CHAPTER III

INTERNATIONAL LAW ON INTELLECTUAL

PROPERTY RIGHTS
 CHAPTER-3

INTERNATIONAL LAW ON INTELLECTUAL PROPERTY RIGHTS

The researcher would like to make it clear that even though the title uses the word intellectual
property rights, the study gets restricted to only International law relating to patents and
protection of plant varieties. This chapter is divided into two major divisions and subdivisions.
Example it consists of International law relating to patents and International law relating to
protection of plant varieties. International law relating to patents is also further divided into two
broad heading known as International instruments relating to patents and law relating to patents
under the TRIPS agreement of WTO regime.

3.1 INTERNATIONAL INSTRUMENTS RELATING TO PATENTS

The laws relating to International Intellectual property Rights are governed by various
International Instruments /International Institutions. That is why the TRIPS agreement of WTO
specifically recognizes the promotion of co-operation between WIPO and other relevant
international organs in the field of Intellectual property1 has an important objective.

It should be noted that the term other relevant international organs 2is a wider one. It shows the
recognition of the importance of the contributions made by those international organs other than
WTO and WIPO. The following are noteworthy;

1. United Nations conference on trade and development (UNCTAD).

2. United Nations Environmental Program (UNEP)
3. United Nations Education, Science and Cultural Organization (UNESCO)
4. World Health Organization (WHO)
5. UPOV
6. International Treaty on Plant and Genetic Resources (ITPGR)
7. International Collegiums of consultative group on agricultural Research (ICCGAR)
But these are all not closely connected with the study of the research. The researcher would like
to make specific focus upon the following international instruments relating to the patents, which

1
Preamble of TRIPS agreement of WTO.
2
Ibid

38
has a direct bearing with the obligation of the TRIPS agreement and its impact in our municipal
patent law. The following are note worthy,

1. Paris Convention for the protection of Industrial property3

2. Patent Cooperation Treaty (PCT)4

3. Budapest Treaty5

3.1.1 PARIS CONVENTION

It is a well known fact that the Paris Convention for the protection of Industrial Property6 and the
Berne Convention for the protection of Literary and Artistic works7 is the starting point of
International Intellectual Property in general and the patent in particular.

It should be noted that the Paris Convention uses the term Industrial Property8 rather than
Intellectual Property. But it gives wider scope for the term industrial property so as to include the
modern concept of Intellectual property. Above all the Paris Convention uses the term patent
specifically and expressly9

RELATIONSHIP BETWEEN PARIS CONVENTION AND TRIPS AGREEMENT

RECOGNITION AND ENFORCEMENT OF PARIS CONVENTION BY TRIPS

AGREEMENT

The Paris convention is not all focusing on TRIPS agreement on the other hand the TRIPS
agreement not only recognizes the Paris Convention but also issues a clear cut mandate10 to all its
member countries to enforce certain specific provisions of Paris Convention in explicit terms
both in letter and spirit (literalegis and sententialegis).

3
1967.
4
1970
5
Budapest Treaty deals with procedural issues relating to depositing of micro organisms for the purpose of
patenting.
6
1882,the first and the earliest international instrument for the protection of Intellectual property
7
1883
8
Art: 1(1) of Paris Convention for the protection of industrial property.
9
Art: 1(2) of Paris Convention.
10
Art: 2(1) of TRIPS agreement.

39
NOTIFICATION TO THE TRIPS COUNCIL

The TRIPS agreement mandates the TRIPS Council to have a common arrangement for the
11
notification of IP related affairs to the TRIPS Council directly to the TRIPS Council with the
consultation of WIPO. This facility has been specifically provided to the member countries, who
are members of Paris Convention and the TRIPS agreement12. In order to carry out the aforesaid
mandate a cooperation agreement has been signed by WTO and WIPO. 13

SPECIFIC COMMITMENT RELATING TO PARIS CONVENTION:

The TRIPS agreement clearly mandates all its member countries notwithstanding their
membership in the Paris Convention to enforce Articles 1-12 and Article 19 of Paris Convention
for the purposes of enforcing TRIPS obligations.14It directly mandates the member countries to
follow Art.6bis for the purposes of well-known trademark and service marks15. It also mandates
the member countries to follow Art: 10bis for the purposes of determining what is amounting to
unfair competition16.

SALIENT ASPECTS OF PARIS CONVENTION

There are 30 Articles and preamble in the Paris Convention in Toto. The provisions of Paris
convention can be divided into three headings,

1. Substantial Provisions17
2. Provisions relating to organizational setup18
3. Procedural provisions19

11
Art: 2 & Art: 68 of TRIPS agreement of WTO & Art: 3 of WTO.
12
Art: 1-4 of TRIPS agreement of WTO
13
Memorandum of understanding between WTO and WIPO, 1996
14
Art: 2(2) of TRIPS agreement.
15
Art: 16(2) (3) of TRIPS agreement.
16
Art: 23(2) of TRIPS agreement.
17
Art: 1-12 &art; 19 of Paris convention
18
Art: 13-17 of Paris Convention.
19
Art: 18 &Arts: 20-30 of Paris Convention.

40
SUBSTANTIAL PROVISIONS

ESTABLISHMENT OF THE UNION

The Paris convention constitutes a Union for the purposes of protection of industrial
property20popularly known as Paris Union for the protection of the Industrial property. These
Union functions under the auspicious of an UN specialized agency21 known as WIPO.22

DEFINITION OF INDUSTRIAL PROPERTY

The term Industrial property includes all the categories of intellectual property rights example:
patents, trademarks, industrial designs and others.23

It does not include copyright. It should be noted, because of inclusion of the concept of copyright
alone the term Industrial property has been changed to Intellectual property. It should be noted
that the Paris Convention does not provide an exhaustive definition for the term Industrial
property but it provides an inclusive definition. It mandates the member countries to have a wider
understanding so as to have a broader outlook not restrict the term, so that it can be expanded and
extended depending upon the requirements of the time. The relevant provision of the Paris
Convention reads as follows:

Industrial property shall be understood in the broadest sense and shall apply not only to
industry and commerce proper, but likewise to agricultural and extractive industries and to all
manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle, minerals,
mineral waters, beer, flowers and flour.24

SUBJECT MATTER OF PROTECTION

It deals with the following aspects of patent.

1. Product patent
2. Process patent

20
Art: 1(1) of Paris Convention
21
Specialized agency is an autonomous body functioning under the overall supervision of economic and social
council of UN answerable to the UN General assembly.
22
Art: 13 of Paris convention
23
Art: 1(2) of Paris convention.
24
Article: 1(3) of Paris Convention.

41
 3. Patent of addition
4. Patent of improvement
5. Inventors certificate
6. Priority right
7. Compulsory license
8. Revocation
9. Forfeiture25
INDUSTRIAL DESIGNS:

It also protects industrial designs, right of priority, compulsory license relating to

industrial designs and others26

TRADEMARKS

It also protects the following aspects in the trademarks:

1. Trademarks
2. Service marks
3. Well-known marks
4. Trade names27
It also prevents counterfeiting of trademarks by the means of false indications28

ORGANIZATIONAL SETUP

ASSEMBLY

The Assembly is the top most decision making body.

It meets at least once in two years.
All member countries are represented in the Assembly known as delegates,
One half of the total strength of the members of the Assembly is the quorum of the
Assembly
Decisions have to be taken on the basis of 2/3 majority.

25
Articles: 1(2), (4), 4 including bis, ter, quarter, article: 5&article: 5bis of the Paris convention
26
Article: 1(2) &article: 5 of Paris convention.
27
Articles: 1(2), 6, 7, and 8 of Paris Convention.
28
Article: 9&10 of Paris Convention.

42
 Every delegate carries one vote.
It appoints director general of the Union.
It elects the members of the executive committee. It can appoint committees and other
authorities to carry out the function
It has power to amend the agreement. It has the power to review, monitor implementation
and operation of the provision of the convention.

EXECUTIVE COMMITTEE

It is the executive wing of the Union

It is a permanent body
It is accountable and answerable to the Assembly
One half of the total strength of the committee will constitute the quorum of the meeting
of the committee
Decisions have to take on the basis of 2/3 majority
SECRETARIAT

International bureau functioning under the WIPO, serves as a secretariat for the Paris
union
It is headed by a Director general
Director general serves as the chief executive officer (CEO) as well as the president of the
organization
It performs various functions including coordination of various wings
It provides secretarial services to Paris Union.
It publishes the journal containing various information relating to industrial property
PROCEDURAL PROVISIONS

AMENDMENT

Article: 18 of Paris Convention prescribes the mode of amendment for the general
provisions
Article: 17 of Paris convention lays down the procedure for the amendment relating to the
organizational setup.

43
 Article: 20-30 of Paris convention deals with various affairs including accession, entry
into force of the agreement, deposition of the agreement, and denunciation of the
convention settlement of dispute official language and others.

PROVISIONS RELATING TO PATENT UNDER PARIS CONVENTION

The Paris convention has devoted a number of specific provisions exclusively to patents.29

Provisions under Article 1

There are two clauses30 under article 1 expressly dealing with the patents. They are as follows

Object clause

The objectives are enshrined under Article: 1 of the Paris convention, the relevant provision reads
as follows:

The protection of industrial propertyit should be noted the word patent and utility
model has been used. It is interesting to note that the Paris convention protects various kinds of
industrial properties. It provides top most priority to the patent. That is why the word patent
appears at the very beginning of the objective clause. It is to be noted the concept of utility
models closely associated with the patent31. That is why it appears very next to the patent.

Types of patent:

The following types of patent have been specifically enunciated in the Paris convention. The
relevant provision reads as follows, Patens shall include the various kinds of industrial patents
recognized by the laws of the countries of the union, such as patents of importation, patents of
improvement and certificates of addition etc.32It should be noted the word etc is the wider one
it includes lot of things example patent of addition and others. Above all the definition itself is an
inclusive clause. The word shall include has been used.

29
Article: 1,4,5&11 of Paris convention
30
Ibid, Article: 1(2) & (4).
31
Utility models are otherwise known as mini patent. It is prevailing largely in the countries of Australia, US and
others the term of protection is very much shorter
32
Article: 1(4) of Paris convention.

44
RIGHT OF PRIORITY

The entire article; 433 of Paris convention has been devoted exclusively to deal with right of
priority in various subject matter of intellectual property including patent, trademark, designs and
other things but the discussion is confined only with the patent.

Procedure relating to the right of priority

The Paris convention lays down the following procedures and conditions relating to acquisition
of right of priority in the case of patent, they are as follows

The right of priority cab be claimed by any person son who has filed the application
It should be noted the word any person who has filed the application for the patent has
been used34
It means not necessarily the owner can claim it simply; it entitles the applicant to have the
right of priority.
The date of priority starts form the date of the filing date.35
It also allows the multiple priority36
The exploitation of the invention within a period of one from the filing date ipso facto
will not invalidate the right of priority37
The right of priority cannot be refused only on the ground that certain elements of the
invention has not been specifically claimed provided the whole claim and the documents
associated with which discloses the invention clearly and sufficiently38
It treats equally the applicant of the paten and the applicant of the inventors certificate in
the case of right of priority and it should be noted that the consequences are same 39

33
Ibid Art. 4A-1
34
Ibid, Art. 4A(1)
35
Ibid, Art. 4A (3)
36
Ibid, Art. 4G
37
Ibid, Art. 4.(2)
38
Ibid, Art. 4(h)
39
Article 4(I)

45
TERRITORIALITY OF PATENT

The Paris convention makes it very clear that the grant of patent is independent in nature. The
member countries are free either to refuse or grant the patent depending upon their municipal
legal requirements just because patent has been granted to a particular invention in some other
country a country is need not to oblige to grant patent. This is applicable both the members as
well as non members of the union but it has nothing to do with right of priority,40

RIGHT TO MENTION THE INVENTORS NAME

The Paris convention mandates the member countries to always mention the name the name of
the inventor in all the patents relating to the invention. The inventor is entitled for the aforesaid
right irrespective of his connection with the application that is he may or may not be the
applicant.41

NATURE OF THE PRODUCT AND PATENT

The Paris convention makes it very clear that the nature of the goods or the products for which
the patent is applied shall in no case form an obstacle for obtaining patent. 42

MEASURE TO PREVENT ABUSE OF PATENT

The Paris convention provides not only rights to right holders but also lays down reasonable
restriction upon the exercise of the rights of the patentee. It should be noted that it prohibits the
member countries from unreasonable interference or unjustifiable intervention by the state in the
exercise of the rights of the right holders

It provides the following preventive measures:

1. Compulsory license
2. Revocation
3. Forfeiture

40
Article: 4bis of Paris convention
41
Article 4 ter of Paris convention
42
Article 4 quarter of Paris convention

46
CONDITIONS RELATING TO THE COMPULSORY LICENSE

It lays down the following circumstances under which the compulsory license issued against the
patentee.

