MODULE IX

DISPUTE PREVENTION AND SETTLEMENT

Introduction

Modules II to VIII have dealt with members’ commitments as regards the substantive
standards for protection of IPRs under domestic laws, as well as their enforcement
through their domestic legal systems. An important feature of the TRIPS Agreement is
that disputes between members about compliance by member governments with
these TRIPS obligations are subject to the dispute settlement system of the WTO. The
TRIPS provisions on dispute settlement are contained in Part V of the TRIPS Agreement
entitled ‘Dispute Prevention and Settlement’.

Dispute settlement is a major feature of the WTO legal system, and this module
outlines how it applies to disputes between members concerning compliance with
TRIPS obligations. First, however, it reviews the main TRIPS provisions and working
methods relating to transparency, whose main goal is to contribute to preventing
disputes from arising between governments in the first place. This module then reviews
the main principles governing dispute settlement, including the jurisdiction of the WTO,
and briefly describes the WTO dispute settlement procedures. A particular matter, still
unresolved, concerns the applicability of the so-called non-violation and situation
complaints to the settlement of disputes under the TRIPS Agreement. This module then
reviews the experience to date with disputes about TRIPS compliance. A complete list
of disputes in the area of TRIPS is provided at the end of this module, together with
information about how to access the key documents.

This module provides a general overview of how the WTO dispute settlement system
relates to the TRIPS Agreement. A guide to resources is provided at the end of the
module.

Dispute prevention and the review of implementing legislation

Module I described how the TRIPS Council is the body, open to all members of the WTO,
that has responsibility for the administration of the TRIPS Agreement, in particular for
monitoring the operation of the Agreement. The Council also constitutes a forum for
consultations on any problems relating to TRIPS arising between members as well as
for clarifying and interpreting provisions of the TRIPS Agreement. The aim is, whenever
possible, to resolve differences between members without the need for formal
recourse to dispute settlement.

The TRIPS Agreement promotes transparency by requiring members to publish laws

and regulations and final judicial decisions and administrative rulings of general
application made effective by a member pertaining to the subject matter of the
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Agreement. Relevant bilateral and other agreements must also be published
(Article 63.1).

Article 63.2 requires members to notify relevant laws and regulations to the TRIPS
Council in order to assist in its review of the operation of the Agreement. This is also
designed to promote transparency. Module I and Appendix 1 discuss these procedures
in detail.

One of the characteristics of the former GATT and now of the WTO is the detailed and
continuous follow-up of the implementation of obligations and the monitoring of
compliance with them. The underlying belief is that unless there is monitoring of
compliance with international commitments, those commitments will be worthless.
Monitoring of compliance in the TRIPS Council is done in two main ways.

First, the TRIPS Council is a body in which any member can raise any issue relating to
compliance with the TRIPS Agreement by other parties. This has happened on a
number of occasions, either in relation to the practices of a specific member, or
concerning the application of a specific provision of the TRIPS Agreement.

The second approach to monitoring compliance is a systematic examination of each

member’s national implementing legislation by the other members, involving the
notification and a review of the legislation of members. The initial notification of
implementing laws and regulations made by each member pursuant to Article 63.2 at
the end of its transition period forms the basis for the review of the implementing
legislation of that member carried out by the Council. Reviews were held for developed
country members starting in 1996, and for developing countries in 2000. The
implementing legislation of an acceding member is reviewed after it becomes a WTO
member. For the discussion of the procedures for these reviews and resulting
documentation, see Module I, section E2(b).

These reviews have produced a great deal of valuable information about the diverse
ways in which members have given effect in their national laws to the general
principles set out in TRIPS. By providing an opportunity to identify deficiencies in
notified laws and regulations, as well as differences in interpretation, the review
mechanism is an important vehicle for resolving issues that might otherwise become
the subject of formal dispute settlement proceedings.

The initial review of the great majority of members' legislation has concluded; however,
this review is for many jurisdictions significantly dated (being well over 20 years old),
and many significant reforms and revisions have been implemented in members'
legislation since their initial review. Hence, the question has arisen for the TRIPS
Council as to how to sustain its review function in a 'steady state' environment now
that the initial 'ramp up' stage of initial reviews has more or less concluded.

Another provision promoting transparency and aimed at preventing disputes is found

in Article 63.3. It requires each member to be prepared to supply, in response to a
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written request from another member, information on its relevant laws and regulations,
decisions of general application, and bilateral agreements. A member, having reason
to believe that a specific judicial decision, administrative ruling or bilateral agreement
affects its rights under the TRIPS Agreement, may also request in writing to be given
access to or be informed in sufficient detail of such material.

Dispute settlement

General

An important feature of the TRIPS Agreement is that it provides an operational system

for the settlement of disputes between governments of members about compliance
with their respective obligations relating to IPRs. Pre-existing international law in this
area did not provide any practical means of recourse, at the multilateral level, to a
country that believed that another country was not respecting its treaty obligations.
Now, member governments who wish to take action against an alleged violation of a
TRIPS obligation have recourse to the multilateral WTO dispute settlement procedures
in order to obtain a satisfactory settlement of the matter. These procedures also apply
to alleged violations of the provisions of the Berne and Paris Conventions, and other
treaties, where incorporated in the TRIPS Agreement.

