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Section 6: Layout-Designs (Topographies) of
Integrated Circuits
XXXVI. Article 35 and Incorporated Provisions of the IPIC Treaty
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A. Text of Article 35
Article 35: Relation to the IPIC Treaty
Members agree
to provide protection to the layout-designs (topographies) of integrated
circuits (referred to in this Agreement as “layout-designs”) in
accordance with Articles 2 through
7 (other than paragraph 3 of Article
6), Article 12 and paragraph 3 of Article 16 of the Treaty on
Intellectual Property in Respect of Integrated Circuits and, in
addition, to comply with the following provisions.
The text of Articles 2 through
7 (other than
Article 6.3) and Articles 12 and
16.3 of the IPIC Treaty appears in
Section LXXVII below.
B. Interpretation and Application of
Article 35 and Incorporated Provisions of the IPIC Treaty
No jurisprudence or decision of a competent WTO
body.
XXXVII. Article 36
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A. Text of Article 36
Article 36: Scope of the Protection
Subject to the provisions of
paragraph 1 of
Article 37, Members shall consider unlawful the following acts if
performed without the authorization of the right holder:(9) importing,
selling, or otherwise distributing for commercial purposes a protected
layout-design, an integrated circuit in which a protected layout-design
is incorporated, or an article incorporating such an integrated circuit
only in so far as it continues to contain an unlawfully reproduced
layout-design.
(footnote original) 9 The term “right
holder” in this Section shall be understood as having the same meaning
as the term “holder of the right” in the IPIC Treaty.
B. Interpretation and Application of
Article 36
No jurisprudence or decision of a competent
WTO body.
XXXVIII. Article 37
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A. Text of Article 37
Article 37: Acts Not Requiring the
Authorization of the Right Holder
1. Notwithstanding
Article 36, no Member shall
consider unlawful the performance of any of the acts referred to in that
Article in respect of an integrated circuit incorporating an unlawfully
reproduced layout-design or any article incorporating such an integrated
circuit where the person performing or ordering such acts did not know
and had no reasonable ground to know, when acquiring the integrated
circuit or article incorporating such an integrated circuit, that it
incorporated an unlawfully reproduced layout-design. Members shall
provide that, after the time that such person has received sufficient
notice that the layout-design was unlawfully reproduced, that person may
perform any of the acts with respect to the stock on hand or ordered
before such time, but shall be liable to pay to the right holder a sum
equivalent to a reasonable royalty such as would be payable under a
freely negotiated licence in respect of such a layout-design.
2. The conditions set out in
subparagraphs (a)
through (k) of Article 31 shall apply mutatis mutandis in the event of
any non-voluntary licensing of a layout-design or of its use by or for
the government without the authorization of the right holder.
B. Interpretation and Application of
Article 37
No jurisprudence or decision of a competent
WTO body.
XXXIX. Article 38
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A. Text of Article 38
Article 38: Term of Protection
1. In Members requiring registration as a
condition of protection, the term of protection of layout-designs shall
not end before the expiration of a period of 10 years counted from the
date of filing an application for registration or from the first
commercial exploitation wherever in the world it occurs.
2. In Members not requiring registration as a
condition for protection, layout-designs shall be protected for a term
of no less than 10 years from the date of the first commercial
exploitation wherever in the world it occurs.
3. Notwithstanding
paragraphs 1 and 2, a
Member may provide that protection shall lapse 15 years after the
creation of the layout-design.
B. Interpretation and Application of
Article 38
No jurisprudence or decision of a competent
WTO body.
Section 7: Protection of Undisclosed
Information
XL. Article 39
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A. Text of Article 39
Article 39
1. In the course of ensuring effective
protection against unfair competition as provided in Article 10bis of
the Paris Convention (1967), Members shall protect undisclosed
information in accordance with paragraph 2 and data submitted to
governments or governmental agencies in accordance with paragraph
3.
2. Natural and legal persons shall have the
possibility of preventing information lawfully within their control from
being disclosed to, acquired by, or used by others without their consent
in a manner contrary to honest commercial practices(10) so long as such
information:
(footnote original) 10 For the purpose of
this provision, “a manner contrary to honest commercial practices”
shall mean at least practices such as breach of contract, breach of
confidence and inducement to breach, and includes the acquisition of
undisclosed information by third parties who knew, or were grossly
negligent in failing to know, that such practices were involved in the
acquisition.
(a) is secret in the sense that it is not, as
a body or in the precise configuration and assembly of its components,
generally known among or readily accessible to persons within the
circles that normally deal with the kind of information in question;
(b) has commercial value because it is secret;
and
(c) has been subject to reasonable steps under
the circumstances, by the person lawfully in control of the information,
to keep it secret.
3. Members, when requiring, as a condition of
approving the marketing of pharmaceutical or of agricultural chemical
products which utilize new chemical entities, the submission of
undisclosed test or other data, the origination of which involves a
considerable effort, shall protect such data against unfair commercial
use. In addition, Members shall protect such data against disclosure,
except where necessary to protect the public, or unless steps are taken
to ensure that the data are protected against unfair commercial use.
B. Interpretation and Application of
Article 39
No jurisprudence or decision of a competent
WTO body.
Section 8: Control of
Anti-Competitive
Practices in Contractual Licences
XLI. Article 40
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A. Text of Article 40
Article 40
1. Members agree that some licensing practices
or conditions pertaining to intellectual property rights which restrain
competition may have adverse effects on trade and may impede the
transfer and dissemination of technology.
2. Nothing in this Agreement shall prevent
Members from specifying in their legislation licensing practices or
conditions that may in particular cases constitute an abuse of
intellectual property rights having an adverse effect on competition in
the relevant market. As provided above, a Member may adopt, consistently
with the other provisions of this Agreement, appropriate measures to
prevent or control such practices, which may include for example
exclusive grantback conditions, conditions preventing challenges to
validity and coercive package licensing, in the light of the relevant
laws and regulations of that Member.
3. Each Member shall enter, upon request, into
consultations with any other Member which has cause to believe that an
intellectual property right owner that is a national or domiciliary of
the Member to which the request for consultations has been addressed is
undertaking practices in violation of the requesting Member’s laws and
regulations on the subject matter of this Section, and which wishes to
secure compliance with such legislation, without prejudice to any action
under the law and to the full freedom of an ultimate decision of either
Member. The Member addressed shall accord full and sympathetic
consideration to, and shall afford adequate opportunity for,
consultations with the requesting Member, and shall cooperate through
supply of publicly available non-confidential information of relevance
to the matter in question and of other information available to the
Member, subject to domestic law and to the conclusion of mutually
satisfactory agreements concerning the safeguarding of its
confidentiality by the requesting Member.
4. A Member whose nationals or domiciliaries
are subject to proceedings in another Member concerning alleged
violation of that other Member’s laws and regulations on the subject
matter of this Section shall, upon request, be granted an opportunity
for consultations by the other Member under the same conditions as those
foreseen in paragraph 3.
B. Interpretation and Application of
Article 40
No jurisprudence or decision of a competent
WTO body.
Part III: Enforcement of Intellectual
Property Rights
Section 1: General Obligations
XLII. Article 41
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A. Text of Article 41
Article 41
1. Members shall ensure that enforcement
procedures as specified in this Part are available under their law so as
to permit effective action against any act of infringement of
intellectual property rights covered by this Agreement, including
expeditious remedies to prevent infringements and remedies which
constitute a deterrent to further infringements. These procedures shall
be applied in such a manner as to avoid the creation of barriers to
legitimate trade and to provide for safeguards against their abuse.
2. Procedures concerning the enforcement of
intellectual property rights shall be fair and equitable. They shall not
be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.
3. Decisions on the merits of a case shall
preferably be in writing and reasoned. They shall be made available at
least to the parties to the proceeding without undue delay. Decisions on
the merits of a case shall be based only on evidence in respect of which
parties were offered the opportunity to be heard.
4. Parties to a proceeding shall have an
opportunity for review by a judicial authority of final administrative
decisions and, subject to jurisdictional provisions in a Member’s law
concerning the importance of a case, of at least the legal aspects of
initial judicial decisions on the merits of a case. However, there shall
be no obligation to provide an opportunity for review of acquittals in
criminal cases.
5. It is understood that this Part does not
create any obligation to put in place a judicial system for the
enforcement of intellectual property rights distinct from that for the
enforcement of law in general, nor does it affect the capacity of
Members to enforce their law in general. Nothing in this Part creates
any obligation with respect to the distribution of resources as between
enforcement of intellectual property rights and the enforcement of law
in general.
B. Interpretation and Application of
Article 41
122. In Canada
— Patent Term, the Panel
rejected Canada’s argument that, in light of a certain amount of delay
in granting patent rights, the term of protection at issue met with the
requirements under Article 33.(112) In its finding, which was subsequently
not addressed by the Appellate Body, the Panel referred to Article 41.2
as it is applied to acquisition procedures by Article
62.4:
“In our view, requiring applicants to resort
to delays such as abandonment, reinstatement, non-payment of fees and
non-response to a patent examiner’s report would be inconsistent with
the general principle that procedures not be unnecessarily complicated
as expressed in Article 41.2 and applied to acquisition procedures by
Article 62.4. By their very nature, the delays, which are not tied to
any valid reason related to the examination and grant process, would be
inconsistent with the general principle that procedures not entail ‘unwarranted
delays’ as expressed in Article 41.2 and applied to acquisition
procedures by Article 62.4.