1. When the patentee has failed to perform his invention

2. If his inaction is unjustifiable
3. There is no any legitimate reason for his inaction
4. If he misuse his patent rights
Compulsory license will be issued against the patentee so as to undo the aforesaid harm to
the society.

THE CHARACTERISTICS OF COMPULSORY LICENSE

The compulsory license is non exclusive

It is non assignable
It cannot be assigned without the assignment of good will and transfer of industry
Procedure:

The compulsory license cannot be issued simply. The applicant should prove that the necessary
circumstance warrants the issuance of compulsory license. The applicant has to wait at least four
years from the date of the filing of the patent or three years from the date of the grant of the
patent whichever expires later.43 It should be noted that this provision of the Paris convention is
closely related to article 31 of the TRIPS agreement.44It should be noted that the TRIPS
agreement does not use the word compulsory license but it almost embodies the similar concept,
which has been provided under Paris convention.

REVOCATION AND FORFEITURE

The Paris convention empowers the member country to go for revocation or forfeiture of patent
as a final measure so as to prevent the abuse of the patent rights by the patentee. It should be
noted that the TRIPS agreement too carries such a similar provision45.

43
Article: 5A of Paris convention, 1970
44
It explains the ground under which the compulsory license can be issued.
45
Article: 32 of TRIPS agreement.

47
Procedure:

The Paris convention prescribes a minimum period of three years after the issuance of
compulsory license i.e., the failure of the compulsory licensing mechanism should be proved.
After the period of three years is over from the date of issuance of the compulsory license alone
the patent can be revoked or forfeited.

RESTORATION OF PATENT

The Paris convention mandates the member country to provide the facility of restoring the lapsed
patent because of non-payment of renewal fee by the applicant. It allows the member country to
prescribe the grace period within which the patent ought to be restored. It also empowers the
member country to levy surcharge46.

PROTECTION OF ACCIDENTAL INFRINGEMENT

The Paris convention protects the accidental infringement of patents relating to aircraft, vessel
and land vehicles, the relevant provision reads as follows:

In any country of the union the following shall not be considered as infringements of the
rights of a patentee

1. The use on board vessels of other countries of the union of devices forming the subject of
his paten in the body of the vessel, in the machinery, tackle, gear and other accessories,
when such vessels temporarily or accidentally enter the waters of the said country,
provided that such devices are used their exclusively for the needs of the vessel:
2. The use of devices forming the subject of the patent in the construction or operation of
aircraft or land vehicles of other countries of the union, or of accessories of such aircraft
or land vehicles, when those aircraft or land vehicles temporarily or accidentally enter the
said country47

46
Article: 5 bis of Paris conventiion1970
47
Article: 5 ter of Paris convention, 1970.s

48
3.1.2 PATENT COOPERATION TREATY (PCT)

Patent cooperation treaty is a much important treaty relating to the international patenting system.
It should be noted that, there is nothing called international patent in strictosensu48, but up to a
certain stage49 the PCT makes the patenting system as an internationalized and globalised one.
Obviously it becomes desirable to study some of the important aspect of patent cooperation treaty
for the better understanding of the topic of the research.

The PCT consists of a preamble and 69 Articles in toto.

ORIGIN AND DEVELOPMENT OF PCT

This is a WIOPs sponsored treaty administered by WIPO it has been revised and modified from
time to time50by the pct assembly so as to accommodate the changing requirements of the
society.

General objects of PCT:

Protection and promotion of science and technology

To promote the perfection of legal system for the protection of the invention
Simplification of the procedure relating to the patents
Making the patent system more economy friendly
Framing of uniform procedures
Promotion of access
To the information relating to know how and technology development.51
Important objects of PCT:

1. To create uniform and effective procedures relating to the international filling,

international search and international preliminary examination relating to patent.
2. Constitution of a union for the aforesaid purposes52 establishment of the union:

48
Article: 4 of Paris convention
49
International filing, international search and international preliminary examination there after national system
comes into picture.
50
Done at June 1970,last revision taken place on 1st October 2001
51
The preamble of patent cooperation treaty.
52
Article: 1(1) of patent cooperation treaty.

49
 3. The pct establishes a union called international patent cooperation union (IPCU).53
SUBSTANTIVE PROVISIONS

It contains lot of definitions. Generally this treaty is more procedural in nature rather than a
substantive one. The following are noteworthy:

The definition of prior art54

The definition of the test of NUN55
Definition of novelty, inventive step, capable of industrial application and industry56
It defines drawing57, description,58claim,59abstract 60and priority date61
These are all substantive in nature

PROCEDURE RELATING TO THE FILING OF INTERNATIONAL APPLICATION:62

Any person who is a national or domicile of a country in which the receiving office is situated
can file the international application for patent.

CONTENTS OF THE APPLICATION:

The application must be in the prescribed format, prescribed language along with the
request for international patent in the specified designate d countries.63
It should indicate the details relating to the inventor 64
It should furnish the information relating to the applicant including name of the applicant,
residence, nationality and others.65
Information relating to the agent should also be furnished, if any66

53
Article: 1(1) of patent cooperation treaty.
54
Article: 15 of Patent Cooperation Treaty.
55
Ibid, Article: 31.
56
Ibid, Article: 31.
57
Ibid, Article: 5.
58
Ibid, Article: 5.
59
Ibid, Article: 6
60
Ibid, Article: 7.
61
Ibid, Article: 8.
62
Ibid, Articles: 3, 4&11.
63
Ibid, Article: 3&4.
64
Ibid, Article: 11.
65
Ibid, Article: 11.
66
Ibid, Article: 11.

50
 It should be duly signed by the applicant or his agent67
It should duly accompany the prescribed fee68
It should specify the designated offices for the purpose of securing patent protection in the
relevant countries.69
It should specify the elected office for the purposes of usage of international preliminary
examination results.
DOCUMENTS TO BE FURNISHED:

The application should accompany the following document

1. There shall be a description

2. It should accompany a drawing
3. There should be a precise, specific and concise claim.
4. There shall be abstract and other necessary supporting documents.70
PROCESSING OF APPLICATION:

1. The receiving office must keep a copy with it, that copy is popularly known as home
copy
2. It should send a copy to the international bureau; this copy is known as record copy.71
Thereafter it will be sent for international search by the international bureau to the
international searching authority.
PROCEDURE RELATING TO INTERNATIONAL SEARCH:

The international searching authority will make a thorough international search relating to the
prior art relating to the invention claimed in the application. If it is successful it will send a report
called international search report otherwise it send a declaration that the application is not fit for
international search.72

67
Ibid, Article: 3.
68
Ibid, Article: 11.
69
Ibid
70
Ibid, Articles: 11&14.
71
Ibid, Article: 12
72
Ibid, Article: 15-18.

51
PROCEDURE RELATING TO INTERNATIONAL EXAMINATION:73

1. There shall be a demand for international preliminary examination by the applicant in the
prescribed format with prescribed fee.
2. Based upon the demand the international preliminary examination will act upon it, if it is
successful it will send the international preliminary examination report certifying that the
invention claimed complies the NUN test and fulfill the criteria for patentability such as
novelty, inventive step and capable of industrial application
NATURE OF THE PROCEEDINGS:

International search report as well as international preliminary examination report is highly

confidential in nature. Nobody can reveal it without the consent of the applicant.74

ORGANIZATIONAL SETUP

It has the following organizational setup with the following hierarchy,

1. Assembly75
2. Executive committee76
3. International bureau77
4. Technical assistance committee78

POWERS AND FUNCTIONS OF THE ASSEMBLY:79

The assembly has the biennial meeting

It is the top most decision making body
It has the power to carryout amendments and review the working of the treaty
It elects executive committee members
It appoints members for the technical assistance committee

73
Ibid, Article: 31-42.
74
Ibid, Articles: 30&41.
75
Ibid, Article: 53.
76
Ibid, Article: 54.
77
Ibid, Article: 16.
78
Ibid, Article: 55.
79
Ibid, Article: 53.

52
 It approves the budget of the union.
It recognizes and approves a constitution of international searching authority,
international preliminary examination authority.

EXECUTIVE COMMITTEE:80

This is the executive wing of the union. Its members are elected by the assembly. It prepares the
draft agenda for the meeting of the assembly and makes draft proposal including budget for the
approval of the assembly International bureau:81

1. It acts as the secretariat wing of the union

2. It is headed by the director general
3. It performs various functions under this treaty including facilitating the access of
technical informations to the member countries
4. It publishes international research report and international preliminary examination report.
5. It transmits the copies and the necessary communication to the elected office, designated
office and applicant.

AUTHORITIES FUNCTIONING UNDER THIS TREATY:

The following authorities are functions under this treaty

1. International searching authority82

2. International preliminary examination authority83
3. Receiving office84
4. Elected office85
5. Designated office86

80
Ibid, Article: 54
81
Ibid, Article: 16 &55
82
Ibid, Article: 17
83
Ibid, Article: 32(f)
84
Ibid, Article: 10
85
Ibid, Article: 41

53
 6. It recognizes the practice of attorneys, agents before the international authorities.87

TYPE OF PROTECTION:88

The applicant should specify what sort of protection he needs. Example: protection of patent,
protection of patent of addition, protection of utility model, protection of inventors certificate or
inventors certificate of addition.

FACILITIES AVAILABLE TO THE MEMBER COUNTRIES:89

The PCT mandates the union to establish a mechanism to provide international patents
information to all the member countries. It has established a specific committee to monitor the
implementation of the services.

S&D TREATMENT TO THE DEVELOPING COUNTRIES:90

The developing countries are allowed to have access relating to the information of patents and
technical assistance at the lesser cost. It also provides special representation for the developing
countries in its various organizational activities including the committee of technical assistance.

RELATIONSHIP BETWEEN PARIS CONVENTION AND THE PCT:91

The PCT refers the Paris convention in many instances for various purposes. It clearly mandates
to respect the rights and obligations arising out of Paris convention.

It also accepts much terminology as it has been used in the Paris convention. Example: the
concept of regular filing and the concept of priority date.

86
Ibid, Article: 12,13&22
87
Ibid, Article: 49
88
Ibid, Articles: 43&44.
89
Ibid, Articles: 51&56.
90
Ibid, Articles: 51&56.
91
Ibid, Articles: 1(2), 8, and others.

54
RELATIONSHIP BETWEEN THE PCT AND THE TRIPS AGREEMENT OF WTO:92

The PCT lays down certain clear-cut criteria for patentability such as novelty, inventive step and
capable of industrial application. It should be noted that the same concept has been embodied
under Article: 2793 of the TRIPS agreement of WTO.

It should be noted that the TRIPS agreement directly and indirectly enforces any of the elements
embodied under the PCT.

3.1.3WTO

In the earlier chapter we had seen the historical development of IPR in the Indian scenario. In
this chapter let us discuss the origin and development of GATT, evolution of WTO, and its
relation with agreement on trade related aspects of intellectual property rights i.e. TRIPS
agreement.

ORIGIN AND DEVELOPMENT OF GATT

At the end of the Second World War, the major leaders of the world founded the UN system.
Under this framework they wanted to develop trade and employment, so that the world will
become prosperous, peaceful and stable.

ROLE OF BRITTONWOOD CONFERENCE:

This conference has lead to the creation of international monetary fund i.e. IMF and the
international bank of reconstruction and development i.e. IBRD popularly known as World
Bank. They wanted to create yet another organization called International trade organization i.e.
ITO. But the said ITO did not come into existence at all. The most powerful second chamber of
the legislature in the world at large that is the senate of the US has refuse to ratify the treaty.
Using its constitutional powers enshrined in the US constitution.94 But the aforesaid incident has
not made them tired. Their tireless effort resulted into the creation of GATT 1947 that is general
agreement on trade and tariff, dated 30 October, 1947 under the auspicious of UN.95

92
Ibid, Article: 31
93
Article: 27(1) of TRIPS agreement.
94
Art; 1 of the US constitution
95
Second preparatory committee meeting. Art 2 (3) of WTO

55
At the initial stage around 23 members became the original members of GATT 1947 comprising
11 industrialized countries and 12 developing countries. It should be noted that India is also one
of a founder member of GATT.96

CONTRIBUTIONS MADE BY GATT 1947:

It should be noted the GATT has made a significant contribution in the development of
international trade particularly in the code relating to anti dumping, quantitative restriction and
Multi Fiber Arrangements (MFA). It has nothing to do with intellectual property rights. Around
eight rounds of negotiations have been held under the auspicious of GATT 1947.

