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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.

For those countries on the United Nations list of least-developed countries, the transitional period is eleven years. The Agreement provides a possibility to extend the transitional period upon duly motivated request.

There are two important substantive obligations that have been effective from the entry into force of the TRIPS Agreement on 1 January 1995. One is the so-called “non-backsliding” clause in Article 65.5 which concerns changes made during the transitional period, and the other the so-called “mail-box” provision in Article 70.8 for filing patent applications for pharmaceutical and agricultural chemical products during the transitional period.

The “non-backsliding” clause in Article 65.5 forbids countries from using the transition period to reduce 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.

Special transition rules apply in the situation where a developing country did not provide product patent protection in a given area of technology, especially to pharmaceutical or agricultural chemical inventions, on the general date of application of the Agreement for that Member, i.e. in the year 2000. According to Article 65.4, such a developing country may delay the application of the TRIPS obligations on product patents to that area of technology for an additional five years (i.e. to the year 2005). However, the Agreement includes additional transitional arrangements in the situation where a country does not provide, as of the date of entry into force of the WTO Agreement, patent protection for pharmaceutical and agricultural chemical products commensurate with the TRIPS provisions. In accordance with the “mail-box” provision contained in Article 70.8, the country concerned must provide, as from the date of entry into force of the WTO Agreement, a means by which patent applications for such inventions can be filed. These applications will not need to be examined for their patentability until the country starts applying product patent protection in that area, i.e. for a developing country, at the end of the ten-year transition period. However, at that time, the application must be examined by reference to the prior art as it existed at the time the application was made. If the application is successful, product patent protection would then have to be granted for the remainder of the patent term counted from the filing date of the application. If a product that has been the subject of such a patent application 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 to tide over the gap. This is subject to a number of safeguards to ensure that the product concerned is a genuine invention: subsequent to the entry into force of the WTO Agreement, a patent application must have been filed, a patent granted and marketing approval obtained in another Member for the product in question.

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.