), nor an argument that the
prohibited manner of exploitation was “normal” in the sense of being
essential to the achievement of the goals of patent policy. To the
contrary, the EC’s focus on the exclusionary rights themselves merely
restated the concern to protect Article 28 exclusionary rights as such.
This is a concern already dealt with by the first condition of Article
30 (‘limited exception’) and the Panel found the ultimate EC
arguments here impossible to distinguish from the arguments it had made
under that first condition.”(100)
4. “do not unreasonably prejudice the
legitimate interests of the patent owner, taking account of the
legitimate interests of third parties”
108. In Canada
— Pharmaceutical
Patents, with respect to the term “legitimate interests” in the
third condition “do not unreasonably prejudice the legitimate
interests of the patent owner, taking account of the legitimate
interests of third parties” under Article 30, the Panel first
acknowledged the difficulty for Canada in proving a negative
proposition:
“The third condition of Article 30 is the
requirement that the proposed exception must not ‘unreasonably
prejudice the legitimate interests of the patent owner, taking into
account the legitimate interests of third parties’. Although Canada,
as the party asserting the exception provided for in Article
30, bears
the burden of proving compliance with the conditions of that exception,
the order of proof is complicated by the fact that the condition
involves proving a negative. One cannot demonstrate that no legitimate
interest of the patent owner has been prejudiced until one knows what
claims of legitimate interest can be made. Likewise, the weight of
legitimate third party interests cannot be fully appraised until the
legitimacy and weight of the patent owner’s legitimate interests, if
any, are defined. Accordingly, without disturbing the ultimate burden of
proof, the Panel chose to analyse the issues presented by the third
condition of Article 30 according to the logical sequence in which those
issues became defined.”(101)
109. The Panel then proceeded to
examine whether the Canadian regulatory review’s exception was
compatible with the third condition under Article 30 — i.e. whether it
did not “unreasonably prejudice the legitimate interests of the patent
owner, taking account of the legitimate interests of third parties”.
The exception at issue was an exception applicable specifically to
producers of generic pharmaceuticals, enabling such producers to
complete the burdensome and time-consuming marketing authorization
procedure (up to two and a half years) prior to the expiration of the
patent term of the relevant original product:
“The ultimate issue with regard to the
regulatory review exception’s compliance with the third condition of
Article 30 involved similar considerations to those arising under the
second condition (‘normal exploitation’) — the fact that the
exception would remove the additional period of de facto market
exclusivity that patent owners could achieve if they were permitted to
employ their rights to exclude ‘making’ and ‘using’ (and ‘selling’)
the patented product during the term of the patent to prevent potential
competitors from preparing and/or applying for regulatory approval
during the term of the patent. The issue was whether patent owners could
claim a ‘legitimate interest’ in the economic benefits that could be
derived from such an additional period of de facto market exclusivity
and, if so, whether the regulatory review exception ‘unreasonably
prejudiced’ that interest.”(102)
110. The Panel addressed the claim
that “legitimate interests” should be identified with legal
interests:
“The word ‘legitimate’ is commonly defined
as follows:
(a)
Conformable to, sanctioned or authorized by, law or principle: lawful;
justifiable; proper;
(b) Normal,
regular, conformable to a recognized standard type.
Although the European Communities’ definition
equating ‘legitimate interests’ with a full respect of legal
interests pursuant to Article 28.1 is within at least some of these
definitions, the EC definition makes it difficult to make sense of the
rest of the third condition of Article 30, in at least three respects.
