Leading International Instruments concerning Intellectual Property Rights

Sanjeev kr. Chaswal Advocate and IPR Attorney LL.M. IPR and ARB .and MS Cyber law and security
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Global Initiatives-A history

The disruptions of world economy caused two world wars, thus stalled late 19th century development during the wars years virtually free trade between international community was abandoned. Toward the end of World War II, representatives of the US and its Allied Forces endeavored to work out the arrangements for a new world order in the post war era. As a result of these negotiations, after World War II the US and its Allies planned to establish three important international institutions to liberalize trade and payment.

United nations Monetary and Financial conference Bretton Woods Conference

The United Nations Monetary and Financial Conference opened on July 1, 1944 in Bretton Woods, New Hampshire. Forty-four governments accepted the invitation of President Roosevelt to come together for the purposes of promoting international economic stability. U.S. Secretary of the Treasury Henry Morgenthau was elected president of the Conference.

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Bretton Woods Conference

This conference was attended by 730 delegates of the 45 allied nations this conference Three commissions were established to conduct the work of the Conference: Commission I was charged with formulating the Articles of Agreement of the International Monetary Fund, Commission II assumed the same responsibility with respect to the International Bank for Reconstruction and Development, and Commission III was to consider other means on international financial cooperation

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By the end of the Conference, the Articles of Agreement of the IMF and the Articles of Agreement of the IBRD were ready for ratification by member governments. The Articles of Agreement for both organizations entered into force on December 27, 1945. The Inaugural Meeting of the Boards of Governors of the Fund and the Bank took place on Wilmington Island, Georgia, near Savannah, in March 1946. Bretton Woods Monetary Conference, held on July 1-22, 1944
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Bretton Woods Conference

i)

International Monetary Fund (IMF) was established to facilitate international payments. (ii) International Bank for Reconstruction and Development. After the War, European countries and Japan had to rebuild their production plants; this meant that these countries required a large amount of foreign capital.

Creation of Three institutions including UN

Creation of Three institutions and UN

To encourage free flow of private capital, International Bank for Re-construction and Development (IBRD, now the World Bank) was also established. (iii) To facilitate free trade, International Trade Organization (ITO) was to be born. (iv) As a political complement to these institutions, United Nations was also established in 1945 to replaced the League of Nations.
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Journey from GATT to WTO

From a provisional agreement to an Organisation:
Havana Charter GATT (1 January 1948 31 December 1995) 23 Contracting Parties 123 8 Rounds of Negotiations

WTO was created finally on (1 January 1995)

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GATT NEGOTIATIONS
Year
1947 1949

Place/Name
Geneva Annecy

Topics covered
Tariffs Tariffs

Countries
23 13

1951
1956 1960-61 1964-67 1973-79

Torquay
Geneva Geneva (Dillon Rnd) Geneva (Kennedy Rnd) Geneva (Tokyo Rnd)

Tariffs
Tariffs Tariffs Tariffs & AD Tariffs, NTBs & framework Agreements

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26 26 62 102

Creation of GATT
GATT (General Agreement on Tariffs and trade was the result of an international conference held at Geneva in 1947 to consider a draft charter for the International Trade Organization (ITO). The US initiated negotiations with 22 other countries that led to commitments to regulate 45,000 tariff rates.
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Creation of GATT
General Agreement on Tariffs and Trade. Treaty organization affiliated with the United Nations whose purpose was to facilitate international trade. The primary actions of the organization were to freeze and reduce tariff levels on various commodities and was originally intended to become a part of the International Trade Organization (ITO); however, the ITO failed to be created, so the GATT was left as an independent organization. In 1994, GATT was superseded by the WTO.

