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Various Important Intellectual Property Treaties
By Russell Pigg
Paris Convention
The Paris Convention is the most widespread intellectual property treaty, covering both patents and trademarks.
Adopted back in 1883, it was the first step to protecting IP globally. There are 179 contracting parties to the treaty.
The substantive provisions of the Convention fall into three main categories: national treatment, right of priority, common rules.
Every contracting state of the treaty must grant the same protections as the state’s own nationals to nationals of other contracting parties, as well as nationals who are not citizens but are domiciled or have a business in a contracting state.
Applicants can apply for protection in any of the other contracting states within 12 months for patents and utility models and 6 months for industrial designs and trademarks of first filing in the original country.
Subsequent applications in other nations will be regarded as if they were filed on the same day as the first application in the original contracting state.
The treaty outlines common rules for trademarks and patents to be followed in each of the contracting parties.
Patents:
I. Patents granted in different states for the same invention are independent of each other.
II. Being refused or granted a patent in one state does not oblige another contracting state to do the same.
III. The inventors have the right to be named as such in the patent.
IV. A patent may not be refused or invalidated due to restrictions on the product created by the patent as a result of domestic law.
V. Compulsory licenses may only be granted under certain conditions.
Trademarks:
I. The Paris Convention does not regulate the conditions for the filing and registration of trademarks which are determined in each Contracting State by domestic law.
II. No application for a mark filed by a national of a Contracting State may be refused on the ground that filing has not been effected in the country of origin.
III. Trademarks are independent of one another in different countries.
IV. Where a mark has been duly registered in the country of origin, it must be accepted for filing and protected in its original form in the other Contracting States. There are some cases when it may be refused.
V. In a contracting state, if the use of a registered mark is compulsory, the registration cannot be canceled for non-use until after a reasonable period, and then only if the owner cannot justify this inaction.
VI. Each Contracting State must refuse registration and prohibit the use of trademarks that are trademarked previously in the same goods or services.
VII. Each Contracting State must refuse registration and prohibit the use of trademarks that contain coats of arms, State emblems and official signs and hallmarks.
VIII. Collective marks must be granted protection
Industrial Design
I. Industrial designs must be protected in each Contracting State, and protection may not be forfeited on the ground that articles incorporating the design are not manufactured in that State.
Trade Names
I. Protection must be granted to trade names in each Contracting State without there being an obligation to file or register the names.
Indications of Sources
I. Measures must be taken by each Contracting State against direct or indirect use of a false indication of the source of goods or the identity of their producer, manufacturer, or trader.
Unfair Competition
I. Each Contracting State must provide for effective protection against unfair competition.
Patent Cooperation Treaty (PCT)
The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention simultaneously in over 150 contracting countries by filing a single international patent application.
An international application must be filed by a citizen or domicile of a contracting state of the PCT.
The application can be filed with the national patent office of a contracting state or with the International Bureau of WIPO.
If granted, an international application has the same legal effect and same protections as filing a national application with the national patent office of each PCT contracting state.
The PCT simplifies and standardizes the process of fulfilling diverse formality requirements by regulating in detail the formal requirements necessary for international applications, making the process easier to predict for inventors.
The PCT also reduces fees from certain states by up to 90% at the time of filing, postponing major costs that can come with international patent protection until you are guaranteed to receive protection.
Madrid Protocol
The Madrid Protocol, which entered into force in the United States in 2003, is a cost effective, efficient, and centralized way for trademark owners to obtain protections for their marks in over 124 contracting states by filing one international application.
The protocol allows for the filing of an application in the office of origin, in a single language, with a single set of fees, in a single currency.
In the US, to use the Madrid Protocol, a trademark owner must have a national trademark application, called a basic application, filed with the USPTO national trademark registration issued.
The basic application is the basis for filing an international application and obtaining an international registration from WIPO.
An issuance of an international registration by WIPO does not mean or guarantee the trademarks registered in the designated countries.
Protection is subject to each designated countries’ trademark office examining the application according to their own national laws.
Each country gets to independently grant or deny registrations.
An international application for international registration has the same protections once the application is issued as a national application for trademark registration filed directly in each of the designated countries.
The registration issued by WIPO and all the protections in the designated countries are dependent on the national basic application, and thus if the basic application is terminated within the first five years of the date of international registration, the international registration and all the protections from designated countries are also canceled.
Berne Convention
The Berne Convention created in 1886 and last amended in 1979, which protects copyrights, has 181 contracting countries, the most of any treaties discussed thus far. The treaty focuses around 3 principles.
Works originating in one contracting state must be afforded the same protections in other contracting states.
Protection must not be conditional upon compliance with any formality such as a registration but rather automatic protection.
Lastly, protection is not reliant on the existence of protection in the country of origin of the work. This treaty covers all literary, scientific, and artistic works.
The copyright protections give the owner of the work the exclusive rights to translate, make adaptations and arrangements, perform in public, recite, communicate to the public, broadcast, make reproductions, and use the work as a basis for the audiovisual work.
The treaty also provides “moral rights” which are the right to claim authorship of the work and the right to object to any negative action in relation to the work that could harm the author’s reputation.
Owners receive compensation for the copyright being used and must give permission. The length of protection depends upon the duty of the works, but for most works it is 50 years after the death of the creator.
Hague Agreement
The Hague Agreement for design patents allows for an international design registration to be obtained by a natural person or legal entity within a contracting party.
The Hague Agreement Acts of 1960 and 1999 are still currently in operation, with the original 1934 act being frozen in 2009.
By filing a single application for an industrial design with the International Bureau of WIPO, an applicant is able to seek protection in any contracting nations.
An application may also be filed indirectly through the office of the applicant’s Contracting Party, though this is less common.
International applications must have one or more drawings of the design and must designate at least one Contracting Party of the agreement.
The agreement also makes possible the recording of subsequent changes and renewal of the international registration through a single procedural step, simplifying the process.
International applications can include up to 100 designs as long as they all fall under the same International Classification.
The application can be written in English, French, or Spanish.
If the application is approved, the International Designs Bulletin publishes the international registrations weekly.
The term of protection under the 1999 Act of the agreement requires renewals every 5 years to maintain protection for a maximum of 15 years of protection.
The Hague Agreement simplifies and streamlines the international application process for design patents.
https://www.wipo.int/treaties/en/ip/paris/summary_paris.html
https://www.wipo.int/treaties/en/registration/pct/summary_pct.html
https://www.wipo.int/treaties/en/ip/berne/summary_berne.html
https://www.wipo.int/treaties/en/registration/hague/summary_hague.html
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