Acquisition, Transparency and Dispute Settlement: Articles 62 to 64

In one line

Getting a right must be reasonably quick and fair, the rules must be published, and disputes go to the ordinary WTO machinery except that non-violation complaints have been suspended for thirty years.

In exam wording: Part IV of TRIPS, Article 62, governs the acquisition and maintenance of intellectual property rights and related inter partes procedures, and Part V, Articles 63 and 64, governs transparency and dispute settlement.

Article 62: acquisition and maintenance

Article 62.1 permits members to require compliance with reasonable procedures and formalities as a condition of the acquisition or maintenance of the rights provided under Sections 2 to 6 of Part II, that is trademarks, geographical indications, industrial designs, patents and layout-designs. Copyright is deliberately outside this, because Berne Article 5(2) forbids formalities as a condition of the enjoyment and exercise of copyright.

Article 62.2 is the substantive discipline. Where the acquisition of a right is subject to the right being granted or registered, members shall ensure that the procedures for grant or registration, subject to compliance with the substantive conditions, permit the granting or registration of the right within a reasonable period of time so as to avoid unwarranted curtailment of the period of protection.

That is a real obligation and it matters commercially. A patent term runs from filing, so every year of examination backlog is a year of protection lost; a five year pendency turns a twenty year term into fifteen years of enforceable exclusivity.

Article 62.3 applies Paris Article 4, the right of priority, mutatis mutandis to service marks, which the Paris Convention itself does not cover.

Article 62.4 requires that procedures concerning acquisition and maintenance, and, where a member's law provides for them, administrative revocation and inter partes procedures such as opposition, revocation and cancellation, be governed by the general principles in Article 41.2 and 41.3, that is fairness, equity, absence of unnecessary complexity, cost and delay, and reasoned written decisions based on evidence heard.

Article 62.5 requires that final administrative decisions in any of those procedures be subject to review by a judicial or quasi-judicial authority, subject to one qualification: there is no obligation to provide such review of decisions in cases of unsuccessful opposition or administrative revocation, provided the grounds may be the subject of invalidation procedures.

Article 63: transparency

Article 63.1 requires that laws, regulations, final judicial decisions and administrative rulings of general application made effective by a member pertaining to the subject matter of the Agreement, that is the availability, scope, acquisition, enforcement and prevention of abuse of intellectual property rights, be published, or where publication is not practicable made publicly available, in a national language, in such a manner as to enable governments and right holders to become acquainted with them. Agreements concerning the subject matter in force between a member's government and another member's government shall also be published.