First, since by that definition every exception under Article 30 will be
causing ‘prejudice’ to some legal rights provided by Article 28 of
the Agreement, that definition would reduce the first part of the third
condition to a simple requirement that the proposed exception must not
be ‘unreasonable’. Such a requirement could certainly have been
expressed more directly if that was what was meant. Second, a definition
equating ‘legitimate interests’ with legal interests makes no sense
at all when applied to the final phrase of Article 30 referring to the
‘legitimate interests’ of third parties. Third parties are by
definition parties who have no legal right at all in being able to
perform the tasks excluded by Article 28 patent rights. An exceptions
clause permitting governments to take account of such third party legal
interests would be permitting them to take account of nothing. And
third, reading the third condition as a further protection of legal
rights would render it essentially redundant in light of the very
similar protection of legal rights in the first condition of Article 30
(‘limited exception’).”(103)
111. After expressing its
disagreement with the suggested definition of “legitimate interests”
as “legal interests”, as proposed by the European Communities, the
Panel put forward its own definition of “legitimate interests”:
“To make sense of the term ‘legitimate
interests’ in this context, that term must be defined in the way that
it is often used in legal discourse — as a normative claim calling for
protection of interests that are ‘justifiable’ in the sense that
they are supported by relevant public policies or other social norms.
This is the sense of the word that often appears in statements such as
‘X has no legitimate interest in being able to do Y’. We may take as
an illustration one of the most widely adopted Article
30-type
exceptions in national patent laws — the exception under which use of
the patented product for scientific experimentation, during the term of
the patent and without consent, is not an infringement. It is often
argued that this exception is based on the notion that a key public
policy purpose underlying patent laws is to facilitate the dissemination
and advancement of technical knowledge and that allowing the patent
owner to prevent experimental use during the term of the patent would
frustrate part of the purpose of the requirement that the nature of the
invention be disclosed to the public. To the contrary, the argument
concludes, under the policy of the patent laws, both society and the
scientist have a ‘legitimate interest’ in using the patent
disclosure to support the advance of science and technology. While the
Panel draws no conclusion about the correctness of any such national
exceptions in terms of Article 30 of the TRIPS
Agreement, it does adopt
the general meaning of the term ‘legitimate interests’ contained in
legal analysis of this type.
…
The text of the present, more general version of
Article 30 of the TRIPS Agreement was obviously based on the text of
Article 9(2) of the Berne Convention. Berne Article 9(2) deals with
exceptions to the copyright holder’s right to exclude reproduction of
its copyrighted work without permission. The text of Article 9(2) is as
follows:
‘It shall be a matter for legislation in the
countries of the Union to permit the reproduction of [literary and
artistic] works in certain special cases, provided that such
reproduction does not conflict with a normal exploitation of the work
and does not unreasonably prejudice the legitimate interests of the
author.’(104)
The text of Berne Article 9(2) was not adopted
into Article 30 of the TRIPS Agreement without change. Whereas the final
condition in Berne Article 9(2) (‘legitimate interests’) simply
refers to the legitimate interests of the author, the TRIPS negotiators
added in Article 30 the instruction that account must be taken of ‘the
legitimate interests of third parties’. Absent further explanation in
the records of the TRIPS negotiations, however, the Panel was not able
to attach a substantive meaning to this change other than what is
already obvious in the text itself, namely that the reference to the ‘legitimate
interests of third parties’ makes sense only if the term ‘legitimate
interests’ is construed as a concept broader than legal interests.”(105)
112. Another claim put
forward in Canada — Pharmaceutical Patents called attention to the
fact that patent owners whose innovative products are subject to
marketing approval requirements suffer a loss of economic benefits to
the extent that delays in obtaining government approval prevent them
from marketing their product during a substantial part of the patent
term (the same government approval which producers of generic
pharmaceuticals, under the above-mentioned regulatory review exception,
were able to obtain prior to the date of the expiry of the patent term).
The Panel considered the relevant practice by some Members to ascertain
whether the European Communities’ policy concern was “a widely
recognized policy norm”:
“The Panel therefore examined whether the
claimed interest should be considered a ‘legitimate interest’ within
the meaning of Article 30. The primary issue was whether the normative
basis of that claim rested on a widely recognized policy norm.
The type of normative claim put forward by the EC
has been affirmed by a number of governments that have enacted de jure
extensions of the patent term, primarily in the case of pharmaceutical
products, to compensate for the de facto diminution of the normal period
of market exclusivity due to delays in obtaining marketing approval.