We noted in paragraphs 6.107 and 6.108 above
that the Commissioner’s powers to reinstate and restore applications
under Section 30(2) and Section 73 were discretionary at all material
times and not available as a matter of right to patent applicants.
Canada argued, however, that despite the use of the word ‘may’ in
Section 73, the payment of the necessary fee enabled the applicant to
obtain reinstatement of his patent application as a matter of right. In
other words, had the Commissioner exercised his discretion to refuse an
application for reinstatement, an applicant would have been required to
pay an additional fee and pursue legal proceedings against the
Commissioner in a court of law in order for a term of protection
expiring 20 years from the date of filing the application to be
available. We find potential requirements that an applicant commence
proceedings for a writ of mandamus and pay additional fees to be in
breach of the general principle that procedures not be ‘unnecessarily
complicated or costly’ as expressed in Article 41.2 and applied to
acquisition procedures by Article 62.4.”(113)
Section 2: Civil and Administrative Procedures
and Remedies
XLIII. Article 42
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A. Text of Article 42
Article 42: Fair and Equitable Procedures
Members shall make available to right
holders(11) civil judicial procedures concerning the enforcement of any
intellectual property right covered by this Agreement. Defendants shall
have the right to written notice which is timely and contains sufficient
detail, including the basis of the claims. Parties shall be allowed to
be represented by independent legal counsel, and procedures shall not
impose overly burdensome requirements concerning mandatory personal
appearances. All parties to such procedures shall be duly entitled to
substantiate their claims and to present all relevant evidence. The
procedure shall provide a means to identify and protect confidential
information, unless this would be contrary to existing constitutional
requirements.
(footnote original)
11 For the purpose of
this Part, the term “right holder” includes federations and
associations having legal standing to assert such rights.
B. Interpretation and Application of
Article 42
1. “right holders”
123. In US
— Section 211 Appropriations
Act,
the Appellate Body considered that the term “right holders” included
not only persons who had been established as owners of rights but also
persons who claimed to have legal standing to assert rights:
“We agree with the Panel that the term ‘right
holders’ as used in Article 42 is not limited to persons who have been
established as owners of trademarks. Where the TRIPS Agreement confers
rights exclusively on ‘owners’ of a right, it does so in express
terms, such as in Article 16.1, which refers to the ‘owner of a
registered trademark’. By contrast, the term ‘right holders’
within the meaning of Article 42 also includes persons who claim to have
legal standing to assert rights. This interpretation is also borne out
by the fourth sentence of Article 42, which refers to ‘parties’.
Civil judicial procedures would not be fair and equitable if access to
courts were not given to both complainants and defendants who purport to
be owners of an intellectual property right.”(114)
2. Rights covered by Article 42
124. In US
— Section 211 Appropriations
Act,
the Appellate Body considered the nature of the rights covered by
Article 42:
“From all this, we understand that the
rights which Article 42 obliges Members to make available to right
holders are procedural in nature. These procedural
rights guarantee an
international minimum standard for nationals of other Members within the
meaning of Article 1.3 of the TRIPS Agreement.”
125. In US
— Section 211 Appropriations
Act,
the Appellate Body considered the situation in which a requirement of
substantive law made it impossible for a court to rule in favour of a
claim to a trademark right and found:
“There is nothing in the procedural
obligations of Article 42 that prevents a Member, in such a situation,
from legislating whether or not its courts must examine each and every
requirement of substantive law at issue before making a ruling.”(115)
126. In US
— Section 211 Appropriations
Act,
the Appellate Body applied its findings in respect of Article 42 of the
TRIPS Agreement with regard to holders of rights in trademarks and
holders of rights in trade names as well.(116)
XLIV. Article 43
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A. Text of Article 43
Article 43: Evidence
1. The judicial authorities shall have the
authority, where a party has presented reasonably available evidence
sufficient to support its claims and has specified evidence relevant to
substantiation of its claims which lies in the control of the opposing
party, to order that this evidence be produced by the opposing party,
subject in appropriate cases to conditions which ensure the protection
of confidential information.
2. In cases in which a party to a proceeding
voluntarily and without good reason refuses access to, or otherwise does
not provide necessary information within a reasonable period, or
significantly impedes a procedure relating to an enforcement action, a
Member may accord judicial authorities the authority to make preliminary
and final determinations, affirmative or negative, on the basis of the
information presented to them, including the complaint or the allegation
presented by the party adversely affected by the denial of access to
information, subject to providing the parties an opportunity to be heard
on the allegations or evidence.
B. Interpretation and Application of
Article 43
127. In India
— Patents (EC), the European
Communities claimed — similarly to the United States’ claim in the
earlier case India — Patents (US) — that India had failed to provide an
exclusive marketing system pursuant to its obligation under Article 70.9
of the TRIPS Agreement. India argued that a generally available system
was not required under Article 70.9; as support for its claim, India
pointed to the provisions of Articles 42 [sic] to
48 of the TRIPS
Agreement, where the judicial authorities of Members “shall have
authority” to order certain actions and contrasted this wording with
that of Article 70.9, which provides that marketing rights “shall be
granted” when certain conditions are met. The Panel rejected this
argument by India:
“We do not share India’s view that it can
be deduced from the use of these words in those Articles that a system
of general availability is not called for under Article
70.9. To infer
this, one would have to hold that the omission of the words ‘shall
have the authority’ in Articles 42-48 [sic] (so that a court was
required to act in a certain way when prescribed conditions were met,
rather than merely having the authority to do so) would mean that a
Member would not be expected to give its judicial authorities in advance
the authority to act in this way, for example to award an injunction,
but could legislate to this effect when a specific occasion arose. Such
an inference would obviously be absurd. Rather the function of the words
‘shall have the authority’ is to address the issue of judicial
discretion, not that of general availability.”(117)
XLV. Article 44
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A. Text of Article 44
Article 44: Injunctions
1. The judicial authorities shall have the
authority to order a party to desist from an infringement, inter alia to
prevent the entry into the channels of commerce in their jurisdiction of
imported goods that involve the infringement of an intellectual property
right, immediately after customs clearance of such goods. Members are
not obliged to accord such authority in respect of protected subject
matter acquired or ordered by a person prior to knowing or having
reasonable grounds to know that dealing in such subject matter would
entail the infringement of an intellectual property right.
2. Notwithstanding the other provisions of
this Part and provided that the provisions of Part II specifically
addressing use by governments, or by third parties authorized by a
government, without the authorization of the right holder are complied
with, Members may limit the remedies available against such use to
payment of remuneration in accordance with subparagraph (h) of Article
31. In other cases, the remedies under this Part shall apply or, where
these remedies are inconsistent with a Member’s law, declaratory
judgments and adequate compensation shall be available.
B. Interpretation and Application of
Article 44
128. With respect to the meaning of the words
“shall have the authority” as used in Articles
43-48, see paragraph
127 above.
XLVI. Article 45
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A. Text of Article 45
Article 45: Damages
1. The judicial authorities shall have the
authority to order the infringer to pay the right holder damages
adequate to compensate for the injury the right holder has suffered
because of an infringement of that person’s intellectual property
right by an infringer who knowingly, or with reasonable grounds to know,
engaged in infringing activity.
2. The judicial authorities shall also have
the authority to order the infringer to pay the right holder expenses,
which may include appropriate attorney’s fees. In appropriate cases,
Members may authorize the judicial authorities to order recovery of
profits and/or payment of pre-established damages even where the
infringer did not knowingly, or with reasonable grounds to know, engage
in infringing activity.
B. Interpretation and Application of
Article 45
129. With respect to the meaning of the words
“shall have the authority” as used in Articles
43-48, see paragraph
127 above.
XLVII. Article 46
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A. Text of Article 46
Article 46: Other Remedies
In order to create an effective deterrent to
infringement, the judicial authorities shall have the authority to order
that goods that they have found to be infringing be, without
compensation of any sort, disposed of outside the channels of commerce
in such a manner as to avoid any harm caused to the right holder, or,
unless this would be contrary to existing constitutional requirements,
destroyed. The judicial authorities shall also have the authority to
order that materials and implements the predominant use of which has
been in the creation of the infringing goods be, without compensation of
any sort, disposed of outside the channels of commerce in such a manner
as to minimize the risks of further infringements. In considering such
requests, the need for proportionality between the seriousness of the
infringement and the remedies ordered as well as the interests of third
parties shall be taken into account. In regard to counterfeit trademark
goods, the simple removal of the trademark unlawfully affixed shall not
be sufficient, other than in exceptional cases, to permit release of the
goods into the channels of commerce.
B. Interpretation and Application of
Article 46
130. With respect to the meaning of the words
“shall have the authority” as used in Articles
43-48, see paragraph
127 above.
XLVIII. Article 47
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A. Text of Article 47
Article 47: Right of Information
Members may provide that the judicial
authorities shall have the authority, unless this would be out of
proportion to the seriousness of the infringement, to order the
infringer to inform the right holder of the identity of third persons
involved in the production and distribution of the infringing goods or
services and of their channels of distribution.
