TRIPS

In this article, Aishwarya Kantawala who is currently pursuing M.A. IN BUSINESS LAWS, from NUJS, Kolkata, discusses Top 10 changes The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), brought to the IPR regime in India.

On 1 January 1995, The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) came into force. This was to be implemented within 6 years i.e 31 December 2000 for developed countries and within 10 years for developing countries i.e. 31 December 2004. India being a developing country had a 10-year window for such a step. As a member of the World Trade Organization since 1 January 1995 and of GATT since 8 July 1948, India was bound to comply with all the instruments and annexes of the TRIPS agreement. As a wave of change occurred in the World Trade Organization intellectual property policy, India had to follow the same to conform.[1]

The TRIPS agreement stands for ‘AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS’ this was to reduce distortions and impediments to international trade, promote effective and adequate protection of intellectual property rights, ensuring measures and procedures to enforce intellectual property rights, prevention of barriers for enforcement, facilitating legitimate trade etc.[2]  Confusion arose due to lack of principles and standards governing intellectual property rights, difference in national legal systems.

The agreement provides flexibility in Article 1 for countries to implement laws beyond what is mentioned in the agreement, as long as there is no contravention between the same. In addition, it allows the members for themselves to determine appropriate method of implementing the provisions of the Agreement within their own legal system and practice.[3] Further, Article 2 clears any doubt arising that existing obligations that such signing members have to previous conventions will not be derogated i.e. the effect of signing other treaties remains intact. [4]Article 7 contains the objective of the agreement which is for the protection and enforcement of intellectual property rights. This ought to 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.[5][6]

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The following paper will focus on the types of intellectual properties that exist in India and the relevant changes brought by the TRIPS agreement in 1995. The data will be distributed according to the kinds of Intellectual Property Rights for example, copyright, trademark, patents etc. The changes made to the 1995 existing Intellectual Property Regime in consonance with The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is as follows-

Copyright Laws

In, Part II of The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is titled standards concerning the availability, scope and use of intellectual property rights Section 1 is Copyright and Related Rights. Some important provisions are as follows, Article 9 (2) adds that Copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such. [7] Article 12 stresses upon the term of protection which other than a photographic work or a work of applied art, is calculated on a basis other than the life of a natural person, such term shall be no less than 50 years from the end of the calendar year of authorized publication, or, failing such authorized publication within 50 years from the making of the work, 50 years from the end of the calendar year of making.[8]

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  1. The amendment of digitization

The Copyright Act, 1957 was amended in 1999 to meet the requirements of the TRIPS agreement wherein Article 10 dealing with Computer Programs and Compilations of Data stated that the source or object code, shall be protected as literary works under the Berne Convention (1971), compilations of data or other material due to selection or arrangement of their contents constitute intellectual creations[9], was included. Hence, the Indian Legislature in the Copyright Act, 1957 included Section 2(d)(vi) being ‘an author means in relation to any literary, dramatic, musical or artistic work which is computer-generated, the person who causes the work to be created.’ Also, Section 2 (ffb) defined a computer as that which includes any electronic or similar device having information processing capabilities. And Section 2 (ffc) interpreting a computer programme which means a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result.[10] The changes were initiated due to the rapid increase in digitization and computer based revolution wherein intellectual property could be addressed in a different format altogether.[11]

  1. Hiring to commercial rental

Article 11 stipulates Rental Rights which shall be possessed by authors and their successors to authorize or to prohibit the commercial rental to the public of originals or copies of their copyright works. [12] On interpretation, this clearly means that the right to allow commercial usage of the said copyright work should lie with the authors and their successors as the work belongs to them. This inwardly led to amendment of Section 14 (b) (ii), Meaning of Copyright in case of a computer programme of the Copyright Act, 1957 being an addition of ‘to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer programme: Provided that such commercial rental does not apply in respect of computer programmes where the programme itself is not the essential object of the rental.’ [13] The term ‘hire in Section 14 (b) has been substituted with ‘commercial rental.’ Essentially a technocentric tide led to the evolution of computer programmes not only being considered as copyright worthy, but also for commercial usage of the same. Today, we same major software, games, documents coveted with stringent copyright protection.

