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Complaint by the United States.
On 6 May 1999, the US requested consultations with
Canada in respect of the term of protection granted to patents that were
filed in Canada before 1 October 1989. The US contended that the TRIPS
Agreement obligates Members to grant a term of protection for patents that
runs at least until twenty years after the filing date of the underlying
protection, and requires each Member to grant this minimum term to all
patents existing as of the date of the application of the Agreement to
that Member. The US alleged that under the Canadian Patent Act, the term
granted to patents issued on the basis of applications filed before 1
October 1989 is 17 years from the date on which the patent is issued. The
US contended that this situation is inconsistent with Articles 33, 65 and
70 of the TRIPS Agreement.
On 15 July 1999, the US requested the establishment of
a panel. At its meeting on 26 July 1999, the DSB deferred the
establishment of a panel.
Panel and Appellate Body proceedings
Further to a second request to establish a panel
by the US, the DSB established a panel at its meeting on 22 September
1999. On 13 October 1999, the US requested the Director-General to
determine the composition of the Panel. On 22 October 1999, the Panel was
composed. The report of the panel was circulated to Members on 5 May 2000.
The panel found that:
- pursuant to Article 70.2 of the TRIPS Agreement, Canada
was required to apply the relevant obligations of the TRIPS Agreement to
inventions protected by patents that were in force on 1 January 1996, i.e.
the date of entry into force for Canada of the TRIPS Agreement.
- Section 45 of Canada’s Patent Act does not make
available a term of protection that does not end before 20 years from the
date of filing as mandated by Article 33 of the TRIPS Agreement, thus
rejecting, inter alia, Canada’s argument that the 17-year statutory
protection under its Patent Act was effectively equivalent to the 20-year
term prescribed by the TRIPS Agreement because of average pendency periods
for patents, informal and statutory delays etc.
On 19 June 2000, Canada notified its intention to
appeal certain issues of law and legal interpretations developed by the
panel. The Appellate Body report was circulated to Members on 18 September
2000. The Appellate Body upheld all of the findings and conclusions of the
panel that were appealed.
The DSB adopted the Appellate Body report and the Panel report, as
upheld by the Appellate Body report, on 12 October 2000.
Implementation of adopted reports
At the DSB meeting of 23 October 2000, Canada
stated that it was its intention to implement the DSB’s recommendations
and rulings. Canada said that it would require a reasonable period of time
for implementation and that it would consult with the United States on
this matter. On 15 December 2000, the US requested that the reasonable
period of time for implementation by Canada be determined by binding
arbitration pursuant to Article 21.3(c) of the DSU. The arbitrator
circulated his report on 28 February 2001. He decided that the reasonable
period of time in this case was 10 months and was thus to expire on 12
At the DSB meeting of 24 July 2001, Canada informed the DSB that it had fully complied with the DSB's recommendations and rulings. On 12 July 2001, Bill S-17 had come into force. This legislation brought Canada's Patent Act into conformity with its obligations under the TRIPS Agreement.
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