B. Interpretation and Application of
Article 47
131. With respect to the meaning of the words
“shall have the authority” as used in Articles
43-48, see paragraph
127 above.
XLIX. Article 48
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A. Text of Article 48
Article 48: Indemnification of the Defendant
1. The judicial authorities shall have the
authority to order a party at whose request measures were taken and who
has abused enforcement procedures to provide to a party wrongfully
enjoined or restrained adequate compensation for the injury suffered
because of such abuse. The judicial authorities shall also have the
authority to order the applicant to pay the defendant expenses, which
may include appropriate attorney’s fees.
2. In respect of the administration of any law
pertaining to the protection or enforcement of intellectual property
rights, Members shall only exempt both public authorities and officials
from liability to appropriate remedial measures where actions are taken
or intended in good faith in the course of the administration of that
law.
B. Interpretation and Application of Article
48
132. With respect to the meaning of the words
“shall have the authority” as used in Articles
43-48, see paragraph
127 above.
L. Article 49
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A. Text of Article 49
Article 49: Administrative Procedures
To the extent that any civil remedy can be
ordered as a result of administrative procedures on the merits of a
case, such procedures shall conform to principles equivalent in
substance to those set forth in this Section.
B. Interpretation and Application of
Article 49
No jurisprudence or decision of a competent
WTO body.
Section 3: Provisional Measures
LI. Article 50
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A. Text of Article 50
Article 50
1. The judicial authorities shall have the
authority to order prompt and effective provisional measures:
(a) to prevent an infringement of any
intellectual property right from occurring, and in particular to prevent
the entry into the channels of commerce in their jurisdiction of goods,
including imported goods immediately after customs clearance;
(b) to preserve relevant evidence in regard to
the alleged infringement.
2. The judicial authorities shall have the
authority to adopt provisional measures inaudita altera parte where
appropriate, in particular where any delay is likely to cause
irreparable harm to the right holder, or where there is a demonstrable
risk of evidence being destroyed.
3. The judicial authorities shall have the
authority to require the applicant to provide any reasonably available
evidence in order to satisfy themselves with a sufficient degree of
certainty that the applicant is the right holder and that the applicant’s
right is being infringed or that such infringement is imminent, and to
order the applicant to provide a security or equivalent assurance
sufficient to protect the defendant and to prevent abuse.
4. Where provisional measures have been
adopted inaudita altera parte, the parties affected shall be given
notice, without delay after the execution of the measures at the latest.
A review, including a right to be heard, shall take place upon request
of the defendant with a view to deciding, within a reasonable period
after the notification of the measures, whether these measures shall be
modified, revoked or confirmed.
5. The applicant may be required to supply
other information necessary for the identification of the goods
concerned by the authority that will execute the provisional measures.
6. Without prejudice to
paragraph 4,
provisional measures taken on the basis of paragraphs 1 and
2 shall,
upon request by the defendant, be revoked or otherwise cease to have
effect, if proceedings leading to a decision on the merits of the case
are not initiated within a reasonable period, to be determined by the
judicial authority ordering the measures where a Member’s law so
permits or, in the absence of such a determination, not to exceed 20
working days or 31 calendar days, whichever is the longer.
7. Where the provisional measures are revoked
or where they lapse due to any act or omission by the applicant, or
where it is subsequently found that there has been no infringement or
threat of infringement of an intellectual property right, the judicial
authorities shall have the authority to order the applicant, upon
request of the defendant, to provide the defendant appropriate
compensation for any injury caused by these measures.
8. To the extent that any provisional measure
can be ordered as a result of administrative procedures, such procedures
shall conform to principles equivalent in substance to those set forth
in this Section.
B. Interpretation and Application of
Article 50
No jurisprudence or decision of a competent
WTO body.
Section 4: Special Requirements Related to
Border Measures(12)
(footnote original)
12 Where a Member has
dismantled substantially all controls over movement of goods across its
border with another Member with which it forms part of a customs union,
it shall not be required to apply the provisions of this Section at that
border.
LII. Article 51
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A. Text of Article 51
Article 51: Suspension of Release by Customs Authorities
Members shall, in conformity with the
provisions set out below, adopt procedures(13) to enable a right holder,
who has valid grounds for suspecting that the importation of counterfeit
trademark or pirated copyright goods(14) may take place, to lodge an
application in writing with competent authorities, administrative or
judicial, for the suspension by the customs authorities of the release
into free circulation of such goods. Members may enable such an
application to be made in respect of goods which involve other
infringements of intellectual property rights, provided that the
requirements of this Section are met. Members may also provide for
corresponding procedures concerning the suspension by the customs
authorities of the release of infringing goods destined for exportation
from their territories.
(footnote original) 13 It is understood that
there shall be no obligation to apply such procedures to imports of
goods put on the market in another country by or with the consent of the
right holder, or to goods in transit.
(footnote original) 14 For the purposes of
this Agreement:
(a) “counterfeit trademark goods” shall
mean any goods, including packaging, bearing without authorization a
trademark which is identical to the trademark validly registered in
respect of such goods, or which cannot be distinguished in its essential
aspects from such a trademark, and which thereby infringes the rights of
the owner of the trademark in question under the law of the country of
importation;
(b) “pirated copyright goods” shall mean
any goods which are copies made without the consent of the right holder
or person duly authorized by the right holder in the country of
production and which are made directly or indirectly from an article
where the making of that copy would have constituted an infringement of
a copyright or a related right under the law of the country of
importation.
B. Interpretation and Application of
Article 51
No jurisprudence or decision of a competent
WTO body.
LIII. Article 52
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A. Text of Article 52
Article 52: Application
Any right holder initiating the procedures
under Article 51 shall be required to provide adequate evidence to
satisfy the competent authorities that, under the laws of the country of
importation, there is prima facie an infringement of the right holder’s
intellectual property right and to supply a sufficiently detailed
description of the goods to make them readily recognizable by the
customs authorities. The competent authorities shall inform the
applicant within a reasonable period whether they have accepted the
application and, where determined by the competent authorities, the
period for which the customs authorities will take action.
B. Interpretation and Application of
Article 52
No jurisprudence or decision of a competent
WTO body.
LIV. Article 53
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A. Text of Article 53
Article 53: Security or Equivalent Assurance
1. The competent authorities shall have the
authority to require an applicant to provide a security or equivalent
assurance sufficient to protect the defendant and the competent
authorities and to prevent abuse. Such security or equivalent assurance
shall not unreasonably deter recourse to these procedures.
2. Where pursuant to an application under this
Section the release of goods involving industrial designs, patents,
layout-designs or undisclosed information into free circulation has been
suspended by customs authorities on the basis of a decision other than
by a judicial or other independent authority, and the period provided
for in Article 55 has expired without the granting of provisional relief
by the duly empowered authority, and provided that all other conditions
for importation have been complied with, the owner, importer, or
consignee of such goods shall be entitled to their release on the
posting of a security in an amount sufficient to protect the right
holder for any infringement. Payment of such security shall not
prejudice any other remedy available to the right holder, it being
understood that the security shall be released if the right holder fails
to pursue the right of action within a reasonable period of time.
B. Interpretation and Application of
Article 53
No jurisprudence or decision of a competent
WTO body.
LV. Article 54
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A. Text of Article 54
Article 54: Notice of Suspension
The importer and the applicant shall be
promptly notified of the suspension of the release of goods according to
Article 51.
B. Interpretation and Application of
Article 54
No jurisprudence or decision of a competent
WTO body.
LVI. Article 55
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A. Text of Article 55
Article 55: Duration of Suspension
If, within a period not exceeding 10 working
days after the applicant has been served notice of the suspension, the
customs authorities have not been informed that proceedings leading to a
decision on the merits of the case have been initiated by a party other
than the defendant, or that the duly empowered authority has taken
provisional measures prolonging the suspension of the release of the
goods, the goods shall be released, provided that all other conditions
for importation or exportation have been complied with; in appropriate
cases, this time-limit may be extended by another 10 working days. If
proceedings leading to a decision on the merits of the case have been
initiated, a review, including a right to be heard, shall take place
upon request of the defendant with a view to deciding, within a
reasonable period, whether these measures shall be modified, revoked or
confirmed. Notwithstanding the above, where the suspension of the
release of goods is carried out or continued in accordance with a
provisional judicial measure, the provisions of paragraph 6 of Article
50 shall apply.
B. Interpretation and Application of
Article 55
No jurisprudence or decision of a competent
WTO body.
LVII. Article 56
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A. Text of Article 56
Article 56: Indemnification of the Importer and of the
Owner of the Goods
Relevant authorities shall have the authority
to order the applicant to pay the importer, the consignee and the owner
of the goods appropriate compensation for any injury caused to them
through the wrongful detention of goods or through the detention of
goods released pursuant to Article 55.
B. Interpretation and Application of
Article 56
No jurisprudence or decision of a competent
WTO body.