It should be noted that the 8th round has resulted into the creation of WTO popularly known as
Uruguay round it is the lengthiest, final and most comprehensive round of negotiation in the
history of GATT.97

COMMENCEMENT OF WTO:

The WTO has been signed in 1994 by 124 members, dated 15th April 1994 in Marrakesh.

The WTO has come into operation by 1st January 1995.98 Till now it has conducted six
ministerial conferences. Right from Singapore to HongKong out of the six the Doha round is
considered to be the most successful one by all the members of WTO. That is why the Doha
ministerial conference is known as Doha Development Agenda.99

SALIENT ASPECTS OF WTO AGREEMENT:

The agreement establishing world trade organization that is the WTO agreement is considered to
be the principle, main, parental agreement of the all multilateral agreements including TRIPS. It
contains a preamble and 16 Articles in toto.

96
Explanatory note of WTO
97 th
8 round 1983-1994.
98
Art 65(1) of TRIPS agreement of WTO Art: 2 of WTO
99 th
4 ministerial meet November 2001.

56
OBJECTS:

It provides the following objects; promotion and development of international trade, creation of
full employment, ensuring effective demand for the study growth of real income by increasing
the production of goods and services, promotional of optimum utilization concept, promotion of
sustainable concept, creation of viable and durable multi lateral trading system, ensuring
equitable share of benefits in the growth of international trade in favour of least developed
countries that is LDCs and others.100

ESTABLISHMENT OF WTO:

Art: 1 talks about establishment of WTO.

SCOPE:

The WTO comprises of four annexes covering various subject matters, example: agriculture,101
antidumping,102textiles103, trade related aspects of intellectual property rights, 104
services,105
goods and others.

It divides the entire coverage of agreement into two categories that is multilateral and plurilateral
agreement.106 It should be noted that the membership in the multilateral means mandatory107 and
plurilateral means optional.108 TRIPS agreement is coming under the multilateral category.

100
Preamble of WTO
101
Agreement on agriculture, annexure 1A
102
Agreement on antidumping, annexure 1A
103
Agreement on textiles, annexure 1A
104
TRIPS agreement, Annexure 1(c) of WTO
105
GATS, Article 1(b)
106
Agreement Establishing World Trade Organization, Art 2(2)
107
Ibid, Annexure 1-3
108
Ibid, Annexure 4

57
ORGANIZATIONAL SETUP:

MINISTERIAL CONFERENCE

Ministerial conference is the top most decision making body, it comprises, representatives of all
the member countries.109It meets at least once in two years that is Biennial meeting.110

POWERS AND FUNCTIONS OF MINISTERIAL CONFERENCE:

1. It appoints director general111.

2. It approves budget112

3. It can grant waiver in the necessary circumstances.113

4. It can review operation of the waiver114

5. If necessary it can terminate it or extend it

6. It has power to interpret115

7. It performs this function on the aid and advice of the specialized council116

AMENDMENT:

Ministerial conferences can alone carryout amendment117. It can amend the multilateral as well
as plurilateral agreement118. It has power to delete the agreement or changing the agreement from
one category to another.119

109
Ibid, Art 4
110
Ibid, Art 4
111
Ibid, Art 6
112
Ibid, Art 7
113
Ibid, Art 9
114
Ibid, Art 9 (1)
115
Ibid, Art 9 (2)
116
Ibid, Art 9(4)
117
Ibid, Art 10
118
Ibid, Art 10(2)
119
Ibid, Art 10(9)

58
OTHER POWERS:

1. It has power to establish committee120

2. It has power to oversee and review the functions of various committees and authorities
functioning under WTO including TRIPS council and Dispute Settlement Body of WTO121
3. It approves accession122
4. It admits the member
OVERRIDING NATURE OF THIS AGREEMENT

The WTO makes it clear that whenever there is a conflict between the provisions of this
agreement and provisions of multilateral agreement, provision of this agreement will prevail
over.123

DOCTRINE OF PRIMACY

Generally the primacy resides in municipal law but WTO is an exception to this. WTO clearly
mandates to all its member countries to ensure that their legal practices are in conformity with
the laws, regulations and administrative practices of WTO.124 This is a very important one in the
WTO jurisprudence. This serves as a basic and foundation stone of WTO without which the
object of ensuring minimum global uniformity will not become feasible.

OTHER AUTHORITIES FUNCTIONING UNDER WTO

GENERAL COUNCIL:

Hierarchically it is the second top most decision making body next to ministerial conference. It
has concurrent jurisdiction in many affairs with ministerial conference125. It is the executive wing
of WTO. 126

120
Ibid, Art 4(7)
121
Ibid, Art 4 (5), (6) Art 9
122
Ibid, Art 12
123
Ibid, Art 16(3)
124
Ibid, Art 16(4)
125
Ibid, Art 4 & 9
126
Ibid, Art 4(2)

59
DISPUTE SETTLEMENT BODY:

This is the judicial wing of WTO127, it has its own chairman, it has jurisdiction of entire courage
agreement that is annexure 1-4.128

SPECIALIZED COUNCILS:

There are three specialized councils functioning under the overall supervision of general council
and ministerial conference.129They are known as

Council for goods,

Council for service

Council for TRIPS

These councils have its own chairman and can create subsidiary bodies under their control.
130
The relationship between the TRIPS council and the WTO assumes more importance which is
discussed in detail in the subsequent chapter.

SALIENT ASPECTS OF DSB

It is a well-known fact that the core strength of WTO lies in its dispute settlement mechanism.
That is why it is proved to be more powerful and successful than WIPO. In this context let us
discuss how the DSB is being administered, the agreement which governs it, how its rulings are
implemented and others.

The dispute settlement body of WTO i.e. DSB of WTO is governed by an agreement called
Dispute Settlement Understanding131. It should be noted that it comes under multilateral category,

127
Ibid, Art 4(3)
128
Dispute Settlement Understanding, Annexure 2 of
129
Art 4(5) of WTO Agreement
130
Ibid, Art 4(6)
131
Ibid, Annexure 2

60
which means if any country becomes as a member in WTO agreement it ipso facto and ipso jure
gets membership in DSU too132

ORGANIZATIONAL SETUP:

It has been established under the WTO by virtue of provision contained in art 4 of WTO. Its
working procedure has been laid down in a separate exclusive multilateral agreement which
forms part and parcel of WTO agreement.133 It has its own chairman134. The general counci8l can
convene the DSB meeting.135 The office of the director general has been mandated to provide
136
administrative, technical and other necessary support to the functioning of DSB. Decisions in
137
DSB must be taken on consensus basis .

AUTHORITIES FUNCTIONING UNDER DSU

The director general is functioning as a conciliation and mediator, coordinator.138

Hierarchy:

Appellate body is the top most body in DSB of WTO139. It consists of 7 members appointed for a
term of 4 years. They are eligible for reappointed for at least once.140

PANELIST:

The body of panelist hears the case originally. It is one step down to appellate body.

COMPOSITION OF THE PANEL:

Generally it will be minimum of 3; sometimes it will go up to 5 members. Both appellate body as

well as body of panelist is highly independent and nobody can influence it. Necessary safeguards
have been provided under this agreement.141

132
Ibid, Article: 2
133
Ibid, Annexure 2
134
Ibid, Art 4(3) and Art 1 of Dispute Settlement Understanding(DSU)
135
Ibid, Art 4 of WTO
136
Ibid, Art 6 and Art 27(1) of DSU
137
Art 3of Dispute Settlement Understanding
138
Ibid, Art 4,5& 27
139
Ibid, Art 17
140
Ibid, Art 17(3)

61
QUALIFICATIONS;

One having sufficient experience in representing cases before DSB.142

Qualification for the appellate body: Experience of served as panelist143.

SPEEDY DISPOSAL:

The DSU agreement of WTO clearly mandates the DSB and other authorities to amicably settle
the dispute as early as possible. It mandates the authority to conduct the cases expeditiously to
the greatest extent possible144. This shows the commitment of speedy justice on the part of the
framers of WTO agreement.

TIME LIMIT:

Ordinarily the cases have to be settled within six months. 145

In the case of perishable goods it is three months.146

In no case the time limit can exceed nine months-without appeal

In the case of appeal, it is 12 months.147

PROCEDURE:

The parties can request for constitution of panelist only after the exhaustion of conciliation,
consultation and other remedies.148 They should make the written submission along with the
factual matter identifying the clear-cut issues, the reference of specific provision of the coverage
agreement to the panelist. This is known as terms of reference. There are two types of reference,
the one is standard reference and another is known as special reference149

141
Ibid, Art 8 &17
142
Ibid, Art 8(4)
143
Ibid, Art 17
144
Ibid, Art 3(9)
145
Ibid, Art 12(2)
146
Ibid, Art 9
147
Ibid, Art 21
148
Ibid, Art 6(1)
149
Ibid, Art 6&7

62
NATURE OF THE PROCEEDINGS

The proceedings are highly confidentially in nature. Opinion should be expressed by the panelist
and the appellate body members unanimously.150

APPLICATION OF ALTERNATE DISPUTE MECHANISM (ADR MECHANISM)

The following ADR mechanisms are available in WTO

1. Consultation151

2. Conciliation and mediation152

3. Arbitration153

REMEDIES:

Compensation:

Authorization of the suspension of concession and other beneficial application in the relevant
sector of economy is done by DSB. This is only a temporary remedy. Securing the withdrawal of
the disputed measure alone is the normal remedy. When it is not immediately possible alone this
temporary remedy are made available by DSB.154

RELATIONSHIP BETWEEN TRIPS COUNCIL AND DSB:

The DSU uses the term relevant councils and committees in many instances155. The word council
will definitely include TRIPS council too. The TRIPS council and TRIPS agreement has been
specifically referred by DSU within the meaning of sectors economy.156

150
Ibid, Art 14&17
151
Ibid, Art 4
152
Ibid, Art 5
153
Ibid, Art 25
154
Art 3 & 22 of DSU
155
Art 4,8&21 of DSU
156
Art 23(3)(e)(f) of DSU

63
SALIENT ASPECTS OF TRIPS AGREEMENT OF WTO

In the earlier chapters we have discussed about the relationship between the WTO and the TRIPS
agreement in general and the TRIPS council in Particular. It is highly desirable to know certain
important aspects of TRIPS agreement. So, that one can thoroughly assess the impact caused by
the TRIPS agreement in the Indian patent legal regime.

In this context let us analyze, what are the objectives of TRIPS agreement, its scope, subject
matter, enforcement mechanism, dispute settlement process, institutional setup and others.

Trips agreement runs into 7 parts, it contains 75 articles, several paragraphs, sub paragraphs and
divided in to various sections.

The Researcher would like to make special mention of the following aspect of the TRIPS
agreement for the better understanding of this topic. They are as follows.

a) Part- I157

b) Part II158

c) Part III159

d) Part IV160

e) Part - VII161 and

f) Others.

OBJECTIVES EMBODIED IN THE PREAMBLE OF TRIPS

There are certain objectives which have been stipulated in the preamble of the TRIPS agreement
itself they are as following.162

1) Prevention of the distortion and independent in the international trade.

157
Article 1-8 of TRIPS agreement of WTO.
158
Ibid, Article 27-34
159
Ibid, Article 41-61
160
Ibid, Article 63-64
161
Ibid, Article 68-73
162
Ibid, Preamble

64
 2) Availability of adequate and effective means of protection of intellectual property
rights.

3) Need to create minimum uniform rules to ensure the standard availability scope of
intellectual property rights.

4) Creation of viable, sound technological base to the development of least developed

countries. (LDC).

5) Provision of adequate and effective means of enforcement of IPRs.

6) Creation of mutual supportive relation between WTO and World intellectual property
Organization (WIPO).

