1. IP Protection under the WTO
NTU Summer+
IP Protection under the WTO
Assistant Professor Tsai-Fang Chen
NCTU School of Law

2. Main Ideas What is intellectual property? Reason for IP protection?
Why IP protection under the WTO?
The effectiveness of WTO’s IP protection
The framework of TRIPS

3. Overview
IPRs
Property rights defined over intangible assets that are the result of human inventiveness and creativity
Patents
Copyrights
Trademark
Geographical indications
Principle of territoriality
Varying level of IP protection prior to TRIPS: products, process, field of technology, production and sales

4. Overview International setting, prior to the WTO Unilateral actions
Paris Convention 1883 and revisions
Patent Cooperation Treaty (PCT) want protection from other country
Berne Convention 1886
Rome Convention 1961
WIPO
Unilateral actions
Special 301
Special 301
Created by US to decide which countries on the list
Ideas of fair trade
to create some pressure on some countries

5. Negotiation to include TRIPS
Is IP appropriate for the WTO?
Resistance of the developing countries
Insistence of US, EU, Switzerland and Japan

6. Negotiations Threat Concessions Continued unilateral action
Decreased trade aid
Exclusion from GSP
Concessions
Textiles
Agriculture
Better market access

7. WTO – TRIPs Subjects: trade-related IPRs Scope: extensive Copyrights
Right of performers, producers of sound recording and broadcasting
Trademarks
Patents
Geographical Indications

8. Effectiveness of the TRIPs
Single Undertaking
Dispute Settlement
Standards: minimum levels of IP protection
Enforcement

9. Standards under the TRIPs
Define the subject-matter of protection
Provide the rights to be conferred
Flexibility: permissible exceptions to those rights
The minimum duration of protection
Berne and Paris-plus

10. Enforcement
Civil and administrative procedures and remedies, provisional measures
Special requirements related to border measures and criminal procedures
specify the procedures and remedies that must be available so that right holders can effectively enforce their rights

11. Principles of TRIPs National Treatment (NT) Most-Favoured-Nation (MFN)
Minimum Standards

12. NT Article 3 National Treatment
“Each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection of intellectual property, subject to the exceptions already provided in, respectively, the Paris Convention (1967), the Berne Convention (1971), the Rome Convention or the Treaty on Intellectual Property in Respect of Integrated Circuits.”

13. MFN Article 4 Most-Favoured-Nation Treatment
“ With regard to the protection of intellectual property, any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members.”

14. Minimum Standards Article 41.1 :
“Procedures concerning the enforcement of intellectual property rights shall be fair and equitable.”
Article 42: Fair and Equitable Procedures
“Members shall make available to right holders civil judicial procedures concerning the enforcement of any intellectual property right covered by this Agreement.

15. Protection of Copyrights
Article 9 Relation to the Berne Convention
1. Members shall comply with Articles 1 through 21 of the Berne Convention (1971) and the Appendix thereto ”
Article 10 Computer Programs and Compilations of Data
“1. Computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention (1971).”

16. Protection of Trademarks
Article 15 Protectable Subject Matter
“1.Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.”

17. Protection of Trademarks
Article 16 Rights Conferred
“1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.”

18. Protection of Trademarks
Article 17 Exceptions
“Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.”
Article 18 Term of Protection
“Initial registration, and each renewal of registration, of a trademark shall be for a term of no less than seven years.”

19. Protection of Geographical Indications
Article 22 Protection of Geographical Indications
“1. Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.”

20. Protection of Industrial Designs
Article 25 Requirements for Protection
“1. Members shall provide for the protection of independently created industrial designs that are new or original. Members may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features. Members may provide that such protection shall not extend to designs dictated essentially by technical or functional considerations.”

21. Protection of Industrial Designs
Article 26 Protection
“1. The owner of a protected industrial design shall have the right to prevent third parties not having the owner's consent from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes. “

22. Protection of Patents Article 27 Patentable Subject Matter
“1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.”

23. Concerns Are IPRs, in fact trade related? Do IPRs belong in the WTO?
Is strong global IPR protection desirable?
Winners and losers from TRIPs
Do strong IPRs promote international technology transfer?
Is TRIPs useful for development?
Forum Shifting
Regime Complexity