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Westlaw India Delivery Summary Request made by : Request made on: GNLU 18.09.2013 KANIKA Wednesday, 06 November, 2013 at 02:16 IST 1234 Cases, Legislation, UK Cases, UK Legislation, UK Journals, UK Current Awareness, EU Materials and Current Awareness WTO: patents - first IP case before WTO to enforce TRIPs Current Document 1

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European Intellectual Property Review

1997

WTO: patents - first IP case before WTO to enforce TRIPs

Charters Macdonald-Brown Subject: Intellectual property. Other related subjects: International law Keywords: Dispute resolution; Patents; World Trade Organisation Legislation: Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 Case: US Pharmaceutical and Biotechnology Trade Association v India (Unreported) (WTO) *E.I.P.R. D313 In the first intellectual property case to go through the World Trade Organization ( WTO ) dispute resolution process, the WTO has shown its willingness to enforce the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPs). The WTO dispute resolution panel, which handed down its judgment in favour of the United States on September 5, 1997, held that India had failed to comply with certain TRIPs provisions relating to patent protection. The decision, showing, as it does, that countries can, at the instigation of trade associations or affected businesses, take trade-related complaints before the WTO and win, will be a reassuring one for those businesses keen to gain better access to foreign markets, those concerned about the worldwide enforcement of their intellectual property rights, and those concerned about potential investment into WTO Member States where intellectual property rights may be valuable but are not given adequate legal protection. Facts: The trade association representing the leading pharmaceutical and biotechnology companies in the United States, concerned that India was not granting them the rights to which they were entitled under TRIPs, pressed the United States Government to complain to the WTO. The complaint was that India was not adhering to certain obligations arising by virtue of transitional provisions contained in TRIPs which grant developing countries a longer period than developed countries to phase in their TRIPs obligations. By virtue of these provisions, India does not yet provide patent protection for pharmaceutical and agricultural chemical products. Countries claiming the benefit of the transitional provisions must comply with certain requirements in respect of the relevant product. Under these requirements they are obliged to: Set up a mailbox system for the filing of patent applications : The mailbox system allows applicants to file patent applications which will then be reviewed when patent protection is in place. The applicant will, however, be able to claim the original filing or priority date and thus substantiate the novelty of the product for which the patent is being sought. Make publicly available and notify to the Council for TRIPs the specific terms and provisions relating to the handling of mailbox applications: This is to enable governments and rightholders to become acquainted with such terms and provisions. In the absence of such transparency, a mailbox system would not provide the legal security and predictability necessary to protect the legitimate expectations of WTO Member States regarding trading conditions in other WTO Member States. Provide a system of exclusive marketing rights for the product: The grant of such exclusive marketing rights is subject to a regulatory regime which requires that (1) a mailbox application in respect of the product must have been filed in the relevant country; (2) a patent application must have been filed in respect of the same product in another WTO Member State after January 1, 1995; (3) that other WTO Member State must have granted the patent and approved the marketing of the product; and (4) the country in which the mailbox application has been made must also have approved the marketing of the product.

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The panel held that India has failed to comply adequately with these obligations. Comment: The panel has made certain recommendations as to how India is to bring its laws into line with TRIPs, the objective being to give effect to the purpose of TRIPs and other WTO agreements, namely to bring about a level playing field between WTO Member States. If India fails to take suitable action within a reasonable period, it may be obliged to pay compensation to the United States. If agreement between the United States and India on the form or amount of such compensation cannot be reached, the United States may ultimately be entitled to take retaliatory trade measures, for example by *E.I.P.R. D314 suspending United States concessions in India's favour or obligations towards India in the pharmaceuticals/agricultural chemicals sector, or even under another WTO agreement. E.I.P.R. 1997, 19(12), D313-314
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