Patents in the Context of TRIPS Agreement

As mentioned earlier, the TRIPS Agreement incorporates substantive provisions from the Paris Convention. As a result, it adopts the same basic criteria for patentability that were discussed earlier in this chapter, namely novelty, non-obviousness and industrial applicability. A number of innovations can nevertheless be identified. The TRIPS Agreement, for instance, requires patentability of qualifying inventions in all fields of technology ²⁸. One implication is that countries cannot differentiate between different fields of technology. The TRIPS Agreement also requires patentability in all fields of technology for processes and products. Therefore, no differentiation between product and process patents is allowed.

General principles concerning the scope of patentability establish the widest possible scope. Some optional exceptions have, however, been introduced, allowing member states to take measures at the national level to restrict patentability in certain specific fields. One specific aspect concerns the possibility to exclude diagnostic, therapeutic and surgical methods for the treatment of humans or animals. Broader exceptions include the protection of morality and public order, and, in particular, the protection of human, animal or plant life or health, or avoiding serious prejudice to the environment. These exceptions are qualified by two conditions. First, member states can only apply such restrictions to patentability where it is established that the commercial exploitation of the invention must be prohibited. Secondly, the exclusion from patentability must not be based solely on a general provision prohibiting the exploitation of the product (Gervais 2003). This would, for instance, prohibit a blanket restriction on product patents on micro-organisms or pharmaceuticals. The TRIPS Agreement also addresses separately the question of life patenting at Article 27(3)b.
Here, the principle is that life patents such as patents on micro-organisms and non-biological and microbiological processes for the production of plants and animals must be introduced. States remain entitled to exclude the patentability of certain specific categories of products such as plants, animals and especially biological processes for the production of plants and animals. This convoluted arrangement raises significant problems that have already been identified in some jurisdictions. One main question that arises is whether the patentability of a micro-organism extends to a plant into which it is inserted even where the plant is itself not patentable ²⁹.

Notes and References

²⁸ Article 27 (1), TRIPS Agreement.
²⁹ The basic original understanding of patent law was that products of nature could not be patented and that patentability should be reserved to the products of human inventiveness. The first major change to this distinction was the adoption of Plant Patents Act 1930 in the US that provides protection for inventors or discoverers who asexually reproduce distinct and new plant varieties (Plant Patent Act 1930). Between 1930 and 1980, the main developments that occurred in the field of IPR protection were the development of plant breeders' rights in Europe and the US as an alternative form of intellectual property protection for plant varieties. The year 1980 was a landmark in the history of the development of life patents. The US Supreme Court accepted the patentability of artificially created life forms, thereby paving the way for the rapid development of the genetic engineering industry.