Article 64.1 provides that Articles XXII and XXIII of the General Agreement on Tariffs
and Trade 1994 (GATT 1994), as elaborated and applied by the Dispute Settlement
Understanding on Rules and Procedures Governing the Settlement of Disputes (DSU),
shall apply to consultations and the settlement of disputes under the TRIPS
Agreement. As noted in Module I, like the TRIPS Agreement, the DSU is an annex to the
to the Marrakesh Agreement Establishing the World Trade Organization (WTO
Agreement). The DSU provides rules and procedures for consultations and the
settlement of disputes between members concerning their rights and obligations
under certain WTO agreements. It applies to the WTO Agreement and the agreements
listed in Appendix 1 of the DSU, referred to as the ‘covered agreements’.84

In general, the procedures are based on previous experience in the GATT, which was
the forerunner of the WTO. This is why Article 64.1 of the TRIPS Agreement refers to
the provisions of Articles XXII and XXIII of the GATT 1994, as elaborated and applied by
the DSU.

Only a member can initiate and participate in WTO dispute settlement, and such
complaints can only be directed at other members, due to the intergovernmental
nature of the WTO. Members decide which disputes to bring to the WTO. Neither the

84 The covered agreements include the WTO Agreement, multilateral agreements on trade in goods, the GATS, the TRIPS

Agreement, and the DSU itself. The covered agreements also include the Plurilateral Trade Agreements contained in Annex 4 to
the WTO Agreement, subject to the adoption of a decision by the parties to each agreement setting out the terms for the
application of the DSU. To date, among the Plurilateral Trade Agreements currently in force, only the Committee on Government
Procurement has taken a decision to apply the DSU to the Agreement on Government Procurement. The DSU also applies to the
Revised Agreement on Government Procurement, as stipulated in its Article XX.

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WTO as an organization, nor its Secretariat, nor any private party can make that
decision. Before bringing a case, a member must exercise its judgment as to whether
action under the dispute settlement procedures would be fruitful but, once it has
engaged the dispute settlement mechanism, the WTO must follow its procedures to
their conclusion or until the parties agree otherwise. Parties to a dispute can agree to
settle the case at any stage of the process. A solution mutually agreed by the parties
and consistent with the WTO covered agreements is clearly to be preferred.

Private parties whose rights and interests are affected by the implementation of the
covered agreements have no standing in WTO dispute settlement, but must rely on
their government to bring or defend an action, or to intervene as a so-called third party.
A ‘third party’ is a member who is not a party to the dispute but has a substantial
interest in the matter. It can request to take part in consultations, and shall have an
opportunity to be heard by, and make written submissions to, the panel (Article 10.2
of the DSU). It may also participate in the appellate review process (Article 17.4 of the
DSU).

Article XXIII:1 of the GATT 1994 provides for three grounds for complaints: (1) the
failure of another member to carry out its obligations under a WTO covered agreement;
(2) the application by another member of any measure, whether or not it conflicts with
the provisions of a covered agreement; or (3) the existence of any other situation.

In practice, most complaints brought to the WTO dispute settlement system are of the
first type: concerning an alleged failure by another member to carry out its obligation
under a WTO covered agreement, including the TRIPS Agreement. These are commonly
known as ‘violation complaints’.

The second and third grounds for complaint allow a member to initiate dispute
settlement proceedings even when an agreement has not been violated, so-called
‘non-violation complaints’ or ‘situation complaints’. While these complaints can be
raised about other WTO covered agreements, members have agreed to a moratorium
on the use of non-violation and situation complaints in the area of TRIPS (see
section C2 below).

Members have agreed to have recourse to the WTO procedures when they seek to take
action against a violation of an obligation, and not to make unilateral determinations
of violation or on retaliatory action. A member must first go through the dispute
settlement procedure before it makes a determination that a violation has occurred,
which requires it to prove its claims before an impartial ad hoc panel, and on appeal if
this avenue is chosen. Where its claims are upheld, the report of the panel or Appellate
Body will recommend that the committee of all members known as the Dispute
Settlement Body (DSB) request the member concerned to bring its measures into
conformity with its obligations under the TRIPS Agreement.

The WTO dispute settlement system is designed to ensure the rule of law in
international trade relations through the impartial and effective resolution of disputes
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between member governments. Members must engage in dispute settlement
procedures in good faith in an effort to resolve disputes and are expected to comply
with the final rulings and recommendations in adopted reports, pending which
compensation may be accorded or countermeasures authorized.

Section D below contains a brief description of the dispute settlement procedures.

Non-violation and situation complaints

As noted above, most complaints brought to the dispute settlement system concern
an alleged failure by another member to carry out its obligations under a WTO covered
agreement. These are commonly known as ‘violation complaints’. ‘Non-violation’ deals
with a member’s entitlement to bring a dispute to the WTO, based on loss of an
expected benefit caused by another member’s actions in circumstances when no
covered WTO agreement or commitment has actually been violated. An example of this
could be where a member has agreed to lower tariffs on certain goods, but then
introduces measures that nullify the effect of the tariff reduction, for example by
providing an equivalent production subsidy to its domestic producers.85

BOX IX.1 PARAGRAPH 1 OF ARTICLE XXIII OF GATT 1994

ON THE THREE GROUNDS FOR COMPLAINTS

If any contracting party should consider that any benefit accruing to it directly or indirectly
under this Agreement is being nullified or impaired or that the attainment of any objective
of the Agreement is being impeded as the result of

(a) the failure of another contracting party to carry out its obligations under this Agreement,
or

(b) the application by another contracting party of any measure, whether or not it conflicts
with the provisions of this Agreement, or

(c) the existence of any other situation,

the contracting party may, with a view to the satisfactory adjustment of the matter, make
written representations or proposals to the other contracting party or parties which it
considers to be concerned. Any contracting party thus approached shall give sympathetic
consideration to the representations or proposals made to it.

