International Instruments Related To Intellectual Property Rights

• Paris Convention for the Protection of Industrial Property

The Paris Convention is one of the Intellectual Property Treaties administered by WIPO. It
was launched to provide some international harmonizing and streamlining of intellectual
property laws. Adopted on March 20, 1883 at Paris and entered into force on July 7, 1884. It
provides basic guidelines for the protection of industrial property (patents, utility models,
industrial designs, trademarks, service marks, trade names, indications of source or
appellations of origin, and the repression of unfair competition) and has substantive
provisions for national treatment, right of priority and common rules. This treaty came into
force in India from December 7, 1998.
Anti-discrimination Policy
Under the Convention, a member country is obliged to give nationals of other member
countries the same protection and advantages as it grants to its own nationals. This anti-
discrimination policy of the Convention is also a fundamental tenet of many other intellectual
property agreements and treaties.
Example: A French national applying for a patent in Japan will have the same patent rights
and level of protection in Japan as a Japanese national.
Framework of Priority
The other fundamental tenet of the Paris Convention is a 'framework of priority'. Under the
Paris Convention, an invention can be protected from the same point in time in a variety of
countries. It is also a means of access into national patent systems for foreign applicants. An
inventor is able to claim the filing date of his first patent application in a Convention country
as an effective filing date for further subsequent applications (for the same invention) in any
other member country. However, the later applications must be filed within 12 months of the
earliest application in order to claim the priority date.
Example: A United Kingdom patent application is lodged on 1 January, 2002. On 1 January
2003, the same patent application is filed in Mexico. Mexico is a Convention member and as
a result, the Mexican application is treated as though it was filed on 1 January 2002.
If, without the treaty, the patent in the example was treated as though it was filed on 1
January 2003 in Mexico, the invention would likely already have been disclosed and thus un-
patentable in Mexico.
The right of priority means that in the foreign Convention country, the patent application will
be filed from the earliest date of filing in the home country for purposes of cited or prior art.
This is beneficial to an inventor, as it allows the inventor to avoid detrimental effects of his or
other's public disclosure that occurred after the earliest application and before filing in
foreign countries.
Example: A patent application for a video telephone is lodged in Djibouti. Eight months after
lodging the application, the inventor displays his video telephone at an international
conference. As a result of the conference worldwide publicity is generated for both the
 invention and the inventor, and the specifications of the video telephone become widely
known. A lot of interest is generated in Australia and it becomes obvious to the inventor that
it would be worthwhile to seek patent protection in Australia.
In the example above, the inventor has four months in which to seek patent protection in
Australia. Even though he has publicly disclosed his invention throughout the world, he is
still able to seek protection in Australia, provided that he files an application in Australia
within twelve months of lodging his initial application in Djibouti.
Considering that obtaining patent protection can be an expensive process, the twelve month
period also provides the inventor with a reasonable period of time to determine whether his
invention is worth protecting in other countries.
• Berne Convention for the Protection of Literary and Artistic Works
One of the three major international copyright treaties (see WIPO Copyright Treaty and
Universal Copyright Convention for the other two). Based on the principle of national
treatment (every signatory countries must extend the same pecuniary and moral rights to
the works of foreign nationals as it does to the works of its own nationals), provides certain
minimum protection for specified types of works (such as 50 years for authors), and forbids
imposition of technicalities such as a copyright notice.
Adopted on September 9, 1886 at Berne and entered into force on December 4, 1887.
Originally signed in 1886 at Berne, Switzerland, it was revised in 1914, 1928, 1948, 1967,
1971, and 1979.
This Convention on Copyrights rests on three basic principles – national treatment, automatic
protection and independence of protection; it also contains a series of provisions determining
the minimum protection to be granted. It came into force in India on April 1, 1928.
The Berne Convention deals with the protection of works and the rights of their authors. It is
based on three basic principles and contains a series of provisions determining the minimum
protection to be granted, as well as special provisions available to developing countries that
want to make use of them.
The three basic principles are the following:
(a) Works originating in one of the Contracting States (that is, works the author of which is a
national of such a State or works first published in such a State) must be given the same
protection in each of the other Contracting States as the latter grants to the works of its own
nationals (principle of "national treatment") .
(b) Protection must not be conditional upon compliance with any formality (principle of
