WTO jurisprudence. 4.1 India – Patent Protection In India – Patent Protection for Pharmaceutical and Agricultural Chemical Prod- ucts,17 the panel took the view that India had violated its obligation under Arti- cle 63 by failing to publish the details of its system for receiving and holding patent applications.18 In fact, the Indian Patent Act of 1970 excluded pharmaceutical and agricultural chemical products from patent protection. Under TRIPS, India among others is authorized to delay product patent protection in these areas un- til 1 January 2005, but must provide for a system of registration of applications for such patents prior to that date (“mailbox system”, Article 70.8).19 In addition, countries benefiting from the above transitional period have to grant to patent applicants, prior to 1 January 2005, exclusive marketing rights (EMRs) in defined circumstances (see Article 70.8).20 With a view to meeting its obligations under Article 70.8 and 9, the Indian Gov- ernment promulgated in 1994 the Patents Ordinance to amend the 1970 Patents Act until the entry into force of a corresponding parliamentary law. In accordance with Article 70.8 and 9, this Ordinance provided for the filing and handling of patent applications for pharmaceutical and agricultural chemical products prior to the date as of which India would have to implement TRIPS rules on product patent protection. The Ordinance also provided for the grant of EMRs for patent applicants. However, at the time this transitory Ordinance lapsed in 1995, the In- dian Parliament had not been able to conclude its discussions on a law amending the 1970 Patents Act, so that at that time, there was no legal basis in India for the operation of the mailbox system and the granting of EMRs. In order to ensure consistency with Article 70.8 and 9, the Indian executive authorities decided to instruct the patent offices to continue the application of these two instruments. However, no public notice of this administrative decision was issued, nor was it communicated to the TRIPS Council. The only public statement in this matter made on behalf of the Indian government was a written response by the Minister of Industry to a question asked by a Member of the Indian Parliament. The Min- ister confirmed that the mailbox system continued to apply on the sole basis of the administrative decision.21 In reaction to the U.S. complaint, India advanced two major substantive argu- ments.22 First, it argued that the transitional provision of Artic...
WTO jurisprudence. There have been no cases decided on this subject matter.
WTO jurisprudence. Apart from the case India – Patent Protection for Pharmaceutical and Agricultural Chemical Products,140 there has been no WTO jurisprudence specifically concern- ing Article 64 as such.
WTO jurisprudence. 4.1 The particular nature of the TRIPS Agreement The complexities of the negotiations of TRIPS are reflected in its rather vague provisions, particularly in the field of exceptions. As Xxxxx pointed out, “. [W]hen a government is unable to secure true protection of certain interests, the first form of temporizing will usually be the imperfect legal commitment. [ ] International litigation can provide for second-stage temporizing.”220 In India – Patent Protection the question arose as to whether TRIPS should be interpreted by applying the same principles applicable to the other covered agree- ments. The panel decided that “We must bear in mind that the TRIPS Agreement, the entire text of which was newly negotiated in the Uruguay Round and occupies a relatively self-contained, sui generis, status in the WTO Agreement, nevertheless is an integral part of the WTO system, which itself builds upon the experience of nearly half a century 218 This Article reads as follows: “It shall be a matter for legislation in the countries of the Union to permit the reproduction of such 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.”(emphasis added). 219 See Cattaneo, p. 640.
WTO jurisprudence. To date no dispute concerning these provisions has been brought before the dis- pute settlement body of the WTO.
WTO jurisprudence. 4.1 Canada – Term of Patent Protection (“Canada – Patent Term”)145 In Canada – Patent Term the Appellate Body interpreted Articles 70.1 and 70.2 regarding subject matter existing prior to its application in a Member. This case involved a complaint by the United States against Canada for an alleged failure to apply the minimum 20-year patent term requirement of Article 33 to patents that were granted under pre-TRIPS patent legislation. Canada argued that it was not required to extend the term of patents that had been granted under an act that applied to patents granted up until 1989 (and which patents remained in force when Article 33 became applicable), because Article 70.1 excluded application of TRIPS to “acts” which occurred before the date of application. In Canada’s view, the grant of a patent was an “act” that occurred before Article 33 became applicable. Canada argued that Article 70.2, which establishes obligations regarding “subject matter existing at the date of application... and which is protected in that Member on the said date” covered patents granted prior to application of the Agreement, but did not obligate it to extend the patent term, which was excluded under Article 70.1 as prior “acts”.
WTO jurisprudence. None of the WTO Dispute Settlement Body, Appellate Body nor any panel has been asked to interpret Article 6. There are no dispute settlement decisions that discuss it. However, as noted above, Ministers meeting in Doha adopted the Declaration on the TRIPS Agreement and Public Health that expressly addresses “the provi- sions in the TRIPS Agreement that are relevant to the exhaustion of intellectual property.” Paragraph 5(d) of the Doha Declaration does not limit its reference to Article 6 precisely to account for arguments from some Members and industry groups that other Articles (such as Article 28) override it by implication. 245 For a consideration of the purpose and effect of these Articles addressing national and MFN treatment, respectively, see Chapter 4.
WTO jurisprudence. The Preamble and Articles 7 and 8 were given modest attention by the parties (including third countries) and panel in the Canada – Generics dispute.289 The panel said:
WTO jurisprudence. There has been no panel decision dealing mainly with the subject of copyrightable works. However, in US – Section 110(5) of the Copyright Act, the panel briefly clarified the contents of Articles 11 and 11bis of the Berne Convention.51 These provisions are among those referred to under Article 9 of TRIPS and specify the author’s rights with respect to dramatic and musical works (Article 11 Xxxxx) and in relation to broadcasting and related rights (Article 11bis Berne).52 The EC had asserted a violation of Articles 9.1 TRIPS, 11 (1)(ii) and 11bis(1)(iii) of the §
WTO jurisprudence. To date, there is no WTO panel decision on this subject.