Trademark Laws

Section 2 of the TRIPS agreement focused on Trademarks, Article 15 defines trademarks as 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 colors as well as any combination of such signs, shall be eligible for registration as trademarks.[14]  This brought about the definition of Trademarks in Section 2 (zb) as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors. [15] Where signs are not inherently capable of distinguishing the relevant goods or services. The agreement tried to initiate member countries to make registration of trademarks on the basis of distinctiveness, through usage with an option that signs should be visually perceptible. Further, the agreement mentioned strict compliance of registration with the provisions of The Paris Convention (1967). Article 16 (2) of the TRIPS agreement, states that Article 6 of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark. Article 16 (3) states that Article 6 of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.[16] Service marks were incorporated as trademarks in The Trademarks Act,1999

  1. The Trademarks Act, 1999

In 1958, the Trade and Merchandise Marks Act was passed, dealing with conditions for registration, procedure and duration for registration, effect, assignment, transmission, usage, rectification, certification, offences, procedures etc. in a span of 10 chapters. This was replaced by The Trademarks Act 1999 which includes protection of well-known marks, multi class registration, service marks, increasing of the renewal term of registration to 10 years, certification marks, infringements, passing-off actions etc. The act has also included provisions for the registration of trademarks for services. This is in strict compliance with Article 16 of the TRIPS agreement.

Patent Laws

The British Era brought along an interesting concept of patents wherein The Patents Act, 1970 was enacted, which prohibited product patents on medicines. The TRIPS agreement included some changes which resulted in India amending the Patents Act 1970, thrice. The first two amendments in the patent legislation occurred in the years 1999 and 2002, this was to accommodate features such as ‘exclusive marketing rights’ (EMRs) and to extend the patent protection for the 20 years respectively. In 2005, the Patents Act 1970 was amended for the third time. Immediately after this amendment the scientific, technocentric and entrepreneurial communities geared up for powerful deliberation.

The Patents (Amendment) Act, 1999 this was sparked by Article 65 which stresses that during the compliance transition period, the members availing the delay for reasons such as structural reform, preparation, implementation etc. must ensure that it does not result in inconsistency with the provisions of the agreement.[17] Indian legislators decided to amend the patent act by introducing Exclusive Marketing Rights (EMR). However, the assent of the parliament a necessary requisite was not fulfilled which led to the lapsing of this notification. India then faced a dispute from the European Union at the Dispute Settlement Body (DSB). This body passed a judgement against India following which the 1st Amendment was enacted which introduced the EMR provisions for 5 years or till the product patent is granted or patent application is rejected, whichever is earlier and the mailbox procedure for patent applications claiming pharmaceutical and agro-chemical products retrospectively from 1st January 1995. India availed this 10-year period up to December 31st of 2004, to ament its law relating to pharmaceuticals, agro-chemicals, food, microorganisms etc. [18]

  1. Patent Mailbox

The agreement includes Articles 70(8) which established a mailbox system. This is basically for countries that do not provide any product patents for pharmaceuticals and agrochemicals on January 1995 in accordance with article 27, have to provide a means for the acceptance of applications for product patents.[19] Hence, this targets countries that have inadequate or inexistent mechanisms to register product patents, and that patent appliers should not in the process of establishment of such mechanism have troubles or deficiency. Hence, these applications would be examined only from the date of January 2005 (10-year period ends) and such will be held valid in a ‘mailbox.’ The mailbox system ensures a facility for the interim protection until the product patent facility is introduced. This was a developmental step for Indian product patents. The Patents (Amendment) Act 1999, had the objective to remove exclusion of product patents in the area of food, medicine and drugs.  Section 5(2)[20] was introduced which provides for filing of applications for patent in the field of drugs, medicines and agro-chemicals. These applications were kept pending in the mailbox or black box. [21]

