International Treaties Related to Intellectual Property

By Hannah Walton

1.                  Madrid Protocol

Under the Madrid Protocol, trademark owners file one international application to be registered in multiple countries. Concluded in 1989, the Madrid Protocol has a total of 115 members including the United States. “The system makes it possible to protect a mark in a large number of countries by obtaining an international registration that has effect in each of the designated Contracting Parties” (WIPO). The advantage of the Madrid Protocol includes a reduction in the amount of work trademark owners must complete. To begin, only one application is submitted to the home country office. This means that the trademark owner can complete the application in one language, use one payment and currency, and follow one country’s rules and regulations. Not only is this more cost effective, but it creates a simplistic process for registration, maintenance, and renewal. Disadvantages of this process include a limit on who can use the system. The Madrid Protocol is connected to the Madrid Agreement which details an international system to register trademarks. Trademark owners are only eligible to use the Madrid Protocol if they are partnered with a contracting party to the Madrid Agreement or the Madrid Protocol.

2.                  Patent Cooperation Treaty

The Patent Cooperation Treaty was signed in Washington D.C. in 1970 and was put into effect in 1978 with a total of 157 contracting parties. The Patent Cooperation Treaty works specifically with protecting patents internationally and, like the Madrid Protocol, simplifying the application process. This treaty results from a study done by the Executive Committee of the Paris Convention for the Protection of Intellectual Property in 1966. The study worked to cut down on the amount of repetition for patent innovators. Under the Patent Cooperation Treaty, innovators who are seeking to file patent applications for one invention in multiple countries go through a simple procedure that provides protection internationally. To begin the innovator files an international application, which is a single patent application form with their national patent office. From there, the application is listed for protection to all the contracting parties of the Patent Cooperation Treaty. The innovator then has 30 months to get expenses together for the application. This includes fees such as translation, national filing, and prosecution in each country that the innovator wants patent protection in. Finally, the World Intellectual Property Organization (WIPO) will publish both the application and a “nonbinding indication”. “This nonbinding indication is a preliminary search and/or examination by an ‘International Authority,’ one of 15 patent offices designated by WIPO that currently meet the treaty’s minimum staffing and documentation requirements” (UPSTO). The advantages of the Patent Cooperation Treaty include innovators being provided more time during the application process, applications that meet all the requirements cannot be denied, and submitted applications are advertised to a larger audience. Despite this treaty producing several advantages, there are still issues that an innovator could run into. The

Patent Cooperation Treaty comes with high filing fees and additional costs could come up depending on specific countries.

3.                  Berne Convention

Created in Switzerland in 1886, The Berne Convention deals with protecting works and the rights of authors for a total of 181 contracting parties. “The Berne Convention guarantees that works shall be protected in countries other than the author’s country of origin to the same degree the foreign country protects works of its own national authors” (Cadwell). According to the World Intellectual Property Organization, there are minimum standards of protection that works are provided under the convention. This includes aspects such as the duration of protection and the rights to be protected. Specific examples of this include “the right to make adaptations and arrangements of the work” and “the right to recite literary works in public” (WIPO). The benefits of the Berne Convention are the “moral rights” that are included under the minimum protections. The moral rights are defined as, “...the right to claim authorship of the work and the right to object to any mutilation, deformation or other modification of, or other derogatory action in relation to, the work that would be prejudicial to the author's honor or reputation” (WIPO).

4.                  Paris Convention

Adopted in 1883, the Paris Convention requires its 180 members to provide minimum protections for industrial property. The Paris Convention established three main categories to protect patents, trademarks, industrial designs, utility models, service marks, trade names, and geographical indications. The categories consist of national treatment, right of priority, and common rules. Under national treatment, each participating country is required to provide the same protections to its own citizens and citizens from other countries. The second category, the right of priority, applies to patents, marks, and industrial designs. It states that “...protection in one member country may use that application as the basis for filing later applications for that IP in other member countries” (Thomson Reuters). The final category is common rules, which require all participating countries to follow the specific rules set by the convention. Advantages of the Paris Convention include applicants receiving 6 to 12 months to decide which countries they need protection in. Despite this fact, the Paris Convention comes with limitations. “One of the main disadvantages is that it does not provide a unified patent granting system” (Bryan and Doreian). This results in inventors still needing to file separate applications for each country, leading to an increase in costs and time.

5.                  Hague Agreement

Using the Hague Agreement, industrial designers can register their work using one application. This ensures that design owners can protect their work in various countries by using one simple process. The Hague Agreement was created in 1925 and currently consists of 80 members. In order to file under the Hague Agreement, an applicant must meet the necessary requirements. According to the United States Patent and Trademark Office the applicant must, “[b]e a national of a contracting party or of a member state of an intergovernmental organization that is a contracting party, have a domicile or habitual residence in the territory of a contracting party, or have a real and effective industrial or

commercial establishment in the territory of a contracting party” (USPTO). If all requirements are met, an applicant can file with the International Bureau of the World Intellectual Property Organization directly. The benefits of the Hague Agreement include applicants receiving protection for up to 100 designs under one application. On the other hand, disadvantages may arise for applicants based on the specific countries they choose to apply for. “The Hague Agreement does not implement uniform drawing standards between member countries. Therefore, each county still has different substantive drawing requirements and different sets may be needed depending on which countries are designated” (Fuierer). If the applicant does not meet each country’s specific requirements when filing, there is a risk that the applicant will lose their rights in that country.

Works Cited

“International IP Treaties.” USPTO, 16 Nov. 2023, www.uspto.gov/ip-policy/international-ip-treaties.

WIPO-Administered Treaties. www.wipo.int/treaties/en.

“What Is the Patent Cooperation Treaty (PCT)?” Pure Ideas, 19 Feb. 2024, https://pure-ideas.co.uk/2024/02/19/what-is-the-patent-cooperation-treaty-pct.

“Berne Convention.” LII / Legal Information Institute, www.law.cornell.edu/wex/berne_convention.

Fuierer, Alana. “What You Need to Know About the Hague Agreement: Benefits and Potential Pitfalls.” Lexology, 10 June 2015, www.lexology.com/library/detail.aspx?g=ff67bc9d-1f5c-496b-af9b-4f8f3117ccf2#:~:text=DISADVANTAGES%3A,on%20which%20countries%20are%20designated

Practical Law, uk.practicallaw.thomsonreuters.com/Glossary/PracticalLaw/I4cf8489cef2a11e28578f7ccc38dcbee?transitionType=Default&contextData=(sc.Default)&firstPage=true&comp=pluk.

Bryan, and Bryan Doreian. “What Is the Difference Between the Paris Convention and the Patent Cooperation Treaty in International Patenting?” Wysebridge Patent Bar Review, 10 Aug. 2023, wysebridge.com/what-is-the-difference-between-the-paris-convention-and-the-patent-cooperation-treaty-in-international-patenting.

Cadwell, Jeffrey. “Don’t Get Berned – an Important Limitation on Enforcement of Foreign Copyrights Under U.S. Law.” JD Supra, 8 Aug. 2017, www.jdsupra.com/legalnews/don-t-get-berned-an-important-59489.