Professional Documents
Culture Documents
Internationalization of IP
Four Phases of development
A. Early Days
Privileges
Statutory Recognition
Related Rights
Pre 1883: Bilateral Phase
Issues
Bilaterals
Spider web of Treaties
No Uniformity
Differences in recognizing the Intellectual creations in different regions
Complexity of subject matter criteria
BIRPI Phase
B. Multilateral Phase:
Paris Convention
Industrial Property:
Patents
Utility models
Industrial designs
Trademarks
Service marks
Trade names
Indication of source or appellation of
origin
Repression of unfair competition
Convention Law consists of those rights which every country has to apply jure conventionis i.e.
Minimum Rights Jure Conventionis
Referral rules indicate to the Courts of the country where protection is claimed that they may
have to look apart from their own law to the country of origin of the work which may be the
country of first publication or country of which the author is national.
Principles
Minimum Rights
Principle of National Treatment
Principle of Reciprocity
National Treatment v. Principle of Reciprocity
Principle of Automatic Protection
The Case of Reservations
Territoriality Concept
Procedural Problems
Stages of Patent procedure
Application
Examination: PCT Phase
Opposition
Grant of Patents: National Phase
Membership of Paris Convention is a pre-requisite condition to join PCT
Objective: To make the acceptance, search and examination stages of the patent procedure to
be conducted on an international basis
An PCT applicant not entitled to International Patent
Madrid Agreement
1891
Basic Registration
Country of Origin
Filing of Intl application on Country of Origin
IP Bureau
Fee
Supplementary fee (No. of Countries you sought protection)
Complimentary fee (Regarding NICE classifications)
Extra fee (For Colour)
Term (20 Yrs)
Madrid Protocol
1989
Basic Application
Individual Fees as per requirement of countries (replaced supplementary & Complimentary fees)
Term (10 Yrs)
1948
Counterfeit Goods
Art. IX (6)
Art. XX (d)
Dissatisfaction with the treaty negotiations hosted by WIPO (attempts to undermine Paris
Convention)
US, EU & Japan enjoys significant negotiating leverage in the GATT/WTO
Package:
Protection of IP in Developing Countries (Developed)
Access to developed markets for Agricultural Products, Textile (Developing)
Dispute Settlement Board (DSB)
Services
Intellectual Property
Investment Policy
IP Negotiations entrusted to GNG (Group of Negotiation on Goods)
1990s witnessed more active participation from EU following US and Japan
Major achievement of the Uruguay Round
Restructuring of DS rules to make decisions binding on all states and to authorize the use of
retaliatory sanctions by prevailing states if their opponents did not alter WTO-incompatible
national laws or provide compensation.
Dunkel Draft
Marrakesh Agreement, 1994 (TRIPS Agreement)
Annex 1C of the Marrakesh Agreement establishing the WTO, was signed in Marrakesh,
Morocco on 15th April 1994
Countries are free to determine the appropriate method for implementing the Agreement
within their own legal system & practice (Art.1 of TRIPS)
Important Cases:
India:
Art.7 & 8
Layout Designs:
Trademarks:
Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods
(1891)
Nairobi Treaty on the Protection of the Olympic Symbol (1981)
Trademark Law Treaty (TLT) (1994)
Singapore Treaty on the Law of Trademarks (2006)
Berne Convention for the Protection of Literary and Artistic Works (1886)
Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting
Organisations (1961)
Geneva Convention for the Protection of Producers of Phonograms Against Unauthorized
Duplication of their Phonograms (1971)
Brussels Convention Relating to the Distribution of Programme Carrying Signals Transmitted by
Satellite (1974)
WIPO Copyright Treaty (WCT) (1996)
WIPO Performances and Phonograms Treaty (WPPT) (1996)
Beijing Treaty on Audiovisual Performances (2012)
Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually
Impaired, or Otherwise Print Disabled (MVT) (2013)
Global Protection
Madrid Agreement on International Registration of Marks (1891) and the Protocol relating to
that Agreement (1989).
Hague Agreement Concerning the International Registration of Industrial Designs (1925)
Lisbon Agreement for the Protection of Appellations of Origin and their International
Registration (1958)
Patent Cooperation Treaty (1970)
Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the
Purposes of Patent Procedure (1977)
Nice Agreement Concerning the International Classification of Goods and Services for the
Purposes of the Registration of Marks (1957)
Locarno Agreement Establishing an International Classification for Industrial Designs (1968)
Strasbourg Agreement Concerning the International Patent Classification (1971)
Vienna Agreement Establishing an International Classification of the Figurative Elements of
Marks (1973)
Draft Substantive Patent Law Treaty
WIPOs Standing Committee on the Law of Patents (SCP)