Genovesi, Luis Mariano --- "The TRIPS Agreement and Intellectual Property Rights Exhaustion" [2010] ELECD 448; in Correa, M. Carlos (ed), "Research Handbook on the Protection of Intellectual Property under WTO Rules" (Edward Elgar Publishing, 2010)

Book Title: Research Handbook on the Protection of Intellectual Property under WTO Rules

Editor(s): Correa, M. Carlos

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781847209047

Section: Chapter 7

Section Title: The TRIPS Agreement and Intellectual Property Rights Exhaustion

Author(s): Genovesi, Luis Mariano

Number of pages: 10

Extract:

7 The TRIPS Agreement and intellectual
property rights exhaustion
Luis Mariano Genovesi


The principle of exhaustion of intellectual property rights (IPR), in its
classic version, holds that once the owner of the IPR places the product
protected by the IPR on the market, the IPR owner cannot use the right
granted by the IPR against any person who acquires the product from the
IPR owner or from another person with the consent of the IPR owner.
This principle, which can also be applied to products put on the market by
any authorized person ­ for instance, under a compulsory licence ­ limits
the power of the IPR owner, and allows persons to use, offer to sell or sell a
product embodying an IPR without fear that the IPR owner might enforce
the IPR against them.
At its origins during the second half of the 19th century, the exhaus-
tion of IPR theory addressed domestic sales made by the IPR owner or
its licensee.1 Nevertheless, incipient international trade allowed a third
person who had acquired a product embodying the invention in a foreign
country to import and sell products which were similar or identical to


1
Prominent European scholars attribute paternity of the exhaustion doctrine
to Josef Kohler, or at least that he established the foundations for this theory in
Germany. See Ulrich Schatz, The Exhaustion of the Patent Rights in the Common
Market, 2 IIC 3 (1971); R. Singer, L'epuisement du droit du breveté et les regles
allemandes, in 1è ...