7) Promotion of co-operation between WTO and other international organization in the

field of IPR.

8) Promotion of co-operation in the prevention of international trade in counterfeit

goods.

9) Recognition of IPRs as the private rights

10) Recognition of the objective of public policy of the national interest to develop socio,
economic and technological developmental needs.

OBJECTIVES ENSHRINED IN PART I OF TRIPS AGREEMENT OF WTO

Encouragement of Technology transfer, finalization of technology development, promotion of

socio-economic, owners of IPR and the consumers of IPR, protection of certain vital important
sector, prevention of abasement of intellectual property rights. These special objectives have
been mentioned in part I of the TRIPS Agreement.163

GENERAL PRINCIPLES

The following have been dealt as general principles by part I TRIPS Agreement. It should be
noted that the above started special objectives are also coming under general Principles.

163
Ibid, Articles: 7, 8

65
SCOPE AND NATURE OF OBLIGATIONS:

The TRIPS agreement mandates the member country to provide minimum protection of
Intellectual Property Rights as it has been stipulated by the provisions of this agreement. At the
same time, it permits the member countries to provide more extensive protection without
contravening the provisions of the agreement.164

Example: It prescribes a minimum term of protection as 20 years.165 The world used in the
TRIPS agreement is not less than 20 years. If a country providers more than 20 years as term of
protection it cant be violation of their provision. In case, if the world not more than has been
used then it may be violation of TRIPS agreement.

DEFINITION OF IPR

It doesnt define what IPR is. But it simply states subject.

NATIONAL TREATMENT

National treatment means the equality of treatment us far as the protection of IPR is concerned
between the nationals of the member country as well as foreign nationals. This is a negative
concept. The word used in the provision is No less than what it accords its our nationals.166
The term national means according to this treaty, it will include born natural as well as
artificial and juridical person including OCBs that is overseas corporate bodies.167

MFN TREATMENT:

MFN treatment is a treatment which has to be accorded immediately and unconditionally

provided if it has received any advantage, favour, privilege relating to subject matter of treaty
from any country in certain cases it may be reciprocal, in certain cases, it may be multilateral.

But is should be noted both national treatment and most favoured nation treatment is subjected to
certain exemptions which have been provided in the TRIPS agreement itself.168

164
Ibid, Articles: 1 to 8
165
Ibid, Art: 3
166
TRIPS Agreement, Art 1 Para 3.
167
Ibid, Art: 3 & 4
168
Ibid, Art: 5

66
Application of this principle

Both the national treatment as well as MFN treatment has been made applicable prospectively
and not retrospectively. Particularly WIPO related IPR agreements.169

ISSUE OF EXHAUSTION

No Exhaustion issue can be brought as a subject matter at dispute before the DSB relating to
TRIPS agreement except Art: 3 & 4.170

STANDARD, AVAILABILITY OF SCOPE

These measures have been covered section 1 to 8 of part II of TRIPS agreement, whey
are as follows:

1) S: 1 is section: 1 is dealing with copyright171

2) S: 2 is dealing with Trademarks172

3) Sec: 3 deals with Geographical indications.173

4) Sec: 4 deals with industrial Designs.174

5) Sec: 5 deals with patents.175

6) Sec: 6 deals with integrated circuits, layout, designs, and topographies. 176

7) Sec: 7 deals with confidential 177

8) Sec: 8 deals with anti competitive practices.

PROVISIONS RELATING TO PATENTS UNDER TRIPS AGREEMENT

This can be studied under row headings.

1. Provisions under Sec: 6, i.e.-substantive provisions.

2. Provisions under TRIPS other than sec: 6 of part II

169
Ibid, Art: 6
170
Ibid, Art: 19 to 14
171
Ibid, Art: 15 to 21
172
Ibid, Art; 22 to 24
173
Ibid, Art: 25 to 26
174
Ibid, Art: 26 to 34
175
Art: 35 to 38 of TRIPS agreement
176
Art: 39 to of TRIPS agreement
177
Art: 40 of TRIPS agreement

67
SECTION: 6 OF PART-II SUBJECT MATTER OF PATENT RIGHT

Art: 27 define what is patentable and what is not patentable and also it sets out certain minimum
criteria for acquiring patents. It makes both positive as well as negative concepts. Firstly, it
mandates the member country to provide patent rights, irrespective, of fields of technology and
plague of intention provided if it is new and involving an inventive step capable of industrial
application.

At the same time it mandates positively to provide patent rights to all the fields of technology
both for products as well processes.178

EXEMPTIONS:

The afore stated rule is subjected to the following countries to exclude the patentability of any
subject matter provided, if the claims of the patents involves a serious threat to environment,
public order, public health and morality179. Besides which it also permits the member countries
to deny patents in the following issues,for surgical, diagnostic, thereat, methods useful to the
treatment of human being, animals, plants and others. Besides which it also prohibits patenting
of essentially of biological process.

But permits microbiological process microorganisms to be patentable. Anyhow permits either to

provide patent protection or sui generis protection or the combination of both the things to the
plant varieties.180

RIGHTS OF PATENTEE:

For the purposes of this agreement, the term patentee is to be understood the right holder,
inventor, any person authorized by then including assigns, licenses and others.

Rights:

These rights can be studied under positive rights and negative rights. It empowers the patentee
and the right holder to prohibits other third persons to deal with patented products as well as
178
Art: 27 Para 1 of TRIPS agreement
179
Art: 27 Para 2 of TRIPS agreement
180
Art: 28 of TRIPS agreement

68
process patents or to use, sell, import, offering for sale, making, using of the products and
process for commercial purpose either product or process which has been patented.181

POSITIVE RIGHTS:

It also permits the patentee to conclude incensing contracts, rights to design and others. So that
he can effectively exploit it patents.182

STATUTORY PRESUMPTION:

It mandates the member countries to confer a positive statutory presumption on the patentee in
the suits relating to patent impingement, i.e., it puts the onus upon the defendant to prove that the
process which he was used to obtain the product is different from the patented process of the
patentee. Failing of which, it mandates to presume that the defendant has used the patented
process alone subject to the following conditions.

i. If the patentee is the product obtained is a new one which has been subjected to process
patenting.

ii. If the patentee is unable to determine what process have been actually used by the
defendant in obtaining the products.183

This right is available to the patentee in the case of fulfillment of any of the conditions
which have been set forth by the provisions of the agreement.

EXCEPTIONS TO THE RIGHTS:

It is well known concept that no right is absolute. Every right is subjected to certain exception.
Even this sort of exceptions does not to fully take away the rights of the patentee. Example:
These sorts of rights cant be exercised in the matter of research, public health, extreme urgency,
national emergence, use of Govt., purposes. It should be noted that afore stated exceptive
provisions does not totally exiting reasonable restrictions.

PROVISIONS RELATING TO COMPULSORY LICENSE:

It is a well-known fact that the term compulsory incense has not been defined in the TRIPS
agreement. Even though the word Compulsory license itself has not been used at all in the
181
Ibid,
182
Ibid,
183
Ibid, Art: 34

69
TRIPS agreement. But is uses the following synonyms, terminology to denote compulsory
license. Firstly it uses the word use by the Govt. or by the third party without authorization of
the rights holder.184

Secondly, it uses the word in Voluntary license.185 Thirdly it uses the word coercive licensing
package.186

PROCEDURE TO BE FOLLOWED IN ISSUING COMPULSORY LICENSING:

1. The right holder has to be approached with the reasonable terms and conditions to give
authorization for the proposed acts failing of a positive response from the right holder
alone sometimes will become a reasonable ground to invoke compulsory license.

2. The rights holder is entitled to get a prior notice. In the case of public non-commercial
activities.

Where as in the case of national emergency and other circumstances of extreme urgency
post execution notice is necessary and that too it has to be made available as well as reasonably
practicable. Besides which one has to wait at least 2 years for invoking compulsory license. Of
course, this procedure has not been laid by TRIPS agreement but by Paris convention.187

GROUNDS FOR INVOKING COMPULSORY LICENSE:

i. Govt. usage:

If the Govt. deems it necessary to safeguard the interest of the public it may use the patented
product without the authorization of the right holder or it may authorize any other third party to
do so.

ii. Essential grounds:

a. National emergency

b. Extreme circumstance of emergency.188

It should be noted that these things have not been defined.

184
Ibid, 31
185
Ibid, Art: 38
186
Ibid, Art: 40
187
Art: 5 of Paris convention.
188
Art 31 (b) of TRIPS agreement

70
 iii. Ensuring of Domestic supply:

The Govt. can issue compulsory license to ensure the supply of particular product to the
domestic market.189

Public Non commercial use:

The compulsory license can be issued for the purpose of fulfillment of public non commercial
use.

iv. Anti Competitive Activities:

The provision makes it very clear that if any of the right holder in general and the patentee in
particular indulges into any anti competitive activities, it is justifiable for the Govt., to issue
compulsory license. Besides which the track record of patentees, anti competitive activities will
be taken into account.

In determining the quantum of damages or remuneration or compensation payable to the right

holder for the loss suffered by him on account of the issuance of compulsory license, the term
anticompetitive practices has not been defined in TRIPS agreement but it has been used in
various provision of TRIPS agreement190; But it leaves to the discretion of the judicial authority
of the member country to determine what is anti competitive practices.

v. Unfair competition

It should be noted that the term unfair competition too has not define in the TRIPS bosh in Paris
convention as well as TRIPS agreement191 but it has been defined in the Paris convention192. It
should be noted that the TRIPS agreement mandates the member countries to follow Art 1 to 12
and 19 of the Paris convention.193

REMEDIES AVAILABLE TO THE RIGHT HOLDERS

The legitimate interest of the right holder is adequately protected due to the loss arising out of
the issuance of the compulsory license.

189
Ibid, Art 31(f)
190
Art: 40, Art 31 Para C, K of TRIPS agreement
191
Ibid, Art 22(2)(6)
192
Art 10 bis of Paris convention
193
Art 2(1) of TRIPS agreement

71
 1. Right to get Damages
2. Right to get compensation.194
3. Right to approach the judicial authorities to terminate the authorization195.
4. Right to approach the court for enhancing damages.
5. Right to see that the authorization is only for limited purpose and limited scope.
6. Right to have a judicial review regarding the validity of the authorization of the issuance
of compulsory license.196
OTHER PROCEDURAL ASPECTS

The TRIPS agreement makes it very clear that the compulsory license issued under this provision
is non assignable, non exclusive in the case of second patent. Second addition conditions
have to be fulfilled and above all across license shall be issued to use the first patent also.

The conditions to be followed

The following conditions have been prescribed by the TRIPS agreement of WTO to be followed
in the issuance of compulsory license relating to second patent (or) patents of addition or
improvements.

(i) The invention claimed in the second patent shall involve an important technical
advance of considerable economic significance in relation to the invention claimed in
the first patent.
(ii) The owner of the first patent shall be entitled a cross license on reasonable terms to
use the invention claimed in the second patent; and
(iii) The use authorized in respect of the first patent shall be non assignable except with
the assignment of the second patent.
REMEDIES AVAILABLE TO THE USER OF COMPULSORY LICENSE:

They too are entitled to have certain remedies particularly when the authorization is terminated
the TRIPS agreement mandates the member countries to safeguard the legitimate interest of the
authorized user through adequate damages and compensation. Besides which if any person has

194
Ibid, Art 31(g)
195
Ibid, Art 31(h)
196
Ibid, Art 31(i)

72
been authorized by the Govt., prior to the commencement of relevant provisions of patents in the
TRIPS agreement then that sort of persons and their legitimate interest are also been protected.

PREVENTION OF ABUSE OF IPRS BY THE RIGHT HOLDERS / OWNERS OF IPR

The TRIPS agreement empowers the member country to take appropriate action so as to prevent
the abuse of IPRs by the right holders and owners of the IPRs. It should be noted that the TRIPS
agreement does not define the term abuse. But it spells out certain circumstances which will
amount to the abuse of IPRs example when the actions of right holders IPR results into the
unreasonable restriction transfer of technology and dissemination of technology. It should be
noted the TRIPS agreement does not suggest, that sort of corrective measures that the member
can take, so as to prevent the abuse of IPRs by the right holders / owners of IPR. But it leaves it
to the discretion of the member countries that is why it uses the word appropriate measures197.
It should be noted that the TRIPS agreement not only empowers the member country to take
aforesaid measures to prevent the abuse of IPRs but also to achieve the objectives enshrined in
the TRIPS agreement, example to promote public health, nutrition and protection of vital sectors
of importance198.

