TRIPS Agreement

The TRIPS Agreement contains the national treatment principle and the most-favored-nation principle. The latter principle provides that any advantage, favor, privilege or immunity granted by a Member to the nationals of any other country (whether a Member or not) shall be accorded immediately and unconditionally to the nationals of all other Members, with certain specified exemptions. As is the case for national treatment, procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the acquisition or maintenance of intellectual property rights are exempted from this principle.

Article 7 of the TRIPS Agreement in conjunction with the preamble of the Agreement sets out the objectives of the Agreement: the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations. Article 8 provides “principles” which recognize the rights of Members to adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Agreement. It also recognizes that appropriate measures, provided that they are consistent with the Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.

Compared with the treaties adopted under the auspices of WIPO,one of the main particularities of the TRIPS Agreement is the dispute settlement system established under the WTO Agreement. Articles XXII and XXIII of GATT 1994 (except subparagraph 1(b) and 1(c) of Article XXIII), as elaborated and applied by the WTO Understanding on Rules and Procedures Governing the Settlement of Disputes, apply to consultations and the settlement of disputes under the TRIPS Agreement. This means that benefits enjoyed in another trade area may be withdrawn in retaliation for the violation of the TRIPS Agreement (so-called cross-retaliation).

Patent Thickets

In general the term “patent thicket” describes a situation where a product involves a web of patents that are owned by a number of different patentees so that a company which wants to commercialize the product is required to “clear” all the patents involved. This phenomenon is well-known in complex technologies, such as information and communication technologies, and in technical fields where a number of companies compete at the same level so that a fragmentation of patent ownership occurs. A changing research environment, increasing complexity and sophistication of technology and certain patenting strategies may have an influence on patent thickets.

Although there is no generally agreed objective definition of the term “patent thicket”, it suggests negative effects due to a “thicket” of patents, in particular, in the sense that third parties may be blocked from using a patented technology. The potential problems addressed are centered on the excessive transaction cost. Some suggest that cross-licensing may solve the vertical R&D and hold-up problems. By entering a cross licensing agreement, companies may secure freedom to operate. On the other hand, there is a risk that the problem is exacerbated because each competing company tries to build a bigger patent portfolio than competitors in order to create a better bargaining power to negotiate cross licenses. Another solution consists of patent pools to reduce a transaction cost, although some raise concerns about their compatibility with competition law.

The Budapest Treaty

The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure

Disclosure of the invention is a requirement for the grant of patents. Normally, an invention is disclosed by means of a written description. Where an invention involves a microorganism or the use of a microorganism, disclosure is not always possible in writing but can sometimes only be effected by the deposit, with a specialized institution, of a sample of the microorganism.

In order to eliminate the need to deposit in each country in which patent protection is sought, the Budapest Treaty provides that the deposit of a microorganism with any “international depositary authority” suffices for the purposes of patent procedure before the national patent offices of all of the contracting States and before any regional patent office (if such a regional office declares that it recognizes the effects of the Treaty). The European Patent Office (EPO), the Eurasian Patent Organization (EAPO) and the African Regional Intellectual Property Organization (ARIPO) have made such declarations. The “international depositary authority” is a scientific institution - typically a “culture collection” - which is capable of storing microorganisms. Presently, there are 37 such authorities.

The Treaty is primarily advantageous to the depositor who is an applicant for patents in several countries. Instead of depositing the microorganism in each and every country in which he files a patent application referring to that microorganism, he can deposit it only once, with one depositary, with the consequence of saving costs incurred by multiple deposits. Further, the security of the depositor is increased by the fact that, for an institution to become an international depositary authority, solemn assurances as to the seriousness and continued existence of that institution must be given by a State or by an intergovernmental industrial property organization.

35 USC 102 explained

"35 USC 102(a) THE INVENTION WAS KNOWN OR USED BY OTHERS IN THIS COUNTRY,OR PATENTED OR DESCRIBED IN A PRINTED PUBLICATION IN THIS OR A FOREIGN COUNTRY, BEFORE THE INVENTION THEREOF BY THE APPLICANT FOR PATENT"

102(a) defines that US is a first to invent country and you are not going to get a patent if your invention was known (in written form usually) or used by others (practiced) by others in USA before date of invention, and if it was patented or was described in printed publication by others in any country than also you are not going to patent.

There are some keywords like 'Others' which means other than inventor himself. If inventor himself has published or practices he might still get a patent but it was done by others than he is not going to get a patent. Keyword 'in this country' means that that if the patent was being used in any country other than USA then he might still be able to get a patent. Keyword 'printed publication in this or foreign country' means that if the invention was patented or was described in printed publication (no language bar is there so publication can be of any language) he is out of luck. The keyword 'public' means that the publication should be available to public if the publication was maintained as confidential within a company its not public but if the publication was published in a magazine in some obscure magazine in place like China in chinese language its public. Keyword "before the invention" means the date which inventor can prove he actually invented the invention and it could be before earliest filing date (if inventor can prove it with some written records).

"35 USC 102(b) THE INVENTION WAS PATENTED OR DESCRIBED IN A PRINTED PUBLICATION IN THIS OR A FOREIGN COUNTRY OR IN PUBLIC USE OR ON SALE IN THIS COUNTRY, MORE THAN ONE YEAR PRIOR TO THE DATE OF THE APPLICATION FOR PATENT IN THE UNITED STATES"

Some patent tools you must know

 Patent Library

Patent Library allows users to search by patent number and get OCR'ed PDFs of patent 

documents.

Sample Landscape reports

Patent Landscape Report on Desalination Technologies and the Use of Alternative Energies for Desalination

click here to get report 

Patent Landscape Report on Solar Cooking

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Exceptions and Limitations of the Rights of patent - Top countries

USA

1. Solely for uses reasonably related to the development and submission of information under the Federal law which regulates the manufacture, use or sale of drugs and veterinary biological products, other than those products primarily manufactured using certain genetic manipulation techniques.
2. Certain uses concerning foreign vessels, aircraft or vehicles which temporarily or accidentally enter national territory.
3. As regards business method patents, continued use by a person who in good faith, had put the invention into practice at least one year before the filing date (priority date) and commercially used it before that date. 

Japan

1. Non-commercial use.
2. Use for experiment or research purposes.
3. Vessels and aircraft passing through Japan.
4. Products existing in Japan before the filing date (priority date).
5. Preparation of patented medicines by mixing two or more medicines in accordance with the prescription of physicians or dentists, and medicines so prepared.
6. Non-exclusive license available as of right in the case of prior use or working of the invention prior to the filing date (priority date).
7. Compulsory licenses.

India

1. The grant of a patent is subject to the following conditions:
(a) importation or manufacture of articles and uses of processes by, or on behalf of the Government for its own use;