Protection of Industrial Property and the Main Treaties Administered by WIPO

1
Protection of Industrial Property and
theMain Treaties Administered by WIPO

• IGNOU, New Delhi
• March 2007

2
Basic Notions of Industrial Property

• Movable and immovable property
• Intellectual property - creations of the human
  mind
• Inscription - WIPO building Human genius is
  the source of all works of art and invention.
  These works are the guarantee of a life worthy of
  men. It is the duty of the State to ensure with
  diligence the protection of the arts and
  inventions.

3
Fields of Industrial Property Protection

• Patents
• Industrial designs
• Integrated circuits
• Trademarks
• Geographical indications
• Protection against acts of unfair competition

4
Patents

• Statutory right granted by the State
• For a limited period of time
• In exchange of full disclosure of the invention
• Invention could relate to a product or a process

5
Conditions for Patentability

• Novelty the invention must not have been
  disclosed to the public anywhere in the world
  (prior art) before the filing date or priority
  date
• Inventive step having regard to the prior art -
  invention must not be obvious to a person having
  ordinary skill in the art
• Industrial applicability must be capable of
  application in industry in a general sense

6
Rights Conferred

• Article 28 of TRIPS right to exclude third
  parties from exploiting (making, using, selling
  or importing) the invention in the country in
  which the patent was granted for a period of 20
  years from the filing date

7
Rationale of Patent Protection

• Reward creative activity
• Stimulates creativity and investment in research
  and development
• Results in technological growth
• Encourages disclosure
• Technology transfer

8
Industrial Designs

• The ornamental or aesthetic aspect of a useful
  article
• Must be new or original
• Design should not be dictated by functional
  considerations
• Includes the protection of textile designs

9
Exclusive Rights

• Right to prevent others from applying (making,
  selling or importing) the protected design to
  commercial products for a period of 10 years

10
Rationale for Protection

• Encouragement of indigenous creativity
• Utilization of raw products
• Tourism and export markets
• Job creation - SMEs

11
Integrated Circuits

• Layout-designs of integrated circuits are also
  creations of the human mind
• They are the result of an enormous investment
• Constant need to reduce the dimensions of
  existing IC and to increase their functions
• Can easily be copied or reproduced for a fraction
  of the initial investment

12
Conditions for Protection

• Layout-design should be the result of the
  creators own intellectual efforts
• Should not be commonplace among creators of
  layout-designs and manufacturers of integrated
  circuits at the time of its creation

13
Protection

• Term - at least 10 years
• Exceptions (not infringement)
• used for purposes of evaluation, analysis,
  research or teaching
• if copied in order to prepare a second, original,
  layout-design

14
Trademarks

• TRIPS (Article 15) Any sign, or any combination
  of signs, capable of distinguishing the goods or
  services of one undertaking from those of other
  undertakings, shall be capable of constituting a
  trademark

15
Signs Eligible for Registration

• Signs, in particular
• words (including personal names)
• letters
• numerals
• figurative elements
• combinations of colors
• any combination of the signs mentioned

16
Distinctiveness

• Where not inherently capable of distinguishing
  the goods or services - may make registrability
  depend on distinctiveness acquired through use
• Members may require, as a condition for
  registration, that signs be visually perceptible

17
Bars to Registration

• Contrary to morality or public order
• Misleading - nature of goods / services source
  characteristics or suitability for the purpose
• State emblems
• Existing third party rights

18
Exclusive Rights

• To prevent others from using identical or similar
  marks on identical or similar goods in respect of
  which mark is registered
• TRIPS - 7 years
• TLT - 10 years
• Both - renewable indefinitely

19
Rationale for Protection

• Variety of goods / services - marks identify and
  differentiate
• Assist consumer in choice
• Stimulate competition - greater attention to
  quality and safety of goods
• Economic growth
• Important aspect of commercial activity

20
Trade Names

• Paris Convention Trade Names shall be protected
  without the obligation of filing or registration,
  whether or not it forms part of a trademark

21
Geographical Indications

• TRIPS Indications which identify a good as
  originating in the territory of a Member, or a
  region or locality in that territory, where a
  given quality, reputation or other characteristic
  of the good is essentially attributable to its
  geographical origin

22
Rationale for Protection

• Serve to identify goods to the consumer
• Prevents misleading of the consumer
• Promotes quality and builds regional industry
• Protects the interests of traditional producers -
  helps to project their goods onto the
  international marketplace

23
Protection Against Acts of Unfair Competition

• Paris Convention (Article 10bis) Any act of
  competition contrary to honest practices in
  industrial or commercial matters constitutes an
  act of unfair competition
• create confusion with activities of competitor
• false allegations - to discredit competitor
• misleading the public in relation to the goods

24
Undisclosed Information

• TRIPS (Article 39) Secret information
• secret - not generally known or readily
  accessible
• commercial value because it is secret
• reasonable steps to keep it secret

25
Rationale for Protection

• Used in industry - fragrance, soft drinks, fast
  foods, etc.

