PROTECTION OF DATA SUBMITTED FOR THE
REGISTRATION OF PHARMACEUTICALS:IMPLEMENTING THE STANDARDS OF THE TRIPSAGREEMENT

Carlos María Correa
University of Buenos Aires

THE SOUTH CENTRE

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Protection of Data Submitted for the Registration of Pharmaceuticals: Implementing theStandards of the Trips Agreement, by Carlos Correa was first published in June
2002 by the South Centre in collaboration with the Department of Essential
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CONTENTS
Executive Summary .............................................................................................. ix
Introduction ........................................................................................................ xi
I. DATA REQUIRED FOR THE REGISTRATION OF PHARMACEUTICALS ......

1

II. THE RATIONALE FOR DATA PROTECTION.................................................

5

A. Approaches to Data Protection .......................................................
B. National Practices before TRIPS .....................................................

5
7

III. CONDITIONS OF PROTECTION UNDER TRIPS......................................... 13
A. Protection of test data under the TRIPS Agreement................... 13
B. The Article 39.3 conditions of protection ...................................... 14
1. Data necessary for marketing approval .............................. 14
2. Protected data ......................................................................... 15
3. Undisclosed data..................................................................... 15
4. New chemical entities ............................................................ 16
5. Considerable effort (investment) ......................................... 18
IV. NON-DISCLOSURE OBLIGATION ................................................................. 21
V. PROSCRIBED ACTS OF UNFAIR COMMERCIAL USE ................................... 25
A. The TRIPS Agreement text .............................................................. 25
1. “Unfair”.................................................................................... 25
2. “Commercial” ......................................................................... 28
3. “Use” ........................................................................................ 30
4. Analysing “Unfair Commercial Use”.................................. 31
B. National case law................................................................................. 33

VI. MEANS OF PROTECTION AGAINST UNFAIR COMMERCIAL USE ........... 41
VII. THE EXCLUSIVITY APPROACH ................................................................... 47
VIII. THE HISTORY OF THE TRIPS NEGOTIATIONS..................................... 53
IX. CONCLUSIONS ................................................................................................ 57
Annex I. Exclusive Use of Data and Compensation under the U.S.
Federal Insecticide, Fungicide and Rodenticide Act (FIFRA) .... 59
Bibliography…………………........................................................................... 61

FOREWORD

The South Centre published in October 2000 a study by Carlos
Correa entitled Integrating Public Health Concerns into Patent Legislation in
Developing Countries. Second edition of the study was issued in September 2001, and the French and Spanish translations were published, also in 2001. The study, which was prepared with the collaboration of the World Health Organization, has been given wide circulation in the developing countries and has been found very useful bythem in dealing with public health and patent legislation in the context of TRIPS implementation.
The current study by Carlos Correa entitled Protection of Data
Submitted for the Registration of Pharmaceuticals: Implementing the Standardsof the TRIPS Agreement is continuation of the same work, focusing in
depth on the specific issue of marketing approval protection under
the TRIPS Agreement and its interpretation, an issue of major practical importance for the developing countries. The World HealthOrganization has agreed to co-publish this study.
As the earlier study, the current study was produced with thesupport of the Rockefeller Foundation. The author benefited froman extensive discussion on data protection issues with Prof. Jerome
Reichman, whose valuable inputs the author wishes to acknowledge.
The author also wishes to acknowledge the support from WHO,
which organized a consultation meeting in New York, on 22 October, 2001 to review the draft of the study, at which participated Alfred Engelberg, Trevor Cook, Jim Keon, James Love, Jerome
Reichman, Robert Weissman and German Velasquez. The author isthankful for the comments received during this meeting. He is also
grateful for the comments by Octavio Espinosa (WIPO), in his personal capacity, Adrian Otten (WTO) and Jayashree Watal (WTO).
The text was edited by Robert Weissman.

viii

The author, Dr. Carlos Correa, is the Director of the Masters
Programme on Science and Technology Policy and Management at
the University of Buenos Aires, Argentina. He participated in thenegotiations of TRIPs during the Uruguay Round and has actively
pursued the issue of the global intellectual property regime and its
implications for development and for the countries of the South.
Several of his studies and working papers have been published by theSouth Centre.
The author is grateful for the support from the Rockefeller
Foundation for the preparation of this document.
Any views expressed are the views of the author and do notnecessarily reflect the views of the Rockefeller Foundation or of theWorld Health Organization. The author is solely responsible for the
final text.

EXECUTIVE SUMMARY
1.

As a condition for registering pharmaceutical products, national
authorities normally require registrants to submit data relating
to drugs’ quality, safety and efficacy (“test data”), as well as information on the composition and physical and chemical characteristics of the product. A particularly important issue is the
direct or indirect use of the data for subsequent registration of
products similar to those originally registered.

2.

The World Trade Organization’s Trade Related Aspects ofIntellectual Property Agreement (TRIPS), Article 39.3, requires
member countries to establish protections for submitted test
data. But this requirement is in fact narrowly drawn, and countries maintain substantial flexibility in implementation. The
public interest in limiting protections for data is to promotecompetition, and to ensure that data protections do not become
the means to block the timely entrance of generic competitors
to off-patent drugs. Generic competitors drive down price,
thereby promoting greater accessibility of medicines.

3.

Article 39.3 requires governments to provide protection tomarketing approval data only under certain conditions. Test
data must be protected if national authorities require its submission. Article 39.3 does not require protection be given to already public data. Protection is required only for new chemical
entities. Members have considerable discretion in defining“new,” and may exclude applications for second indications,formulations and dosage forms. And, prior to granting protection, national regulatory authorities may request the applicant toprove that the information for which protection is sought is theresult of significant investment.

4.

Article 39.3 requires countries to protect against “unfair commercial use” of marketing approval data. Countries have con-xsiderable discretion to define “unfair” in the context of theirown national laws and culture. Use by the government to assess
the efficacy and toxicity of a pharmaceutical or agrochemical
product is not a commercial use subject to Article 39.3. Granting marketing approval to a second entrant, based on the second product’s similarity to a previously approved first product,
is not a proscribed “use” under Article 39.3. These interpretations are supported by United States and Canadian Supreme
Court decisions interpreting national laws.
5.

Countries can meet their obligations to protect against “unfair
commercial use” under Article 39.3 by barring “dishonest” usesof test data. This would require, for example, proscribing situations in which a competitor obtains the results of testing data
through fraud, breach of confidence or other “dishonest” practices, and uses them to submit an application for marketing approval for its own benefit. It would also apply in cases where
the government provides access to undisclosed testing data inorder to provide an advantage to a firm which did not produce
them or share their cost.

6.

Countries are not obligated under Article 39.3 to confer exclusive rights on the originator of marketing approval data.

7.

The pharmaceutical industry and some countries have argued
for much broader coverage of Article 39.3, and for a requirement that countries confer exclusive rights on originators ofmarketing approval data. But these positions are not wellgrounded in either the text or negotiating history of TRIPS.
TRIPS negotiators specifically considered and rejected language
requiring grants of exclusive rights to test data.

INTRODUCTION

As a condition for registering pharmaceutical products, national
authorities normally require registrants to submit data relating to adrug’s quality, safety and efficacy as well as to its physical and chemical characteristics. A particularly important issue is third parties’ useof the data for subsequent registration of products similar to thoseoriginally registered.
In some jurisdictions, the data submitted for the registrationof pharmaceutical (and agrochemical products), are subject to a sui
generis system of protection, based on a temporary right to the exclusive use of such data by the first applicant (generally the company
that developed a new product). In such a system, other companies(often “generics” manufacturers) cannot rely on the data submitted
by the first applicant for the purpose of registering a similar productfor commercial use. The rationale for this exclusivity model is topermit the originator of data to recover the investments made for
their development. The underlying assumption is that, without suchprotection, private firms would have no incentive to bear the considerable costs of producing the required data.
In other countries, however, health authorities are permitted
to rely on data submitted by the first applicant to process and approve third parties’ subsequent applications for a similar product,1
subject to evidence that its physico-chemical attributes are equivalent
to those of the first applicant’s product. This approach emphasizes
that the registration of products should not erect barriers to otherwise legitimate competition. It holds, instead, that the registration
system should promote price competition and access to more affordable medicines.

1 In some cases, national authorities are allowed to rely on the registration madein a foreign country to approve subsequent applications.

xii

The issue of data protection is especially relevant for offpatent products as well as for products, such as biologicals, that areoften difficult to patent. In cases where the product is patented, thepatent holder can, in principle, exclude any competition during the
lifetime of the patent -- a period of exclusion which will generally run
longer than that afforded by data protections. Data protection rules
are of particular importance to many developing countries that until
recently did not provide patent protection for pharmaceuticals (andto those under the transitional periods of the WTO’s TRIPS Agreement, which still do not provide pharmaceutical patent protection).
In these countries, there is a large pool of unpatented pharmaceuticalproducts. Data protection systems could, if they provided exclusivity,
become a partial substitute for patent protection in these cases andnullify, in practice, the transitional periods granted to developing
countries.
Before the entry into force of the TRIPS Agreement, countries had considerable latitude to determine rules for the protectionof test data. The Agreement introduced the first international standard
on the subject, as contained in its Article 39.3.2 But the Agreement is
not a “uniform law” -- it only establishes broad parameters for national rules. An important question is the extent to which theAgreement allows WTO Member countries freedom to apply different approaches for the protection of test data protection and, inparticular, the extent to which a competitive model -- i.e., protection
without exclusivity -- is compatible with the minimum standards set
forth in Article 39.3.
To properly interpret Article 39.3, the Vienna Convention on
the Law of the Treaties instructs that the ordinary meaning andcontext of the terms used, and the object and purpose of the treaty
2 The full text of Article 39.3 reads: “Members, when requiring as a condition of

approving the marketing of pharmaceutical or of agricultural chemical products
which utilize new chemical entities, the submission of undisclosed test or otherdata, the origination of which involves a considerable effort, shall protect suchdata against unfair commercial use. In addition, Members shall protect suchdata against disclosure, except where necessary to protect the public, or unlesssteps are taken to ensure that the data are protected against unfair commercial
use.

xiii

must be carefully considered. The history of the negotiation is also
an important complementary element for interpretation (Article 31(2) of the Vienna Convention).
The first section of this paper describes the different stages ofdrug development and the testing required for marketing approval of
new pharmaceutical products. The second section discusses the rationale for test data protection. The third section examines the conditions, established by Article 39.3 of TRIPS, under which protection
must be given to marketing approval data. The fourth section examines the concept of “unfair commercial use” of data -- the conduct proscribed by Article 39.3. The fifth section examines the legalmeans that States may adopt to provide protection against commercial use. The sixth section offers a brief analysis of the negotiating
history of Article 39.3, which provides the backdrop for interpretation of the TRIPS Agreement’s data protection obligations. A final,
concluding section assesses the obligations on countries to provide
marketing approval protection under the TRIPS Agreement, andreviews the flexibilities available to Member countries.

