By Arunima Singh, Amity University
Editor’s Note: The TRIPS Agreement aimed not only at protection of the Intellectual Property rights but their due enforcement as well. The Agreement, thus, sets out minimum standards to be established and also provides for the administrative and civil mechanisms for enforcement. These minimum standards for the enforcement of IPR allow right holders to protect their legitimate interests through civil courts or administrative proceedings. However, considering the innovations in technological fields, increased patent filing, new symbols being created everyday and works requiring copyrights, IPR enforcement needs to be strengthened further.
Why IP Protection?
IP rights are exclusive rights given to the creator of an innovation for a fixed period of time during which reproduction of the said work without the permission of the innovator or owner attracts liability.
IP rights are given by the society through the State to its subjects as incentive to disseminate and produce such ideas that benefit the society as a whole. [i]These rights are not like Fundamental Rights guaranteed in the Constitution but Statutory rights enacted by the law making authority of the country.
What is The Background Of The TRIPS Agreement?
Bretton Woods was the first agreement to be reached upon in 1944 by various countries to govern the International Monetary policy. It created two institutions (also known as Bretton Woods Institutions) namely International Bank for Reconstruction and Development (IBRD) in 1945 and International Monetary Fund (IMF) in 1946. Subsequently the General Agreement on Tariffs and Trades (GATT) was established in 1947 to harmonize world trade.
Until the establishment of World Trade Organisation (WTO) in 1995, GATT was the only multilateral instrument governing world trade since 1948.[ii] A total of eight rounds of negotiations were held under GATT out of which first five rounds concentrated exclusively on tariffs while the sixth round included discussions on anti-dumping measures as well which included provisions for member nations to control the dumping of goods by other nations into their territory which can affect the member nation’s economy. The last GATT round was the Uruguay Round (1986-1994). It was this round when for the first time discussions were held on trade related to agriculture, services and IPR. After long discussions and complex negotiations, finally in 1994, WTO was established in 1994 and became effective from 1st January 1995. All the 123 nations that participated in the Uruguay Round became the members of WTO including India. At present there are 153 members of WTO i.e. almost 90% of World’s nations. WTO is responsible for the negotiation and implementation of new trade agreements. It is also in charge of ensuring strict adherence to the trade agreements signed by majority of the world’s trading nations.
One of the most important agreements of WTO is the TRIPS Agreement. This Agreement came into force on 1st January, 1995. The TRIPS Agreement (forthwith referred to as ‘the Agreement’) is an International agreement administered by WTO and it sets down the minimum standard for many forms of intellectual property regulations. The Agreement is till date the most comprehensive agreement of a multilateral nature on IP. Following areas of Intellectual Property are covered under the Agreement:
- Copyrights and Related rights (like the rights of performers, producers of sound recordings and broadcasting organizations)
- Trademarks (also service marks)
- Geographical Indications (including appellations of origin)
- Industrial Designs
- Patents (including protection of new variety of plants)
- Layout-designs of Integrated Circuits
- Undisclosed Information (Trade secrets and Test data)
The Agreement is a seven-part document containing complex provisions with respect to Intellectual Property rights. Following is a brief description of the structure of the Agreement:
Part I: The general provisions and the basic principles of National Treatment and Most Favoured Nation are covered under this part. (Article1 to Article8)
Part II: The standards concerning availability, scope and use of Intellectual Property Rights is covered under this part. (Article9 to Article40)
Part III: This part deals with the enforcement of IPRs. (Article41 to Article61)
Part IV: This part addresses the provisions for acquiring and maintaining IPR. (Article62)
Part V: This part deals with prevention and settlement of disputes arising out of the provisions of the Agreement. (Article63 to Artcile64)
Part VI: Part VI is concerned with transitional agreements. (Article65 to Article67)
Part VII: This part of the Agreement concerns various institutional agreements. (Article68 to Article73)
What Are The Issues Governed By The Agreement?
