Glossary en PDF

GLOSSARY: TERMS AND DEFINITIONS
You will find here a Glossary of legal terms defining the principles
applicable to intellectual property subjects presented in the distance learning
course of the WIPO Academy.
The intent of this Glossary is to assist you in learning how these relevant
terms are used within WIPO's mandated activities, as such some terms give
definitions as found in WIPO-administered treaties, or official literature, and
others simply point to a term's usage by listing a source treaty article in which
the term may be found.
It must be noted, however, that these terms may or may not be those
currently used within the legal system where you live or work. CARE
SHOULD BE TAKEN to clarify any differences between terms as used and
defined herein, and as used within your legal system.
ABBREVIATIONS & LINKS TO TREATIES:
Art., Arts. = Article, Articles.
para., paras.= paragraph, paragraphs.
Sec. = Section.
A = Arabic
E = English
F = French
R = Russian
S = Spanish
Berne = Berne Convention for the Protection of Literary and Artistic Works.
BIRPI Model Law (Marks) = Model Law for Developing Countries on Marks, Trade
Names, and Acts of Unfair Competition.
Draft 1991 = Draft Treaty Supplementing the Paris Convention for the Protection of
Industrial Property as far as Patents are Concerned (Patent Law Treaty).
GCNR = WIPO Glossary of terms of the law of Copyright and Neighboring Rights, WIPO
Publ. # 819-E,F,A, 1980.
HIDIP = Handbook on Industrial Property Information and Documentation, WIPO
Publication 208-E, 1995.
IPRM = Intellectual Property Reading Material, WIPO Publication 476-E, 1998.
ITLP = Introduction to Trademark Law and Practice, WIPO Publication 653-E, 1998.
LGDC = Licensing Guide for Developing Countries, WIPO Publication 620-E, 1977.
Lisbon = Lisbon Agreement for the Protection of Appellations of Origin and their
International Registration.
Madrid (Indication of Source) = Madrid Agreement for the Repression of False or
Deceptive Indication of Source of Goods.
Madrid (Marks) = Agreement Concerning the International Registration of Marks.
Madrid Protocol = Protocol Relating to the Madrid Agreement Concerning the International
Registration of Marks.
Paris = Paris Convention for the Protection of Industrial Property.
PCT = Patent Cooperation Treaty.
PCT, Rule = Regulations under the PCT.
Rome = Rome Convention, 1961 International Convention for the Protection of Performers,
Producers of Phonograms and Broadcasting Organisations.
TRIPS = Agreement on Trade-Related Aspects of Intellectual Property Rights.
Vienna = Vienna Agreement establishing an International Classification of the Figurative
Elements of Marks (1985).
WIPO Convention = Convention Establishing the World Intellectual Property Organization.
WIPO Model Law (Appellations of Origin) = Model Law for Developing Countries on
Appellations of Origin and Indications of Source.
WIPO Model Law (Industrial Designs) = Model Law for Developing Countries on
Industrial Designs.
WIPO Model Law (Inventions) = Model Law for Developing Countries on Inventions.
WPTT = WIPO Performances and Phonograms Treaty, WIPO Publication #227-E, 1997.
Texts of WIPO-administered treaties: http://www.wipo.int/treaties/en/
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A
(to) Abandon an application:

Paris, Art. 4C(4).
A subsequent application concerning the same subject as a previous first application within
the meaning of paragraph (2), above, filed in the same country of the Union. shall be
considered as the first application, of which the filing date shall be the starting point of the
period of priority, if, at the time of filing the subsequent application, the said previous
application has been withdrawn, abandoned, or refused, without having been laid open to
public inspection and without leaving any rights outstanding, and if it has not yet served as a
basis for claiming a right of priority. The previous application may not thereafter serve as a
basis for claiming a right of priority.
(to) Abandon the registration of a mark:

The act of relinquishment of a right, or of an anticipated or prospective right.
Accession:
In matters of treaty law this term indicates a State becoming party to a multilateral of bilateral
agreement which it has not signed.
Adaptation:
Generally understood as the modification of a pre-existing work from one genre of work to
another, such as cinematographic adaptations of novels or musical works. Adaptation may
also consist in altering the work within the same genre to make it suitable for different
conditions of exploitation, such as rewriting a novel for a juvenile edition. Adaptation also
involves altering the composition of the work, unlike translation, which transforms only the
form of expression thereof. Adaptation of another’s work protected by copyright law is
subject to the authorization of the owner of the copyright in the work. (See GCNR, p. 3).
(to) Amend:
To improve something; to change for the better. An amendment to a patent application may
be offered, wherein the applicant's mailing address, or her claims, were not sufficiently
accurate. (See PCT Arts. 19 (1 & 2) & 28).
PCT Arts. 19 (1 & 2)
(1) The applicant shall, after having received the international search report, be entitled to
one opportunity to amend the claims of the international application by filing amendments
with the International Bureau within the prescribed time limit. He may, at the same time, file
a brief statement, as provided in the Regulations, explaining the amendments and indicating
any impact that such amendments might have on the description and the drawings.
(2) The amendments shall not go beyond the disclosure in the international application as
filed.
PCT Arts. 28
(1) The applicant shall be given the opportunity to amend the claims, the description, and the
drawings, before each designated Office within the prescribed time limit. No designated
Office shall grant a patent, or refuse the grant of a patent, before such time limit has expired
except with the express consent of the applicant.
(2) The amendments shall not go beyond the disclosure in the international application as
filed unless the national law of the designated State permits them to go beyond the said
disclosure.
(3) The amendments shall be in accordance with the national law of the designated State in
all respects not provided for in this Treaty and the Regulations.
(4) Where the designated Office requires a translation of the international application, the
amendments shall be in the language of the translation.
Appellation of origin:
(Lisbon, Art. 2 (1 & 2)).
(1) In this Agreement, "appellation of origin" means 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 geographical environment,
including natural and human factors.
(2) The country of origin is the country whose name, or the country in which is situated the
region or locality whose name, constitutes the appellation of origin which has given the
product its reputation.
Applicant:
(HIPID, p. 10.1.6).
The applicant is the entity or person which or who presents (“files”) an application for the
grant of an industrial property right (e.g., a patent application, or an application for the
registration of a trademark) in an industrial property office, or in whose name an agent
(representative) files such an application.
Application:
A form to be filled in, for the request of a grant for a registration of a mark or a patent. The
content requested within such a form would differ depending upon the purpose and source of
the form. See the PCT Article 3 (2): "An international application shall contain, as specified
in this Treaty and the Regulations, a request, a description, one or more claims, one or more
drawings (where required), and an abstract."
Artistic work:
Artistic work (or work of art) is a creation intended to appeal to the aesthetic sense of the
person perceiving it. The category of artistic works comprises paintings, drawings,
sculptures, engravings, and in several copyright laws also works of architecture and
photographic works. Although in some countries musical works are considered to be a
special category of protected works, in many copyright laws the notion of artistic works
comprises musical works too. Works of applied art are in most legislations likewise included
in this category. (GCNR, p. 13).
Assignment:
To assign one's intellectual property rights (IPR) is one of three principal legal methods (2-
License contract; 3- Know-how contract) to bring about a commercial transfer or acquisition
of technology. To assign is to agree to a sale from an owner (assignor or transferor) of all its
exclusive rights in the intellectual property, and the purchase of those rights by a buyer
(assignee or transferee), whether another person or a legal entity. The legal document that
records the transaction may be called an "assignment of patent rights" or "assignment", for
example. Under an assignment, the owner of rights transfers the right to authorize or prohibit
certain acts covered by one, several, or all rights under copyright. An assignment is a transfer
of a property right; thus, if all rights are assigned, the person to whom the rights were
assigned becomes the owner of copyright. (See IPRM, pp. 166 & 167).
(b) The Sale: Assignment
3.40 The first legal method is the sale by the owner of all his or its exclusive rights to a
patented invention and the purchase of those rights by another person or legal entity.
3.41 When all the exclusive rights to a patented invention are transferred, without any
restriction in time or other condition, by the owner of the patented invention to another person
or legal entity, it is said that an "assignment" of such rights has taken place. That concept of
assignment is recognized in the laws of many countries. It applies also to the exclusive rights
in utility models, industrial designs and trademarks, as well as other objects of industrial
property. For the sake of simplicity, however, the further explanation of this legal concept
will be confined to the principles and characteristics of the assignment of the patented
invention. Similar principles and characteristics apply to the assignment of other objects of
industrial property.
3.42 The legal act whereby the owner of the patented invention transfers those rights to
another is evidenced by a writing in the form of a legal document generally referred to as an
"instrument of assignment of patent rights" or "assignment of patent rights" or, more simply
yet, as an "assignment." The transferor is called the “assignor”, and the other person or entity,
the transferee, is called the "assignee." When an assignment takes place, the “assignor” no
longer has any rights in respect of the patented invention. The "assignee" becomes the new
owner of the patented invention and is entitled to exercise all the exclusive rights to the
patented invention.
(iii) The License Contract

3.43 The second legal method is through a license, that is, the permission by the owner of a
patented invention to another person or legal entity to perform, in the country and for the
duration of the patent rights, one or more of the acts which are covered by the exclusive rights
to the patented invention in that country. When that permission is given, a "license" has been
granted. It may be recalled that those acts are the making or using of a product that includes
the invention, the making of products by a process that includes the invention, or the use of
the process that includes the invention. The concept of "license" is also recognized in the laws
of many countries. It applies also to the exclusive rights in other objects of industrial property.
Again, for the sake of simplicity, the remaining explanations of the principles and
characteristics of the license will be limited to the patented invention.
3.44 The legal document evidencing the permission given by the owner of the patented
invention is usually referred to as a 1icense contract or, more simply yet, as a "license." The
owner of the patented invention who gives that permission is referred to as "the licensor." The
person or legal entity who or which receives that permission is referred to as "the licensee."
The license is usually granted subject to certain conditions which will be set out in the written
document by which the license is granted to the licensee.
3.45 One of the conditions will obviously be related to the payment by the licensee of
money in return for the license that is granted. Another condition might be that the invention
will be used by the licensee only for the manufacture of products destined for a specific use,
as for example, the manufacture of a pharmaceutical product for use by humans but not for
use on animals. Another condition might be that the licensee work the invention in certain
factories only or sell the product embodying the invention in certain defined areas only.
3.46 It is also possible that the conditions may relate to promises to be made or action to be
taken by the licensor. For example, the licensor may promise to defend in court a lawsuit
brought by a third person against the licensee in which that third person claims that the
working of the invention by the licensee violates the exclusive rights already conferred by the
grant of another - a separate or distinct- patent for invention which is owned by that third
person.
(iv) The Know-How Contract

