INTELLECTUAL PROPERTY AND Professor Bryan Mercurio

Chinese University of Hong

TRADE Kong, Faculty of Law
OUTLINE
1. Intellectual property as a subset of international
economic law – trade and investment
2. Examples of patent law, pharmaceuticals
3. Exceptions to patent rights, compulsory licensing
4. The push for IP maximalisation
5. Examples of technology transfer
CONCEPT AND FUNCTIONS OF
IPRS
Create and grant legal entitlement to exclusive
commercial use of information due to market
failures
 “Monopoly” in form of exclusive rights limited in time as
incentive for innovation (e.g. patents) and creation (e.g.
copyright)

 Dissemination of innovative and creative efforts

 Renewable “monopoly” as identifier and incentive to invest in

quality (trademarks, trade names, indication of origin)
IP AND TRADE LINKAGES
IPRs are rights given to persons over the creations of their
minds. They usually give the creator an exclusive right
over the use of his/her creation for a certain period of
time

Linkage between IP and trade: broadly through following

two premises:
 (I) Widespread piracy, counterfeiting and infringements of intellectual
property rights constituted a barrier to trade
 (II) IPRs/technology transfer agreements
IP AND THE WTO
Negotiated in the Uruguay Round
Rationale — minimum standards on rights and enforcement
obligations— IP inherent in many/most goods that are traded
Difficult Negotiations
 North v South, with unilateralism in the background (S 301)
Controversial Implementation
 raising issues about the limits countries face when they try to
adopt high standards.
TRIPS & IP HISTORY
TRIPs follows up and incorporates major intellectual property
treaties:
 Paris (1883) (patents/trademarks)
 Berne (1886) (copyrights)

Objectives of the TRIPS Agreement

 To reduce distortions and impediments to international trade and
take into account the need to promote competent as well as
adequate protection of IPRs
 To ensure that measures and procedures to enforce IPRs do not
themselves become barriers to legitimate trade
 To reduce tensions by reaching strengthened commitment to
resolve disputes on trade-related IP issues through multilateral
procedures
 To establish a mutually supportive relationship between the WTO
and World Intellectual Property Organisation (WIPO)
 “[T]he field of international intellectual
property law underwent a tectonic shift
HISTORICAL FOUNDATION OF
with the promulgation of the [TRIPS].”IPRS –
TECTONIC SHIFT
- Charles McManis, Washington University of Saint Louis
WHAT DOES THE TRIPS AGREEMENT DO?

Recognizes and defines minimum standards in seven

categories of IPRs:
 Patents (product and process)
 Trademarks
 Copyrights
 Trade Secrets
 Industrial Designs
 Lay-out Designs/Integrated Circuits
 Geographical Indications
STANDARD SETTING IN THE
TRIPS
Territoriality – countries recognise IPRs and
provide a way to grant and enforce rights—in
domestic laws
Sets out minimum standards
 Term of protection
 Principles of MFN and National Treatment
 Procedural and enforcement obligations
 Setting up of IP administrative offices
 judicial procedures
 border and internal measures to counter infringement — seizures
 civil and criminal procedures
DESIGN OF TRIPS AGREEMENT
Part 1 — General Provisions and Basic Principles
 Scope; Adoption of Existing Intellectual Property Conventions;
National Treatment; Most Favoured Nation

Part II — Standards (on availability, scope and use) for

each of the seven IPRs
Part III — Obligations to provide procedures/remedies
for IP rights
Part IV — Transitional Arrangements
Part V — Dispute Settlement
DESIGN OF TRIPS AGREEMENT
Illustration: Part II, Patents
 Art. 27 Patentable subject matter
 Art. 28 Rights Conferred
 Art. 29 Conditions on Patent Applicants
 Art. 30 Exceptions to Rights Conferred
 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
 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 Members the right
to determine what constitutes an abuse of IPRs and to ban certain
licensing practices.)
TRIPS AGREEMENT: ART 27

Patents shall be available

• “…for any inventions, whether products or processes, in all fields of

technology, provided that they are new, involve an inventive step and
are capable of industrial application … and patent rights enjoyable
without discrimination as to the place of invention, the field of
technology and whether products are imported or locally produced.”

