Introduction - The primary function of patents: to meter inventions in arelatively accurate manner (as compared to trade secrets and public subsidies) 1
1. The two best known explanations of the functions of patents: the reward and the prospect theories 2
a) Primarily, patents are not rewards 2
b) Primarily, patents do not serve to prospect the market 6
2. The evolution of the patent system: from public subsidies (awards, privileges, and monopolies) to modern individual property rights (patents) 8
a) Awards 8
b) Privileges and monopolies 10
c) Patents: mechanisms of private appropriation of inventions 11
3. Trade secrets and patents: competing appropriation devices 15
a) Patents are more socially efficient than trade secrets insofar as they provide for a better quantification of technology and a better qualification of rights: the metering function of patents 16
b) Injunctions issued to enforce trade secret protection: a problem of uncertainty resulting from the lack of a predetermined term 18
c) Pro-competitive effects of patent disclosure 19
d) The residual social value of trade secret protection 19
4. The metering function of patents in a nutshell 20
PREAMBLE 23
1. The scope, the nature and the function of the TRIPS Agreement 24
a) The scope of the TRIPS Agreement 24
b) The dynamic dimension of the TRIPS Agreement 27
c) The nature and the function of the Agreement 28
(ⅰ) The first objective of the TRIPS Agreement: to reduce distortions and impediments to international trade 31
(ⅱ) The second objective of the TRIPS Agreement: to protect private property rights 32
2. TRIPS-intellectual property and trade 35
a) TRIPS and the GATT 38
b) The WTO and WIPO 43
3. Intellectual property and economic development 46
PART I-GENERAL PROVISIONS AND BASIC PRINCIPLES 53
Article 1 - Nature and Scope of Obligations 53
1. The TRIPS Agreement: a minimum standards agreement 54
2. Method of implementing the provisions of the TRIPS Agreement 57
3. Implementation 59
4. The scope of TRIPS obligations 61
Article 2 - Intellectual Property Conventions 64
1. The objective of the Paris Convention: the articulation of national patent systems 64
2. The national treatment principle under the Paris Convention 65
3. The principle of priority 67
4. The principle of independence 67
5. Article 5 of the Paris Convention and trade protectionism 69
6. From the Paris Convention to the TRIPS Agreement 69
7. The relationship between the TRIPS Agreement and the Paris Convention 70
Article 3 - National Treatment 75
1. The "no less favourable treatment" standard of the TRIPS Agreement asopposed to the "same treatment" standard of the Paris Convention 75
2. Two GATT Panel Reports on the national treatment principle and Article XX(d) of the GATT 1947 78
3. Scope and reach of the footnote to Article 3 81
Article 4 - Most-Favoured-Nation Treatment 84
1. The most-favoured-nation treatment principle 84
2. The mfn principle and the national treatment principle: a rule of thumb 85
3. Scope of the mfn principle 86
4. Exemptions from the mfn principle 86
Article 5 - Multilateral Agreements on Acquisition or Maintenance of Protection 91
1. The scope of the exemption under Article 5 91
2. An example of an admissible exemption 92
Article 6 - Exhaustion 94
1. The meaning of Article 6 94
2. Exhaustion 97
3. The legal implications of international exhaustion 102
Article 7 - Objectives 109
Article 8 - Principles 118
Paragraph 1 119
1. The conditions for the application of Article 8.1 119
2. The necessity test 119
3. Article 8.1 and non-violation complaints 120
4. The TRIPS Agreement and public health 121
5. The Doha Declaration on the TRIPS Agreement and Public Health 125
Paragraph 2 132
1. The scope of Article 8.2 132
2. Patents,their metering function,ang competition policy 133
a) Patents and monopolies 134
b) Abuses of patent rights 138
PART Ⅱ - Standards Concerning the Availability, Scope and Use of Intellectual Property Rights 141
SECTION 5: PATENTS 141
Article 27 - Patentable Subject Matter 141
Paragraph 1 141
1. The precedents of Article 27 141
2. Prohibition against discrimination 143
3. Article 27 and Article 1 145
4. Article 27.1 ang the metering function of patents 145
a) Inventions and discoveries 146