I. DATA REQUIRED FOR THE REGISTRATION OF
PHARMACEUTICALSThe development of a new drug involves different stages, during
which a variety of data are produced.
The “discovery” stage involves the synthesis or isolation of
new chemicals. Initial screening tests determine whether the newchemicals possess sufficient biological activity to be worthy of further investigation. The nature of pharmaceutical research haschanged dramatically in the last twenty years with the application of
the “rational drug design” method and the use of combinatorial
chemistry. With discovery by design, scientists use knowledge about
the causes of human disorders, the properties of drug compounds,
and their action in the human organism to conceptualize the structure of an “ideal” molecule that is expected to restore the alteredequilibrium. Laboratory chemists then search for substances whosemolecular structures match as closely as possible the theoreticalmodel (Gambardella, 1995, p. 23). This methodology reduces thecost of the “discovery” stage, but does not eliminate the need forbioassay, animal and other tests of the new drugs.
Once a promising new chemical is identified, its non-toxicity
and efficacy must be confirmed. The testing procedures involve
different stages and phases (see Box 1).
On the basis of the results of these tests, national authorities
can assess whether to grant marketing authorization for a newchemical entity. All the safety and efficacy tests must normally becompleted before the authority approves the product. The authority
may also require additional clinical tests. In 1980, the duration ofthese studies varied from about 1 to 7 years and averaged slightly lessthan 3 years. This period has been significantly reduced since then
(Raggett, 1996, p. 26).

2 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

Box 1
Testing new drugs
Preclinical StageIn the preclinical stage, the new chemical entity (NCE) is tested inanimals to assess its pharmacodynamic, phamacokinetic and toxicological profile. Results of these tests are studied carefully before tests
in human beings are carried out.
Safety and Efficacy Testing
The types of tests, the procedures to be used, and the standards to be
met to demonstrate safety and efficacy may vary among therapeuticclasses and even among drugs for use within a therapeutic class. This
stage includes different phases.
In Phase I chemical testing, a small group of healthy volunteers receive
dosages of the investigational drug for a short period of time. The
primary purpose is to look for evidence of toxicity or unexpected
undesirable reactions, and to study the bioavailability and pharmacokinetics of the NCE/drug applied to patients.
Phase II of clinical testing has a similar purpose to phase I, but considering the therapeutic context. Its primary objective is to ascertain theeffectiveness of the investigational drug.
Phase III clinical trials are conducted on a large member of patients;
they often involve several hundred human subjects and are conducted
for substantial periods. These tests are designed to determine theefficacy of the investigational drug and to uncover any unanticipatedside effects that the drug may have, considering age and gender influence, drug interactions and specific dosage for different indications.
While the phase III trials are under way, long-term animal toxicity
studies are undertaken to determine the effects of prolonged exposureand the effects on subsequent generations. The duration of the studies
vary widely among therapeutic classes. For drugs that affect the
reproductive system or that will be used over long periods of time,
animal toxicity studies are typically expensive and lengthy.

Data Required for the Registration of Pharmaceuticals 3

In addition to test data, national authorities require information on the quantitative and qualitative composition and other attributes of the product, as well as on manufacturing methods.
Marketing approval is generally granted for a specific drug
used for a specific therapy. Changing the composition of the drug,
combining it with other drugs in a single product or selling the drug
for a different therapeutic purpose requires new approval.

II. THE RATIONALE FOR DATA PROTECTION

A. Approaches to data protection
A basic element of data protection is the obligation imposed on third
parties not to disclose the data; that is, to keep them confidential.
Some health specialists have argued against any concealment
of data submitted for the approval of pharmaceuticals (Olilla andHamminki, 1996, p. 169). In their view, non-disclosure contradicts
the right of the public to be informed about the efficacy and safetyof approved pharmaceuticals. According to this opinion, the concealment of data on clinical, pharmacological and toxicological experiments retards the development of knowledge, and poses risks
that consumers of a drug may be injured unnecessarily. Since confidentiality prevents the scientific community from scrutinizing thescientific basis of a licensing decision, it is not possible to determine
whether there is commercial bias in the information, or whether itmeets high standards. Drug companies have an interest in not publishing research that is not favourable to their products, and may
even try to hinder the publication of such studies (Dukes, 1996, p.
149).
Other experts emphasize that health authorities should be able
to use and rely on registration data submitted for similar products, oron the existence of a prior registration elsewhere.3 If the regulatory
body is not free, when assessing a file, to use all the knowledge available to it, including data from other files and published information,a great deal of repetitive toxicological and clinical investigation will be
3 In this case, the authority bases its decision on the fact that a foreign country

has granted registration, and on the proof of equivalence in terms of the physical and chemical characteristics and other relevant attributes of the product.

6 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

required, which will be wasteful and in the case of animal testing,ethically questionable (Dukes, 1996, p. 146).
According to this position, when the authorities already know
the characteristics and effects of the product (due to the first registration), it is not rational from the society’s point of view to duplicate
tests to recreate existing information. All that the authorities need forthe second application is confirmation that the second product issimilar to the first product. How to prove similarity is a matter fornational regulation; some countries require bio-equivalence and bioavailability tests, while others are satisfied with the proof of chemicalsimilarity and prior registration.
This position is also grounded in the pro-competitive effectsof low entry barriers for pharmaceutical products. If producers (particularly generics manufacturers) are obliged to repeat long and costly
testing, competition will be reduced because of time delays and,more importantly, because some small and medium firms -- especially local firms in developing countries -- will lack the resources toundertake such testing. This reduces competition and the affordability of medicines that -- by definition -- are off-patent and, therefore, should be broadly available at the lowest possible price.
The research-based industry has, however, argued for stronger
test data protection, using both equity and health policy arguments.
The industry position argues that the manufacturer has invested,
often heavily, in conducting tests and deserves a return on investment. Where patent law fails to provide protection (for example,
because the patent on an active component is shortly to expire, or
because the drug is based on a combination of known substancesused in novel manner) data exclusivity is a necessary barrier to competitors rapidly producing and registering an exact copy of the drug.
In accordance with this view,“equity demands that protection be provided for data, which cancost the original submitter several million dollars to produce. Disclosing this data to the public or allowing its use by another applicant unfairly denies the compiler of the data the value of its efforts

The Rationale for Data Protection 7

and grants an economic advantage to later applicants for marketing approval, enabling them to avoid the cost of developing test
data for their own products. Countries that allow such unfair advantages to later applicants discourage developers of new pharmaceuticals and agricultural chemicals from seeking to introduce theirstate-of-the-art products in the country´s market. So, not only issuch protection required by the TRIPS Agreement, it is both equitable and wise from a public and health policy standpoint”(Priapantja, 2000, p. 4).
Finally, consumer groups such as the Trans-Atlantic Consumer
Dialogue have proposed that, since data exclusivity is intended toprotect investment, companies seeking data exclusivity should be
required to disclose the amount actually invested. This would enhance transparency and allow the establishment of a relation between the actual investment and the protection provided (WHO,
2000, p. 40).
In the light of these contrasting approaches, a key issue is theextent to which, under the TRIPS Agreement, Member countries are
obliged to provide exclusivity, and whether authorities can rely on
the data from a prior registration or on a registration made in a foreign country.

B. National practices before TRIPS
Companies originating data for the registration of new products haverequested from national health authorities and generally obtained
protection of submitted data against disclosure. Confidentiality isessentially intended to protect secret information from misappropriation by third parties. However, problems with secrecy in drug
regulation have historically raised public concern in several countries,
including Great Britain, New Zealand, Germany, Sweden and theUSA (Ollila and Hamminki, 1996, p. 168).

8 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

Historically, some health authorities relied on the first application data for the evaluation of second-entrant applications for
similar products. Some companies brought legal action against theauthorities arguing that reliance on the knowledge derived from one
file to evaluate another one (e.g., a generic equivalent) caused themcommercial injury.
In a number of court cases relating to Cimetidine decided in the
United Kingdom, Australia and New Zealand, first entrants originating registration data invoked the ordinary law of confidential
information to prevent regulatory authorities from relying on theoriginator’s file when assessing an application for the approval of anequivalent drug by a generic competitor. Courts were, however, reluctant to apply such law (Cook, 2000, p. 5).
As a result of industry lobbying, some developed countries
established sui generis protections for test data submitted for the approval of pharmaceuticals (and agrochemicals). Under different modalities, they adopted the concept of exclusive use of the test data by
the originator company. The U.S. adopted a regulatory data protection regime for pesticides,4 and in 1984 regulatory exclusivity provisions for medicines. The U.S. health registration regulations provide
for five years of exclusivity for new chemical entities, and three years
for data filed in support of authorizations based on new clinical research relating to chemical entities which had already been approved
for therapeutic use.5

4 This regime limits exclusivity by allowing third parties to use originator’s test

data if compensation is paid. In case of disagreement, the amount is determinedthrough arbitration. See in Annex I a summary of the relevant legislation.
5 In October 1997, the U.S. Senate held hearings on “Health Registration Data
Exclusivity, Biomedical Research, and Restrictions on the Introduction of Generic Drugs” (Subcommittee on Labor, Health and Human Services and Education and Related Agencies, Committee on Appropriations). These hearings
considered a proposal for a voluntary five- year extension of the U.S. data exclusivity period, coupled with a 6 percent R&D commitment from the company electing to take the extension. The U.S. Congress did not adopt this proposal.

The Rationale for Data Protection 9

In the European Union (EU), the Member States have provided exclusivity protection for the data filed in support of marketing
authorizations for pharmaceuticals since 1987. One of the original
objectives of this regime was to compensate for the lack of patent
protection for pharmaceuticals in some Members States (Portugal,
Spain), but it was maintained after those countries introduced suchprotection (Watal, 2001, p. 201). During the exclusivity period,
health authorities cannot rely on an originator’s test to approve otherapplications without the originator’s consent.6 The minimum period
6 Article 8 of Directive 65/65 , as amended by Directive 87/21/EEC, estab-lishes that “without prejudice to the law relating to the protection of industrial
and commercial property:(a) The applicant shall not be required to provide the results of pharmaceuticaland toxicological tests or the results of clinical trials if he can demonstrate:i.
either that the proprietary medicinal product is essentially similar to a
product authorized in the country concerned by the application andthat the person responsible for the marketing of the original proprietary medicinal product has consented to the pharmacological, toxicological or clinical references contained in the file on the original proprietary medicinal product being used for the purpose of examining
the application in question;ii. or by detailed references to published scientific literature presented inaccordance with the second paragraph of Article 1 of Directive
75/318/EEC that the constituent or constituents of the proprietary
medicinal product have a well established medicinal use, with recognized efficacy and an acceptable level of safety;iii. or that the proprietary medicinal product is essentially similar to a
product which has been authorized within the Community, in accordance with Community provisions in force, for not less than six years
and is marketed in the Member State for which the application is
made; this period shall be extended to 10 years in the case of hightechnology medicinal products within the meaning of Part A in the
Annex to Directive 87/22/EEC or of a medicinal product within themeaning of Part B in the Annex to that Directive for which the procedure laid down in Article 2 thereof has been followed; furthermore,
a Member State may also extend this period to 10 years by a single
Decision covering all the products marketed on its territory where it
considers this necessary in the interest of public health. Member states
are at liberty not to apply the abovementioned six-year period beyond
the data of expiry of a patent protecting the original product. However, where the proprietary medicinal product is intended for a different therapeutic use from that of the other proprietary medicinal prod-10 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