With respect to the aforementioned intellectual property areas, the Agreement governs issues like application of international IP agreements and basic principles of the trading system, adequate protection to IPRs, adequate enforcement of IPR by member nations in their territories, settlement of disputes on IP between the members of WTO, special transitional arrangements during the period when the new system is being introduced. The Agreement is the first agreement under WTO which requires member nations to establish relatively detailed norms within their respective legal frameworks, as well as to establish such measures of enforcement and such procedures which meet the minimum standards. The three important features of this agreement are:
- Standards – In respect of each of the IP areas covered by the Agreement, all member nations are obliged to provide a minimum set of standards for the protection of IPRs. Each area of IP is covered such that it clearly describes the main elements of protection i.e. the subject matter which seeks protection, rights which are to be conferred and permissible exceptions to such rights and also the minimum duration of protection.
- Enforcement – Each member nation is obliged to provide domestic procedures and remedies with respect to protection of IPR. Further, the agreement lays down certain other provisions so that right holders can effectively enforce their rights. These provisions relate to civil and administrative procedures and remedies and detailed specifications as to special requirements related to border measures and criminal procedures.
- Dispute Settlement – All the disputes arising between members of WTO with respect to the obligations arising out of the TRIPS Agreement are subject to WTO’s dispute settlement procedures.[iii]
General Provisions And Basic Principles
Article 1 of the agreement provides for the member nations to implement the provisions of the agreement in such way as member nations deem appropriate, that is to say, the standards of provisions of this agreement are a ‘minimum’ which is to be maintained at the ground level and the nations can further invoke an extensive protection domestically. An IPR acquired in one country cannot be enforced in another country. The minimum standard maintenance and basic enforcement standards enshrined in the TRIPS Agreement make it flexible for member nations to one, enforce the aforementioned basic standards; two, implement higher levels of protection domestically thus leaving the Members to have ‘TRIPS plus’ laws and regulations. These higher standards are now making appearance on the world trade timeline as Free Trade Agreements (FTA) entered into between trading partner nations. However, since these agreements establish standards much higher than those of the TRIPS Agreement, they may take away the flexibilities which exist in the Agreement. Articles 3 and 4 constitute the fundamental principles of the agreement.
Article 3 deals with National Treatment commitment. It reads as following:
“1. Each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection of intellectual property, subject to the exceptions already provided in, respectively, the Paris Convention (1967), the Berne Convention (1971), the Rome Convention or the Treaty on Intellectual Property in Respect of Integrated Circuits. In respect of performers, producers of phonograms and broadcasting organizations, this obligation only applies in respect of the rights provided under this Agreement. Any Member availing itself of the possibilities provided in Article 6 of the Berne Convention (1971) or paragraph 1(b) of Article 16 of the Rome Convention shall make a notification as foreseen in those provisions to the Council for TRIPS. 2. Members may avail themselves of the exceptions permitted under paragraph 1 in relation to judicial and administrative procedures, including the designation of an address for service or the appointment of an agent within the jurisdiction of a Member, only where such exceptions are necessary to secure compliance with laws and regulations which are not inconsistent with the provisions of this Agreement and where such practices are not applied in a manner which would constitute a disguised restriction on trade.”
This article calls for the member nations to accord such treatment to the nationals of other member nations as the former would grant to its own nationals with regard to protection of Intellectual Property Rights. This article also recognises certain exceptions already provided in the Paris Convention (1967), the Berne Convention (1971), the Rome Convention or the Treaty on Intellectual Property in Respect of Integrated Circuits.
Article 4 deals with Most Favoured Nation Treatment. It reads as follows:
“With regard to the protection of intellectual property, any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members. Exempted from this obligation are any advantage, favour, privilege or immunity accorded by a Member:
(a) deriving from international agreements on judicial assistance or law enforcement 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 the treatment 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 of intellectual property which entered into force prior to the entry into force of the WTO Agreement, provided that such agreements are notified to the Council for TRIPS and do not constitute an arbitrary or unjustifiable discrimination against nationals of other Members.”
According to this article, any advantage, favour, privilege or immunity accorded to the nationals of one member nation by another member nation shall automatically be accorded to all the other member nations except for the exceptions mentioned above from sub-clause (a) to (d).