Sets out several minimum standards for patent

protection
• Invention (whether products or processes)
• Novel
• Inventive step (non-obvious)
• Capable of industrial application (useful)
PATENTABLE SUBJECT MATTER

TRIPS 27(2), ‘Exceptions’ to patentability

Members may exclude from patentability inventions … 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…

TRIPS Art 27(3)

(a) Members may exclude diagnostic, therapeutic and surgical methods for the
treatment of humans or animals
(b)) Members may exclude 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…
INVENTIVE STEP
Inventiveness (aka non-obvious)
 protects against patents being granted for
things that are already in the public domain
 protects against patents being granted for
new inventions which lack creativity such that
they are obvious to a person of ordinary skill
in the art relative to the invention

US Patent Code, S 103

 (a) A patent may not be obtained though the
invention is not identically disclosed or
described as set forth in section 102 of this
title, if the differences between the subject
matter sought to be patented and the prior
art are such that the subject matter as a
whole would have been obvious at the time
the invention was made to a person having
ordinary skill in the art to which said subject
matter pertains. Patentability shall not be
negatived by the manner in which the
invention was made. …
New forms of known substances In April 2013, Supreme Court of India denied
Novartis a patent for cancer drug Glivec

India excludes patents on ‘the mere discovery of a Rejected in 2006 - Section 3(d) of the Patents Act
new form of a known substance which does not result Appeals rejected in 2007 and 2009
in the enhancement of the known efficacy of that
substance or the mere discovery of any new
property or new use for a known substance…’.
Efficacy = improvement to the actual medicinal or
healing effect in the body as opposed to merely
allowing the medicine to be stored or handled more
easily or cheaply.

NOVELTY AND INVENTIVE STEP

Utility = useful or capable of What is the point where a Is objective evidence of effect,
industrial application concept turns from mere or potential effect, needed?
speculation to utility?
Invention must be ‘new and useful’
• ‘If not useful, it is not an
invention within the meaning of
the Act’ (Apotex v Welcome
(CND SC, 2002))

UTILITY/INDUSTRIAL APPLICATION
UTILITY/INDUSTRIAL
APPLICATION
Article 33(4) of the PCT states:
 “For the purposes of the international preliminary examination, a claimed
invention shall be considered industrially applicable if, according to its
nature, it can be made or used (in the technological sense) in any kind of
industry. “Industry” shall be understood in its broadest sense, as in the Paris
Convention for the Protection of Industrial Property.”

In the context of pharmaceuticals, see In re Brana, US Court of Appeals for

the Federal Circuit:
 “Usefulness in patent law, and in particular in the context of
pharmaceutical inventions, necessarily includes the expectation of further
research and development. The stage at which an invention in this field
becomes useful is well before it is ready to be administered to humans.
Were we to require Phase II testing in order to prove utility, the associated
costs would prevent many companies from obtaining patent protection on
promising new inventions, thereby eliminating an incentive to pursue,
through research and development, potential cures in many crucial areas
such as the treatment of cancer.”
UTILITY AND PHARMACEUTICALS: MORE
DIFFICULT CANADIAN STANDARD
Apotex v Welcome (CND SC, 2002)
 Generic manufacturers challenge AZT patent
 Claims identification of AZT as a treatment for HIV/AIDS was
speculation ‘based on inadequate information and testing’
 Claims NIH should have some patent rights

Court: No patent if Glaxo/Wellcome hadn’t established such utility by

tests or sound prediction (constructive reduction to practice) when it
applied for the patent
Apotex argues
 Glaxo/Wellcome did not “discover” the chemical compound (well-
known for 20 years) for AZT
 Glaxo/Wellcome identified a new use – an unrecognised utility
Supreme Court Doctrine of ‘Sound Prediction’
“Where the new use is the gravamen of the (1) Factual basis for the prediction
invention, the utility required for (2) Articulable and “sound” line of
patentability (s. 2) must, as of the priority reasoning from which the desired result can
date, either be demonstrated or be a be inferred from the factual basis
sound prediction based on the information
and expertise then available.” (3) Proper disclosure

UTILITY AND PHARMACEUTICALS: MORE

DIFFICULT CANADIAN STANDARD
UTILITY: ELI LILLY V CANADA
(NAFTA, 2012)
Eli Lilly submitted notice of its intent to file a
claim under NAFTA Chapter 11 against
Canada
 Court invalidated several Eli Lilly patents
 Complaint against Canada’s strict patentability requirements
applied since 2005 regarding ‘utility’ (‘promise doctrine’) and
a ‘new, non-statutory disclosure obligation’
 Claim expropriation and breach of fair & equitable
treatment (FET) – invalidations ‘are contrary to Canada’s
international treaty obligations’ (i.e. TRIPS, NAFTA and the
Patent Cooperation Treaty)
UTILITY: ELI LILLY V CANADA
(NAFTA, 2012)
Tribunal focused on two questions
 1) has there been a dramatic change in the utility requirement
in Canadian patent law?
 2) is the utility requirement in Canadian patent law, as
applied to the Zyprexa and Strattera Patents, arbitrary and
discriminatory?