3.47 The third of the three principal legal methods for the transfer and acquisition of
technology concerns know-how.
3.48 It is possible to include provisions concerning know-how in a writing or document that

is separate from a license contract. It is also possible to include such provisions in a license
contract. In the case where the know-how relates to a patented invention or a registered
trademark or industrial design, the provisions are usually included in the license contract that
deals with that patented invention or other object of industrial property. This is particularly so
when the owner of the patented invention or other object of industrial property is also the
developer and holder of that know-how. For a variety of reasons, however, even in such a
case, the provisions concerning the know-how might be placed in a separate or distinct
writing or document. Whenever provisions concerning know-how appear in a separate or
distinct writing or document, that writing or document is normally called a "know-how
contract."
3.49 Through such provisions, one party, the supplier of the know-how, undertakes or
promises, to communicate the know-how to another party-the recipient of the know-how, for
the use by that other party.
3.50 The know-how may be communicated in a tangible form. Documents, photographs,

blueprints, computer cards, and microfilm, among others, are illustrations of tangible forms.
Examples of know-how that could be transmitted in such forms are architectural plans of the
factory buildings, the diagrams of the layout of the equipment in the factory, drawings or
blueprints of machines, lists of spare parts, manuals or instructions for the operation of
machines or the assembly of components, lists and specifications of new materials, labor and
machine time calculations, process flow charts, packaging and storing instructions, reports on
stability and environmental aspects, and job descriptions for technical and professional
personnel. Such know-how in tangible form is sometimes referred to as "technical
information or data."
3.51 The know-how might also be communicated in an intangible form. Examples would be
an engineer of the supplier of the know-how explaining a process to an engineer of the
recipient or the manufacturing engineer of the recipient witnessing a production line in the
enterprise of the supplier. Another example would be training in the factory of the recipient,
or at the enterprise of the supplier, of personnel of the recipient.
3.52 Know-how in intangible form relating to the demonstration of, or advice on,
manufacturing and other operations is sometimes referred to as "technical services."
Know-how in intangible form relating to training is sometimes referred to as "technical
assistance." Where the know-how in intangible form is to consist of the actual direction of
manufacturing operations or other operations, such as planning, or financial and personal
administration, or marketing, it is sometimes referred to as "management services."
(to) assign a mark:

Paris, Art. 6quater (1).
When, in accordance with the law of a country of the Union, the assignment of a mark is valid
only if it takes place at the same time as the transfer of the business or goodwill to which the
mark belongs, it shall suffice for the recognition of such validity that the portion of the
business or goodwill located in that country be transferred to the assignee, together with the
exclusive right to manufacture in the said country, or to sell therein, the goods bearing the
mark assigned.
Benefit of priority:
See ‘priority’. The benefit of priority allows an applicant to submit subsequent, timely filed
applications "for a patent, or for the registration of a utility model, or of an industrial design,
or of a trademark in other nations that reflect upon the priority date of the original
application." (See Paris, Art. 4 A(1)).
(1) Any person who has duly filed an application for a patent, or for the registration of a
utility model, or of an industrial design, or of a trademark, in one of the countries of the
Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a
right of priority during the periods hereinafter fixed.
Berne Convention:
The Convention, concluded in 1886, was revised at Paris in 1896 and at Berlin in 1908,
completed at Berne in 1914, revised at Rome in 1928, at Brussels in 1948, at Stockholm in
1967 and at Paris in 1971, and was amended in 1979. The Convention is open to all States.
Instruments of ratification or accession must be deposited with the Director General of WIPO.
It is to be noted that WTO Members, even if they are not party to the Berne Convention (e.g.,
Indonesia), must comply with the substantive law provisions of the Berne Convention, except
that WTO Members not party to the Berne Convention are not bound by the moral rights
provisions of the Berne Convention. It should also be noted that developing and "transition"
countries may, at least until 2000, delay the application of most of the obligations provided
for in the TRIPS Agreement (Article 65). Naturally, States party to the Berne Convention
cannot delay the application of their obligations provided for in the Berne Convention. The
Berne Union has an Assembly and an Executive Committee. Every country member of the
Union which has adhered to at least the administrative and final provisions of the Stockholm
Act is a member of the Assembly. The members of the Executive Committee are elected from
among the members of the Union, except for Switzerland, which is a member ex officio. On
January 1, 1997, the Executive Committee had 30 members.
Broadcasting:
(WPPT, art.2 (f)).
Broadcasting means the transmission by wireless means for public reception of sounds or of
images and sounds or of the representations thereof; such transmission by satellite is also
“broadcasting”; transmission of encrypted signals is “broadcasting” where the means for
decrypting are provided to the public by the broadcasting organization or with its consent.
(to) Cancel a patent:

Paris, Art. 4quater.
The grant of a patent shall not be refused and a patent shall not be invalidated on the ground
that the sale of the patented product or of a product obtained by means of a patented process
is subject to restrictions or limitations resulting from the domestic law.
(to) Cancel the registration of a mark:

Paris, Art.6bis(1).
(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the
request of an interested party, to refuse or to cancel the registration, and to prohibit the use,
of a trademark which constitutes a reproduction, an imitation, or a translation, liable to
create confusion, of a mark considered by the competent authority of the country of
registration or use to be well known in that country as being already the mark of a person
entitled to the benefits of this Convention and used for identical or similar goods. These
provisions shall also apply when the essential part of the mark constitutes a reproduction of
any such well-known mark or an imitation liable to create confusion therewith.
Cancellation of the registration of a mark:

Paris, Art.5.C(1).
(1) If, in any country, use of the registered mark is compulsory, the registration may be
cancelled only after a reasonable period, and then only if the person concerned does not
justify his inaction.
Distinctive character of a mark:

Paris, Art.5.C(2).
(2) Use of a trademark by the proprietor in a form differing in elements which do not alter
the distinctive character of the mark in the form in which it was registered in one of the
countries of the Union shall not entail invalidation of the registration and shall not diminish
the protection granted to the mark.
Non-obvious character of an invention:

See PCT, Art. 33(1); Draft 1991Art. 11(1) and (3).
PCT, Art. 33(1)

1)The objective of the international preliminary examination is to formulate a preliminary and
non-binding opinion on the questions whether the claimed invention appears to be novel, to
involve an inventive step (to be non-obvious), and to be industrially applicable.
Draft 1991 Art. 11(1)

(1) [Patentability] In order to be patentable, an invention shall be novel, shall involve an
inventive step (shall be non-obvious) and shall be, at the option of the Contracting Party,
either useful or industrially applicable.
Draft 1991 Art. 11(3)

(3) [Inventive Step (Non-Obviousness)] An invention shall be considered to involve an
inventive step (be non-obvious) if, having regard to the prior art as defined in paragraph`(2),
it would not have been obvious to a person skilled in the art at the filing date or, where
priority is claimed, the priority date of the application claiming the invention.
Civil law:
See West’s Law and Commercial Dictionary in Five Languages p. 250.
Civil law That body of law which every particular nation, commonwealth, or city has
established peculiarly for itself; more proper ly called "municipal" law, to distinguish it from
the "law of nature," and from international law. Laws concerned with civil or private rights
and remedies, as contrasted with criminal laws.
The system of jurisprudence held and administered in the Roman empire, particularly as set
forth in the compilation of Justinian and his successors,comprising the Institutes, Code,
Digest, and Novels, and collectively denominated the "Corpus Juris Civilis,"-as distinguished
from the common law of England and the canon law. The civil law (Civil Code) is followed
in Louisiana.
Claim (s):
HIPID, p. 10.1.7
The part of a patent document which defines the matter for which protection is sought or
granted. In some countries, the claims are published separately and may be used for
information purposes instead of abstracts.
Claims shall be clear and concise. They shall be fully supported by the description. (See
PCT, art. 6).
PCT, art. 6
The claim or claims shall define the matter for which protection is sought. Claims shall be
clear and concise. They shall be fully supported by the description.
Colored marks:
This category includes words, devices and any combinations thereof incolor, as well as color
combinations and color as such (See ITLP 2.1, p. 15; and also under “Signs”).
(v) Colored marks
This category includes words, devices and any combinations thereof in color, as well as color combinations and
color as such.
Collective mark:
See Paris, Art.7bis(1); BIRPI Model Law (Marks), Sec.1(1)(c)).
Paris, Art.7bis(1)
(1) The countries of the Union undertake to accept for filing and to protect collective marks
belonging to associations the existence of which is not contrary to the law of the country of
origin, even if such associations do not possess an industrial or commercial establishment.
BIRPI Model Law (Marks), Sec.1(1)(c)).
(c) " collective mark" means any visible sign designated as such and serving to distinguish the
origin or any other common characteristic of goods or services of different enterprises which use the
mark under the control of the registered owner,
Common law:
(West’s Law and Commercial Dictionary in Five Languages pp. 283-284).
As distinguished from law created by the enactment of legislatures, the common law
comprises the body of those principles and rules of action, relating to the government and
security of persons and property, which derive their authority solely from usages and customs
of immemorial antiquity, or from the judgments and decrees of the courts recognizing,
affirming, and enforcing such usages and customs; and, in this sense, particularly the ancient
unwritten law of England. The “common law” is all the statutory and case law background of
England and the American colonies before the American revolution. “Common law” consists
of those principles, usages and rules of action applicable to government and security of
persons and property which do not rest for their authority upon any express and positive
declaration of the will of the legislature. In a broad sense, “common law” may designate all
that part of the positive law, juristic theory, and ancient custom of any state or nation which is
of general and universal application, thus marking off special or local rules or customs.
As a compound adjective "common-law" is understood as contrasted with or opposed to
"statutory," and sometimes also to "equitable" or to "criminal."
Communication to the public:

(WPPT, Art.2 (g)).
Communication to the public of a performance or a phonogram means the transmission to the
public by any medium, otherwise than by broadcasting, of sounds of a performance or the
sounds or the representations of sounds fixed in a phonogram. For the purposes of Article 15,
“communication to the public” includes making the sounds or representations of sounds fixed
in a phonogram audible to the public.
Competition:
Paris, Art. 10bis(2).
(2) Any act of competition contrary to honest practices in industrial or commercial matters
constitutes an act of unfair competition.
Compulsory license:
Generally understood as being a special form of permission to be granted obligatorily, in most
cases by competent authorities or also through author’s organizations, under specified
conditions for specific kinds of uses of works. Unlike statutory licenses directly authorizing
by virtue of law without any previous application or notification, compulsory licenses are
subject to prior application for and formal grant of the license or at least to previous
notification of the owner of the copyright. The two major multilateral copyright conventions
also allow for such licenses: the compulsory licensing under the Berne Convention of
recordings of musical works the recording of which has already been authorized by the
author, or the possibility of introducing compulsory licensing for broadcasting works; the
compulsory licensing under the Universal Copyright Convention of the translation of writings
in a language generally used in the country after seven years from the first publication of the
writing, provided that such a translation has not been published during that period. Special
compulsory licenses are provided for under both the aforementioned conventions for the
benefit of developing countries whereby they can avail themselves of these facilities by an
appropriate declaration. Such licenses may be granted after the expiration of certain periods
and subject to compliance with some other conditions; they may permit the use of printed
foreign works in the form of publication of their translation in languages generally spoken in
the country, for the purpose of teaching, scholarship and research; or in the form of
reproduction for use in connection with systematic instructional activities. A compulsory
license should grant a non-exclusive right; it should be non-transferable and restricted in its
effect to the country where granted. Equitable remuneration to the author or other owner of
the copyright is likewise a condition for the exercise of all sorts of compulsory licenses; in
some cases it is fixed by statute. (See GCNR, p. 50).
Computer program:
Computer programs are a good example of a type of work which is not included in the list
contained in the Berne Convention, but which is undoubtedly included in the notion of a
"production in the literary, scientific and artistic domain" within the meaning of Article 2 of
the Convention; indeed, computer programs are protected under the copyright laws of a
number of countries, and under the TRIPS Agreement. A computer program is a set of
instructions which controls the operations of a computer in order to enable it to perform a
specific task, such as the storage and retrieval of information. A computer program is
produced by one or more human authors but, in its final "mode or form of expression," it can
be understood directly only by a machine (the computer), not by humans. (See WIPO Paper,
for seminar CRR '98: Overview of the Basic Notions of Copyright and Neighboring Rights,
para. 20).
20. Computer programs are a good example of a type of work which is not included in the list
contained in the Berne Convention, but which is undoubtedly included in the notion of a
"production in the literary, scientific and artistic domain" within the meaning of Article 2 of
the Convention; indeed, computer programs are protected under the copyright laws of a
number of countries, and under the TRIPS Agreement. A computer program is a set of
instructions which controls the operations of a computer in order to enable it to perform a
specific task, such as the storage and retrieval of information. A computer program is
produced by one or more human authors but, in its final "mode or form of expression," it can
be understood directly only by a machine (the computer), not by humans. Another, recent
example of a type of work not listed in Article 2 of the Berne Convention, but which is clearly
included in the notion of a creation "in the literary, scientific and artistic domain," is
multimedia productions. While no acceptable legal definition has been developed, there is a
consensus that the combination of sound, text and images in a digital format which is made
accessible by a computer program, embodies an original expression of authorship sufficient to
justify the protection of multimedia productions under the umbrella of copyright.
Computer software:
Generally understood as meaning, besides the computer program itself, also the detailed
program description determining the set of instructions constituting the corresponding
program and all kinds of supporting material created to aid the understanding or application of
a computer program, such as user instructions. Original computer software is more and more
frequently regarded as a work protected by copyright. (See GCNR, p. 55).
Confusingly similar mark:

Paris, Art.6bis(1).
Copyright:
Copyright protection generally means that certain uses of the work are lawful only if they are
done with the authorization of the owner of the copyright. The most typical are the following:
the right to copy or otherwise reproduce any kind of work; the right to distribute copies to the
public; the right to rent copies of at least certain categories of works (such as computer
programs and audiovisual works); the right to make sound recordings of the performances of
literary and musical works; the right to perform in public, particularly musical, dramatic or
audiovisual works; the right to communicate to the public by cable or otherwise the
performances of such works and, particularly, to broadcast, by radio, television or other
wireless means, any kind of work; the right to translate literary works; the right to rent,
particularly, audiovisual works, works embodied in phonograms and computer programs; the
right to adapt any kind of work and particularly the right to make audiovisual works thereof.
Owner of copyright:
Generally understood as being the person to whom the copyright in a work belongs. The
original owner of copyright is as a rule, and except for a few special cases which vary
according to the different copyright laws, the author, who acquires copyright by virtue of law
upon creation of the work. Owners of copyright may also be the heirs of the author as a result
of inheritance. Some copyright laws allow for assignment of copyright in whole or in part
and thereby the assignee becomes owner of the copyright in whole, or of the part assigned.
(See GCNR, p. 173).
Counterfeit:
See ‘Counterfeiting’.
Counterfeit trademark goods:

(TRIPS, Art. 51, Footnote 14(a)).
"Shall mean any goods, including packaging, bearing without authorization a trademark
which is identical to the trademark validly registered in respect of such goods, or which
cannot be distinguished in its essential aspects from such a trademark, and which thereby
infringes the rights of the owner of the trademark in question under the law of the country of
importation ."
Counterfeiting:
Counterfeiting is first of all the imitation of a product. The counterfeit is not only identical in
the generic sense of the term. It also gives the impression of being the genuine product,
originating from the genuine manufacturer or trader. (See ITLP 13.2.1, p. 98).
Counterfeiting is first of all the imitation of a product. The counterfeit is not only identical in
the generic sense of the term, as a bag might be. It also gives the impression of being the
genuine product (for instance a LOUIS VUITTON bag), originating from the genuine
manufacturer or trader.
The offering of such a counterfeit product is only meaningful, of course, if the genuine
product is known to the consumer. Consequently, counterfeit goods often belong to the
category of luxury goods and bear a well-known trademark. In fact, however, this is only a
coincidence: counterfeit goods can just as well be mass -consumption goods, or goods not
sold under a trademark but protected by other intellectual property rights such as copyright or
design protection. They can also be known to a small group of specialized consumers only,
such as brakes to be used for cars, or aircraft, or pesticides known to clients in agriculture.
These examples show at the same time how dangerous the use of counterfeit goods can be (a
whole year's crop in a large part of Africa was once destroyed by the use of a counterfeit
pesticide).
The most typical and widely-known examples of counterfeit goods are, however, the false
LOUIS VUITTON bags, the false ROLEX, CARTIER and other luxury watches, the false
PUMA and REEBOK sports shoes, the false LACOSTE sports shirts and so on. Worldwide
sales of counterfeit LOUIS VUITTON bags and ROLEX watches exceed those of the genuine
products. This shows that counterfeiting is an economic phenomenon of worldwide
importance. In fact, worldwide sales of counterfeits are estimated at about 5 % of world trade,
and the figure is on the increase. Indeed, it is important to recognize that counterfeiting is an
economic crime, comparable to theft. Counterfeiters not only deceive the consumer but also
damage the reputation of the genuine manufacturer, apart from which they do not pay taxes
and other duties to the State.
Country of origin:
Lisbon, Art 2 (l & 2).
Design patent:
(HIPID, p. 10.1.10).
Title of protection for industrial designs in some countries (e.g., United States of America).
Disclosed work:
A work made accessible to the public, whatever may be the means of its disclosure.
Disclosed works are not necessarily published works. (See GCNR, p. 79).
Disclosure:
Usually understood, in relation to a work, as making the work accessible to the public,
whatever may be the means of its disclosure. Disclosure of a work is not synonymous with
the publication of a work. (See GCNR, p. 78).
Disclosure of an invention:
From the Regulations under the Patent Cooperation Treaty (Rule 33): "For the purposes of
[PCT] Article 15(2), relevant prior art shall consist of everything which has been made
available to the public anywhere in the world by means of written disclosure (including
drawings and other illustrations) and which is capable of being of assistance in determining
that the claimed invention is or is not new and that it does or does not involve an inventive
step (i.e., that it is or is not obvious), provided that the making available to the public
occurred prior to the international filing date."
Scientific discovery:
WIPO Convention, Art. 2 (viii).
(viii "intellectual property" shall include the rights relating to:
-literary, artistic and scientific works,
-performances of performing artists, phonograms, and broadcasts,
-inventions in all fields of human endeavor,
-scientific discoveries,
-industrial designs,
-trademarks, service marks, and commercial names and designations,
-protection against unfair competition,
and all other rights resulting from intellectual activity in the industrial, scientific,
literary or artistic fields.
Dissemination:
Generally understood as spreading the work publicly in any appropriate manner. Besides
distribution of copies of a work, it also covers broadcasting communication to the public by
wire, performance and other means of communication to the public. (See GCNR, p. 80).
Distinctive character of a mark:

Paris, Art. 5C(2).
Distinctive feature:
Madrid Protocol, Art. 3(3).
(3) If the applicant claims color as a distinctive feature of his mark, he shall be required
(i) to state the fact, and to file with his international application a notice specifying the
color or the combination of colors claimed;
(ii) to append to his international application copies in color of the said mark, which shall
be attached to the notifications given by the International Bureau; the number of such copies
shall be fixed by the Regulations.
Distinctive sign:
A sign is distinctive for the goods to which it is to be applied when it is recognized by those to
whom it is addressed as identifying goods from a particular trade source, or is capable of
being so recognized. (See ITLP, 2.2, p. 17).
We have seen that the trademark serves to distinguish the goods of one enterprise from those
of others, so, in order to function as a trademark, it must be distinctive. A sign that is not
distinctive cannot help the consumer to identify the goods of his choice. The word "apple" or
an apple device cannot be registered for actual apples, but it is highly distinctive for
computers. This shows that distinctive character must be evaluated in relation to the goods to
which the trademark is applied.
The test of whether a trademark is distinctive is bound to depend on the understanding of the
consumers, or at least the persons to whom the sign is addressed. Very often, however, a sign
has not been used before it is filed for registration, and so the question can only be whether it
is capable of distinguishing the goods to which it is to be applied.
In conclusion, a sign is distinctive for the goods to which it is to be applied when it is

recognized by those to whom it is addressed as identifying goods from a particular trade
source, or is capable of being so recognized.
The distinctiveness of a sign is not an absolute and unchangeable factor. It is a purely

circumstantial matter. Depending on the steps taken by the user of the sign or third parties, it
can be acquired or increased or even lost. Circumstances such as (possibly long and intensive)
use of the sign have to be taken into account when the registrar is of the opinion that the sign
lacks the necessary distinctiveness, that is, if it is regarded as being not inherently distinctive.
There are, of course, different degrees of distinctiveness, and the question is how distinctive a
sign must be in order to be registrable, regardless of its possible use. In that connection a
distinction is generally made between certain typical categories of marks:
2.2.1 So-called fanciful or coined trademarks, which are meaningless. A celebrated example
of this highly distinctive category is the KODAK trademark.
These trademarks may not be the favorites of the marketing people, since they require heavy
advertising investment to become known to consumers. They inherently enjoy very strong
legal protection, however.
2.2.2 Common words from everyday language can also be highly distinctive if they
communicate a meaning that is arbitrary in relation to the products on which they are used.
The same is true of the corresponding devices. Examples are the famous CAMEL trademark
for cigarettes (and the equally-famous device mark) and the previously-mentioned APPLE
mark (both the word and the device) for computers.
CAMEL and APPLE are clearly not invented words, and yet they are highly distinctive for
the goods concerned.
2.2.3 Marketing people are generally fond of brand names that somehow generate a positive
association with the product in the mind of the consumer. They tend therefore to choose more
or less descriptive terms. If the sign is exclusively descriptive, it lacks distinctiveness and
cannot be registered as such as a trademark (see Chapter 3). However, not all signs that are
neither meaningless nor arbitrarily used necessarily lack distinctiveness: there is an
intermediate category of signs that are suggestive, by association, of the goods for which they
are to be used, and of the nature, quality, origin or any other characteristic, of those goods,
without being actually descriptive. Those signs are registerable. The crucial question in
practice is whether a trademark is suggestive or descriptive of the goods applied for. This
question has to be judged according to the local law and jurisprudence of the country and all
the circumstances of the specific case. If the registrar has a doubt, or is convinced that the
term is descriptive rather than suggestive, he has to consider whether and to what extent the
term has already been used by the applicant. As a general rule, it can be said that a descriptive
term is distinctive for the goods concerned if it has acquired a secondary meaning, that is, if
those to whom it is addressed have come to recognize it as indicating that the goods for which
it is used are from a particular trade source.
In case of doubt as to whether a term is descriptive or suggestive, the very fact that the mark
has been used in the course of trade for a certain period of time may be sufficient for
accepting it for registration.
However, the more descriptive the term is, the more difficult it will be to prove secondary
meaning, and a higher percentage of consumer awareness will be necessary.
Patent documentation:
PCT, Art. 15(4).
(4) The International Searching Authority referred to in Article 16 shall endeavor to discover
as much of the relevant prior art as its facilities permit, and shall, in any case, consult the
documentation specified in the Regulations.
Duration of a patent:
(2) The foregoing provision is to be understood in an unrestricted sense, in particular, in the
sense that patents applied for during the period of priority are independent, both as regards
the grounds for nullity and forfeiture, and as regards their normal duration.
Economic rights:
In relation to works, rights of authors forming the pecuniary components of copyright, as
distinguished from moral rights. They imply as a rule that within the limitations set by the
copyright law the owner of the copyright may make all public use of the work conditional on
payment of remuneration. Economic rights comprise, in particular, the faculty to do or to
authorize the doing of any of the following: to publish or otherwise reproduce the work for
public distribution; to communicate it to the public by performance, by broadcasting or by
wire; to make translations or any kind of adaptation of the work and to use these in public,
etc. (See GCNR, p. 96).
Element of the invention:

Draft 1991, Art.2(ii)(b).
(b) for any other purpose, shall be, for each element of the invention, the filing date of the
earliest-filed of those applications which contains that element
Enforcement of rights:
Draft 1991, Art. 23.
(1) [Enforcement Based on Patents] The owner of the patent shall have at least the right
(i) to obtain an injunction to restrain the performance or the likely performance, by
any person without his authorization, of any of the acts referred to in Article 19(1), (2)
and`(4);
(ii) to obtain damages, adequate under the circumstances, from any person who,
without his authorization, performed any of the acts referred to in Article`19(1), (2) and (4),
where the said person was or should have been aware of the patent.
(2) [Enforcement Based on Published Applications] (a) The applicant shall at least have
the right to obtain reasonable compensation from any person who, without his authorization,
performed any of the acts referred to in Article 19(1), (2) and (4) in relation to any invention,
claimed in the published application, as if a patent had been granted for that invention,
provided that the said person, at the time of the performance of the act, had
(i) actual knowledge that the invention that he was using was the subject matter of a
published application, or
(ii) received written notice that the invention that he was using was the subject matter
of a published application, such application being identified in the said notice by its serial
number.
(b) Any Contracting Party may provide that, with respect to the compensation
referred to in subparagraph`(a), an action may not be initiated or a decision may not be made
until after the grant of a patent on the published application, provided that, if an action may
be initiated only after the grant of the patent, the owner of the patent shall have reasonable
time to initiate such action.
(c) For the purposes of subparagraphs`(a) and (b), the extent of the protection shall
be determined by the claims as appearing in the published application. However, if the
claims are amended after the initial publication of the application, the extent of the protection
shall be determined by the amended claims in respect of the period following their
publication. Furthermore, if the claims of the patent as granted or as changed after its grant
have a narrower scope than the claims in the application, the extent of the protection shall be
determined by the claims with the narrower scope.
Exclusive rights:
Exclusive rights derive from the "effect of the grant of the patent and this effect means a
patented invention may not be exploited in the granting country by persons other than the
owner of the patent unless the patent owner agrees to such exploitation. Thus, while the
owner is not given a statutory right to practice his invention, he is given a statutory right to
prevent others from exploiting his invention, which is frequently referred to as a right to
exclude others …." (See IPRM, p. 13, para. 2.3).
2.3 Patents are frequently referred to as "monopolies", but nowhere, in most laws, is the
inventor or the owner of a patented invention given the right to make, use or sell anything.
The effects of the grant of a patent are that the patented invention may not be exploited in the
country by persons other than the owner of the patent unless the owner agrees to such
exploitation. Thus, while the owner is not given a statutory right to practice his invention, he
is given a statutory right to prevent others from exploiting his invention, which is frequently
referred to as a right to exclude others from making, using or selling his invention. The right
to take action against any person exploiting the patented invention in the country without his
agreement constitutes the patent owner's most important right, since it permits him to derive
the material benefits to which he is entitled as a reward for his intellectual effort and work,
and compensation for the expenses which his research and experimentation leading to the
invention have entailed.
Exclusive rights conferred by a patent:

Paris, Art. 5A (2).
(2) Each country of the Union shall have the right to take legislative measures providing for
the grant of compulsory licenses to prevent the abuses which might result from the exercise of
the exclusive rights conferred by the patent, for example, failure to work.
Expiry of the international registration:

Madrid Protocol, Art. 3ter (2).
(2) A request for territorial extension may also be made subsequently to the international
registration. Any such request shall be presented on the form prescribed by the Regulations. It
shall be immediately recorded by the International Bureau, which shall notify such recordal
without delay to the Office or Offices concerned. Such recordal shall be published in the
periodical gazette of the International Bureau. Such territorial extension shall be effective
from the date on which it has been recorded in the International Register; it shall cease to be
valid on the expiry of the international registration to which it relates.
Exploitation of an invention:
Inventions are "worked" or exploited, when the patent holder chooses to pursue his
commercial realization from a perceived need in a market, through the assignment, licensing,
or know-how contracts.
(NOTE: However, "patent holders are not protected against those who derive from the disclosed
invention a perception of a market need which may be satisfied by the legitimate adaptation or
improvement of this technology, or through the discovery of a different technical solution to satisfy
the same market need." (See Economic Value of Industrial Property Rights, from ISIP '98, Yossifov,
V).
Fair use:
Constitutes, in the Copyright Law of the United States of America, in addition to special
exceptions, a general limitation on the exclusive right of the owner of copyright. It evolved as
a judicial doctrine and was given statutory recognition in Section 107 of the new Copyright
Law of l976. Fair use is allowed for purposes such as criticism, commentary news reporting,
teaching, scholarship or research. It is to be determined by considering factors such as
whether the use is of a commercial nature or is for non-profit educational purposes, the nature
of the work protected by copyright, the amount and substantially of the portion used in
relation to the work as a whole, and the effect of the use upon the potential market for, or
value of, the work. Fair use is a sort of free use of the work. (See GCNR, p. 114).
False indication:
See Paris, Art. 10 (1), (2) and 10ter.
Paris, Art. 10 (1), (2)
(1) The provisions of the preceding Article shall apply in cases of direct or indirect use of a
false indication of the source of the good or the identity of the producer, manufacturer, or
merchant.
(2) Any producer, manufacturer, or merchant, whether a natural person or a legal entity,
engaged in the production or manufacture of or trade in such goods and established either in
the locality falsely indicated as the source, or in the region where such locality is situated, or
in the country falsely indicated, or in the country where the false indication of source is used,
shall in any case he deemed an interested party.
10ter
(1) The countries of the Union undertake to assure to nationals of the other countries of the
Union appropriate legal remedies effectively to repress all the acts referred to in Articles 9,
10, and 10bis.
(2) They undertake, further, to provide measures to permit federations and associations
representing interested industrialists, producers, or merchants, provided that the existence of
such federations and associations is not contrary to the laws of their countries, to take action
in the courts or before the administrative authorities, with a view to the repression of the acts
referred to in Articles 9, 10, and 10bis, in so far as the law of the country in which protection
is claimed allows such action by federations and associations of that country.
Figurative elements of a mark:

See Vienna, Art. 2(1) to (3), 3 (1 & 2) and Art. 4 (1) to (6).
Art. 2(1) to (3)
(1) The Classification of Figurative Elements comprises a list of categories, divisions and
sections in which the figurative elements of marks are classified, together with, as the case
may be, explanatory notes.
(2) The Classification of Figurative Elements is contained in one authentic copy, in the
English and French languages, signed by the Director General of the World Intellectual
Property Organization (hereinafter designated respectively as "the Director General" and
"the Organization") and deposited with him at the time that this Agreement is opened for
signature.
(3) The amendments and additions referred to in Article 5(3)(i) shall also be contained in one
authentic copy, in the English and French languages, signed by the Director General and
deposited with him.
Art. 3 (1 & 2)
(1) The Classification of Figurative Elements shall be established in the English and French
languages, both texts being equally authentic.
(2) The International Bureau of the Organization (hereinafter designated as "the
International Bureau") shall establish, in consultation with the interested Governments,
official texts of the Classification of Figurative Elements in the languages which the Assembly
referred to in Article 7 may designate in accordance with paragraph (2)(a)(vi) of that Article.
Art. 4 (1) to (6)

(1) Subject to the requirements prescribed by this Agreement, the scope of the Classification
of Figurative Elements shall be that attributed to it by each country of the Special Union. In
particular, the Classification of Figurative Elements shall not bind the countries of the
Special Union in respect of the extent of the protection afforded to the mark.
(2) The competent Offices of the countries of the Special Union shall have the right to use the
Classification of Figurative Elements either as a principal or as a subsidiary system.
(3) The competent Offices of the countries of the Special Union shall include in the official
documents and publications relating to registrations and renewals of marks the numbers of
the categories, divisions and sections in which the figurative elements of those marks are to
be placed.
(4) The said numbers shall be preceded by the words "Classification of Figurative Elements"
or an abbreviation thereof to be determined by the Committee of Experts referred to in Article
5.
(5) Any country may, at the time of its signature or of the deposit of its instrument of
ratification or accession, declare that it does not undertake to include the numbers of all or
some of the sections in official documents and publications relating to registrations and
renewals of marks.
(6) If any country of the Special Union entrusts the registration of marks to an
intergovernmental authority, it shall take all possible measures to ensure that that authority
uses the Classification of Figurative Elements in accordance with this Article.
Actual filing date:

PCT, Art. 11(3).
(3) Subject to Article 64(4), any international application fulfilling the requirements listed in
items (i) to (iii) of paragraph (1) and accorded an international filing date shall have the
effect of a regular national application in each designated State as of the international filing
date, which date shall be considered to be the actual filing date in each designated State.
Filing date of an application:

See PCT, Art. 11; PLT, Art. 5.
PCT, Art. 11
(1) The receiving Office shall accord as the international filing date the date of receipt of the
international application, provided that that Office has found that, at the time of receipt:
(i) the applicant does not obviously lack, for reasons of residence or nationality, the right
to file an international application with the receiving Office,
(ii) the international application is in the prescribed language,

(iii) the international application contains at least the following elements:
(a) an indication that it is intended as an international application,
(b) the designation of at least one Contracting State,
(c) the name of the applicant, as prescribed,
(d) a part which on the face of it appears to be a description,
(e) a part which on the face of it appears to be a claim or claims.
(2)
(a) If the receiving Office finds that the international application did not, at the time of
receipt, fulfill the requirements listed in paragraph (1), it shall, as provided in the
Regulations, invite the applicant to file the required correction.
(b) If the applicant complies with the invitation, as provided in the Regulations, the
receiving Office shall accord as the international filing date the date of receipt of the required
correction.
(4) Any international application fulfilling the requirements listed in items (i) to (iii) of
paragraph (1) shall be equivalent to a regular national filing within the meaning of the Paris
Convention for the Protection of Industrial Property.
PLT, Art. 5.
(1) [Elements of Application]
(a) Except as otherwise prescribed in the Regulations, and subject to paragraphs (2) to
(8), a Contracting Party shall provide that the filing date of an application shall be the date
on which its Office has received all of the following elements, filed, at the option of the
applicant, on paper or as otherwise permitted by the Office for the purposes of the filing date:
(i) an express or implicit indication to the effect that the elements are intended to be
an application;
(ii) indications allowing the identity of the applicant to be established or allowing the
applicant to be contacted by the Office;
(iii) a part which on the face of it appears to be a description.
(b) A Contracting Party may, for the purposes of the filing date, accept a drawing as the
element referred to in subparagraph (a)(iii).
(c) For the purposes of the filing date, a Contracting Party may require both information
allowing the identity of the applicant to be established and information allowing the applicant
to be contacted by the Office, or it may accept evidence allowing the identity of the applicant
to be established or allowing the applicant to be contacted by the Office, as the element
referred to in subparagraph (a)(ii).
(2) [Language]
(a) A Contracting Party may require that the indications referred to in
paragraph (1)(a)(i) and (ii) be in a language accepted by the Office.
(b) The part referred to in paragraph (1)(a)(iii) may, for the purposes of the filing date, be
filed in any language.
(3) [Notification] Where the application does not comply with one or more of the
requirements applied by the Contracting Party under paragraphs (1) and (2), the Office shall,
as soon as practicable, notify the applicant, giving the opportunity to comply with any such
requirement, and to make observations, within the time limit prescribed in the Regulations.
(4) [Subsequent Compliance with Requirements]

(a) Where one or more of the requirements applied by the Contracting Party under
paragraphs (1) and (2) are not complied with in the application as initially filed, the filing
date shall, subject to subparagraph (b) and paragraph (6), be the date on which all of the
requirements applied by the Contracting Party under paragraphs (1) and (2) are
subsequently complied with.
(b) A Contracting Party may provide that, where one or more of the requirements referred
to in subparagraph (a) are not complied with within the time limit prescribed in the
Regulations, the application shall be deemed not to have been filed. Where the application is
deemed not to have been filed, the Office shall notify the applicant accordingly, indicating the
reasons therefor.
(5) [Notification Concerning Missing Part of Description or Drawing] Where, in

establishing the filing date, the Office finds that a part of the description appears to be
missing from the application, or that the application refers to a drawing which appears to be
missing from the application, the Office shall promptly notify the applicant accordingly.
(6) [Filing Date Where Missing Part of Description or Drawing Is Filed]

