WORLD TRADE  
ORGANIZATION  IP/C/W/440 
1 March 2005 
 
 (05-0842) 
Council for Trade-Related Aspects  
of Intellectual Property Rights Original:   English 
 
  
  
LEGAL ARGUMENTS TO SUPPORT THE AFRICAN GROUP PROPOSAL ON  THE 
IMPLEMENTATION OF PARAGRAPH 11 OF THE 30 AUGUST 2003 DECISION 
 
Communication from Rwanda on behalf of the African Group
 
 
 
 The following communication, dated 25 February 2005, is being circulated at the request of  
the Delegation of Rwanda on be half of the African Group. 
 
_______________ 
 
 I. INTRODUCTION 
1. At the December 2004 TRIPS Council meeting, the African Group presented a proposal for 
the amendment of Article 31 of the TRIPS Agreem ent.  The proposed amendment is based on the 
waivers adopted in the 30 August 2003 General Co uncil Decision with modifications but would not 
include the Chairman's statement either as part of the amendment text or as a footnote.  A number of 
issues arise with respect to th e proposal mainly on account of some Members' concerns and 
arguments against the proposed approach.  First, so me Members have argued that there is no need to 
actually amend the text of the TRIPS Agreement and a footnote would be the most appropriate way to 
implement paragraph 11 of the 30 August Decision.  This is the argument about legal form, which has 
taken up a significant amount of time in informal m eetings and has been the subject of two legal 
opinions from the Legal Affairs Division of the WTO Secretariat. 
 
2. The second issue that arises relates to the prop osed modifications to the 30 August Decision. 
While the African Group based these modi fications on the agreement that the 'amendment would be 
based on the Decision, where appropriate' , some other Members have argued that this amounts to a 
re-opening of the Decision as opposed to a technical adap tation.  The third issue that arises relates to 
the Chairman's Statement and how it would be dea lt with in the context of an amendment.  The 
African Group considers that the Chairman's Statem ent should not be part of the amendment as it was 
not part of the 30 August Decision.  Making it pa rt of the amendment text including through a 
footnote would elevate its legal status.  On the ot her hand, other Members argue that the Chairman's 
Statement has to be part of the amendment. 
II. LEGAL ARGUMENTS 
A. THE LEGAL FORM OF THE AMENDMENT : THE QUESTION OF AMENDMENT BY FOOTNOTE  
3. In its 1 March 2004 Note, the Legal Affairs Di vision concludes that "in WTO jurisprudence 
to date, footnotes have been considered by WTO pa nels and Appellate Body from a legal perspective IP/C/W/440 
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 to be an integral part of the text of the articles to which they are attached".
1  In the Addendum dated 
12 May 2004, the Division further concludes, in an swer to the question whether incorporation of a 
document by reference in a footnote would have the sa me legal effect as if the provisions of that 
document were incorporated in full, that "the legal effect of such a reference, whether in the main 
body of the Agreement or in a footnote, would obvi ously depend on the way the reference is written".2  
On the question of other possible forms of amendm ent, the Addendum concludes that there is no 
reason emanating from the law and jurisprudence of  the WTO to date that would prevent Members 
from using the other options mentioned in the discu ssions including making additions to an article of 
the Agreement; modification of the relevant paragra phs of Article 31 of TRIPS; or through an annex. 
4. In basic terms therefore the proposal by the A frican Group to add a paragraph to Article 31 
with the relevant footnotes of the Decision beco ming footnotes in the TRIPS Agreement stands on 
sound legal ground in WTO law and jurisprudence as confirmed by the Secretariat.  More importantly, this is the most direct and straight forward approach, which raises no doubts about the 
legal standing of the amendment.  As is clear from the Secretariat's Notes, while Panels and the Appellate Body have generally inte rpreted footnotes as a substantive part of the text, the question of 
the status of footnotes vis-à-vis  the text of an agreement has ne ver been positively examined by a 
panel or the Appellate Body.  
5. According to the Oxford English Dictionary, a footnote means "an additional piece of 
information printed at the bottom of a page".
3  The Longman Dictionary of Contemporary English 
Online on its part defines a footnote as "a note at the bottom of the page of a book, which gives more information about something" and as "a piece of additional information that is not very important  but 
is interesting or helps you understand something".
4  The ordinary meaning of a footnote is therefore a 
note that provides additional information or explana tion but that is not as important as the text to 
which it is attached.  Consequently, while it is po ssible that in the WTO context a footnote could 
contain information of substantive value or import, it is not entirely certain that a footnote has the 
same substantive value as the text of the Agreement. 
6. Consequently, because of a lack of any specifi c positive finding on this question by a WTO 
panel or Appellate Body and consid ering the ordinary meaning of the word footnote, there is a 
significant degree of uncertainty that arises with r espect to using a footnote to implement a very 
crucial amendment to the TRIPS Agreement and, in pa rticular, to give the solution certainty and legal 
security.  The footnote approach therefore raises important concerns which have not been fully 
addressed and which are likely to remain.  Since ther e is a more straightforward, less complicated and 
legally secure route which has not been doubted by any Member, that is, direct amendment of the 
TRIPS Agreement by inserting the emending text in the body of the Agreement, there is no basis to look for alternatives. 
B. J
USTIFICATIONS FOR THE MODIFICATIONS TO THE 30 AUGUST DECISION  
7. The African Group proposal modifies the 30 August Decision as appropriate and, in 
particular, proposes to eliminate a number of provisi ons in the Decision.  There is a sound legal basis 
for proposing to eliminate these provisions.  The Grou p's proposal is legally based on the test that was 
established by the 30 August Decision.  The test  for basing the amendment on the Decision's 
provisions was established to be appropriateness. The question for the TRIPS Council then is what 
                                                      