In general, the aim of non-violation complaints is to help preserve the balance of

benefits struck during multilateral negotiations, recognizing that it is not possible or

85 See Working Party Report, The Australian Subsidy on Ammonium Sulphate, GATT/CP.4/39, adopted 3 April 1950.

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desirable to seek to regulate all government measures that may affect the value of
such benefits.

A ‘situation’ complaint is understood to cover any situation that results in nullification

or impairment of benefits, not necessarily through a specific government measure, but
this concept has never been analysed in WTO and GATT dispute settlement.

Initially, Article 64.2 of the TRIPS Agreement prevented the application of non-violation
and situation complaints to disputes under the TRIPS Agreement within the first five
years of the entry into force of the Agreement. Article 64.3 of the TRIPS Agreement
instructed the TRIPS Council to examine the extent and way (‘scope and modalities’)
in which complaints of this type could be made and make recommendations to the
General Council by the end of 1999.

This ‘moratorium’ on the use of non-violation and situation complaints has been
extended a number of times, namely by ministers at the Doha Ministerial Conference
in 2001,86 by the WTO General Council in 2004 as part of the so-called ‘July 2004
package’,87 and by the Ministerial Conferences in Hong Kong, China in 2005;88 Geneva
in 200989 and 2011;90 Bali in 2013;91 Nairobi in 2015;92 and Buenos Aires in 2017.93
Most recently, the moratorium was extended by the General Council in 2019.94 At the
same time, the TRIPS Council has been instructed to continue its examination of the
scope and modalities for these types of complaints and make recommendations.95

Description of the dispute settlement procedures

This section reviews what happens when one WTO member chooses to bring a formal
complaint against another member concerning compliance with TRIPS standards. The
procedures are the same as for any other WTO dispute, there being no special
procedures for TRIPS (apart from the restriction to ‘violation’ disputes, discussed
above). The dispute settlement process has three main phases: (i) consultations
between the parties; (ii) adjudication by panels and, if either party appeals a panel
ruling, by the Appellate Body; and (iii) adoption of panel/appellate reports(s) and
implementation of the ruling, which includes the possibility of countermeasures in the
event that the losing party fails to implement the ruling. Figure IX.1 illustrates the
procedural steps in a typical WTO dispute settlement case, which are discussed below.

86 Decision on Implementation-Related Issues and Concerns, WT/MIN(01)/17 (14 November 2001), para. 11.1.
87 Decision on the Doha Work Programme, WT/L/579 (1 August 2004), para. 1.h.
88 Ministerial Declaration on the Doha Work Programme, WT/MIN(05)/DEC (18 December 2005), para. 45.
89 Decision on TRIPS Non-Violation and Situation Complaints, WT/L/783 (2 December 2009).
90 Decision on TRIPS Non-Violation and Situation Complaints, WT/L/842 (17 December 2011).
91 Decision on TRIPS Non-Violation and Situation Complaints, WT/MIN(13)/31-WT/L/906 (7 December 2013).
92 Decision on TRIPS Non-Violation and Situation Complaints, WT/MIN(15)/41-WT/L/976 (19 December 2015).
93 Decision on TRIPS Non-Violation and Situation Complaints, WT/MIN(17)/66-WT/L/1033 (13 December 2017).
94 Decision on TRIPS Non-Violation and Situation Complaints Moratorium, WT/L/1080 (11 December 2019).
95 Further information can be found in a Secretariat summary note on delegations’ positions on non-violation

complaints at the TRIPS Council in document IP/C/W/349/Rev.2, and in a factual background note on experience with
non-violation complaints under the GATT/WTO in document IP/C/W/124. For recent member communications summarizing
positions and offering proposals on this subject, see IP/C/W/385/Rev.1 and Add.1-3 and IP/C/W/599.

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 Consultations between the parties

The procedures begin with a mandatory consultation period in an effort to find a

mutually satisfactory solution. Members must enter into consultations in good faith
within thirty days of a formal request for consultations, and the consultations must last
at least sixty days from the date of receipt of the request, unless the parties agree
otherwise or the member addressed by the request refuses to consult. During this time,
the issues in dispute may be clarified, helping the parties to settle the dispute without
further procedures, as indeed has happened in a number of cases. Other members
with a substantial trade interest can also request to join the consultations. All requests
for consultations are circulated to all members and made available to the public on
the WTO website; they outline the substance of the complaint and identify the
provisions that are at issue.

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Figure IX.1 WTO dispute settlement process, including references to relevant
provisions of the DSU

149
 Panel examination

If the consultations fail to settle a dispute, the complaining member may request the
DSB to establish a ‘panel’ to examine the matter and make such findings as will assist
the DSB in making recommendations to secure a positive solution to the dispute. A
panel must be established at the latest by the second request to the DSB. Other
members with a substantial interest in the matter can join the dispute as third parties.

Panels normally comprise three persons of appropriate background and experience,

who are not citizens of members party to the dispute or third parties, unless the parties
to the dispute agree otherwise. They serve in their individual capacity and not as
government representatives. They are never serving WTO Secretariat officials. The
parties to the dispute attempt to agree on the composition of the panel on the basis of
names proposed by the Secretariat, failing which the Director-General can, upon
request, determine its composition in consultation with the parties to the dispute. The
names of the panellists are made public on the WTO website.