  1. Exclusive Marketing Rights

Article 70(9) provides for ‘exclusive marketing rights (EMR)’ to the applicants. During the transition period after the compliance mandates from the TRIPS agreement, EMR’s were to be granted for 5 years from the date of which a marketing approval is obtained or on grant or rejection of the product patent, either being of lesser time. Hence, India would be granting exclusive marketing rights to applicants, 1st January 1995 onwards. The criteria for granting such rights is as follows-

  • A product patent has been granted in any WTO country
  • A patent application has been filed in any WTO country on or after January 1995
  • Marketing approval has obtained in that country
  • An application for a product patent should have been filed in India on or after January 1995 under the mailbox facility under article 70(8).[22]

This clearly means that Indian Legislators had 10 years i.e. till January 2005 to create laws for protecting product patent rights, however during this period to prevent deprivation of such future patent holder’s rights. Only if the application is mailboxed can one acquire exclusive marketable rights. During this period, the inventor of a pharmaceutical product may obtain exclusive marketing rights. Henceforth, if such future patent holders are being granted an exclusive right to distribute, sell and promote their product, this would be covered only for 5 years following which competitors would have the opportunity to take advantage of the lapse of exclusive marketing rights of future patent holders till January 2005. This eventually would prove to be contrasting to its purpose to protect such holders.

  1. European Union vs India

After the achievement of the amendment in 1999, a dispute was raised by the United States of America and the European Union, the body administering the dispute was namely, the World Trade Organisation’s Dispute Settlement Body (DSB) regarding the absence of patent protection for pharmaceutical and agricultural chemical products or formal systems in India that permit the filing of patent applications for pharmaceutical and agricultural chemical products and that provide for the grant of exclusive marketing rights for such products.[23] India put forth arguments, that obligations under international treaties did not amount to binding the domestic law, this being fallacious because member countries have to comply with every single policy formed as signatories to a particular international treaty. Further, they argued that implementation of a treaty does not require fresh legislative or executive action if existing administrative regulations or statutory or constitutional provisions permit the implementation of the treaty in question. However, India back then did not have an absolute mechanism as required internationally, further the absence of product patents for agricultural and pharmaceutical patents itself resulted in void arguments. The Panel ruled against India holding non-compliance of the obligations under Article 70(8)(a). The panel marked the absence of a system to grant of exclusive marketing rights.[24] On appeal India addressed the Appellate Body of the World Trade Organisation however it upheld the findings of the Panel.[25]

  1. Post- Dispute Amendment in 2002

After the dispute as mentioned in paragraph 6, India was let with no choice but to amend its Patents Act in 1999, this was inwardly to not attract trade sanctions and eventual international humiliation.  This led to the second amendment in 2002. The Patents (Amendment) Act, 2002 came into force on 20th May 2003. Article 27, stated the need for availability of patents for inventions in terms of products or processes within all fields of technology with certain requisites such as novelty, involves an inventive step and is capable of industrial application. [26]The inclusion of ‘inventive step’ in the TRIPS agreement, as mentioned earlier instituted the introduction of this in the Patents (Amendment) Act, 2002, Section 2 whereby clause (j)  was substituted, with clause (ja) being inventive step means a feature that makes the invention not obvious to a person skilled in the art. [27]This embodies uniqueness not always discoverable to any other person skilled in the art, making the invention distinct and unusual, this is to evict any mainstream or standard or conventional inventions i.e. it should not be ‘obvious.’

  1. Extension of term of patent

As per TRIPS, Article 33, the Term of Protection was set at twenty years counted from the filing date.[28] Consequently, Section 53, of the Patent Act was amended where the patent was to be twenty years from the date of filing of the application for the patent. Further, that the patent right due to non- payment of renewal fee or on the expiry of the term of patent would not be entitled to any protection.[29] This being a simple yet important amendment is self-explanatory, imploring the state to protect its patent holders as much as it can.