(a) Where a missing part of the description or a missing drawing is filed with the Office
within the time limit prescribed in the Regulations, that part of the description or drawing
shall be included in the application, and, subject to subparagraphs (b) and (c), the filing date
shall be the date on which the Office has received that part of the description or that
drawing, or the date on which all of the requirements applied by the Contracting Party under
paragraphs (1) and (2) are complied with, whichever is later.
(b) Where the missing part of the description or the missing drawing is filed under
subparagraph (a) to rectify its omission from an application which, at the date on which one
or more elements referred to in paragraph (1)(a) were first received by the Office, claims the
priority of an earlier application, the filing date shall, upon the request of the applicant filed
within a time limit prescribed in the Regulations, and subject to the requirements prescribed
in the Regulations, be the date on which all the requirements applied by the Contracting
Party under paragraphs (1) and (2) are complied with.
(c) Where the missing part of the description or the missing drawing filed under
subparagraph (a) is withdrawn within a time limit fixed by the Contracting Party, the filing
date shall be the date on which the requirements applied by the Contracting Party under
paragraphs (1) and (2) are complied with.
(7) [Replacing Description and Drawings by Reference to a Previously Filed Application]

(a) Subject to the requirements prescribed in the Regulations, a reference, made upon the
filing of the application, in a language accepted by the Office, to a previously filed
application shall, for the purposes of the filing date of the application, replace the description
and any drawings.
(b) Where the requirements referred to in subparagraph (a) are not complied with, the
application may be deemed not to have been filed. Where the application is deemed not to
have been filed, the Office shall notify the applicant accordingly, indicating the reasons
therefor.
(8) [Exceptions] Nothing in this Article shall limit:
(i) the right of an applicant under Article 4G(1) or (2) of the Paris Convention to
preserve, as the date of a divisional application referred to in that Article, the date of the
initial application referred to in that Article and the benefit of the right of priority, if any;
(ii) the freedom of a Contracting Party to apply any requirements necessary to accord
the benefit of the filing date of an earlier application to an application of any type prescribed
in the Regulations.
Filing of an amendment:
PCT, Rule 53.9.
(One) If amendments under Article 19 have been made, the statement concerning amendments
shall indicate whether, for the purposes of the international preliminary examination, the
applicant wishes those amendment
(a) to be taken into account, in which case a copy of the amendments shall preferably
be submitted with the demand, or
(ii) to be considered as reversed by an amendment under Article 34.
(b) If no amendments under Article 19 have been made and the time limit for filing such
amendments has not expired, the statement may indicate that the applicant wishes the start of
the international preliminary examination to be postponed in accordance with Rule 69.1(d).
(c) If any amendments under Article 34 are submitted with the demand, the statement shall
so indicate.
Filing of an application:
See Paris, Art. 4; PCT, Art.11; PLT Art. 6.
Paris, Art. 4
A.
(1) Any person who has duly filed an application for a patent, or for the registration of a
(2) Any filing that is equivalent to a regular national filing under the domestic legislation of
any country of the Union or under bilateral or multilateral treaties concluded between
countries of the Union shall be recognized as giving rise to the right of priority.
(3) By a regular national filing is meant any filing that is adequate to establish the date on
which the application was filed in the country concerned, whatever may be the subsequent
fate of the application.
B.
Consequently, any subsequent filing in any of the other countries of the Union before the
expiration of the periods referred to above shall not be invalidated by reason of any acts
accomplished in the interval, in particular, another filing, the publication or exploitation of
the invention, the putting on sale of copies of the design, or the use of the mark, and such acts
cannot give rise to any third-party right or any right of personal possession. Rights acquired
by third parties before the date of the first application that serves as the basis for the right of
priority are reserved in accordance with the domestic legislation of each country of the Union
C.
(1) The periods of priority referred to above shall be twelve months for patents and utility
models, and six months for industrial designs and trademarks.
(2) These periods shall start from the date of filing of the first application; the day of filing
shall not be included in the period.
(3) If the last day of the period is an official holiday, or a day when the Office is not open for
the filing of applications in the country where protection is claimed, the period shall be
extended until the first following working day.
(4) A subsequent application concerning the same subject as a previous first application
within the meaning of paragraph (2), above, filed in the same country of the Union. shall be
considered as the first application, of which the filing date shall be the starting point of the
period of priority, if, at the time of filing the subsequent application, the said previous
application has been withdrawn, abandoned, or refused, without having been laid open to
public inspection and without leaving any rights outstanding, and if it has not yet served as a
basis for claiming a right of priority. The previous application may not thereafter serve as a
basis for claiming a right of priority.
D.
(1) Any person desiring to take advantage of the priority of a previous filing shall be
required to make a declaration indicating the date of such filing and the country in which it
was made. Each country shall determine the latest date on which such declaration must be
made.
(2) These particulars shall be mentioned in the publications issued by the competent
authority, and in particular in the patents and the specifications relating thereto.
(3) The countries of the Union may require any person making a declaration of priority to
produce a copy of the application (description, drawings, etc.) previously filed. The copy,
certified as correct by the authority which received such application, shall not require any
authentication, and may in any case be filed, without fee, at any time within three months of
the filing of the subsequent application. They may require it to be accompanied by a
certificate from the same authority showing the date of filing, and by a translation.
(4) No other formalities may be required for the declaration of priority at the time of filing the
application. Each country of the Union shall determine the consequences of failure to comply
with the formalities prescribed by this Article, but such consequences shall in no case go
beyond the loss of the right of priority.
(5)Subsequently, further proof may be required. Any person who avails himself of the priority
of a previous application shall be required to specify the number of that application; this
number shall be published as provided for by paragraph (2), above.
E.
(1) Where an industrial design is filed in a country by virtue of a right of priority based on
the filing of a utility model, the period of priority shall be the same as that fixed for industrial
designs
(2) Furthermore, it is permissible to file a utility model in a country by virtue of a right of

priority based onthe filing of a patent application, and vice versa.
F.
No country of the Union may refuse a priority or a patent application on the ground that the
applicant claims multiple priorities, even if they originate in different countries, or on the
ground that an application claiming one or more priorities contains one or more elements
that were not included in the application or applications whose priority is claimed, provided
that, in both cases, there is unity of invention within the meaning of the law of the country.
With respect to the elements not included in the application or applications whose priority is
claimed, the filing of the subsequent application shall give rise to a right of priority tinder
ordinary conditions.
G.
(1) If the examination reveals that an application for a patent contains more than one
invention, the applicant may divide the application into a certain number of divisional
applications and preserve as the date of each the date of the initial application and the benefit
of the right of priority, if any.
(2) The applicant may also, on his own initiative, divide a patent application and preserve as
the date of each divisional application the date of the initial application and the benefit of the
right of priority, if any. Each country of the Union shall have the right to determine the
conditions under which such division shall be authorized.
H. Priority may not be refused on the ground that certain elements of the invention for which
priority is claimed do not appear among the claims formulated in the application in the
country of origin, provided that the application documents as a whole specifically disclose
such elements.
I.
(1) Applications for inventors' certificates filed in a country in which applicants have the right
to apply at their own option either for a patent or for an inventor's certificate shall give rise
to the right of priority provided for by this Article, under the same conditions and with the
same effects as applications for patents.
(2) In a country in which applicants have the right to apply at their own option either for a
patent or for an inventor's certificate, an applicant for an inventor's certificate shall, in
accordance with the provisions of this Article relating to patent applications, enjoy a right of
priority based on an application for a patent, a utility model, or an inventor's certificate.
PCT, Art. 11
(2)
receipt, fulfill the requirements listed in paragraph (1), it shall, as provided in the
Regulations, invite the applicant to file the required correction.
correction.
paragraph (1) shall be equivalent to a regular national filing within the meaning of the
Paris Convention for the Protection of Industrial Property.
PLT Art. 6
(1) [Form or Contents of Application] Except where otherwise provided for by this Treaty,
no Contracting Party shall require compliance with any requirement relating to the form or
contents of an application different from or additional to:
(i) the requirements relating to form or contents which are provided for in respect of
international applications under the Patent Cooperation Treaty;
(ii) the requirements relating to form or contents compliance with which, under the
Patent Cooperation Treaty, may be required by the Office of, or acting for, any State party to
that Treaty once the processing or examination of an international application, as referred to
in Article 23 or 40 of the said Treaty, has started;
(iii) any further requirements prescribed in the Regulations.
(2) [Request Form] (a) A Contracting Party may require that the contents of an
application which correspond to the contents of the request of an international application
under the Patent Cooperation Treaty be presented on a request Form prescribed by that
Contracting Party. A Contracting Party may also require that any further contents allowed
under paragraph (1)(ii) or prescribed in the Regulations pursuant to paragraph (1)(iii) be
contained in that request Form.
(b) Notwithstanding subparagraph (a), and subject to Article 8(1), a

Contracting Party shall accept the presentation of the contents referred to in
subparagraph (a) on a request Form provided for in the Regulations.
(3) [Translation] A Contracting Party may require a translation of any part of the
application that is not in a language accepted by its Office. A Contracting Party may also
require a translation of the parts of the application, as prescribed in the Regulations, that are
in a language accepted by the Office, into any other languages accepted by that Office.
(4) [Fees] A Contracting Party may require that fees be paid in respect of the
application. A Contracting Party may apply the provisions of the Patent Cooperation Treaty
relating to payment of application fees.
(5) [Priority Document] Where the priority of an earlier application is claimed, a

Contracting Party may require that a copy of the earlier application, and a translation where
the earlier application is not in a language accepted by the Office, be filed in accordance with
the requirements prescribed in the Regulations.
(6) [Evidence] A Contracting Party may require that evidence in respect of any
matter referred to in paragraph (1) or (2) or in a declaration of priority, or any translation
referred to in paragraph (3) or (5), be filed with its Office in the course of the processing of
the application only where that Office may reasonably doubt the veracity of that matter or the
accuracy of that translation.
(7) [Notification] Where one or more of the requirements applied by the Contracting
Party under paragraphs (1) to (6) are not complied with, the Office shall notify the applicant,
giving the opportunity to comply with any such requirement, and to make observations, within
the time limit prescribed in the Regulations.
(8) [Non-Compliance with Requirements] (a) Where one or more of the

requirements applied by the Contracting Party under paragraphs (1) to (6) are not complied
with within the time limit prescribed in the Regulations, the Contracting Party may, subject to
subparagraph (b) and Articles 5 and 10, apply such sanction as is provided for in its law.
(Two) Where any requirement applied by the Contracting Party under paragraph (1),
(5) or (6) in respect of a priority claim is not complied with within the time limit
prescribed in the Regulations, the priority claim may, subject to Article 13, be deemed
non-existent. Subject to Article 5(7)(b), no other sanctions may be applied.
International filing:
PCT, Art. ll.

(2)
receipt, fulfill the requirements listed in paragraph (1), it shall, as provided in the Regulations,
invite the applicant to file the required correction.
correction.
items (i) to (iii) of paragraph (1) and accorded an international filing date shall have the effect
of a regular national application in each designated State as of the international filing date,
which date shall be considered to be the actual filing date in each designated State.
International filing date:

PCT, Art. 11(1).
Regular national filing: See Paris, Art. 4A(3); PCT, Art. 11(4).
Paris, Art. 4A(3)
(3) By a regular national filing is meant any filing that is adequate to establish the date on
which the application was filed in the country concerned, whatever may be the subsequent
fate of the application
PCT, Art. 11(4)

Requirements to obtain a filing date: See Draft 1991, Art. 8.