The parties to the dispute make written submissions and oral statements at meetings
with the panel. Third parties also have an opportunity to be heard by the panel and
make written submissions to it. A panel should normally complete its work within six
months, by publishing a report containing findings of fact and law, with its conclusions.
The report is circulated to all members and made available to the public on the WTO
website. If there is no appeal, it can be proposed for adoption by the DSB.

Appellate review

A party to the dispute may appeal the panel’s findings to the Appellate Body, which is
a standing body of seven individuals, three of whom serve on any one case. Members,
in the DSB, appoint Appellate Body members to four-year terms.

Appeals are limited to issues of law covered in the panel report and legal
interpretations developed by the panel. The parties, and optionally third parties, make
written submissions and oral statements at a meeting with the Appellate Body. The
DSU provides that the Appellate Body is to complete its work within ninety days by
publishing a report containing its findings on the issues raised in the appeal, which
may uphold, modify or reverse the legal findings and conclusions of the panel. The
report is circulated to all members and made available to the public on the WTO
website.

Adoption of panel/appellate report(s) and implementation

If the panel report is not appealed in a dispute, the DSB considers and adopts the
report unless there is consensus among members not to do so: once adopted, the
panel report is binding on the parties to the dispute. If it is appealed, the resultant
Appellate Body report is similarly binding on the parties.

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Where a panel or the Appellate Body has concluded that a measure was inconsistent
with the TRIPS Agreement, or any other WTO covered agreement, its report will
recommend that the member concerned bring the measure into conformity with that
agreement. The member is given a reasonable period of time in which to do so. The
reasonable period of time is agreed by the parties, failing which it can be determined
by arbitration. In TRIPS cases this has generally ranged from six months, where a
regulation had to be repealed, to twelve months, where a statute had to be amended
by the legislature.

In the great majority of cases, members comply with the recommendations contained
in a report as adopted by the DSB. However, if there is disagreement as to whether a
member has indeed complied, the disagreement can be decided through another
proceeding before a panel, wherever possible the same three persons who formed the
original panel. This has only occurred in a relatively small number of cases so far,
sometimes because there was a disagreement as to whether amendments made to
the law to comply with the recommendations were themselves consistent with the WTO
covered agreements. The panel completes its work by publishing another report, which
can also be appealed to the Appellate Body.

The DSB monitors implementation of its recommendations. The member concerned

must provide regular status reports on implementation from at least six months after
the date on which the reasonable period of time is established until the issue is
resolved.

Full implementation of a recommendation to bring a measure into conformity with the

WTO covered agreements is the aim of this part of the procedures. However, pending
implementation there is a possibility for the party which prevailed in the dispute to
obtain voluntary compensation from the member concerned, or authorization from the
DSB to suspend obligations or withdraw concessions vis-à-vis that member (in other
words to impose ‘countermeasures’ or ‘retaliate’). This possibility is intended to give
credibility to the system and ensure prompt compliance within the reasonable period
of time. Although findings are normally implemented within this period, in a relatively
small number of cases countermeasures have been authorized.

Countermeasures can be authorized, as a general principle, in the same WTO covered

agreement where WTO inconsistencies have been found. So, for example, import
duties can be increased above the bound rates on goods from a member that has been
found in breach of the GATT rules on trade in goods. Where this general principle is not
practicable or effective, countermeasures can be authorized under another WTO
covered agreement from the one in which the WTO inconsistencies have been found,
which is known as ‘cross-retaliation’.

As of the end of 2019, the DSB has authorized countermeasures in twenty-one

disputes. Three of them involved ‘cross-retaliation’, namely EC – Bananas III (Ecuador)
(DS27), US – Gambling (DS285) and US – Upland Cotton (DS267). In each of them,

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countermeasures were authorized inter alia in the area of TRIPS concerning violations
in the area of the GATT or the General Agreement on Trade in Services (GATS).96 For
example, the first of them concerned the failure of the European Communities to bring
its banana regime into compliance with a panel ruling. In 2000, Ecuador received
authorization to cross-retaliate against the European Communities by denying them
protection of related rights, GIs and industrial designs. This and other related disputes
were finally settled by the Geneva Agreement on Trade in Bananas in
December 2009.97

Experience in the area of TRIPS

It appears that most cases relating to matters of compliance with the requirements of
the TRIPS Agreement are resolved in bilateral consultations between the members
concerned, either in Geneva or in capitals, without invoking the dispute settlement
procedures in the DSB. Many issues have also come up in the reviews of members’
TRIPS implementing legislation carried out by the TRIPS Council, but only very rarely do
these issues get a follow-up in dispute settlement proceedings. Even after the
invocation of formal dispute settlement procedures, members are encouraged
throughout the process to develop a mutually acceptable solution consistent with the
WTO covered agreements. In fact, the settlement rate has so far been quite high in the
area of TRIPS.

As of December 2019, 42 dispute settlement complaints had been initiated in the WTO
in the area of TRIPS in relation to 32 distinct matters or specific cases. This represents
about 7 per cent of cases filed under all WTO covered agreements. Panel reports and,
when they have been appealed, Appellate Body reports, have been adopted in twelve
cases. Fourteen of the other cases have been settled bilaterally between the parties
to the dispute; the terms of these settlements are made public and can be important
in influencing the way others implement the Agreement. As regards the rest,
consultations or panel or Appellate Body proceedings are still pending, or the case has
become inactive.