MEASURES TO REGULATE LICENSING PRACTICES

The TRIPS agreement empowers the member countries to take appropriate preventive measures
so as to prevent the restrictive trade practices of the right holders of IPR under the guise of their
licensing / intractable practices. It spells out the following measures so as to prevent the
restricted practices of the likening policies of the right holder, example exclusive grant back
coercive licensing packages199. Besides which it allows the member countries to revoke, forfeit
the patents200 so as to prevent the abuse of patents by the patentees or the right holders. Besides
which TRIPS agreement permits the member countries to permit to issuance of compulsory
incense in the prescribed circumstances.201

197
Art: 8(2) of TRIPS agreement
198
Ibid, Art 8
199
Ibid, Art 40
200
Ibid, Art 32
201
Ibid, Art; 31

73
MAILBOX SYSTEM:

This TRPS agreement mandates the member countries to provide a means for the filing of
application for patents notwithstanding the transitional arrangements which is made available to
the member countries.

The word Means202 for the lining of complication has become popularly known as mailbox
system. This labiality has become the means so as to enforce afore stated mandate of the TRIPS
agreements.

EXCLUSIVE MARKETING RIGHTS: (EMR)

The TRPS agreement mandates the member countries to provide exclusive marketing rights only
during the transitional period as an interim measure provided when the applicant of the EMR has
got patents for his products or articles in other member countries and it has been granted
marketing approval in the patented countries.

This is available only in the care of agricultural, chemical and pharmaceutical goods.203

ENFORCEMENT MECHANISM:

A large number of articles have been specifically incorporated for the enforcement of intellectual
property rights in general and patents in particular with some specific attention, Art; - 41 to 61
deals with enforcement mechanism have been divided under various sections such as general
enforce mental measures, provisional measures, border related measures and others. It can be
divided in to

i. Civil remedies

ii. Administrative rematches.

iii. Criminal remedies.

202
Ibid, Art: 70 (8)
203
Art; 70 (a) of TRIPS Agreement

74
GENERAL ASPECTS:

The TRIPS agreement of WTO mandates the member countries to have a strong intellectual
property mechanism. It also mandates to apply the Deterrent theory.204

It also suggests that the deterrent theory can be applied through the following measures such as
heavy penalties, pre-established damages205 severe imprisonment and others. So these sorts of
concepts have been provided under various provisions that may be discarded in detail at a later
stage. Besides which in asks the member countries to provide for judicial review, in the case of
intellectual property rights, either by a judicial authority or by a distinct higher independent
authority. At the same time, it makes it very clear that the member need not allot separate
resources to create a specific intellectual property rights mechanism distinct from a general law
enforcement mechanism.206

APPLICATION OF PRINCIPLES OF NATURAL JUSTICE:

It provides for the application of the principles of natural justice in determining IPR related
issues by judicial and quasi-judicial authorities as well as by the enforcement authorities, such as
Audi altermpartem,207 Speaking order208 reasonable amount of evidence209far and equitable
procedures, simplification of procedures, speedy justice, and effective justice delivery
mechanism.210

CIVIL JUDICIAL REMEDIES:

It provides for the following civil judicial remedies in the enforcement of intellectual property
rights.

i. Right to get interim as well as permanent injunction211

204
A doctrine which advocates to provide stringent punishment so as to deter the culprits from further commission
of the offence.
205
It is a well know concept, damages for damages. Ex; Rule laid down in Hardley V Baxendale, Repolymers case.
206
Art: 41 of TRIPS agreement of WTO.
207
No one should be condemned without unheard
208
Reasons have to be give for the decision.
209
Art: 43 of TRIPS agreements of WTO.
210
Ibid, Art: 41 & 42 of TRPS agreement of WTO.
211
Ibid, Art: 44

75
 ii. Right to get pre-established damages

iii. Right to get compensation for the abasement of civil judicial process (This is available
for both the parties i.e., right holder and the defendants212).

iv. Right to get accounts for profits.

v. Right to informations relating to the commissions of offence including information

about predominant use of the implements used in the commission of the offence,
information about third parties and others involved in the problem.

vi. Right to demand for the destruction of the pirated goods.213

ADMINISTRATIVE REMEDIES:

It should be noted that specific provisions has been inserted in the TRIPS agreement for
providing administrative relies in the enforcement issue. Any how these sort of administrative
measures shared comply with the principle retorts in the foretasted provisions i.e., Art: 41 to 48
of TRIPS agreement.214

PROVISIONAL MEASURES:

Art: 50 have been exclusively devoted for provisional measures. These measures are very
important, because of its nature. This is a drastic remedy can be availed by the right holder in
order to prevent the commission of IPR related offence. One of the notable features of these
measures is that the non-application of Audi altermpartem provision for securing deposits in
order to prevent the misuse of the measures.

SPECIAL MEASURES RELATING TO BORDER RELATED MEASURES:

This has been dealt between Arts: 51 to 59. These measures are intended to prevent illegal
international trade involving goods and services relating to intellectual property rights. It
provides various special measures, particularly border related affairs.

212
Ibid, Art: 45
213
Ibid, Art: 47
214
Ibid, Art: 49

76
DE MINIMIS:

The concepts of De Minimis imports have been permitted in the case of non-commercial
nature involving small quantity of goods of consignments contained in personal luggage. These
sort of imports have been totally exempted from all the foretasted enforce mental measures.215

CRIMINAL REMEDIES:

It mandates the member countries to provide heavy penalty and severe imprisonment upon the
offenders and also mandates to provide mechanism for search and seizure including destruction
of materials used in the commission of offence and destruction of infringing goods.216

PREVENTION AND SETTLEMENT OF DISPUTE:

Art: 63&64 of TRIPS agreement deals with prevention and dispute settlement.217 It recognizes
right to transparency and mutual consultation regarding the IPR issues of the member countries
mutually. For the aforesaid purposes it mandates the member countries to publish all their laws,
regulations and administrative practices relating to their IPRs in their official journal as well as
to notify all those things to the TRIPS council too. The dispute settlement process in general and
the TRIPS oriented affairs in particular will be discussed in detail in the chapter.

INSTITUTIONAL ARRANGEMENTS

Certain necessary institutional arrangements have been made by the TRIPS agreement itself,
example establishment of TRIPS council, enumeration of its powers and functions, agreement
between WIPO & WTO seizure including destruction of materials used in the commission of
offence and destruction of infringing goods.218

215
Ibid, Art: 60
216
Ibid, Art: 61
217
Ibid, Part V
218
Art: 61 of TRPIS agreement of WTO.

77
TRANSITIONAL PROVISIONS

TRIPS agreement came into effect from 1stJanuary 1996 onwards for all the developed countries.
Whereas the same has understood between WTO, UN, recognition of the importance of
NGOs,inter governmentalorganizations and others. Besides which it lays down measures for the
f prevention of illegal international trade and trafficking of pirated and counterfeited goods. For
the above stated purposes, it provides certain special benefits in the form of S.D. Treatment to a
least developed member countries. It mandates the developed member countries to encourage
their enterprises to facilitate technological development and to provide for technical, finance and
necessary support in order to create a sound viable and technological base in the least developed
member countries. A similar S & D treatment has also been provided by the TRIPS agreement in
the case of developing countries also with some differences. In the case of developing countries
the term mutually acceptable terms and conditions219 and transfer of technology220 has been
used. But in the case of least developed member countries, it uses the word assistance.221

AMENDING PROCESS:

This agreement contains provisions for amendments of TRIPS agreement subject to the
limitations prescribed by the WTO.222

PROVISIONS FOR REVIEW

It empowers the TRIPS council for a periodical review over the general and special matters
enumerated in the TRIPS agreement.223

SECURITY EXCEPTIONS

It provides necessary exemptions in the security related affairs of the nations including nuclear,
atomic, fissionable materials and others.224

219
Ibid, Art: 67
220
Ibid, Art 68
221
Ibid, Art 71
222
Ibid, Art 10
223
Ibid, Articles 72, 27 (3(b)), 66 24.
224
Ibid, Art 73

78
3.2 INTERNATIONAL INSTRUMENTS RELATING TO THE PROTECTION OF
PLANT VARIETIES

Protection of plant varieties enjoys the special status in the international IP regime. It is the most
contentious one in the field of intellectual property rights because of its complex nature. The
international legal regime on the plant genetic resources and the plant breeders rights has been
subjected too severe conflict and continuously raises tension in the fields of trade environment,
human rights and the other affairs of the international community. This has contributed the sharp
division among the international community advocating those who support IP protection to the
plant varieties and those who oppose it. This issue has been hardly debated in various forums one
side is lead by the developed countries lead by the US, EU, Japan and Canada. On the other side
developing countries lead by African Union and other developing countries such as BRAZIL,
INDIA and more recently by the BRICS i.e. Group of nations comprising of BRAZIL, RUSSIA,
INDIA, CHINA and SOUTH AFRICA are regress pressing their respective positions in the
appropriate forum naturally. In certain forums developed countries are dominating and have
emerged victorious, in other forums the developing countries are dominating and emerged
victorious. Simply speaking one group would like to win over another example in the UN based
bodies such as WIPO, CBD, ITPGR, WHO and others. The developing countries have gained
momentum; on the other hand in NON-UN trade and IP related forums such as the UPOV
convention and the WTO particularly in the TRIPS, developed countries have strongly asserted
their position and emerged victorious often. The pendulum keeps on swinging in the
international IP regime tilting the balance from one side to other; this is a fluctuating from time
to time. The jurisprudence relating to the relation of the plant varieties is still in evolution in
nature and emerging out of various factors. This situation has been addressed by scholars225 as a
tug of war between developed countries and the developing countries. Scholars are also highly

225
Miss. Sabrina Safrin,Hyper ownership in a time of Biotechnological Promise: The International Conflict to
Control the Building Blocks of Life, AJIL, Vol.98, October 2004,
Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international legal
regimes and policy options for national governments. Generally See, Part 1 PP 10 to 12, at Part 3 PP 73 to 77, at Part
4 PP 82-93
SusetteBiber-Klemm, Thomas Cottier, Philippe Cullet and DanutaSzymuraBerglas, The Swiss Agency for
Development and Cooperation 2006, The current law of plant genetic resources and traditional knowledge. This has
been received through E-mail by the researcher and the file is available with the researcher, at pp. 59 to 63

79
divided on this issue. Miss. Sabrina Safrin calls this as tug of war226. She addresses from the
neutral point of view this issue. She neither supports the patent and IP based private ownership
over plant and genetic resources nor extreme sovereign control over the genetic resources. She
wants to take a via media path. However till now, no such solutions has been evolved or
formulated by any institution. However the researcher humbly disagrees with the proposal
suggested by the Miss. Safrin227.