LVIII. Article 57
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A. Text of Article 57
Article 57: Right of Inspection and Information
Without prejudice to the protection of
confidential information, Members shall provide the competent
authorities the authority to give the right holder sufficient
opportunity to have any goods detained by the customs authorities
inspected in order to substantiate the right holder’s claims. The
competent authorities shall also have authority to give the importer an
equivalent opportunity to have any such goods inspected. Where a
positive determination has been made on the merits of a case, Members
may provide the competent authorities the authority to inform the right
holder of the names and addresses of the consignor, the importer and the
consignee and of the quantity of the goods in question.
B. Interpretation and Application of
Article 57
No jurisprudence or decision of a competent
WTO body.
LIX. Article 58
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A. Text of Article 58
Article 58: Ex Officio Action
Where Members require competent authorities to
act upon their own initiative and to suspend the release of goods in
respect of which they have acquired prima facie evidence that an
intellectual property right is being infringed:
(a) the competent authorities may at any time
seek from the right holder any information that may assist them to
exercise these powers;
(b) the importer and the right holder shall be
promptly notified of the suspension. Where the importer has lodged an
appeal against the suspension with the competent authorities, the
suspension shall be subject to the conditions, mutatis mutandis, set out
at Article 55;
(c) Members shall only exempt both public
authorities and officials from liability to appropriate remedial
measures where actions are taken or intended in good faith.
B. Interpretation and Application of
Article 58
No jurisprudence or decision of a competent
WTO body.
LX. Article 59
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A. Text of Article 59
Article 59: Remedies
Without prejudice to other rights of action
open to the right holder and subject to the right of the defendant to
seek review by a judicial authority, competent authorities shall have
the authority to order the destruction or disposal of infringing goods
in accordance with the principles set out in Article
46. In regard to
counterfeit trademark goods, the authorities shall not allow the
re-exportation of the infringing goods in an unaltered state or subject
them to a different customs procedure, other than in exceptional
circumstances.
B. Interpretation and Application of
Article 59
No jurisprudence or decision of a competent
WTO body.
LXI. Article 60
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A. Text of Article 60
Article 60: De Minimis Imports
Members may exclude from the application of
the above provisions small quantities of goods of a non-commercial
nature contained in travellers’ personal luggage or sent in small
consignments.
B. Interpretation and Application of
Article 60
No jurisprudence or decision of a competent
WTO body.
Section 5: Criminal Procedures
LXII. Article 61
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A. Text of Article 61
Article 61
Members shall provide for criminal procedures
and penalties to be applied at least in cases of wilful trademark
counterfeiting or copyright piracy on a commercial scale. Remedies
available shall include imprisonment and/or monetary fines sufficient to
provide a deterrent, consistently with the level of penalties applied
for crimes of a corresponding gravity. In appropriate cases, remedies
available shall also include the seizure, forfeiture and destruction of
the infringing goods and of any materials and implements the predominant
use of which has been in the commission of the offence. Members may
provide for criminal procedures and penalties to be applied in other
cases of infringement of intellectual property rights, in particular
where they are committed wilfully and on a commercial scale.
B. Interpretation and Application of
Article 61
No jurisprudence or decision of a competent
WTO body.
Part IV: Acquisition and Maintenance of
Intellectual Property Rights and Related Inter-Partes Procedures
LXIII. Article 62
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A. Text of Article 62
Article 62
1. Members may require, as a condition of the
acquisition or maintenance of the intellectual property rights provided
for under Sections 2 through 6 of Part
II, compliance with reasonable
procedures and formalities. Such procedures and formalities shall be
consistent with the provisions of this Agreement.
2. Where the acquisition of an intellectual
property right is subject to the right being granted or registered,
Members shall ensure that the procedures for grant or registration,
subject to compliance with the substantive conditions for acquisition of
the right, permit the granting or registration of the right within a
reasonable period of time so as to avoid unwarranted curtailment of the
period of protection.
3. Article 4 of the Paris Convention (1967)
shall apply mutatis mutandis to service marks.
4. Procedures concerning the acquisition or
maintenance of intellectual property rights and, where a Member’s law
provides for such procedures, administrative revocation and inter partes
procedures such as opposition, revocation and cancellation, shall be
governed by the general principles set out in paragraphs 2 and
3 of
Article 41.
5. Final administrative decisions in any of
the procedures referred to under paragraph 4 shall be subject to review
by a judicial or quasi-judicial authority. However, there shall be no
obligation to provide an opportunity for such review of decisions in
cases of unsuccessful opposition or administrative revocation, provided
that the grounds for such procedures can be the subject of invalidation
procedures.
B. Interpretation and Application of
Article 62
133. In Canada
— Patent Term, Canada argued
that Article 33, a provision calling for a minimum patent protection
period, must be read in conjunction with Article
62.2, which recognizes
the fact that the length of the patent-granting process invariably
involves some curtailment of the period of protection. From the
interplay of these two provisions, Canada argued that Article 33
embodies a notion of “effective” protection and that Article 33 can
be complied with by making available a nominally shorter period of
protection, while taking into consideration “effective” protection
during the period of the patent approval proceedings.(118) The Appellate
Body upheld the Panel’s rejection of this argument:
“… Article 62.2 deals with procedures
relating to the acquisition of intellectual property rights. Article
62.2 does not deal with the duration of those rights once they are
acquired. Article 62.2 is of no relevance to this case. This purely
procedural Article cannot be used to modify the clear and substantive
standard set out in Article 33 so as to conjecture a new standard of ‘effective’
protection. Each Member of the WTO may well have its own subjective
judgement about what constitutes a ‘reasonable period of time’ not
only for granting patents in general, but also for granting patents in
specific sectors or fields of complexity. If Canada’s arguments were
accepted, each and every Member of the WTO would be free to adopt a term
of ‘effective’ protection for patents that, in its judgement, meets
the criteria of ‘reasonable period of time’ and ‘unwarranted
curtailment of the period of protection’, and to claim that its term
of protection is substantively ‘equivalent’ to the term of
protection envisaged by Article 33. Obviously, this cannot be what the
Members of the WTO envisaged in concluding the TRIPS Agreement. Our task
is to interpret the covered agreements harmoniously. A harmonious
interpretation of Article 33 and
Article 62.2 must regard these two
treaty provisions as distinct and separate Articles containing
obligations that must be fulfilled distinctly and separately.”(119)
134. With respect to the relationship of
Article 62.2 with Articles 1.1 and 33, see
paragraph 3 above.
Part V: Dispute Prevention and Settlement
LXIV. Article 63
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A. Text of Article 63
Article 63: Transparency
1. Laws and regulations, and final judicial
decisions and administrative rulings of general application, made
effective by a Member pertaining to the subject matter of this Agreement
(the availability, scope, acquisition, enforcement and prevention of the
abuse of intellectual property rights) shall be published, or where such
publication is not practicable made publicly available, in a national
language, in such a manner as to enable governments and right holders to
become acquainted with them. Agreements concerning the subject matter of
this Agreement which are in force between the government or a
governmental agency of a Member and the government or a governmental
agency of another Member shall also be published.
2. Members shall notify the laws and
regulations referred to in paragraph 1 to the Council for TRIPS in order
to assist that Council in its review of the operation of this Agreement.
The Council shall attempt to minimize the burden on Members in carrying
out this obligation and may decide to waive the obligation to notify
such laws and regulations directly to the Council if consultations with
WIPO on the establishment of a common register containing these laws and
regulations are successful. The Council shall also consider in this
connection any action required regarding notifications pursuant to the
obligations under this Agreement stemming from the provisions of Article
6ter of the Paris Convention (1967).
3. Each Member shall be prepared to supply, in
response to a written request from another Member, information of the
sort referred to in paragraph 1. A Member, having reason to believe that
a specific judicial decision or administrative ruling or bilateral
agreement in the area of intellectual property rights affects its rights
under this Agreement, may also request in writing to be given access to
or be informed in sufficient detail of such specific judicial decisions
or administrative rulings or bilateral agreements.
4. Nothing in paragraphs
1, 2 and 3 shall
require Members to disclose confidential information which would impede
law enforcement or otherwise be contrary to the public interest or would
prejudice the legitimate commercial interests of particular enterprises,
public or private.
B. Interpretation and Application of
Article 63
1. Article 63.2
(a) Notification requirements
135. At its meeting of 21 November 1995, the
Council for TRIPS adopted Decisions on the rules of procedure for
notification under Article 63.2,(120) including a possible format for
listing of “Other Laws and Regulations” (121) and a Checklist of
Issues on Enforcement.(122)
136. Article 2 of the Agreement between the
World Intellectual Property Organization and the World Trade
Organization contains provisions relevant to notifications and
translation of laws and regulations under Article
63.2.(123)
LXV. Article 64
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A. Text of Article 64
Article 64: Dispute Settlement
1. The provisions of
Articles XXII and XXIII
of GATT 1994 as elaborated and applied by the Dispute Settlement
Understanding shall apply to consultations and the settlement of
disputes under this Agreement except as otherwise specifically provided
herein.
2.
Subparagraphs 1(b) and 1(c) of Article
XXIII of GATT 1994 shall not apply to the settlement of disputes under
this Agreement for a period of five years from the date of entry into
force of the WTO Agreement.