Table IX.1 below contains a list of all the TRIPS cases, their status as of February 2020,
and the primary IP issues and TRIPS provisions relevant to each. Additional information
on these disputes may be found in the WTO Analytical Index: Guide to Law and
Practice, www.wto.org/analyticalindex, WTO Dispute Settlement: One-Page Case
Summaries, www.wto.org/onepagecasesummaries, and on the WTO website,
www.wto.org/finddisputes.

96 The complaining parties in these three cases were Ecuador, Antigua and Barbuda, and Brazil, respectively. The

authorizations by the DSB were based on reports by arbitrators that acted pursuant to Article 22.6 of the DSU to examine
whether the level of suspension of concessions or other obligations proposed by the complaining party was equivalent to the
level of nullification or impairment, and to determine if the proposed suspension was allowed under the covered agreement. The
decisions of the arbitrators can be found in documents WT/DS27/ARB/ECU, WT/DS285/ARB, and WT/DS267/ARB/1 and 2,
respectively.
97 WT/L/784.

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Some of the early TRIPS cases only concerned transitional arrangements. For example,
the first TRIPS complaint concerned the extent to which sound recordings that had
been made before the TRIPS Agreement became applicable had to be protected (Japan
– Measures Concerning Sound Recordings (DS28, 42), two cases that were both
settled). The first two panel and/or Appellate Body reports were issued on two
complaints concerning the so-called ‘mailbox’ and exclusive marketing rights
provisions in paragraphs 8 and 9 of Article 70 (India – Patents (US) (DS50) and India
– Patents (EC) (DS79)). Another case on the same issue was settled (Pakistan – Patent
Protection for Pharmaceutical and Agricultural Chemical Products (DS36)). Panel and
appellate reports in a further case concerned the extent to which patents issued prior
to the entry into force of the Agreement benefited from the protection under it (Canada
–Patent Term (DS170)).

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Table IX.1 Dispute settlement cases in the area of TRIPS98 (as at 6 October 2021)
Respondent and title of
WTO dispute dispute (short title Complain- TRIPS
Status IP issues
number99 provided where a panel ant provisions100
has been established)
DS590 JAPAN – Measures KOREA, Panel Arts. 3, 4, 28 National and MFN treatment in the
Related to the Exportation REPUBLIC established on protection of IP rights; right to assign and
of Products and OF 29 July 2020 license patents.
Technology to Korea
DS583 TURKEY – Pharmaceutical EU Panel Arts. 3, 27, 28, 39 National treatment in the protection of IP
Products (EU) established on (noted in request rights; discrimination among imported and
30 September for consultations locally produced products in the availability
2019 but omitted from and enjoyment of patent rights; right to
panel request) assign and transfer patents and conclude
licensing contracts; protection of
undisclosed information.
DS567 SAUDI ARABIA – IPRs QATAR Panel report Arts. 3, 4, 9 National and MFN treatment in the
circulated on (incorporating Arts. protection of IP rights; certain substantive
16 June 2020, 9, 11, 11bis and protections in respect of works and
appealed on 29 11ter of the Berne broadcasts; access to civil procedures for IP
July 2020 Convention), 14, enforcement; application of criminal
16, 41, 42, 61 procedures.
DS549 CHINA – Certain Measures EU Consultations Arts. 3, 28, 33, 39 National treatment in the protection of IP
on the Transfer of requested on 1 rights, patent rights and licensing; term of
Technology June 2018 patent protection; protection of undisclosed
information.

98 This table is intended to facilitate understanding of the cited cases but does not constitute an official or authoritative interpretation by the WTO Secretariat or WTO Members of the

cases or the TRIPS Agreement.

99 Click the link in this column to be taken to the corresponding dispute web page, where additional details and links to relevant documents may be found. Alternatively, go to

www.wto.org/disputes, 'Find disputes', to search for a dispute web page and/or create document alerts.
100 A single dispute often implicates provisions from multiple WTO agreements; this table only identifies those from the TRIPS Agreement. The contents of this column derive from the

panel report; if a panel report was not circulated, the panel request; or if a panel was not requested, the request for consultations.

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 Respondent and title of
WTO dispute dispute (short title Complain- TRIPS
Status IP issues
number99 provided where a panel ant provisions100
has been established)
DS542 CHINA – Intellectual US Panel Arts. 3, 28 National treatment in the protection of IP
Property Rights II established on rights; patent rights and licensing.
21 November
2018, work
suspended
most recently
on 8 June
2020, authority
lapsed on
9 June 2021
DS528 SAUDI ARABIA – Measures QATAR Consultations Arts. 3, 4 National and MFN treatment in the
Relating to Trade in Goods requested on protection of IP rights.
and Services, and Trade- 31 July 2017
Related Aspects of
Intellectual Property
Rights
DS527 BAHRAIN – Measures QATAR Consultations Arts. 3, 4 National and MFN treatment in the
Relating to Trade in Goods requested on protection of IP rights.
and Services, and Trade- 31 July 2017
Related Aspects of
Intellectual Property
Rights
DS526 UNITED ARAB EMIRATES – QATAR Panel Arts. 3, 4, 41, 42 National and MFN treatment in the
Goods, Services and IP established on and 61 protection of IP rights; access to civil
Rights 22 November procedures for IP enforcement; application
2017, work of criminal procedures.
suspended on

