In a piece coauthored with Professor Susy Frankel, we examine the applicability of notions such as justifiability to diminutions of IP rights. The article argues that to interpret the scope of restrictions imposed by TRIPS, including article 20, on WTO member States, one should look beyond the text of each article and consider articles in context, with due regard for the object and purpose of the provision and of the Agreement.
In a panel report issued on the importation and marketing of seal products from Canada issued on 25 November, 2013, and dealing in large part with the Agreement on Technical Barriers to Trade (TBT), a WTO dispute-settlement panel seems to agree with this approach, which also meshes well with previous panel and Appellate Body reports.
Some of the panel’s findings are illuminating. Here is a taste:
“[T]he object and purpose of the TBT Agreement to strike a balance between the objective of trade liberalization and Members’ right to regulate, the Appellate Body concluded that Article 2.1 should not be interpreted as prohibiting any detrimental impact on competitive opportunities for imports in cases where such detrimental impact on imports stems exclusively from a legitimate regulatory distinction.”
Turning to Article XX GATT, the panel noted this:
“The necessity of a measure within the meaning of Article XX(a) is determined through ‘a process of weighing and balancing’ of ‘all the relevant factors, particularly the extent of the contribution to the achievement of a measure’s objective and its trade restrictiveness, in the light of the importance of the interests or values at stake’. The more vital or important the values or interests furthered by a measure are, the easier it will be to accept that measure as necessary. According to the Appellate Body, ‘if this analysis yields a preliminary conclusion that the measure is necessary, this result must be confirmed by comparing the measure with its possible alternatives, which may be less trade restrictive while providing an equivalent contribution to the achievement of the objective pursued’.
In tackling the relationship between the TBT and GATT, the panel said this:
“Given the close relationship between the GATT 1994 and the TBT Agreement and the need to interpret relevant provisions under both Agreements in a consistent and harmonious manner, we consider that an analysis of a measure’s contribution to an objective under Article 2.2 of the TBT Agreement is also relevant to such analysis under Article XX of the GATT 1994. The Appellate Body in US – Tuna II (Mexico) recalled that in assessing the necessity of a measure under Article 2.2, a panel must assess the contribution to the legitimate objective actually achieved by the measure at issue as in other situations, such as for instance when determining the contribution of a measure to the achievement of a particular objective in the context of Article XX.”
The panel’s examination of whether the discrimination in the EU ban between commercial seal hunts and hunts by Inuit hunters is “justified” is similary interesting. While some of that discussion may be used by Members in the TRIPS Art. 20 context, one should bear in mind that, as a substantive matter (that is, independently of burden of proof issues), an analysis of “arbitrary and unjustifable” under art. XX of GATT is not necessarily the same as the justification required under art. 20 of TRIPS.
All of this also shows, it seems to me, that a civil discussion of applicable rules is possible–indeed desirable–even (or especially) where an important public policy matter is at stake .
Four new items: TRIPS & Development, patentable subject matter, the three-step test and copyright formalities
A brief decriptive paper on TRIPS & Development (chpater in upcomign book by Sage) is avilable here.
An updated version of my Patent Target article available here
A new paper on the Three-Step Test, coauthored with Martin Senftleben and Christophe Geiger, is available here.
Finally, a paper coauthored with Dashiell Renaud on renewed copyright formalities and the Berne Convention is available here.
have a look!
A Cognac After Spanish Champagne
(For forthcoming book by Professors Jane Ginsburg and Rochelle Dreyfuss, Intellectual Property at the Edge (Cambridge Univ. Press).)
The draft chapter is available here.
Edited by Michael Geist. The book can de downloaded at
My chapter looks at the five cases’ impact on collective management.
The Articles page (right hand column) is being updated, and links to each article are being added (when available on a public website).
This Article delineates the proper scope of patentable subject matter and the two key exclusions namely scientific discoveries/laws of nature on the one hand, and mental steps/abstract ideas, on the other hand. The Article considers the exclusions normatively and in particular whether patenting subject matter that should be excluded may prevent the “sunshine of science from generating some green shoots of scientific progress” and thus be counterproductive in promoting innovation. The Article suggests, in the wake of recent Federal Circuit and US Supreme Court jurisprudence, that both exclusions are related and proposes a unique test to avoid both errors (patenting nature and mental steps).
The Article is both scholarly in tone and policy-oriented. The Author hopes that the Article usefully illuminates the policy debate and its more theoretical aspects. Its analytical anchor is the traditional distinction between science (scientific research to produce knowledge), on the one hand, and technology (sometimes bundled under the appellation research and development (R&D) or “applied science”). The distinction is used as a heuristic tool to delineate the domain of patents. The Article also uses the distinction to discuss the erosion of the traditional role of universities and the impact of patenting science on the dissemination of science to the developing world. Specifically, the Article suggests that the traditional distinction between science and technology can be operationalized for purposes of patentability analyses as a distinction based on the target of the inquiry, namely between existing targets (waiting to be discovered) and the engineered (or created) world. The Article also discusses the exclusion of abstract ideas sometimes erroneously patented in the guise of business models or computer-implemented inventions. The exclusion is related because in producing knowledge, science produces new ways of thinking and “mental steps.” The Article suggests why and how it can be avoided using the same test. The last part of the Article formulates the proposed test by combining the two exclusions (scientific discoveries/laws of nature and mental step/abstract ideas) as vertical and horizontal axes of a patent “target.”
Recent post on Blouin Beat Tech blog
Plain Packaging and the Interpretation of the TRIPS Agreement (with Susy Frankel); forthcoming, Vanderbilt J. of Transnational Law
The Derivative Right: Or Why Copyright Law Protects Foxes Better than Hedgehogs; forthcoming, Vanderbilt J. of Entertainment and Technology Law