of such protection is six years, but 10 years is obligatory for “hightechnology products” (most biotechnology products), and also for
new chemical entity authorizations granted by the European Medicines Evaluation Agency (EMEA). EMEA may also grant 10 years
exclusive protection for test data related to medicines administeredby means of “new delivery systems which … constitute a significant
innovation”, and “medicinal products containing a new substance oran entirely new indication which…is of significant therapeutic interest” (Cook, 2000, p.18).
Most Member States (Belgium, France, Germany, Italy, theUnited Kingdom, the Netherlands and Sweden) have applied the 10year period to all medicinal products (Dodds Smith, 2000, p. 113).
Moreover, the “data exclusivity that this affords can, if a marketing
authorization is obtained only late in the life of a patent, extend beyond patent expiry. The only qualification to this is an option available to those few Member States which have not availed themselvesof the 10-year period for all medicinal products, and which can also
elect for such data exclusivity ‘not to extend beyond patent expiry’”(Cook, 2000, p.18).
Article 1711 of the North American Free Trade Agreement(NAFTA) of 1992 also establishes an exclusivity standard, requiring
signatory countries to provide a minimum five years exclusivity period counted from the date of marketing approval. This model was
followed in 1993 by the Andean Group countries under Decision
344 (“Common Regime on Industrial Property”).
At the time of conclusion of the TRIPS Agreement, few
countries had adopted the exclusivity approach developed in theucts marketed or is to be administered by different routes or in different doses, the results of appropriate pharmacological and toxicologicaltests and/or of appropriate clinical trials must be provided.
(b) In the case of new proprietary medicinal products containing known constituents not hitherto used in combination for therapeutic purposes, the results of pharmacological and toxicological tests and of clinical trials relating
to that combination must be provided, but it shall not be necessary to provide references relating to each individual constituent”.

The Rationale for Data Protection 11

United States and Europe. At the time, most countries in the world
did not provide for exclusivity and most allowed the national healthauthorities to rely on test data submitted by the first applicant to approve subsequent applications on “similar” products.7 In somecountries (e.g.. Argentina, Singapore, Taiwan, and the territory ofHong Kong) it was sufficient to prove that a similar product had
been approved or commercialized in a foreign country.

7 Though the time of the adoption of the Agreement is to be taken into ac-

count, according to general principles of international law, for the interpretationof its obligations, it should be noted that even today, after the expiration of all
except the transitional period for LDCs, only a minority of the WTO Members
apparently confer data exclusivity (see, e.g. the February 2000 Pharma submission to the USTR on Section 301, at www.pharma.org). New Zealand introduced
an exclusivity period in 1994, as part of implementing legislation of the TRIPS
Agreement, and Australia did it in 1998 as a result of U.S. action under “Special
301” of U.S. Trade Act. The Andean Group countries, instead, revised Decision
344 in 2000 and eliminated the exclusivity period. A special exclusivity granted
under the “Safety Monitoring Program” in Thailand was also abolished in January 2001.

III. CONDITIONS OF PROTECTION UNDER TRIPSThe TRIPS Agreement establishes a minimum international standard
for the protection of marketing approval data. WTO Member countries need to determine what is actually needed to fulfil their obligations under the Agreement. Understanding the obligations imposed
by Article 39.3 requires a close reading of the text, an assessment ofeach of its components, as well as a review of the negotiating history
and national practice. The remainder of this paper turns to thesetasks.

A. Protection of test data under the TRIPS Agreement
The inclusion of test data as a category of intellectual property in
TRIPS does not mean countries must provide exclusivity protections
for such data.
According to Article 1.2 of the TRIPS Agreement, the protection of test data is a category of “intellectual property” like patents, copyrights and trademarks. The structure of Article 39 suggeststhat the regime for test data has been conceived by the negotiating
parties as a particular case in the framework of the protection of “undisclosed” information. In this sense, the protection conferred cannot be properly deemed a sui generis system.
The categorization of test data as a subject matter of “intellectual property” does not mean that Article 39.3 puts their protection on the same footing as other intellectual property rights. In
particular, it cannot be inferred that such protection requires exclusive
rights. Though in most instances intellectual property rights confer a
ius excluendi, this is far from being an absolute rule. It is well accepted,
for example, that trade secrets protection in the framework of unfair

14 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

competition does not give rise to a right to exclude. Nor does theprotection of geographical indications under the TRIPS Agreement
entail the granting of such faculty.8 Likewise, there are many situations in which copyright protection only allows the title-holder toclaim remuneration, but not to prohibit unauthorized acts.
As Article 39.3 itself indicates (see below), test data protection
is a reward for the investment in data production, rather than for thecreativity or inventiveness involved in generating the data. Test data
are developed in accordance with standard protocols and procedures, involving a systematic compilation of factual information.
Though the testing may refer to a novel drug, the test results themselves are merely the outcome of routine scientific practices.
Thus, the inclusion of test data in the TRIPS Agreement as acategory of “intellectual property” does not determine the nature of
the protection conferred. In particular, it does not indicate that suchdata should be protected through grant of exclusive rights.

B. The Article 39.3 conditions of protection
1. Data necessary for marketing approval

A basic premise for the application of Article 39.3 is that test data
must only be protected if national authorities require theirsubmission for obtaining marketing approval of pharmaceuticals or
agrochemical products. The first sentence of this article states:“Members, when requiring , as a condition of approving the marketing of…”
Given the territoriality of the intellectual property system -- a featurethat the TRIPS Agreement has not altered -- the obligation to protect test data only arises in the Member countries where national
8 See article 22.2 of the TRIPS Agreement.

Conditions of Protection Under TRIPS 15

regulations require the submission of such data. If a Member country opts not to require those data, Article 39.3 will be not apply.
In addition, the submission of data must be necessary to obtainapproval. Data voluntarily submitted by an applicant, or in excess ofwhat is required for approval, are not subject to protection under
Article 39.3.
2. Protected data

The subject matter of the protection under this article is writtenmaterial which details the results of scientific health and safety testing of drugs and agrochemicals, in relation to human, animal andplant health, impact on the environment and efficacy of use. The
provision covers tests and other data that may be required by theauthorities. These “other” data may include, for instance, manufacturing, conservation and packaging methods and conditions, but only
to the extent that submission of this information is necessary to obtainmarketing approval.
3. Undisclosed data

Article 39.3 does not require protection be given to public data submitted for marketing approval. To qualify for protection under Article 39.3, the pertinent information must be “undisclosed”. Thismeans that information that is already public does not fall within thescope of this article. Any requirement for the submission of published or otherwise disclosed information to national regulators shallnot generate any private right limiting the use of such information by
the government or third parties, since the information would be in
the public domain.
While a substantial part of the information on tests relating tosafety and efficacy of approved drugs becomes publicly available --16 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

because the information is published in scientific journals,9 or madepublic by the health authority,10 -- many data remain confidential
such as data relating to some of the product’s physical and chemical
attributes and manufacturing processes.
Given that under Article 39.3 protection is only conferred on
undisclosed information, it will be necessary to determine in cases ofcontroversy which of the information accompanying an application
for marketing approval is confidential and need to be protected, andwhich is not. The undisclosed or disclosed nature of information isan objective feature, and it is not dependent on the qualification givenby the applicant to the information that it is submitted. Hence, any
applicant’s declaration that all or certain information is “confidential” or “undisclosed” should be subject to scrutiny.
4. New chemical entities

Another important condition for the application of Article 39.3 isthat the data must refer to a “new chemical entity”. The Agreement
does not define the term “new”. While the term presumably does
not impose a patent standard of novelty, Member countries may
choose under the Agreement to apply such a standard.
It may be also held that the test for newness under Article
39.3 refers to the date of application for approval. Thus, a chemical
entity may be deemed “new” if there were no prior application for

9 In the case of the EU regulations (Directive 65/65, as amended) the possibilityof obtaining market approval on the basis of published literature has beeninterpreted very restrictively. It only applies where a product has a well established medicinal use and the documentation submitted by the applicant covers
all aspects of the safety and efficacy assessment (Dodds-Smith, 2000, p. 111).
10 For instance, the European Medicines Evaluation Agency (EMEA) publishes
summaries of clinical trials in the “European Public Assessment Report”(EPAR) However, no detailed information on toxicological/pharmaceuticaltests or clinical trials is published which could be used for registration by another company. The manufacturing process is not published either.

Conditions of Protection Under TRIPS 17

approval of the same drug, or where the same drug was not previously known in commerce.
Article 39.3 does not clarify either whether newness should be
absolute (universal) or relative (local), that is, whether “new” would
mean the first application in the world or in the Member country
where it was filed (Cook, 2000, p.6).
Occasionally, a product which is known and used in a certain
field (e.g. chemical industry), may find a new application in thepharmaceutical sector. Such a new therapeutic product (generally
known as “first indication”) may be deemed not to constitute a “newchemical entity”, since the chemical was already known. Alternatively, the newness may be assessed within a particular regulatory
framework, and without regard to the fact that the same chemical
may have been used in the context of another regulatory framework(Cook, 2000, p. 6).
All the above interpretations are equally permissible. The
TRIPS Agreement deliberately avoids defining the concept of “newchemical entity”. This is one of the clear areas in which Member
countries enjoy room for manoeuvre to implement the Agreement’s
provisions.
Based on the ordinary meaning of the terms used, it may bealso interpreted that there is no obligation to provide for protection
when the test data were developed for a new use of a pharmaceuticalproduct (generally called a “second indication”). In this case, it is theapplication or method of use of a known chemical entity that is new,
but not the entity as such.
Similarly, Article 39.3 would not apply in cases where approval
is sought for new indications, dosage forms, combinations, newforms of administration, crystalline forms, isomers, etc. of existing
drugs, since there would be no novel chemical entity involved. The
European Court of Justice indirectly addressed this issue in the

18 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

“Squibb” case.11 The Court held that a (second) product is “essentiallysimilar” to an earlier approved product if the second product has“the same qualitative and quantitative composition in terms of active
principles”, “the same pharmaceutical form” and is bio-equivalent
to the first product, “unless it is apparent in the light of scientificknowledge that it differs significantly from the original product asregards safety or efficacy”. In these cases, the original applicant does
not receive new periods of so-called “marketing exclusivity” for each
new indication, dosage form or dosage schedule (Jones and Nittenberg, 1998/1999, p. 152).
5. Considerable effort (investment)

The subject matter of the protection under Article 39.3 is test data
which cover matters such as toxicology, clinical trials for the pharmaceuticals and field trials for agrochemicals. Because this information is not “invented” or “created”, the TRIPS Agreement does notdefine any substantive standard for granting protection (like inventive step or novelty). It simply mandates protection when the processof obtaining the data involved “a considerable effort”.
The text is vague about the type of effort involved (technical,
economic?) and also with respect to its magnitude (when would it bedeemed “considerable”?). As mentioned, the proponents of thisformulation intended to protect the investment made in producing testdata.

11 The ECJ decision was given in response to questions referred to it from theEnglish High Court in relation to three cases. In all of them, the research-based
pharmaceutical companies had made changes to certain aspects of their products and obtained marketing approval for each change. Subsequently, genericcompanies sought to rely not only on the original versions of the products but
also on the products which had been approved more recently. The Medicines
Control Agency acceded to certain of the generic companies requests, but not
all of them (Jones and Nittenberg, 1998/1999, p. 152). See also Dodds-Smith,
2000, p. 112.