Elements of Protection and Relating Provisions
Copyrights and related rights
The protection of copyrights extends to expressions but not to ideas, procedures, methods of operation and mathematical concepts[iv]. Computer Programs, both in source and object codes are protected by virtue of the Berne Convention (1971) and compilation of data in machine readable or other forms constitute intellectual creations by reason of the selection or arrangements of their contents and thus are subject to protection[v] in the Agreement. Rental right that is the right to authorize or to prohibit commercial renting to the public of originals or copies of protected work is provided to authors in respect of computer programs and cinematographic works. However, such right is subject to the exception that if granting rental rights lead to widespread copying of such works further leading to impairment to the exclusivity of the work then member nations can take back such rights[vi]. The term of protection extends up to not less than 50 years as per Article12.
Performers (their performances) and broadcasting organisations have been granted protection such that fixation of unfixed performance and reproduction of such fixation without due authorization attracts liability. Further, performers and broadcasting organisations also have the right to prevent broadcast of their performances and public communication of the same without authorization. Producers of phonograms enjoy the right to authorize or prohibit the direct or indirect reproduction of their phonograms.
Article 15 of the Agreement recognises any sign or combination of signs, personal names, letters, numerals, figurative elements, combinations of colours and combinations of any of the above as eligible for registration as trademarks. However, where signs are not inherently distinguishable, registrability depends on distinctiveness acquired through use. Member nations may require, as a condition of registration, that signs be visually perceptible. For initial registration and each renewal of registration of a trademark a term of protection is no less than seven years. The registration of a trademark is renewable indefinitely.
Also, nature of a trademark does not act as an obstacle to its registration. Article 16 provides that owner of a trademark has the exclusive right to prevent all third parties from using identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered. Compulsory licensing of trademarks is not permitted by the Agreement that is to say the owner of the trademark owns the right to assign the trademark with or without the transfer of the business to which the trademark belongs.
As per Article 22, Geographical Indications are those indications which identify a good as originating in territory of a member nation where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. Under the provisions of the Agreement, a member nation can prohibit other member nations from the use of any designation or presentation of any goods that indicates or suggests that those goods originate from a geographical area other than the true place of origin in a manner which misleads the public. The term of protection for Geographical Indication is eternal.
Article 27 of the agreement deals with patents, patentability of processes and inventions. The patentable subject matter according to the Agreement constitutes any inventions, whether products or processes, in all fields of technology, provided that they are novel, involve an inventive/innovative step and are capable of industrial application. However, the following have been excluded from the ambit of patentability:
- Diagnostic, therapeutic and surgical methods for the treatment of humans or animals.
- Plants, animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes.
Under the provisions of the Agreement the member nations have to provide protection for plant varieties either by patents or by an effective sui generis system or by any combination thereof. The term of protection available is usually 20 years counted from the filing date of the patent application. Under provisions of Article 21 of the Agreement, member nations 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. Further, Article 29 makes it imperative that the patent application discloses the invention in a manner which is sufficiently clear and complete for the invention to be carried out by a person skilled in the art. The same Article further provides that member nations can call upon applicants to also keep a check on the corresponding foreign applications. Article 31 of the Agreement has provisions that allow grant a compulsory license for pharmaceuticals by the government of a member nation without the consent of the patentee: subject to certain conditions. Compulsory license may be allotted only in the following conditions are fulfilled:
- Firstly, prior negotiations with the patent holder by the person/company applying for the license on reasonable terms. Only if these negotiations fail can a compulsory license be issued.
- Secondly, after the issuing of a compulsory license the owner of the patent has to be paid adequately. The Agreement says “the right holder shall be paid adequate remuneration in the circumstances of each case, taking into account the economic value of the authorization”, however, it does not define “adequate remuneration” or “economic value”. Therefore, compulsory licensing ought to meet certain additional requirements.
