1. The TRIPs Agreement: Main Provisions
Achim Seiler, Trade Consultant and Capacity Building Specialist, Kathmandu
EU-Project: Trade and Private Sector Development (TPSD)
TPSD is implemented by
in cooperation with
and

2. TRIPs or Traps ?
TRIPs is neither the cause of many problems nor their solution, but it is getting extremely relevant

3. TRIPs Part 1: General Provisions Part 2: IPRs Standards
Part 3: Enforcement of IPRs
Part 4: Acquisition and Maintenance of IPRs
Part 5: Dispute Prevention and Settlement
Part 6: Transitional Arrangements
Part 7: Final Provisions

4. Part 2: Standards Concerning the Availability, Scope and Use of IPRs
Copyrights and Related Rights
Trademarks
Geographical Indications
Industrial Design
Patents
Layout-Designs of Integrated Circuits
Protection of Undisclosed Information
Control of Anti-Competitive Practices in Contractual Licenses
Exclusive grantback conditions, coercive package licensing, etc.

5. Exhaustion: For the purposes of dispute settlement under this Agreement, subject to the provisions of Articles 3 and 4 nothing in this Agreement shall be used to address the issue of the exhaustion of intellectual property rights (Art.6)

6. TRIPs
& Doha
Paris, Berne,
Rome, Washington

7. PLUS
TRIPs
IPRs

8. Art. 40: Control of Anti-Competitive Practices in Contractual Licenses
1. Members agree that some licensing practices or conditions pertaining to intellectual property rights which restrain competition may have adverse effects on trade and may impede the transfer and dissemination of technology.

9. Art. 40: Control of Anti-Competitive Practices in Contractual Licenses (II)
2. Nothing in this Agreement shall prevent Members from specifying in their legislation practices or conditions that may in particular cases constitute an abuse of intellectual property rights having an adverse effect on competition in the relevant market. As provided above, a Member may adopt, consistently with the other provisions of this Agreement, appropriate measures to prevent or control such practices, which may include for example exclusive grantback conditions, conditions preventing challenges to validity and coercive package licensing, in the light of the relevant laws and regulations of that Member.

10. Objectives
Art. 7: The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations

11. Principles
Art. 8.1: Members may, in formulating or amending their laws and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socioeconomic and technological development, provided that such measures are consistent with the provisions of this Agreement

12. Principles (II)
Art. 8.2: Appropriate measures, provided that they are consistent with the provisions of this Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or to resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology

13. Main Patent Provisions: Rights Conferred
Part 2, Section 5, Art. 28:
Exclusive right to make, use, offer for sale, sell (or import) a product
Exclusive right to use a process and to use, offer for sale, sell or import for these purposes at least the product obtained directly by this process

14. Excludable from Patentability
Inventions whose commercial exploitation needs to be prevented to protect human, animal or plant life or health (Art. 27.2)
Diagnostic, therapeutic and surgical methods for treating humans or animals (27.3.a)
Plants and animals other than micro-organisms
(27.3.b)

15. Exceptions to Rights Conferred
Members may provide limited exceptions to the exclusive rights conferred by a patent (Art. 30),
such as:
Prior art
Bolar Exception
Research Exemption

16. Other Use Without Authorization of the Right Holder (a: grounds)
not limited under TRIPs:
National emergency
Extreme urgency
Public non-commercial use by the government (incl. third parties authorized by the governments)
To remedy an anti-competitive practice
Patent dependency

17. Other Use Without Authorization of the Right Holder (b: conditions)
Conditions for Compulsory Licenses:
Case-by-case approach
No voluntary license (can be waived)
Information of the right holder in case of waiver
Scope and duration shall be limited
Non-exclusive, non-assignable
Predominantly for the domestic market (31.f)
Right holder shall be paid adequate remuneration (31.h)
Subject to judicial reviews or other independent reviews by distinct higher authorities in the respective member

18. Exhaustion of Rights
For the purposes of dispute settlement under this Agreement, subject to the provisions of Articles 3 and 4, nothing in this Agreement shall be used to address the issue of the exhaustion of intellectual property rights (art. 6)

