"To examine, in light of the relevant provisions of the covered agreements cited by the United States in document WT/DS170/2, the matter referred to the DSB by the United States in that document and to make such findings as will assist the DSB in making the recommendations or in giving the rulings provided for in those agreements."3
Chairman: Mr. Stuart Harbinson
Members: Mr. Sergio Escudero
Mr. Alberto Heimler
"44. Subject to section 465, where an application for a patent is filed under this Act on or after October 1, 1989, the term limited for the duration of the patent is twenty years from the filing date.
45. Subject to section 46, the term limited for the duration of every patent issued under this Act on the basis of an application filed before October 1, 1989 is seventeen years from the date on which the patent is issued."
"27. Applications for patents filed before the coming into force of the provisions of this Act referred to in subsection 33(1) [which included the seventeen year term provision] shall be dealt with and disposed of in accordance with the Patent Act as it read immediately before the coming into force of those provisions."7
(i) the term of patent protection available under Section 45 of Canada's Patent Act is equivalent or superior to, and is consistent and in conformity with, the term of patent protection described by Article 33;
(ii) the minimum term of protection described by Article 33 is and has been available, without exception, under the Canadian law and practice relating to Old Act patents;
(iii) by virtue of paragraph 1 of Article 70, Article 33 does not have retroactive application to patents granted by the Commissioner of Patents prior to 1 January 1996; and,
on the basis of those findings, conclude that Section 45 of Canada's Patent Act conforms with its obligations under the TRIPS Agreement.
(i) patents for which applications were filed before 1 October 1989;
(ii) Old Act patents which were granted less than three years after the date of filing the application. This necessarily excludes all Old Act patents granted after 1 October 1992; and
(iii) Old Act patents which were in force on 1 January 1996, the date of application of the TRIPS Agreement in Canada, and which are still in force. This necessarily excludes all patents granted before 1 January 1979, as their maximum 17‑year term would have expired.
This dispute does not concern Old Act applications pending on the date of application of the TRIPS Agreement in Canada as these would not fulfil criterion (b).
(i) first, we will consider whether there is an obligation to apply the rules of the TRIPS Agreement to inventions protected by Old Act patents. This first hinges on the question whether existing "subject matter…which is protected", as the expression is used in Article 70.2 of the TRIPS Agreement, includes inventions protected by Old Act patents that were in force on the date of application of the TRIPS Agreement in Canada. Subsequently, we evaluate Canada's argument that Article 70.1, not Article 70.2, is the relevant provision and, even if Article 70.2 does generally apply, that Canada is not required to apply the obligation set out in Article 33 to such Old Act patents; and
(ii) we will then consider whether Section 45 of Canada's Patent Act is in conformity with Article 33 of the TRIPS Agreement and evaluate Canada's arguments that it is in conformity, first on the basis that the terms of "effective" protection or "exclusive privilege and property rights" made available under Section 45 is equivalent or superior to the term of protection available under Article 33, and second on the basis that it makes "available" a term of protection that does not end before 20 years from the date of filing.
"…the burden of proof rests upon the party, whether complaining or defending, who asserts the affirmative of a particular claim or defence. If that party adduces evidence sufficient to raise a presumption that what is claimed is true, the burden then shifts to the other party, who will fail unless it adduces sufficient evidence to rebut the presumption."11
(a) the United States' claim that the phrase existing "subject matter…which is protected", as used in Article 70.2, includes inventions protected by Old Act patents on 1 January 1996; and
(b) Canada's arguments that:
(i) Article 70.2 of the TRIPS Agreement is not applicable in this dispute on the basis of the meaning of the word "acts" contained in Article 70.1 and the introductory phrase "[e]xcept as otherwise provided for in this Agreement" contained in Article 70.2. We then consider the merit of this argument in light of the principle of effective treaty interpretation; and
(ii) Article 70.2, even if it were applicable to inventions protected by Old Act patents on 1 January 1996, does not require Members to apply the obligation of Article 33 of the TRIPS Agreement in relation to those patents.
"Except as otherwise provided for in this Agreement, this Agreement gives rise to obligations in respect of all subject matterexisting at the date of application of this Agreement for the Member in question, and which is protected in that Member on the said date, or which meets or comes subsequently to meet the criteria for protection under the terms of this Agreement. …" (emphasis added)
The meaning of "acts" as it is used in Article 70.1
The meaning of "[e]xcept as otherwise provided" as used in Article 70.2
"In the first line [of Article 70.2], the initial phrase would be amended to read 'Except as otherwise provided for in this Agreement…' This would make it clear that, for example, Article 18 of Berne applies by virtue of Article 9.1."29
"We agree with the Panel that these provisions of the Patents Act are mandatory. And, like the Panel, we are not persuaded that India's 'administrative instructions' would prevail over the contradictory mandatory provisions of the Patents Act."39
"Members shall give effect to the provisions of this Agreement. Members may, but shall not be obliged to, implement in their law more extensive protection than is required by this Agreement, provided that such protection does not contravene the provisions of this Agreement. … " (emphasis added)
"…rejected any notion of balancing more favourable treatment of some imported products against less favourable treatment of other imported products. If this notion were accepted, it would entitle a contracting party to derogate from the no less favourable treatment obligation in one case, or indeed in respect of one contracting party, on the ground that it accords more favourable treatment in some other case, or to another contracting party. Such an interpretation would lead to great uncertainty about the conditions of competition between imported and domestic products and thus defeat the purposes of Article III."59
"Members may require, as a condition of the acquisition or maintenance of the intellectual property rights provided for under Sections 2 through 6 of Part II, compliance with reasonable procedures and formalities. Such procedures and formalities shall be consistent with the provisions of this Agreement." (emphasis added)
"Procedures concerning the acquisition or maintenance of intellectual property rights…shall be governed by the general principles set out in paragraphs 2 and 3 of Article 41."
Paragraph 2 of Article 41 provides:
"Procedures concerning the enforcement of intellectual property rights shall be fair and equitable. They shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays." (emphasis added)
(i) the reference to "subject matter…which is protected" on the date of application of the TRIPS Agreement in Article 70.2 includes inventions that are currently protected by patents in accordance with Section 45 and that were protected by patent on 1 January 1996, and this is not affected by Article 70.1; and
(ii) Section 45 of Canada's Patent Act does not make available a term of protection that does not end before 20 years from the date of filing as mandated by Article 33.