1 See paragraph 14. 
2 See paragraph 25. 
 3 See the online version of the Compact Oxford English Dictionary at 
http://www.askoxford.com/con cise_oed/footnote?view=uk . 
 4 Emphasis added. See http://www.ldoceonline.com/. 
  IP/C/W/440 
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 does the standard of appropriateness mean?  What fact ors need to be considered in determining what 
is appropriate and what is not?  Shoul d the only factor be political expediency?  
8. Clearly, political expediency or efficiency for its sake is not the guiding principle for 
determining appropriateness although it may be a cons ideration.  The appropriateness of particular 
elements should be understood to mean those elements  in the Decision that are necessary to ensure the 
amendment is legally predictable, secure and economica lly and socially sustainable, that is, that the 
amendment fulfils the aspirations for those for whom  paragraph 6 of the Doha Declaration was meant 
to serve.  Arguments simply based on political expedi ency or efficiency for its sake cannot therefore 
suffice.  In particular, the argument that the amen dment should simply be a technical transposition of 
the Decision does not find any legal basis in the 30 August Decision itself or in the context of the 
negotiations leading to its adoption.  If the idea was to undertake such a technical transposition, 
nothing would have been easier than for the Gene ral Council simply saying that. Consequently, to 
proceed on the basis of a technical transposition would be to deprive the appropriateness test 
established by the Decision of any meaning.  
9. Based on the appropriateness test, the African Gr oup has proposed to eliminate, first, those 
provisions whose purpose has already been served or that would be redundant in the context of an 
amendment.  These could be seen as self-eliminating elements. Secondly, it is proposed to eliminate 
other provisions whose purpose would otherwi se be served by other provisions of the TRIPS 
Agreement such as the Agreement's provisions on enforcement.  This approach maintains the 
fundamental elements and substance of the Deci sion. Below is a detailed justification for the 
modifications made on both accounts.  
10. The self-eliminating elements appropriate to eliminate or otherwise modify include the 
following: 
• The Preamble:  The preamble was meant to provid e the context for the Decision but 
does not contain any substantive provisions nor does it establish rights and obligations; 
 
