International

Governance of Patents

Prof. Anil B. Suraj

IIM Bangalore
April 2011
 Session Objectives

 To understand the basic concepts of

global governance of IPRs – especially
within the WTO framework

 To appreciate the working principles of IP

enforcement and dispute settlement
 “Interests” in Globalization
 Rebuilding by “developed” economies –
UN, IBRD (WB), IMF, GATT/ITO

 Strategic incorporation of “developing”

nation concerns – UNCTAD & Part-IV
GATT

 Building of “consensus” in WTO

 WTO – Constitutional Principles

 Most Favoured Nation (MFN)

 National Treatment

 One Member – One Vote

 Reverse Consensus Rule

 WTO – Principles …

 Single Undertaking – except in Plurilateral Form

 Dispute Settlement – multi-tiered structure

 Enforcement – Sanctions and Countermeasures

 Supreme respect for Negotiations – at all stages

 WTO – dilutes sovereignty?
 Sovereignty vs. Interdependency

 Classification and recognition of core

principles of constitutional democracy:
 Human rights;
 Popular sovereignty;
 Transparency;
 Limited government;
 Democracy;
 Rule of law;
 Checks and balances
 Evolution of IPR regime
 Early 17th Century Monopolies Statute
 Maximum flexibility to national governments

 Paris Convention (1883); Berne

Convention (1886); Madrid Agreement
(1891) – for different forms of IPRs
 Minimum obligations but with flexibilities
 National Treatment; Reciprocal obligations
TRIPs Regime – Salient Features
 Basic and Founding Principles
 MFN status; National Treatment

 Forms of IPRs and bases of protection

 Aiming for uniformity

 Enforcement Mechanisms mandated

 Civil and Criminal; Border measures

 Special Provisions and Dispute Settlement

 Accent on technology transfer & promotion
 Non-violation Complaints
 TRIPs Regime …
 TRIPs – common institutional framework for
IPRs related trade concerns
 In-built flexibilities: Novartis matter in India
 Complementary role of WIPO; Emerging RTAs

 Balance between removing incentives for

counterfeit trade and facilitating legitimate trade

 Enforcement mechanisms
 Autonomy given to Member nations to “enforce law in
general” – no need for specific judicial system
 Principles of Enforcement
 Procedural fairness and equity
 Protection of confidentiality

 Evidentiary principles
 Use of adverse inference by some Nations

 Remedies through injunctions (ex parte),

damages, costs, disposal and destruction

 Defendant safeguards – if process is abused

 Systemic Flexibilities –
Enforcement measures
 Border enforcement measures
 CBEC – IPRs (Imported Goods) Enforcement Rules, 2007
 Single authority determinations

 Provisional measures and procedures

 Right holder being informed

 Suo motu release of goods

 De minimis standards – non-commercial

 Dispute Settlement Process
 Built on the bedrock of Consultations

 Panel + Appellate Review = special regard to

Developing country and Third Party interests

 Outcomes are recommendations to DSB

 ADRs in Dispute Settlement Process

 Issues and Concerns
 Panel and Appeal need to only conclude on the
inconsistency of measures – not HOW they could
be made consistent
 Encourages non-compliance/delayed response?

 Appeal may – uphold, modify or reverse – only

the legal findings of the Panel
 Appeal limited only to issues of law
 No remand powers upon factual inadequacy
Panel & Appellate jurisdiction
 Apex adjudication over Sovereign power?

 “Public” & political vs. “Private” economics

 Free-Trade Constitution – an “Understanding”

– being interpreted

 Multi-disciplinary issues: “Brown” & “Green”

International Patent Practice:


Emerging
Transfer of Technology
issues
 IP Assets Valuation; Legal framework

 Innovation-driven management structure

 Return on Innovations (RoI)
 Intellectual asset management
 Strategic Licensing – flexibilities under TRIPs

 Anti-competitive & Confidentiality clauses

 Non-violation Complaints and Dispute settlement

 Thank You!

absuraj@iimb.ernet.in