3. During the time period referred to in
paragraph 2, the Council for TRIPS shall examine the scope and
modalities for complaints of the type provided for under subparagraphs
1(b) and 1(c) of Article XXIII of GATT 1994 made pursuant to this
Agreement, and submit its recommendations to the Ministerial Conference
for approval. Any decision of the Ministerial Conference to approve such
recommendations or to extend the period in paragraph 2 shall be made
only by consensus, and approved recommendations shall be effective for
all Members without further formal acceptance process.
B. Interpretation and Application of
Article 64
1. General
137. With respect to the interpretation and
application of the provisions of Articles XXII and
XXIII of the GATT
1994 as elaborated and applied by the DSU to provisions of the
TRIPS Agreement, see the Chapter on the DSU.
138. The following table lists the disputes in
which panel and/or Appellate Body reports have been adopted where the
provisions of the TRIPS Agreement were invoked:
|
|
Case Name |
Case Number |
Invoked Articles |
|
1 |
India — Patents (US) |
WT/DS50 |
Articles 27, 63, 70.8 and 70.9 |
|
2 |
Indonesia — Autos |
WT/DS54, WT/DS55, WT/DS59, WT/DS64 |
Articles 3, 20 and 65 |
|
3 |
India — Patents (EC) |
WT/DS79 |
Article 70.8(a) and 70.9 |
|
4 |
Canada — Pharmaceutical Patents |
WT/DS114 |
Articles 27, 30, 33 and 70 |
|
5 |
US — Section 110(5) Copyright Act |
WT/DS160 |
Articles 9.1 and 13 |
|
6 |
Canada — Patent Term |
WT/DS170 |
Articles 33, 62.1, 62.4, 65, 70.1 and
70.2 |
|
7 |
US — Section 211 Appropriations
Act |
WT/DS176 |
Articles 2.1, 3.1, 4, 15.1, 16.1 and 42. |
2. Article 64.3
139. On 14 November 2001, the Ministerial
Conference adopted a Decision on Implementation-Related Issues and
Concerns, which includes a moratorium for so-called “non-violation”
and “situation” complaints under the TRIPS Agreement. Paragraph 11.1
of the Decision reads as follows:
“The TRIPS Council is directed to continue
its examination of the scope and modalities for complaints of the types
provided for under subparagraphs 1(b) and
1(c) of Article XXIII of GATT
1994 and make recommendations to the Fifth Session of the Ministerial
Conference. It is agreed that, in the meantime, Members will not
initiate such complaints under the TRIPS Agreement.”(124)
Part VI: Transitional Arrangements
LXVI. Article 65
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A. Text of Article 65
Article 65: Transitional Arrangements
1. Subject to the provisions of
paragraphs 2,
3 and 4, no Member shall be obliged to apply the provisions of this
Agreement before the expiry of a general period of one year following
the date of entry into force of the WTO Agreement.
2. A developing country Member is entitled to
delay for a further period of four years the date of application, as
defined in paragraph 1, of the provisions of this Agreement other than
Articles 3, 4 and 5.
3. Any other Member which is in the process of
transformation from a centrally-planned into a market, free-enterprise
economy and which is undertaking structural reform of its intellectual
property system and facing special problems in the preparation and
implementation of intellectual property laws and regulations, may also
benefit from a period of delay as foreseen in paragraph
2.
4. To the extent that a developing country
Member is obliged by this Agreement to extend product patent protection
to areas of technology not so protectable in its territory on the
general date of application of this Agreement for that Member, as
defined in paragraph 2, it may delay the application of the provisions
on product patents of Section 5 of Part II to such areas of technology
for an additional period of five years.
5. A Member availing itself of a transitional
period under paragraphs 1, 2,
3 or 4 shall ensure that any changes in
its laws, regulations and practice made during that period do not result
in a lesser degree of consistency with the provisions of this Agreement.
B. Interpretation and Application of
Article 65
1. General
140. In Canada
— Patent Term, after upholding
the Panel’s finding that a term of protection available under the
Canadian patent law was shorter than required under Article
33, the
Appellate Body distinguished the content of TRIPS obligations from their
temporal effect:
“In conclusion, we wish to point out that
our findings in this appeal have no effect whatsoever on the
transitional arrangements found in Part VI of the TRIPS
Agreement. The
provisions in Part VI establish when obligations of the TRIPS Agreement
are to be applied by a WTO Member and not what those obligations are.
The issues raised in this appeal relate to what the obligations are, not
to when they apply.”(125)
2. Article 65.4
(a) “an additional period of five years”
141. In India
— Patents (US), the Panel linked
Articles 27 and 65:
“Article 27 requires that patents be made
available in all fields of technology, subject to certain narrow
exceptions. Article 65 provides for transitional periods for developing
countries: in general five years from the entry into force of the WTO
Agreement, i.e. 1 January 2000, and an additional five years to provide
for product patents in areas of technology not so patentable as of 1
January 2000. Thus, in such areas of technology, developing countries
are not required to provide product patent protection until 1 January
2005.”(126)
142. In India
— Patents (EC), the Panel
emphasized that its findings on the substance of the TRIPS obligations
do not relate in any way to the transition period:
“Since the matter has been addressed by
India in its arguments and caused some confusion in the previous case,
we would like to underline that the Panel’s findings do not in any way
foreshorten the transition period of until, at the latest, 1 January
2005 that India has for meeting its obligations under Articles 65.4 and
70.8(b) and (c).”(127)
3. Article 65.5
(a) “changes … do not result in a lesser
degree of consistency”
143. In Indonesia
— Autos, the Panel examined
the claim of the United States that “Indonesia is in violation of its
obligations under Article 65.5 of the TRIPS Agreement because provisions
of the National Car Programme which were introduced by Indonesia during
its transition period under the TRIPS Agreement put special requirements
on nationals of other WTO Members in respect of the use of their
trademarks which are inconsistent with the provisions of Article 20 of
the TRIPS Agreement”:
“The arguments put forward by the United
States in support of its claim [under Article
65.5] are essentially the
same as those that have been considered in paragraphs 14.277 and 14.278
above [in relation to Article 3, in conjunction with
Article 20 on use
of trademarks]. For the reasons set out in those paragraphs above, [that
these are not ‘requirements’ in the sense of Article
20] 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.”(128)
4. Relationship with other Articles
144. In Indonesia
— Autos, the Panel noted
that the transition period under Article 65.2 does not apply to
Article 3:
“[W]e note that Indonesia has been under an
obligation to apply the provisions of Article 3 since 1 January 1996,
Article 3 not benefiting from the additional four years of transition
generally provided by Article 65.2 to developing country Members.”(129)
145. The Panel in
India — Patents (US) made
clear that Article 70.8 is also one of the provisions of the TRIPS
Agreement to which the transition period of Article 65 does not apply:
“However, these transitional provisions [in
Article 65] are not applicable to Article
70.8, which ensures that, if
product patent protection is not already available for pharmaceutical
and agricultural chemical product inventions, a means must be in place
as of 1 January 1995 which allows for the entitlement to file patent
applications for such inventions and the allocation of filing and
priority dates to them so that the novelty of the inventions in question
and the priority of the applications claiming their protection can be
preserved for the purposes of determining their eligibility for
protection by a patent at the time that product patent protection will
be available for these inventions, i.e. at the latest after the expiry
of the transitional period.”(130)
146. Certain provisions of the
TRIPS Agreement
contain obligations contingent upon the applicability of Article 65 (and
66). The Panel in India — Patents (US) held with respect to
Article 70.9:
“As is the case with Article
70.8(a), the
granting of exclusive marketing rights is a special obligation linked
with the enjoyment by Members of the transitional arrangements under
Articles 65 and 66 of the Agreement.”(131)
LXVII. Article 66
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A. Text of Article 66
Article 66: Least-Developed Country Members
1. In view of the special needs and
requirements of least-developed country Members, their economic,
financial and administrative constraints, and their need for flexibility
to create a viable technological base, such Members shall not be
required to apply the provisions of this Agreement, other than Articles
3, 4 and 5, for a period of 10 years from the date of application as
defined under paragraph 1 of Article 65. The Council for TRIPS shall,
upon duly motivated request by a least-developed country Member, accord
extensions of this period.
2. Developed country Members shall provide
incentives to enterprises and institutions in their territories for the
purpose of promoting and encouraging technology transfer to
least-developed country Members in order to enable them to create a
sound and viable technological base.
B. Interpretation and Application of
Article 66
1. Article 66.1
(a) Extension of transition period
147. On 27 June 2002, the Council for TRIPS
adopted a decision extending the transition period under Article 66.1
for least-developed country Members for certain obligations with respect
to pharmaceutical products, in the following terms:
“1. Least-developed country Members will not
be obliged, with respect to pharmaceutical products, to implement or
apply Sections 5 and 7 of Part II of the TRIPS Agreement or to enforce
rights provided for under these Sections until 1 January 2016.
2. This decision is made without prejudice to
the right of least-developed country Members to seek other extensions of
the period provided for in paragraph 1 of Article 66 of the TRIPS
Agreement.”(132)
(b) Relationship with other Articles
148. With respect to the relationship of
Article 66.1 with Article 70.8(a) and 70.9, see
paragraphs 145-146 above.