According to the information submitted to the Panel, such extensions
have been enacted by the European Communities, Switzerland, the United
States, Japan, Australia and Israel. The EC and Switzerland have done so
while at the same time allowing patent owners to continue to use their
exclusionary rights to gain an additional, de facto extension of market
exclusivity by preventing competitors from applying for regulatory
approval during the term of the patent. The other countries that have
enacted de jure patent term extensions have also, either by legislation
or by judicial decision, created a regulatory review exception similar
to Section 55.2(1), thereby eliminating the possibility of an additional
de facto extension of market exclusivity.”(106)
113. While finding some support
for the European Communities’ claim in the practice of a certain
number of Member governments who had granted compensatory adjustment for
the effective diminution of patent holder rights, the Panel held that
such practice has not been universal:
“This positive response to the claim for
compensatory adjustment has not been universal, however. In addition to
Canada, several countries have adopted, or are in the process of
adopting, regulatory review exceptions similar to Section 55.2(1) of the
Canadian Patent Act, thereby removing the de facto extension of market
exclusivity, but these countries have not enacted, and are not planning
to enact, any de jure extensions of the patent term for producers
adversely affected by delayed marketing approval. When regulatory review
exceptions are enacted in this manner, they represent a decision not to
restore any of the period of market exclusivity due to lost delays in
obtaining marketing approval. Taken as a whole, these government
decisions may represent either disagreement with the normative claim
made by the EC in this proceeding, or they may simply represent a
conclusion that such claims are outweighed by other equally legitimate
interests.
…
On balance, the Panel concluded that the interest
claimed on behalf of patent owners whose effective period of market
exclusivity had been reduced by delays in marketing approval was neither
so compelling nor so widely recognized that it could be regarded as a
‘legitimate interest’ within the meaning of Article 30 of the TRIPS
Agreement. Notwithstanding the number of governments that had responded
positively to that claimed interest by granting compensatory patent term
extensions, the issue itself was of relatively recent standing, and the
community of governments was obviously still divided over the merits of
such claims. Moreover, the Panel believed that it was significant that
concerns about regulatory review exceptions in general, although well
known at the time of the TRIPS negotiations, were apparently not clear
enough, or compelling enough, to make their way explicitly into the
recorded agenda of the TRIPS negotiations. The Panel believed that
Article 30’s ‘legitimate interests’ concept should not be used to
decide, through adjudication, a normative policy issue that is still
obviously a matter of unresolved political debate.”(107)
5. Relationship with other Articles
114. With respect to the
relationship of Article 30 to Article 9(2) of the Berne Convention
(1971) and Articles 13, 17 and
26.2 of the TRIPS Agreement, see footnote
104 above.
XXXII. Article 31
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A. Text of Article 31
Article 31: Other Use Without Authorization
of the Right Holder
Where the law
of a Member allows for other use(7) of the subject matter of a patent
without the authorization of the right holder, including use by the
government or third parties authorized by the government, the following
provisions shall be respected:
(footnote original) 7 “Other use” refers to
use other than that allowed under Article 30.
(a) authorization of such
use shall be considered on its individual merits;
(b) such use may only be
permitted if, prior to such use, the proposed user has made efforts to
obtain authorization from the right holder on reasonable commercial
terms and conditions and that such efforts have not been successful
within a reasonable period of time. This requirement may be waived by a
Member in the case of a national emergency or other circumstances of
extreme urgency or in cases of public non-commercial use. In situations
of national emergency or other circumstances of extreme urgency, the
right holder shall, nevertheless, be notified as soon as reasonably
practicable. In the case of public non-commercial use, where the
government or contractor, without making a patent search, knows or has
demonstrable grounds to know that a valid patent is or will be used by
or for the government, the right holder shall be informed promptly;
(c) the scope and duration
of such use shall be limited to the purpose for which it was authorized,
and in the case of semi-conductor technology shall only be for public
non-commercial use or to remedy a practice determined after judicial or
administrative process to be anti-competitive;
(d) such use shall be
non-exclusive;
(e) such use shall be
non-assignable, except with that part of the enterprise or goodwill
which enjoys such use;
(f) any such use shall be
authorized predominantly for the supply of the domestic market of the
Member authorizing such use;
(g) authorization for such
use shall be liable, subject to adequate protection of the legitimate
interests of the persons so authorized, to be terminated if and when the
circumstances which led to it cease to exist and are unlikely to recur.