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 Respondent and title of
WTO dispute dispute (short title Complain- TRIPS
Status IP issues
number99 provided where a panel ant provisions100
has been established)
15 January
2021
DS467 AUSTRALIA – Tobacco INDONESIA Panel report Arts. 2 Registration and protection of trademarks,
Plain Packaging adopted on (incorporating Art. and special requirements on their use;
(Indonesia) 27 August 10bis of the Paris protection of GIs; unfair competition.
2018 Convention), 15,
16, 20, 22, 24
DS458 AUSTRALIA – Tobacco CUBA Panel report Arts. 2 Registration and protection of trademarks,
Plain Packaging (Cuba) adopted on (incorporating Arts. and special requirements on their use;
27 August 6quinquies, 7, and protection of GIs; unfair competition.
2018 10bis of the Paris
Convention), 15,
16, 20, 22, 24
DS441 AUSTRALIA – Tobacco DOMINICAN Appellate Body Arts. 2 Registration and protection of trademarks,
Plain Packaging REPUBLIC and Panel (incorporating Art. and special requirements on their use;
(Dominican Republic) reports adopted 10bis of the Paris protection of GIs; unfair competition.
on 29 June Convention), 15,
2020 16, 20, 22, 24
DS435 AUSTRALIA – Tobacco HONDURAS Appellate Body Arts. 2 Registration and protection of trademarks,
Plain Packaging and Panel (incorporating Arts. and special requirements on their use;
(Honduras) reports adopted 6quinquies, 7, and protection of GIs; unfair competition.
on 29 June 10bis of the Paris
2020 Convention), 15,
16, 20, 22, 24
DS434 AUSTRALIA – Tobacco UKRAINE Panel Arts. 1, 2 Registration and protection of trademarks, and
Plain Packaging (Ukraine) established on (incorporating Arts. special requirements on their use; unfair
28 September 6quinquies, 7, and competition.
2012, work 10bis of the Paris

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 Respondent and title of
WTO dispute dispute (short title Complain- TRIPS
Status IP issues
number99 provided where a panel ant provisions100
has been established)
suspended on Convention), 3,
29 May 2015, 15, 16, 20
authority
lapsed on
30 May 2016
DS409 EUROPEAN UNION AND A BRAZIL Consultations Arts. 1, 2 Seizure of generic drugs while in transit in
MEMBER STATE – Seizure requested on (incorporating Art. the EU, covered by patent rights in the EU
of Generic Drugs in Transit 11 May 2010 4bis of the Paris but not in original country or final
Convention), 28, destination.
31, 41, 42, 49,
50-55, 58, 59
DS408 EUROPEAN UNION AND A INDIA Consultations Arts. 2, 7, 8, 28, Seizure of generic drugs while in transit in
MEMBER STATE – Seizure requested on 31, 41, 42 the EU, covered by patent rights in the EU
of Generic Drugs in Transit 11 May 2010 but not in original country or final
destination.
DS372 CHINA – Measures EC Mutually Art. 39 Whether measures affecting foreign
Affecting Financial agreed solution suppliers of financial information enabled
Information Services and notified on 4 suppliers to protect secret and commercially
Foreign Financial December valuable information lawfully within their
Information Suppliers 2008 control.
DS362 CHINA – Intellectual US Panel report Arts. 9 Thresholds for trademark counterfeiting and
Property Rights adopted on 20 (incorporating Arts. copyright piracy to be subject to criminal
March 2009 2(6) and 5 of the procedures and penalties; disposal of
Berne infringing goods confiscated by customs
Convention), 41, authorities; criminal procedures and
46, 59, 61 penalties for unauthorized reproduction or
unauthorized distribution of copyrighted
works; and copyright protection and

157
 Respondent and title of
WTO dispute dispute (short title Complain- TRIPS
Status IP issues
number99 provided where a panel ant provisions100
has been established)
enforcement for material not authorized for
the publication or distribution within China.
DS290 EUROPEAN COMMUNITIES AUSTRALIA Panel report Arts. 2 National treatment in the protection of GIs,
–Trademarks and GIs adopted on 20 (incorporating Arts. and the relationship of GI protection with
(Australia) April 2005 2, 10bis, and pre-existing trademarks.
10ter of the Paris
Convention), 3, 4,
10, 16, 17, 22, 24
DS224 UNITED STATES – US BRAZIL Consultations Arts. 27, 28 Patent rights on inventions made with
Patents Code requested on federal assistance.
31 January
2001
DS199 BRAZIL – Measures US Mutually Arts. 27, 28 'Local working' requirements for patents, and
Affecting Patent Protection agreed solution possibility of compulsory licensing if not
notified on 5 produced locally.
July 2001
DS196 ARGENTINA – Certain US Mutually Arts. 27, 28, 31, Protection against unfair commercial use of
Measures on the agreed solution 34, 39, 50, 62, test data submitted for regulatory use; scope
Protection of Patents and notified on 31 65, 70 of biotechnology patents; provisional court
Test Data May 2002 orders for infringement and the burden of
proof for infringement of process patents;
patent rights over products produced by
patented processes and imports; safeguards
for compulsory licences; transitional patents.

