Year Ahead: Key IP-Related Issues, Dates At The WTO In 2015

This year is shaping up to be a busy one for the World Trade Organization, and intellectual property issues are among those coming up.

The WTO Council for Trade-Related Aspects of Intellectual Property Rights (TRIPS) might see some important decisions on issues regularly debated at TRIPS Council meetings.

The TRIPS Council is scheduled to meet on 24-25 February, 9-10 June and 15-16 October. The 10^th WTO Ministerial Conference will take place in Nairobi, Kenya, on 15-18 December. The WTO meetings programme can be found here.

With a ministerial looming at year’s end, the WTO in general will see an active year in the negotiations of the remaining Doha Development Agenda (DDA) issues, which include agriculture, non-agricultural market access, services, development, and a geographical indications (GIs) register for wines and spirits. GIs are products named for geographical locations and specific characteristics.

Early this year, at the first “open-ended” meeting with the WTO members, Director-General Roberto Azevêdo launched a new process of consultations with the aim of agreeing a work programme on the remaining DDA issues by July, which is the deadline set by the members at a special meeting of the General Council in November 2014.

Tackling all issues at the same time, maintaining a high level of engagement and a sense of urgency were referred by Azevêdo as components for a successful outcome. Regular meetings of all members to discuss substantive issues of the DDA will be the “spine of this work”.

As reported by the WTO on 29 January, the first week of intensive negotiations saw progress and strong engagement of the WTO Members. In February, Azevêdo and the chairs of the negotiating groups, were continuing intensive consultations with WTO members towards agreeing a work programme on the remaining Doha Round issues.

On 9 February, Azevêdo was to address a meeting of the WTO African Group on the Protocol amending the TRIPS Agreement on improving access to medicines.

With respect to the Trade Facilitation Agreement, which is part of the “Bali package” adopted at the 2013 Bali Ministerial Conference, the agreement was recently ratified by the United States (the letter of acceptance was delivered by Michael Froman to Roberto Azevêdo on 23 January), and might perhaps push other countries to ratify the agreement, sources said. It will enter into force once two-thirds of members have completed their domestic ratification process.

The following is a look at some of the key IP-related issues expected to be discussed this year.

Non-Violation Disputes

A decision will be needed on whether to extend a moratorium on non-violation complaints in the TRIPS Agreement.

Non-violation disputes arise when one country challenges the legality of another’s actions, if it feels it is deprived of an expected benefit, even if no WTO agreement or commitment has been violated. Such complaints are allowed for goods and services, but not in intellectual property under a temporary agreement (the “moratorium”).

The moratorium was initially to expire in 1999, by which time the TRIPS Council was mandated under Article 64 of the 1994 TRIPS Agreement to provide recommendations to the Ministerial Conference on scope and modalities of such disputes. The moratorium, however, has been extended several times. The last extension was agreed at the Bali Ministerial Conference in December 2013, which will expire by the December WTO ministerial meeting.

At the TRIPS Council meeting on 11 June 2014, the United States tabled a paper asserting that non-violation complaints should be allowed under the TRIPS Agreement. The US proposal was re-discussed at the October 2014 meeting (IPW, WTO/TRIPS, 30 October 2014). While only Switzerland supported the US proposal, other WTO member states, including Venezuela, South Africa, Brazil, China, and Bangladesh, considered non-violation cases to be inappropriate in relation to intellectual property.

The United States’ position on this issue is that the possibility of such complaints, which, in their view, would be successful only in limited instances, should be preserved “as a safety net to discourage actions that evade obligations without directly violating them, actions that non-violation complaints were intended to prevent from the beginning.”

A number of arguments have been advanced against the non-violation complaints, which include, among others, that, unlike other WTO agreements, the TRIPS Agreement is a sui-generis agreement which establishes minimum standards of intellectual property protection rather than protecting market access. Also argued is that non-violation complaints would upset the balance of rights and obligations “by elevating private rights over the interests of users and public policy concerns,” and that such complaints would undermine the flexibilities inherent in the TRIPS Agreement.

Tobacco Plain Packaging

There are a number of recent WTO dispute settlement cases that relate to IP rights, but only one is considered very active.

Last year, national laws requiring that tobacco products be sold in plain packaging were debated twice at the TRIPS Council – in February and October. Several countries opposed to such plain packaging for tobacco products urged members to wait before introducing plain packaging until a ruling emerges from the WTO dispute settlement cases on this matter. Plain-packaging proponent Australia, meanwhile, has said the issue should not be brought up again in the TRIPS Council now that it is the subject of the Dispute Settlement Body (DSB).

Plain packaging or “standardized packaging” requires companies to use standard colours and typefaces instead of brand logos on packages, usually with graphic images and health warnings.

This item first appeared in the agenda of the intellectual property council in June 2011. Discussions were at that time prompted by the Australian plain packaging bill, which entered into force in December 2012. In subsequent TRIPS Council meetings, a similar bill in New Zealand and policies announced in other members, including Ireland, France and the EU, were discussed.

The law was developed as a public health measure to discourage use of tobacco products, following a suggestion of the World Health Organization, setting up a broader debate over economic versus health priorities.

Five WTO countries (including four tobacco-producing nations) – Ukraine (DS434), the Dominican Republic (DS441), Cuba (DS458), Honduras (DS435) and Indonesia (DS467) – brought legal challenges against Australia before the DSB. They claim that Australia’s labelling and packaging requirements violate WTO rules by limiting or prohibiting the use of trademarks, geographical indications, or both on tobacco products, and by requiring these products only to be sold in standardised packaging.