• The last part of paragraph 1(b)  dealing with Members that may voluntarily not use 
the system or that may use the system only in limited circumstances:  This part does 
not have any substantial value in light of  the definition of an eligible importing 
Member as proposed by the African Group.  There is a requirement of notification to qualify as an eligible importing Member.  All those self-selecting Members who do not wish to use the system just need not notify; 
 
• Paragraph 6(ii) on regional patent systems:   This does not provide any legal rights or 
obligations but in fact attempts to pr ovide policy advice.  Clearly, Members are 
currently entitled to develop regional system s of patents if they choose to and to 
determine how to implement such regional systems.  It should also be noted that while there is nothing that prevents Members from cooperating, the viability of regional systems that seek to harmonize standards (one-size-fits-all) is questionable. Consequently, the amendment is not the right place to issue this type of policy advice; 
 
• Paragraph 8 on review of the Decision:  This paragraph deals with the annual review 
of the Decision, which is aimed at fulfilling the requirements of Article 10.4 of the WTO Agreement.  This Article is only app licable to waivers.  The African Group's 
proposal is a proposal for a permanent amen dment to the TRIPS Agreement to which 
Article 10.4 does not apply.  Any review of the implementation of the amendment, 
except where otherwise provided, will like the rest of TRIPS provisions be undertaken IP/C/W/440 
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 in the context of Article 68 and the revi ew of implementation under Article 71 of 
TRIPS; 
 
• Paragraph 9 on prejudice to other rights:   This paragraph simply reaffirms the rights 
that Members already have and does not therefore confer any new rights.  The 
proposed amendment will be part of the TRIPS Agreement, which, in accordance with 
WTO law and jurisprudence, has to be read t ogether consistently.  For this reason there 
is no risk that one could interpret th e amendment as somehow eliminating the 
application of other provisions of Article 31 except where it is specifically provided 
for;  and, 
 
• Paragraph 11 on an amendment replacing the Decision:  This paragraph was aimed at 
providing a mandate for the amendment wo rk. Once there is an amendment, its 
purpose will have been served. 
 
11. At the second level, there are elements of the Decision such as those relating to conditions for 
the use of the Decision whose purpose will otherwi se be served by other provisions of the TRIPS 
Agreement such as the Agreement's provisions on en forcement and the already existing provisions of 
Article 31.  In this category would fall most of the provisions of paragraph 2 of the Decision.  In 
particular: 
• Paragraph 2(a) (i) relating to specifying the names and quantities needed : Article 31 
as currently set up already has conditions of comparative nature which would take care of what the Decision intended to do here.  The patent holder must be informed under 
Article 31(b) of the issuance of licences a nd since the legal validity of a licence is 
subject to judicial review or other independent review by a distinct higher authority under Article 31(i), the conditions of the i ssue of licence including the name of the 
licensee, the relevant products etc. will not onl y be known to the patent holder, but also 
the patent holder would have the possibilit y of challenging any condition under the 
licence; 
 
• Paragraph 2(a) (ii) relating to the confirma tion of lack of capacity and the Annex to 
the Decision:   This paragraph is fairly redundant.  By notifying the intention to use the 
system under the proposed amendment by the African Group (paragraph (a) (ii) of the proposed Article 31(2)), a Member would clearly be explicitly indicating that they have insufficient or no manufacturing capacity .  Since the criteria established under the 
Annex to the Decision is a self-selection criterion the requirement to further "confirm 
the confirmation of intention to use", adds  no value and can only serve to complicate 
the process.  With respect to the Annex, as already noted, it establishes a self-selection 
criterion.  A Member notifying intention to use the system would clearly have undertaken a self-selection as contemplated in  the Annex and explicitly be indicating 
that it lacks manufacturing capacity.  If another Member were to dispute such lack of 
capacity, clearly that would be a factual de termination which the criterion in the Annex 
cannot help resolve; 
 