As per Article 31, the following provisions have to be respected if a license is granted without the authorization of a patent holder:
- Authorization of such use shall be considered on its individual merits;
- Such authorization shall only be considered if the proposed user has made significant efforts to obtain the authorization from the right holder on reasonable commercial terms. However, this right is subject to waiver by state in case of a national emergency;
- The scope and duration for such license shall extend only up to the time as the purpose of its granting required;
- The use is to be non-exclusive;
- The license shall be non-assignable;
- Any such use shall be authorised predominantly for the supply of the domestic market of the member authorizing such use;
- Such a license shall stand terminated once the circumstances which required adequate protection of the legitimate interests of the license holder cease to exist;
- The right holder shall be granted adequate remuneration;
- The legal issues arising to the license shall be addressed by a distinct higher authority;
- In case, a patent “second patent” cannot be exploited without infringing another patent “first patent” then certain conditions are to be applied given further in the Article.
Articles 25 and 26 of the Agreement deal with Industrial Designs. Member nations have to provide for the protection of independently created industrial designs that are innovative and original. Designs can be denied protection on the ground that they are not new or original or do not significantly differ from the known design features. The term of protection of Industrial Designs is 10 years from the creation of the industrial design.
Lay-out Designs (Topographies) of Integrated Circuits
The Agreement in Article 36 provides that importing, selling, or distribution (for commercial purposes) of a protected layout-design, an integrated circuit in which a protected layout-design is incorporated, or an article incorporating such a circuit is unlawful. The protection provided in this field of IP is not less than 10 years from the date of filing of application for lay-out designs. However, member nations may limit the duration of protection up to fifteen years from the date of creation of the lay-out design as per Article 37.
Protection of Undisclosed Information
Undisclosed Information is also called a Trade Secret. The Agreement vide Article 39 obligates member nations to offer protection for trade secrets as per the provision of the Agreement. Undisclosed information is considered as Trade Secret if:
- It is not readily accessible to persons within the circles that normally deal with the kind of information in question;
- It has commercial value because it is secret; and
- The information has been subject to steps for its maintenance as a secret by the person lawfully in control of the information.
RIGHTS AND RESPECTIVE PROTECTION AT A GLANCE
|Name of IP and statute in India||Subject-matter||Protection Term||Examples|
(Copyright Act, 1957)
|Literary, artistic and software works||Life of Author +50 years term||Movie rights, music rights|
(Patent Act, 1970)
Amended thrice in ’99, ’02 and ‘05
|Inventions and Processes||20 years||Herbal Composition|
(Trademarks Act, 1999)
|Commercial use and registration of marks, signs or combinations indicative of goodwill||Indefinite term||Symbol of any company|
(Designs Act, 2000)
|Original designs industrially reproducible||10 years||Design of a pack|
(Geographical Indications of Goods Act, 1999)
|Name or sign used on Products corresponding to Specific geographical location or origin||10 years||Pashmeena silk of Kashmir|
Enforcement of Intellectual Property Rights
The TRIPS Agreement aimed not only at protection of the Intellectual Property rights but their due enforcement as well. The Agreement, thus, sets out minimum standards to be established and also provides for the administrative and civil mechanisms for enforcement. These minimum standards for the enforcement of IPR allow right holders to protect their legitimate interests through civil court or administrative proceedings.
It is not required for a WTO member nation to establish special or separate courts for IPR, or specially allocate resources, like human resources, special offices for enforcement, etc. for IPR enforcement. Part III of the Agreement on Enforcement of IPR sets out the obligations on member nations to establish administrative and judicial mechanisms through which IPR holders can seek effective protection of their interests. The general obligation of member nations to provide enforcement mechanisms requires that enforcement procedures should be available under their national law so as to permit effective action against any act of infringement of IPR covered by the Agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements.
As per Article 41, member nations are obligated to ensure that enforcement procedures are “fair and equitable”, and “not unnecessarily complicated or costly, or entail unreasonable time limits or unwarranted delays.” Regarding the civil administrative procedures and remedies, the Agreement provides for equal rights for both the defendant and complaining parties. The rules of the Agreement provide that both parties should have the opportunity to present and contest evidence, and that adequate remedial measures should be available. The Agreement permits member nations to exclude the grant of injunctions in circumstances involving compulsory licenses and other uses.
