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Overview: the TRIPS Agreement

The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most comprehensive multilateral agreement on intellectual property.

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Other provisions 

Acquisition and maintenance of intellectual property rights and related inter partes procedures   Back to top

On the whole, the Agreement does not deal in detail with procedural questions concerning acquisition and maintenance of intellectual property rights. Part IV of the Agreement contains some general rules on these matters, the purpose of which is to ensure that unnecessary procedural difficulties in acquiring or maintaining intellectual property rights are not employed to impair the protection required by the Agreement. According to paragraph 1 of Article 62, Members may require, as a condition of the acquisition or maintenance of rights related to trademarks, geographical indications, industrial designs, patents and layout-designs, compliance with reasonable procedures and formalities. Where the acquisition of an intellectual property right is subject to the right being granted or registered, the procedures must 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 (paragraph 2). 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, must be governed by the general principles concerning decisions and review set out in paragraphs 2 and 3 of Article 41 of the Agreement (paragraph 4). Final administrative decisions in such procedures must generally be subject to review by a judicial or quasi-judicial authority (paragraph 5).

Transitional arrangements Back to top

The TRIPS Agreement gives all WTO Members transitional periods so that they can meet their obligations under it. The transitional periods, which depend on the level of development of the country concerned, are contained in Articles 65 and 66.

Developed country Members have had to comply with all of the provisions of the TRIPS Agreement since 1 January 1996. However, all Members, even those availing themselves of the longer transitional periods, have had to comply with the national treatment and MFN treatment obligation as of 1 January 1996.

For developing countries, the general transitional period was five years, i.e. until 1 January 2000. In addition, the Agreement allowed countries in transition from a centrally-planned into a market economy to delay application until 2000, if they met certain conditions.

The TRIPS Agreement provided special transition rules for a situation where a developing country did not provide product patent protection in a given area of technology on 1 January 2000. This provision was especially relevant to pharmaceutical and agricultural chemical inventions. According to Article 65.4, a developing country could delay the application of the TRIPS obligations on product patents to such areas of technology until 1 January 2005.The “non-backsliding” clause in Article 65.5 forbid developed and developing country members and members transitioning to a market economy availing themselves of transitional periods from reducing the level of protection of intellectual property in a way which would result in a lesser degree of consistency with the requirements of the Agreement.

For those countries on the United Nations list of least-developed countries, the transitional period was initially eleven years with the possibility of extension upon duly motivated request. It has been extended three times, and is now set to run until 1 July 2034, or until a member ceases to be an LDC, whichever comes first.

In the situation where patent protection is not provided for pharmaceutical and agricultural chemical products commensurate with the TRIPS provisions on scope of patentable subject matter as of 1 January 1995, Articles 70.8 and 70.9 provide for additional transitional arrangements. In accordance with the "mailbox" provision contained in Article 70.8, the country concerned is required to provide a means by which patent applications for such inventions can be filed. These applications do not need to be examined for their patentability until the country starts applying product patent protection in that area. If a product that is the subject of such a mailbox patent application in a member obtains marketing approval before the decision on the grant of the patent is taken, there is an obligation under Article 70.9 to grant exclusive marketing rights for a period of up to five years or until the patent is granted or rejected, whichever comes first.

Protection of existing subject-matter Back to top

An important aspect of the transition arrangements under the TRIPS Agreement is the provisions relating to the treatment of subject-matter already existing at the time that a Member starts applying the provisions of the Agreement. As provided in Article 70.2, the rules of the TRIPS Agreement generally apply to subject-matter existing on the date of application of the Agreement for the Member in question and which is protected in that Member on the said date. In respect of copyright and most related rights, there are additional requirements. Articles 9.1, 14.6 and 70.2 of the TRIPS Agreement oblige WTO Members to comply with Article 18 of the Berne Convention, not only in respect of the rights of authors but also in respect of the rights of performers and producers of phonograms in phonograms. Article 18 of the Berne Convention as incorporated into the TRIPS Agreement includes the so-called rule of retroactivity, according to which the Agreement applies to all works which have not yet fallen into the public domain either in the country of origin or the country where protection is claimed through the expiry of the term of protection. The provisions of Article 18 allow some transitional flexibility where a country is, as a result, taking subject-matter out of the public domain and putting it under protection, in respect of the interests of persons who have in good faith already taken steps on the basis of the material being in the public domain.