Voorgeschreven artikelen
international IP
WEEK 2 – Patent Law: introduction
Correa – Interpreting the flexibilities under the TRIPS Agreement
This paper by Carlos M. Correa addresses interpreting the flexibilities within the Agreement
on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement). It argues
that while the TRIPS Agreement establishes minimum standards for the protection of
intellectual property, it leaves a degree of policy space for World Trade Organization (WTO)
members, both developed and developing countries, to implement the Agreement's
provisions in different ways, to legislate in areas not subject to these minimum standards,
and to develop legal interpretations to determine the scope and content of their obligations.
The term 'TRIPS flexibilities' encompasses these variations in the interpretation and
implementation of the TRIPS Agreement. While the term 'flexibility' appears in the Preamble
and Article 66.1 in a broader sense related to least-developed countries (LDCs), it gained
specific meaning in the context of the WTO through paragraph 4 of the Doha Declaration on
the TRIPS Agreement and Public Health. This declaration affirmed the right of WTO
members to take measures to protect public health and to interpret and implement the
TRIPS Agreement in a manner supportive of this right, particularly to promote access to
medicines for all.
The paper identifies different types of TRIPS flexibilities:
- Some relate to the scope and extent of the substantive rights to be recognized
under the Agreement
- Others concern the ways in which these rights can be enforced
- Flexibilities can also be grouped by the point in time at which members may resort
to them: during the acquisition of the right, in defining the scope of the right, and
when enforcing the right
Examples of public health-related TRIPS flexibilities mentioned include:
- Flexibility in the choice of patentability criteria
- Compulsory licenses
- Government use of patented inventions for non-commercial purposes.
- Compulsory licenses for the supply of medicines to countries with insufficient
manufacturing capacity.
- The nature of test data protection as protection against unfair competition, not
exclusive rights
- Exemptions for LDCs.
- Parallel importation.
- Pre- and post-patent grant opposition procedures.
- The use of competition law to address the misuse of IPRs.
- The Bolar exception to accelerate the entry of generic products.
- The research or experimentation exception.
- Disclosure requirements, particularly for biologics.
1
, - Flexibilities in the enforcement of IP rights
- The security exception in cases of emergency.
The paper notes that any WTO member can use TRIPS flexibilities, and both developed and
developing countries have done so. Examples include the US double-novelty standard and
the doctrine allowing US courts to deny permanent injunctions, as well as amendments to
patent laws in Canada and Germany to address the COVID-19 emergency.
The paper discusses the role of WTO jurisprudence in interpreting the TRIPS Agreement.
Despite numerous disputes, a relatively small number have reached the panel or Appellate
Body stage. While these reports have addressed the policy space available, they have only
occasionally referred to the concept of 'flexibilities' explicitly. The panel in China—
Intellectual Property Rights alluded to the 'flexibility' in defining 'commercial scale', and the
panel in Australia—Tobacco Plain Packaging referred to the Doha Declaration as a
reaffirmation of flexibilities for public health protection.
A significant portion of the paper is dedicated to the interpretation of the TRIPS Agreement,
drawing on the Vienna Convention on the Law of Treaties (VCLT).
Key principles discussed include:
- Precedential Value of GATT/WTO Jurisprudence: While not binding, such
jurisprudence can provide guidance. However, the specificity of intellectual property
rights as private rights should be considered, suggesting that exceptions in TRIPS may
not need to be read as narrowly as in general GATT/WTO jurisprudence.
- Ordinary Meaning: The ordinary meaning of treaty terms, often found in
dictionaries, is a starting point but must be considered in context and in light of the
parties' intention. The paper touches upon the debate between a 'contemporaneity'
and an 'evolutionary' approach to interpreting terms, noting the TRIPS Council's role
in reviewing new developments.
- Context: Treaty terms need to be considered in their context, including the
preambles of WTO agreements. The paper highlights the importance of carefully
choosing relevant provisions to interpret others, such as interpreting Article 27.1 in
light of Article 28.1, and Article 39.3 in light of Article 39.1. The panel in Australia—
Tobacco Plain Packaging extensively elaborated on the context of Article 20,
referring to the Preamble and Articles 7 and 8.
- Object and Purpose: While textual interpretation is primary, the 'object and purpose'
of the treaty, as reflected in Articles 7 ('Objectives') and 8 ('Principles') of the TRIPS
Agreement, is crucial for interpretation. The WTO jurisprudence has increasingly
recognized the relevance of these articles. The paper critiques the view that the
primary purpose of patent law is solely economic returns, arguing that public
interests should also be considered.
The paper also examines the legal weight of the Doha Declaration. The panel in Australia—
Tobacco Plain Packaging considered the Doha Declaration as a 'subsequent agreement'
under Article 31.3(a) of the VCLT. This view counters the argument that it was merely a
'political declaration'. The Declaration, adopted by consensus at the highest level, expresses
an agreement among members on the approach to interpreting the TRIPS Agreement,
particularly in a way that supports public health. The panel's analysis confirms that Articles 7
and 8 provide both the context and define the object and purpose of the Agreement.