Conditions of Protection Under TRIPS 19

The extension of intellectual property beyond its boundaries
so as to protect investment, and not intellectual contributions12 disrupts the essence of a system conceived to reward the creators oforiginal ideas and new inventions.13 Even if it may be argued that
“free riding” or “unfair use” of such data by third parties may create
unfair advantages or unjust enrichment, it is not the role of the intellectual property system to solve competition problems that do not
relate to the creation or use of ideas. Nonetheless, Article 39.3 exists. And it includes the considerable effort standard. Inclusion ofthis standard suggests national regulatory authorities may request theapplicant prove that the information for which protection is soughtis the result of considerable effort.
12 An investment-based system was adopted by the European Community inthe form of a sui generis regime for the protection of data bases. Despite theefforts of WIPO, however, no agreement has been reached so far to adopt aninternational convention modeled on the European approach. A bill on thematter proposed in the United States has also found strong opposition, particularly from the scientific and librarian communities (Reichman and Uhlir,1999).
13 According to the Trans Atlantic Consumer Dialogue (TACD), “data exclusivity provisions are part of a growing class of sui generis forms of protection thatare designed to protect investment, rather than innovation. Because data exclusivity is not a reward for invention (which is already rewarded by patents) but
rather a protection of investment, there should be greater transparency of thebasis for the protection and a reasonable relationship between the investment
and the protection” (available at www.tacd.org).

IV. NON-DISCLOSURE OBLIGATION

Since the TRIPS Agreement’s obligations with regard to test dataprotection relates exclusively to undisclosed information, it seems
clear that WTO Members’ obligations are limited to information,effectively requested by and submitted to the government, which
was at the time of submission, and later remains, “undisclosed”.
The non-disclosure obligation requires that the test data beprotected against “disclosure” unless:a)b)

it is necessary to protect the public; or
steps are taken to ensure that the data are protectedagainst unfair commercial use.

The application of the first exception is subject to a “necessity test”.
In determining necessity, GATT/WTO rules and jurisprudence generally provide deference to Member countries to determine when anecessity arises, but impose an often heavy burden of proof on theMember invoking it (Trebilcock and Howse, 1999, p. 140; Correa,
2000).
The second exception would permit a Member to disclose any
information, if its unfair commercial use can be prevented. The key
questions are what constitutes unfair use and how that protection
can be guaranteed. This issue is discussed below.
Article 39.3 aims at preserving the confidentiality of the information submitted for marketing approval without any time limit.
There is no indication in the provision about the duration of theobligation, certainly a weak point in the text. In principle, the confidentiality obligation continues until the information becomes known.
It may also be possible, however, for a Member to establish a maximum period of confidentiality.

22 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

In any case, as mentioned above, because of the public health
implications of the release into the market of a new drug, a substantial part of, but not all, the results of safety and efficacy tests andother data become available to the public. Some public health specialists have strongly opposed the possibility of keeping confidential
pharmaceutical data, such as information obtained during pre-clinicaltests. It has been argued that
“The earliest point in the career of the drug when one obtains a
glimpse as to which its adverse effects might be is, without doubt,
the phase of pharmacological and toxicological studies in animals.
Very properly, the community requires of the pharmaceutical industry that the work performed at this stage be conscientiously carried out and painstakingly reported when the drug is submitted to
Drug Control Authorities…Very improperly, the community
then goes on to tolerate a situation whereby these reports, having
been used for this purpose, are then commonly deposited in confidential archives where they are inaccessible to the medical world atlarge…It follows that when the first clinical evidence of a particular and unexpected side effect reaches us there is often no simple
and direct means of comparing it with what has been reported indogs, rabbits and mice. If these data were public property, it might
be simpler to identify at an early stage those adverse reaction reports from the clinics which, because they run parallel to animal
findings, deserve particular attention….” (Dukes, 1977).
Public health concerns were only marginally present in the negotiation of the TRIPS Agreement.14 The non-disclosure obligation wasestablished on the basis of commercial considerations, without aproper weighing of public health interests in the openness of drug
information (see Box 2).

14 See, e.g., Article 8.1.

Non-Disclsoure Obligations 23

BOX 2
THE BENEFITS OF OPENNESS OF DRUG INFORMATION15

The importance of access to information
Full availability of information is essential if all parties involved in healthcare are to participate effectively. Openness facilitates adequate feedback, proper setting of priorities and development of trust. A culture of
openness protects conscientious individuals working in organizations of
all kinds.
Knowledge relating to all drugs evolves constantly, as do standards
and expectations relating to them, their producers and health care providers. However thorough the investigations made before a drug islicensed and marketed, much more will be learned about its efficacy,
proper use and risks once it is marketed and used on a much larger
scale.
Almost no new element of knowledge emerges suddenly; as a rule
it begins with impressions and hypotheses. Where these arise – for example, in reports of possible serious side effects in the journals -- allexisting relevant information will need to be mobilized to verify or discount this evidence so that the trust can be established as quickly as
possible. Much of the information needed for that purpose, including
data on both animal and human experience, is unpublished and lies only
within the files of agencies. By using it, the truth can be establishedmuch more quickly than if one is reliant purely on published evidence.

15 Extracts from the Statement of the “International Working Group on transparency and accountability in drug regulation “(Uppsala, 11-14 September,
1996).

24 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

Box 2 (continued)
Consequences of excessive secrecy in drug regulation
If a substantial part of the information existing on drugs remains hidden
within regulatory agencies, and sometimes fragmented between them,the development of knowledge will be impeded. This is particularly
dangerous where suspicion arises of a hitherto unknown risk.
Malpractice can be hidden from view; legal discovery in the courseof litigation has for example revealed cases of falsification or suppression of unfavorable data by certain companies, or submission of inconsistent files on the same drug to different agencies. Secrecy facilitates thecirculation and use of sub-standard drugs.
Where a drug is subject to negative findings, the failure of a drug
agency to explain its conclusions or provide background data, can leave
the way clear for the sometimes very different and emphatic accountgiven from the manufacturer. In a climate of secrecy and mistrust, thepublic is unlikely to believe even accurate and meticulously prepared
official statements – assuming that they cannot be taken at face value
and that some relevant information has probably been withheld.
The incomplete availability and irregular release of information
promotes a climate in which suspicion is generated and in which sensational and poorly founded stories on drugs break in the popular press,
their reliability cannot be checked and unnecessary panic can be caused.
Secrecy has consequences which can be wasteful and even inhumane; scientific work, e.g., in humans or animals which has already been
performed by one company but hidden within regulatory files, may berepeated unnecessarily.
If drug utilization data are not available irrational drug use may
continue unrecognized and unchecked.
If research is sponsored by companies, unfavourable or unclear results may be withheld or the research itself may be stopped.

V. PROSCRIBED ACTS OF UNFAIR COMMERCIAL USE

A. The TRIPS Agreement text
One of the crucial interpretative issues in Article 39.3 is whether the
reliance by a national authority on data submitted by one company(the “originator”) to evaluate a subsequent application by anothercompany (a “follower”), constitutes an “unfair commercial use” ofthe information.
The expression “unfair commercial use” is not defined in Article
39. Pursuant to Article 31 (1) of the Vienna Convention, its interpretation should be based on the ordinary meaning of the terms ofthe treaty in their context and in the light of the agreement’s object
and purpose.
1. “Unfair”
The ordinary meaning of “unfair” is “not equitable or honest or impartial
or according to rules”16. In the case of Article 39.3, this concept must be
understood in the light of Article 10bis of the Paris Convention.
The concept of “unfair” is relative to the values of a particularsociety at a given point in time. It varies among Members, and thisvariation is in fact one of the premises on which the discipline of
unfair competition is grounded. There is no absolute, universal ruleto determine when certain practices should be deemed “unfair”:“Morality, which is the source of the law of unfair competition, isa simple notion in theory only. In fact it reflects customs and habits anchored in the spirit of a particular community. There is no
16 The Concise Oxford Dictionary, Seventh Edition, Oxford University Press, Oxford, 1989.

26 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

clearly objective standard of feeling, instincts, or attitudes toward acertain conduct. Therefore, specific prescriptions involving uniform
evaluation of certain acts are extremely difficult.
The pressures existing in the various countries for the suppressionof acts of unfair competition differ greatly. Generally, the development of law of unfair competition depends on active and intensecompetition in the marketplace by competing enterprises. It is thepressure of conflicting interests which leads to the establishment ofclear rules of law. This pressure is not uniform in all countries andindeed it is evolving continuously” (Ladas, 1975, p. 16851686).
Ladas concludes his treatise’s discussion of the issue by indicatingthat:
We look for a standard by which we may judge the act complainedof. This is an objective standard: the honest practices in the courseof trade in the particular community and at the particular time”(Ladas, 1975, p. 1689).
Given this diversity, it is likely that different countries will judgecertain situations differently, depending on their values and competitive advantages. Some countries may consider it an “unfair practice”
for a “follower” company to commercially benefit from the data
produced by the originator, via a marketing approval system basedon “similarity”; or hold that such commercial benefit gives rise toclaims of “unjust enrichment” leading to a compensation for the useof the data. In others, it may be regarded as the legitimate exploitation of an externality created during legitimate competition in themarket. As noted by Kamperman Sanders,“Where exploitation of another’s achievements becomes inequitable, unfair competition law acts provides a remedy. This meansthat the mere fact that another’s achievement is being exploited
does not call for any impediment on the basis of unfair competition
provisions. On the contrary, appropriating and building on others’

Proscribed Acts of Unfair Comemrcial Use 27

achievements is the cornerstone of cultural and economic development. The axiom of freedom to copy epitomizes the principles ofthe free market system”.
Certainly, specific regulations could be adopted at the international
level in order to harmonize the treatment of these cases. The UnitedStates made such a proposal in the TRIPS negotiations,17 but it was
not incorporated into the final text of the TRIPS Agreement. The
U.S. proposal would have obliged countries to prevent any use of
test data, without the consent of the right holder or on payment of“the reasonable value of the use”, if that use led to the “commercial
or competitive benefit of the government or of any person”. This
provision would have obliged countries to prevent any practice thatwould create such benefit. The final proposal, by contrast, used theterm “unfair commercial practices”. The rejection of the US proposal indicates that the negotiating parties deliberately opted under
Article 39.3 to mandate regulation of certain types of practices (thosethat are commercially unfair) and not to prevent any practice basedon its possible effects on benefits allocation.
In other words, Article 39.3 only applies when a competitor
obtains a benefit or advantage from the use of the originator’s testingdata as the result of unfair commercial practices. It is the qualification of
the practice that counts, not the mere existence of an advantage or
benefit. Such qualification is left to Members’ discretion; it is part of
the room for manoeuvre that they retained when signing the Agreement.
There are many instances in which the production of goods,
notably intangibles, in a competitive environment generate externalities that benefit competitors. In describing the nature of competition, Ladas has noted that:“it is an undeniable fact of modern business life that successful
manufacturers or traders have to cope with the danger of having the
goodwill of their business, their connection with the purchasing
17 See below the history of the negotiation of article 39.3.