Creation of GATT
Technically, GATT was viewed as an agreement under the provisions of US Reciprocal Trade Act of 1934, and hence did not require approval of Congress. It was considered a provisional agreement that would be replaced once the ITO became operational to take over its functions. So GATT began its provisional existence on January 1, 1948, when 23 contracting parties signed the agreement. However, US Congress refused in 1950 to ratify the treaty establishing the ITO.
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What is WTO and its objectives

An international Organization: Organization created by the Marrakesh Agreement

Sui generis organisation (independent from the United Nation system)

Replaces the GATT (created in 1947)

WTO Objectives: Raising standards of living

Ensuring full employment

Ensuring growth of real income and demand

Expanding production and trade Sustainable development

Protection of the environment

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WTO: Functions and its working

WTO Functions: agreements Administer and implement the WTO Forum for negotiations Administer Settlement of Disputes Administer Trade Policy Review Mechanism Technical Assistance to developing countries

The negotiated legal rules included in the various WTO agreements cover the following topics:
Trade in Goods Trade in Services Trade-related aspects of intellectual property rights Dispute Settlement Trade Policy Reviews
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WTO: How does it work?

WTO Structure
Ministerial Conference TPRB General Council DSB Appellate Body Dispute Settlement Panels

Goods Council Committees

Services Council Committees

TRIPS Council

Director-General Secretariat

CTD (Development) CTE (Environment) CRTA (Regionalism) BOP Budget WG (Accessions, Investment, competition, Government Procurement)
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For Patents-The Paris Convention

The Paris Convention was first signed in 1883. Since then the Convention has been revised several times; in 1900 at Brussels, in 1911 at Washington, in 1925 at the Hague, in 1934 at London, in 1958 at Lisbon and in 1967 at Stockholm. The last amendment took place in 1979. India became a member of the Paris Convention on December 7, 1998. (Readers may note the use of the phrase 'Industrial Property' and not intellectual property). The Paris Convention is an international convention for promoting trade among the member countries, devised to facilitate protection of industrial property simultaneously in the member countries without any loss in the priority date. All the member countries provide national treatment to all the applications from the other member countries for protection of industrial property rights.

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The PCT and its Provisions

The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application. The primary provisions with respect to trademarks are summarized as follows Articles 2 and 3 - Eligible Parties Article 4 - Convention Priority Article 6bis - Well-known Marks Article 6quinquies - telle quelle Registration Article 6sexies - Protection of Service Marks Article 6septies - Unauthorized Registration by Agent or Representative Article 8 - Protection of Trade Names Article 10 bis - Unfair Competition 17

The Paris Convention Treaty

A single filing of an international application is made with a Receiving Office (RO) in one language. It then results in a search performed by an International Searching Authority (ISA), accompanied by a written opinion regarding the patentability of the invention, which is the subject of the application. It is optionally followed by a preliminary examination, performed by an International Preliminary Examining Authority (IPEA). Finally, the relevant national or regional authorities administer matters related to the examination of application (if provided by national law) and issuance of patent. A PCT application does not itself result in the grant of a patent, since there is no such thing as an "international patent", and the grant of patent is a prerogative of each national or regional authority.
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The Paris Convention Treaty

In other words, a PCT application, which establishes a filing date in all contracting states, must be followed up with the step of entering into national or regional phases in order to proceed towards grant of one or more patents. The PCT procedure essentially leads to a standard national or regional patent application, which may be granted or rejected according to applicable law, in each jurisdiction in which a patent is desired.

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What is a PCT Application?

The Patent Cooperation Treaty or PCT is an international agreement for filing patent applications having effect in up to 117 countries. Although the PCT system does not provide for the grant of an international patent, the system: simplifies the process of filing patent applications delays the expenses associated with applying for patent protection in other countries and allows the inventor more time to assess the commercial viability of his/her invention. Under the PCT, an inventor can file a single international patent application in one language with one patent office in order to simultaneously seek protection for an invention in up to 117 countries throughout the world.
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International Convention for the Protection of New Varieties of Plants (UPOV)

The International Union for the Protection of New Varieties of Plants (UPOV) was established by the International Convention for the Protection of New Varieties of Plants ("UPOV Convention"). The UPOV Convention was adopted on December 2, 1961, by a Diplomatic Conference held in Paris. The UPOV Convention came into force on August 10, 1968, having been ratified by the United Kingdom, the Netherlands and Germany. The UPOV Convention has been revised on November 10, 1972, on October 23, 1978, and on March 19, 1991, in order to reflect technological developments in plant breeding and experience acquired with the application of the UPOV Convention.
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Budapest Treaty on the Deposit of Microorganisms