2
, In conclusion, the paper emphasizes the growing recognition of TRIPS flexibilities in WTO
jurisprudence, particularly highlighted by the Australia—Tobacco Plain Packaging case. This
development is significant as it supports the idea that WTO members have the policy space
to pursue public policies like public health. The interpretation of the TRIPS Agreement's
provisions, consistent with the VCLT, will determine the extent to which these flexibilities
can be implemented without the risk of trade retaliation. The recognition of the Doha
Declaration's legal status further reinforces a pro-public health interpretation of the TRIPS
Agreement.
WEEK 3 – Patent law: scope of protection
Senftleben – Wolf in sheep’s clothing
Seminar – the seizure of goods in transit violates the international freedom
of trade
"A wolf in sheep's clothing " discusses the new exclusive right against goods in transit
introduced in the December 2015 reform of EU trade mark law, specifically Article 9(4) of
the EU Trade Mark Regulation (EUTMR) and Article 10(4) of the Trade Mark Directive (TMD).
The author, Martin Senftleben, analyzes this new right in the context of the international
guarantee of freedom of transit as set forth in Article V GATT and raises concerns about its
potential to impede international trade.
The introduction of this new right broadens the arsenal of infringement actions available to
EU trade mark holders, complementing traditional protection against confusion and dilution.
The European Commission sought to neutralize the implications of the CJEU's Philips and
Nokia judgment, which was criticized for placing too high a burden of proof on rights holders
and hindering the fight against counterfeiting. The Commission aimed to create a European
legal framework for a more effective fight against counterfeiting by allowing right holders to
invoke their EU trade mark rights even if allegedly infringing goods were not released for
free circulation in the internal market.
However, this proposal went beyond earlier recommendations, which suggested limiting
rights against goods in transit to counterfeit goods as defined by the TRIPS Agreement, and
requiring the conflicting sign to be infringing in both the transit and destination countries.
While these nuances were added to the final text of Article 9(4) EUTMR and Article 10(4)
TMD, the new provisions still allow trade mark proprietors to prevent third parties from
bringing goods bearing an identical or essentially indistinguishable mark into a Member
State without being released for free circulation there, provided these goods originate from
third countries.
This new infringement provision represents a departure from established CJEU case law,
which generally favored the freedom of transit. Cases like Rioglass, Class International, and
Montex v. Diesel established that mere transit of goods through the EU, without a
commercial act directed at EU consumers, did not constitute trade mark infringement. The
Philips and Nokia judgment further solidified this by stating that goods under a suspensive
customs procedure do not automatically infringe intellectual property rights and that
infringement only occurs if there is a commercial act directed at EU consumers. The CJEU
3
international IP
WEEK 2 – Patent Law: introduction
Correa – Interpreting the flexibilities under the TRIPS Agreement
This paper by Carlos M. Correa addresses interpreting the flexibilities within the Agreement
on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement). It argues
that while the TRIPS Agreement establishes minimum standards for the protection of
intellectual property, it leaves a degree of policy space for World Trade Organization (WTO)
members, both developed and developing countries, to implement the Agreement's
provisions in different ways, to legislate in areas not subject to these minimum standards,
and to develop legal interpretations to determine the scope and content of their obligations.
The term 'TRIPS flexibilities' encompasses these variations in the interpretation and
implementation of the TRIPS Agreement. While the term 'flexibility' appears in the Preamble
and Article 66.1 in a broader sense related to least-developed countries (LDCs), it gained
specific meaning in the context of the WTO through paragraph 4 of the Doha Declaration on
the TRIPS Agreement and Public Health. This declaration affirmed the right of WTO
members to take measures to protect public health and to interpret and implement the
TRIPS Agreement in a manner supportive of this right, particularly to promote access to
medicines for all.
The paper identifies different types of TRIPS flexibilities:
- Some relate to the scope and extent of the substantive rights to be recognized
under the Agreement
- Others concern the ways in which these rights can be enforced
- Flexibilities can also be grouped by the point in time at which members may resort
to them: during the acquisition of the right, in defining the scope of the right, and
when enforcing the right
Examples of public health-related TRIPS flexibilities mentioned include:
- Flexibility in the choice of patentability criteria
- Compulsory licenses
- Government use of patented inventions for non-commercial purposes.
- Compulsory licenses for the supply of medicines to countries with insufficient
manufacturing capacity.
- The nature of test data protection as protection against unfair competition, not
exclusive rights
- Exemptions for LDCs.
- Parallel importation.
- Pre- and post-patent grant opposition procedures.
- The use of competition law to address the misuse of IPRs.
- The Bolar exception to accelerate the entry of generic products.
- The research or experimentation exception.
- Disclosure requirements, particularly for biologics.
1
, - Flexibilities in the enforcement of IP rights
- The security exception in cases of emergency.
The paper notes that any WTO member can use TRIPS flexibilities, and both developed and
developing countries have done so. Examples include the US double-novelty standard and
the doctrine allowing US courts to deny permanent injunctions, as well as amendments to
patent laws in Canada and Germany to address the COVID-19 emergency.
The paper discusses the role of WTO jurisprudence in interpreting the TRIPS Agreement.