19. IPR covered Subject Matter Main fields Patents
New, Non-obvious, industrial applicability
Innovative industries, technical inventions
Trademarks
Signs or Symbols
All industries (goods and services)
Copyrights and related rights
Works of authorship, artistic performances
Printing, entertainment, software, broadcasting
Integrated Circuits
Original Layout designs
Microelectronics Industry
Sui Generis PVP protection
Plant varieties, (D,U,S)
Agriculture and Foods Industry
Trade Secrets
Secret Business information
All Industries
Industrial Designs
Ornamental Designs
Clothing , automobiles, etc.
Geographical Indications
Geographical origin of goods and services
Wines, spirits and other (food) products
Source: Unctad

20. Type of IPR not covered Subject Matter Main fields Utility Models
Functional Models/designs
Mechanical industry
Sui generis protection
Databases
Data generation, compilation, aggregation
Traditional Knowledge (and Folklore)
Farmer varieties, medicinal plants, indigenous skills
???

21. Type of IPR covered
Implications for Nepalese companies/research facilities, society, specific interest groups
Patents
Reward of state-of-the art inventions, research incentives, exclusivity of use, temporarily higher prices
Trademarks
Exclusive right to use specific signs or symbols to identify goods and services, marketing tool, border measures
Copyrights and related rights
Protection of literary and artistic works, incl. computer programs, “expression vs. idea”, border measures
Integrated Circuits
Protection of layout design and extension to the industrial articles incorporating them, no bona-fide exemption
Sui Generis PVP protection
Incentive to develop new varieties of plants, pre-condition for the import of pre-products/seeds (and export)
Trade Secrets
Protection of undisclosed information, possibly additional incentive for FDI and Technology transfer
Industrial Designs
Protection of (non-functional) designs which are new or original, incentive for artistic creation
Geographical Indications
Marketing Tool, public right (state or associations), higher prices, luxury niches, “Himalayan Coffee”

22. Implications for companies/research facilities, society
Type of IPR not covered
Implications for companies/research facilities, society
Utility models
protection of incremental/minor inventions, immediate protection, meant as second-tier patent protection for SMEs
Sui Generis
Databases
Protection of compilations of data the content of which is or is not copyrightable
Trad.Knowledge
Incentive to maintain and develop traditional knowledge, farmer varieties, beneficial ecological effects

23. Basic Conclusions
The adoption of minim standards on IPRs will put all developing countries on an equal footing in these matters. Therefore, whatever the current importance of IPRs is as determinants of FDI, technology transfer, local innovation and trade flow is, once the Agreements become fully applicable other factors (availability of skills, R&D infrastructure, macroeconomic policies, etc.) will have an overriding influence of such flows and activities.

24. Basic Conclusions (II)
The implementation of the Agreement should be accompanied by the enactment or improvement of legislation to deal with anticompetitive practices, including abuses of IPRs and restrictive practices in licensing agreements
IPRs related to incremental innovations in industry should be considered with particular care. The promotion of innovativeness and creativity certainly are essential in any developmental strategy, particularly in order to enhance international competitiveness of firms. The role of IPRs in this regards should not be only limited to `major` innovations.

25. DON’t: do nothing, just react
Basic approaches
1. imitate and catch up
2. innovate and catch up
3. wait and imitate (2nd round)
4. wait and innovate
5. don’t wait but integrate
6. act and attract
7. leap-frogging
8. provide for an innovation-friendly environment
9. provide for the instruments to prevent abuses
DON’t: do nothing, just react
bbb

26. Basic requirements Understand TRIPs comprehensively
Preserve the flexibilities under TRIPs
Avoid any TRIPs plus obligations
In potential future agreements try to incorporate and fix TRIPs flexibilities
Don’t allow Trips flexibilities to be traded off against concessions in other fields
Develop a coherent IPR policy and strategy
Use IPRs to foster your technology and industrialization strategy
Implement a strong competition law to prevent abuses
(competition-friendly, not cartel-friendly)

27. Industry tasks INNOVATE!!!
1. develop a profound understanding
2. define needs and limits
3. lobby your interests
4. cooperate with government and
legislators
5. make use of the instruments
INNOVATE!!!

28. First steps towards a consistent IP policy
Line of industry
Which IPR instruments are relevant?
Implications of TRIPs minimum standards
Leeway to mitigate negative effects
Preconditions to benefit from the system
Incentives to harnass IPRs for the technological development
Related legal and institutional environments catering for the incentives
Strong competition policy to prevent the abuse of IPRs
Learning from others

29. Thank you