To overcome these problems, intellectual property offices in many countries recommended that the written description of an invention involving the use of a new microorganism be supplemented by the deposit of the microorganism in a recognized culture collection. The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure was introduced in 1980 in an effort to implement such recommendations. Microorganisms that are naturally occurring cannot be the subject of patents. However, a naturally occurring microorganism that is manipulated or altered such as through gene insertion, mutation etc can be the subject of a patent.
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Budapest Treaty
Patent law requires that the details of an invention must be fully disclosed in order for others skilled in the relevant field to be able to replicate it. Disclosure is normally achieved by means of a written description and supplemented where necessary by drawings. In the case of inventions involving the use of microorganisms, these patentability requirements may be difficult to fulfill. EXAMPLE: It would be almost impossible to describe an organism isolated from soil and improved by selection, e.g. mutation, so that another person could be guaranteed to isolate and improve exactly the same strain from the soil in exactly the same way
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Madrid System for the International Registration of Trade Marks The Madrid system for the international registration of marks (the Madrid system) established in 1891 functions under the Madrid Agreement (1891), and the Madrid Protocol (1989). It is administered by the International Bureau of WIPO located in Geneva, Switzerland. Thanks to the international procedural mechanism, the Madrid system offers a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional trademark office
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Madrid System for Registration of Marks An international mark so registered is equivalent to an application or a registration of the same mark effected directly in each of the countries designated by the applicant. If the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is the same as if it had been registered by that Office. The Madrid system also simplifies greatly the subsequent management of the mark, since it is possible to record subsequent changes or to renew the registration through a single procedural step. Further countries may be designated 25 subsequently.

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957, as revised at Stockholm on July 14, 1967,and at Geneva on May 13, 1977,and amended on September 28, 1979 Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks Done at Vienna on June 12, 1973 as amended on October 1, 1985
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Nice Agreement International Classification

The Trademark Law Treaty

Another treaty of some importance affecting international practice, the Trademark Law Treaty (TLT) was adopted on October 27, 1994 and signed in Geneva on October 28, 1994 by thirtynine member countries The original aim of the negotiations for this treaty, which in its infancy was entitled a "Proposed Treaty on the Harmonization of Laws for the Protection of Marks", was to harmonize the trademarks laws of the eventual signatory states in numerous areas, both administrative and substantive, including harmonization of the definition of registerable marks; 27

The Trademark Law Treaty

provision for registration of sound marks; elimination of the "doing business" requirement for parties to own trademark registrations; provision of opposition procedures; harmonization of the definition of objectionable marks, both on the grounds of absolute and relative registrability; harmonization of the rights conferred by registration and when such rights are exhausted; and the protection of well-known marks and marks of high renown 28

For Copyright-The Berne Convention

The Berne Convention, or to use its formal title Berne Convention for the Protection of Literary and Artistic Works is an international agreement which sets out to harmonize the way that copyright is regulated at an international level. The convention was first adopted in 1886 in Berne, Switzerland (hence the name), and since that time it has seen much change and revision: Completed at Paris (1896), revised at Berlin (1908), completed at Berne (1914), revised at Rome (1928), at Brussels (1948), at Stockholm (1967) and at Paris (1971), and amended in 1979.
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The Berne Convention and its working

Prior to the Berne Convention (and to a lesser degree the Universal Copyright Convention [UCC]), copyright law would usually only apply at a national level. This often meant that the outside of the authors home country, there was very little protection for copyright work. As you will see from the list of Berne Convention signatories, most nations have adopted the convention. Additionally, the TRIPs Agreement requires all World Trade Organization members The Berne Convention requires member nations to offer the same protection to authors from other member countries that it provides to its own nationals. It also sets out a common framework of protection, and specifies minimum protection levels that are required. 30