The Agreement obligates member nations to make provision for the ordering of prompt and effective provisional measures to prevent entry of infringing goods into channels of commerce and preserve evidence against such infringing goods and their traders. This means that the IPR holder should be entitled to seek a prompt action against the infringement, whether or not the party alleged to be acting in an infringing manner can be notified and given opportunity to be heard. With respect to Border Measures, the Agreement requires member nations to allow certain right holders to prevent release by customs authorities of infringing goods into circulation especially, with respect to counterfeit trademarks and pirated copyright goods. The Agreement also provides for certain Criminal Measures (penalties) for trademark counterfeiting and copyright piracy on a commercial scale.
Dispute Settlement and Prevention:Mechanisms
Part V of the agreement deals with dispute settlement and prevention. Article 63 establishes the transparency requirements. Under these requirements there is an obligation on the part of member nations to publish or otherwise make available legal texts such as laws and judicial decisions. The provisions related to dispute settlement and prevention is governed by the TRIPS council. Article 63 establishes an obligation to notify laws and regulations to the TRIPS Council or to World Intellectual Property Organization (WIPO) for the common register, which contains a compilation of laws and regulations, final judicial decisions, etc. pertaining to the Agreement, should that be decided upon.
Member nations are obligated to furnish applicable rules or decisions, or sufficient details about them, at the request of member nations who reasonably believe their rights may be affected. Confidential information is entitled to protection. Each member nation is required to be prepared to supply, in response to a written request from another member nation, the information regarding Law, rulings, Judicial decisions and administrative rulings pertaining to the subject matter of the Agreement (the availability, scope, acquisition, enforcement and prevention of the abuse of IPR).
Article 64 deals with the dispute settlements. The Articles XXII and XXIII of GATT 1994 as described and applied by the Dispute Settlement Understanding (WTO’s procedure for resolving the trade quarrels) also apply to consultations and the settlement of disputes under the Agreement except as otherwise specifically provided. Article XXIII of the GATT 1994 provides for three types of cause of action (a set of facts sufficient to justify a right to sue) in GATT dispute settlement: “violation”, “non-violation” and “situation”.
TRIPS: The Indian Context
India became a signatory of the TRIPS Agreement in the year 1994 but this Agreement entered into force on January 1, 1995 and came across in the world scenario as the most important multilateral agreement on Intellectual Property. By setting out minimum standards of IP rights internationally, the Agreement encourages trade and technology transfer between countries. The Patent Act, 1970 was in contravention with Article 27 of the Agreement[vii]. In order to completely comply with the Agreement, India needed to take necessary measures in the grace period. The Agreement provided a three stage framework for strengthening the IP regime in developing countries like India which did not allow product patents in the areas of pharmaceuticals and agricultural chemicals (patent applications for which are also known as ‘mail-box’ applications) before the Agreement came into force. These stages are described as follows:
- Introduction of Mail-box facility from 1st January, 1995 for product patents in the field of agrochemicals and pharmaceuticals. These mail-box applications were not examined until 2004. But Exclusive Marketing Rights (EMR) were granted for such applications for which a patent had been granted in at least one member nations and the application was not rejected in that member nation where the said patent was sought for the reason non-patentability of the invention.
- Compliance with other obligations of the Agreement such as, rights of Patentee, term of protection, compulsory licensing, etc. From 1st January, 2000.
- Full implementation of product patents in al technological domains including mail-box applications e.f. 1st January, 2005. Also, in the case of Agouron Pharmaceuticals Inc v Controller of Patents, the Hon’ble High Court of Kolkata held that applications filed prior to 1st January, 2005 were to be considered in accordance with the Patents Act, 2005. As a result, all mail-box applications were to be taken for examination from the abovementioned date.
Thus, the Agreement came into force in India in January, 2005. TRIPS changed the face of IP in the world as many developing countries, including India[viii], which had weak IPR mechanisms had to extensively revise, amend and create their patent laws, or where there were no IPR regimes (the most important examples being plant variety protection, lay-out designs and geographical indications) had to put in place an entirely new IPR regime. However, implication of the Agreement and the regime so incorporated has its own pros and cons.
