TRIPS Articles 32, 33 and 34: Revocation, Term and Burden of Proof

In one line

Any revocation must be reviewable by a court, a patent must last at least twenty years from filing, and in a process patent case the defendant may be made to prove its process is different.

Article 32, revocation

"An opportunity for judicial review of any decision to revoke or forfeit a patent shall be available."

One sentence, and it is procedural. TRIPS says nothing about the grounds on which a patent may be revoked, so those are entirely national.

That silence matters. It is why India's section 64, with its sixteen grounds including insufficiency, obviousness, non disclosure under section 8 and non disclosure of the source of biological material, is not open to challenge as such.

Note also that Paris Article 5A(3) survives, requiring forfeiture to be preceded by a compulsory licence that proves insufficient, so the two provisions operate together.

India's compliance: section 64 revocation by the High Court on a counter claim or by the Appellate authority on petition, section 25(2) post grant opposition before the Controller with an appeal, and section 66 revocation in the public interest by the Central Government, which is itself amenable to judicial review.

Article 33, term

"The term of protection available shall not end before the expiration of a period of twenty years counted from the filing date."

Footnote 8: Members without a system of original grant may compute the term from the filing date in the system of original grant.

Three points.

The measure is from filing, not from grant. So examination delay eats into the term, and the patentee bears it. That is what patent term restoration provisions in some countries, and in TRIPS plus agreements, are designed to correct; TRIPS itself requires no restoration.

It is twenty years available, not twenty years enjoyed. A patent may lapse earlier for non payment of renewal fees.

And it is a floor. A Member may give longer.

India's compliance: section 53 of the Patents Act gives twenty years from the date of filing for every patent, and the Patents (Amendment) Act, 2002 made that uniform, replacing the earlier split of fourteen years generally and seven from filing or five from sealing for food and medicine.

The worked authority on Article 33

The case is Canada: Term of Patent Protection.

Facts. Section 45 of Canada's Patent Act gave patents applied for before 1 October 1989 a term of seventeen years from the date of grant. The United States said that breached Article 33, which requires twenty years from filing, and that Article 70.2 applies the Agreement to subject matter existing on its date of application and still protected. The citation is WT/DS170, panel report circulated 5 May 2000, Appellate Body report circulated 18 September 2000, both adopted 12 October 2000.