URUGUAY ROUND AGREEMENT: TRIPS
Part II Standards concerning the availability, scope and use of Intellectual Property Rights
Sections 5 and 6
- PART I General Provisions and Basic Principles
- PART II Standards Concerning the Availability, Scope and Use of Intellectual Property Rights
- 1. Copyright and Related Rights
- 2. Trademarks
- 3. Geographical Indications
- 4. Industrial Designs
- 5. Patents
- 6. Layout-Designs (Topographies) of Integrated Circuits
- 7. Protection of Undisclosed Information
- 8. Control of Anti-Competitive Practices in Contractual Licences
- PART III Enforcement of Intellectual Property Rights
- 1. General Obligations
- 2. Civil and Administrative Procedures and Remedies
- 3. Provisional Measures
- 4. Special Requirements Related to Border Measures
- 5. Criminal Procedures
- PART IV Acquisition and Maintenance of Intellectual Property Rights and Related Inter-Partes Procedures
- PART V Dispute Prevention and Settlement
- PART VI Transitional Arrangements
- PART VII Institutional Arrangements; Final Provisions
- Annex and Appendix to the TRIPS Agreement
Patentable Subject Matter
1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. (5) Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.
2. Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law.
(b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. The provisions of this subparagraph shall be reviewed four years after the date of entry into force of the WTO Agreement.
the subject matter of a patent is a product, to prevent
third parties not having the owner’s consent from the
acts of: making, using, offering for sale, selling, or
importing (6) for these purposes that product;
(b) where the subject matter of a patent is a process, 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 for these purposes at least the product obtained directly by that process.
Conditions on Patent Applicants
1. Members shall require that an applicant for a patent shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention known to the inventor at the filing date or, where priority is claimed, at the priority date of the application.
Exceptions to Rights Conferred
Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.
Other Use Without Authorization of the Right Holder
Where the law of a Member allows for other use (7) of the subject matter of a patent without the authorization of the right holder, including use by the government or third parties authorized by the government, the following provisions shall be respected:
use may only be permitted if, prior to such use, the
proposed user has made efforts to obtain authorization
from the right holder on reasonable commercial terms and
conditions and that such efforts have not been successful
within a reasonable period of time. This requirement may
be waived by a Member in the case of a national emergency
or other circumstances of extreme urgency or in cases of
public non-commercial use. In situations of national
emergency or other circumstances of extreme urgency, the
right holder shall, nevertheless, be notified as soon as
reasonably practicable. In the case of public
non-commercial use, where the government or contractor,
without making a patent search, knows or has demonstrable
grounds to know that a valid patent is or will be used by
or for the government, the right holder shall be informed
scope and duration of such use shall be limited to the
purpose for which it was authorized, and in the case of
semi-conductor technology shall only be for public
non-commercial use or to remedy a practice determined
after judicial or administrative process to be
for such use shall be liable, subject to adequate
protection of the legitimate interests of the persons so
authorized, to be terminated if and when the
circumstances which led to it cease to exist and are
unlikely to recur. The competent authority shall have the
authority to review, upon motivated request, the
continued existence of these circumstances;
are not obliged to apply the conditions set forth in
subparagraphs (b) and (f) where such use is
permitted to remedy a practice determined after judicial
or administrative process to be anti-competitive. The
need to correct anti-competitive practices may be taken
into account in determining the amount of remuneration in
such cases. Competent authorities shall have the
authority to refuse termination of authorization if and
when the conditions which led to such authorization are
likely to recur;
such use is authorized to permit the exploitation of a
patent (the second patent) which cannot be
exploited without infringing another patent (the
first patent), the following additional conditions
1. The obligations of an exporting Member under Article 31(f) shall not apply with respect to the grant by it of a compulsory licence to the extent necessary for the purposes of production of a pharmaceutical product(s) and its export to an eligible importing Member(s) in accordance with the terms set out in paragraph 2 of the Annex to this Agreement.
2. Where a compulsory licence is granted by an exporting Member under the system set out in this Article and the Annex to this Agreement, adequate remuneration pursuant to Article 31(h) shall be paid in that Member taking into account the economic value to the importing Member of the use that has been authorized in the exporting Member. Where a compulsory licence is granted for the same products in the eligible importing Member, the obligation of that Member under Article 31(h) shall not apply in respect of those products for which remuneration in accordance with the first sentence of this paragraph is paid in the exporting Member.
3. With a view to harnessing economies of scale for the purposes of enhancing purchasing power for, and facilitating the local production of, pharmaceutical products: where a developing or least developed country WTO Member is a party to a regional trade agreement within the meaning of Article XXIV of the GATT 1994 and the Decision of 28 November 1979 on Differential and More Favourable Treatment Reciprocity and Fuller Participation of Developing Countries (L/4903), at least half of the current membership of which is made up of countries presently on the United Nations list of least developed countries, the obligation of that Member under Article 31(f) shall not apply to the extent necessary to enable a pharmaceutical product produced or imported under a compulsory licence in that Member to be exported to the markets of those other developing or least developed country parties to the regional trade agreement that share the health problem in question. It is understood that this will not prejudice the territorial nature of the patent rights in question.
5. This Article and the Annex to this Agreement are without prejudice to the rights, obligations and flexibilities that Members have under the provisions of this Agreement other than paragraphs (f) and (h) of Article 31, including those reaffirmed by the Declaration on the TRIPS Agreement and Public Health (WT/MIN(01)/DEC/2), and to their interpretation. They are also without prejudice to the extent to which pharmaceutical products produced under a compulsory licence can be exported under the provisions of Article 31(f).
An opportunity for judicial review of any decision to revoke or forfeit a patent shall be available.
Term of Protection
The term of protection available shall not end before the expiration of a period of twenty years counted from the filing date (8)
Process Patents: Burden of Proof
1. For the purposes of civil proceedings in respect of the infringement of the rights of the owner referred to in paragraph 1(b) of Article 28, if the subject matter of a patent is a process for obtaining a product, the judicial authorities shall have the authority to order the defendant to prove that the process to obtain an identical product is different from the patented process. Therefore, Members shall provide, in at least one of the following circumstances, that any identical product when produced without the consent of the patent owner shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process:
(b) if there is a substantial likelihood that the identical product was made by the process and the owner of the patent has been unable through reasonable efforts to determine the process actually used.
2. Any Member shall be free to provide that the burden of proof indicated in paragraph 1 shall be on the alleged infringer only if the condition referred to in subparagraph (a) is fulfilled or only if the condition referred to in subparagraph (b) is fulfilled.
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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.
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.
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.
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.
- 5. For the purposes of this Article, the terms inventive step and capable of industrial application may be deemed by a Member to be synonymous with the terms non-obvious and useful respectively. Back to text
- 6. This right, like all other rights conferred under this Agreement in respect of the use, sale, importation or other distribution of goods, is subject to the provisions of Article 6. Back to text
- 7. Other use refers to use other than that allowed under Article 30. Back to text
- 8. It is understood that those Members which do not have a system of original grant may provide that the term of protection shall be computed from the filing date in the system of original grant. Back to text
- 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. Back to text
The texts reproduced in this section do not have the legal standing of the original documents which are entrusted and kept at the WTO Secretariat in Geneva.