The Berne Convention states that all works shall be protected for at least 50 years after the author's death with the following exceptions For photography the minimum term is 25 years from the year the photograph was created For cinematography the minimum term is 50 years after first showing, or, if the work has never been shown, 50 years from the creation date. Note: These are the minimum terms of protection. Countries are free to provide longer terms of protection under national law. In the UK for example the standard period of protection is 70 years from the death of the author. 31

Berne Convention basic norms

Universal Copyright Convention

The Universal Copyright Convention (or UCC), adopted at Geneva in 1952, is one of the two principal international conventions protecting copyright; the other is the Berne Convention. The UCC was developed by United Nations Educational, Scientific and Cultural Organization as an alternative to the Berne Convention for those states which disagreed with aspects of the Berne Convention, but still wished to participate in some form of multilateral copyright protection.
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UCC 1952
These states included developing countries and the Soviet Union, which thought that the strong copyright protections granted by the Berne Convention overly benefited Western developed copyright-exporting nations, and the United States and most of Latin America. The United States and Latin America were already members of a PanAmerican copyright convention, which was weaker than the Berne Convention. The Berne Convention states also became party to the UCC, so that their copyrights would exist in non-Berne convention states. 33

 The Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations was accepted by members of BIRPI, the predecessor to the modern World Intellectual Property Organization, on October 26, 1961. Convention drew up response to new technologies like tape recorders that made the reproduction of sounds and images easier and cheaper than ever before. Whereas earlier copyright law, including international agreements like the 1886 Berne Convention, had been written to regulate the circulation of printed materials, the Rome Convention responded to the new circumstance of ideas variously represented in easily reproduced units by covering performers and producers of recordings under copyright:

Rome Convention

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Rome Convention
The agreement extended copyright protection for the first time from the author of a work to the creators and owners of particular, physical manifestations of intellectual property, such as audiocassettes or DVDs. Performers (actors, singers, musicians, dancers and other persons who perform literary or artistic works) are protected against certain acts they have not consented to. Such acts are: the broadcasting and the communication to the public of their live performance; the fixation of their live performance; the reproduction of such a fixation if the original fixation was made without their consent or if the reproduction is made for purposes different from those for which they gave their consent.
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Rome Convention
Producers of phonograms enjoy the right to authorize or prohibit the direct or indirect reproduction of their phonograms. Phonograms are defined in the Rome Convention as meaning any exclusively aural fixation of sounds of a performance or of other sounds. When a phonogram published for commercial purposes gives rise to secondary uses (such as broadcasting or communication to the public in any form), a single equitable remuneration must be paid by the user to the performers, or to the producers of phonograms, or to both; contracting States are free, however, not to apply this rule or to limit its application.
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Rome Convention
Broadcasting organizations enjoy the right to authorize or prohibit certain acts, namely: the rebroadcasting of their broadcasts; the fixation of their broadcasts; the reproduction of such fixations; the communication to the public of their television broadcasts if such communication is made in places accessible to the public against payment of an entrance fee.

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G I in Madrid system?
The term Geographical Indications covers different concepts such as the appellation of origin, a term which has been defined at the international level in the Lisbon Agreement for the Protection of Appellation of Origin Appellation of origin is a type of GI which has a strong link between the origin of the product and it characteristics: the quality and characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors.

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 International trade made it important to try to harmonize the different approaches and standards that governments used to register GIs. The first attempts to do so were found in the Paris Convention on trademarks (1883), followed by a much more elaborate provision in the 1958 Lisbon Agreement on the Protection of Appellations of Origin and their Registration. Few countries joined the Lisbon agreement, however: by 1997 there were only 17 members (Algeria, Bulgaria, Burkina Faso, Congo, Cuba, Czech Republic, France, Gabon, Haiti, Hungary, Israel, Italy, Mexico, Portugal, Slovakia, Togo, Tunisia). About 170 geographical indications were registered by Lisbon Agreement members as of 1997.
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G I in Madrid system?

The Hague System for the International Registration of Industrial Designs provides a mechanism for registering a design in countries and/ or intergovernmental organizations member of the Hague Agreement. It is administered by the International Bureau of WIPO located in Geneva, Switzerland. This System gives the owner of an industrial design the possibility to have his design protected in several countries by simply filing one application with the International Bureau of WIPO, in one language, with one set of fees in 40 one currency (Swiss Francs).

