Russian Federation, September 2012 Susan Hainsworth, ITTC

Some TRIPs Issues

•Introduction•Patents and public health•Geographical indications•Biodiversity/Traditional knowledge•Russian Federation and TRIPs•Transparency and notifications

What are IPR?

•Copyrights and rights related to copyrights•Industrial property•Distinctive signs (eg trademarks) and geographical indications•Patents •industrial designs, etc.

I. Introduction

Why are IPRs protected?

•Encourage and reward creative work (eg patents)

•Avoid confusion and deception (eg trademarks)Balance: •private rights (incentives to create) and public interest (ability to use or access the creations) •short-term (usually time-limited protection) and long-term (society benefits from creations and inventions)

The Paris and Berne Conventions

The Paris Convention for the Protection of Industrial Property (1883): the first international treaty that protects inventions, trademarks and industrial designs.

The Berne Convention for the Protection of Literary and Artistic Works (1886): provides protection of the right to control the use of creative works such as novels, songs and drawings.

TRIPS: a major landmark

•Adopted in 1994 after bitter negotiations•The most wide-ranging and far reaching treaty on IPRs (compared to the Paris and Berne Conventions)•First agreement:• To dramatically increase the level of

minimum standards in IP• To be included in the multilateral

trading system• That incorporates texts on anti-

competitive practices in a binding treaty on IPR

TRIPS: Basic principles

•Non-discrimination

• National treatment: forbids discrimination between a Member’s own nationals and the nationals of other Members (Art. 3)

• Most favoured nation: forbids discrimination between the nationals of other Members (Art. 4)

TRIPS: Basic principles

•Exhaustion• practices of WTO Members (e.g. a

Member’s decision to have a national exhaustion regime, under which right holders can take action against parallel imports, or an international exhaustion regime, under which they cannot) cannot be challenged under the WTO dispute settlement system, provided that they do not discriminate on the grounds of the nationality of right holders

TRIPS: Main features

•TRIPS Council•Coverage •Minimum standard of protection•Provisions on enforcement•Transparency and dispute settlement•Transitional periods

Some developments in the Agreement

•Public health•GI•Biodiversity, traditional knowledge•Non-violation

Patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are:1.new 2.involve an inventive step3.are capable of industrial application

Exceptions: Ordre public/morality; diagnostic, therapeutic and surgical methods; plants and animals other than micro-organisms

Exclusive rightsto prevent third parties not having the owner's consent from the acts of: making, using, offering for sale, selling, or importing that product

subject to the provisions of Article 6

Art. 6 : “(...) nothing in this Agreement shall be used to address the issue of the exhaustion of intellectual property rights”.

Process patent:

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 … at least the product obtained directly by that process.

term of protection

Limited exceptions to the exclusive rights

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

Other exceptions - (compulsory licences)

Where the law of a Member allows for other use of the subject matter of a patent without the authorization of the right holder :

-prior negotiation-non-exclusivity-supply of the domestic market -adequate remuneration …

Doha Declaration on Health (WT/MIN(01)/DEC/2)

“We agree that the TRIPS Agreement does not and should not prevent members from taking measures to protect public health.”

•Gave governments the confidence to use the flexibilities available in the TRIPS Agreement (for example: compulsory licensing)

•Rule-change needed: the “paragraph 6 system”. The declaration’s paragraph 6 dealt with TRIPS Article 31(f), which limited the amount nations could export under a compulsory licence to countries needing the medicines. A 2003 waiver and a pending amendment agreed in 2005 allow generic medicines to be made under compulsory licences exclusively for export to countries that cannot produce the medicines themselves.

•This “Para.6 system” is routinely reviewed in the TRIPS Council.

Geographical indications are distinctive signs which generally 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

• All goods covered• Which names? (for example, “Champagne”,

“Tequila” ,“Roquefort”; “Feta”??).• Protection against deceptive advertising, acts of unfair

competition and misleading trademarks

• Additional protection for wines and spirits

• Protection of geographical indications for wines and spirits, even where the consumer is not misled and in the absence of acts of unfair competition .

Two issues are debated in the TRIPS Council under the Doha mandate:

•negotiations to create a multilateral geographical indications register for wines and spirits; and

•discussions on extending the higher level of protection beyond wines and spirits.

Animals and plants. TRIPS Art.27.3(b) deals with patentability or non-patentability of plant and animal inventions, and the protection of plant varieties. Doha Decl.:TRIPS and CBD — the relationship between the TRIPS Agreement and the UN Convention on Biological Diversity Traditional knowledge — the protection of traditional knowledge and folklore

TRIPS Agreement’s objectives and principles; take development fully into account.

These DDA issues are also discussed in separate consultations chaired by the Director-General or a deputy.

Objectives

•the need to avoid inappropriate patenting (such as patenting a claimed invention that is not “new” or does not involve an “inventive step”). Some countries oppose patenting all life forms outright.

•the need to avoid so-called “biopiracy” (unauthorized use of genetic resources or traditional knowledge (as laid down in the CBD))

Members disagree on how. Proposals include:

•amendment so that patent applicants are required to disclose the origin of genetic resources and any traditional knowledge used in the inventions. Linked to “prior informed consent” (a term used in the CBD) and evidence of “fair and equitable” benefit sharing

•other forms of disclosure

•other ways (contracts with “rightful owner”); databases

WPR: some RF commitments/confirmations

RF to fully apply provisions of TRIPS Agreement, including on enforcement, without transitional periods

RF/CU to provide IP rights-holders with border measures fully compliant with the TRIPS Agreement

Application of Berne Convention -- national treatment in payment of fees/royalties.

RF will continue to take actions against the operation of websites (with servers located in RF) that promote illegal distribution of copyright or related rights.

Investigate and prosecute companies that illegally distribute objects of copyright or related rights on the Internet.

Criminal prosecution and penalties for aiding in copyright infringement on the Internet.

Exclusions from patentability: “societal interests”

GIs: for example: confirmation of protection in country of origin “designation of place of origin” also covers

indications that identify the good as originating in the territory where a given quality, reputation or other characteristic of the good was essentially attributable to its geographical origin without necessarily including the name of a geographical place

Information-sharing

Notifications

Information - sharingMembers share information on their laws

and practices as part of the TRIPS Council’s work, through procedures under reviews of implementing legislation, reviews of how GI provisions are being applied, and reviews of patentability or non-patentability of plant and animal inventions, and the protection of plant varieties.

NotificationsTRIPS Agreement notifications cover:

• Members’ intellectual property laws and regulations

• Members’ use of specific provisions in the TRIPS Agreement such as modified criteria on eligibility for protection, and exceptions to the MFN non-discrimination principle

Contact points within Members’ administrations

RF TRIPs Notifications 2012“Checklist on IPR enforcement”“Notification of main IPR legislation”“Notification of additional IPR legislation”“Notification on exceptions in IPR treaties”

TRIPs Articles 1.3 and 3.1: reservations relating to Berne (literary and artistic) and Rome (performers, phonogram producers, broadcasting organizations) Conventions

Notification of contact point (Ministry of Economic Development):

“Co-operation on elimination of trade in infringing goods” “Technical co-operation on TRIPs”