158
 Respondent and title of
WTO dispute dispute (short title Complain- TRIPS
Status IP issues
number99 provided where a panel ant provisions100
has been established)
DS186 UNITED STATES – Section EC Consultations Arts. 2 National treatment and non-discrimination in
337 of the Tariff Act of requested on (incorporating Art. the enforcement of IP rights.
1930 and Amendments 12 January 2 of the Paris
thereto 2000 Convention), 3, 9
(incorporating Art.
5 of the Berne
Convention), 27,
41, 42, 49, 50, 51
DS176 UNITED STATES – Section EC Appellate Body Arts. 2 National treatment in the enjoyment of
211 Appropriations Act and Panel (incorporating Art. trademark rights; ownership entitlements on
reports adopted 6quinquies of the IP.
on 1 February Paris Convention),
2002 3, 4, 15, 16, 42
DS174 EUROPEAN COMMUNITIES US Panel report Arts. 1, 2 National treatment in the protection of GIs,
– Trademarks and GIs adopted on 20 (incorporating Art. and the relationship of GI protection with
(US) April 2005 2 of the Paris pre-existing trademarks; exceptions to
Convention), 3, 4, trademark rights.
16, 17, 22, 24
DS171 ARGENTINA – Patent US Mutually Arts. 27, 39, 65, Patent protection or exclusive marketing
Protection for agreed solution 70 rights for pharmaceutical products;
Pharmaceuticals and Test notified on 31 protection of test data during transition
Data Protection for May 2002 period for TRIPS implementation.
Agricultural Chemicals
DS170 CANADA – Patent Term US Appellate Body Arts. 33, 65, 70 Term of patents already in force when TRIPS
and Panel comes into effect.
reports adopted
on 12 October
2000

159
 Respondent and title of
WTO dispute dispute (short title Complain- TRIPS
Status IP issues
number99 provided where a panel ant provisions100
has been established)
DS160 UNITED STATES – Section EC Panel report Arts. 9 Substantive protections, and exceptions and
110(5) Copyright Act adopted on 27 (incorporating Arts. limitations to copyright.
July 2000 11 and 11bis of
Award of the the Berne
arbitrator Convention), 13
pursuant to the
recourse to
Arbitration
under Article
25 circulated
on 9 November
2001
Mutually
Satisfactory
Temporary
Arrangement
notified on 23
June 2003
(effective until
21 December
2004)

160
 Respondent and title of
WTO dispute dispute (short title Complain- TRIPS
Status IP issues
number99 provided where a panel ant provisions100
has been established)
DS153 EUROPEAN COMMUNITIES CANADA Consultations Art. 27 Discrimination as to field of technology in
– Patent Protection for requested on 2 patent term extensions.
Pharmaceutical and December
Agricultural Chemical 1998
Products

DS125 GREECE – Enforcement of US Mutually Arts. 41, 61 Enforcement of copyright over TV broadcasts
(Concerns Intellectual Property agreed solution of motion pictures and television
same Rights for Motion Pictures notified on 20 programmes.
measures as and Television Programs March 2001
DS124,
respondent
EC)
DS124 EUROPEAN COMMUNITIES US Mutually Arts. 41, 61 Enforcement of copyright over TV broadcasts
(Concerns – Enforcement of agreed solution of motion pictures and television
same Intellectual Property notified on 20 programmes.
measures as Rights for Motion Pictures March 2001
DS125, and Television Programs
respondent
Greece)

161
 Respondent and title of
WTO dispute dispute (short title Complain- TRIPS
Status IP issues
number99 provided where a panel ant provisions100
has been established)
DS115 EUROPEAN COMMUNITIES US Mutually Arts. 9, 13, 14, 41- Copyright protection of translations of official
(Concerns – Measures Affecting the agreed solution 48, 61, 63, 65, 70 works, architectural works, and anonymous
same Grant of Copyright and notified on 6 and pseudonymous works; ownership of
measures as Neighbouring Rights November rights in film, and recognition of bodies
DS82, 2000 established to protect the rights of unknown
respondent authors of unpublished works; limitations
Ireland) and exceptions to copyright; rental rights for
phonograms; unauthorized recording of
performances; criminal procedures and
penalties for copyright piracy on a
commercial scale; protection of pre-existing
material.
DS114 CANADA – Pharmaceutical EC Panel report Arts. 27, 28, 30, Exceptions and limitations to rights under a
Patents adopted on 7 33 patent; discrimination between fields of
April 2000 technology in patent system.
DS86 SWEDEN – Measures US Mutually Arts. 50, 63, 65 Provisional measures inaudita altera parte in
Affecting the Enforcement agreed solution civil proceedings to secure evidence of
of Intellectual Property notified on 2 infringement of IP rights.
Rights December
1998
DS83 DENMARK – Measures US Mutually Arts. 50, 63, 65 Provisional measures inaudita altera parte in
Affecting the Enforcement agreed solution civil proceedings to secure evidence of
of Intellectual Property notified on 7 infringement of IP rights.
Rights June 2001

162
 Respondent and title of
WTO dispute dispute (short title Complain- TRIPS
Status IP issues
number99 provided where a panel ant provisions100
has been established)
DS82 IRELAND – Measures US Mutually Arts. 9 Copyright protection of translations of official
(Concerns Affecting the Grant of agreed solution (incorporating Arts. works, architectural works, and anonymous
same Copyright and notified on 6 1-21, except Art. and pseudonymous works; ownership of
measures as Neighbouring Rights November 6bis, of the Berne rights in film, and recognition of bodies
DS115, 2000 Convention), 12- established to protect the rights of unknown
respondent 14, 41-48, 61, 63, authors of unpublished works; limitations
EC) 65, 70 and exceptions to copyright; rental rights for
phonograms; unauthorized recording of
performances; criminal procedures and
penalties for copyright piracy on a
commercial scale; protection of pre-existing
material.
DS79 INDIA – Patents (EC) EC Panel report Arts. 27, 65, 70 Provisional arrangements pending the
adopted on 22 introduction of patents on pharmaceutical
September products.
1998
DS59 INDONESIA – Autos US Panel report Arts. 3, 20, 65 Whether benefits for motor vehicles bearing
(See related adopted on 23 a unique Indonesian trademark owned by
complaints July 1998 Indonesian nationals discriminates against
by the EC national treatment principle vis-à-vis foreign-
(DS54) and owned trademarks and their owners.
Japan
(DS55,
DS64)

