Review of the Implementation of the TRIPS
Agreement:
Article 71.1
communication
from colombia
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1 ARTICLE 71 AS AN OPPORTUNITY FOR
DIALOGUE
1. A comprehensive review of the implementation of the Agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPS Agreement) is both an
unfulfilled commitment and a necessity. Carrying out the review mandated in
Article 71[1], along with the 30th
anniversary of the TRIPS Agreement, will provide an opportunity to: i)
increase dialogue and transparency on the impact of international rules on
Intellectual Property (IP) issues; ii) start overcoming the existing impasse of
the TRIPS discussions and negotiations at the TRIPS Council; iii) support
political and technical discussions that are taking place in other forums and
settings; iv) identify/produce relevant metrics to inform better implementation
in the future.
2. Colombia considers that after 30 years of the TRIPS Agreement
implementation, a Member driven policy discussion, supported by metrics and
data, should provide the basis for a review on best practices, identification
of obstacles, potential implementation improvements, among other elements. The
discussions will provide added clarity and transparency, offer learning
experiences for every Member to enhance their strategies within the general
balance among the policy goals underlying the TRIPS agreement.
3. The World Trade Organization is a relevant forum for these
discussions, as the host of the strictest framework that binds intellectual
property laws worldwide. The valuable experience accumulated by other
International Organizations, primarily WIPO, WHO and UNCTAD should inform the
WTO discussion.
2 THE CONTEXT: 30 YEARS OF THE TRIPS
AGREEMENT
4. The TRIPS agreement entered into force on 1 January 1996. Since then, it generated significant
changes in domestic legal systems worldwide, especially but not limited to the
developing world. New legislations were enacted or updated to comply with the
requirements of the new agreement. This happened at varying speeds, depending
on accession processes or transition times, but the process of harmonizing
domestic laws to the degree required by the TRIPS Agreement (with the agreed
transition periods), thirty years from its entry into force, is now mostly
completed.
5. The TRIPS Agreement is both a menu of options and a minimum
standards treaty. Domestic legislations must choose among the alternatives
provided for by the Agreement, as long as they conform with minimum provisions.
Despite offering options, the TRIPS Agreement provides a floor of norm-setting
markedly stricter than previous multilateral Intellectual Property Agreements
in force at WIPO (and than most domestic legislations at the time of entry into
force).
6. The TRIPS Agreement has an important cumulative character:
subsequent trade agreements (whether regional or bilateral) may have increased
the level of protection of IP globally; that is, not only among the contracting
parties of such FTAs but also regarding everyone else. Further, subsequent
accession processes to the WTO elevated such minimum standards for acceding
countries (or curtailed parts of the menu of options) vis-à-vis everyone else.
As a result, the real level of protection standards today may be quite higher
in average than what the Agreement provisions entail.
7. The TRIPS Agreement included by reference (Art. 2, 9) the
substantive provisions of the WIPO Substantive Conventions (Paris, Berne, Rome
Conventions, now administered by WIPO), which form an integral part of the
TRIPS Agreement. The TRIPS Agreement then builds on top of those provisions.
Colombia would like to highlight among the most relevant changes introduced by
the WTO agreement in 1996, and that required significant changes in domestic
norm-setting, the following aspects:
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Minimum
protection periods for intellectual property rights protection (Term of
protection): e.g., such term shall be no less than 50 years from the end of the
calendar year of authorized publication, or, failing such authorized
publication within 50 years from the making of the work, 50 years from the end
of the calendar year of making. (Art.12); no less than 7 years for trademarks
(Art.18); no less than a period of twenty years counted from the filing date
(Art.33). The option to provide for a longer term is allowed by the Agreement.
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No discrimination
between productive sectors: TRIPS included a general rule in the sense that
patents shall be available and patent rights enjoyable without discrimination
as to (…) the field of technology (Art. 27.1). This means that in principle all
industrial/productive sectors must have the same IP protection regime. Unlike
before TRIPS, it appears not possible to have differentiated IP regimes for
different types of contexts in regard to different technologies and knowledge
innovations.