2. Article 66.2
149. On 19 February 2003, the Council for
TRIPS adopted a decision establishing arrangements for the submission by
developed country Members of annual reports on their implementation of
Article 66.2 and their annual review by the Council for TRIPS.(133)
LXVIII. Article 67
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A. Text of Article 67
Article 67: Technical Cooperation
In order to facilitate the implementation of
this Agreement, developed country Members shall provide, on request and
on mutually agreed terms and conditions, technical and financial
cooperation in favour of developing and least-developed country Members.
Such cooperation shall include assistance in the preparation of laws and
regulations on the protection and enforcement of intellectual property
rights as well as on the prevention of their abuse, and shall include
support regarding the establishment or reinforcement of domestic offices
and agencies relevant to these matters, including the training of
personnel.
B. Interpretation and Application of
Article 67
150. Article 4 of the Agreement between the
World Intellectual Property Organization and the World Trade
Organization contains provisions on legal-technical assistance and
technical cooperation.(134)
Part VII: Institutional Arrangements;
Final Provisions
LXIX. Article 68
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A. Text of Article 68
Article 68: Council for Trade-Related Aspects
of Intellectual Property Rights
The Council for TRIPS shall monitor the
operation of this Agreement and, in particular, Members’ compliance
with their obligations hereunder, and shall afford Members the
opportunity of consulting on matters relating to the trade-related
aspects of intellectual property rights. It shall carry out such other
responsibilities as assigned to it by the Members, and it shall, in
particular, provide any assistance requested by them in the context of
dispute settlement procedures. In carrying out its functions, the
Council for TRIPS may consult with and seek information from any source
it deems appropriate. In consultation with WIPO, the Council shall seek
to establish, within one year of its first meeting, appropriate
arrangements for cooperation with bodies of that Organization.
B. Interpretation and Application of
Article 68
1. Rules of procedure of the Council for TRIPS
151. At its meetings of 24 May 1995 and 21
September 1995, the Council for TRIPS adopted its rules of procedure. At
its meeting on 15 November 1995, the General Council approved those
rules of procedure. (135)
2. Observer status
152. With respect to the entities that have
been granted observer status in the Council for TRIPS, see below.
(a) Organizations granted observer status
-
Food and Agriculture Organization (FAO)
-
International Monetary Fund (IMF)
-
International Union for the Protection of
New Varieties of Plants (UPOV)
-
Organization for Economic Cooperation and
Development (OECD)
-
United Nations (UN)
-
United Nations Conference on Trade and
Development (UNCTAD)
-
World Bank
-
World Customs Organization (WCO)
-
World Intellectual Property Organization (WIPO)
(b) Organizations having ad hoc observer
status
-
World Health Organization (WHO)
3. Cooperation with WIPO
153. At its meeting of 11 December 1995, the
Council for TRIPS approved the text of a proposed agreement between the
World Intellectual Property Organization and the World Trade
Organization, and agreed to submit it to the General Council for its
approval. At its meeting on 13 December 1995, the General Council
approved the proposed agreement.(136) The Agreement was signed on behalf
of the organizations on 22 December 1995 and entered into force on 1
January 1996.
LXX. Article 69
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A. Text of Article 69
Article 69: International Cooperation
Members agree to cooperate with each other
with a view to eliminating international trade in goods infringing
intellectual property rights. For this purpose, they shall establish and
notify contact points in their administrations and be ready to exchange
information on trade in infringing goods. They shall, in particular,
promote the exchange of information and cooperation between customs
authorities with regard to trade in counterfeit trademark goods and
pirated copyright goods.
B. Interpretation and Application of
Article 69
1. Notification requirements
154. At its meeting of 21 September 1995 the
Council for TRIPS adopted a common procedure for the notification of
contact points that Members had established for the purposes of Article
69.(137)
LXXI. Article 70
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A. Text of Article 70
Article 70: Protection of Existing Subject Matter
1. This Agreement does not give rise to
obligations in respect of acts which occurred before the date of
application of the Agreement for the Member in question.
2. Except as otherwise provided for in this
Agreement, this Agreement gives rise to obligations in respect of all
subject matter existing at the date of application of this Agreement for
the Member in question, and which is protected in that Member on the
said date, or which meets or comes subsequently to meet the criteria for
protection under the terms of this Agreement. In respect of this
paragraph and paragraphs 3 and 4, copyright obligations with respect to
existing works shall be solely determined under Article 18 of the Berne
Convention (1971), and obligations with respect to the rights of
producers of phonograms and performers in existing phonograms shall be
determined solely under Article 18 of the Berne Convention (1971) as
made applicable under paragraph 6 of Article 14 of this
Agreement.
3. There shall be no obligation to restore
protection to subject matter which on the date of application of this
Agreement for the Member in question has fallen into the public domain.
4. In respect of any acts in respect of
specific objects embodying protected subject matter which become
infringing under the terms of legislation in conformity with this
Agreement, and which were commenced, or in respect of which a
significant investment was made, before the date of acceptance of the
WTO Agreement by that Member, any Member may provide for a limitation of
the remedies available to the right holder as to the continued
performance of such acts after the date of application of this Agreement
for that Member. In such cases the Member shall, however, at least
provide for the payment of equitable remuneration.
5. A Member is not obliged to apply the
provisions of Article 11 and of paragraph 4 of Article 14 with respect
to originals or copies purchased prior to the date of application of
this Agreement for that Member.
6. Members shall not be required to apply
Article 31, or the requirement in paragraph 1 of Article 27 that patent
rights shall be enjoyable without discrimination as to the field of
technology, to use without the authorization of the right holder where
authorization for such use was granted by the government before the date
this Agreement became known.
7. In the case of intellectual property rights
for which protection is conditional upon registration, applications for
protection which are pending on the date of application of this
Agreement for the Member in question shall be permitted to be amended to
claim any enhanced protection provided under the provisions of this
Agreement. Such amendments shall not include new matter.
8. Where 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, that Member shall:
(a) notwithstanding the provisions of
Part VI,
provide as from the date of entry into force of the WTO Agreement a
means by which applications for patents for such inventions can be
filed;
(b) apply to these applications, as of the
date of application of this Agreement, the criteria for patentability as
laid down in this Agreement as if those criteria were being applied on
the date of filing in that Member or, where priority is available and
claimed, the priority date of the application; and
(c) provide patent protection in accordance
with this Agreement as from the grant of the patent and for the
remainder of the patent term, counted from the filing date in accordance
with Article 33 of this Agreement, for those of these applications that
meet the criteria for protection referred to in subparagraph
(b).
9. Where a product is the subject of a patent
application in a Member in accordance with paragraph
8(a), exclusive
marketing rights shall be granted, notwithstanding the provisions of
Part VI, for a period of five years after obtaining marketing approval
in that Member or until a product patent is granted or rejected in that
Member, whichever period is shorter, provided that, subsequent to the
entry into force of the WTO Agreement, a patent application has been
filed and a patent granted for that product in another Member and
marketing approval obtained in such other Member.
B. Interpretation and Application of
Article 70
1. General
(a) Relationship between Article 70.1 and 70.2
155. In Canada
— Patent Term, Canada argued
that the grant of a patent term is an integral part of the act granting
the patent in question. As such, Canada considered that the length of
the patent terms falls within the scope of the term “act” contained
in Article 70.1. From this, Canada concluded that the grant of the
patent term is part of an act which occurred before the entry into force
of the TRIPS Agreement, with the result that Article 33 did not apply.
With respect to the relationship between Article 70.1 and
70.2, Canada
argued that the phrase “except as otherwise provided for in this
Agreement” demonstrates that Article 70.2 does not apply in this
instance and that Article 70.1 takes precedence over
Article 70.2. The
Appellate Body rejected this argument:
“Like the Panel, we see Articles 70.1 and
70.2 as dealing with two distinct and separate matters. The former deals
with past ‘acts’, while the latter deals with ‘subject-matter’
existing on the applicable date of the TRIPS Agreement. Article 70.1 of
the TRIPS Agreement operates only to exclude obligations in respect of
‘acts which occurred’ before the date of application of the TRIPS
Agreement, but does not exclude rights and obligations in respect of
continuing situations. On the contrary, ‘subject matter existing …
which is protected’ is clearly a continuing situation, whether viewed
as protected inventions, or as the patent rights attached to them. ‘Subject
matter existing … which is protected’ is not within the scope of
Article 70.1, and, therefore, the ‘[e]xcept as otherwise provided for’
clause in Article 70.2 can have no application to it. Thus, for the sake
of argument, even if there is a relationship between Article 70.1 and
the opening proviso in Article 70.2, Canada’s argument with respect to
Old Act patents fails nonetheless, as we have concluded that the
continuing rights relating to Old Act patents do not fall within the
scope of Article 70.1.
