IPL Notes | Mahindra Prabu

Internationalization of IP

Four Phases of development

 The Early Days

 The BIRPI Phase: 1883-1971
 The TRIPS Phase: 1971-1994
 Pre TRIPS Discussion (1971-1986)
 The Uruguay Round (1986-1994)
 1994-Today: The Paradigmatic Phase

A. Early Days
 Privileges
 Statutory Recognition
 Related Rights

Pre – 1883: Bilateral Phase

 Domestic only protection

 National Creations & Inventions v. Foreign Creations & Inventions
 Foreign Works – Pirated @ lower price

Issues

 Bilaterals
 Spider web of Treaties
 No Uniformity
 Differences in recognizing the Intellectual creations in different regions
 Complexity of subject matter criteria

BIRPI Phase

 Paris Convention (1883)

 Berne Convention (1886)
 BIRPI – Bureaux Internationaux Reunis pour la Protection de la Propriete Intellectuelle

B. Multilateral Phase:

Paris Convention

Industrial Property:

 Patents  Trade names

 Utility models  Indication of source or appellation of
 Industrial designs origin
 Trademarks  Repression of unfair competition
 Service marks
 IPL Notes | Mahindra Prabu

Basic Principles of Paris Convention

 Principle of National Treatment:

 Principle of Independence of Patents
 Right to Priority

Berne Convention for the Protection of Literary and Artistic Works

Objective

 Authors and their Works

 Influence of Publishers
 The Country of first publication becomes the country of origin of the work (geographical
criterion)
 Unpublished Works: Country of origin of the author

Convention Law & Referral Rules

 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

Patent Cooperation Treaty, 1977

 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
 IPL Notes | Mahindra Prabu

Madrid System

 International Registration of Trade Mark

 Madrid Agreement (1891)
 Madrid Protocol (1989)
 One Application – International Bureau of WIPO
 Protection in Designate Countries

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)

Difference between Madrid Agreement & Madrid Protocol

Madrid Agreement
 Central Attack ( 5yrs period of time)
 Entire system collapses
Madrid Protocol
 Central Attack ( 5yrs period of time)
 Instead of collapse it is transformed into National application of Union Countries

TRIPS Agreement

1971-1986 Phase: Pre-TRIPS Discussions

Why IP was included in GATT?

 1948
 Counterfeit Goods
 Art. IX (6)
 Art. XX (d)
 IPL Notes | Mahindra Prabu

Institutional features of GATT/WTO:

 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)

1986-1994: The Uruguay Round

Agenda: Inclusion of IP

Subject Matter:

 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)

National Treatment & Most Favored National Treatment

Structure of TRIPS

 General Provisions & Basic Principles (1)

 Standards concerning the availability, scope & use of IPRs (2)
 CR & RR; TM; GI; ID; P; LD; UDI & Control of Anti-competitive practices in contractual licenses
 Enforcement of IPRs (3)
 Acquisition & Maintenance (4)
 Dispute Prevention & Settlement (5)
 Transitional Arrangements (6)
 Institutional Arrangements (7)
 IPL Notes | Mahindra Prabu

Salient features:

 Universal Minimum Standards

 Subject matter to be protected
 Rights to be conferred
 Permissible exceptions to those rights
 Minimum duration of protection
 Art 2.1 & Art 9.1 (Berne & Paris – Plus Agreement)
 Enforcement
 Domestic procedures and remedies for the enforcement of IPRs
 General Principles applicable to all IPR enforcement procedures
 Civil & Administrative Procedure & Remedies
 Special requirements related to border measures and criminal procedures
 Dispute Settlement

Important Cases:

India:

 DS50: (US) ‘Mail box’ & EMR

 DS79: (EU) ‘Mail box’ & EMR

Canadian Pharmaceutical Case:

Art.30 (3 step test)

 Stockpiling exception v. Regulatory review exception

 Roche Products, Inc v. Bolar Pharmaceutical Co., Inc., 733 F.2d 858 (1984).
 Grounds for Compulsory License

Art.7 & 8

 Public Health & Nutrition

 Environmental Protection
 Public Interest
 Socio-Economic Development
 To prevent abuse of IPR
 Promote Transfer of Technology

Art.31 reduces the scope of CL

 Compulsory License must be non-exclusive, non-assignable & subject to a remuneration to be

paid to the patentee
 IPL Notes | Mahindra Prabu

International Treaties on IP

IP Protection:

Patent:

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

 Patent Law Treaty (2000)

Layout Designs:

 Treaty on Intellectual Property in Respect of Integrated Circuits (Washington Treaty) (1989)

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)

Copyrights & Related Rights:

 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)
 IPL Notes | Mahindra Prabu

Classification

 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
 WIPO’s Standing Committee on the Law of Patents (SCP)

TRIPS Plus Phase: FTAs, BITs, RTAs