• Paragraph 2(a) (iii) relating to confirmation of intention to grant a compulsory 
licence:  As with paragraph 2(a) (ii), this re quirement is redundant. The whole system 
established under the Decision and the propo sed amendment relates to the use of 
compulsory licensing under Article 31 of the TRIPS Agreement.  It follows that, the 
system can only be used in a Member in w hose territory the product is patented, and 
where in fact a compulsory licence is issued.  If a Member  used the system without 
issuing a compulsory licence the existing provisions of Article 31 would provide more  IP/C/W/440 
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 than sufficient avenues for recourse as the patent holder would be entitled in terms of 
Article 28 of the TRIPS Agreement to prevent importation of the product; 
 
• Paragraph 2(b) (i) relating to importation of only the amount necessary to meet the 
needs of the importing Member:   This paragraph contains a provision which is already 
sufficiently defined in Article 31 as it curre ntly stands and hence an amendment to 
introduce this condition would serve no purpose apart from cluttering the Article.  Article 31(c) currently requires that "the scope and duration of a compulsory licence 
shall be limited to the purpose for which it was authorized".  This is a mandatory 
provision, which means that if a licen ce was issued for export/import under the 
proposed Article 31(2) the licence would be limited only to the purposes anticipated by 
the Decision; 
 
• Paragraph 2(b) (iii) relating to posting information on the website:   This is another 
provision that is already covered by the ex isting conditions under Ar ticle 31 of TRIPS.  
Article 31(b) requires prior negotiations with  the patent holder and even in cases of 
national emergency or other circumstances of  extreme urgency or in cases of public 
non-commercial use, where prior negotiations are not required, the patent holder is 
entitled to be informed as soon as practicab ly possible.  Clearly, the patent holder 
would, through this process, be able to en force their private rights and have knowledge 
of the quantities being supplied and the distinguishing features of such products; 
 
• Paragraph 2(c) relating to notifying the TRIPS Council of the grant of the licence 
etc:  As with paragraph 2(b) (iii) above, this  condition is already fully covered by the 
existing provisions of Article 31 and can only serve to clutter the amendment.  As noted, in whichever case, the patent holder will always be informed under Article 31(b) 
of the issue of the licence and since the legal validity of a licence is subject to judicial 
review or other independent review by a distinct higher authority under Article 31(i), 
the conditions of the issue of licence includi ng the name of the licensee, the relevant 
products etc. will not only be known to the patent holder but also the patent holder 
would have the possibility of challenging any condition under the licence;  
 
• Paragraph 4 of the Decision relating to re-exportation:   As demonstrated above, the 
patent holder has sufficient avenues to prev ent re-exportation of the products under the 
licences under the system which makes this provision one of those provisions that 
complicates the implementation of the system but does not add value to it.  The most 
important component of preventing diversion is in third countries and Article 31(2) (d) 
as proposed by the African Group, which inco rporates elements of paragraph 5 of the 
Decision, with modifications to include th e fundamental elements of paragraph 4, 
would cover this situa tion quite adequately.  
 
C. T
HE CHAIRMAN 'S STATEMENT  
12. There is clear legal justification why the Chairman's statement should not be part of the 
amendment either as part of the proposed Article 31( 2) or as a footnote.  The Chairman's Statement 
was not part of the 30 August Decision and including  it in the amendment, through a footnote, would 
be giving the Statement a legal status which it never had.  This would in essence significantly 
unbalance the text. 
13. The Legal Affairs Division's Note of 1 March 2004 and the Addendum of 12 May 2004 
support this proposition.  In particular, in paragra ph 18 of the Addendum, the Division concludes that 
"Footnotes in covered agreements have been consid ered by WTO panels and Appellate Body from a IP/C/W/440 
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 legal perspective to be an integral part of the text of the articles to which they are attached".  As noted, 
the Chairman's Statement while providing c ontext to the Decision was without doubt, NOT AN 
INTEGRAL PART  of the Decision.  Consequently, notwithstanding the limited qualification 
contained in paragraph 19 of the Addendum to the Legal Affairs Division Note, the inclusion of the 
Chairman's Statement in the text of the amendment or through a footnote would change its status to 
the detriment of the African Group.  However, c onsideration could be give n to accepting some form 
of a Chairman's statement to be read at the time of the adoption of the amendment. 
__________