  1. Deferred Examination System

This system was introduced by the TRIPS agreement and incorporated in the Patent Act, in Section 9(b) whereby applications for patents shall not be open to the public for a period of eighteen months from the date of filing or date of priority, whichever is earlier as that a patent application would not be examined unless a request for examination is filed with the Patent Office to initiate examination proceedings.[30] The procedure to file examination proceedings requires the applicant to file a request with the patent office, and does not automatically lie as an application. Further, this eighteen-month period is open to the public for any such objections or oppositions that may have arisen as a form of infringement, ecological disaster, against public order, against morals etc. Essentially, just like in the case of any other trademarks such period is available to invite public involvement.

  1. Patentability of Microorganisms

Microorganisms were made patentable according to the TRIPS Agreement. India’s patent law introduced in second chapter being ‘Inventions Not Patentable’ Section 3, clause (j) whereby plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals; [31]Hence, by excluding microorganisms from what is not patentable, microorganisms were automatically patentable in India from 2002.

  1. Seeking of permission of Indian residents to patent outside India

Section 39 was reintroduced in the Patent Act wherein residents could not apply for patents outside India without prior permission. Residents were required to seek a written permit in the manner prescribed and granted by or on behalf of the Controller. Further, the patent had to first be applied in India not less than 6 weeks before the application outside India. If the invention is relevant for defense purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government. [32]

  1. Third amendment in 2005

Lastly, there was a third amendment in 2005 being the last to be completely compliant with the TRIPS agreement, therefore Section 5 which created the mailbox for granting of product patents was deleted as now the Registry was equipped to deal with such patents. Also, exclusive marketing rights granted of 5 years was repealed. This was due to the equipped mechanism of the Patent Registry by 2005.

Although, the legislation took 10 years the last amendment was in 2005, with Patents Acts Rules, 2006 surfacing to provide wider clarity. Currently, Kolkata is the head patent office with branches in Chennai, Delhi and Mumbai. The administration is taken care of by the Controller General of Patents, Designs, Trademarks and Geographical Indications. Territorial jurisdiction lies with individual officers for receiving patent applications and is empowered to deal with all sections of Patent Act.[33]

  1. Other Legislations

The TRIPS agreement, mandated certain requirements which gave rise to the following legislations-

  1. The Designs Act, 2002[34],
  2. Geographical Indications of Goods (Registration and Protection) Act, 1999[35],
  3. Semiconductor Integrated Circuits Layout Design Act, 2000[36],
  4. The Protection of Plant and Varieties and Farmers Rights Act, 2001[37]
  5. The Biological Diversity Act, 2002.[38]

This has worked in favor of the Intellectual Property Regime in India, offering widespread understanding and mechanisms to deal with ever interesting disputes.

 

