Chapter VII: Trade-Related Aspects of Intellectual Property

(TRIPs)

.
 Outline
• what Intellectual Property Rights (IPRs) are
and why they are protected ?
• Basic principles of the TRIPS Agreement
• TRIPs and Public Health
1. The TRIPS Agreement
What are IPRs?
• Intellectual property rights (IPRs) are the rights given to
persons over the creations of their minds
• They usually give the creator an exclusive right over the use
of his/her creation for a certain period of time
• IPRs are customarily divided into two main areas: 1. copyright
and rights related to copyright; and, 2. industrial property
WHY ARE IPRs PROTECTED?
- Encourage and reward creative work
- Technological Innovation
- Fair Competition
- Transfer of Technology
 Cont.
The TRIPS Agreement
• is to date the most comprehensive multilateral agreement on
intellectual property
• It contains specific provisions in the following areas of intellectual
property:
- copyright and related rights (i.e. the rights of performers,
producers of sound recordings and broadcasting organizations);
- trademarks;
- geographical indications;
- industrial designs;
- patents, including the protection of new varieties of plants;
- the layout designs of integrated circuits; and
- undisclosed information, including trade secrets and test data
• Main goals of the agreement are: reduction of distortions and
impediments to international trade, promotion of effective and
adequate protection of intellectual property rights, and ensuring
 Cont.
Two considerations led to the creation of the TRIPs /historical
rationales/
• First, the United States and other developed countries failed in
their attempts to increase normative standards of protection for
IP through WIPO and the Paris and Berne Conventions
• Second, these two conventions leave enforcement of IP through
judicial and administrative remedies to local decisions

TRIPs is crucially important for four reasons:

- Establishes an international law of substantive minimum standards
for national IP laws
- establishes minimum international criteria for national
enforcement of IP rights through civil, criminal, and administrative
proceedings
- subjects national IP standards and enforcement to the WTO
dispute settlement system
- it establishes certain common procedural requirements that each
 Cont.
Main Features of the Agreement
 Standards: The agreement expresses minimum standards of
protection
(I) The subject matter to be protected
(II) The rights to be conferred and permissible exceptions
(III) The minimum period of protection
 Enforcement
(I) Provisions for domestic procedure and remedies for the
enforcement of the IPRs
(II) Includes general principle applicable to IPR
enforcement procedure apart from administrative, civil
and criminal procedure available for enforcement of
rights of the right holder
 Dispute settlement: The agreement further provides for the
settlement of disputes over IPR among the member states
within the parameters of dispute settlement procedure
2. Basic obligations/principles
A) Obligation of National Treatment /NT/
• requires each Member to accord to the nationals of
other Members treatment no less favorable than that it
accords to its own nationals with regard to the
protection of intellectual property
B) Most-favored nation (MFN ):requires that, with regard
to the protection of intellectual property, any
advantage, favour, privilege or immunity granted by a
Member to the nationals of any other Member shall be
accorded immediately and unconditionally to the
nationals of all other Members
 Cont.
C) The relationship between the TRIPs Agreement and
other intellectual property treaties :
• TRIPs requires that WTO members must respect the
standards under the Paris Convention regardless of
whether they are parties to the Paris Convention
• In addition, the TRIPs Agreement requires compliance
with certain other multilateral conventions administered
by WIPO (World Intellectual Property Office)
• The incorporation of WIPO conventions into the TRIPs
Agreement subjects them to the TRIPs Agreement
dispute settlement regime and allows WTO Panels to
interpret WIPO conventions
 Cont.
D) Acquisition and maintenance of intellectual property
rights:
• WTO members must create and operate governmental
offices for the acquisition and maintenance of all forms
of IP rights
• Procedures for granting and registration of IP rights
must be reasonable
• a member’s law must provide appropriate procedures,
such as opposition, revocation, and cancellation
• Members may adopt measures to protect public health
and the public interest that are consistent with TRIPs
obligations
3. Minimum Substantive Standards
• The TRIPs Agreement provides minimum substantive standards
that must be observed by all WTO members for each category of
IP rights
• The TRIPs Agreement contains minimum standards for the
following categories of IP rights:-
• (1) copyright and related rights;
• (2) patents;
• (3) trademarks (as well as service marks); (4) geographical
indications;
• (5) undisclosed information or trade secrets;
• (6) industrial designs; and
• (7) layout designs of integrated circuits
 Cont.
1. Copyright and related rights
- TRIPs requires WTO members to give full recognition to the copyright
regime of the Berne Convention
- The minimum term of copyright protection must be fifty years from
the end of the calendar year of making or publication
- A limited exception to copyright protection is provided in TRIPs Article
13 for ‘certain special cases which do not conflict with a normal
exploitation of the work and do not unreasonably prejudice the
legitimate interests of the right holder’
• TRIPs Article 13 contains three requirements / three step test/:
- (1) the limitations or exceptions are confined to certain special cases;
- (2) they do not conflict with the normal exploitation of the work; and
- (3) they do not unreasonably prejudice the legitimate interests of the
rights holder
• Developing countries criticize the TRIPs copyright system as being
too broad and advocate that TRIPs be amended to include a defined
list of public interest exceptions, an international ‘fair use’ exception,
2. Patents
Cont.
• WTO members must extend patent protection to all inventions,
whether products or processes, in all fields of technology
• The term of patent protection must be at least twenty years
from the date of filing the application
• Moreover, patent rights must also be available without
discrimination as to the place of invention, the field of
technology, and whether products are imported or produced
locally
• Three important derogations exist from these broad
requirements: (1) exclusions; (2) limited exceptions; and (3)
compulsory licensing
• Exclusions are allowed to protect public order or morality,
including to protect human, animal or plant life or health or to
avoid serious prejudice to the environment
 Cont.
• Article 30 of the TRIPs Agreement allows ‘limited exceptions’ to
the exclusive rights conferred by patent
Three requirements must be met;i.e:
- First, the exception must be ‘limited’
- Second, it must not ‘unreasonably conflict with normal
exploitation of the patent’
- Finally, it must not ‘unreasonably prejudice the legitimate
expectations of the patent owner
Compulsory licensing:- Compulsory licensing, including government
use without the authorization of the right holder, are allowed
without limitation as to grounds but subject to conditions aimed
at protecting the legitimate interests of the right holder
• Issues of compulsory licensing of patents are those of balancing
two opposing interests: namely, the interests of inventors and of
technologically advanced countries and those of licensees and of
technologically less advanced countries
• Patent duration in Ethiopian law is 15 years with
 Cont.
3. Trademarks and service marks
• Trademarks and service marks must be given full
protection by WTO members
• however, registration may be made dependent on use
• The initial registration of a trademark shall be for a term
of no less than seven years, and it must be renewable
indefinitely
• If use is required to maintain registration, the mark may
be cancelled only after an uninterrupted period of three
years of non-use
• Trademarks are assignable and compulsory licensing of
trademarks is not permitted
 Cont.
4) Geographical indication
• WTO members must create a legal system of protection for
geographical indications where the reputation or quality of
a good is ‘essentially attributable’ to its geographical origin
• The TRIPs Agreement allows WTO members to prohibit the
use of geographic indications in such a way as to cause
deception and provides for injunctive relief, the refusal of
trademark registration, and invalidation of trademark
registration when there is an authorized use of
geographical indications causing deception
• In addition, the TRIPs Agreement allows WTO members to
prohibit the use of geographical indications with regard to
wine and spirits even if they do not cause a deception
 Cont.
5) Undisclosed information or trade secrets:
• WTO members must protect undisclosed information (or trade
secrets)
• Undisclosed information that is secret and has commercial value
is sometimes called ‘know-how’
• The requirements for being qualified as undisclosed information
under the TRIPs Agreement are that it is a secret (that is, it is not
in general circulation) and that it has commercial value
• Primary examples include industrial know-how, which is
undisclosed technology not patented but useful for industrial
purposes and not in general circulation
• The wording of provisions relating to undisclosed information
does not exclude other types of undisclosed information such as
know-how in marketing and distribution (for example, a list of
customers)
 Cont.
6) Industrial designs:-
• WTO members must provide IP protection for independently
created industrial designs
• Design protection extends to aesthetic aspects not dictated
by technical or functional considerations
• The duration of protection shall amount to at least ten Years
• The owner of a protected design must have the right to
prevent third parties from making, selling, or importing
products bearing or embodying a design that is a copy of a
protected design
• Exception /requirement of three step test/ : optional
mandate, if introduced then 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
 Cont.
7) Layout designs of integrated circuits
• WTO members must give IP protection to
layout designs (topographies) of integrated
circuits (semi-conductor chips)
• The minimum term of such protection must
be ten years from the date of filing an
application for registration or from the first
commercial exploitation anywhere in the
world
4. Enforcement of IPRs
• The TRIPs Agreement provides minimum standards for the enforcement
of intellectual property rights
• these enforcement measures must include civil and administrative
remedies, criminal remedies, and border (customs) measures
General principles
• Domestic laws and regulations:- WTO members must enact and maintain
domestic laws and regulations that can deal effectively with infringements
of intellectual property rights
• Fair and equitable process of enforcement: The process of enforcement
of intellectual property rights must be fair and equitable and not be
unnecessarily complex and expensive
• Judicial review: With regard to the administrative decisions, members
must provide opportunities for judicial review concerning such decisions
• Criminal Penalities:- WTO members must impose criminal penalties on at
least wilful infringement of trademark and copyrights committed on a
commercial scale
• Provisional measures:- Enforcement authorities of members can impose
provisional measures to stop importation of a commodity when it
determines that an importation of such a commodity infringes a right
5. TRIPS and public health
Doha Declaration on TRIPS and Public Health –Access to patented
medicines
• It responded to concerns about the possible implications of the
TRIPS Agreement for public health, in particular access to
patented medicines
• The Declaration emphasized that the TRIPS Agreement does not
and should not prevent Members from taking measures to
protect public health
• With respect to compulsory licenses, each Member has the right
to grant compulsory licenses and is free to determine the
grounds upon which such licenses are granted
• Each Member has the right to determine what constitutes a
national emergency or other circumstances of extreme urgency
• Regarding the exhaustion of IPRs, the Declaration clarifies that
the TRIPS Agreement leaves each Member free to establish its