WIPO%20NATIONAL%20SEMINAR%20ON%20INDUSTRIAL%20PROPERTY%20AND%20ON%20THE%20IMPLEMENTATION%20OF%20TRIPS%20OBLIGATIONS%20IN%20THE%20PURSUANCE%20OF%20NATIONAL%20PUBLIC%20POLICIES%20AND%20GOALS%20Damascus,%20May%2028%20and%2029,%202008

1
WIPO NATIONAL SEMINAR ON INDUSTRIAL PROPERTY AND
ON THE IMPLEMENTATION OF TRIPS OBLIGATIONS IN THE
PURSUANCE OF NATIONAL PUBLIC POLICIES AND
GOALSDamascus, May 28 and 29, 2008

• Hindsight on the Implementation of the TRIPS
  Agreement
• WIPO Secretariat

2

• 1. Difficulties in the implementation of TRIPS
  obligations

3

• One might expect that, once the transitional
  periods had expired, WTO Members would have
  implemented all their obligations under the TRIPS
  Agreement.
• But that did not happen, because of
• Legal difficulties
• Technical difficulties
• Political difficulties

3
4

• Legal difficulties some new legal concepts
  introduced by the TRIPS Agreement were not known
  by a number of WTO Members (for example,
  geographical indications, layout-designs, test
  data, plant variety protection, and many concepts
  concerning enforcement, such as the reversal of
  the burden of proof, provisional measures, border
  measures in the field of IP)

5

• Legal difficulties Other legal difficulties
  arose from the ambiguities of TRIPS language (for
  example, grounds of revocation of patents are
  open-ended uncertainty about the meaning of the
  expression unfair commercial use has been
  misunderstood as a permission not to protect test
  data other than against disclosure)

5
6

• Technical difficulties the TRIPS Agreement
  imposed changes on a vast array of laws (civil
  laws, commercial laws, administrative laws, tax
  laws, criminal laws, sanitary laws, procedure
  laws) and many countries had problems in
  modifying all them in time

7

• Technical difficulties The notifications of
  amended laws to the TRIPS Council reveal that a
  large number of developing countries missed by
  large the general deadline of 2000 today, 8
  years later, a number of them have not yet
  implemented all or some of TRIPS obligations

7
8

• Political difficulties the TRIPS Agreement
  contains a number of provisions that some WTO
  Members refuse to accept for example
• - trademark owners should be allowed to assign
  them in gross
• - the nature of goods and services should not
  form an obstacle to the registration and
  protection of trademarks
• - additional protection to be accorded to
  geographical indications for wines and spirits

9

• Political difficulties
• - foreign patent owners should be allowed to
  exploit their inventions through importation
• - exclusions from patentability on ordre public
  or moral grounds should be established with the
  single objective of preventing the commercial
  exploitation of some inventions

9
10

• 2. Some examples of national provisions the
  TRIPS-consistency of which may be challenged

11

• In the area of patents
• The most common TRIPS-inconsistency
  discrimination as to the field of technology
• (i) Second uses only cover pharmaceutical
  products
• (ii) Extensions of patent terms are available
  mostly for pharmaceutical and agro-chemical
  inventions
• (iii) Unreasonable delays in granting patents in
  a form that curtails the rights of inventors

12

• Many countries maintain a local exploitation
  requirement
• In some countries compulsory licenses may be
  granted without prior consultation to the owner
  (ex officio licenses) in circumstances that are
  not extremely urgent or are not for the purpose
  of public non-commercial use
• Another very frequent inconsistency the
  patentability of inventions is excluded simply
  because they offend the ordre public or are
  inmoral

13

• In the area of designs
• Most countries fail to provide for a special
  procedure for registering industrial designs for
  textiles.

14

• In the area of test data
• This is an area where generalized inconsistency
  can be found. Many WTO Members have failed to
  understand the real meaning of the expression
  protection against unfair commercial use. It is
  widely believed that if a government does not
  disclose the data to a pioneers competitor, test
  data are being protected, even if the government
  uses them (or rely on them) to register an
  equivalent generic product (that is, without
  requesting the competitor to bring legitimately
  obtained data).

15

• Thank you!
• If you have questions concerning this
  presentations do not hesitate to send them to
• nuno.carvalho_at_wipo.int