Bilateral free trade agreements can have a profound effect on national intellectual property legislation, and a Thursday panel offered countries a deeper understanding of the stronger enforcement provisions typically found in such agreements.

Legal enforceability features predominantly in bilateral agreements which contain IP provisions that go beyond the 1994 World Trade Organization Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement, said Petros Mavroidis of Columbia Law School (US).

He spoke at a 16 April event in Geneva co-organised by the World Bank, the United Nations Conference on Trade and Sustainable Development (UNCTAD), and the International Centre for Trade and Sustainable Development (ICTSD). The event focussed primarily on agreements between the United States or the European Union and developing nation partners.

A key area of discussion was the impact of so-called “TRIPS-plus” measures, in which IP protection is stronger than in TRIPS.

The broad agenda on the part of the United States and the European Union with regard to IP protection “may stretch capacity of countries to implement” new legislation, said Jean-Christophe Maur of the World Bank Institute. It is unclear if TRIPS-plus measures require new laws, but the suspicion is that they do, he said.

One panellist suggested this ratcheting up of IP protection could derive from an incomplete interpretation of multilateral IP agreements.

The classic world view, said Henning Gross Ruse-Khan of the Max Planck Institute, is that IP agreements set minimum standards only, which can then become the basis for further IP protection.

“I challenge this,” he said, “with the idea that there are some provisions which offer the idea of mandatory limitations to IP protection.” These are not exceptions and limitations in the classical sense, where certain topics are excluded from protection, he said, but instead are a more general cap.

Changing Domestic Laws

“My own impression,” Maur said, “is that there’s substantial impact on national laws” of free trade agreements in terms of how IP rights are legislated and implemented domestically. They may also affect countries’ relationships to other international agreements, in particular the way that multilateral agreements are transposed into national law, he added.

“The decision to accede to a new IPR convention by developing countries requires in-depth examination of practical policy and development implications,” said Ahmed Abdel Latif of ICTSD.

Vietnam, for example, saw fifteen times as many patent applications after joining the World Intellectual Property Organization Patent Cooperation Treaty, explained Sanya Reid Smith of the nongovernmental Third World Network. It is important to ask what kind of effect this upswing might have on access to medicines, she added.

The stronger measures in bilateral agreements act as substitutes for WTO negotiations, Maur explained, as TRIPS is over 10 years old and the IP world has changed. They may also serve to interpret TRIPS obligations, he added, in some cases pre-empting the freedom of transposition of TRIPS.

Strengthened IP is Legally Enforceable; Has Domestic Effects

There are two kinds of extended IP protection in trade agreements, Mavroidis said in the paper [pdf] he presented at the meeting, co-authored by Henrik Horn and André Sapir. The paper covers preferential trade agreements on all topics, not just IP.

The two kinds are so-called WTO-plus or TRIPS-plus measures – that is, areas which are already covered by a WTO agreement like TRIPS and are simply strengthened, for example by a longer term of protection; and “WTOx” or “TRIPSx” measures, which are new areas of coverage beyond the original scope of the WTO.

The paper looks at 14 agreements between the US and other countries, and 14 agreements between the European Union and other countries. TRIPS-plus measures appear in 13 of 14 EU free trade agreements and in all of the US ones. TRIPSx measures appear in 11 of the 14 EU free trade agreements and in 13 of US ones, he added.

Further, these measures almost always carry strong legal protection. Mavroidis defined legal enforceability as a two-step test – requiring not only that language is sufficiently precise to confer specific rights but that there also be a body which allows for dispute settlement. With this definition, he found that 93 percent of TRIPS-plus measures in EU agreements and 100 percent in US agreements of are enforceable; and that 79 percent of TRIPSx measures in EU agreements and 93 percent in US agreements are enforceable.

Extra IP protection in bilaterals includes, for example, term extension for delayed patent approval, limits on the use of compulsory licences, the granting of exclusive rights to data for pharmaceutical processes, and accession to the WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty, said Maur.

Such protection comes as a part of a broader package, and is not necessarily something that developing countries are demanding, said Pedro Roffe of ICTSD, who spoke on the negotiation of the existing free trade agreement between Chile and the US.

The US-Chile agreement, Roffe said, “was a blueprint for later” free trade agreements, and included a full chapter on intellectual property rights [pdf].

One notable feature of bilateral agreements with the United States, Roffe said, is that countries are under obligation to “adjust internal IP regimes to new IP standards, prior to the entrance into force of the agreement.”

The implementation process can present a challenge as well, said Santiago Roca of the Universidad ESAN in Lima. The free trade agreement negotiated between the US and Peru, for instance, saw changes to the accord during the implementation process to satisfy questions posed by the US Trade Representative.

The Peruvian Congress approved legislation to implement a version of the FTA amended by Democrats in 2007, explained Roca. But the USTR did not approve its entry into force until after several legislative decrees were changed in January 2009. These changes, he added, turned back the clock on some gains made by the Democratic amendments, resulting in stronger IP enforcement within the implemented FTA.

Bilateral agreements also can present challenges to pre-existing regional agreements when one member strikes a bilateral deal outside the region that includes higher standards.

Using Negotiating Processes To Find Innovative Exceptions

But the challenge to the IP system can go both ways, said participants, and there may be space for limiting enforcement strength.

Article 1.1 of TRIPS is key evidence that such limits could already exist in multilateral agreements, Ruse-Khan said. It specifies that stronger protection measures than TRIPS may be undertaken but only “provided this does not contravene the provisions of this agreement.” There are binding limits in TRIPS on the amount of IP protection a nation can have, and this article makes such limitations binding.

And the bilateral system can also be used to influence multilateral processes, said Malcolm Spence of the regional negotiating strategy group for the Caribbean region, the Caribbean Regional Negotiating Machinery. Spence was a part of the regional negotiating group Cariforum that entered into a free trade agreement with the EU in December of 2008.

Spence added that developing countries “need to understand” how building a portfolio of free trade agreements that include language on trade and innovation as well as IP can help place them in a better place to negotiate at the WTO. The Cariforum-EU agreement [pdf] contains language on fostering innovation, including via the transfer and dissemination of technology, though Spence cautioned against its use as a model because of the uniqueness of the way the regional group was formed.

“If you do well in one negotiation,” said Latif, “you can capitalise on it in another.”