28 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

public, interfered with by competitors...In a competitive economy is
it to be expected that each manufacturer or trader necessarily seeks
to maintain and improve his market position by obtaining thebenefit of a public demand, even though this demand be created byother manufacturers or traders...
“…where does lawful competition end and unlawful competition
begin? The fact that a competitor may derive a profit from his actof competition or cause monetary loss to another is not, in itself,
unlawful. The dictum “no one should reap where he has not sown”
requires delicate application. Progress would be paralyzed and monopoly would become general if we should attempt to prevent persons from using the work or experience of others. We must encourage people in the same trade or industry to compete for the customof the public on the most favorable terms. The issue is whether themeans employed in such competition are fair and lawful. An act
may lack tact or taste but not be dishonest” (Ladas, 1975, pp.
1676, 1677 and 1689).
Many countries do not treat commercialization of a “similar” product approved by reference to a previous registration, or by relianceon data submitted by the originator company, as an unfair commercial practice, but some do. Under Article 39.3, each approach is valid.
Article 39.3 mandates protection against “unfair commercial practices”, but permits Member countries to determine which practices
will be deemed commercially unfair. As mentioned, differencesamong countries are likely to exist, consistent with Article 10bis of
the Paris Convention.
2. “Commercial”
Article 39.3 only covers “commercial” uses. This requirement clearlyexcludes use by the government, notably by the national healthauthority to assess the efficacy and toxicity of a pharmaceutical or
agrochemical product.

Proscribed Acts of Unfair Comemrcial Use 29

In the view of the European Union, however, there is a substantial difference between the underlying principle in Article 39.1,
which refers to relationships between competitors and Article 39.3,
which includes governmental acts:“The main question of interpretation is what is meant by “unfair
commercial use”. Clearly, this concept is different from the conceptof “unfair competition”, as used in Article 39.1 with a reference
to Article 10bis of the Paris Convention on the protection of Industrial Property, and which relates to behaviour among competitors. Protection of registration data is a government function. Article 39.3 does not indicate whether the notion of “unfair commercialuse” refers to unfair commercial use by generic manufacturers to
those who have submitted the data (usually research-based pharmaceutical industry) or to use by regulatory authorities of thesedata to the benefit of competitors. Protecting data against “unfair
commercial use” is also different from protecting them from disclosure, since the latter is a separate and distinct obligation under
Article 39.3” (EU, 2001, p.3).
The EU argument, however, disregards that Article 39 develops anddoes not add to Article 10bis of the Paris Convention. It only incorporates examples of the general principle contained in paragraph (2) of Article
10bis.
In addition, though the use by the governments will indirectly
have commercial consequences (the entry of a competitor in themarket), it does not represent a commercial activity as such, but a legitimate State practice. In order to be “commercial”, the use of theinformation should be made by an entity which is actually in commerce. As also noted by Ladas,“The general clause of Article 10bis, in establishing as its foundation “honest usages,” looks to the relations between competitors
and to the interests of customers, and these provide an objective test
which reflects an evolving pattern of competition in most of the present world...By definition, competition in commerce refers to the efforts of two or more persons, acting independently, to secure the30 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

custom of third parties, with the results that one may increase thesale of his goods and reduce the sale of the goods of the other”(Ladas. 1975, p. 1688).
The same concept underlies the WIPO “Model Provisions on Protection Against Unfair Competition” which, in relation to data protection, suggests the adoption by national laws of the following provision:“Use or Disclosure of Secret Information Submitted forProcedure of Approval of Marketing: Any act or practice,in the course of industrial or commercial activities, shall be considered an act of unfair competition if it consists or results in an
unfair commercial use of secret test or other data, the originationof which have been submitted to a competent authority for the
purposes of obtaining approval of the marketing of pharmaceutical or agricultural chemical products which utilize new chemical
entities” (emphasis added) (WIPO, 1996).

3. “Use”
Finally, for Article 39.3 to apply, there must be “use” of the information submitted by the originator.18

18 In one of the texts under consideration by the negotiating parries in July
1990, the broader concept of “exploitation” was proposed (but not finallyadopted). The text read:“3Aa. Parties, when requiring the publication or submission of undisclosed information consisting of test [or other] data, the origination of which involves a considerable
effort, shall protect such data against unfair exploitation by competitors. The protection shall last for a reasonable time commensurate with the efforts involved in theorigination of the data, the nature of the data, and the expenditure involved in their
preparation, and shall take no account of the availability of other forms of protection”.

Proscribed Acts of Unfair Comemrcial Use 31

4. Analysing “Unfair Commercial Use”
Thus, given the flexibility inherent in Article 39.3, and depending on
the applicable legal system, national laws can follow different approaches for the approval of a second-entry marketing application.
They may:a)require the second-entrant to produce its own testing andother data or to obtain an authorization of use from the“originator” of the data;b)allow the second-entrant to rely on the “originator’s”
data against payment of a compensation to the “originator” (when the “originator” has not given his consent for
the use of the data);19c)

examine and rely upon the data submitted by the “originator” to evaluate the second-entrant application;d)approve a second entry marketing application without
examining or otherwise relying upon confidential information submitted by the originator.

In all cases, the authorities will normally require that the secondentrant prove that his product is similar or “essentially similar” to thealready registered product (in terms of its physical and chemical
characteristics and attributes).20 Different types of bioequivalence
studies are generally required for this purpose.21
In cases a) and b) the data receive specific protection, either
on the basis of exclusivity or compensation. In case c) the secondentrant does not use the data; it is the authority who examines and
19 This compulsory licence approach is the one applicable, under certain circumstances, in accordance with the U.S. FIFRA. See Annex I.
20 See, e.g., article 4.8 (a)(ii) of the EC Directive 65/65/EEC.
21 In some countries, bio-availability studies are also required for the approval ofgeneric versions of existing products.

32 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

relies on the data in its possession. In case d), finally, there is no“use” at all, since the authority does not use the testing and otherdata(which it may not even possess); it merely relies on public information and/or on the existence of a prior (domestic or foreign)marketing approval.
Neither in cases c) or d) is there a “commercial use” of thedata. A contrary interpretation holds that even indirect reliance ondata by a national authority constitutes a form of commercial use.
Under this interpretation, the competent authority must be proscribed from “using” the data to support, clear or otherwise review
second entrant applications for marketing approval for a set amountof time unless authorized by the “originator” (WHO, 2000, p. 39)
According to this interpretation, national authority reliance on
the data submitted by the originator in order to assess a subsequent
application constitutes “unfair commercial use”, even when neither
the authority nor the competitor actually “use” the data without theoriginator’s authorization (for instance, when approval is given without any re-examination of the data). In the U.S. complaint against
Australia, for instance, the USA argued that relying on the innovator’s data allowed free-riding by generic drug companies on“the innovator company´s investment in developing the test data
and thus puts the innovator company at a competitive disadvantage...The U.S. claims that Article 39 para.(3) means that generic companies are not allowed to derive commercial benefit fromthe innovator´s test data” (Priapantja, 2000, p.6).
Under this view, the fact that a competitor obtains a commercial
benefit or advantage constitutes an “unfair commercial use” of thedata, notwithstanding that actual use may not occur and that thepractice as such may not be “dishonest” or contrary to a country’s
prevailing values of morality or fairness in commercial activities.
This latter interpretation, however, clearly goes beyond what
the provision mandates. It does introduce an obligation not negotiated during the Uruguay Round that, in practice, would limit legiti-

Proscribed Acts of Unfair Comemrcial Use 33

mate competition and thereby erect barriers to the access to medicines.

B. National case law
Available national case law supports the view that granting marketing
approval to a second entrant, based on the second product’s similarity to a previously approved first product, is not a proscribed “use”
under Article 39.3.
The nature and extent of data exclusivity rights were examinedin two important decisions by the U.S. Supreme Court (Ruckelshaus v.
Monsanto Co., 467 US 986, 104 S.Ct.2862, June 26, 1984) and theCanadian Federal Court of Appeal (Bayer Inc. v. The General Attorney ofCanada, the Minister of Health, Apotex Inc. and Novopharm Ltd., May 19,1999). The second decision, in particular, examined the extent towhich a national health authority can rely on the originator’s data, evenwhen an exclusivity period applies.
The Ruckelshaus v. Monsanto Co. case relates to the protectionof data submitted for the registration of an agrochemical product.
Though a subsequent applicant was obliged to compensate for theuse of Monsanto’s original data, Monsanto argued that such use
undermined its reasonable “investment backed expectations” andwas unconstitutional. A basic argument of the plaintiff was that thepossibility given to a competitor of using the data against payment of
a compensation nullified its “reasonable investment-backed expectation”. However, the Supreme Court described the extensive practiceof relying on data submitted by the first applicant in the UnitedStates, and rejected Monsanto’s complaint (see Box 3).

34 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

Box 3
Relying on data: the U.S. Supreme Court decisionin Ruckelshaus v. Monsanto Co.

The Supreme Court considered that Monsanto could not have had areasonable, investment-backed expectation that the Environmental
Protection Agency (EPA) would keep the data confidential beyond thelimits prescribed in the amended statute itself. Monsanto was on noticeof the manner in which EPA was authorized to use and disclose any
data turned over to it by an applicant for registration.
Excerpts from the Court’s decision:!

“In addition, Monsanto was aware that information relating toformulae of products could be revealed by EPA to “any Federal
agency consulted and [could] be revealed at a public hearing or infindings of fact” issued by EPA “when necessary to carry out”
EPA´s duties under the Federal Insecticide, Fungicide and Rodenticide Act (FIFRA) § 10(B)22. The statute also gave Monsanto noticethat much of the health, safety, and efficacy data provided by it
could be disclosed according to the data-consideration and datadisclosure provisions in the statute. Monsanto chose to submit therequisite data in order to receive a registration, it can hardly argue
that its reasonable investment-backed expectations are disturbed
when EPA acts to use or disclose the data in a manner that was
authorized by law at the time of the submission.”!

“Because the market for Monsanto’s pesticide products is an international one, Monsanto could decide to forego registration in the
United States and sell a pesticide only in foreign markets. Presumably, it will do so in those situations where it deems the data to beprotected from disclosure more valuable than the right to sell in the
United States.”

22 See a summary of FIFRA in Annex I.

Proscribed Acts of Unfair Comemrcial Use 35

Box 3 (continued)!

“A fortiori, the Trade Secrets Act cannot be construed as any sort ofassurance against internal agency use of submitted data during consideration of the application of a subsequent applicant for registration. Indeed, there is some evidence that the practice of using datasubmitted by one company during consideration of the applicationof a subsequent applicant was widespread and well known. Thus,
with respect to any data that Monsanto submitted to EPA prior to
the effective date of the 1972 amendments to FIFRA, we hold that
Monsanto could not have had a “reasonable investment-backed expectation” that EPA would maintain those data in strictest confidence and would use them exclusively for the purpose of considering the Monsanto application in connection with which the data
were submitted.”!