We wish to point out that our interpretation
of Article 70 does not lead to a ‘retroactive’ application of the
TRIPS Agreement. Article 70.1 alone addresses ‘retroactive’
circumstances, and it excludes them generally from the scope of the
Agreement. The application of Article 33 to inventions protected under
Old Act patents is justified under Article 70.2, not
Article 70.1. A
treaty applies to existing rights, even when those rights result from
‘acts which occurred’ before the treaty entered into force.”(138)
2. Article 70.1
(a) “acts which occurred before the date of
application of the Agreement”
156. In Canada
— Patent Term, in the context
of juxtaposing the term “acts” under Article 70.1 and the term “subject-matter”
under Article 70.2, the Appellate Body held with respect to the former:
“Our main task is to give meaning to the
phrase ‘acts which occurred before the date of application’ and to
interpret Article 70.1 harmoniously with the rest of the provisions of
Article 70. We are of the view that the term ‘acts’ has been used in
Article 70.1 in its normal or ordinary sense of ‘things done’, ‘deeds’,
‘actions’ or ‘operations’. In the context of ‘acts’ falling
within the domain of intellectual property rights, the term ‘acts’
in Article 70.1 may, therefore, encompass the ‘acts’ of public
authorities (that is, governments as well as their regulatory and
administrative authorities) as well as the ‘acts’ of private or
third parties. Examples of the ‘acts’ of public authorities may
include, in the field of patents, the examination of patent
applications, the grant or rejection of a patent, the revocation or
forfeiture of a patent, the grant of a compulsory licence, the
impounding by customs authorities of goods alleged to infringe the
intellectual property rights of a holder, and the like. Examples of ‘acts’
of private or third parties may include ‘acts’ such as the filing of
a patent application, infringement or other unauthorized use of a
patent, unfair competition, or abuse of patent rights.”(139)
157. The Appellate Body then reached a
conclusion on the scope of application of Article
70.1:
“We conclude, therefore, that Article 70.1
of the TRIPS Agreement cannot be interpreted to exclude existing rights,
such as patent rights, even if such rights arose through acts which
occurred before the date of application of the TRIPS Agreement for a
Member. We, therefore, confirm the finding of the Panel that Article
70.1 does not exclude from the scope of the TRIPS Agreement Old Act
patents [i.e. Canadian patents granted on the basis of patent
applications filed before 1 October 1989] that existed on the date of
application of the TRIPS Agreement for Canada.”(140)
158. In reaching the previous conclusion, the
Appellate Body relied both on the wording of Article 70.1 and on the
object and purpose of the TRIPS Agreement:
“The ordinary meaning of the term ‘acts’
suggests that the answer to this question must be no. An ‘act’ is
something that is ‘done’, and the use of the phrase ‘acts which
occurred’ suggests that what was done is now complete or ended. This
excludes situations, including existing rights and obligations, that
have not ended. Indeed, the title of Article
70, ‘Protection of
Existing Subject Matter’, confirms contextually that the focus of
Article 70 is on bringing within the scope of the TRIPS Agreement ‘subject
matter’ which, on the date of the application of the Agreement for a
Member, is existing and which meets the relevant criteria for protection
under the Agreement.
A contrary interpretation would seriously
erode the scope of the other provisions of Article
70, especially the
explicit provisions of Article 70.2. Almost any existing situation or
right can be said to have arisen from one or more past ‘acts’. For
example, virtually all contractual and property rights could be said to
arise from ‘acts which occurred’ in the past. If the phrase ‘acts
which occurred’ were interpreted to cover all continuing situations
involving patents which were granted before the date of application of
the TRIPS Agreement for a Member, including such rights as those under
Old Act patents, then Article 70.1 would preclude the application of
virtually the whole of the TRIPS Agreement to rights conferred by the
patents arising from such ‘acts’. This is not consistent with the
object and purpose of the TRIPS Agreement, as reflected in the Preamble
of the Agreement.”(141)
3. Article 70.2
(a) “subject matter existing at the date of
application of this Agreement”
159. In Canada
— Patent Term, the Appellate
Body distinguished clearly between the term “acts” within Article
70.1 and the term “subject-matter” under Article
70.2. With respect
to the latter term, the Appellate Body relied, inter alia, on the use of
the term in other provisions of the TRIPS Agreement:
“We agree with the Panel’s reasoning that
‘subject matter’ in Article 70.2 refers, in the case of patents, to
inventions. The ordinary meaning of the term ‘subject-matter’ is a
‘topic dealt with or the subject represented in a debate, exposition,
or work of art’. Useful context is provided by the qualification of
the term ‘subject matter’, in the same sentence of Article
70.2, by
the word ‘protected’, as well as by the phrase ‘meet the criteria
for protection under the terms of this Agreement’ appearing later in
the same sentence. As noted earlier, the title to Article 70 also uses
the words ‘Protection of Existing Subject Matter’. We can deduce,
therefore, that the ‘subject matter’, for purposes of Article
70.2,
is that which is ‘protected’, or ‘meets the criteria for
protection’, under the terms of the TRIPS Agreement. As, in the
present case, patents are the means of protection, then whatever patents
protect must be the ‘subject matter’ to which Article 70.2 refers.
Articles 27,
28, 31 and
34 of the TRIPS
Agreement also use the words ‘subject-matter’ with respect to
patents and provide an equally useful context for interpretation.
Article 27, entitled ‘Patentable Subject-matter’, states: ‘patents
shall be available for any inventions’ …. This Article identifies
the criteria that an invention must fulfill in order to be eligible to
receive a patent, and it also identifies the types of inventions that
may be excluded from patentability even if they meet those criteria. On
the other hand, in Articles 28, 31 and
34, the words ‘subject-matter’
relate to patents that are granted pursuant to the criteria in Article
27; that is to say, these Articles relate to inventions that are
protected by patents granted, as distinguished from the ‘patentable’
inventions to which Article 27 refers. These Articles confirm the
conclusion that inventions are the relevant ‘subject-matter’ in the
case of patents, and that the ‘subject-matter’ in Article 70.2
means, in the case of patents, patentable or patented inventions.
Article 70.2 thus gives rise to obligations in respect of all such
inventions existing on the date of application of the TRIPS Agreement
for a Member. In the appeal before us, where the measure in dispute is
Section 45 of Canada’s Patent Act, which applies to Old Act patents,
the word ‘subject-matter’ means the inventions that were protected
by those patents. We, therefore, confirm the conclusion of the Panel in
this regard.”(142)
4. Article 70.8
(a) “a means by which applications for
patents for such inventions can be filed”
160. In India
— Patents (US), in reviewing the
Panel’s finding that the patent law of India was inconsistent with
Article 70.8, the Appellate Body considered the meaning of the term “means”
within the phrase “a means by which applications for patents for such
inventions can be filed”:
“Article 70.8(a) imposes an obligation on
Members to provide ‘a means’ by which mailbox applications can be
filed ‘from the date of entry into force of the WTO Agreement’.
Thus, this obligation has been in force since 1 January 1995. The issue
before us in this appeal is not whether this obligation exists or
whether this obligation is now in force. Clearly, it exists, and,
equally clearly, it is in force now. The issue before us in this appeal
is: what precisely is the ‘means’ for filing mailbox applications
that is contemplated and required by Article
70.8(a)?
…
We believe the Panel was correct in finding
that the ‘means’ that the Member concerned is obliged to provide
under Article 70.8(a) must allow for ‘the entitlement to file mailbox
applications and the allocation of filing and priority dates to them’.
Furthermore, the Panel was correct in finding that the ‘means’
established under Article 70.8(a) must also provide ‘a sound legal
basis to preserve novelty and priority as of those dates’. These
findings flow inescapably from the necessary operation of paragraphs (b)
and (c) of Article 70.8.”(143)
161. While the term “means” was held to
include the notion of a “sound legal basis”, the Appellate Body also
found that such a “sound legal basis” did not have to provide for
complete legal certainty with respect to the future grant of the
relevant patent:
“However, we do not agree with the Panel
that Article 70.8(a) requires a Member to establish a means ‘so as to
eliminate any reasonable doubts regarding whether mailbox applications
and eventual patents based on them could be rejected or invalidated
because, at the filing or priority date, the matter for which protection
was sought was unpatentable in the country in question’. India is
entitled, by the ‘transitional arrangements’ in paragraphs
1, 2 and
4 of Article 65, to delay application of Article 27 for patents for
pharmaceutical and agricultural chemical products until 1 January 2005.
