Patent Exhaustion and International Trade Regulation

Santanu Mukherjee, M.I.L.E., Ph.D. (WTI, Bern University), is an Advocate & Accredited Mediator in India, and the Head of Ex Lege Chambers, a boutique Law Office. He specializes in IPR, International Trade Policy and Technology Laws.

• ForewordPrefaceAcknowledgmentsList of Figures and TableAbbreviations and AcronymsIntroductionPart 1Patents and Exhaustion1 Intellectual Property Rights and Patents: Introduction to Intellectual Property Rights1.1 Brief History of Patents1.2 Rationale for Patents1.2.1 Libertarian1.2.2 Self-expression1.2.3 Utilitarian1.2.4 Human Rights1.2.5 Distributive Justice1.2.6 Privacy1.2.7 Egalitarian1.3 Specific Characteristics of Intellectual Property Rights2 Ubiquity and Exhaustion Doctrine: Ubiquity in Patents2.1 Doctrine of Implied License2.2 Doctrine of First Sale2.3 Exhaustion of Patent Rights3 Economics of Patents and Economic Rationale for Exhaustion in Relation to International Trade3.1  3.1.1 The Economics of Patents3.1.2 The Economic Arguments for Free Trade in Relation to Exhaustion of Patents3.2 The Economic Reasoning for Patent Exhaustion3.2.1 Economic Reasoning for ‘National Exhaustion’ of Patent Rights3.2.2 Economic Reasoning for ‘International Exhaustion’ of Patent Rights3.2.3 Economic Reasoning for ‘Regional Exhaustion’ of Patent Rights3.2.4 Ideal Mode of Patent Exhaustion among the Three Modes4 Evolution of Exhaustion: Patent Exhaustion in Different Jurisdictions4.1 The United Kingdom and the Doctrine of ‘Implied License’4.2 Patent Exhaustion in Germany and Some Countries in Continental Europe4.3 Patent Exhaustion in the United States of America4.4 Patent Exhaustion in Japan4.5 Patent Exhaustion in Some Developing Countries4.5.1 Brazil4.5.2 China4.5.3 India4.5.4 South Africa4.5.5 Indonesia4.5.6 Malaysia4.5.7 Singapore4.5.8 Thailand4.5.9 The Philippines4.5.10 Vietnam5 Exhaustion and Parallel Trade: Patent Exhaustion5.1 The Effect of Patent Exhaustion on Parallel Trade5.2 The Effect of Exhaustion of Other ipr s on Parallel Trade5.2.1 Exhaustion of Trademarks5.2.2 Exhaustion of Copyrights5.2.3 Exhaustion of Trademarks and Copyrights in Relation to Patent Exhaustion and Effect on Parallel TradePart 2Multilateral and Regional Trade Regulations and Patent Exhaustion6 trips Agreement: The Negotiating History of the trips Agreement and Patent Exhaustion6.1 Intellectual Property Rights under the gatt and the Negotiating History of trips6.2 The Negotiating History of Exhaustion6.3 Exhaustion under trips / wto: Analysis from the Multilateral Trade Perspective6.3.1 Patent Exhaustion under the trips Agreement7 gatt 1994 and Exhaustion7.1 Preamble to the gatt 19947.2 Article i – Most Favoured Nation7.3 Article iii – National Treatment7.4 Article xx – General Exceptions7.5 Article xi: 1 – General Elimination of Quantitative Restrictions7.6 Article xxiv – In Light of the Most Favoured Nation Principle7.7 Article xxiii: 1 – Non-discrimination of Quantitative Restrictions8 General Agreement on Trade in Services and Its Interface with Patent Exhaustion8.1 gats and Patent Exhaustion8.2 Article ii and Article xvii in gats and Its Impact on Patent Exhaustion8.3 Exceptions to Most Favoured Nation and National Treatment and Its Impact on Patent Exhaustion under Article v and Article xiv9 Free Trade Agreements and Exhaustion: Different Regional Trade Agreements9.1  9.1.1 Regionalism and Its Relationship with Multilateralism9.1.2 Development of Regionalism in Different Parts of the World9.1.3 Relation between Regionalism and Multilateralism with Reference to Articles xiv and xxiv of the gatt / wto Agreement9.2 The European Union, European Free Trade Association, European Economic Area and Patent Exhaustion9.3 North American Free Trade Area (nafta), United States Canada Mexico Agreement (usmca) and Patent Exhaustion9.3.1 nafta: Historical Perspective and Evolution9.3.2 nafta: Legal rules on Intellectual Property Rights and Patent Exhaustion9.3.3 usmca: Background and Evolution9.4 Association of Southeast Asian Nations (asean) and Patent Exhaustion9.5 Gulf Cooperation Council (gcc) and Patent Exhaustion9.6 Common Market of the South (mercosur) and Patent Exhaustion9.7 Comprehensive and Progressive Agreement for Trans-pacific Partnership (cptpp), ipr s and Patent Exhaustion9.8 Comprehensive Economic and Trade Agreement (ceta) and Patent ExhaustionPart 3Policy Dimensions of Patent Exhaustion10 Patents and Public Health: Patents and Access to Medicines – The Exhaustion Dimension10.1 Historical Perspective of Patents, Public Health Concerns and Access to Medicines: The Indian Experience10.2 Post-trips Scenario: Patents, Public Health Concerns and Access to Medicines10.3 Public Policy Implications of Public Health Crisis Leading to trips Amendment10.4 trips Amendment: Patent Exhaustion Enabling Parallel Trade11 Exhaustion and Competition Policy: Patent Exhaustion and Its Relation with Competition Law and Policy11.1 Competition Law and Policy in the Multilateral Trading System11.2 Competition Law/Policy and ipr s within the gatt/wto Regime11.3 Competition Law/Policy trips and Parallel ImportsConclusion and Final Remarks12 Conclusion and Recommendation: Adoption of International Exhaustion of Patents, Globally12.1. Purpose of Patent Protection, Ubiquity and Need for Balance12.2 Patent Exhaustion in Different Countries: Need for Uniform International Exhaustion12.3 Patent Exhaustion and Multilateral Trade: Need for Removal of Non-Tariff Barriers12.4 International Exhaustion of Patents – Balancing ipr Protection and Consumer Welfare through Competition Policy12.5 Addressing Parallel Imports under State Control and Restraints on Intellectual Property Rights12.5.1 Restraint on Parallel Imports Due to Non-existence of Patents in Country of Export or Patents being Subject to Compulsory Licenses and Other Controls12.5.2 Restraint on Parallel Imports due to Inferior Quality of Products12.6 Amendment of the trips Agreement: Proposed Draft Amended Text for Article 6, tripsBibliographyLegal Texts and wto DocumentsList of CasesWebsitesIndex