Scholars like Laurance R Helfer, is a strong supporter of IP protection for the PGRs228. On the
other hand scholars like Phillipe Cullet, Thomas Cordiat, Mari and Panison, Strauss229 and others
are strongly condemning patent protection230 to the PGRs on the following ground one

1. It erodes agro bio diversity and bio diversity

2. It does not protect and respect traditional knowledge
3. It violates ethics such as public order, morality, therefore it is against nature

4 It violates human rights in general particularly, the rights of the farmers, indigenous
people and the local community

5 It involves plagiarism, bio-piracy and others

EVOLUTION

Strictly speaking there was nothing to protect either plant varieties or the plant breeders rights
by the international intellectual property regime231 at the beginning. This is mainly attributable to
the hesitance and the reluctance shown by the EU on the grounds of morality and ethics because
the international community perceived plant genetic resources as a part and parcel of common

226
Sabrina safrin, october, 2004, American journal of international law, hyperownership in a time of
biotechnological promise: the international conflict to control the building blocks of life, 98 A.J.I.L. 641
227
She suggests bilateral mechanism to achieve this. Generally see part 4, pp. 641-685. This is nothing but the
typical view and stand taken by the U.S in various forums on the issue of access and benefit sharing. Such a view
has been rejected by the developing countries. For more details see ip/c/w/370.rew available at the Http/www.
Wto.org
228
Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international legal
regimes and policy options for national governments. Generally See, pp. 20 to 22
229
Debra M. Strauss, 2009, Stanford Journal of International Law, the Application of TRIPS to GMOs: International
Intellectual Property Rights and Biotechnology, 45 Stan. J Int1 L. 287
230
Thomas Cottier, Philippe Cullet, The Swiss Agency for Development and Cooperation 2006, The current law of
plant genetic resources and traditional knowledge at pp. 59 to 63
231
Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international legal
regimes and policy options for national governments. Generally See, pp. 3 to 5

80
heritage of mankind because they are gifted by the nature itself to the mankind. Therefore
providing patent protection or sue generis protection or any other IP protection over the plant
genetic resources and treating them as a commodities of private persons not at all acceptable232
and they violate natural law, human rights and ethics. On the other hand the trigger was started
by the US as soon as the First World War was over. The US government found it difficult to put
more investment in the agricultural sector through public sectors. Therefore the government of
US taken a policy decision to promote and encourage the private sector in the field of
agriculture. Therefore it started providing lot of incentives including patents to the plant genetic
resources. It enacted a specific legislation relating to patenting of plants as early as 1930s; this
law was made applicable to the sexually reproducing plants. However the private corporate in
the US demanded more protection and expressed their difficulties in obtaining the patent
protection under the aforesaid act. Therefore the government of US encouraged corporate to get
the utility patents for the plant varieties under the general patent act. This was actively assisted/
facilitated by the supreme court of US through its ruling in Diamond V. Charkarvarthi. The
Supreme Court has given wider interpretation to section 101 of the U.S patent act. However the
U.S corporate did not satisfy with this ruling they keep on pressurizing the U.S government to
enact a special law for the protection of plant varieties that will be more suitable and lenient so
that the private corporate can get IP protection for their plant varieties rather than obtaining
patent protection under the Plant Patenting Act of 1930 and utility patent under the general
Patent Act. Therefore the U.S government has brought a special legislation for the protection of
the plant varieties providing sue generis protection to the plant varieties. This has received with
the huge welcome by the corporate; they wanted to push it across the borders. U.S government
has actively brooked the international convention for the protection of new plant varieties with
the support of European Union. This convention is known as UPOV convention 1961. This
convention has been signed by 12 industrialized countries at the invitation of government of
France and it was concluded in Paris233. Interestingly during this period, the U.N general
assembly has adopted a resolution called permanent sovereignty over natural resources234. The

232
Refer Article 53 (b) of European patent convention, 1973
233
Srividhyaragavan& Jamie mayero'shields, fall, 2007, Georgetown International Environmental Law review, Has
India Addressed Its Farmers' Woes? A story of plant protection issues, 20 geo. Int'l Envtl. L. Rev. 97
234
UN General Assembly Resolution 1803 (XVII), 14 December 1962, Permanent Sovereignty over Natural
Resources, reprinted in 2 ILM 223 (1963).

81
aforesaid UPOV convention was subsequently revised in 1972235, 1978236 and finally amended at
1991237. Currently 1978 and 1991 act is in force238. Mean while around 120 countries have
adopted a non-binding international agreement known as international undertaking on plant
genetic resources (IUPG), in 1983 under the auspicious of FAO. The aforesaid undertaking
clearly states that plant genetic resources is common heritage of mankind therefore it is
accessible without any restriction and it avoided private monopoly/ownership including IP over
the plant genetic resources. This has lead to the dissatisfaction of agro-biotech of MNCs
belonging to the developed countries in general, U.S in particular. In order to satisfy their
corporate U.S has actively lobbied to press an amendment in the IUPG. It has successfully done
in the year 1989 as an annexure 1 to the aforesaid undertaking. Annexure 1239 makes it very clear
the common heritage of mankind should not affect the breeders rights that have been enshrined
in the UPOV convention. This is considered as a triggering point which has contributed in the
active tug of war between the private monopolies over the PGRs i.e. the patenting of PGR V.
sovereign enclosure of PGRs240. Since the developed countries have championed in getting
recognition of the breeders rights and adoption of the same by the FAO through the aforesaid
undertaking. The developing countries have successfully forced their FAO to recognize the
farmers right241. It has been adopted as an annexure-2 to the aforesaid undertaking. Again the
developed countries have strongly revised the UPOV convention so as to extent the breeders
rights and to curtail the farmers privilege. The developing countries feel outraged; they have
successfully adopted annexure-3 to the international undertaking on the plant genetic resources
which clearly stipulates that the principle of the common heritage of mankind is subject to the
principle of permanent sovereignty over the natural resources. Miss Safrin cites speech of
Tanzanian president how strongly condemned the attitude of the developed countries particularly
patenting of biological resources. He simply questioned why the developed countries are
expecting that the biological resources must freely flow from the developing countries to the

235
November 10, 1972 at Geneva
236
October 23
237
March 19
238
Refer article 31, 32 of UPOV convention 1991, Laurance R Helfer, 2004, FAO legislative study, intellectual
property rights in plant varieties international legal regimes and policy options for national governments. Generally
See, pp. 28 to 30
239
Resolution No. 4/89, FAO 25th conference Rome
240
Generally See Miss. Safrin
241
Resolution No. 5/89, FAO 25th conference Rome

82
developed countries where as the flow of biotech products is subjected to the patent and
exclusive rights which are costlier and expensive to the developed countries. The relevant part of
the speech reads as follows, "Most of us in developing countries find it difficult to accept the
notion that biodiversity should [flow freely to industrial countries] while the flow of biological
products from the industrial countries is patented, expensive and considered the private property
of the firms that produce them. This asymmetry . . . is unjust."242 The 1992 marks a paradigm
shift in the history of the genetic resources/ biological resources because the world has witnessed
the adoption of the CBD by the international community and the U.S have been totally isolated
and CBD has clearly embodies, recognizes, enforces the principle of permanent sovereignty of
the member countries243 over their biological resources of course the CBD also recognizes the
importance of the intellectual property rights but the IPR should not affect the object of the CBD
and must be mutually supportive244. Two years later the world has witnessed one more drastic
change but the change is the huge and the phenomenal one, i.e. signing of WTO agreement
where as this time developed countries have emerged victorious. It is generally perceived that the
U.S has done tit for tat for its disastrous defeat in the CBD and the developing countries have
forced to accept the TRIPS agreement which totally ignores the principles laid down by the
CBD245 and other relevant international instruments. However developing countries have
successfully coordinated their strength and their resources together246 and they successfully
forced the WTO to study the relationship between TRIPS and CBD and to ensure that the TRIPS
become harmonized with the CBD and ITPGR and this has been explicitly recognized by the
DOHA declaration. The DOHA declaration has mandated the TRIPs council to do so in the
process of reviewing 27.3(B) in the year 2001247. In the same year the FAO has adopted
successfully an internationally binding agreement upon the member countries known as
international treaty on plant and genetic resources for food and agriculture, popularly known as

242
Sabrina Safrin, October, 2004, American journal of international law, hyper ownership in a time of
biotechnological promise: the international conflict to control the building blocks of life, 98 A.J.I.L. 647
243
Refer the preamble and Article 8(j) and article 16 of the CBD
244
Refer Article 16 of the CBD
245
Debra M. Strauss, 2009, Stanford Journal of International Law, the Application of TRIPS to GMOs: International
Intellectual Property Rights and Biotechnology, 45 Stan. J Int1 L. 287
246
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, at part 4 pp. 80 to 93
247
Refer para 19, 31, 12 of DOHA declaration, 2001

83
ITPGR248. Some scholars are addressing this as international seed treaty249. In this forum again
U.S and JAPAN was isolated. Article 12.3(D) of the ITPGR is the most crucial one which has a
barring upon the relationship among the TRIPS and UPOV convention250 which can be discussed
little later.

SALIENT FEATURES OF UPOV CONVENTION

The UPOV convention was signed by the 12 developed countries. Currently around 60 countries
have become parties to the UPOV convention251. The 1961 convention has been subjected to
several revisions; currently the 1978 act and 1991 act are in force252. The 1991 Act has come into
force by 1998253. It contains around 42 articles and divided into ten chapters. It deals with the sue
generis protection relating to plant varieties. In fact, the 1978 Act prohibited the member
countries to provide multiple IP protection for the same plant variety example patent protection,
Sui generis protection and protection under Plant Patents Act254. The same has been removed by
the 1991 Act255 and this has been approved by the TRIPS agreement also256. It permits member
either to provide

A. Patent protection
B. Sue generis protection
C. Combination of aforesaid protection257

Certain developed countries such as U.S, Sweden, Japan, Australia, and New Zealand have
capitalized this opportunity and they are providing multiple protections258 to the plant varieties

248
3rd November, 2001, resolution No. 1 of 2001 of FAO
249
Cullet, IPR and Food security
250
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, pp. 94 to 96
251
Srividhyaragavan&jamiemayero'shields, fall, 2007, Georgetown International Environmental Law review, Has
India Addressed Its Farmers' Woes? A story of plant protection issues, pp. 99 to 100
252
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, at pp. 5 to 6
253
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, at pp. 27 to 28
254
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, at pp. 53,54
255
Refer article 3, 14 of the UPOV convention
256
Article 27.3(b) of the TRIPS agreement
257
Article 27.3(b) of the TRIPS agreement

84
citing the requirements of TRIPS as well as UPOV convention, 1991 act. In fact, the developed
countries particularly the U.S insist upon the developing countries to accept the 1991 as the
bench mark to determine the standard of the effectiveness of sue generis protection embodied
under the TRIPS through bilateral agreements knows are TRIPS plus agreements259 which we
can discuss in detail little later.

DEFINITIONS

It defines the following terminologies. Nevertheless, various countries including India in their
municipal legislations concerning plant variety protection have adopted it260. It has devoted
entire article 1 for the purpose of the definition out of which only two261 are relevant for the
subject matter of our discussion. They are as follows

1) The term breeder

2) Variety

BREEDER

Breeder includes

The person who breed the variety

A person who developed the variety
A person who discovered the variety
A person who employed the breeder so as do the aforesaid task or a person who
commissioned the task to be done i.e. the employer
Their successors
Legal representative subject to the national law

258
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, at pp. 81,82
259
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, at pp. 81,82 and also refer www.grain.org
260
Refer section 2 of the plant varieties and the farmers rights act, 2001 of India
261
Article 1 (4) and article 1 (6) of 1991 act of UPOV convention

85
Relevant part reads as follows262

"Breeder" means
- the person who bred, or discovered and developed, a variety,
- the person who is the employer of the aforementioned person or who has commissioned
the latter's work, where the laws of the relevant Contracting Party so provide, or
- the successor in title of the first or second aforementioned person, as the case may be;

The person who developed or discovered cannot get patent protection for his/her plant variety
that is why the UPOV convention have diluted the standards so as to protect the breeders rights
who discovered or simply developed an existing variety. This aspect of the plant variety
protection incompatible to any of the specific categories of the IPR263 such as patent264,
trademarks, copyright, Geographical indication and others. Nevertheless it has become the
subject matter of IPR. The difference between the term categories of IPR and subject matter
of IPR has been thoroughly discussed in the U.S omnibus appropriation Act (Section 211 of
1998). The appellate body has categorically stated that the protection of plant varieties comes
under the subject matter of IPRs and necessarily member countries have an obligation to
respect, promote and preserve it.

The definition embodied under the 1991 act, not only adopted by the member countries by the
municipal laws but it has been adopted even by the international treaty on plant and genetic
resources265 almost in a similar way as it has been embodied in this convention. The definition is
crucial to determine whether the claimed invention fits into the definition of variety. The relevant
part of the convention reads as follows266

"Variety" means a plant grouping within a single botanical taxon of the lowest known rank,
which grouping, irrespective of whether the conditions for the grant of a breeder's right are

262
Article 1 (4) of 1991 act of UPOV convention
263
Refer article 1(2) of the TRIPS agreement of the WTO and provisions of section 1 to 7 of part-II of the TRIPS
agreement of the WTO
264
Refer article 27 of the TRIPS agreement
265
Refer article 2 of the ITPGR
266
Article 1(6) of 1991 of the UPOV convention

86
fully met, can be
- defined by the expression of the characteristics resulting from a given genotype or
combination of genotypes,
- distinguished from any other plant grouping by the expression of at least one of the said
characteristics and
- considered as a unit with regard to its suitability for being propagated unchanged;

The convention defines the following terminologies also but the same has not been embodied
under the definition clause but comes under the eligibility clause. The term variety has not been
defined in 1978 Act267 and it was done for the first time only in the 1991 Act.