Hague System for the International Registration of Industrial Designs

Hague System
An international registration produces the same effects in each of the designated countries, as if the design had been registered directly with each national office, unless protection is refused by the national office of that country. The Hague System simplifies the management of an industrial design registration, since it is possible to record subsequent changes or to renew the registration through a single procedural step with the International Bureau of WIPO.
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LOCARNO AGREEMENT
LOCARNO AGREEMENT ESTABLISHING AN INTERNATIONAL CLASSIFICATION FOR INDUSTRIAL DESIGNS Signed at Locarno on October 8, 1968 as amended on September 28, 1979 (1) The countries to which this Agreement applies constitute a Special Union. (2) They adopt a single classification for industrial designs (hereinafter designated as "the international classification"). (3) The international classification shall comprise: (i) a list of classes and subclasses; (ii) an alphabetical list of goods in which industrial designs are incorporated, with an indication of the classes and 42 subclasses into which they fall;

Agreement on Trade-Related Aspects of Intellectual Property Rights The TRIPS is off shoot of the Marrakesh Agreement establishing the world WTO (World Trade Organisation) signed in Marrakesh, Morocco. The Agreement on Trade-Related Aspects of Intellectual Property Rights (or TRIPS Agreement) set the standards for intellectual property protection in the world today. It came into force on 1 January 1995 and is binding on all members of the World Trade Organization (WTO).
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Trade-Related Aspects of Intellectual Property Rights The TRIPS Agreement sets minimum standards in the international rules governing patents, including on medicines. Countries that are members of the WTO (today, more than 150 countries) agree to certain common standards in the way they enact and implement their patent laws. These standards include, amongst others, that patents be given for a minimum of 20 years; that patents may be given both for products and processes; and that pharmaceutical test data be protected against unfair commercial use.
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 The three main features of the Agreement are: Standards. In respect of each of the main areas of intellectual property covered by the TRIPS Agreement, the Agreement sets out the minimum standards of protection to be provided by each Member. Enforcement. The second main set of provisions deals with domestic procedures and remedies for the enforcement of intellectual property rights. The Agreement lays down certain general principles applicable to all IPR enforcement procedures. Dispute settlement. The Agreement makes disputes between WTO Members about the respect of the TRIPS obligations subject to the WTO's dispute settlement procedures.
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Trade-Related Aspects of Intellectual Property Rights

PART II Standards Concerning the Availability, Scope and Use of Intellectual Property Rights

1.
2. 3. 4. 5. 6. 7. 8.

Copyright and Related Rights

Trademarks Geographical Indications Industrial Designs Patents Layout-Designs (Topographies) of Integrated Circuits Protection of Undisclosed Information Control of Anti-Competitive Practices in Contractual Licenses.
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Trade-Related Aspects of Intellectual Property Rights

PART III Enforcement of Intellectual Property Rights 1. General Obligations 2. Civil and Administrative Procedures and Remedies 3. Provisional Measures 4. Special Requirements Related to Border Measures 5. Criminal Procedures PART IV Acquisition and Maintenance of Intellectual Property Rights and Related Inter-Partes Procedures PART V Dispute Prevention and Settlement PART VI Transitional Arrangements PART VII Institutional Arrangements; Final Provisions
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Trade-Related Aspects of Intellectual Property Rights