163
 Respondent and title of
WTO dispute dispute (short title Complain- TRIPS
Status IP issues
number99 provided where a panel ant provisions100
has been established)
DS50 INDIA – Patents (US) US Appellate Body Arts. 27, 65, 70 Provisional arrangements pending the
and Panel introduction of patents on pharmaceutical
reports adopted products ('mailbox' case).
on 16 January
1998
DS42 JAPAN – Measures EC Mutually Arts. 14, 70 Protection of past performances and existing
Concerning Sound agreed solution sound recordings.
Recordings notified on 7
November
1997
DS37 PORTUGAL – Patent US Mutually Arts. 33, 65, 70 Patent terms to be at least 20 years.
Protection under the agreed solution
Industrial Property Act notified on 3
October 1996
DS36 PAKISTAN – Patent US Mutually Arts. 27, 65, 70 Patent protection for pharmaceutical and
Protection for agreed solution agricultural chemical products and exclusive
Pharmaceutical and notified on 28 marketing rights in such products.
Agricultural Chemical February 1997
Products
DS28 JAPAN – Measures US Mutually Arts. 3, 4, 14, 61, Protection of past performances and existing
Concerning Sound agreed solution 65, 70 sound recordings.
Recordings notified on 24
January 1997

164
A number of the adopted reports relate in substantial part to the scope of allowable
exceptions under the Agreement. Canada – Pharmaceutical Patents (DS114) focused
on the three-step test under Article 30,101 US – Section 110(5) Copyright Act (DS160)
on the three-step test under Article 13,102 and EC – Trademarks and Geographical
Indications (DS174, 290) on Article 17.103

More recently, Australia – Tobacco Plain Packaging (DS435, 441, 458, 467)
addressed, inter alia, the scope of trademark rights under Article 16 and Article 20,
which provides that the use of a trademark in the course of trade shall not be
unjustifiably encumbered by special requirements.104

The reports in US – Section 211 Appropriations Act105 (DS176) and EC – Trademarks

and Geographical Indications (DS174, 290) focused on the central principle of non-
discrimination. Some bilaterally settled cases have focused on enforcement (Denmark
and Sweden – Measures Affecting the Enforcement of Intellectual Property Rights
(DS83, 86), and European Communities and Greece – Enforcement of Intellectual
Property Rights for Motion Pictures and Television Programs (DS124, 125)).

The reports in US – Section 110(5) Copyright Act (DS160), US – Section 211

Appropriations Act (DS176), EC – Trademarks and Geographical Indications (DS174,
290), China – Intellectual Property Rights (DS362), and Australia – Tobacco Plain
Packaging (DS435, 441, 458, 467) have had to interpret provisions of the Berne or
Paris Conventions, as incorporated into the TRIPS Agreement. Panels and the
Appellate Body have sought to take care to interpret the provisions of the TRIPS
Agreement and these WIPO conventions in ways which reconcile them and avoid
conflicts between them, taking into account the drafting history of the Berne and Paris
Conventions and the subsequent practice relating to them. Panels have invariably
sought and obtained factual information from the International Bureau of WIPO about
drafting history and subsequent practice in regard to WIPO provisions that they have
been called upon to interpret.

Guide to resources

All the WTO documents referred to above are available on the WTO website at
docs.wto.org. A special document portal – accessed through the Dispute Settlement
Gateway on the WTO website, www.wto.org/disputes – provides easy access to
documents on specific TRIPS disputes. Appendix 2 to this Guide provides more
information on how to access WTO documents.

101 For a brief summary of the case, see Box V.1.

102 For a brief summary of the case, see Box II.1.
103 For a brief summary of the cases, see Box III.4.
104 For a brief summary of the cases, see Box III.3.
105 For a brief summary of the case, see Box III.1.

165
Figure IX.2 Accessing dispute settlement documents at www.wto.org/finddisputes

A more detailed description of the dispute settlement system can be found in the WTO
Secretariat publication A Handbook on the WTO Dispute Settlement System.106 A
useful resource on the legal interpretation and application of the WTO agreements by
the Appellate Body, dispute settlement panels and other WTO bodies is the WTO
Analytical Index: Guide to Law and Practice, available at www.wto.org/analyticalindex.
It provides information on the jurisprudence and practice relating to each provision of
the WTO agreements.

The provisions of the GATT 1994 referred to in the TRIPS Agreement and the DSU are
not included in this volume. They can be found in The WTO Agreements: The Marrakesh
Agreement Establishing the World Trade Organization and its Annexes,107 A Handbook

106A Handbook on the WTO Dispute Settlement System, 2nd edn (Cambridge University Press, 2017).
107The WTO Agreements: The Marrakesh Agreement Establishing the World Trade Organization and its Annexes
(Cambridge University Press, 2017).

166
on the WTO Dispute Settlement System, and on the WTO website,
www.wto.org/legaltexts.

167