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Bibliography

  1. Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization,1869 UNTS 299; 33 ILM 1197 (1994) http://www.wipo.int/treaties/en/text.jsp?file_id=305907
  2. Malik, Parmod. “Implications of TRIPs Agreement on India with Special Reference to Pharmaceutical Sector.”Online International Interdisciplinary Research Journal VI (2013): 531-39. Nov. 2013. Web.
  3. HV, Sandhya. “INFLUENCE OF TRIPS ON INDIAN PATENT LAW.” (n.d.): n. pag. 2014. Web.
  4. Raju KD. ” WTO-TRIPS Obligations and Patent Amendments in India: A Critical Stocktaking.”Journal of Intellectual Property Rights9 (2004): 226-41. National Institute of Science Communication and Information Resources. Amity Institute of Global Legal Education and Research, 2004. Web. <http://www.niscair.res.in/sciencecommunication/researchjournals/rejour/Jipr/Fulltextsearch/2004/May 2004/JIPR-vol 9-May 2004-pp 226-241.htm>.
  5. World Trade Organization.India – Patent Protection for Pharmaceutical and Agricultural Chemical Products. Rep. no. 98-3091. WTO, 1998. Web. <https://www.wto.org/english/tratop_e/dispu_e/79r.doc>.
  6. Rill James F and Schechter Mark C, International antitrust and intellectual property harmonisation of the interface,Law and Policy in International Business, 34 (4) 2003, 783
  7. Bhattacharya Swapan K,TRIPS, Indian Patents (Amendment) Act and India’s Agenda in  the  Next Ministerial   Meeting at  Mexico (Indian Institute of Public Administration, New Delhi), 2002, p 4
  8. Bhatnagar, Jaya, and Vidisha Garg. “Patent Law in India – Intellectual Property.” Mondaq, 13 Dec. 2007. Web. <http://www.mondaq.com/india/x/54494/Patent/Patent+Law+in+India>.
  9. The Copyright Act, 1957
  10. The Patents (Amendment) Act, 1999
  11. Trademarks Act, 1999
  12. The Designs Act, 2002,
  13. Geographical Indications of Goods (Registration and Protection) Act, 1999,
  14. Semiconductor Integrated Circuits Layout Design Act, 2000
  15. The Protection of Plant and Varieties and Farmers Rights Act, 2001
  16. The Biological Diversity Act, 2002.

References 

[1] https://www.wto.org/english/thewto_e/countries_e/india_e.htm

[2] http://www.wipo.int/treaties/en/text.jsp?file_id=305907

[3] Section 1: Article 1, The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995

[4] Section 1: Article 2, The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995

[5] Section 1: Article 7, The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995

[6] Supra Note 2

[7] Section 1: Article 9, The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995

[8] Section 1: Article 12, The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995

[9] Section 1: Article 10, The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995

[10] Section 2, The Copyright Act, 1957

[11] http://www.oiirj.org/oiirj/nov-dec2013/55.pdf

[12] Section 1: Article11, The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995

[13] Section 14, The Copyright Act, 1957

[14] Section 2: Article 15, The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995

[15] Trademarks Act, 1999, Section 2 (zb) (i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark;

[16] Section 2: Article 16, The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995

[17] Section 5: Article 65, The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995

[18] http://shodhganga.inflibnet.ac.in/bitstream/10603/21666/9/chapter-vi.pdf

[19] Section 5: Article 70, The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995

[20] Section 5(2), The Patents (Amendment) Act, 1999

[21]http://www.niscair.res.in/sciencecommunication/researchjournals/rejour/Jipr/Fulltextsearch/2004/May%202004/JIPR-vol%209-May%202004-pp%20226-241.htm

[22] Supra Note 20

[23]  Panel Report in WT/DS/79, p 2 https://www.wto.org/english/tratop_e/dispu_e/79r.doc

[24]   Rill James F and Schechter Mark C, International antitrust and intellectual property harmonisation of the interface, Law and Policy in International Business, 34 (4) 2003, 783

[25] Bhattacharya Swapan K, TRIPS, Indian Patents (Amendment) Act and India’s Agenda in  the  Next Ministerial   Meeting at  Mexico (Indian Institute of Public Administration, New Delhi), 2002, p 4

[26] Section 5: Article 27, The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995

[27] Section 2, Patents (Amendment) Act, 2002

[28] Section 5: Article 33, The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995

[29] Section 53, The Patents (Amendment) Act, 1999

[30] Section 9, Patents (Amendment) Act, 2002

[31] Section 3, Patents (Amendment) Act, 2002

[32] Section 39, Patents (Amendment) Act, 2002

[33] http://www.mondaq.com/india/x/54494/Patent/Patent+Law+in+India

[34] The Designs Act, 2002

[35] Geographical Indications of Goods (Registration and Protection) Act, 1999

[36] Semiconductor Integrated Circuits Layout Design Act, 2000

[37] The Protection of Plant and Varieties and Farmers Rights Act, 2001

[38] The Biological Diversity Act, 2002.

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