PART IV Acquisition and Maintenance of Intellectual Property Rights and Related Inter-Partes Procedures PART V Dispute Prevention and Settlement PART VI Transitional Arrangements PART VII Institutional Arrangements; Final Provisions
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 Intellectual Property Rights (IPRs) were brought into GATT Uruguay Round Agenda in the late 1980s through direct pressure by US pharmaceutical companies. They were complaining that since numerous countries do not provide adequate patent protection for drugs, they were being denied potential royalty payments. Quick to take up their cause, the US government bemoaned that their top 200 companies were losing $24 billion per year to such piracy. Developing countries resisted the introduction of IPRs into GATT, but they lacked the critical mass to block it. However, as a compromise only the trade aspects of IPRs were included hence the name. The thinking was that this could only cover matters related to trade.
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 As a result of this Agreement, the protection of intellectual property became an integral part of WTO. The Agreement covers each of the main areas of intellectual property. One of these areas in patents includes plant variety protection. Article 27.3(b) allows Member States to exclude plants and animals from patent protection subject to the establishment of an effective sui-generis system. Developing countries Africa includedwere supposed to have put a sui-generis system in place by the end of 1999. The patent system of intellectual property rights denies property rights to local and indigenous knowledge, practices and innovations. TRIPs only recognises as worthy of protection inventions that conform to the Northern definition. Rights are recognized only when they generate profits and capable of industrial application. This excludes all sectors of society who produce outside the industrial code of production and for social good. Furthermore, the innovation to be 50 accorded patent rights must be trade related.

TRIPs
TRIPs raises important questions for Africa in three main areas: Biopiracy: under TRIPs, the right of communities to control their natural resources is not guaranteed. Indeed TRIPs does not recognise a communitys ownership of the resources it has tended for thousands of years Farmers Rights: As with community Rights, farmers rights are not provided for under the TRIPs agreement. TRIPs does not permit farmers to save seed grown on their own land for future use. Health and Pharmaceuticals: Patents on pharmaceuticals have led to high economic and social costs for countries and peoples in Africa. As the Doha Declaration confirms, TRIPs includes mechanisms intended to safeguard public health 51 while respecting intellectual property rights

 Manufacturers of medicinal drugs have taken advantage of the TRIPs Agreement to brand and patent their drugs to maximise on their profits. This has led to the suffering of many people who cannot afford to buy the patented drugs because of their high costs. WTO members, mostly developing countries, realising the suffering that their people were facing especially in the wake of HIV/AIDS, Malaria and Tuberculosis, advocated for the November 2001 Doha Ministerial Conference to revoke certain provisions of the TRIPs Agreement to curtail the Public Health problems countries were facing. Negotiations on the Doha Declaration on TRIPs and Public Health started in September 2002, with countries having been given a deadline to come up with a solution by the end of that year. No agreement was reached as other countries were backtracking; especially the US and the European Union who wanted to limit the scope of diseases 52 to be covered under the Declaration

World Intellectual Property

Organization (WIPO)
The World Intellectual Property Organization (WIPO) is one of the 17 specialized agencies of the united nations. WIPO was created in 1967 "to encourage creative activity, to promote the protection of intellectual property throughout the world". WIPO currently has 184 member states, administers 24 international treaties and is headquartered in Geneva Switzerland. The current Director-General of WIPO is Francis Gurry, who took office on October 1, 2008. 183 of the Un memebers of WIPO. Non-members are the states of small islands
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World Intellectual Property Organization (WIPO)

The predecessor to WIPO was the BIRPI (Bureaux Internationaux Runis

pour la Protection de la Proprit Intellectuelle, French acronym for United International Bureaux for the Protection of Intellectual Property), which had been
established in 1893 to administer the Berne convention for the protection of literary and Artistic works and the Paris Convention for the Protection of Industrial Property.

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World Intellectual Property Organization (WIPO)

WIPO was formally created by the Convention Establishing the World Intellectual Property Organization, which entered into force on April 26, 1970. Under Article 3 of this Convention, WIPO seeks to "promote the protection of intellectual property throughout the world." WIPO became a specialized agency of the UN in 1974.
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 The Agreement marked a transition for WIPO from the mandate it inherited in 1967 from BIRPI, to promote the protection of intellectual property, to one that involved the more complex task of promoting technology transfer and economic development Unlike other branches of the United Nations, WIPO has significant financial resources independent of the contributions from its Member States. In 2006, over 90% of its income of just over CHF 250 million[8] was expected to be generated from the collection of fees by the International Bureau (IB) under the intellectual property application and registration systems which it administers (the Patent Cooperation Treaty, the Madrid system for trade marks and the Hague system for industrial designs)56

THANK YOU FOR YOUR ATTENTION !

ANY QUESTIONS?

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