“When Monsanto provided data to EPA during this period, it waswith the understanding, embodied in the FIFRA, that EPA was free
to use any of submitted data that were not trade secrets in considering the application of another, provided that EPA required thesubsequent applicant to pay “reasonable compensation” to theoriginal submitter. § 3(c)(1)(D), 86 Stat. 979. But the statute also
gave Monsanto explicit assurance that EPA was prohibited in connection with the application of another, to use any data submitted
by an applicant if both the applicant and EPA determined the datato constitute trade secrets.”

The U.S. Supreme Court in this case recognized that the authority
could use the data submitted by the originator to assess secondentrant applications. According to the law applicable at the time of
the complaint, Monsanto was entitled to compensation, but not to
exclusive use of the data. The solution has probably not substantiallychanged in the United States despite the adoption of the Second
Restatement of Unfair Competition Law (1997). In the absence of a

36 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

specific provision granting an exclusivity period as currently provided for medicines by U.S. law, relying on data to approve subsequent applications would not be considered an illegitimate misappropriation of trade secrets.23
The General Court Appeal of Canada decided a second andmore significant case on issues related to data exclusivity. Despite thefact that NAFTA provisions, as mentioned before, provide for aminimum term of exclusivity, the Court found legitimate the approval of a subsequent application on the basis of a prior registration. The court argued that the health authority neither requested
undisclosed information a second time nor examined it; the authority
just checked whether the original and subsequent products wereindeed the same (see Box 4). The issue was decided under Canadian
law and NAFTA Article 1711 on “Trade Secrets”, which establishes
the following:“5. If a Party requires, as a condition for approving themarketing of pharmaceutical or agricultural chemical
products that utilize new chemical entities, the submission of undisclosed test or other data necessary to determine whether the use of such data involves considerable effort, the Party shall protect against disclosure of
the data of persons making such submission, where theorigination of such data involve considerable efforts,
except where the disclosure is necessary to protect the
public or unless steps are taken to ensure that the data is
protected against unfair commercial use.
6. Each Party shall provide that for data subject to paragraph 5 that are submitted to the Party after the date ofentry into force of this Agreement, no person otherthan the person that submitted them may, without thelatter’s permission, rely on such data in support of an
application for the product approval during a reasonable
period of time after their submission. For this purpose,
23 Personal communication by Prof. J. Reichman (Duke University), October
2001.

Proscribed Acts of Unfair Comemrcial Use 37

a reasonable period shall normally mean not less than
five years from the date on which the Party granted approval to the person that produced the data for approval to market its product, taking account of the nature of the data and the person’s efforts and expenditures in producing them. Subject to this provision, there
shall be no limitation on any Party to implement abbreviated approval procedures for such products on the basis of bioequivalence and bioavailability studies.
7. Where a Party relies on a marketing approval grantedby another Party, the reasonable period of exclusive useof the data submitted in connection with obtaining theapproval relied on shall begin with the date of the firstmarketing approval relied on”.

Box 4
Canadian Federal Court of Appeal: the Bayer case
The Federal Court of Appeal held, inter alia, the following:“When a generic manufacturer files an Abbreviated New Drug
Submission (ANDS), the safety and effectiveness of the generic productmay be demonstrated by showing that the product is the pharmaceuticaland bioequivalent of the innovator´s product. If the generic manufacturer is able to do so solely by comparing its product with the innovator´s product which is being publicly marketed, the Minister will nothave to examine or rely upon confidential information filed as part ofthe innovator´s New Drug Submission (NDS). In such case, the minimum five year market protection referred to in the regulation will not
apply.

38 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

Box 4 (continued)“On the other hand, if in order to be satisfied of the safety and effectiveness of the generic product, the Minister examines and relies
upon information filed by the innovator in its NDS, the minimum five
years market protection for the innovator will apply. This is because thesafety and effectiveness of the generic product will only be establishedby reference to confidential information provided to the Minister by theinnovator. It is only this use of that confidential information by the
Minister on behalf of the generic manufacturer that gives rise to theminimum five years protection form competition for the innovator.
“The appellant says that whenever an ANDS is filed by a genericmanufacturer comparing the generic product with the innovator´sproduct, the Minister must implicitly be examining and relying upon theconfidential information filed by the innovator in its NDS. We do notread subsection C.08.004.1(1) in this way. To do so would be to interpret it as invariably providing a minimum five years of market protection to an innovator when an ANDS is filed by a generic manufacturer.
Rather, the regulation contemplates that the Minister may or may not
examine and rely upon confidential information filed by the innovator.
The appellant’s argument reads out of the regulation the option given to
the Minister as to whether or not to examine and rely on the confidential information filed by the innovator.
“The NAFTA provisions are intended to protect trade secrets. If thegeneric manufacturer exercises the option of having the Minister examine the confidential information filed by the innovator in support of its
application for a Notice of Compliance, it is, in effect, relying on that
information within the meaning of section 6 of Article 1711. It is apparent that if confidential data is not relied upon, the trade secrets provisions of the NAFTA are not applicable. Specifically, if a generic manufacturer is able to establish the safety and effectiveness of its product on
the basis of bioequivalence or bioavailability studies without the Minister having to examine and rely upon confidential data filed by the innovator, there is no reason or justification for the minimum five years
protection from competition. This interpretation of subsection
C.08.004.01(1) is consonant with section 5 and 6 of Article 1711 of the
NAFTA.

Proscribed Acts of Unfair Comemrcial Use 39

Box 4 (concluded)“If a generic manufacturer compares its product to an innovator´sproduct solely on the basis of public information, providing the innovator with protection from competition for a minimum of five years istantamount to granting it the protection a patent would provide. Putanother way, even if the Minister did not examine and rely on the innovator´s confidential information, the innovator would be entitled to theminimum of five years protection form competition. The words ofsubsection C.08.004.1(1) cannot be construed to yield such a result.”

The Court, in sum, concluded that, under Canadian law and
NAFTA, if the health authority actually uses the data submitted by
the originator on behalf of the generic manufacturer in order to assess the latter’s application, the minimum five years protection fromthe competition for the innovator applies. But if the authority does
not examine and rely on that confidential or trade secret information
on behalf of the generic manufacturer, there is no use of data andthe exclusivity provision is not applicable.
If despite the express provision of exclusivity, the mere reliance on a prior registration without use of the data does not allow toclaim exclusivity, a fortiori the same conclusion should be reachedwhen the exclusivity is not specifically established, as in the case of
Article 39.3.
In sum, whatever the desire of some of the TRIPS negotiating
parties might have been, the expression “unfair commercial use”,
reasonable interpreted, does not sustain a reading that Article 39.3
requires the provision of exclusivity, or of a compensation. It has left
wide room for manoeuvre for Member countries to determine:a) when such a use exists, andb) the means of protection (see next section).

40 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

An “unfair commercial use” may be determined to exist, for instance, in situations in which a competitor obtains through fraud,
breach of confidence or other “dishonest” practices, the results oftesting data and uses them to submit an application for marketing
approval in its own benefit. It would also apply in cases where thegovernment provides access to undisclosed testing data in order toprovide an advantage to a firm which did not produce them or share
their cost.24

24 This would represent a violation of the non-disclosure obligation as well as an“unfair commercial use”.

VI. MEANS OF PROTECTION AGAINSTCOMMERCIAL USE

UNFAIR

A key issue for the application of Article 39.3 is to determine thenature and extent of the obligation to protect “against unfair commercial use”. As noted, the interpretation of this rule has createdconsiderable controversy.
The TRIPS Agreement mandates the protection of “undisclosed information” in the framework of the discipline of “unfair
competition”. Article 39.1 of Agreement stipulates that“in the course of ensuring effective protection against unfair competition as provided in Article 10bis of the Paris Convention(1967) Members shall protect ...the data submitted to governments or governmental agencies in accordance with paragraph 3”.
Article 10bis of the Paris Convention requires protection against“unfair competition”, defined as“any act of competition contrary to honest commercial practices inindustrial or commercial matters”.
The discipline of unfair competition protects fairness in commercial
activities. As mentioned, there are no universal moral values or aunique concept of what is “honest” in commercial behaviour. The
definition of what constitutes “fair” or “honest” practices varies
among countries. They may include competitor’s misrepresentation,
fraud threats, defamation, disparagement, enticement of employees,
betrayal of confidential information commercial bribery, among
others. In many but not all jurisdictions, the misappropriation of
trade secrets is regulated under unfair competition law, as is the casewith the TRIPS Agreement.

42 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

The present status of international competition law in the
Paris Convention is outlined in Box 5.

Box 5International protection against unfair competition under theParis Convention
!
!
!

!

Pursuant to Art.10 bis (1), the contracting states are obliged to ensure citizens of other contracting states “effective protection against
unfair competition”.
In Art.10 bis (2) (general clause), unfair competition is defined as
any act of competition which is “contrary to honest practices in industrial or commercial matters”.
Three cases are named in Art.10 bis (3) which “in particular shall be
prohibited”, namely creating the risk of confusion, discrediting
competitors through false allegations and making misleading indications or allegations about one’s own goods. This list is not enumerative, so that other competitive acts can also be covered by thegeneral clause.
Pursuant to Art.10 bis (1) of the Paris Convention, appropriate legal
remedies must be made available to the citizens of other contracting
states, in order to ensure the effective repression of acts contravening Art.10 bis; these must also include the power of federations
and associations to take legal action (Art.10 ter (2)).

Source: Henning-Bodewig, 1999, p. 173.

Under the discipline of unfair competition, protection is not basedon the existence of “property” rights. Hence, the provision of protection under such discipline does not give rise to claims of property
rights, including in respect of trade secrets and data submitted formarketing approval. There is only “possession” of this information.

Means of Protection Against Unfair Commercial Use 43

The TRIPS Agreement itself, in Article 39.3 refers to undisclosed
information “under the control” of a person, in clear contrast to theconcept used in the sections relating to other categories of intellectual property rights.25 A comparison between patents and trade secrets protection illustrates this important difference (see Box 6):

Box 6
Patents vs. undisclosed information
!
!

!
!

!

A patent confers property rights.
A patent owner obtains the exclusive use of his/her rights. Thismeans he/she is the only one who can use the invention, commercialize the product, etc. A patent owner can prevent any other person from using that invention. Even if a third party has developed
the same product in an independent manner, without knowing or
relying on the technology of the patent owner, the former is notallowed to use it, since the exclusive rights conferred are absolute.
In the case of undisclosed information, under most legal systems,
there is only “possession” of certain information.
The value of undisclosed information does not lie in the inventive
step or novelty -- even a list of clients can be protected, though obviously this is not an invention -- but in the fact that the undisclosed information has commercial value and in the fact that it issecret.
Unlike patents, which in general last for 20 years from the filing
date, in the case of undisclosed information there is no defined time
limit. Undisclosed information is protected as long as it is kept undisclosed. The duration of the protection, therefore, depends on thefactual situation, not on any legal provision.