Eli Lilly failed to demonstrate a fundamental or dramatic

change in Canadian patent law and that the evolution of the
Canadian legal framework was not arbitrary or
discriminatory in accordance with NAFTA Chapter 11.
EXCEPTIONS: COMPULSORY
LICENSING
Compulsory license
 a government allows the production of a patented product without the
necessary permission from the patent holder

Article 31
 permits Members to grant compulsory licenses for patented products and
processes under limited circumstances and upon satisfying certain conditions (a-
k), including:
 prior negotiation with patent holder (waived in national emergency or other
circumstances of extreme urgency or in cases of public non-commercial use).
 scope and duration of such use shall be limited to the purpose for which it was
authorized
 non-exclusive, non-assignable
 authorised predominantly for the supply of the domestic market
 adequate remuneration
 legal validity of any decision relating to the authorization shall be subject to
judicial review or other independent review by a distinct higher authority in that
Member.
TRIPS: EXCEPTION TO OWNER RIGHTS

Section 84 of India’s Patents

Act allows for the issuance • (1) failure to satisfy the ‘reasonable requirements
of a compulsory licence of the public’;
provided that three years • (2) failure to provide the patented invention to
have passed from the grant the public ‘at a reasonably affordable price’;
of the patent and one of the and
following three criteria is • (3) failure to ‘work’ the patent in India.
satisfied:

• Nexavar, used to treat kidney and liver cancer

• Bayer ‘clearly neglected India’ and that it had
India issues first compulsory not taken ‘adequate or reasonable steps to start
licence in March 2012 the working of the invention in the territory of
India on a commercial level and to an adequate
extent.’
FREE TRADE AGREEMENTS AND
PHARMACEUTICAL PATENTS
Patents-plus, TRIPS-plus
 Patent term extension
 Patent linkage
 Test data protection
 Limitations on compulsory licensing
HARMONISATION: WITHOUT
CONTEXT OR EMPIRICAL BASIS
Differences in design and implementation can have a
large impact on availability of generic medicines and
price
Presumably designed to suit the particulars of the
differing jurisdictions, most simply follow US justifications
and model
No evidence that any of the systems reduce costs,
increase access to medicines or promote innovation
TRIPs (Art 66.2) encourages ‘technology transfer’ Certain International Investment Agreements
prohibit performance requirements, which include
technology transfer provisions
Directs developed countries to provide Broad rejection of performance requirements
incentives to their enterprises and institutions Framework of TRIMS, with wider coverage: export
for the purpose of promoting and performance, technology transfer, equity
encouraging technology transfer to least- participation, etc
developed Members ‘in order to enable them
to create a sound and viable technological
base’.

IIAS AND THE PROHIBITION ON

PERFORMANCE REQUIREMENTS
IIAS AND THE PROHIBITION ON
PERFORMANCE REQUIREMENTS
Canada – Venezuela BIT, Annex II.6
Neither Contracting Party may impose any of the
following requirements in connection with permitting the
establishment or acquisition of an investment or enforce
any of the following requirements in connection with the
subsequent regulation of that investment …
 (e) requirements that an investor of the other Contracting Party
transfer technology, a production process or other proprietary
knowledge to a person in its territory unaffiliated with the transferor,
except when the requirement is imposed or the commitment or
undertaking is enforced by a court, administrative tribunal or
competition authority, either to remedy an alleged violation of
competition laws or acting in a manner not inconsistent with other
provisions of this Agreement.
IIAS AND THE PROHIBITION ON
PERFORMANCE REQUIREMENTS
US-Chile FTA, Investment Chapter, Article
10.5.3(b), prohibition on technology
transfer does not apply…
“when a Party authorizes use of an intellectual property
right in accordance with Article 31 of the TRIPS
Agreement, or to measures requiring the disclosure of
proprietary information that fall within the scope of,
and are consistent with Article 39 of the TRIPS
Agreement”
IIAS AND THE PROHIBITION ON
PERFORMANCE REQUIREMENTS
Japan-Vietnam BIT, Article 4(1)(g), prohibition
on the imposition and enforcement of…
“transfer technology, a production process or other
proprietary knowledge to a natural or legal person or any
other entity in its Area, except when the requirement (i) is
imposed or enforced by a court, administrative tribunal or
competition authority to remedy an alleged violation of
competition laws; or (ii) concerns the transfer of intellectual
property rights which is undertaken in a manner not
inconsistent with the Agreement on Trade-Related Aspects of
Intellectual Property Rights …”