TRIPS, International and European patent law – and human rights

TRIPS, International and European patent law – and human rights Professor Niklas Bruun International IP LAW-course 25.11.2010

The Patent System • Creates incentives to invent/invest • Disclosure of new technique is rewarded with 20 years of monopoly • Still some important differences between USA (first to invent) and the rest of the world (first to file)

TRIPS Article 27 : Patentable Subject Matter ”…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.”

Exclusions from patentability (TRIPS) • When necessary in order to protect ordre public or morality • To protect human, animal or plant life or health or to avoid serious prejudice to the environment

Exemptions from the exclusive patent rights Use without authorisation of the patent holder • Experimental use • Patent pools • Compulsory licensing (TRIPS article 31)

Article 30, TRIPS • Exceptions to Rights Conferred (the three steps test) • Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.

TRIPS, Article 31 Use without authorisation of the patent holder • Experimental use • Patent pools • Compulsory licensing (TRIPS 31)

The starting points The European Community became a WTO Member by a Council Decision 22 December 1994 The ECJ Opinion 1/1994 TRIPS is a ”mixed” agreement

The impact of mixed competence • Were there is full internal harmonisation, the Community has “exclusive” external competence • Where internal harmonisation is lacking in the EC, the Community has no external competence • Partial Competence is present when there is some degree of harminisation • “Parallell competence” in for instance Trade mark law

The legal effect of the provisions in TRIPS • Direct effect and the TRIPS agreement • The indirect legal effect of TRIPS • The Paris Convention

The TRIPS agreement in Finland • Product patent on pharmaceutical products from 1.1.1995 • What about earlier applications • Interpretation of 70 p. 7

TRIPS, Article 31 Other Use Without Authorization of the Right Holder Where the law of a Member allows for other use of the subject matter of a Patent without the authorization of the right holder, including use by the government or third parties authorized by the government, the following provisions shall be respected: (a) authorization of such use shall be considered on its individual merits; (b) such use may only be permitted if, prior to such use, the proposed user has made efforts to obtain authorization from the right holder on reasonable commercial terms and conditions and that such efforts have not been successful within a reasonable period of time. This requirement may be waived by a Member in the case of a national emergency or other circumstances of extreme urgency or in cases of public non-commercial use. In situations of national emergency or other circumstances of extreme urgency, the right holder shall, nevertheless, be notified as soon as reasonably practicable. In the case of public non-commercial use, where the government or contractor, without making a patent search, knows or has demonstrable grounds to know that a valid patent is or will be used by or for the government, the right holder shall be informed promptly

TRIPS, Article 31 (c) the scope and duration of such use shall be limited to the purpose for which it was authorized, and in the case of semi-conductor technology shall only be for public non-commercial use or to remedy a practice determined after judicial or administrative process to be anti-competitive; (d) such use shall be non-exclusive; (e) such use shall be non-assignable, except with that part of the enterprise or goodwill which enjoys such use; (f) any such use shall be authorized predominantly for the supply of the domestic market of the Member authorizing such use; (g) authorization for such use shall be liable, subject to adequate protection of the legitimate interests of the persons so authorized, to be terminated if and when the circumstances which led to it cease to exist and are unlikely to recur. The competent authority shall have the authority to review, upon motivated request, the continued existence of these circumstances; (h) the right holder shall be paid adequate remuneration in the circumstances of each case, taking into account the economic value of the authorization;

TRIPS, Article 31 • (i) the legal validity of any decision relating to the authorization of such use shall be subject to judicial review or other independent review by a distinct higher authority in that Member; (j) any decision relating to the remuneration provided in respect of such use shall be subject to judicial review or other independent review by a distinct higher authority in that Member; (k) Members are not obliged to apply the conditions set forth in subparagraphs (b) and (f) where such use is permitted to remedy a practice determined after judicial or administrative process to be anti-competitive. The need to correct anti-competitive practices may be taken into account in determining the amount of remuneration in such cases. Competent authorities shall have the authority to refuse termination of authorization if and when the conditions which led to such authorization are likely to recur;

TRIPS, Article 31 • (l) where such use is authorized to permit the exploitation of a patent (“the second patent”) which cannot be exploited without infringing another patent (“the first patent”), the following additional conditions shall apply: • (i) the invention claimed in the second patent shall involve an important technical advance of considerable economic significance in relation to the invention claimed in the first patent; • (ii) the owner of the first patent shall be entitled to a cross-licence on reasonable terms to use the invention claimed in the second patent; and • (iii) the use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent.