25 See, e.g., articles 16.1 and 28.1 which refer to the “owner” of a trademark
and of a patent, respectively.

44 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

Though during the TRIPS negotiations the United States suggested the consideration of undisclosed information as “property” -in accordance with the concepts developed in its own legal system -that approach did not find support, particularly from European anddeveloping countries.26
The TRIPS Agreement clearly does not treat undisclosed information as “property”.27 The fact that TRIPS deems “undisclosed
information” to be a “category” of intellectual property does not
imply, as mentioned before, the existence of a property right.28
Because the TRIPS agreement embraces an unfair competition approach to undisclosed information, a logic consequence of
the Agreement is that Article 39 does not obligate countries to confer exclusive rights.
Exclusive rights are merely one “TRIPS-plus” option to deal
with issues covered by Article 39.3. There are heavy costs and ethicalconcerns associated with such an approach, however. In the absenceof mechanisms that permit the use of the data, an exclusive rights
system leads to the need for competitors to duplicate tests (often
involving suffering of animals) in order to reach results that are already known.
The Article 39.3 obligation may be implemented through lessonerous means, such as through the legal faculty to impede the useof information acquired through dishonest practices (e.g. espionage,
26 On the different approaches in continental and common law with regard to
trade secrets, see Coleman, 1992; Font Segura, 1999.
27 According to Engelberg, U.S. law does not recognize “any property rights inthe data submitted to support an application for approval of a new drug… The
non-patent, market exclusivity provisions of the Drug Competition Act of 1984
were created as an arbitrary means of providing investment incentive for thedevelopment of drug products that had little or no patent protection and not as
a purposeful determination to create a new form of intellectual property basedon undisclosed data”.
28 It is generally accepted, particularly under European law, that unfair competition is one of the disciplines of industrial property, and it is in this sense that
article 1.2 should be interpreted.

Means of Protection Against Unfair Commercial Use 45

breach of confidence), as background for an independent submission for marketing approval.
Implementing legislation may also require the subsequent user
to pay compensation, without providing for exclusive rights. The
U.S. FIFRA, for instance, recognizes the possibility of using theoriginator’s test data for the approval of a subsequent application,
without the originator’s consent but with payment of compensation.
The law thus establishes a form of compulsory licensing for suchdata. The United States required such a compulsory licence -- without payment of compensation -- in approving Dow Chemical’s acquisition of Rugby-Darby Group Companies. Approval of themerger was contingent on the issuance of a licence for registration
data to all potential competitors (see Box 7).

Box 7
Compulsory licensing in the U.S. involving test data
Acquisition of shares of Rugby-Darby Group Companies by Dow
Chemical Co.

The Federal Trade Commission required Dow to license to potential entrants, intangible dicyclomine assets, including all formulations, patents,
trade secrets, technology, know-how, specifications, designs, drawings,
processes, quality control data, research materials, technical information,
management information systems, software, the Drug Master File, and all
information relating to the United States Food and Drug Administration Approvals
that are not part of the acquired company’s physical facilities or other tangible assets.
Source: www.cptech.org

In sum, Article 39.3 -- interpreted according to the ordinary
meaning of the words used, in their context (notably Article 39.1)

46 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

and taking into account the object and purpose of the Agreement as
expressed in Articles 7 and 8 -- does not require the granting of exclusive rights.29 The obligation that it imposes may be satisfied byother means, not specified in the Agreement. As stated by
UNCTAD in relation to data covered by Article 39.3,“authorities are not prevented…from using knowledge of such data,for instance, to assess subsequent applications by third parties for theregistration of similar products” (UNCTAD, 1996, p.48).

29 See also Watal (2001) who concludes that “in the end in the TRIPS text there
is no clear obligation not to rely on the test data for the second or subsequent
applicants nor a fixed duration of market exclusivity, failing which the firstregistrant is assured reasonable compensation. This is a clear contrast to thecorresponding provisions in NAFTA” (p. 199).

VII. THE EXCLUSIVITY APPROACH

The pharmaceutical industry, the United States and the European
Union disagree with the contention that Article 39.3 does not require
the granting of exclusive rights. According to the industry, the only
way to effectively protect test data against unfair commercial use isto provide an exclusivity period for the use of the data:“To have a meaningful purpose this provision (Article 39.3) must
be interpreted to require the protection of data against use by thecompetitors. Even if there is some concern about government use ofsuch data in a commercial manner, it is minuscule in comparison
to the problem of competitors´ use of the data. Consequently, inlight of the maxim of statutory construction that a provision will
be interpreted so that no part will be inoperative or superfluous,
void or insignificant, Article 39 para.(3) must be interpreted toprovide protection against the use of data by competitors for someperiod of time” (Priapantja, 2000, p. 4).
The Office of the U.S. Trade Representative (USTR) has interpreted
Article 39.3 of the TRIPS Agreement to mean that“the data will not be used to support, clear or otherwise review
other applications for marketing approval for a set amount oftime unless authorised by the original submitter of the data. Anyother definition of this term would be inconsistent with logic andthe negotiating history of the provision”.30

30 Office of the General Counsel, U.S. Trade Representative, “The protectionof Undisclosed Test Data in Accordance with TRIPS Article 39.3”, unattributed
paper for submission in bilateral discussions with Australia (May 1995).

48 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

The United States maintained this position, for instance, in its
complaint (initiated in April 1996), under Special 301 Section of U.S.
Trade Act, against Australia.31 Australia did not grant exclusivity,and generic companies only had to demonstrate bio-equivalence inorder to obtain marketing approval of a similar product. In addition,
Australian authorities granted certificates of free sale which permitted generic companies to export to other countries where marketing
approval was automatically granted on the basis of the Australiancertificates.
The U.S. argued that the Australian regime violated Article
39.3. The U.S. pressure forced an amendment to the Australian law.
Under the Therapeutic Goods Legislation Amendment Act 1998
(No.34, 1998) test data in Australia now have five years of “exclusivity”. During this time, another company wishing to register a genericcopy of an originator’s product will be required to seek the agreement of the originator company to use its data, or to develop its own
data package (Priapantja, 2000, p. 6).
The exclusivity approach was also incorporated, as a result of
U.S. demands, in the USA-Jordan Agreement on the Establishmentof a Free Trade Area (Washington D.C., 24 October, 2000), according to which “in situations where there is reliance on evidence ofapproval in another country, Jordan shall at a minimum protect suchinformation against unfair commercial use for the same period oftime the other country is protecting such information against unfair
commercial use” (Article 22, fn. 11)32.
31 This case was not brought to a panel resolution under the WTO’s Dispute
Settlement Understanding (DSU) rules. The U.S. instead threatened to impose
unilateral trade sanctions on Australia, even though TRIPS had already enteredinto force in both countries. The U.S. also applied economic sanctions to Argentina in 1997, arguing Argentina maintained insufficient protection of confidential information. More recently, the U.S. has started consultations under the
DSU on, inter alia, Argentina’s compliance with Article 39.3.
32 In addition, this Agreement establishes a TRIPS-plus standard in relation to
the concept of “new chemical entities”: it is understood that such concept“shall also include protection for new uses for old chemical entities for a periodof three years” (article 22, fn. 10). The U.S. has also criticized the amendmentof the Thai “Safety Monitoring Programme” (SMP) established in 1993 as a

The Exclusivity Approach 49

The EU argues, similarly, that Article 39.3 established an exclusivity obligation. All that is left to Member countries, according to
the EU, is the determination of the duration thereof.33“the only way to guarantee that no “unfair commercial use” within
the meaning of Article 39.3 shall be made is to provide that
regulatory authorities should not rely on these data for a reasonable period of time, the determination of what is a reasonable period of time being left to the discretion of the Members.
In theory, Article 39.3 appears to give Members the discretion toprovide for different means of data protection, although it is very
difficult to imagine other ways than non-reliance over a certain period of time, except for a (temporary) refusal to grant any second
market approval to similar products (even if the second applicant
submits its own data), as is the case in at least one WTO Member and maybe for an obligation to pay as a compensation for reliance on proprietary data without having to obtain consent from thefirst applicant. The question remains whether such payment would
indeed be sufficient to guarantee that any “unfair commercial use”
of test data takes place. For instance, it would be essential thatsuch payment reflects the investments made by the original applicant -- which may not always be easy to establish.
In theory, any country maintaining an effective system to implement obligations under 39.3 even if different from non-relianceresult of USTR demands aimed at ensuring a two years minimum exclusivity
period for drugs patented abroad between 1986 and September 1991. In January 2001 the SMP was amended and generics companies were allowed to conduct bioequivalence studies at any time regardless of whether or not the original
products are under the SMP. If the original products are under the SMP, however, those generic products must also be under the SMP. According to theThai authorities, the SMP had led to unaffordable high prices for new drugs. In
the USTR view, this reform would mean the relinquishment of the benefits
affording data protection in accordance with the U.S.-Thai 1993 Bilateral
Agreement, and would create – at least until a “satisfactorily TRIPS-consistent
Trade Secrets Law is enacted and implemented in Thailand -- an unacceptable
gap in data protection coverage (Kwa, 2001, p. 49-50).
33 See also Lobato García-Miján, 2000.

50 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

over time, would not be in breach of its TRIPS obligations, but weare not aware of many alternatives and it is clear that what the
TRIPS-negotiations had in mind was data exclusivity over a certain period of time. On the other hand, as it does not set any time
limit, Article 39.3 would not prevent a country from providing fordata exclusivity for an unlimited period of time” (EU, 2001, p.
4-5).
The EU position suffers from several shortcomings, however. First,
had the negotiating parties agreed to embrace the concept of exclusivity, they simply could have done so explicitly. The TRIPS Agreement´s obligations in relation to copyrights, trademarks, industrial
designs, patents and integrated circuits (via incorporation of the
Washington Treaty), all explicitly provide for exclusivity.
The EU admits that there was substantial disagreement duringnegotiations:“It must be admitted that the following of Article 39.3 does not,from a prima facie reading, appear to impose data exclusivity
during a certain period of time. This lack of clarity is the obvious
result of a difficult negotiation process where divergences of views
arose between developing and industrialized countries as to the necessity of EC/U.S. like type of data protection as well as amongindustrialized countries on the length of the data exclusivity period” (EU, 2001, p. 3).
The disagreement among the parties was, however, more substantial
than that argued by the EU, and there was no international established practice on which to rely. The negotiating history of Article
39.3 reveals that the parties considered at length, but did not adopt,text which clearly required exclusivity for test data.
Second, if the negotiating parties only left the Members the
freedom to determine the duration of the exclusivity period, on what
basis could a panel or the Appellate Body establish an “adequate”
duration? The basic rule of Article 3.2 of the WTO’s Dispute Settle-

The Exclusivity Approach 51

ment Understanding prohibits dispute settlement bodies from adding to or subtracting from WTO agreement rights.34 The EU itself
admits that there was disagreement among the developed countries
even about the duration of such period:“Would this be 5 years (as in the case inter alia in US), 4 years
or 3 years? This remains an open question”.

As noted by Watal,“It can be argued that if the intention had been to have such exclusive marketing rights, this term, which is used in Article 70.9
of TRIPS, would have been used here too. Further, given the differences in the TRIPS and NAFTA texts of this provision, it isclear that the scope and purpose in TRIPS is intended to be more
limited as otherwise the text would have been as specific. No additional obligations, which are not present in the text, can be imported through interpretation. Therefore, a reasonable interpretation would be that the obligation on the authorities would be tokeep the test data secret and to prohibit others from accessing thistest data for unfair commercial use, such as sale to rival firms”(Watal, 2001, p. 204).
In sum, Article 39.3 clearly requires some form of protection for test
data. Its main purpose is not to prevent the commercial use of suchdata by governments, but the use by competitors. The wording,context and purpose of the article does not support an interpretationthat the required protection can be implemented only on the basis ofan exclusivity protection. This interpretation is confirmed by the his-

34 Article 3.2: “Recommendations and rulings by the Dispute Settlement Body
cannot add to or diminish the rights and obligations provided in the covered
agreements”.