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A special
Most-Favoured-Nation Treatment Clause (MFN): the TRIPS Agreement MFN treatment
clause (Art.4) suggests that bilateral disciplines related to IP that are part
of a Free Trade Agreement normally become multilateral (i.e., the usual
exceptions to MFN provided for by Article XXIV of the GATT, or by Article V of
the GATS, do not apply to the TRIPS Agreement[2]). In the case of
intellectual property rights (IP), what a country gives to its treaty partner
in an FTA is normally extended to everyone else, with no exception. This is an
unusual and much stricter feature of TRIPS than common trade rules.
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The regulatory
space for compulsory licences is maintained, but under new conditions: Under
TRIPS, the regulatory space for compulsory licences as provided for example in
the WIPO-Paris Agreement on Industrial Property Art 5. Section A was
constricted with new conditions (Art. 31). In the WIPO treaties, the provision
that allowed for compulsory licencing was relatively unrestricted[3].
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Compliance and
enforcement of IP rights entailed significant changes at the domestic level:
Members were required to introduce changes to their criminal, civil,
administrative and customs systems. Under WIPO rules, Parties are allowed to
freely determine the structure and proceedings of administrative and judicial
remedies.
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The WTO Dispute
Settlement Mechanism: under TRIPS, the DSM applies to Member-to-Member disputes
regarding IP rights.
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No general public
policy exception in the TRIPS Agreement: The potential justifications for
departure from compliance are much more limited in TRIPS than in other WTO Agreements
and WIPO rules. There is no ´mirror´ exception in TRIPS for public policy
goals, as Art XX of GATT, and Article XIV of the GATS provide for goods
and services trade.
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The review clause
in article 71.1 of the TRIPS Agreement: the Agreement includes a review clause.
This type of implementation review is quite common in WTO Agreements (other
examples include Article 15.3 of the Technical Barriers to Trade (TBT)
Agreement, Article 12.7 of the Sanitary and Phytosanitary (SPS) Measures
Agreement, Article 23.1.6 of the Trade Facilitation Agreement, and Article
18 of the Agreement on Agriculture). The TRIPS review shall be conducted by the
WTO every two years (starting on the year 1998), but as of yet, none has been
accomplished.
8. In summary, the TRIPS Agreement norms provide a significantly
stricter framework than what existed under the WIPO substantive agreements,
despite its important menu of options. Moreover, TRIPS exhibits important
differences or peculiarities when compared with other WTO Agreements. The
Agreement entailed a new institutional framework, both at the international and
domestic levels, which has been described as a "watershed event".[4]
9. These provisions entailed a change of paradigm: A different version
of the balance of the triangle of policy goals associated with intellectual
property protection was achieved: i.e., the promotion of innovation on one
side; the broad access to technologies on another, and the promotion of
national competitiveness-industrial policy on the third. It must be underscored
that the TRIPS Agreement's balance is a set of normative choices that reflects
the ideas, experiences, and conditions prevalent in the early 1990s. The whole
notion of including a review clause hints at the negotiators acknowledgement
that contexts might change in time and that the permanent and periodic review
of the implementation of the agreement should remain an integral part of the
Members actions at the WTO. However, the review mechanism has not been carried
out since the TRIPS adoption. Now, after 30 years of implementation, it is just
the right time to do so.
3 PROPOSAL
10. Colombia supports to formally start the review on the implementation
of this Agreement of TRIPS.
11. We request the Secretariat to propose a Procedure for the review
process (following common practice at the TBT or SPS Committees, or other
relevant committees), to be accepted by the Members in the next Council
session, and to assist them to start their work. As a member-driven process and
supported on data, Colombia strongly encourages others to propose information,
metrics and/or parameters related to implementation for brainstorming in
informal sessions and suggests a final compilation document prepared by the
Secretariat summarizing the information, proposals, and convergences, in time
for the anniversary of the TRIPS Agreement.
12. Regarding the substantive content, Colombia aims to engage in
collaborative discussions at the WTO to identify (or produce) relevant
analytical metrics and data, which are currently non-existent, incomplete, or
not appropriately used, to better assess the implementation of the TRIPS Agreement
over the years, and better guide the discussions and domestic policymaking
process of Members. These new metrics could become part of a permanent source
of information at the TRIPS Council, at Trade Policy Reviews of individual
Members, or at the Trade Monitoring exercise by the Secretariat, among others.
