1. Dr. Achim Seiler, EU-Project” Support of Yemen’s Accession to the WTO”
“Traps for TRIPs?”, Hearing before the
Yemeni Parliament on WTO Accession Issues, November 2006, Sana’a

2. Traps for TRIPs ?
TRIPS
PLUS

3. Traps for TRIPs?
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)

4. Traps for TRIPs?
FTAs
- Longer patent term (to compensate for delays in granting the patent or marketing approval),
- use claims,
- no exports of CL generics,
- data exclusivity of 5 years, CL would not override data protection
- restrictions on the grounds of CL,
- marketing approval for generics only after the patent protection has expired

5. Traps for TRIPs? FTAs WIPO Harmonization up
Should an invention show a “technical character” in order to be patentable or not (computer programs, business methods, research tools)?
Definition of inventive step linked to “general knowledge of a person skilled in the art” (handbooks)
Adoption of “a doctrine of equivalents” (inventions that are not literally described in the claim) that significantly limits the scope for inventing around
US approach: “if the allegedly infringing process or product performs substantially the same function as the invention”
German approach: not only based on functionality, but on an objective comparison of the elements that constitute the invention
Date at which the equivalence should be considered:
Date of filing
b) Date of the alleged infringement
Research Tools (and Reach through claims)

6. Traps for TRIPs? FTAs WIPO BITs
N-S investment agreements are increasingly being used as additional and /or alternative routes for enhancing and expanding the protection and enforcement of IP.
IP rights including licenses and intangible property is included in the definition of “investment” and “royalty payments” under “returns’
Enforcement obligations
Legality of measures against IP of investors could be open for challenge under the investment dispute settlement mechanism

7. Traps for TRIPs? Private Contracts FTAs WIPO BITs
Underlay IP rights with private contracts or technological means
Data rights management systems
Terminator
BS – CBD
Such contracts might never end

8. Traps for TRIPs? FTAs Private Contracts WIPO BITs Doha
Confirmation of flexibilities under TRIPs
Enhancement of flexibilities under TRIPs
31 f
31 h
2016

9. Traps for TRIPs? FTAs Private Contracts WIPO BITs Doha Side Letters
Side letters- problem of legal hierarchy
Vienna Treaty on the Interpretation of Int. Treaties
What comes first
What is more specific
Side-letters (“Doha minus”, limitations on grounds for CLs)

10. Traps for TRIPs TRIPs plus elements in the US-Moroccan FTA (selection)
- Patent protection for plants and animals
Patents for any new uses or methods of using a known product, including new uses of a known product for the treatment of humans and animals
National exhaustion
Bolar (made, used, sold) only for receiving marketing approval
Export under Bolar only for marketing approval
(no preparation of the market, no stockpiling)
Using the drug to raise capital
Authorizing publications describing product features
Circulating study results to potential licensees
Demonstrating features of the drug product at scientific meetings and trade shows
Acquiring import approval from a foreign government
Obtaining foreign patents
Manufacturing a product to generate data and creating stockpiles
Selling a product to clinical investigators at a hospital
Testing by a foreign company
Demonstrating the drug to physicians and non-physicians
Conducting consumer studies
Describing clinical trials to investors and journalists
Promoting a product to customers
Shipping a product to a potential commercial partner

11. TRIPs plus elements in the US-Moroccan FTA (selection) II
- Adjustment of the patent term for unreasonable delays in granting the patent
At least one opportunity to make amendments, corrections, and observations in connection with the applications
No best-mode requirement
No marketing of products based on marketing approval information submitted earlier for 5 years (drugs) after the granting of the earlier marketing approval
10 years in the case of agrochemicals
Waiting period independent from patent protection
Additional 3 years (renewable) waiting period in the case of the submission of new clinical information

12. TRIPs plus elements in the US-Moroccan FTA (III)
No “no-derogation formula”
Side-letters (restrictions on the space of manoevre agreed upon in the Doha Ministerial Declaration)
Host of interpretative issues relating to the legal hierarchy
No public, non-commercial use

13. Traps for TRIPs?

14. Traps for TRIPs? TRIPs & Doha Paris, Berne, Rome, Washington
Trips minus

15. Traps for TRIPs?
TRIPs
& Doha
Paris, Berne,
Rome, Washington

16. Traps for TRIPs? Keep the landscape clean!
Watch out for thunderstorms!