Despite numerous disputes, a relatively small number have reached the panel or Appellate
Body stage. While these reports have addressed the policy space available, they have only
occasionally referred to the concept of 'flexibilities' explicitly. The panel in China—
Intellectual Property Rights alluded to the 'flexibility' in defining 'commercial scale', and the
panel in Australia—Tobacco Plain Packaging referred to the Doha Declaration as a
reaffirmation of flexibilities for public health protection.
A significant portion of the paper is dedicated to the interpretation of the TRIPS Agreement,
drawing on the Vienna Convention on the Law of Treaties (VCLT).
Key principles discussed include:
- Precedential Value of GATT/WTO Jurisprudence: While not binding, such
jurisprudence can provide guidance. However, the specificity of intellectual property
rights as private rights should be considered, suggesting that exceptions in TRIPS may
not need to be read as narrowly as in general GATT/WTO jurisprudence.
- Ordinary Meaning: The ordinary meaning of treaty terms, often found in
dictionaries, is a starting point but must be considered in context and in light of the
parties' intention. The paper touches upon the debate between a 'contemporaneity'
and an 'evolutionary' approach to interpreting terms, noting the TRIPS Council's role
in reviewing new developments.
- Context: Treaty terms need to be considered in their context, including the
preambles of WTO agreements. The paper highlights the importance of carefully
choosing relevant provisions to interpret others, such as interpreting Article 27.1 in
light of Article 28.1, and Article 39.3 in light of Article 39.1. The panel in Australia—
Tobacco Plain Packaging extensively elaborated on the context of Article 20,
referring to the Preamble and Articles 7 and 8.
- Object and Purpose: While textual interpretation is primary, the 'object and purpose'
of the treaty, as reflected in Articles 7 ('Objectives') and 8 ('Principles') of the TRIPS
Agreement, is crucial for interpretation. The WTO jurisprudence has increasingly
recognized the relevance of these articles. The paper critiques the view that the
primary purpose of patent law is solely economic returns, arguing that public
interests should also be considered.
The paper also examines the legal weight of the Doha Declaration. The panel in Australia—
Tobacco Plain Packaging considered the Doha Declaration as a 'subsequent agreement'
under Article 31.3(a) of the VCLT. This view counters the argument that it was merely a
'political declaration'. The Declaration, adopted by consensus at the highest level, expresses
an agreement among members on the approach to interpreting the TRIPS Agreement,
particularly in a way that supports public health. The panel's analysis confirms that Articles 7
and 8 provide both the context and define the object and purpose of the Agreement.
2
, In conclusion, the paper emphasizes the growing recognition of TRIPS flexibilities in WTO
jurisprudence, particularly highlighted by the Australia—Tobacco Plain Packaging case. This
development is significant as it supports the idea that WTO members have the policy space
to pursue public policies like public health. The interpretation of the TRIPS Agreement's
provisions, consistent with the VCLT, will determine the extent to which these flexibilities
can be implemented without the risk of trade retaliation. The recognition of the Doha
Declaration's legal status further reinforces a pro-public health interpretation of the TRIPS
Agreement.
WEEK 3 – Patent law: scope of protection
Senftleben – Wolf in sheep’s clothing
Seminar – the seizure of goods in transit violates the international freedom
of trade
"A wolf in sheep's clothing " discusses the new exclusive right against goods in transit
introduced in the December 2015 reform of EU trade mark law, specifically Article 9(4) of
the EU Trade Mark Regulation (EUTMR) and Article 10(4) of the Trade Mark Directive (TMD).
The author, Martin Senftleben, analyzes this new right in the context of the international
guarantee of freedom of transit as set forth in Article V GATT and raises concerns about its
potential to impede international trade.
The introduction of this new right broadens the arsenal of infringement actions available to
EU trade mark holders, complementing traditional protection against confusion and dilution.
The European Commission sought to neutralize the implications of the CJEU's Philips and
Nokia judgment, which was criticized for placing too high a burden of proof on rights holders
and hindering the fight against counterfeiting. The Commission aimed to create a European
legal framework for a more effective fight against counterfeiting by allowing right holders to
invoke their EU trade mark rights even if allegedly infringing goods were not released for
free circulation in the internal market.
However, this proposal went beyond earlier recommendations, which suggested limiting
rights against goods in transit to counterfeit goods as defined by the TRIPS Agreement, and
requiring the conflicting sign to be infringing in both the transit and destination countries.
While these nuances were added to the final text of Article 9(4) EUTMR and Article 10(4)
TMD, the new provisions still allow trade mark proprietors to prevent third parties from
bringing goods bearing an identical or essentially indistinguishable mark into a Member
State without being released for free circulation there, provided these goods originate from
third countries.
This new infringement provision represents a departure from established CJEU case law,
which generally favored the freedom of transit. Cases like Rioglass, Class International, and
Montex v. Diesel established that mere transit of goods through the EU, without a
commercial act directed at EU consumers, did not constitute trade mark infringement. The
Philips and Nokia judgment further solidified this by stating that goods under a suspensive
customs procedure do not automatically infringe intellectual property rights and that
infringement only occurs if there is a commercial act directed at EU consumers. The CJEU
3