For the attainment of these objectives, Colombia proposes to address
discussions on the following implementation aspects:
a._ To analyse both domestic and international concentration of
production in knowledge intensive sectors over the years, based on relevant
metrics.
b._ A global stocktake on royalties paid in and out by country for the
use of Intellectual Property Rights, as expressed in the Balance of Payments of
countries.
c._ c. A global stocktake on the
use of Compulsory Licences since 1996, with a focus on the problem of export
limitations faced by ´sandwich´ countries (not too small, not too large).
d._ A global stocktake on the residency/nationality of innovators across
Members, coupled with an examination of Patenting activity by Office of
Subsequent Filing -OSF- (to better understand who is patenting internationally
and domestically, and the incentive mechanisms that exist for innovators to go
abroad).[5]
e._ A related discussion on the exploitation of ´disclosures´ after IPRs
finish their terms of protection. As an implementation matter, are these
innovations/creations publicly available? Are they used by Members (especially
developing ones)? Are they available for training of artificial intelligence
models? (optional trigger questions).
f._ The utilization of Article 44(2) of TRIPS by WTO Members.[6]
13. These above listed items are some ideas for informal
discussions. It is our belief that these (and other) metrics, parameters
and aspects proposed by Members on the implementation of the TRIPS Agreement
since 1996 will provide a rich opportunity to brainstorm. They will also
provide everyone with relevant information and learning experiences for better
future discussions at the WTO, and for better policies at home.
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[1] The review provision of TRIPS reads as follows:
Art.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.
[2] With some exceptions to the exception, as for example "pre-dating" FTAs, when fully
notified. Footnote 3 to Article 4 of TRIPS.
[3] WIPO-Paris Convention on Industrial Property, ARTICLE 5, Section A
(2) Each country
of the Union shall have the right to take legislative measures providing for
the grant of compulsory licenses to prevent the abuses which might result from
the exercise of the exclusive rights conferred by the patent, for example,
failure to work.
(3) Forfeiture
of the patent shall not be provided for except in cases where the grant of
compulsory licenses would not have been sufficient to prevent the said abuses.
No proceedings for the forfeiture or revocation of a patent may be instituted
before the expiration of two years from the grant of the first compulsory
license.
(4) A compulsory
license may not be applied for on the ground of failure to work or insufficient
working before the expiration of a period of four years from the date of filing
of the patent application or three years from the date of the grant of the patent,
whichever period expires last; it shall be refused if the patentee justifies
his inaction by legitimate reasons. Such a compulsory license shall be
non-exclusive and shall not be transferable, even in the form of the grant of a
sub-license, except with that part of the enterprise or goodwill which exploits
such license.
[4] "The inclusion of IP rules in the international trading system
was a watershed event. Negotiated during the Uruguay Round, the 1994 Agreement
on TRIPS significantly broadened the reach of the trading regime. Prior to
TRIPS, trade rules generally focused on ´don'ts´- telling countries which
practices to avoid or scale back. […] Provided that countries respected these
don'ts, they remained free to adopt or reject any domestic policies they
wished. For example, many countries chose not to enforce IP rights - a
perfectly acceptable policy under the GATT [and/or WIPO] system. By contrast,
the TRIPS Agreement requires countries to "do" something. WTO Members
are obliged to adopt policies that protect IPRs in areas such as patents,
trademarks, and copyrights". Case
Studies in US Trade Negotiations, Vol.1, Chapter3, Charan Devereaux, Robert Z.
Lawrence, and Michael D. Watkins, 2006
[5] Given its territorial nature, patent protection only provides
exclusive rights for a patented invention within the country that grants the
patent. Thus, a patent applicant must file its patent application in each of
the countries or regions where it wishes to gain patent protection. Typically,
patent applicants would choose to first file a local application in their
country of residence. But afterwards, the great majority of applicants choose
not to go elsewhere. The Office of Subsequent Filing -OST- provides a very
useful metric to better understand the reasons and mechanisms that promote
resident innovators to "go abroad".
For a good discussion related to the COVID19 landscape of technologies,
see "Innovation and patenting activities of covid-19 vaccines in WTO
members: Analytical review of medicines patent pool (MPP) covid-19 vaccines
patent Landscape (VAXPAL)", WTO Staff Working Paper ERSD-2022-01, February
2022, Section 5.5.
[6] TRIPS Article 44.2 – Injunctions:
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.