The revision of Patent laws brought into existence a stronger patent protection mechanism which is at par with the international standards or the standards set out in the Agreement. The result of this has been positive for India as foreign investors were encouraged to invest in India. It can be expected that the domestic investment might not respond to the stronger patent regime but Foreign Direct Investment (FDI) might. Further, the research and development (R&D) expenditures of the domestic players tremendously increased in post Agreement period as compared to the pre-agreement period.
Another positive implication is more technological in nature. The availability of products ought to be better with stronger IPR protection. However, the prices of these better and patented products may not be affordable for majority of the population.
Investments from domestic as well as foreign sector have risen in the field of seeds and agriculture. That is, post the Agreement, stronger protection regimes have encouraged domestic private sector as well as foreign firms to invest in R&D for the development of better seeds. Many Geographical Indications and methods in Traditional Knowledge which are of importance to the domestic industry of India have got protection and have encouraged investment in these sectors, for example: Darjeeling Tea. Also, patent revocation [by U.S. Patent Office (USPTO)] of Curcuma longa Linn (turmeric) and Azadirachta indica A. Juss (neem) after actions from Indian residents in U.S courts have also created a positive atmosphere for creation of protection laws for Traditional Knowledge (TK), a very new form of IP.
When the Indian parliament passed the new patent law in 2005, it not only brought back product patents, but also granted all patents a term of 20 years. Moreover, the new law paved way for the formation of the Intellectual Property Appellate Board, a specialised judiciary to hear the IP cases.[ix]
This transition has been chaotic. Patent litigations have increased three-fold since 1995, and many of these have been highly controversial and long-drawn affairs. Interestingly, it appears that the courts are also grappling with how to balance the pro-innovation and anti-competitive effects of IPR. The court battle of Cipla and Roche is one such instance.
In early 2009, the Delhi High Court rejected a temporary injunction against Cipla for manufacturing a copy-cat version of the drug Erlotinib, manufactured by Roche, to treat lung cancer. Roche claimed that rejection of its plea would be against public interest and hurt R&D. Cipla argued that granting an injunction would deprive the needy of an important drug. Although the main reason for rejecting Roche’s plea was its inability to prove that Erlotinib was substantially more efficacious, the judgment received a lot of publicity due to certain observations by Justice Bhatt, who decided this case. Noting that Roche’s original drug was at least three times more expensive than the copy-cat version and was not manufactured in India he opined:
“… I come to the interesting and novel point as to whether the court ought ever, and in particular, in this case to exercise its discretion to grant an injunction the effect of which will be, temporarily at any rate, to deprive members of the public of the benefit of a ‘life saving drug which may be prescribed’… If the evidence shows it to be the fact there may and well be cases where it would make little, if any, difference to the public, apart from satisfying personal preference, whether a particular drug was no longer available or not, then in such a case it may well be proper to grant an injunction. At the other end of the scale, however, there is the unique life-saving drug where, in my judgment, it is at least very doubtful if the court in its discretion ever ought to grant an injunction…”[x]
Roche vs. Cipla[xi] is just one instance of how IPR’s enforcement has been at odds with the actual intent behind the law. Since 2005, the (average) chances of winning IP litigation have declined to17%, from about 50% before Trips.
The Agreement has increased R&D investments by Indian firms. The amount of R&D activity in India has been on an increase since the Agreement. Stronger IPR regime has spurred Indian companies to invest in R&D and simultaneously encouraged multinational corporations to outsource more R&D work to India.
The Indian policymakers seem unsure about how they should react to IPR. But considering the innovations in technological fields, increased patent filing, new symbols being created everyday and works requiring copyrights, IPR enforcement needs to be strengthened further. It would help even better if the enforcers follow the spirit of the law unlike in the case of Cipla and Roche. Laws need to be made regarding the protection of Trade Secrets, patent filing and granting procedure needs to be speeded up, lessons for which can be taken from the USPTO.[xii]
Edited by Kanchi Kaushik
[iv] Article 9(2)
[v] Article 10
[xi] 148 (2008) DLT 598