In our view, India is obliged, by Article
70.8(a), to provide a legal
mechanism for the filing of mailbox applications that provides a sound
legal basis to preserve both the novelty of the inventions and the
priority of the applications as of the relevant filing and priority
dates. No more.”(144)
5. Article 70.9
(a) “exclusive marketing rights”
162. In India
— Patents (US), reviewing the
Panel’s finding that the patent law of India was inconsistent with
Article 70.9, the Appellate Body addressed the relationship between
Article 70.8(a) and 70.9:
“By its terms, Article 70.9 applies only in
situations where a product patent application is filed under Article
70.8(a). Like Article 70.8(a), Article 70.9 applies ‘notwithstanding
the provisions of Part VI’. Article 70.9 specifically refers to
Article 70.8(a), and they operate in tandem to provide a package of
rights and obligations that apply during the transitional periods
contemplated in Article 65. It is obvious, therefore, that both
Article
70.8(a) and Article 70.9 are intended to apply as from the date of entry
into force of the WTO Agreement.”(145)
163. In India
— Patents (EC), examining the EC
claim under Article 70.9, the Panel addressed the argument by India that
Article 70.9, referring only to the grant of “exclusive marketing
rights”, should be distinguished from e.g. the phrase “patents shall
be available” under Article 27:
“India essentially repeats its arguments in
the previous case that the obligations under Article 70.9 should be
distinguished from those under other provisions of the TRIPS Agreement
because it uses the term ‘exclusive marketing rights shall be granted
…’. According to India, there is a material difference between this
expression and such other expressions as ‘patents shall be available
…’ in Article 27. We disagree. The Panel report in dispute WT/DS50 [India
— Patents (US)] points out that the term ‘right’ connotes an
entitlement to which a person has a just claim and that, as such, it
implies general, non-discretionary availability in the case of those
eligible to exercise it. It was held that an exclusive marketing right
could not be ‘granted’ in a specific case unless it was ‘available’
in the first place. The Panel’s view was upheld by the Appellate Body,
and we do not see any reason to adopt a different position in the
present case. In this connection, we would also note that India
considers that exclusive marketing rights are to be granted in response
to requests from those who are eligible. In our view, a request-based
system of rights cannot operate effectively unless there is a mechanism
in place that establishes general availability and enables such requests
to be made.”(146)
(b) Least-developed country Members
164. On 8 July 2002 the General Council
adopted a waiver of the obligations of least-developed country Members
under paragraph 9 of Article 70 with respect to pharmaceutical products
until 1 January 2016.(147)
6. Relationship with other Articles
(a) Relationship between Section 5 of Part II
and Article 70.2
165. In Canada
— Patent Term, the Appellate
Body addressed the relationship between Section 5 and Article
70.2:
“Article 70.2 applies the obligations of the
TRIPS Agreement to ‘all subject matter existing … and which is
protected’ on the date of application of the TRIPS Agreement for a
Member. A Member is required, as from that date, to implement all
obligations under the TRIPS Agreement in respect of such existing
subject matter. This includes the obligation in Article
33. We see no
basis in the text for isolating or insulating the obligation in Article
33 relating to the duration of a patent term from the other obligations
relating to patents that are also found in Section 5 of the TRIPS
Agreement. There is nothing whatsoever in Section 5 to indicate that the
obligation relating to patent term in Article 33 differs in application
in any respect from the other obligations in Section
5. An obligation
that relates to duration must necessarily have a beginning and an end
date. On that ground alone, it cannot be argued that the obligation is
attached to, and arises uniquely from, certain ‘acts’. Although
Canada has not done so, it could just as easily be argued that the
exclusive rights under Article 28 are also an ‘integral part’ of the
‘act’ of granting a patent, as those rights also can arise only from
the grant and consequent existence of a patent.”(148)
(b) Relationships between Articles 65 and 66
and Article 70.8 and 70.9
166. With respect to the relationship between
Article 65 and Article 70.8, see paragraph 145
above. With respect to
the relationship between Articles 65 and 66 and
Article 70.9, see
paragraph 146 above.
LXXII. Article 71
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A. Text of Article 71
Article 71: Review and Amendment
1. The Council for TRIPS shall review the
implementation of this Agreement after the expiration of the
transitional period referred to in paragraph 2 of Article
65. The
Council shall, having regard to the experience gained in its
implementation, review it two years after that date, and at identical
intervals thereafter. The Council may also undertake reviews in the
light of any relevant new developments which might warrant modification
or amendment of this Agreement.
2. Amendments merely serving the purpose of
adjusting to higher levels of protection of intellectual property rights
achieved, and in force, in other multilateral agreements and accepted
under those agreements by all Members of the WTO may be referred to the
Ministerial Conference for action in accordance with paragraph 6 of
Article X of the WTO Agreement on the basis of a consensus proposal from
the Council for TRIPS.
B. Interpretation and Application of
Article 71
No jurisprudence or decision of a competent
WTO body.
LXXIII. Article 72
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A. Text of Article 72
Article 72: Reservations
Reservations may not be entered in respect of
any of the provisions of this Agreement without the consent of the other
Members.
B. Interpretation and Application of
Article 72
No jurisprudence or decision of a competent
WTO body.
LXXIV. Article 73
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A. Text of Article 73
Article 73: Security Exceptions
Nothing in this Agreement shall be construed:
(a) to require a Member to furnish any
information the disclosure of which it considers contrary to its
essential security interests; or
(b) to prevent a Member from taking any action
which it considers necessary for the protection of its essential
security interests;
(i) relating to fissionable materials or the
materials from which they are derived;
(ii) relating to the traffic in arms,
ammunition and implements of war and to such traffic in other goods and
materials as is carried on directly or indirectly for the purpose of
supplying a military establishment;
(iii) taken in time of war or other emergency
in international relations; or
(c) to prevent a Member from taking any action
in pursuance of its obligations under the United Nations Charter for the
maintenance of international peace and security.
B. Interpretation and Application of
Article 73
No jurisprudence or decision of a competent
WTO body.
Footnotes:
112. With respect to the claim that an equivalent “effective”
period of protection can fulfill the requirement of Article
33, see
paragraphs 117-120
above . back to text
113. Panel Report on Canada — Patent Term, paras.
6.117-6.118. back to text
114. Appellate Body Report on US — Section 211 Appropriations
Act,
para. 217. back to text
115. Appellate Body Report on US — Section 211 Appropriations
Act,
paras. 221 and 226. back to text
116. Appellate Body Report on US — Section 211 Appropriations
Act,
paras. 222-231 and 358. back to text
117. Panel Report on India — Patents (EC), para. 7.66.
back to text
118. With respect to the claim that an equivalent “effective”
period of protection can fulfill the requirement of Article
33, see
paras. 117-120 of this Chapter. back to text
119. Appellate Body Report on Canada — Patent Term, para. 97.
back to text
120. IP/C/M/4, Section A.2.(i). The procedures can be found in Council
Decision IP/C/2. back to text
121. IP/C/M/4, Section A.2.(i). The format can be found in Decision of
the Council for TRIPS, IP/C/4. back to text
122. IP/C/M/4, Section A.2.(i). The Checklist can be found in Decision
of the Council for TRIPS, IP/C/5. back to text
123. The text of the Agreement can be found in IP/C/6.
back to text
124. The text of the Decision can be found in WT/MIN(01)/17.
back to text
125. Appellate Body Report on Canada —
Patent Term, para. 100. back to text
126. Panel Report on India — Patents (US), para. 7.27.
back to text
127. Panel Report on India — Patents (EC), para. 8.1.
back to text
128. Panel Report on Indonesia — Autos, para. 14.282.
back to text
129. Panel Report on Indonesia — Autos, para. 14.266.
back to text
130. Panel Report on India — Patents (US), para. 7.27.
back to text
131. Panel Report on India — Patents (US), para. 7.59.
back to text
132. The Council for TRIPS adopted this decision pursuant to the
instruction of the Ministerial Conference in the Declaration on the
TRIPS Agreement and Public Health (WT/MIN(01)/DEC/2, reproduced in
Section LXXVIII below). See the minutes of the Council for TRIPS’
meeting in IP/C/M/36. The text of the adopted decision can be found in
IP/C/25. At the same meeting, the Council for TRIPS approved a draft
waiver for least-developed country Members of obligations under Article
70.9 with respect to pharmaceutical products. See paragraph 164
below. back to text
133. The Council for TRIPS adopted this decision pursuant to the
instruction of the Ministerial Conference in the Declaration on the
TRIPS Agreement and Public Health (WT/MIN(01)/DEC/2, reproduced in
Section LXXVIII below). See the minutes of the Council for TRIPS’
meeting in IP/C/M/39. The text of the adopted decision can be found in
IP/C/28. back to text
134. The text of the Agreement can be found in IP/C/6.
back to text
135. IP/C/M/2, para 5; IP/C/M/3, para.2; WT/GC/M/8, para. 4. The rules
of procedure can be found in IP/C/1. back to text
136. IP/C/M/5, para.9; WT/GC/M/9, Section 1(e). The text of the
agreement can be found in IP/C/6. back to text
137. IP/C/M/3, para. 27. back to text
138. Appellate Body Report on Canada — Patent Term, paras. 69-70.
back to text
139. Appellate Body Report on Canada — Patent Term, para. 54.
back to text
140. Appellate Body Report on Canada — Patent Term,
para. 60. back to text
141. Appellate Body Report on Canada — Patent Term,
paras. 58-59. back to text
142. Appellate Body Report on Canada — Patent Term,
paras. 65-66. back to text
143. Appellate Body Report on India — Patents (US), paras. 54 and 57.
back to text
144. Appellate Body Report on India — Patents (US),
para. 58. back to text
145. Appellate Body Report on India — Patents (US), para. 82.
back to text
146. Panel Report on India — Patents (EC), para. 7.65.
back to text
147. See the minutes of the General Council meeting in WT/GC/M/75.
The text of the waiver can be found in WT/L/478. The Council for TRIPS
approved the draft waiver at its meeting on 27 June 2002. See the
minutes of its meeting in IP/C/M/36. At the same meeting, the Council
for TRIPS adopted a decision extending the transition period under
Article 66.1 for least-developed country Members for certain
obligations with respect to pharmaceutical products. See paragraph 147
above. back to text
148. Appellate Body Report on Canada — Patent Term, para. 77.
back to text
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