Clash in TRIPS Council on IPR enforcement issue

Many developing countries have opposed another attempt by the European Union and other developed countries to have the TRIPS Council of the WTO to deal with enforcement of intellectual property rights.

At a formal meeting of the TRIPS Council on 25-26 October, the developing countries (including Argentina, Brazil, India, China, Venezuela and Chile) strongly rejected a proposal by The European Communities, United States, Japan and Switzerland on "enforcement of intellectual property rights."

The developing countries also objected to a request by the EU to make a presentation on its experience with enforcing IPRs. They said that allowing such a presentation would be to legitimize one of the proposals (which they had rejected overall) i. e. that the TRIPS Council discuss and share experiences on how to implement enforcement of IPRs.

According to a trade official, the debate on how to proceed went on for quite a long time. The TRIPS Council chairperson, Ambassador Trevor Clarke of Barbados, had to suspend the meeting because of the differences on how to proceed. Eventually, a compromise was agreed, in which the EU could make a shorter presentation and only in oral form, with details to be sent later in writing.

The enforcement issue had been placed on the agenda by the EU, which was following up on its earlier attempts in previous TRIPS Council meetings to place enforcement issues on the agenda. The earlier attempts had also been opposed by several developing countries.

In the view of the developing countries, the TRIPS Council should not be a forum for discussing the enforcement of IPRs of WTO members.

The EU has however been attempting to put this topic on the TRIPS Council agenda. It has now been joined by the three other developed members. Jointly, the four members distributed an informal paper on enforcement of IPRs.

The paper said effective IPR enforcement is important, referring to rapid expansion of global counterfeiting and piracy activity which was partly due to availability of new technologies, and which harmed society as a whole.

The paper added that the TRIPS Council is an "appropriate forum to examine and assist Members in the implementation and enforcement provisions of the TRIPS Agreement". It acknowledged that Members are free to determine the method of implementing enforcement provisions but added that such implementation must ensure adequate achievement of the TRIPS objectives.

"The co-sponsors are convinced that the exchange of experiences and best practices in the TRIPS Council involving all Members would enable all Members to better understand where the problems are, how they can be addressed and what the TRIPS Council can do," said the paper.

The paper's co-sponsors made three proposals: (1) that Members discuss how to implement the enforcement provisions of TRIPS in a more effective manner; (2) that they discuss "accompanying measures" to enhance effectiveness of national implementing legislation and enforcement efforts (such as promoting inter-agency cooperation, fostering higher public awareness, reinforcing institutional frameworks); and (3) that the Secretariat prepare a synopsis of Members' contributions to the Checklist of Issues on Enforcement that would be the basis for the above discussion.

The co-sponsors added that they are ready to better focus the technical assistance they provide in favour of developing countries in order to facilitate the implementation of enforcement provisions.

In the discussion on the paper, several developing countries strongly opposed the proposal, as they had done when the EU had first brought up the enforcement issue at previous Council meetings.

According to a trade official, the developing countries put forward many arguments against the proposal. Among them were that:

Implementation and enforcement of obligations on IPRs are issues that are the purview of national legislations, and should not be under the TRIPS Council.

The issue of weak implementation of TRIPS provisions can be dealt with by other means, such as the national trade policy reviews and the dispute settlement system.

The paper places the developing countries as the focus of "piracy" problems.

The proposals imply that the Council's work and technical assistance should be focusing on enforcement provisions of the TRIPS agreement, when the Council's work should not stress only obligations but also cover the rights and flexibilities that Members enjoy.

This latest attempt by the EU, now joined by the US, Japan and Switzerland, to put enforcement of developing countries' IPR obligations at the front of the TRIPS Council's agenda is part of a comprehensive drive by the developed countries to make use of international organizations and bilateral agreements to get the developing countries to more strictly enforce IPR laws and standards.

The paper put before the TRIPS Council says the co-sponsors "take note of the Statement made by the G8 on 16 July 2006 on Combating IPR Piracy and Counterfeiting."