The competent authority shall have the authority to review, upon
motivated request, the continued existence of these circumstances;
(h) the right holder shall
be paid adequate remuneration in the circumstances of each case, taking
into account the economic value of the authorization;
(i) the legal validity of
any decision relating to the authorization of such use shall be subject
to judicial review or other independent review by a distinct higher
authority in that Member;
(j) any decision relating
to the remuneration provided in respect of such use shall be subject to
judicial review or other independent review by a distinct higher
authority in that Member;
(k) Members are not
obliged to apply the conditions set forth in subparagraphs (b) and
(f)
where such use is permitted to remedy a practice determined after
judicial or administrative process to be anti-competitive. The need to
correct anti-competitive practices may be taken into account in
determining the amount of remuneration in such cases. Competent
authorities shall have the authority to refuse termination of
authorization if and when the conditions which led to such authorization
are likely to recur;
(l) where such use is
authorized to permit the exploitation of a patent (“the second patent”)
which cannot be exploited without infringing another patent (“the
first patent”), the following additional conditions shall apply:
(i) the invention claimed
in the second patent shall involve an important technical advance of
considerable economic significance in relation to the invention claimed
in the first patent;
(ii) the owner of the
first patent shall be entitled to a cross-licence on reasonable terms to
use the invention claimed in the second patent; and
(iii) the use authorized
in respect of the first patent shall be non-assignable except with the
assignment of the second patent.
B. Interpretation and Application of
Article 31
115. With respect to the grant of
compulsory licences and what constitutes a national emergency or other
circumstances of extreme urgency, see the Declaration on the TRIPS
Agreement and Public Health, reproduced in Section LXXVIII
below.
116. On 30 August 2003 the General
Council adopted a Decision granting waivers from the obligations set out
in paragraphs (f) and (h) of Article 31 of the TRIPS Agreement with
respect to pharmaceutical products.(108)
XXXIII. Article 32
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A. Text of Article 32
Article 32: Revocation/Forfeiture
An
opportunity for judicial review of any decision to revoke or forfeit a
patent shall be available.
B. Interpretation and Application of
Article 32
No jurisprudence or decision of a competent WTO
body.
XXXIV. Article 33
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A. Text of Article 33
Article 33: Term of Protection
The term of
protection available shall not end before the expiration of a period of
twenty years counted from the filing date.(8)
(footnote original) 8 It is understood that those
Members which do not have a system of original grant may provide that
the term of protection shall be computed from the filing date in the
system of original grant.
B. Interpretation and Application of
Article 33
1. General
(a) Basic structure
117. In Canada
— Patent Term,
Canada argued that although it was making available a patent protection
period of only 17 years from the date of the grant of the patent,
contrary to the requirement under Article 33 of a 20-year protection
period counting from the date of the filing of the patent application,
the relevant Canadian law was not inconsistent with Article
33, because
— due to the length of the application procedures — the effective
patent protection period was in fact equal to 20 years, as required by
Article 33. The Panel rejected this argument and found a violation of
Article 33. On appeal, the Appeal Body first considered the ordinary
meaning of Article 33:
“In our view, the words used in Article 33
present very little interpretative difficulty. The ‘filing date’ is
the date of filing of the patent application. The term of protection ‘shall
not end’ before twenty years counted from the date of filing of the
patent application. The calculation of the period of ‘twenty years’
is clear and specific. In simple terms, Article 33 defines the earliest
date on which the term of protection of a patent may end. This earliest
date is determined by a straightforward calculation: it results from
taking the date of filing of the patent application and adding twenty
years. As the filing date of the patent application and the twenty-year
figure are both unambiguous, so too is the resultant earliest end date
of the term of patent protection.” (109)
118. As Article 33 requires that a
Member “make available” a patent protection period of 20 years, the
Appellate Body then considered the meaning of the term “available”:
“We agree with the Panel that, in Article 33 of
the TRIPS Agreement, the word ‘available’ means ‘available, as a
matter of right’, that is to say, available as a matter of legal right
and certainty.
