The TRIPS Agreement: Highlights

1. Origin

By the 1980s the United States, the European Communities and Japan regarded the WIPO treaties as weak: Paris and Berne set few substantive minimums and had no working enforcement. Industry groups, notably the US Intellectual Property Committee, pressed for IP to be treated as a trade issue. Susan Sell's Private Power, Public Law (2003) documents how a small number of corporations shaped the negotiating agenda. IP was placed on the GATT Uruguay Round agenda at Punta del Este (1986). India and Brazil resisted, arguing that IP was WIPO's business, but agreed in 1989. The Agreement on Trade-Related Aspects of Intellectual Property Rights is Annex 1C to the Marrakesh Agreement establishing the WTO (signed 15 April 1994) and came into force on 1 January 1995. Every WTO member is bound by it; there is no reservation (Art 72 requires consent of the other members).

2. Structure and basic principles

TRIPS has seven Parts and 73 articles: general provisions and basic principles (Part I); standards for each category (Part II); enforcement (Part III); acquisition and maintenance (Part IV); dispute prevention and settlement (Part V); transitional arrangements (Part VI); and institutional provisions, including the TRIPS Council (Part VII).

• Minimum standards (Art 1.1). Members must give effect to the Agreement and may give more extensive protection, but are free to choose the method of implementation.
• Paris-plus and Berne-plus. Members must comply with Articles 1–12 and 19 of Paris (Art 2.1) and Articles 1–21 of Berne and its Appendix, except moral rights under Berne Article 6bis (Art 9.1).
• National treatment (Art 3) and most-favoured-nation treatment (Art 4). MFN was new to IP: an advantage given to the nationals of one member must be given to all.
• Exhaustion (Art 6). Nothing in TRIPS (apart from national treatment and MFN) may be used to address exhaustion in dispute settlement, so each member chooses national, regional or international exhaustion. India's section 107A(b) of the Patents Act and section 30(3) of the Trade Marks Act use this freedom.
• Objectives and principles (Arts 7 and 8). Protection should contribute to innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users, in a manner conducive to social and economic welfare; members may adopt measures to protect public health and nutrition and to prevent abuse, consistent with the Agreement.

3. Minimum standards (Part II)

The patent standard had the largest effect on India. Article 27.1 forbade excluding pharmaceuticals and agrochemicals from product patents, and Article 33 required twenty years from filing, against India's earlier five to seven years for food and drug process patents. Article 27.3(b) allowed plants and animals to be excluded but required protection of plant varieties by patents or an effective sui generis system, which India met through the PPV&FR Act, 2001.

4. Enforcement and dispute settlement

Part III was the real innovation. Members must provide fair and equitable procedures that are not unnecessarily complicated or costly (Art 41); civil remedies including injunctions and damages (Arts 42–48); provisional measures, including ex parte orders to preserve evidence (Art 50); border measures against counterfeit trade mark and pirated copyright goods (Arts 51–60, applied in India through the IP (Imported Goods) Enforcement Rules, 2007); and criminal procedures at least for wilful trade mark counterfeiting and copyright piracy on a commercial scale (Art 61).

Disputes go to the WTO Dispute Settlement Understanding, so a losing member faces authorised retaliation. Leading TRIPS disputes include India — Patent Protection for Pharmaceutical and Agricultural Chemical Products (Appellate Body, 1997), on the mailbox; Canada — Pharmaceutical Patents (Panel, 2000), which upheld a regulatory-review (Bolar) exception under Art 30 but not stockpiling; US — Section 110(5) Copyright Act (Panel, 2000), on the three-step test; and Australia — Tobacco Plain Packaging (Appellate Body, 2020), which accepted plain packaging as a justified encumbrance on use of marks under Art 20.

5. Transition and the flexibilities

• Transition (Arts 65–66). Developing countries had until 1 January 2000, and until 1 January 2005 for product patents in fields not previously protected (Art 65.4). In the meantime they had to accept “mailbox” applications (Art 70.8) and grant exclusive marketing rights (Art 70.9). Least-developed countries have repeatedly extended periods; for pharmaceutical patents and test data the extension runs to 2033.
• Doha Declaration on the TRIPS Agreement and Public Health (2001). TRIPS “does not and should not prevent members from taking measures to protect public health”; each member may grant compulsory licences, determine the grounds and decide what is a national emergency, and choose its exhaustion regime.
• Article 31bis. The 2003 waiver for export of medicines under compulsory licence to countries without manufacturing capacity became a permanent amendment, in force from January 2017. India implemented it in section 92A of the Patents Act.
• COVID-19. The Ministerial Decision of June 2022 eased compulsory licensing of vaccine patents for eligible developing members for five years.

6. India's implementation

The Supreme Court in Novartis AG v. Union of India, 2013 INSC 198, read section 3(d) as a legitimate use of the room TRIPS leaves to members to define patentability, and India has never been challenged at the WTO over that provision.

How this is examined

Either a 16-mark question (“Highlight the salient features of the TRIPS Agreement”) or a short note. For the essay use all six sections, with the table in section 3 and the Indian table in section 6. For a question limited to copyright or industrial property, use the relevant rows and add the Paris or Berne note.