CRITERIA / CONDITIONS FOR THE PROTECTION:

The convention lays down the following conditions to get the protection for plant varieties under
this convention they are as follows

1) Novelty
2) Distinctiveness
3) Uniformity
4) Stability268

The 1978 Act use the term homogenous rather than uniformity otherwise the same has been
adopted by the 1991 Act also.

Novelty
The Act defines in the following manner269

(1) [Criteria] The variety shall be deemed to be new if, at the date of filing of the application for

267
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, at pp. 81,82
268
Article 5 to 9 of 1991 act of UPOV convention
269
Article 6 of 1991 act of UPOV convention

87
 a breeder's right, propagating or harvested material of the variety has not been sold or
otherwise disposed of to others, by or with the consent of the breeder, for purposes of
exploitation of the variety
(i) in the territory of the Contracting Party in which the application has been filed earlier
than one year before that date and
(ii) in a territory other than that of the Contracting Party in which the application has been
filed earlier than four years or, in the case of trees or of vines, earlier than six years
before the said date.

This standard of novelty is highly lenient from that of the standards of novelty required for
patenting270. The novelty should not become part of the prior art, no time limit has been fixed,
however shorter or longer it may be for the purposes of patenting271. Whereas this convention
lies down just one year in the country, where the first application is filed. Four and six years in
other countries where the subsequent applications has been filed. This is a very lenient one.
Many things will fit into the definitions of novelty embodied under this convention, whereas the
same will not certainly qualify to pass the test of novelty under the patent regime272.

Distinctness

The convention lays down a peculiar test known as distinctiveness which is neither required nor
defined by the patent regime273. The relevant part reads as follows274,

The variety shall be deemed to be distinct if it is clearly distinguishable from any other variety
whose existence is a matter of common knowledge at the time of the filing of the application. In
particular, the filing of an application for the granting of a breeder's right or for the entering of

270
Article 27.1 of the TRIPS agreement of the WTO
271
Article 27.1 of the TRIPS agreement of the WTO
272
Article 27.1 of the TRIPS agreement of the WTO
273
Article 27.1 of the TRIPS agreement of the WTO
274
Article 7 of the 1991 act of the UPOV convention

88
another variety in an official register of varieties, in any country, shall be deemed to render that
other variety a matter of common knowledge from the date of the application, provided that the
application leads to the granting of a breeder's right or to the entering of the said other variety in
the official register of varieties, as the case may be.

The definition takes into account only the disclosure which is available in the return format and
does not takes into account which are available orally and verbally and otherwise. It clearly
undermines the traditional knowledge. Therefore it can actively promote bio-piracy275

Uniformity

This is also defined only by this convention. The breeder has to necessarily pass the test of
uniformity otherwise he cannot get protection under this convention. The convention defines the
term uniformity in the following manner276

The variety shall be deemed to be uniform if, subject to the variation that may be expected from
the particular features of its propagation, it is sufficiently uniform in its relevant characteristics.

This test/definition of uniformity has been severely criticized by the supporters of the bio-
diversity because it erodes the bio-diversity in general and agro biodiversity in particular277.

Stability

There is only a slight difference between the term uniformity and stability. Uniformity addresses
the short-term aspect of the stability and the stability address the long-term aspect of uniformity.
This definition of stability is also to the aforesaid criticism as the anti biodiversity preservation
and conservation by the scholars278. The relevant part reads as follows

275
Srividhyaragavan&jamiemayero'shields, fall, 2007, Georgetown International Environmental Law review, Has
India Addressed Its Farmers' Woes? A story of plant protection issues
276
Article 8 of the 1991 act of the UPOV convention
277
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, pp. 22 to 24 and 71 to 73
278
Srividhyaragavan&jamiemayero'shields, fall, 2007, Georgetown International Environmental Law review, Has
India Addressed Its Farmers' Woes? A story of plant protection issues

89
The variety shall be deemed to be stable if its relevant characteristics remain unchanged after
repeated propagation or, in the case of a particular cycle of propagation, at the end of each such
cycle279.

Strictly speaking the patent regimes mandates the applicant to comply Novelty, utility and non
obviousness280 in short (NUN test) where as this convention lays down the test of NDUS which
is more easier that of NUN

ESSENTIALLY DERIVED AND CERTAIN OTHER VARIETIES

The concept of essentially derived variety (EDV) has not at all been281 embodied in the 1978 Act
but the same has been adopted in the 1991 Act for the effective protection of the breeders rights.
The term essentially derived varieties marks a thin line between the first generation of plant
varieties created by the breeders and second-generation plant varieties developed by the breeders
from the initial variety. This aspect is known as cross-patenting or cross-licensing or second
patents under the patent regime282. Since there was nothing to protect this sort of interest, in 1978
Act they pressed for the amendment to be adopted by the 1991 Act and it has been successfully
carried out283. The term essentially derived varieties has been defined by this convention in the
following manner

(a) The provisions of paragraphs (1) to (4) shall also apply in relation to

(i) Varieties which are essentially derived from the protected variety, where the protected variety
is not itself an essentially derived variety,

Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, pp. 22 to 24 and 71 to 73
SusetteBiber-Klemm, Thomas Cottier, Philippe Cullet and DanutaSzymuraBerglas, The Swiss Agency for
Development and Cooperation 2006, The current law of plant genetic resources and traditional knowledge.
279
Article 9 of the 1991 of the UPOV convention
280
Article 27.1 of the TRIPS agreement
281
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, pp. 33
282
Refer article 31(l)(1) and (2) of TRIPS agreement of the WTO
283
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, pp. 23, 24
Sabrina safrin, october, 2004, American journal of international law, hyperownership in a time of biotechnological
promise: the international conflict to control the building blocks of life, 98 A.J.I.L. 641

90
(ii) Varieties which are not clearly distinguishable in accordance with Article 7 from the
protected variety and
(iii) Varieties whose production requires the repeated use of the protected variety.

(b) For the purposes of subparagraph (a)(i), a variety shall be deemed to be essentially derived
from another variety (the initial variety) when

(i) It is predominantly derived from the initial variety, or from a variety that is itself
predominantly derived from the initial variety, while retaining the expression of the essential
characteristics that result from the genotype or combination of genotypes of the initial variety,

(ii) It is clearly distinguishable from the initial variety and

(iii) Except for the differences which result from the act of derivation, it conforms to the
initial variety in the expression of the essential characteristics that result from the genotype or
Combination of genotypes of the initial variety.

(c) Essentially derived varieties may be obtained for example by the selection of a natural or
induced mutant, or of a somaclonal variant, the selection of a variant individual from plants of
The initial variety, backcrossing, or transformation by genetic engineering284.

MATERIAL

The term material has not been defined under 1978 Act, it was defined only in the 1991 act for
various purposes example the scope of the breeders rights have also been expanded in a larger
way than that of the 1978 Act285 that so there is a necessity to define the term material.
Previously the 1978 regime was applicable only to propagating material286. Very rarely the

284
Article 14(5) of 1991 act of the UPOV convention
285
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, pp. 31
286
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, pp. 31

91
breeders rights have been extended to cover the harvested material and that too in the case of
ornamental plants. Whereas the 1991 Act has extended the same to the propagating material,
harvested material and material directly obtained through the harvested material. The relevant
part reads as follows287,
For the purposes of paragraph
(1), material means, in
relation to a variety,
(i) propagating material of any kind,
(ii) harvested material, including entire plants and parts of plants, and
(iii) any product made directly from the harvested material.
This is very much compatible with the patent regime also

PROVISIONS RELATING TO THE GENERAL OBLIGATIONS

This convention has exclusively devoted a specific chapter288 to deal with the general obligations
which comprises of three articles. It simple mandates all the member countries to ensure that the
obligations arising out of this convention are fully complied by the member countries and the
member countries must ensure that the breeders rights are effectively enforced in their
jurisdiction289. It recognizes and enforces only the breeders rights and nothing has been done to
enforce the farmers rights which we can discuss little later in detail.

GENERA AND SPECIES TO BE PROTECTED

The convention mandates the member countries at least to protect 15 genera and species of the
plants and to progressively extent the same without any limitation and the number of genera and
species to be protected290. In fact, it mandates member countries to protect all genera and species
of plants. This may invite sharp criticism from the supporters of bio-diversity because it does not
address the issue of terminator technology and genetic restriction technology and other plants

287
Article 16(2) of the 1991 act of the UPOV convention
288
Chapter 2 of the 1991 act of the UPOV convention
289
Article 2, article 30,31 of the 1991 act of the UPOV convention
290
Article 3 of the 1991 act of the UPOV convention

92
involving technology which prejudicially affects environment, human health and others291. These
requirements have been addressed by the TRIPS292. On the other hand 1978 Act of the
convention lays down minimum and maximum number of genera and species to be protected by
the member countries example minimum 8, maximum 24293.

NATIONAL TREATMENT

This convention embodies the principle of national treatment294 which is more or less similar of a
national treatment clause embodied by the TRIPS agreement295. The 1978 Act did not contain
national treatment clause but it was contained reciprocal clause. National treatment is nothing but
enlargement of reciprocal clause unlike the TRIPS it does not contain Most Favored Nation
(MFN) clause.

SCOPE OF THE BREEDERS RIGHTS

The 1991 act has devoted exclusive chapter296 to deal with the rights of the breeders. It not only
prescribes the rights of the breeders but also prescribes the exemption, exhaustion and also
restriction. Chapter V deals with the aforesaid issues and it comprises article 14 to 18. The new
act prescribes at least seven specific rights which are exercisable by the breeders where as the old
act prescribes only three specific rights and those three have been adopted by the present 1991
act also297. They are as follows

Production or reproduction (multiplication)298,

Conditioning for the purpose of propagation299,
Offering for sale300,
Selling or other marketing301,

291
Debra M. Strauss, 2009, Stanford Journal of International Law, The Application of TRIPS to GMOs: International
Intellectual Property Rights and Biotechnology, Generally see, 45 Stan. J Int1 L. 287
292
Article 27.2 and article 27.3 of the TRIPS agreement of the WTO
293
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, pp. 31
294
Article 4 of the 1991 act of the UPOV convention
295
Article 3 of TRIPS agreement of the WTO
296
Chapter 5 of the 1991 act of the UPOV convention
297
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, pp. 31
298
Article 14(1)(i) of the 1991 act of the UPOV convention
299
Article 14(1)(ii) of the 1991 act of the UPOV convention
300
Article 14(1)(iii) of the 1991 act of the UPOV convention

93
 Exporting302,
Importing303,
Stocking for any of the purposes mentioned in (i) to (vi), above304.

EXEMPTION

The 1991 Act describes two sets of exemption one is known as mandatory exemption305 and
another is known as optional exemption306. The Act prescribes the following mandatory
exemption. The following activities do not require the authorization of the breeders.

Research
Experimentation
Private use
Non-commercial use
For the breeding of new varieties except in the case of essentially derived varieties to put
it otherwise breeding of essentially derived varieties requires the authorization of the
breeder

OPTIONAL EXEMPTION

This exemption is termed as an optional exemption because the treaty uses the words each
contracting parties may307 permit the following activities without the authorization of the
breeders by the farmers for propagation or conditioning of the propagation material for the
purposes of the cultivating in their lands. It also permits the harvested material also to be used
and exchanged by the farmers from the prior purchases for the purposes of cultivation. This
concept is known as farmers privilege. The farmers privilege has been clearly recognized and
discussed in detail by the ITPGR which we can discuss little later. The old act implicitly permits
the farmers privilege and the concept of brown bagging also where as the present Act prohibits

301
Article 14(1)(iv) of the 1991 act of the UPOV convention
302
Article 14(1)(v) of the 1991 act of the UPOV convention
303
Article 14(1)(vi) of the 1991 act of the UPOV convention
304
Article 14(1)(vii) of the 1991 act of the UPOV convention
305
Article 15(1) of the 1991 act of the UPOV convention
306
Article 15(2) of the 1991 act of the UPOV convention
307
Article 15(2) of the 1991 act of the UPOV convention

94
brown bagging308 and curtailed the farmers privilege in larger way. This has been highly
condemned by the developing countries as well as the LDCs. In 1998 the African union has
openly criticized the 1991 Act and called upon its member countries not to accept the 1991 Act
and put the moratorium upon its adoption309.