26
Main Treaties Administered by WIPO - IP Protection

• Paris Convention
• Patent Law Treaty
• Trademark Law Treaty
• Nairobi Treaty

27
Main Treaties Administered by WIPO - Global
Protection System

• Patent Cooperation Treaty (PCT)
• Budapest Treaty
• Hague Agreement
• Lisbon Agreement
• Madrid Agreement (Marks)
• Madrid Protocol

28
Main Treaties Administered by WIPO -
Classification

• Locarno Agreement
• Nice Agreement
• Strasbourg Agreement
• Vienna Agreement

29
Paris Convention for the Protection of
Industrial Property (1883)

• The Convention applies to industrial property in
  the widest sense, including patents, marks,
  industrial designs, utility models, trade names,
  geographical indications and the repression of
  unfair competition.
• The substantive provisions of the Convention fall
  into three main categories national treatment,
  right of priority, common rules.

30
Paris Convention for the Protection of Industrial
Property (1883)

• National treatment each contracting State must
  grant the same protection to nationals of the
  other contracting States as it grants to its own
  nationals.

31
Paris Convention for the Protection of Industrial
Property (1883)

• Right of priority on the basis of a regular
  first application filed in one of the contracting
  States, the applicant may, within a certain
  period of time (12 months for patents and utility
  models 6 months for industrial designs and
  marks), apply for protection in any of the other
  contracting States these later applications will
  then be regarded as if they had been filed on the
  same day as the first application.

32
Paris Convention for the Protection of Industrial
Property (1883)

• The Convention lays down a few common rules which
  all the contracting States must follow.

33
Patent Law Treaty (2000)

• To harmonize and streamline formal procedures in
  respect of national and regional patent
  applications and patents, and thus to make such
  procedures more user-friendly.
• With the significant exception of the filing date
  requirements, the PLT provides maximum sets of
  requirements, which the Office of a Contracting
  Party may apply. This means that a Contracting
  Party is free to provide for requirements that
  are more generous from the viewpoint of
  applicants and owners, but are mandatory as to
  the maximum that an Office can require from
  applicants or owners.
• The Treaty will enter into force on April 28,
  2005.

34
Trademark Law Treaty (1994)

• To make national and regional trademark
  registration systems more user-friendly. This is
  achieved through the simplification and
  harmonization of procedures and through removing
  pitfalls, thus making the procedure safe for the
  owners of marks and their representatives

35
T L T (1994) (contd)

• The great majority of the provisions of the TLT
  concern the procedure before the trademark office
  which can be divided into three main phases
  application for registration, changes after
  registration and renewal. The rules concerning
  each phase are so constructed as to make clear
  what a trademark office can require and what that
  office cannot require from the applicant or the
  owner.

36
Nairobi Treaty on the Protection of the Olympic
Symbol (1981)

• All States are under the obligation to protect
  the Olympic symbolfive interlaced ringsagainst
  use for commercial purposes (in advertisements,
  on goods, as a mark, etc.) without the
  authorization of the International Olympic
  Committee.
• An important effect of the Treaty is that, if the
  International Olympic Committee grants
  authorization for the use of the Olympic symbol
  in a State party to the Treaty, the National
  Olympic Committee of that State is entitled to a
  part in any revenue the International Olympic
  Committee obtains for granting the said
  authorizations.

37
Patent Cooperation Treaty (PCT) (1970)

• Makes it possible to seek patent protection for
  an invention simultaneously in each of a large
  number of countries by filing an international
  patent application.
• Regulates in detail the formal requirements with
  which any international application must comply.
• International Search and Preliminary Examination.
• Patents are granted by national/regional patent
  office.
• Simpler and cost-effective way of patenting
  abroad.
• 136 member States over 145,000 applications in
  2006.