"automatic" protection).
(c) Protection is independent of the existence of protection in the country of origin of the
work (principle of "independence" of protection). If, however, a Contracting State provides
for a longer term of protection than the minimum prescribed by the Convention and the work
ceases to be protected in the country of origin, protection may be denied once protection in
the country of origin ceases.
• Patent Cooperation Treaty (PCT)
Adopted on June 19, 1970 at Washington D.C. and entered into force on January 24, 1978. It
facilitates patent protection for an invention simultaneously in a large number of countries; it
came into force in India from December 7, 1998.
The Patent Cooperation Treaty (PCT) is a Global Protection Treaty administered by WIPO.
The Patent Cooperation Treaty aims to provide a simplified and less costly method of
preserving the rights to file a patent application in member countries. It seeks to achieve this
by providing what is known as a PCT application.
The PCT Application Process
A PCT application is NOT a primary patent application. Before a PCT application can be of
use, a priority patent application for an invention must be filed in the inventor's home
country. After this priority date is obtained by the initial filing of the application, a PCT
application may be used to preserve the right to file the same invention in all Patent
Cooperation Treaty member countries. Given that PCT applications claim a priority date
from the initial patent application, the PCT application acts as a placeholder, reserving the
patent rights in member states designated on the application.
An inventor can designate as many member states as he desires in which to preserve his filing
rights or, after 1/1/2004, all member countries are automatically chosen.
In order to obtain protection in each individual country the inventor chooses, it is necessary
for the PCT to be converted (filed) in the national patent offices of the selected countries
where the invention will be subject to an examination in order to meet the national
requirements for novelty, obviousness etc. The administrative tasks, including translation if
necessary and the fees associated with lodging patent applications in that country, must be
complied with.
The PCT application can therefore act as a way of delaying the costs of filing in multiple
national patent offices, until the inventor has decided whether it is worthwhile seeking
protection in many countries.
Example: An Indian national files a patent application on the 1/1/2003 at the Indian Patent
Office. On the 1/1/2004 he then files a PCT application with WIPO designating Brazil, Egypt
and China as contracting states. After deciding that there are commercial opportunities for his
invention in Brazil, the applicant decides to file in Brazil six months after filing a PCT
application (1/7/2004). The filing date for the Brazilian application will claim priority from
the date that it was first filed in India, i.e. 1/1/2003. The 20 year term of patent protection (if
granted in Brazil) will extend from the date of the PCT application (from 1/1/2004 to
1/1/2024). The inventor still has up to 12 months remaining in order to decide whether or not
to file in Egypt and China.
Priority that stems from a PCT application can only be given in those countries which are
designated on the application. In the example above, the inventor would not be able to claim
the priority date of 1/1/2003 in Japan, as Japan was not specified as a designated country on
the PCT application. However, under the changes to the PCT process which came into force
in January, 2004, there is no longer a need for countries to be designated on the application as
all member countries will automatically be chosen.
 A PCT application is usually filed at any point in time up to 12 months from the initial or
priority filing in the home country. At a period of 18 months after the initial application, the
PCT application is published. It used to be that at 20 months after the initial filing date, the
applicant must have entered the national phase of the application process in the designated
states or lose his right to file claiming the earlier priority date. However, this period could be
extended by a further 10 months if the applicant requested an examination or preliminary
report. The examination gives an inventor a preliminary and non-binding opinion on the
patentability of the claimed invention. He is then able to determine whether or not he should
proceed with the conversion of the PCT application into numerous, individual national
patents.
Changes to the PCT Process
We are currently in a transitional period where changes to the PCT process are underway. It
is now becoming possible in some countries for inventors to claim priority for 30 months
after the initial filing, without having to request an examination at 20 months. This has not
yet been implemented in all PCT member countries, as it requires each member country to
change their national patent laws to reflect this extension of time. There is now one set
international filing fee that applies to all applications, regardless of the number of countries
that have been designated by the applicant.
Benefits of the PCT Process
Under the PCT process, an applicant can delay the expenses of filing for up to 30 months,
while evaluating the desirability of filing in a particular country or raising the funds necessary
to do so. The applicant also has the peace of mind of knowing that the application cannot be
rejected on 'prior art' that has emerged in the time between the applicant making a PCT
application and filing a national application.