…
To demonstrate that the patent term in Article 33
is ‘available’, it is not sufficient to point, as Canada does, to a
combination of procedures that, when used in a particular sequence or in
a particular way, may add up to twenty years. The opportunity to obtain
a twenty-year patent term must not be ‘available’ only to those who
are somehow able to meander successfully through a maze of
administrative procedures. The opportunity to obtain a twenty-year term
must be a readily discernible and specific right, and it must be clearly
seen as such by the patent applicant when a patent application is filed.
The grant of the patent must be sufficient in itself to obtain the
minimum term mandated by Article 33. The use of the word ‘available’
in Article 33 does not undermine but, rather, underscores this
obligation.”(110)
119. The Appellate Body agreed
with the Panel that Article 33 does not embody a notion of “effective”
protection:
“The text of Article 33 gives no support to the
notion of an ‘effective’ term of protection as distinguished from a
‘nominal’ term of protection. On the contrary, the obligation in
Article 33 is straightforward and mandatory: to provide, as a specific
right, a term of protection that does not end before the expiry of a
period of twenty years counted from the filing date.”(111)
(b) Relationship with other Articles
120. With respect to the
relationship of Article 33 with Articles 1.1 and
62.2, see paragraph 3
above.
121. In Canada
— Pharmaceutical
Patents, the Panel did not examine an Article 33 complaint after having
found a violation of Article 28.1. On the issue of judicial economy more
generally, see Section XXXVI.F of the Chapter on the DSU.
XXXV. Article 34
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A. Text of Article 34
Article 34: Process Patents: Burden of
Proof
1. For the
purposes of civil proceedings in respect of the infringement of the
rights of the owner referred to in paragraph 1(b) of Article
28, if the
subject matter of a patent is a process for obtaining a product, the
judicial authorities shall have the authority to order the defendant to
prove that the process to obtain an identical product is different from
the patented process. Therefore, Members shall provide, in at least one
of the following circumstances, that any identical product when produced
without the consent of the patent owner shall, in the absence of proof
to the contrary, be deemed to have been obtained by the patented
process:
(a) if the product
obtained by the patented process is new;
(b) if there is a
substantial likelihood that the identical product was made by the
process and the owner of the patent has been unable through reasonable
efforts to determine the process actually used.
2. Any Member
shall be free to provide that the burden of proof indicated in paragraph
1 shall be on the alleged infringer only if the condition referred to in
subparagraph (a) is fulfilled or only if the condition referred to in
subparagraph (b) is fulfilled.
3. In the
adduction of proof to the contrary, the legitimate interests of
defendants in protecting their manufacturing and business secrets shall
be taken into account.
B. Interpretation and Application of
Article 34
No jurisprudence or decision of a competent WTO
body.