38
Budapest Treaty on the International Recognition
of the Deposit of Microorganisms for the Purposes
of Patent Procedure (1977)

• A contracting State which allows or requires the
  deposit of microorganisms for the purposes of
  patent procedure must recognize, for such
  purposes, the deposit of a microorganism with any
  international depositary authority,
  irrespective of whether such authority is on or
  outside the territory of the said State.

39
Budapest Treaty on the Deposit of Microorganisms
(1977) (contd)

• Establishes a uniform system of deposit,
  recognition and furnishing of samples of
  microorganisms
• Advantageous to the depositor if he is an
  applicant for patents in several contracting
  States - saves time, money and increases security

40
Madrid System for International Registration of
Marks - Agreement and Protocol

• The system makes it possible to protect a mark in
  a large number of countries by obtaining an
  international registration which has effect in
  each of the Contracting Parties that has been
  designated

41
Madrid System for International Registration of
Marks - Agreement and Protocol
(Contd)

• Instead of filing many national applications in
  all countries of interest, in several different
  languages, in accordance with different national
  procedural rules and regulations and paying
  several different (and often higher) fees, an
  international registration may be obtained by
  simply filing one application with the
  International Bureau (through the Office of the
  home country), in one language (either English or
  French) and paying one set of fees only.

42
Hague Agreement Concerning the International
Deposit of Industrial Designs

• The Agreement makes it possible to protect an
  industrial design in a large number of countries
  by obtaining an international deposit which has
  effect in each of the Contracting Parties that
  has been designated.
• Instead of filing many national applications in
  all countries of interest, in several different
  languages, an international deposit may be
  obtained by simply filing one application with
  the International Bureau or through the Office of
  the home country, in one language (either English
  or French) and paying one set of fees only.

43
Lisbon Agreement for the Protection of
Appellations of Origin and their International
Registration (1958)

• To provide for the protection of appellations of
  origin, that is, the geographical name of a
  country, region, or locality, which serves to
  designate a product originating therein, the
  quality and characteristics of which are due
  exclusively or essentially to the geographic
  environment, including natural and human
  factors.

44
Lisbon Agreement (1958) (Contd..)

• Such names are registered by WIPO upon the
  request of the competent authorities of the
  interested contracting State. WIPO communicates
  the registration to the other contracting States.
• A registered appellation may not be declared to
  have become generic in a contracting State as
  long as it continues to be protected in the
  country of origin.

45
Strasbourg Agreement Concerning the International
Patent Classification (1971)

• Establishes the International Patent
  Classification (IPC) which divides technology
  into eight sections with approximately 67,000
  subdivisions. Each subdivision has a symbol
  consisting of Arabic numerals and letters of the
  Latin alphabet.

46
Strasbourg Agreement Concerning the International
Patent Classification (1971)
(Contd..)

• Classification is indispensable for the retrieval
  of patent documents in the search for prior
  art. Such retrieval is needed by patent-issuing
  authorities, potential inventors, research and
  development units, and others concerned with the
  application or development of technology.
• IPC is continuously revised and a new edition is
  published every five years.

47
Nice Agreement Concerning the International
Classification of Goods and Services for the
Purposes of the Registration of Marks (1957)

• Establishes a classification of goods and
  services for the purposes of registering
  trademarks and service marks.
• The Classification consists of a list of classes
  there are 34 classes for goods and eleven for
  servicesand an alphabetical list of the goods
  and services. The latter comprises 11,000 items.
• Both lists are, from time to time, amended and
  supplemented
• The eighth edition of the Classification entered
  into force on January 1, 2002.

48
Vienna Agreement Establishing an International
Classification of the Figurative Elements of
Marks (1973)

• Establishes a classification for marks which
  consist of or contain figurative elements. The
  competent offices of the contracting States must
  indicate in the official documents and
  publications relating to registrations and
  renewals of marks the appropriate symbols of the
  Classification.
• The Classification consists of 29 categories, 144
  divisions and some 1,887 sections in which the
  figurative elements of marks are classified.
• The current (fifth) edition has been in force
  since January 1, 2003, and will be replaced by
  the sixth edition on January 1, 2008.

49
Locarno Agreement Establishing an International
Classification for Industrial Designs (1968)

• Establishes a classification for industrial
  designs. The offices of the contracting States
  must indicate in the official documents
  reflecting the deposit or registration of
  industrial designs the appropriate symbols of the
  Classification.
• The Classification consists of 32 classes and 223
  subclasses. It also comprises an alphabetical
  list containing some 6,831 indications of
  different kinds of goods.
• The latest (8th) edition of the Locarno
  Classification entered into force on January 1,
  2004.