It is unclear how much the issue will be debated at WTO in 2015. A single panel to handle the five disputes was appointed on 5 May 2014. On 10 October 2014, the chair of the panel informed the DSB that the panel expects to issue its final report to the parties not before the first half of 2016, in accordance with the timetable adopted by the panel on 17 June 2014 on the basis of a draft timetable proposed by the parties. Until the panel report is issued in 2016, all other procedural steps are confidential.

The timeline of the key events can be found here [pdf].

LDC Request for Extension

The February 2015 TRIPS Council meeting is expected to address the possible further extension of the 1 January 2016 deadline set by the 2002 TRIPS Council decision for least-developed country members to comply with TRIPS provisions on pharmaceutical products.

The extension was requested by Bangladesh on behalf of the Least Developed Countries group at the last TRIPS Council meeting in October 2014. [corrected]

Meanwhile, the general extension for least developed countries to apply the provisions of the TRIPS Agreement (except Articles 3, 4 and 5 on national treatment, most-favoured-nation status, and multilateral agreements) as contained in a 2013 TRIPS Council decision, is set to expire 1 July 2021 or until such date on which they cease to be a least developed country member, whichever date is earlier. This exemption does not expressly exclude any sectors or products from its scope.

At the Bali Ministerial Conference, the member states welcomed the 2013 TRIPS Council decision, as stated in the Bali Declaration.

GI Register for Wines and Spirits

This year will see another important date, 1 July 2015, set by the WTO General Council on 27 November 2014, which is the deadline for agreeing a work program on how to complete the Doha Round negotiations as a whole mandated in the Bali Declaration.

A multilateral system for notifying and registering geographical indications for wines and spirits (GI Register) is part of the Doha Round talks negotiated at the TRIPS Council in “special sessions”. Discussions on the register have been going on for a number of years, with no agreement.

WTO member states are divided over whether participation in the GI register should be voluntary or mandatory; what legal effect the registration of a geographical indication in the system would need to have within member countries; and to what extent, if any, the effect should apply to countries choosing not to participate in the system.

They also have disagreed whether the talks on the register should be part of a larger package that includes a proposal to extend the higher level of protection given to wines and spirits to other products, and a proposal to amend the TRIPS Agreement to require in particular that patent applications disclose the origin of genetic resources and any associated traditional knowledge.

Some countries, including Brazil, China, the European Union, and Switzerland, link these issues; others, such as Argentina, Australia, the United States, Japan, and New Zealand, object, arguing that the issues are separate and that the negotiations should stick to the mandate of a GI register for wines and spirits. (IPW, WTO/TRIPS, 12 December 2014)

At an “open-ended” informal special session of the TRIPS Council convened on 12 December 2014, the WTO member states said they were committed to meet the July 2015 deadline for setting out plans on how to set up the GI register. However, the countries on both sides of the debate said that “hard talking” would have to wait until a clearer picture emerges in other key topics, such as agriculture, non-agricultural market access and services.

Honduras Ambassador Dacio Castillo, who is the current chairperson of the TRIPS Council special session, proposed starting with an informal information meeting rather than a negotiating session in February 2015. This would include a summary of what had happened up to 2011, as reminder to delegates on where the talks had reached. It could also include information on developments outside the WTO that might have a bearing on the talks.

Annual Reviews

Another item on the agenda for the TRIPS Council is the annual reviews to be undertaken in its October 2015 meeting.

The first one relates to the so-called “paragraph 6” waiver of TRIPS rules. This is a mechanism intended to increase the ability of governments to export pharmaceuticals produced under compulsory licence (bypassing some patent rights) to countries that cannot make the medicines themselves. Paragraph 6 refers to the 2001 Doha Declaration on TRIPS and Public Health, which called on members to resolve the issue. On 30 August 2003 they agreed a temporary waiver that removes the limit in TRIPS Article 31(f) on the amount nations can export under a compulsory licence to countries needing the medicines.

The temporary waiver was made a 2005 amendment to the TRIPS Agreement, which has not yet gone into effect. Under the 2005 amendment, this mechanism will be formally built into the TRIPS Agreement once two-thirds of the WTO members have accepted the change. As of 26 November, 53 countries had formally accepted the amendment (document IP/C/69).

Once two-thirds of members have adopted it, the amendment will take effect in those states. For each of the remaining members, the waiver will continue to apply until that member accepts the amendment.

The WTO General Council decision of 26 November 2013 (document WT/L/899) extended the deadline to do this to 31 December 2015.

Separately, another annual review to be undertaken by the TRIPS Council concerns the commitment of developed countries to create incentives for technology transfer for the benefit of least-developed countries. This has historically been an issue of importance to developing countries as it was considered one of the conditions for them to agree to join TRIPS (IPW, WTO/TRIPS, 22 October 2014).

Finally, the third TRIPS Council annual review, also of importance to the developing and least developed countries, concerns technical cooperation and capacity building. In particular, it relates to the commitment of developed countries to provide, on request and on mutually agreed terms and conditions, technical and financial cooperation in favour of developing and least-developed country members.

The objective of such cooperation is to facilitate the implementation of the agreement. Pursuant to Article 67 of TRIPS, such cooperation includes “assistance in the preparation of laws and regulations on the protection and enforcement of intellectual property rights as well as on the prevention of their abuse,” and “support regarding the establishment or reinforcement of domestic offices and agencies relevant to these matters, including the training of personnel.”

Elena Bourtchouladze (LLB, DEA) holds a PhD degree in Public International Law from the Graduate Institute (Geneva) with focus on the WTO TRIPS Agreement and WIPO Conventions. She is a researcher at IP-Watch, and has experience in regulatory and litigation at a multinational company and an international organisation.

Image Credits: WTO