Footnotes:
74. Panel Report on
Indonesia — Autos, paras. 14.277-14.278. back to text
75. Panel Report on Indonesia
— Autos, para. 14.282.
back to text
76. IP/C/M/12, para. 73. back to text
77. IP/C/M/15, para. 56 and Annex.
The Secretariat note was circulated as IP/C/W/85. back to text
78. IP/C/M/22, para. 102. The
additional information was circulated as IP/C/W/85/Add.1. back to text
79. IP/C/M/18, para. 45. The
Checklist of Questions was circulated as IP/C/13. back to text
80. IP/C/M/19, para. 42. The
additional questions were circulated as IP/C/13/Add.1. back to text
81. IP/C/M/24, para. 39. The
Secretariat note was circulated as IP/C/W/253 and subsequently updated
and circulated as IP/C/W/253/Rev.1. back to text
82. Panel Report on Canada
— Pharmaceutical
Patents, paras. 7.94 and 7.98. back to text
83. Panel Report on
Canada — Pharmaceutical
Patents, para. 7.101. back to text
84. Panel Report on Canada
— Pharmaceutical
Patents, para. 7.105. back to text
85. IP/C/M/21, para. 111. The
Secretariat note was circulated as IP/C/W/122. back to text
86. IP/C/M/30, para.186. The
illustrative list of questions and an informal note prepared by the
Secretariat was reissued as IP/C/W/273. back to text
87. IP/C/M/37/Add
1, para. 195. The
Secretariat note was updated and circulated as IP/C/W/273/Rev.1. back to text
88. (footnote original) Article
31 is titled “Other Use Without Authorization of the Rights Holder”,
and footnote 7 to Article 31 defines “other use” as “use”
(derogations from exclusive patent rights) other than that allowed by
Article 30. back to text
89. Panel Report on Canada
— Pharmaceutical
Patents, para. 7.90. back to text
90. Panel Report on Canada
— Pharmaceutical
Patents, para. 7.91. back to text
91. Appellate Body Report on India
— Patents
(US), para. 52. back to text
92. Panel Report on Canada
— Pharmaceutical
Patents, para. 7.18. back to text
93. Panel Report on Canada
— Pharmaceutical
Patents, paras. 7.20-7.21. back to text
94. Panel Report on Canada
— Pharmaceutical
Patents, para. 7.26. back to text
95. Panel Report on Canada
— Pharmaceutical
Patents, para. 7.31. back to text
96. Panel Report on Canada
— Pharmaceutical
Patents, paras. 7.32-7.33. back to text
97. Panel Report on Canada
— Pharmaceutical
Patents, para. 7.49. back to text
98. Panel Report on Canada
— Pharmaceutical
Patents, paras. 7.54-7.55. back to text
99. Panel Report on Canada
— Pharmaceutical
Patents, paras. 7.56-7.57. back to text
100. Panel Report on Canada
— Pharmaceutical
Patents, para. 7.58. back to text
101. Panel Report on Canada
— Pharmaceutical
Patents, para. 7.60. back to text
102. Panel Report on Canada
— Pharmaceutical
Patents, para. 7.61. back to text
103. Panel Report on Canada
— Pharmaceutical
Patents, para. 7.68. back to text
104. (footnote original) The text
of Berne Article 9(2) also served as the model for three other
exceptions clauses in the TRIPS Agreement — Articles
13, 17 and 26.2,
providing respectively for similar exceptions from obligations on
copyright, trademarks and industrial designs. Article 13 is a nearly
identical copy of Berne Article
9(2). Like Article
30, both Articles 17
and 26.2 made small changes to the text of Berne Article
9(2). back to text
105. Panel Report on Canada
— Pharmaceutical
Patents, paras. 7.69 and 7.71. back to text
106. Panel Report on Canada
— Pharmaceutical
Patents, paras. 7.77-7.78. back to text
107. Panel Report on Canada
— Pharmaceutical
Patents, paras. 7.79 and 7.82. back to text
108. See the minutes of the General
Council meeting in WT/GC/M/82. The text of the waiver can be found in
WT/L/540. This Decision was adopted by the General Council in the light
of a statement read out by the Chairman, as reflected in paragraphs
29-31 of the minutes of the General Council meeting. back to text
109. Appellate Body Report on
Canada — Patent Term, para. 85. back to text
110. Appellate Body Report on
Canada — Patent Term, paras. 90 and 92. back to text
111. Appellate Body Report on
Canada — Patent Term, para. 95. back to text
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