52 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

tory of the negotiation of the TRIPS Agreement, as reviewed below.35

35 The suggested interpretation has also been held by the Africa Group, Barbados, Bolivia, Brazil, Dominican Republic, Ecuador, Honduras, India, Indonesia,
Jamaica, Pakistan, Paraguay, Philippines, Peru, Sri Lanka, Thailand and Venezuela in a recent submission to the Council of TRIPS on “TRIPS and Public
Health”: “Protection of Test Data: Article 39.3 of the TRIPS Agreement leaves
considerable room for Member countries to implement the obligation to protect test data against unfair competition practices. The Agreement provides that“undisclosed information” is regulated under the discipline of unfair competition, as contained in article 10 bis of the Paris Convention. With this provision,
the Agreement clearly avoids the treatment of undisclosed information as a“property” and does not require granting “exclusive” rights to the owner of thedata” (para. 39) (IP/C/W/296, 19 June, 2001).

VIII. THE HISTORY OF THE TRIPS NEGOTIATIONSThe history of the TRIPS Agreement negotiations also provides
important evidence for interpreting Article 39.3. Such history has
been accepted in recent WTO jursiprudence as an interpretative
source under Article 31 (2) of the Vienna Convention on the Law of
the treaties. It has been used to confirm the interpretation reached by
the application of the principles of Article 31 (1) of the Convention.36
An early precedent of Article 39.3 can be found in the“Statement of Views of the European, Japanese and United States
Business Communities”,37 which also influenced the drafting ofother articles of the TRIPS Agreement. In their submission, thebusiness communities advocated for the protection of test data as
follows:“1. Information required by a government to be disclosed by any
party shall not be used commercially or further disclosed without
the consent of the owner.
2 Information disclosed to a government as a condition for registration of a product shall be reserved for the exclusive use of theregistrant for a reasonable period from the day when government
approval based on the information was given. The reasonable period shall be adequate to protect the commercial interests of theregistrant”.
This proposal clearly specified the obligation to establish adata exclusivity period. The same approach was reflected in the U.S.
proposal:
36 See, e.g. the panel report in United States-Section 110(5) of the Copyright U.S.
Copyright Act, WT/DS160/R, 15 June 2000, para. 6.50; United States-Section 211
Omnibus Appropriations Act of 1998, WT/DS176/R, 6 August, 2001, para.8.378.
37 See Annex III of Beier and Schricker, 1989.

54 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

“Contracting parties which require that trade secrets be submitted
to carry out governmental functions, shall not use the trade secrets
for the commercial or competitive benefit of the government or ofany person other than the right-holder except with the rightholder’s consent, on payment of the reasonable value of the use, orif a reasonable period of exclusive use is given to the rightholder”.38
It is interesting to note that this proposal referred to the “commercial or competitive benefit” obtained by a third party, rather than to“unfair commercial use” as is the Agreement’s text. The proposal isbased on the effects of the use (the creation of a benefit), while Article 39.3 is based on an ethical qualification of the use as “unfair”.
The U.S. proposal turned on whether a commercial or competitive
benefit (independently of the qualification of the use that generatedit) was obtained; under Article 39.3, the key issue is whether there is
unfairness in the use (as provided by Article 10bis of the Paris Convention) and not whether a third party obtains a benefit.
The negotiating parties considered requiring test data exclusivity, but rejected this approach. Bracketed text under consideration
at the Brussels Ministerial Meeting (December 1990) would haverequired not less than five years of data exclusivity. The draft read as
follows:“Parties, when requiring, as a condition of approving the marketing of new pharmaceutical products or of a new agricultural chemical product, the submission of undisclosed test or other data, theoriginator of which involves a considerable effort, shall [protect suchdata against unfair commercial use.
Unless the person submitting the information agrees, the data may
not be relied upon for the approval of competing products for a reasonable time, generally no less than five years, commensurate withthe efforts involved in the origination of the data, their nature, andthe expenditure involved in their preparation. In addition, Parties
38 See MTN.GNG/NG11/W/70, reproduced in Correa and Yusuf, 1998..

The History of the TRIPS Negotiations 55

shall] protect such data against disclosure, except where necessary
to protect the public]”.39
Notably, this text also explicitly included a prohibition on reliance on thedata submitted by the originator. But this concept disappeared from thefinal text. The negotiating history of Article 39.3, in sum, does notsupport the thesis that it was intended to provide exclusive rights.40
On the contrary, it shows that such concept was rejected. It is alsosuggestive in this sense that the most active proponents of such approach are currently proposing to review the TRIPS Agreement inorder to include an exclusivity period41.
39 See Gervais, 1998, pp. 182-183.
40 The EU has pointed out that “according to one commentator, the U.S. negotiations finally decided to drop the more explicit language of above drafts because they did not view such wording as essential because, in any event, “theaccepted definition at the time of protection against unfair commercial use
included non-reliance for a fixed period of time for new chemical entities” (EU,
2001, p. 4).
41 In its position paper on the WTO Millennium Round, the International Federation of Pharmaceutical Manufacturers’ Association (IFPMA) has called, interalia, for the adoption of a 10-year data exclusivity period (see “What is at stakein Seattle”, in www.pharma.org). See also IIPI (2000), where it is noted that
Article 39.3 “requires WTO Members to protect health registration data fromdisclosure or unfair commercial use, but its exact boundaries of “unfair commercial use” are not entirely clear (p. 26).

IX. CONCLUSIONSThe use by health authorities and competitors of test data whichmust be submitted to obtain marketing approval of pharmaceutical(and agrochemical) products has been subject to specific regulations
in several jurisdictions. Some developed countries, notably the U.S.
and EU, have established data protection regulations based on the
exclusive use of such data by the originator company. In othercountries, however, off-patent generic products can be approved byrelying on the data available to health authorities or by reference to aprior registration either domestic or in third countries. In all cases,
the physical and chemical similarity (or essential similarity) with theregistered product must be demonstrated.
The TRIPS Agreement has obliged WTO Member countries
to treat test data as a component of “intellectual property”. However, the rationale for test data protection is the investment made indata production, rather than their creative or inventive content.
Article 39.3 of the TRIPS Agreement requires data protection
against disclosure and “unfair commercial use”. Article 39.3 develops
Article 10bis of the Paris Convention; that is, it requires the protection of data against dishonest commercial practices.
The non-disclosure obligation admits exceptions where necessary to protect the public, and in other cases where measures are
adopted to ensure that the information is not used in an unfair
commercial manner. Considerable room has been left to Members
for defining the grounds for the application of these exceptions.
In implementing the obligation to protect against unfair
commercial use, the Member States can determine, in accordancewith their own values and practices, the standards demarcating dishonest commercial practices. Further, the TRIPS Agreement has

58 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

deferred to Members the determination of the legal means to be
used in order to make such protection effective. Hence, Members
may opt for means of protection against unfair commercial use
which allow for the approval of “similar” products without the useof the data or relying on them. Members may also opt, but are notobliged to, grant “TRIPS-plus” protection on the basis of data exclusivity, as some countries currently do.
In making such choices, policymakers will have to weigh theprotection of the interests of originator companies against the importance of creating a competitive environment in order to increase
access to medicines that are outside patent protection. From a publichealth perspective, the introduction of TRIPS-plus standards does
not seem the best approach for developing countries.
In sum, developing countries should carefully consider thescope of regulations on approval of pharmaceutical products. Suchregulations should be enacted with a pro-competitive intent, in amanner that maximizes legitimate competition and access to drugs,
while respecting the legitimate interests of the originators of data inaccordance with the standards of protection established by the
TRIPS Agreement.

ANNEX I
EXCLUSIVE USE OF DATA AND COMPENSATION UNDER
THE U.S. FEDERAL INSECTICIDE, FUNGICIDE AND
RODENTICIDE ACT (FIFRA)
1. Under the “exclusive use” provision, some data are temporarily
protected from use by a data submitter’s competitors. FIFRA §3(c) (1) (D) (i). Registrants are granted a ten-year period of exclusive use for data on new active ingredients first registered after September 30, 1978. FIFRA § 3(c) (1) (D) (i). During that period, no other applicant may use the data to support an application for registration. To be eligible for exclusive use, data must
pertain to a “new” complete data package. The second registrant, however, is not necessarily required to duplicate exactly
the original submitter’s data package.
2. Under the “data compensation” provision, most data can beused by any company willing to pay compensation to the datasubmitter. FIFRA § 3(c) (1) (D) (ii). Compensation is required
whenever data submitted after December 31, 1969 is consideredby EPA in support of another company’s registration. § 3(c) (1)(D) (ii). The duty to pay compensation, however, ends fifteen
years after the data are submitted, after which no further payment is required for use of the data. § 3(c) (1) (D) (iii). In thecase of an active ingredient subject to exclusive use protection,
the data are subject to compensation for five years after the tenyear period of exclusivity expires.
3. Under the “joint data development” provision, two or moreregistrants can agree to develop jointly, or to share the cost of,
new data needed for re-registration or to respond to data call-ins.
FIFRA § 3(c) (2) (B) (ii). Registrants may agree to develop jointly
new data needed by EPA for re-registration. FIFRA § 3(e) (2)(B) (ii). Applicants for re-registration which are not developing
re-registration data either alone or jointly must offer to share in

60 Protection of Data for the Registration of Pharmaceuticals: Implementing Standards …

the cost of the data being developed by other registrants. See
FIFRA §§ 4(d) (3) (B) (ii), 4(e) (1) (H) (ii). FIFRA does not establish a formula or standard for determining the amount ofcompensation under § 3(c) (1) (D) or the manner in which costs
should be shared under § 3(c) (1) (D). Instead, the statute leaves
it to the parties themselves to work out compensation or cost
sharing arrangements, or to agree upon a dispute resolution procedure. Any party, however, has the right to initiate binding arbitration proceedings in order to resolve a data compensation or
cost sharing dispute. FIFRA § 3(d) (1) (D) (ii), 3(c) (2) (B) (iii).
4. Under FIFRA´s binding arbitration provisions, data compensation or cost sharing disputes can be resolved by a neutral arbitrator. FIFRA § 3(c) (1) (D) (ii), 3(c) (2) (B) (iii). In the Thomas v.
Union Carbide Agricultural Products Co., 473 U.S. 568 (1985). case,several pesticide manufacturers challenged the FIFRA arbitration system on the grounds that it delegated too much power toan arbitrator to determine compensation, without review of thesoundness of arbitration awards by the federal courts. The Supreme Court concluded that this delegation of adjudicatory
power to arbitrators, rather than the courts, does not violate the“separation of powers” required by the Constitution. 473 U.S. at
592-93. A federal district court subsequently held that the lack ofa standard in FIFRA for measuring compensation is not unconstitutional. PPG Industries v. Stauffer Chemical Co., 637 F. Supp. 85(D.D.C.1986), appeal dismissed, No. 86-5502 (D.C. Cir.Nov.4,
1987).

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