1. TRIPS
Prepared by
Rajveer Bhaskar
Assistant Professor,RCPIPER
Shirpur, Dhule, M.S.

2. No Incentive To Innovator
Prior To 1st January 2005
 Prior to 1st January 2005, the Indian Patent Act
(1970) allowed only for process patents in all
areas of high technology viz., food, agrochemicals,
pharmaceuticals etc.
 This hardly gave protection to the innovator as the
generics could easily make copycats through
reverse engineering and thus, avoid facing
infringement.
 Since, the onus of proving infringement was on the
patent holder, that made life all the more easier
for the infringer.

3.  Trade-Related Intellectual Property Rights
Agreement (TRIPs)
 The TRIPs Agreement is another one of the
new agreements adopted as part of the
Uruguay Round
 The rationale for the WTO adopting rules on
intellectual property minimum standards on
rights and enforcement obligations was that
intellectual property is inherent in
many/most goods that are traded.

4.  IP and Development
 There are long standing disagreements
between developed and developing
countries over the value of strict or high IP
standards.
 Developing countries tend to see these as
benefiting those capable of creating and the
obtaining the rights (most often foreign
parties) over its own consumers.
 (Illustration: Lack of patentability pre-TRIPs
for pharmaceuticals and agricultural
chemicals.)

5. What does the TRIPS
Agreement do?
 Recognizes categories of intellectual property
rights — seven in all:
 — Patents
 — Trademarks
 — Copyrights
 — Trade Secrets
 — Industrial Designs
 — Lay-out Designs/Integrated Circuits
 — Geographical Indications
 Defines minimum standards for these rights
 (including scope of the right, the term, how they
can be
 exploited, exceptions)

6.  Applies principles of MFN and National
Treatment and existing IP treaty rules
 Sets out granting and enforcement obligations of
Member States
 (Setting up of IP administrative offices, judicial
procedures,establishing the border and internal
measures that most be taken to counter
infringement — seizures, civil and criminal
procedures).

7.  All obligations have to be undertaken by certain
dates — phase-in system
 Developed countries — 1/96
 Developing — 1/2000 and 1/2005 for categories
considered unpatentable before)
 Least Developed — 1/2006 — but extended
under 2000 Doha
 Declaration until 1/2016.

8.  Design of TRIPs Agreement
 Part 1 — General Provisions and Basic Principles
 • Scope
 • Adoption of Existing Intellectual Property
Conventions
 • National Treatment
 • Most Favored Nation

9.  Part II — Standards (on availability, scope and use)
for each of the Seven IP
 rights
 (Illustration: Patents)
 Art. 27 Patentable subject matter
 Art. 28 Rights Conferred
 Art. 29 Conditions on Patent Applicants
 Art. 30 Exceptions to Rights Conferred

10.  Art. 31 Other use without Authorization
 (Compulsory licensing, emergencies and response to
anticompetitive uses)
 Art. 32 Revocation/Forfeiture
 Art. 33 Term
 Art. 34 Process Patents: Burden of Proof and
Section 8 — Control of Anti-Competitive Practices in
Contractual Licenses.
 (Art. 40 recognizes the link between IP protection
and anti-competitive licensing practices and gives
Member States the right to determine what
constitutes an abuse of IP rights and to ban certain
licensing practices.)

11.  Part III — Obligations of members to provide
procedures/Remedies for IP
 rights.
 Part IV — Transitional Arrangements
 Part V — Dispute Settlement

12. TRIPS Agreement –
The Primary International Instrument
For The Purpose Of Patent Law In India
 India became a party to the WTO,
including the TRIPS Agreement, w.e.f
1st January 1995.
 The TRIPS Agreement recognizes the
fundamental importance of fostering
and protecting innovation. It does not
characterize innovations as large or
small, incremental or pioneering, but
establishes a framework for assessing
the inventive quality of an invention
against what is already known.

13. Conditions Under TRIPS Agreement
- For An Invention To Be
Patentable
 Article 27 of TRIPS Agreement
establishes the following conditions for
an invention to be patentable.
 The product or process must be
“new”, involve an “inventive step”
(non-obvious) and should be “capable
of industrial application” (useful).
 Patents shall be available irrespective
of the place of invention, the field of
technology and whether products are
imported or locally produced.

14. Exceptions To Patenting
 Under Article 65.1 and 65.2 of TRIPS
Agreement, developing countries
(including India) had 5 years to comply
with the TRIPS provisions. Under Article
65.4, a further 5 years were provided to
comply with the requirement of granting
product patents in areas where such
protection was not granted.
 The developing countries thus got a
leeway of 10 years to introduce product
patent regime in all areas of technology.

15.  Article 27.2 permits a member state to exclude
inventions from patentability only where it is
necessary to protect ordre public or morality,
including to protect human, animal or plant life
or health or to avoid serious prejudice to the
environment.

16.  Article 27.3 permits exclusion of (a) diagnostic,
therapeutic and surgical methods for the treatment of
humans or animals; and (b) plants and animals other
than micro-organisms, and essentially biological
processes for the production of plants or animals other
than non-biological and microbiological processes.
However, Members shall provide for the protection of
plant varieties either by patents or by an effective sui
generis system or by any combination thereof.

17. Changes Under
The Indian Patent Act
(1970) India availed of the 10 years exemption
(provided under Article 65.1, Article 65.2 &
Article 65.4) to fully comply with the TRIPS
provisions.
 Vide the first amendment to the Patent Act
from 1st January 1995, the GOI provided for
EMR (exclusive marketing rights) and set up a
mail box facility to accept product patent
applications.

18.  EMR was intended to give exclusivity to the
innovator for marketing of the product
embodying the innovation; it was given subject
to an applicant holding a process patent,
market approval in other countries and the
innovation pertaining to post January 1, 1995
period.
 Since 1995, 13 applications for EMR – mostly in
pharmaceutical sector - were filed. Of these,
EMRs were granted in 3 cases including one
in agrochemicals.

19.  The second amendment to the Indian Patent
Act (1970) - applied from January 1, 2000 -
introduced a “uniform” patent term of 20
years for innovations in all areas; rationalized
time lines to reduce time taken for grant of
patent.

20.  Other positive features like giving innovations
abroad the same treatment as given to the
innovations made in India and shifting the onus of
patent violation on the infringer were also added.
The amendment also provided safeguards for
protection of public interest, nation security,
bio-diversity, traditional knowledge etc.

21. Patent (Amendment) Act
2005 Key Provisions
 The Patent (Amendment) Act 2005 effective from
1st January 2005
 provides for grant of product patents in food,
agrochemicals, bio-technology and
pharmaceuticals. With this, the EMR provision
(introduced vide first amendment) has become
redundant.

22.  However, all pending applications for
grant of EMR will be treated as request
for examination. Also, applications for
which EMR were granted before 1st
January 2005 shall be examined for
grant of patent immediately.
 Every EMR granted before January 1,
2005 shall continue to be effective for
a period of 5 years (from the date of
its grant) or the date of patent grant
or rejection whichever is earlier

23.  The Patent (Amendment) Act 2005 also
contains important provisions in regard
to the patentability criteria;
 treatment of mail- box applications,
 pre-grant opposition,
 parallel importation;
 obtaining patent abroad;
 compulsory licensing,
 Bolar provision etc.