b) Patentable subject matter 147
(ⅰ) Computer software 148
(ⅱ) Business methods 149
(ⅲ) Second uses 150
5. Substantive examination 152
6. Conditions of patentability: a minimum or a maximum? Formal and substantive requirements. The requirement to disclose the origin of genetic resources and prior informed consent of the use of traditional knowledge in patent applications 153
7. Discrimination as to the place of invention 160
8. Discrimination as to the field of technology 161
9. Discrimination as to the local of production: the local working requirement 162
Paragraph 2 168
1. Exclusions from patentability: technical, economic and ethical grounds 168
2. Morality and "ordre public" 170
3. The two-step necessity test 171
4. Exclusions from commercial exploitation as opposed to other forms of exploitation 173
5. Article 27.2 and Article 4quarter of the Paris Convention 173
Paragraph 3(a) 175
Paragraph 3(b) 177
1. Plant variety protection. The UPOV 178
a) The farmers' exemption 182
b) The breeders'exemption 184
2. The relationship between the TRIPS Agreement and the CBD 185
a) The precautionary principle and the TRIPS Agreement 188
b) Article 8(j) of the CBD and the TRIPS Agreement 190
(ⅰ) A working concept of traditional knowledge 191
(ⅱ) Elements of a "sui generis" system for the protection of traditional knowledge 195
(ⅲ) The first "sui generis" database system for the protection of traditional knowledge ever adopted: the Portuguese Decree-Law No.118, of April 20,2002 197
(ⅳ) The legal and economic reasons for protecting traditional knowledge 198
c) Article 15 of the CBD and Articles 27 and 28 of the TRIPS Agreement 200
d) Article 16 of the CBD and the TRIPS Agreement 203
e) Article 18 of the CBD and the TRIPS Agreement 205
f) In a nutshell, there is no necessary conflict between the CBD and the TRIPS Agreement 206
3. The relationship between the TRIPS Agreement and the FAO International Treaty on Plant Genetic Resources for Food and Agriculture 208
4. Conclusion 211
Article 28 - Rights Conferred 212
Article 29 - Conditions on Patent Applicants 217
Article 30 - Exceptions to Rights Conferred 220
1. The three conditions for the application of Article 30 221
2. Article 30 and Article 27.1 226
3. Examples of exceptions to rights conferred; the problems with exhaustion, manual handling of pharmaceutical preparations and prior user exceptions 226
4. Article 30 and the implementation of Paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health 228
Article 31 - Other Use Without Authorization of the Right Holder 230
Paragraph 230
Subparagraph (a) 233
Subparagraph (b) 234
Subparagraph (c) 238
Subparagraph (d) 238
Subparagraph (e) 239
Subparagraph (f) 240
Subparagraph (g) 245
Subparagraph (h) 246
Subparagraphs (i) and (j) 247
Subparagraph (k) 247
Subparagraph (1) 249
Article 32 - Revocation/Forfeiture 252
Article 33 - Term of Protection 257
Article 34 - Process Patents: Burden of Proof 262
SECTION 7: PROTECTION OF UNDISCLOSED INFORMATION 267
Article 39, paragraph 3 267
1. The scope of Article 39.3 267
2. Unfair commercial use 269
3. Exclusive test data protection as opposed to protection of secrecy 271
4. Fair commercial use 272
5. Compulsory licensing of test data 273
6. New chemical entity 274
7. Term of protection of test data 275
PART V - DISPUTE PREVENTION AND SETTLEMENT 277
Article 64 - Dispute Settlement 277
1. Objectives and nature of the Dispute Settlement Mechanism 277
2. The new features of the Dispute Settlement Mechanism 278
3. Conciliatory steps 280
4. The outcome of the Dispute Settlement Mechanism 281
5. Specific issues concerning the withdrawal of concessions in the TRIPS Agreement 282
6. Non-violation complaints 283
7. Patent-related disputes 287
8. Lessons from the Dispute Settlement Mechanism 290
a) First lesson: good intentions do not count 290
b) Second lesson: more (protection) is always better than less 291
PART VI - TRANSITIONAL ARRANGEMENTS 293
Article 65 - Transitional Arrangements 293
Article 66 - Least-Developed Country Members 296
Article 70 - Protection of Existing Subject Matter 303
Paragraph 1 303
Paragraph 2 305
Paragraph 3 307
Paragraph 4 307
Paragraph 6 308
Paragraph 7 309
Paragraph 8 (mailbox) 309
Paragraph 9 (exclusive marketing rights) 312
Index 315