• World Intellectual Property Organization (WIPO)

Adopted on July 14, 1967 at Stockholm and entered into force on April 26, 1970. WIPO was
established under this Convention with two main objectives - to promote the protection of
intellectual property worldwide and to ensure administrative cooperation among the
intellectual property Unions established by the treaties that WIPO administers. India became
a member on May 1, 1975.
The World Intellectual Property Organization (WIPO) is an international organization
dedicated to facilitating worldwide protection of the rights of creators and owners of
intellectual property.
WIPO's origin dates back to 1883 in Geneva, Switzerland when the Paris Convention entered
into force and an International Bureau was set up to carry out administrative tasks. This
International Bureau evolved over time to become known in 1970 as WIPO. In 1974, WIPO
became a specialized agency of the United Nations and in 1996, WIPO expanded its role into
globalized trade by entering into a cooperation agreement with the World Trade
Organization.
The 23 treaties administered by WIPO are divided into three classes:
 Intellectual Property Treaties that define the internationally agreed basic standards of
intellectual property protection; e.g. Paris Convention
Global Protection System Treaties that aim to ensure that one international registration or
filing will have effect in any of the relevant signatory States; e.g. PCT and Budapest Treaty.
Classification Treaties that create systems that organize information concerning inventions
into indexed structures to enable easy retrieval; e.g. International Patent Classification (IPC).
Through these treaties, WIPO seeks to harmonize national intellectual property legislation
and procedures; provide services for international applications for industrial property rights;
exchange intellectual property information; provide legal and technical assistance to
developing countries; facilitate the resolution of private intellectual property disputes; and
marshal information technology as a tool for storing, accessing and using valuable
intellectual property information.
While the cornerstones of WIPO's treaty system remain the Paris Convention (relating to
patents) and the Berne Convention (relating to copyright), subsequent treaties have not only
widened and deepened the protection they offer, but have encompassed technological change
and new areas of interest and concern.
• Agreement establishing the World Trade Organization (WTO)
Adopted on April 15, 1994 at Marrakesh and entered into force on January 1, 1995. WTO
was established to provide the common institutional framework for the conduct of trade
relations among its Members in matters related to the agreements and associated legal
instruments. India became a member to this agreement on January 1, 1995.
• Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS
Agreement)
Adopted on April 15, 1994 at Marrakesh and entered into force on January 1, 1995. The
TRIPS agreement covers various types of intellectual property and provides guidelines for
minimum standards for protection, procedures and remedies for enforcement of IPR rights
and for issues related to dispute settlement. India became a member on January 1, 1995.
Trade-Related Aspects of Intellectual Property Rights (TRIPS) is arguably the most
important and comprehensive international agreement on intellectual property rights. Member
countries of the WTO are automatically bound by the agreement. The Agreement covers most
forms of intellectual property including patents, copyright, trademarks, geographical
indications, industrial designs, trade secrets, and exclusionary rights over new plant varieties.
Obligations under the TRIPS Agreement
The TRIPS agreement outlines several important trade related aspects of intellectual property.
More specifically, it requires signatory countries to adhere to its criteria for intellectual
property monopoly grants of limited duration, along with requiring adherence to the Paris
Convention, Berne Convention and other WTO Conventions. The criteria are minimum
standards for granting a monopoly over any type of IP, as well as duration limits,
enforcement provisions and methods of IP dispute settlements.
When the TRIPS Agreement took effect on January 1, 1995, all developed countries were
given twelve months from the date of signing the agreement to implement its provisions.
Developing countries and transition economies (under certain conditions) were given five
years, until 2000. Least developed countries (LDCs) were given 11 years, until 2006, to
comply. Some countries have indicated that a longer period should obtain. For
pharmaceutical patents in these LDCs, the term for compliance has been extended to 2016.
There are currently 30 LDCs within the WTO organization bound by TRIPS and another 10
LDCs are waiting accession.
Controversy surrounding Article 27.3
One of the controversies of Article 27.3 focuses on the meaning of 'sui generis' and exactly
what is considered an 'effective' form of plant variety monopoly right. In part because of the
difficulties with this provision, Article 27.3 was to be reviewed in 1999, four years after the
entry into force of the agreement. The review has never been completed, and this Article
remains a hot issue.
TRIPS also provides rules regarding domestic procedures and remedies for the enforcement
of intellectual property rights. The rules are general principles applicable to all enforcement
procedures, i.e. they contain provisions on civil and administrative procedures and
appropriate remedies so that right holders, be they patentees, copyright owners or other
intellectual property owners, can effectively enforce their rights.
Effects of TRIPS and the Resulting Controversies
One of the effects of the TRIPS agreement has been to tie trade and intellectual property
together. Traditionally, developing countries have opposed the range of nontariff barriers,
such as the protection of inventions, which they see as preventing them from trading
competitively throughout the rest of the world. Controversy has arisen over perceptions of
inconsistency between the TRIPS Agreement and other international agreements, such as the
Convention on Biological Diversity. There have also been suggestions, for example, that
patenting restricts the availability of the latest chemicals, pharmaceuticals and fertilizers,
thereby necessitating the use of older, less-safe and more toxic products. There have been
reports that intellectual property rights on plant varieties erode biological diversity, especially
in agriculture. Some countries are also demanding that the existing intellectual property
system should accommodate concepts traditionally outside of the scope of intellectual
property, for example indigenous and traditional knowledge.
The examples above highlight some of the issues surrounding the TRIPS agreement which
are the subject of much international debate.
Many years after TRIPS was first implemented, its provisions are still in a state of review and
alteration. For individual country positions on TRIPS see Grain's TRIPS Review pages. Grain
is an international non-governmental organisation which promotes the sustainable
management and use of agricultural biodiversity based on people's control over genetic
resources and local knowledge.

It is suggested to go through class notes also.