The developed countries have also tried to bring up the enforcement issue at meetings of the World Intellectual Property Organisation (WIPO), as well as to include it in provisions of bilateral and regional free trade agreements.

Although the developing countries have been beating back the attempts at the TRIPS Council, the developed countries can be expected to maintain their joint pressure at future meetings to get the Council to accept enforcement as one of the issues under its umbrella.

The Council meeting also discussed several other issues, including the relation between TRIPS and the Convention on Biological Diversity, the annual transitional review of China, annual review of TRIPS and public health, and implementation of TRIPS article 66.2 on technology transfer.

On the related issues of review of article 27.3b (on patenting of life forms) and the TRIPS/CBD relationship, Peru presented a paper (in Spanish) which gave more clarifications and details of a previously-submitted proposal to amend the TRIPS agreement so as to require disclosure of the source of origin in patent applications involving genetic resources and associated traditional knowledge.

Peru said examples provided previously related to potential cases of biopiracy. Disclosure of origin and/or source would help the government to identify new inventions using Peru's native resources, and properly verify if they were obtained legally.

Peru added that examples in the past show how difficult it is to follow all possible cases of biopiracy without a disclosure requirement. Such a requirement is needed to ensure the implementation of the CBD.

Peru's statement was supported by many developing countries, according to a trade official. These included Ecuador, Brazil, India, Venezuela, Malaysia, China, Sri Lanka, Thailand, Dominican Republic and Kenya.

Many developing countries called for discussions to proceed based on a text, using as a starting point a draft amendment presented by a group of countries in May (IP/C/W/474). Norway was the sole developed country that also spoke in favour of a disclosure solution.

Several developed countries however spoke against amending the TRIPS agreement. These included the US, EC, Japan, South Korea, Switzerland, Australia, New Zealand, and Canada.

While voicing appreciation for the clarifications by Peru, they were of the view that it is premature to go to negotiations on a text, according to a trade official. These countries also did not believe there is a conflict between provisions of the CBD and TRIPS. They said that the use of national legislation would be the best way to deal with biopiracy cases.

Many of them were also of the view that traditional knowledge databases could be developed for use by patent examiners.

The Chair of the Council concluded that although there is understanding on the objectives, there has been no movement on the positions of the various Members.

On the annual review of the TRIPS and Public Health issue, Switzerland and El Salvador announced that they had ratified the amendment of the TRIPS Agreement that had been agreed to by the WTO in December 2005.

The amendment introduces a waiver to a TRIPS provision that compulsory licenses would be allowed predominantly for domestic supply. The waiver would apply to allow for supply to countries with no or inadequate pharmaceutical drug production.

The TRIPS amendment would make permanent the waiver agreed to in August 2003. It will come into force only after two thirds of WTO members ratify it.

To date, only three members have accepted the amendment. The Council chairperson, Ambassador Clarke, urged members to speed up their acceptance and the Council asked the Secretariat to prepare periodic notes on the status of acceptance.

On the agenda item of China's annual Transitional Review (which is undertaken in line with China's accession agreement), China provided information in writing, in response to written questions that had earlier been submitted by the US, EU and Japan.

China said it had formulated new regulations relating to its TRIPS Commitments, that it is strengthening law enforcement with more effective penalties; and that it had established service centres to receive complaints on IPR infringements.

It also circulated documents to the meeting, including a report on Intellectual Property Protection in 2005; China's Action Plan on IPR Protection for 2006; this year and a book on "Protect Your Intellectual Property Rights in China".

China also said that five years after it joined the WTO, its IPR system is fully consistent with the TRIPS agreement and that it has fully implemented its accession commitments.

According to a trade official, Japan, the US and EU thanked China for the answers and the Chinese recognition that protecting intellectual property rights is important.

However, they said that some questions remained unanswered, that TRIPS infringements in China remain at high levels and more efforts are needed to provide effective protection.

Some said their companies have difficulty pursuing cases and that infringement cases are not pursued adequately under criminal law. Some Members said they are engaging bilaterally with China.