Journal of World Intellectual Property, Vol 4 No 2, March 2001

Developing TRIPS Jurisprudence: the first six years and beyond

Dara Williams

This article reviews the "case law" derived from the proceedings within the World Trade Organisation in disputes under the TRIPS agreement. The first part of the article looks at the general state of play as at February 2001 and briefly examines the jurisprudence developed during the period 1995 to 1999. It has a useful Table setting up the progress of the 24 disputes lodged so far and, in particular, the initiating and responding countries, the relevant articles of the TRIPS agreement, the intellectual property area and the current status of the dispute. There are detailed discussions of the United States complaint about Indonesia (Certain measures affecting the automobile industry) concerned with trade marks, and the United States and European Union complaint about India (Patent protection for pharmaceutical products). In the second part of the article, the author studies the WTO Panel Report on the European Union complaint about Canada (Patent protection of pharmaceutical products) adopted in April, 2000. The author emphasises the point made by the Panel that, because of the framework of the TRIPS agreement, the context to which the Panel could refer in interpreting certain TRIPS provisions included inter alia the provisions of the World Intellectual Property Organisation treaties incorporated into TRIPS. However, the main thrust of the author's comments on the Canada case go to the interpretation of Article 30 of the TRIPS agreement, which allows for certain exceptions to the general principles of patent protection, provided that the exceptions are limited, do not unreasonably conflict with normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner. The Canadian law was found to satisfy all three of these cumulative provisos. In the third part of the article, the author studies the World Trade Organisation's Panel Report on the European Union complaint against the United States (Section 110(5) of the United States Copyright Act) for allowing exemptions for "homestyle" reproduction and for small businesses from copyright protection. There is a detailed commentary of the Panel's consideration of the Berne Convention, to the extent that it has been adopted in the TRIPS agreement, and of the "minor exception" doctrine therein. The author has some perceptive comments on the case, in which the Panel upheld the homestyle exemption, but rejected the business exemption. The article concludes with a reference to the strict constructional approach by the Panels so far and the challenge to the Panels in future to develop practical, balanced clarifications of the nature and scope of the Agreement's provisions. "Whether future Panels and the Appellate Body can rise to the challenge may be the defining element in the TRIPS Agreement's ultimate success." [20051]