The Challenge of Disease and Access in Poor Countries • There is an urgent need to expand access to life-saving medicines • 95% of Essential Drugs are off patent yet still inaccessible to one third of the world’s population; in Africa even fewer drugs are patented • To argue that patients’ rights and patents are at odds is a false dichotomy • Less than 1% of Indians living with AIDS have treatment access despite 22,000 local companies and no drug patents • Expanding access to existing medicines alone is not a sustainable option-- innovation is an equally critical part of the solution • New R&D for drugs and vaccines to treat resistant HIV & TB, or better tolerated, more effective treatments for Malaria and other diseases

The Doha Declaration • Clarifies that countries can take action consistent with the Agreement to protect the health of their citizens, using existing flexibilities enshrined in the Agreement • Reiterates Member States’ commitment to the WTO Agreement, which respects the rights of patent holders • Reaffirms that intellectual property protection is important for the development of new medicines

TRIPS, Article 31bis • In the Doha Declaration, a problem is identified • WTO members with insufficient or no pharmaceutical manufacturing capacities could face difficulties in making effective use of compulsory licensing under TRIPS • The solution: To allow a poor country needing drugs that does not have the domestic capacity to produce those drugs to obtain them from a producer country--e.g., India, after 2005

TRIPS, Article 31bis • Article 31bis • 1. The obligations of an exporting Member under Article 31(f) shall not apply with respect to the grant by it of a compulsory licence to the extent necessary for the purposes of production of a pharmaceutical product(s) and its export to an eligible importing Member(s) in accordance with the terms set out in paragraph 2 of the Annex to this Agreement.

TRIPS, Article 31 2. Where a compulsory licence is granted by an exporting Member under the system set out in this Article and the Annex to this Agreement, adequate remuneration pursuant to Article 31(h) shall be paid in that Member taking into account the economic value to the importing Member of the use that has been authorized in the exporting Member. Where a compulsory licence is granted for the same products in the eligible importing Member, the obligation of that Member under Article 31(h) shall not apply in respect of those products for which remuneration in accordance with the first sentence of this paragraph is paid in the exporting Member.

TRIPS and human rights 1.The textual and historical foundations of a human rights framework for intellectual property 2. Contestations after TRIPS • The rights of indigenous people and traditional knowledge • The Trips agreement and the right to health • Other fora than WTO • UNESCO (diversity of cultural expressions) • WHO (medical research and health care) • The development agenda and access to knowledge treaty

TRIPS and human rights HELFER, LAWRENCE (2007) Distinction: • Using human rights to expand intellectual property • Using human rights to impose external limits on intellectual property • Achieving Human rights ends through Intellectual property means

The International Patent System • PCT • Europe EPC, EPO (EPLA) Community Patent Convention = 1975 (never ratified Proposals for a Regulation early 2000 No agreement due to 1) language 2) centralized court system

Europe - Commission Communication 23.4.2007 (8566/07) • Community Patent • An integrated jurisdictional system for patents • The way forward EPLA optional dispute-settlement system Community jurisdiction for European and Community patents The European Commission´s compromise proposal Language issue still unsolved

Background (1) • Commission proposal for a CII Directive February 2002 • Aims: • Harmonise CII law in EU (note EPO is not an EU institution) • Maintain status quo in Europe, based on existing EPO practice • No sudden change in the law • EPC: non patentable= programs for computors • Stop drift towards US practice of allowing business methods and non-technical software

Background (2) • But would exclude program product claims (reversing EPO decisions in IBM cases T 1173/97 & T 935/97)

Council and Parliament ”developments” (1) • Council General Approach adopted November 2002 • (pre-emptive of a formal “Common Position”) • Improvement on Commission Proposal • Program Product claims allowed if claim to computer/network in same pat. appln • i.e. TWO categories of claim required (cost, pitfalls esp. for SMEs- • Finally voted down in parliament

TRIPS, International and European patent law – and human rights