RESTRICTION

The act prescribes only one ground for the restriction of the breeders that is public interest310.
The term public interest has not all been defined by these conventions or by the regulation made
by the council. This concept of restriction authorized by the convention has been termed as a
compulsory license by the scholars311 whereas the convention has not all used the word
compulsory license in any of its provisions. The restriction authorized by the convention is
subjected to the following

1) It must be reasonable
2) It should be based on the public interest
3) Subjected to right of equitable remuneration/ compensation to the breeders312

TERM OF PROTECTION

It prescribes 25 years as term of protection in the case of vine and trees. In case of other plans it
prescribes 20 years313. The old Act has prescribed only 18 years and 15 years respectively314 for
trees, vines and other crops where as the term of patent protection is available only for 20
years315 and discrimination is not possible only for vines and trees under the patent regime.

308
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, pp. 31
309
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, pp. 91 and 92
310
Article 17 of the 1991 act of the UPOV convention
311
Generally see, Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant
varieties international legal regimes and policy options for national governments. Generally See, pp. 51 and 52
Srividhyaragavan&jamiemayero'shields, fall, 2007, Georgetown International Environmental Law review, Has India
Addressed Its Farmers' Woes? A story of plant protection issues
312
Article 17 of the 1991 act of UPOV convention
313
Article 19 of the 1991 act of UPOV convention
314
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, pp. 31
315
Article 33 of the TRIPS agreement of WTO

95
DIFFERENCE BETWEEN 1978 ACT AND 1991 ACT

We have already discussed the difference between the 1978 and 1991 Act in context of
explaining the provisions relating to various aspects of protection of plant varieties under the
1991 Act for the better understanding of the readers. It is being summarized in the form of tables.
The following are the difference of 1978 Act and 1991 Act

96
Subject UPOV 1978 Act UPOV 1991 Act
Minimum scope of Increasing number of genera Increasing number of genera
Coverage or species required to be or species required
protected, from five at time of to be protected, from 15 at
accession, to 24 eight years time of accession, to
later. all genera and species 10 years
later (5 years for
Member states of earlier
UPOV Act).
Eligibility Novelty, distinctness, Novelty, distinctness,
Requirements uniformity and stability. uniformity and stability.
Minimum exclusive Production for purposes of Production or reproduction;
rights in commercial marketing; conditioning for the purposes
propagating offering for sale; marketing; of propagation; offering for
material repeated use for the sale; selling or other
commercial Production of marketing; exporting;
another variety. importing or stocking for any
of these purposes.
Minimum exclusive No such obligation, except for Same acts as above if
rights in harvested ornamental plants used for harvested material obtained
material commercial propagating through unauthorized use of
purposes propagating material and if
breeder had no
reasonable opportunity to
exercise his or her
Right in relation to the
propagating material.

97
RELATIONSHIP BETWEEN TRIPS AND UPOV CONVENTION

The TRIPS agreement expressly defines the term intellectual property conventions316; according
to that it takes into account only four convention they are as follows,

1) The Paris convention on industrial property, 1961

2) The Bonn convention, 1971 relating to literary and artistic works
3) The Rome convention, 1967 relating to producers of phonograms and performers rights
4) The Washington treaty, 1989 relating to intellectual property protection for the integrated
circuits

It has not all mentioned the UPOV convention either for the purpose of defining the term
intellectual property/ intellectual property convention or defining the term Sui generis protection
for the plant varieties under article 27.3(b) where as it has explicitly refer certain specific
provisions for certain purposes of the aforesaid convention for certain purposes of TRIPs
agreement. The drafters of the TRIPS agreement are well aware about the existence of the UPOV
convention but they have internationally refrained referring the convention due to various
reasons. They are as follows

Only few members happen to be parties to the UPOV convention at the time of drafting
the TRIPS agreement
There are two different acts at the time of drafting the TRIPS agreement
Members are highly divided over which one should be adopted. There was no agreement
at all on this issue.
The UPOV convention has been revised in 1991.
It has come into force only by 1998. Till then legally speaking 1978 act was in force
The adoption of 1978 act by the drafters of the TRIPS will not support the interest of the
breeders
In fact it is believed TRIPS provides effective protection much better than 1991 and
1978.
The developing countries and the LDCs have strongly resisted the 1991 act and they also
strongly opposed the incorporation of patent protection and Sui generis protection for the

316
Article 2.1 of the TRIPS agreement

98
 plant varieties under article 27.3(b) thats why the EU has suggested a compromise that
this provision is subjected to review after four years317.

Nevertheless the U.S and other developed countries are insisting that the 1991 act of the
UPOV convention must be treated as a bench mark to determine the standard of Sui
generis protection of plant varieties provided by the member countries. It is pushing
through this agenda as a condition for acceding WTO agreements and in the bilateral
trade agreements. It has signed several free trade agreements mandating the developing
country and LDCs to sign the UPOV convention such a requirement is not all warranted
by the TRIPS agreement.
Scholars are addressing the aforesaid issue as a TRIPS plus agreements318.

DIFFERENCE BETWEEN TRIPS AND UPOV CONVENTION

We have already discussed the difference between the patenting requirements laid down by the
TRIPS for the plant varieties and requirements of the Sui generis protection to the plant varieties
laid down by the 1978 and 1991 UPOV acts of the UPOV convention. For the better
understanding of the readers it is being summarized and put in the form of a table

317
Refer www.grain.org
318
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, pp. 31

99
COMPARISON OF PRINCIPAL DIFFERENCES BETWEEN PLANT VARIETY
PROTECTION UNDER UPOV 1978 ACT, UPOV 1991 ACT AND TRIPS COMPATIBLE
PATENT LAWS

SUBJECT BREEDERS BREEDERS TRIPS-

RIGHTS IN RIGHTS IN COMPATIBLE
UPOV 1978 ACT UPOV 1991 ACT PATENT LAWS
Eligibility for Plant varieties that are Plant varieties that are Plant varieties, plants,
Protection novel, distinctive, novel, distinctive, seeds and enabling
uniform and stable. uniform and stable technologies that
are novel, involve an
inventive step and are
capable of industrial
application.
Minimum Production for Production or Making the patented
exclusive purposes of reproduction; product, using the
rights in commercial conditioning for the patented process or
propagating marketing; offering purposes of using, offering for
material for sale; marketing; propagation; offering sale, selling or
repeated use for the for sale; importing for those
commercial selling or other purposes the patented
production of another marketing; product or the product
variety. exporting; importing obtained by the
or stocking for patented process.
any of these purposes.
Minimum No such obligation, Same acts as above if Making the patented
exclusive except for ornamental harvested material product,
rights in plants used for obtained through using the patented
harvested commercial unauthorized use of process or
material propagating purposes. propagating material using, offering for
and if breeder had no sale, selling

100
 Reasonable or importing for those
opportunity to purposes the patented
exercise his or her product or the product
right in relation to the obtained by the
propagating material. patented
process.
Breeders Mandatory. Breeders Permissive. But Generally not
Exemption free to use protected breeding and recognized, although
variety to develop a exploitation of variety compatibility with
new variety. "essentially derived" TRIPs not yet tested.
from an earlier variety
require the right
holders authorization.
Additional None specified. Acts done privately Research and
exceptions to and for Experimentation. All
exclusive noncommercial Exemptions must
rights purposes, acts done comply with three
for experimental part test of TRIPs
purposes. article 30.
Minimum 18 years for trees and 25 years for trees and 20 years from date the
term of grapevines; 15 years grapevines; 20 years patent application
protection for all other plants. for all other plants. filed.

101
RELATIONSHIP BETWEEN ITPGR AND THE UPOV CONVENTION

ITPGR has been developed by the developing countries only to counter the TRIPS agreement
and the UPOV convention. ITPGR enjoys a cordial relation with the CBD. ITPGR is the sister
treaty of the CBD whereas the UPOV and article 27.3(b) of other TRIPS agreement are running
contrary to the objectives of the CBD as well as ITPGR. Both the UPOV as well as ITPGR deals
with the plant variety protection but they are fundamentally different to each other. UPOV is
exclusively protecting exclusive interest of the breeders where as the ITPGR protects the interest
of modern biotechnologist involved in the plant breeding as well as the farmers rights319. It
prohibits terminator technology, genetic restriction technology and other technologies causing
harm to the biodiversity whereas the UPOV makes it very clear environmental regulation and
commercial regulation has nothing to with the Sui generis protection of the plant varieties
envisaged by the 1991 act of the UPOV to put it otherwise the breeders rights are kept in the
high pedestrial than that of the social and environmental concern of the human community320.
ITPGR promotes the traditional knowledge whereas the UPOV is anti traditional knowledge.
UPOV convention has been subjected to several revisions whereas the ITPGR is part and parcel
of IUPG and CBD. The preamble of the ITPGR refers the relationship between ITPGR and other
international treaties. The relevant part of the preamble reads as follows,

Affirming that nothing in this Treaty shall be interpreted as implying in any way a change in the
rights and obligations of the Contracting Parties under other international agreements321

ITPGR creates multilateral benefit sharing mechanism322 and facilitate access. It Access to the
genetic resources and promotes food security and agriculture. It categorically states that it should
not affect the rights and obligations arising to the parties by the virtue of the other international
agreements and the conventions however it says it should not construed that creating any
hierarchy among this international treaties between this treaty and other international treaty. The
relevant part reads as follows,

319
Refer article 2 and 14 of the 1991 act of the UPOV convention and preamble and article 9 of the ITPGR
320
Article 18 of the 1991 act of the UPOV convention
321
Para 10 of the preamble of the ITPGR
322
Article 10 and 11 of the ITPGR

102
Understanding that the above recital is not intended to create a hierarchy between this Treaty
and other international agreements323

PROVISIONS RELATING TO THE IPR IN THE ITPGR

The ITPGR mentions about the intellectual property rights in few occasions out of which article
12.3(d) is notable among them. Incorporation article 12.3(d) proves to be more contentious
between the developed country by the U.S and the developing countries lead by the Brazil and
India. The relevant part reads as follows

Recipients shall not claim any intellectual property or other rights that limit the facilitated
access to the plant genetic resources for food and agriculture, or their genetic parts or
components, in the form received from the Multilateral System324

The first part was suggested by the developing countries and the second part was suggested by
the U.S. both of them insisted the deletion of the one another as usual the EU suggested a
compromise therefore both has been accepted. Prof. Laurence R Helfer points out that this IP
clause in the ITPGR will have a direct barring upon the rights and obligations arising out of the
TRIPS agreement by the member countries325. The researcher would like to humble suggest that
it will not have direct barring upon the patenting clause alone of the TRIPS agreement but also
other categories of IPRs enumerated by the TRIPS326 and it will also affect the rights and
obligation arising out of the UPOV convention because the ITPGR uses the words intellectual
property rights and not merely the patenting. The term intellectual property is a wider one that
not only includes the categories of the IPR enumerated in the TRIPS agreement but also the
subject matter of the IPR embodied in the TRIPS agreement as it has been interpreted by the
DSB of the WTO in section 211 of the U.S Omnibus appropriation act, 1998.

323
Para 11 of the preamble of the ITPGR
324
Article 12.3(d) of the ITPGR
325
Refer Laurance R Helfer, 2004, FAO legislative study, intellectual property rights in plant varieties international
legal regimes and policy options for national governments. Generally See, pp. 96 to 98
326
Refer article 1.2 of the TRIPS agreement and section 1 to 7 of Part 2 of the TRIPS agreement

103
 DIFFERENCE BETWEEN THE ITPGR AND THE UPOV CONVENTION

S.No ITPGR UPOV

01 It is a U.N based convention It is nothing to do with U.N except with
the registration clause
02 It is a pro-developing countries and LDCs It is pro-developed countries.
03 Promotes farmers rights Promote breeders rights and anti -farmer
05 Promotes bio-technology as well as Promotes only bio-technology and
traditional knowledge harms traditional knowledge
06 Precludes IP protection for the natural It promotes IP products even for the
products discoveries
07 It conflicts with the TRIPS particularly It coincides with the TRIPS
with the 27.3(b)
08 Governing body is the competent body Council is the competent body
09 Larger number have become parties That is not the case
10 It promotes biodiversity conservation and It does not promote
the preservation
11 It promotes agro biodiversity It erodes agro-diversity
12 It is basically an environment treaty It has nothing to do with environment
except for the purposes of article 18 of
the 1991
13 It enhances synergy between agriculture, It promotes commercial interest of the
environment and commerce breeders

104