Monday, 3 January 2022

Intellectual Property Articles of the Australia-UK Free Trade Agreement: General Provisions



Jane Lambert

On 20 Dec 2021, I introduced the UK's free trade agreement with Australia.  I reported that it consists of 32 chapters and that one of those chapters (namely Chapter 15) is on intellectual property.  Chapter 15 consists of 96 articles divided into 11 sections.  I indicated that I would consider the various sections of that chapter in due course.

Today I consider Section A of the chapter which is headed "General Provisions".  It consists of the following articles:

  • Art 15.1 Definitions
  • Art 15.2 Objectives
  • Art 15.3 Principles
  • Art 15.4 Understandings
  • Art 15.5 Nature and Scope of Obligations
  • Art 15.6 Understandings Regarding Certain Public Health Measures
  • Art 15.7 National Agreements
  • Art 15.8 National Treatment
  • Art 15.9 Transparency
  • Art 15.10 Application of Chapter to Existing Subject Matter and Prior Acts
  • Art 15.11 Exhaustion of Intellectual Property Rights, and
  • Art 15.12 Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions.
The only definition that I need to consider at this stage is the meaning of "intellectual property." For the purpose of this agreement, the term refers to all categories of intellectual property that are the subject of Sections 1 through 7 of Part II of the TRIPS Agreement. That is to say, copyright and related rights, trade marks, geographical indications, industrial designs, patents, semiconductor topography designs and undisclosed information.

The objectives of the agreement are set out in art 15.2:
"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."

Each party is required by art 15.5 (3) to give effect to Chapter 15 but is free to determine the appropriate method of implementing it within its own legal system and practice.

Under art 15.5 (1), the parties affirm their existing rights and obligations with respect to each other under the TRIPS Agreement. They also confirm at art 15.7 that they have ratified or acceded to the following agreements:

(a) TRIPS Agreement;
(b) Paris Convention;
(c) Berne Convention;
(d) Rome Convention;
(e) WCT;
(f) WPPT;
(g) Marrakesh Treaty;
(h) Madrid Protocol;
(i) Nice Agreement;
(j) Singapore Treaty;
(k) Budapest Treaty;
(l) UPOV 1991;
(m) PCT; and
(n) PLT.

Each of those agreements is identified in art 15.1.

In art 15.4, the parties recognize the need to:
"(a) promote innovation and creativity;
(b) facilitate the diffusion of information, knowledge, technology, culture, and the arts; and
(c) foster competition and open and efficient markets,
through their respective intellectual property systems, while respecting the principles of transparency and due process, and taking into account the interests of relevant stakeholders, including right holders, service providers, users, and the general public."

The Parties acknowledge the importance of adequate, effective and balanced protection and enforcement of intellectual property rights in art 15.5 (2) but are conscious of the need to prevent measures to enforce intellectual property rights from becoming in themselves barriers to legitimate trade. Accordingly, art 15.3 (2) provides:

"Appropriate measures, provided that they are consistent with the provisions of this Chapter, 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."
Another important qualification to the protection and enforcement of intellectual property rights concerns public health. Art 15.3 (1) permits each party in formulating or amending its laws and regulations, 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. Each party affirms the Declaration on TRIPS and Public Health at art 15.6 (1) with the following understandings:
"(a) the Parties affirm the right to fully use the flexibilities as duly recognised in the Declaration on TRIPS and Public Health;
(b) the Parties agree that this Chapter does not and should not prevent a Party from taking measures to protect public health; and
(c) the Parties affirm that this Chapter can and should be interpreted and implemented in a manner supportive of each Party’s right to protect public health and, in particular, to promote access to medicines for all."
It is specifically agreed in art 15.6 (2) that Chapter 15 does not and should not prevent the effective utilisation of Article 31bis of the TRIPS Agreement, and the Annex and Appendix to the Annex to the TRIPS Agreement. Moreover, by art 15.6 (3) the parties recognize the importance of contributing to the international efforts to implement art 31bis of the TRIPS Agreement, and the Annex and Appendix to the Annex to the TRIPS Agreement.

In respect of all categories of intellectual property covered in Chapter 15, art 15.8 (1) requires each party to accord to nationals of the other party treatment no less favourable than it accords to its own nationals with regard to the protection of intellectual property rights subject to the exceptions already provided for in, respectively, the Paris Convention, the Berne Convention, the Rome Convention, the WPPT, and the TIPRIC (the Treaty on Intellectual Property in Respect of Integrated Circuits, adopted at Washington on 26 May 1989). Art 15.1 (2) provides that "nationals" for this purpose means "a person of a Party that would meet the criteria for eligibility for protection provided for in the agreements listed in Article 15.7 (International Agreements) or the TRIPS Agreement". In respect of performers, producers of phonograms and broadcasting organisations, the above obligation applies only in respect of rights provided under the free trade agreement. However, art 15.8 (3) provides that art 15.8 (1) does not apply to procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the acquisition or maintenance of intellectual property rights. A party may also derogate from art 15.8 (1) in relation to its judicial and administrative procedures, including requiring a national of the other party to designate an address for service of process in its territory, or to appoint an agent in its territory, provided that this derogation is:
(a) necessary to secure compliance with laws or regulations that are not inconsistent with this Chapter; and
(b) not applied in a manner that would constitute a disguised restriction on trade.

Art 15.9 requires each party to endeavour to publish online:
(1)   its laws, regulations, procedures, and administrative rulings of general application concerning the protection and enforcement of intellectual property rights;
(2)   subject to its law information that it makes public concerning applications for trade marks, geographical indications, registered designs, patents, and plant variety rights; and
(3) subject to its laws online information that it makes public concerning registered or granted trade marks, geographical indications, designs, patents, and plant variety rights, sufficient to enable the public to become acquainted with those registered or granted rights.
Both the Intellectual Property Office and IP Australia seem to satisfy this requirement already.

Art 15.10 (1) provides that unless otherwise provided, Chapter 15 gives rise to obligations in respect of all subject matter existing at the date of entry into force of the free trade agreement and that is protected on that date in the territory of a party where protection is claimed, or that meets or comes subsequently to meet the criteria for protection under that chapter. A party shall not be required to restore protection to subject matter that on the date of entry into force of the agreement has fallen into the public domain in its territory. Chapter 15 does not give rise to any obligation in respect of acts that occurred before the date of entry into force of the free trade agreement.

Section A ends with two miscellaneous provisions. First, art 15.11 states that nothing in that agreement prevents a party from determining whether or under what conditions the exhaustion of intellectual property rights applies under its legal system. Secondly, Australia and the UK affirm their commitment to work together through discussion and by the exchange of information at the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore under art 15.12.

I shall address Section B on Cooperation which runs from art 15.13 to art 15.19 inclusive shortly.   In the meantime, anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during normal business hours or send me a message through my contact form. 

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Intellectual Property Articles of the Australia-UK Free Trade Agreement: General Provisions

Wallaby Author Thomas Schoch Licence CC BY-SA 2.5    Source   Wikimedia Common s   J ane Lambert On 20 Dec 2021, I introduced the UK's f...