(1) [Absolute Requirements] The filing date of the application shall be the date of receipt by
the Office of at least the following elements:
(i) an express or implicit indication that the granting of a patent is sought;

(ii) indications allowing the identity of the applicant to be established;
(iii) a part which, on the face of it, appears to be a description of an invention.
(2) [Permitted Additional Requirements]

(a) A Contracting Party may provide that the filing date may be refused if either of the
following requirements is not satisfied within the prescribed time limit:
(i) the application contains a part which, on the face of it, appears to be a claim or
claims;
(ii) the required fee is paid.
Where a Contracting Party provides for any of the foregoing requirements and the
requirements are complied with later than the date of receipt by the Office of the elements
referred to in paragraph`(1), but within the prescribed time limit, the filing date of the
application shall be the date of receipt by the Office of the said elements.
(b) A Contracting Party may apply a requirement referred to in subparagraph`(a) only if

(i) it applied such requirement at the time of becoming party to this Treaty, or
(ii) it has, after having become party to this Treaty, to apply such requirement in
order to comply with an obligation under a treaty concluded before the date of entry into
force of this Treaty.
(3) [Drawings] If the application refers to drawings but such drawings are not received by
the Office at the date of receipt of the elements referred to in paragraph (1), at the option of
the applicant either any reference to the drawings shall be deemed to be deleted or the filing
date of the application shall be the date on which the drawings are received by the Office.
(4) [Replacing Description, Claims and Drawings by Reference to Another Application]

Notwithstanding paragraphs`(1), (2) and`(3),
Alternative A: each Contracting Party shall

Alternative B: any Contracting Party may
provide that a reference in the application to another previously filed application for the same
invention by the same applicant or his predecessor in title may, for the purposes of the filing
date of the application, replace any of the following elements:
(i) the part which, on the face of it, appears to be a description of an invention,
(ii) the part which, on the face of it, appears to be a claim or claims, or
(iii) any drawings,
provided that the said parts and drawings and, where the other application was not filed with
the same Office, a certified copy of the other application are received by the Office within the
prescribed time limit. If the said parts and drawings, and, where required, the certified copy,
are received by the Office within the said time limit, the filing date of the application shall,
provided that the other requirements concerning the filing date are fulfilled, be the date on
which the application containing the reference to the previously filed application was
received by the Office.
(4) [Language]
(a) Any Contracting Party may require that the indications referred to in paragraph`(1)(i)
and (ii) be in the official language.
(b) Any Contracting Party may, if any of the parts referred to in paragraph (1)(iii) and
paragraph (2)(a)(i) or any text matter contained in any drawings is in a language other than
the official language, require that a translation thereof in the official language be received by
its Office within the prescribed time limit. If the translation is so received, the filing date of
the application shall be the date of receipt by the Office of the elements referred to in
paragraph (1) in the language in which they were first received.
(c) Any Contracting Party may require that the parts referred to in paragraph`(4)(i) and
(ii) and any text matter contained in drawings referred to in paragraph`(4)(iii) be furnished in
the official language within the time limit referred to in paragraph`(4).
(d) For the purposes of this paragraph, "official language" means the official
language of the Office or, if there are several such languages, any of them.
(5) [Prohibition of Other Requirements]

(a) In respect of the filing date, no requirement additional to or different from those
provided for in the preceding paragraphs may be imposed.
(b) Notwithstanding subparagraph`(a), a Contracting Party may, for the purposes of any
treaty providing for the grant of regional patents, require that an application for a regional
patent contain the designation of at least one State party to that treaty.
Geographical indication:
(TRIPS, Art 22 (1)).
Geographical indications are defined as "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."
Geographical origin:
In WIPO usages, this refers to any item which has derived special properties from the region,
place or location where certain enhanced production qualities exist. (as in Appellations of
origin) Not to be confused with "indications of source", which merely indicate the place of
origin for any product. (See IPRM, p.116, para. 2.676 <adapted>).
2.676 The term "geographical indication" has been chosen by WIPO to describe the
subject matter of a new treaty for the international protection of names and symbols which
indicate a certain geographical origin of a given product. In this connection, the term is
intended to be used in its widest possible meaning. It embraces all existing means of
protection of such names and symbols, regardless of whether they indicate that the qualities
of a given product are due to its geographical origin (such as appellations of origin), or they
merely indicate the place of origin of a product (such as indications of source). This definition
also covers symbols, because geographical indications are not only constituted by names,
such as the name of a town, a region or a country ("direct geographical indications"), but may
also consist of symbols. Such symbols may be capable of indicating the origin of goods
without literally naming its place of origin. Examples for such indirect geographical
indications are the Eiffel Tower for Paris, the Matterhorn for Switzerland or the Tower Bridge
for London.
Grant:
A ‘Certificate of Grant’ is issued to an applicant who, upon successful prosecution of the
application, and by receipt of the certificate, becomes a patent holder. As a verb, ‘grant’
means the act of conferring an industrial property right to an applicant.
Grant of a patent:
Paris, Art. 4quater; PCT. Art. 4(3).
Paris, Art. 4quater
PCT. Art. 4(3)

3) Unless the applicant asks for any of the other kinds of protection referred to in Article 43,
designation shall mean that the desired protection consists of the grant of a patent by or for
the designated State. For the purposes of this paragraph, Article 2(ii) shall not apply.
(to) Grant a patent:

Culmination of the actions of a Patent Office, relevant to a conclusion favorable to an
applicant (form and substance are acceptable, and either no opposition filed or an
unsuccessful opposition) and granting a patent involves four steps: 1) details (bibliographic
(application) details and biographic (applicant(s) address(es), inventor(s) names, original
application number, filing date, certain priority application details and the title of the
invention), are entered in a Patent Register; also when and where applicable, the Register will
contain details of when fees were paid, and may include any details of licenses or assignments
that have been recorded; 2) The Patent Office will publish in its Official Gazette, references to
the grant of the patent with prescribed biographical data, either of the abstract or main claim,
and, if there are drawings, the single most illustrative drawing; 3) the Certificate of Grant is
issued, the actual legal document, of which a copy of the granted patent is also issued; 4)
publication of the patent document itself in printed form, for use as technical information and,
subject to payment of a fee, to interested third parties.
H
Holder of the right:

(IPIC, Art. 2).
As defined in the Treaty on Intellectual Property in Respect of Integrated Circuits, "holder of
the right means the natural person who, or the legal entity which, according to the applicable
law, is to be regarded as the beneficiary of the protection referred to in Article 6
Deceptive indication of the source:

From the Madrid Agreement for the Repression of False or Deceptive Indications of Source
on Goods (April 14, 1891), Article 1(1).
Indication of source:
The qualifying identifier to which one would associate the origin of specific goods or items.
Industrial design:
An industrial design is the ornamental aspect of a useful article. This ornamental aspect may
be constituted by elements which are three-dimensional (the shape of the article) or two-
dimensional (lines, designs, colors) but must not be dictated solely or essentially by technical
or functional considerations. To be eligible for industrial property protection in a country,
industrial designs must be original or novel and must be registered in a government office
(usually the same office as that which grants patents). Protection of an industrial design means
that third parties not having the consent of the owner of the protected industrial design may
not make, sell or import articles bearing or embodying a design which is a copy, or
substantially a copy, of the protected design, when such acts are undertaken for commercial
purposes. Protection is given for a limited period of time (generally, 10 to 15 years).
Industrial design application:

A document filed by the applicant, or by an agent (representative) on his (its) behalf,
requesting the registration of one or more industrial designs.
Industrial property:
(Paris, art. 1 (3)).
Industrial property shall be understood in the broadest sense and shall apply not only to
industry and commerce proper, but likewise to agricultural and extractive industries and to
all manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle,
minerals, mineral waters, beer, flowers, and flour
Industrial Property Office:
(HIPID, p. 10.1.13).
The governmental or intergovernmental authority which receives applications for the grant of
industrial property rights and which grants and administers these rights in accordance with the
respective laws. Since there are several kinds of industrial property rights, there may be more
than one industrial property office (e.g., a “patent office” and a “trademark office”) in a
country. There is also the possibility that an industrial property office acts on behalf of the
governments of several countries on the basis of a treaty concluded to that effect (“regional
industrial property office”).
Industrially applicable:
A claimed invention shall be considered industrially applicable if, according to its nature, it
can be made or used (in the technological sense) in any kind of industry. "Industry" shall be
understood in its broadest sense, as in the Paris Convention for the Protection of Industrial
Property.
(to) Infringe:
Paris, Art.6quinquies B.1
1. when they are of such a nature as to infringe rights acquired by third parties in the country
where protection is claimed.
Infringement:
Paris, Art. 2(1).
(1) Nationals of any country of the Union shall, as regards the protection of industrial
property, enjoy in all the other countries of the Union the advantages that their respective
laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights
specially provided for by this Convention. Consequently, they shall have the same protection
as the latter, and the same legal remedy against any infringement of their rights, provided
that the conditions and formalities imposed upon nationals are complied with.
Infringement of copyright:
Any unauthorized use of a work protected by copyright where authorization of the use is
required by law. Infringement of copyright characteristically consists of the unauthorized use
itself (e.g. exhibition, reproduction, performance, broadcasting, other communication to the
public of the work without permission; unauthorized distribution, exportation, importation of
copies thereof; plagiarism; derivative use without the author’s consent, etc.); in countries
protecting moral rights, infringement of copyright may also consist of distortion of the work,
omission of the mention of authorship, etc. (See GCNR, p. 134).
Infringement proceedings:
Generally understood as comprising all kinds of legal procedure instituted before a court or
any competent authority for imposing sanctions on the infringement of copyright. (See
GCNR, p. 135).
Infringing copies of a work:
Copies of a work produced by any process and in any form the making of which involves
infringement of the copyright in the work. In the case of audiovisual fixations, phonograms
or duplicated thereof, the making of infringing copies may also violate the relevant
neighboring rights. Such copies are as a rule subject to seizure. (See GCNR, p. 133).
Innovation:
WIPO Model Law (Inventions), Preamble.
1. Considering
(a) the importance of new technology for the economic development and in particular the
industrialization of the country;
(b) the necessity of creating new technology in the country and of adapting existing
technology to the needs of the country;
(c) the necessity of having access to foreign technology;
2. Considering further
(a) that one of the basic conditions for creating new technology in the country, for adapting
existing technology to the needs of the country and for having access to foreign technology is
the establishment of an appropriate legal and administrative framework for the promotion of
inventiveness among nationals of the country, for the encouragement of investment in all
branches of industry using inventions and for the evaluation, selection, acquisition and
assimilation of foreign technology as well as the improvement of such technology in
accordance with the needs of the country;
(b) that the protection of inventions and the remuneration of innovations are important
elements of such a legal and administrative framework;
3. Taking into account the fact
(a) that the protection of inventions and the remuneration of innovations involve both private
and public interests;
(b) that the grant of rights with respect to the protection of inventions or the remuneration of
innovations is to be balanced by the imposition of obligations;
(c) that an important obligation for the owner of a patent is to ensure the appropriate working
of the patented invention on the territory of the country;
(d) that, in addition to dealing with applications for the protection of inventions, an industrial
property office has the task of supplying, on the basis of published patent documents,
information to the public on existing technology;
(e) that the legal and administrative framework for the protection of inventions and the
remuneration of innovations and for the resulting dissemination of information on technology
constitutes an important element of the technological infrastructure of the country;
The lauthorityl adopts the following Law:
PART 1: PATENTS
Intellectual property:
In the WIPO Convention “intellectual property” shall include the rights relating to: literary,
artistic and scientific works, performances of performing artists, phonograms, and broadcasts,
inventions in all fields of human endeavor, scientific discoveries, industrial designs,
trademarks, service marks, and commercial names and designations, protection against unfair
competition, and all other rights resulting from intellectual activity in the industrial, scientific,
literary or artistic fields. (See WIPO Convention, Art. 2 (viii)).
International Bureau of the World Intellectual Property Organization:

(HIPID, p. 10.1.14).
The International Bureau of the World Intellectual Property Organization is the Secretariat of
the World Intellectual Property Organization (WIPO). The International Bureau of WIPO is
considered, for the purposes of certain treaties (e.g., PCT and Madrid Agreement) and certain
procedural stages, as an industrial property office.
International Patent Application:

(HIPID, p. 10.1.14).
An application for the protection of an invention filed under the Patent Cooperation Treaty
(PCT).
(to) Invalidate a patent:

See Paris, Art. 4quater; PLT, Art. 10.
Paris, Art. 4quater
PLT, Art. 10
(1) [Validity of Patent Not Affected by Non-Compliance with Certain Formal
Requirements] Non-compliance with one or more of the formal requirements referred to in
Articles 6(1), (2), (4) and (5) and 8(1) to (4) with respect to an application may not be a
ground for revocation or invalidation of a patent, either totally or in part, except where the
non-compliance with the formal requirement occurred as a result of a fraudulent intention.
(2) [Opportunity to Make Observations, Amendments or Corrections in Case of Intended

Revocation or Invalidation] A patent may not be revoked or invalidated, either totally or in
part, without the owner being given the opportunity to make observations on the intended
revocation or invalidation, and to make amendments and corrections where permitted under
the applicable law, within a reasonable time limit.
(3) [No Obligation for Special Procedures] Paragraphs (1) and (2) do not create any
obligation to put in place judicial procedures for the enforcement of patent rights distinct
from those for the enforcement of law in general.
(to) Invalidate the registration of a mark:

See ‘refusal’ and Paris, Art. 5C(2).
Invention:
An invention is a novel idea which permits in practice the solution of a specific problem in the
field of technology.
Inventive step:
A claimed invention shall be considered to involve an inventive step if, having regard to the
prior art it is not, at the prescribed relevant date, obvious to a person skilled in the art.
Inventor:
(HIDIP, p. 10.1.15).
A person who is the author of an invention. According to article 4ter of the Paris Convention,
the inventor has the right to be mentioned as such in the patent.
Inventor’s certificate:
(HIDIP, p. 10.1.15);
Specific form of protection of invention which, together with patents, used to exist in several
countries and still exists in a few countries. (See Paris, Art. 4)).
Paris, Art. 4
(1) Applications for inventors' certificates filed in a country in which applicants have the
right to apply at their own option either for a patent or for an inventor's certificate shall give
rise to the right of priority provided for by this Article, under the same conditions and with
the same effects as applications for patents.
(2) In a country in which applicants have the right to apply at their own option either for a
patent or for an inventor's certificate, an applicant for an inventor's certificate shall, in
accordance with the provisions of this Article relating to patent applications, enjoy a right of
priority based on an application for a patent, a utility model, or an inventor's certificate.
Joint authorship:
Generally understood as interdependent authorship of two or more authors of a joint work.
Joint authors are also sometimes called co-authors. In consideration of the peculiarities
inherent in the creation of a joint work, some aspects of the protection of the rights of the
authors in that work are usually governed by special rules. According to most copyright laws,
joint authors can authorize the use of the work only jointly and the terms of protection of
rights to be measured from the death of the author are computed from the death of the last
surviving author. The moral rights, in so far as granted by the applicable law, pertain to each
of the joint authors individually and can also be exercised separately. (See GCNR, p. 135).
Joint work:
A joint work or work of joint authorship is generally understood as meaning a work created
by two or more authors in direct collaboration or at least having regard to one another’s
contributions, which may not be separated from each other and considered as independent
creations. Examples of the most common types of joint works may be dramatico-musical
compositions, musical works with lyrics, manuals written by several authors or computer
programs created by a team. The authors of such a work are called joint authors or co-authors
and their copyright in the whole unitary work in subject to special rules of copyright law.
Joint works are not to be confused with either composite or collective works or collections.
(See GCNR, p. 136).
Know-how:
Know-how defines the proprietary knowledge resource that may be necessary to produce a
commercially viable product, yet was not necessary to satisfy the disclosure requirement of a
patent application. One might say know how is the expertise required to run the patented
invention properly; it is often the subject of a written contract.
Lapse of a patent:
(2) The countries of the Union shall have the right to provide for the restoration of patents
which have lapsed by reason of non-payment of fees.
License:
License means, in the case of a right conferred by a patent, or by a protected utility model,
industrial design, new plant variety or trademark (“industrial property”), the permission, given
by the owner of that right (“licensor”) to another person (“licensee”), to perform certain acts
which are covered by that right. (See LGDC, para. 78 (vii)).
License (in the field of copyright):

Generally understood in the field of copyright as the authorization (permission) given by the
author or other owner of copyright (licensor) to the user of the work (licensee) to use it in a
manner and according to conditions agreed upon between them in the pertinent contract
(licensing agreement). Unlike an assignment, a license does not transfer ownership; it only
constitutes a right or rights to use the work under the copyright in it, which remains with the
licensor, though restricted according to the scope of the license granted. The license is either
exclusive or non-exclusive; in the latter case, the owner of the copyright may lawfully grant
similar licenses to other licensees too. Often the licensee also obtains the right to exploit his
license by allowing other persons to use the work correspondingly (sub-licenses). Copyright
conventions and national copyright laws may for compulsory provide licenses and statutory
licenses in special cases. (See GCNR, p. 145).
Licensee:
See ‘license’.
Licensor:
‘See license’.
Limitation of copyright:
Such limitations (often referred to as “exceptions”) consist of provisions in copyright laws
restricting the exclusive right of the author with regard to the exploitation of his work. The
main forms of such limitations are cases of free use, compulsory licenses and statutory
licenses. (See GCNR, p. 147).
Literary work:
Strictly speaking, a writing of great value from the standpoint of the beauty and emotional
effect of its form and content. From the point of view of copyright, however, a general
reference to literary works is commonly understood as meaning all sorts of original written
works, be they of a belletristic, scientific, technical or merely practical character, irrespective
of their value or purpose. (See GCNR, p. 149).
Mark:
A mark is a sign, or a combination of signs, capable of distinguishing the goods or services of
one undertaking from those of other undertakings. The sign may particularly consist of one or
more distinctive words, letters, numbers, drawings or pictures, emblems, colors or
combinations of colors, or may be three-dimensional, such as the form of containers or
packages for the product (provided they are not solely dictated by their function). The sign
may also consist of combinations of any of the foregoing.
Morality:
PCT, Art. 21(6).
(6) If the international application contains expressions or drawings which, in the opinion of
the International Bureau, are contrary to morality or public order, or if, in its opinion, the
international application contains disparaging statements as defined in the Regulations, it
may omit such expressions, drawings, and statements, from its publications, indicating the
place and number of words or drawings omitted, and furnishing, upon request, individual
copies of the passages omitted.
Moral rights:
These rights comprise the right to decide on disclosure of the work; the right to claim
authorship thereof (to have the name of the author and the title of the work mentioned in
connection with the use of the work); the right to prevent the mention of the author’s name if
the author of the work wishes to remain anonymous; the right to choose a pseudonym in
connection with the use of the work; the right to object to unauthorized modification of the
work, to mutilation thereof and to any derogatory action in relation thereto; the right of
withdrawal of the work from public use against payment of compensation for damages caused
to any person who has previously received proper authorization to use the work. Most of the
copyright laws recognize moral rights as an inalienable part of the copyright, distinct from the
so-called economic rights. Some laws also provide for moral rights of performers to protect
them against distortion of their performances and grant them the right to claim the mention of
their name in connection with their performances. (See GCNR, p. 161).
Multimedia productions:
While no acceptable legal definition has been developed, there is a consensus that the
combination of sound, text and images in a digital format, which is made accessible by a
computer program, embodies an original expression of authorship sufficient to justify the
protection of multimedia productions under the umbrella of copyright.
Musical work:
Generally understood as an artistic work protected by copyright. Such works comprise all
kinds of combinations of sounds (composition) with or without text (lyric or libretto), to be
performed by musical instruments and/or the human voice. If the work is also intended for
stage performance, it is called a dramatico-musical work. Music usually forms part of
cinematographic works too. The author of a musical work is generally referred to as the
composer. The most frequent uses of musical works for which protection is granted under
copyright laws are reproduction (as sheet music or recording), performance, broadcasting
other forms of communication to the public, arrangement and use as background music.
Copyright laws making protection subject to fixation in material form only protect music
written in musical notation or recorded appropriately. Other copyright laws also protect
improvisations or empirically transmitted musical works against unauthorized fixation or
communication to the public. (See GCNR, p. 163).
National patent:
(PCT, Art. 2 (iii)).
(iii)"national patent" means a patent granted by a national authority;
National treatment:
National treatment means that, as regards the protection of industrial property, each country
party to the Paris Convention must grant the same advantages as regards protection to
nationals of the other member countries as it grants to its own nationals.
Neighboring rights:
See Related Rights.
Non-obvious character of an invention:

See PCT, Art. 33(1); Draft 1991, Art. 11(1) and (3).
PCT, Art. 33(1)
1) The objective of the international preliminary examination is to formulate a preliminary
and non-binding opinion on the questions whether the claimed invention appears to be novel,
to involve an inventive step (to be non-obvious), and to be industrially applicable.
Draft 1991, Art. 11(1) and (3).

Art. 11(1)
Art. 11 (3)
Non-obviousness of an invention:
See PCT, Art. 33(1); Draft 1991, Art. 11(1) and (3).
PCT, Art. 33(1)
(1) The objective of the international preliminary examination is to formulate a preliminary
Draft 1991, Art. 11(1) and (3).

Art. 11(1)
Art. 11 (3)
Non-voluntary license:
WIPO Model Law (Inventions), Sec. 147(i).
i. The procedures provided for in Chapters IX and X are administrative rather than judicial
(except for certain appeals: see Sections 152(2)(a) and 156(4)(b)). The advantage of this
choice is that an administrative procedure is in principle quicker and cheaper than a judicial
one, and speed and cost are essential factors in the efficiency of the system non-voluntary
licenses and exploitation by or for the Government. It goes without saying, however, that
there is nothing to prevent a country from opting for an entire judicial procedure, either
because such a procedure is better suited to its legal traditions or for any other reason. In. that
case, a way of retaining the main advantages of the administrative procedure would be to have
a summary form of judicial procedure, there is one, for non-voluntary licenses and
exploitation by or for the Government.
Novel:
A claimed invention shall be considered novel if it is not anticipated by the prior art.
Novel invention:
PCT, Art. 33(1).
and non-binding opinion on the questions whether the claimed invention appears to be
novel, to involve an inventive step (to be non-obvious), and to be industrially applicable.
Novelty of an industrial design:

WIPO Model Law (Industrial Design), Sec. 4.
A regular application for registration of an industrial design shall raise a presumption
that the design was new at the time of the application.
In respect of novelty, subsection (1) establishes a presumption in favor of the applicant for
registration of an industrial design, provided the application has been made in accordance
with Sections 11 and 13. This presumption is important where the registered owner brings
legal proceedings against a user of the same industrial design. It will be for the defendant to
prove that the applicant's design was not new at the time of the application. The presumption
may also play a part in the event of opposition under Section 15, Alternative B, or of an
appeal by the applicant, under Section 18, against a refusal of registration based upon lack of
novelty (in the case of examination as to substance under Section 15, Alternative C).
An industrial design shall not be new if, before the date of application for registration or
before the priority date validly claimed in respect thereof, it has been made available to
the public, anywhere and at any time whatever, through description or use, or in any
other way.
Subsection (2) lays down the way in which the presumption of subsection (1) may be
rebutted: the opponent of the registered owner must prove that the design was made available
to the public before the date of application or before the validly claimed date of priority.
The Third Model Law Committee decided in favor of absolute novelty, that is, without any
limitation as to the time or place or as to the means by which a prior creation was made
available to the public. It expressed the opinion, however, that other solutions could be
equally envisaged. The principle of absolute novelty means that even prior creations made
available in a distant country, or long before the application for registration of the industrial
design, must be taken into consideration. To temper this principle, limitations as to time could
be prescribed (50 years before the application, for example) and as to space (for example, the
territory of a country), or as to the means by which the prior creation was made available to
the public (for example, by only considering as disclosed, designs published as the result of
an application in the country or enjoying de facto notoriety in the industrial or business circles
of that country).
Or instead, the law might also allow an applicant to prove, as a defense against a prior
creation, that he could not have been aware of the earlier disclosure. If this solution were
adopted, a further provision giving any third person who had used the industrial design in
good faith, before the date of application, the right to continue such use, would be desirable.
To constitute a prior creation referred to in subsection (2), it is not necessary for an industrial
design in its strict sense to be involved. The prior creation can consist of a work of art or of a
form found in nature or in the public domain, that is, forms which have become available to
all.
Where an industrial design has been applied for but not published, a subsequent application
for the same design will not be precluded for lack of novelty; but the first application will
have a right of priority under Section 7 (1) and (3), and the ultimate registration of the later
application may be refused or, if accepted, contested on the ground of nullity in accordance
with Section 33.
The rule that an industrial design made available to the public is no longer protected under
the law of industrial designs, is of course also applicable in the case where it is the actual
person entitled to legal protection (see Chapter 11) who has made it available prior to the
application (except in the case of exhibitions provided for in subsection (3)). The person
entitled to legal protection has therefore an interest in applying for registration of the
industrial design as early as possible, in order not to lose the protection under the law of
industrial designs. (Protection under the law of copyright is not however forfeited in these
circumstances.)
An industrial design shall not be deemed to have been made available to the public
solely by reason of the fact that, within the period of six months preceding the filing of
an application for registration, it has appeared in an official or officially recognized
international exhibition.
Subsection (3) deals with the case of an industrial design exhibited at a public exhibition. The
industrial design will not, for this reason alone, be deemed to have been made available to
the public, provided that the exhibition was official or officially recognized and the industrial
design was exhibited in the six months preceding the date of application.
An industrial design shall not be new solely by reason of the fact that it differs from
earlier embodiments in minor respects or that it concerns a type of product different
from the said embodiments.
Under subsection (4), prior creations precluding novelty (see subsection (2)) are not restricted
to those which are identical to the design or which concern only the same kind of products.
Minor differences of appearance, or use for another kind of product, do not constitute a
sufficient factor of novelty. However, the accent, in this context, is on the word "minor."
Objects which are only similar in form should not be taken into account. Otherwise, it would
be almost impossible to create anything new.
Novelty of an invention:
See PCT, Art. 33(1), WIPO Model Law (inventions), Sec. 114).
PCT, Art. 33(1)
WIPO Model Law (inventions), Sec. 114).

a. This Section deals with the first condition of patentability referred to in Section 113, that is,
novelty.
b. Subsection (1) states the principle that the invention must not only be an inventor's idea
(i.e., subjectively new) but must also be objectively new. An invention is objectively new if it
does not form part of the state of the art, that is, it is not "anticipated" by prior art; thus the
definition of novelty is negative. If, for example, the invention has already been described in a
printed publication, that publication constitutes an "anticipation" and therefore the invention
is not new.
c. Subsection (2): "Prior art" may be described as the sum of knowledge to be taken into
consideration to evaluate the novelty of an invention and also the "inventive step," (see
Section 115). The decisive moment for determining prior art in respect of a given invention
(since the state of the art is developing all the time, and prior art increases with each moment)
is the filing date of the patent application for the invention or, where appropriate, the filing
date of the application on the basis of which priority is claimed. To obtain the benefit of such
a "priority date," the patent application must comply with the provisions of Section 127.
d. Novelty may be universal or local. In the first case, novelty can be destroyed by an event
occurring anywhere in the world. In the second case, novelty can be destroyed only by an
event taking place in the country. Both systems have advantages and disadvantages.
Theoretically, universal novelty is the more satisfactory since it corresponds to the very
concept of a new invention, since something which has already been created somewhere
cannot be new in the strict sense. However, the system of local novelty enables patents to be
granted for products and processes which are new in the country without being new in a
worldwide context, and this can have a stimulating effect on both inventive activity and
investments in the country.
e. The Model Law recommends a mixed system prescribing universal novelty as far as
publications in tangible form are concerned and local novelty as far as other forms of
disclosure are concerned. Naturally, a country may, if it prefers, choose universal novelty
even for as far as non-tangible disclosures are concerned.
f As regards universal novelty, the concept of "publication" is to be understood in a restrictive

sense. For example, a text reproduced in a limited number of copies which are not available to
the public does not constitute "publication" for the purposes of prior art. It would be necessary
that at least one copy be available to the public, for example in a library. The words "in
tangible form" are used to qualify "publication" in order to distinguish disclosures having a
corporeal existence from oral disclosures and disclosures by use or otherwise. Examples of
such "publications in tangible form" would be printed, typewritten or handwritten
publications, as well as microfilms, tape or disc recordings, computer cards, tapes or discs.
g. In the case of local novelty, making available to the public might occur by means of oral
disclosure (during a public lecture, for example), by use of the product or process
incorporating the invention, or by any other means (such as demonstration or exhibition).
h. In principle, the prior art only includes that which has been disclosed to the public before
the determining date (paragraph (a)). However, there is an exception in the case of the
contents of a domestic patent application having a filing or, where appropriate, priority date
which is prior to the determining date: those contents are made part of the prior art although
they had not yet been disclosed to the public, but provided that they are included in the patent
which is subsequently granted on the basis of the said application (paragraph (b)). The goal of
this provision is to avoid the same invention being protected by two patents when two
applications are pending before the Patent Office at the same time and one cannot be applied
against the other as a prior disclosure to the public. To resolve this situation, two solutions are
possible. The first is that which is
presented in the Model Law (the so-called “whole contents” system): all the contents of the
application having the earlier filing or priority date (“earlier application”) are made part of the
prior art with regard to the other application (“later application”), that is to say, not only that
which is claimed in the earlier application but also that which is described therein without
being claimed; it is all the contents of the earlier application which arc to be compared with
the claims of the later application. It is thus possible, within the -whole contents- system, that
the later application will have applied against it something that is not the invention claimed in
the earlier application. On the other hand, according to the second solution possible (the
so-called “prior clairn” system), the earlier application will only preclude the grant of a patent
on the later applications if' tile same invention is being claimed in both applications: in other
words, something which is only described in the earlier application without being claimed
therein cannot be invoked against the later application.
i. The Model Law recommends the adoption of the so-called -whole contents" system because
it is more easily administered; indeed, the comparison of the claims of the two applications
which is necessary in the “prior claim” system is a difficult task. It should be noted that, in
either system, only that which appears in the patent granted on the basis of the earlier
application may be invoked against the later application. an element appearing in the earlier
application as filed but which was later deleted would not be taken into account. The Patent
Office, when it examines the later application and discovers that ail earlier application exists
which might be applied against the later application, must suspend the examination of the
later application until the procedure on the earlier application has been completed; then, and
only then, will it be possible to know what is to be applied against the later application and to
proceed with its examination.
j. In evaluating whether an invention is new, each element of the prior art should be
considered separately. Thus, there is an anticipation only if the invention claimed in the patent
application is entirely found in a single element of the prior art. On the contrary, the prior art
is to be considered as a whole in evaluating inventive step (see Rule 115 and paragraph e of
the comments on Section 115).
k. Subsection (3) provides a -period of grace- for a patent application claiming an invention to
be filed after the invention has been disclosed to the public as a result of acts by the applicant
or his predecessor in title, without such disclosure being considered prior art against the
application. The period of grace proposed is one year from the date of the disclosure of the
invention to the public. Such a period of grace is of particular interest for a developing
country since it is not always to be expected that the nationals 0f' such countries will be fully
aware at the time of making an invention of the importance of keeping it secret until a patent
application is filed. The period of grace therefore enables them to avoid the loss of their rights
through sheer inexperience. A typical case of disclosure covered by subsection (3) would be
the display, during the period of grace, of the invention at an official or officially recognized
international exhibition (see Article 11 of the Paris Convention for the Protection of Industrial
Property, hereinafter referred to as the Paris Convention-).
l. It should be understood that the period of grace only relates to domestic applications. In a
foreign country whose law does not contain a provision similar to Section 114(3), a public
disclosure of the invention prior to the filing of a domestic application may constitute prior art
precluding the grant of a patent. Thus, if patent protection is to be sought also in other
countries, it is important to file a domestic application before making any disclosure of the
invention, without relying on the period of grace.
m. Subsection (4 ) deals with the case where disclosure resulted from an abuse in relation to
the applicant or his predecessor in title. Acts of abuse would be, for instance, theft of the
invention or breach of an agreement obliging a person to keep secret the invention
communicated to hirn by the applicant or his predecessor in title. If the applicant files a patent
application claiming the invention within one year from the disclosure of the invention due to
an abuse, such disclosure will not be considered prior art against the application.
(to) Oppose the registration of a mark:

Paris, Art. 6septies (1).
(1) If the agent or representative of the person who is the proprietor of a mark in one of the
countries of the Union applies, without such proprietor's authorization, for the
registration of the mark in his own name, in one or more countries of the Union, the
proprietor shall be entitled to oppose the registration applied for or demand its
cancellation or, if the law of the country so allows, the assignment in his favor of the said
registration, unless such agent or representative justifies his action.
Oral disclosure of a patent:

PCT, Rule 64.2.
In cases where the making available to the public occurred by means of an oral disclosure,
use, exhibition or other non-written means ("non-written disclosure") before the relevant date
as defined in Rule 64.1(b) and the date of such non-written disclosure is indicated in a written
disclosure which has been made available to the public on a date which is the same as, or
later than, the relevant date, the non-written disclosure shall not be considered part of the
prior art for the purposes of Article 33(2) and (3). Nevertheless, the international preliminary
examination report shall call attention to such non-written disclosure in the manner provided
for in Rule 70.9.
Country of origin:
Lisbon, Art. 2 (l & 2).
Origin of the goods:

Paris, Art.6ter(9).
(9) The countries of the Union undertake to prohibit the unauthorized use in trade of the State
armorialbearings of the other countries of the Union, when the use is of such a nature as to
be misleading as to the origin of the goods.
Originality:
Originality in relation to a work means that it is the author’s own creation and is not copied
totally or essentially from another work. Originality is required by copyright law for the
composition of the contents as well as the form of their expression , but not in relation to mere
ideas, information or methods embodied in the work. Originality is not to be confused with
novelty: the pre-existence of a similar work unknown to the author does not affect the
originality of an independent creation. In the case of a derivative work, originality resides in
the individual method of adaptation of the pre-existing work as referred to, among others, in
Article 9 of the Mexican Law. The requirement of originality as a condition of copyright
protection is expressed in many national copyright laws by qualifying protectible works as
“original”. This sense of the attribute “original” should not be confused with the meaning of
the term when used to oppose original works as pre-existing works to derivative works. (See
GCNR, p. 175)
Paris Convention:
The Convention, concluded in l883, was completed by an Interpretative Protocol in Madrid in
l891, was revised at Brussels in l900, at Washington in 1911, at The Hague in 1925, at
London in 1934, at Lisbon in l958 and at Stockholm in l967, and it was amended in 1979.
The Convention is open to all States. Instruments of ratification or accession must be
deposited with the Director General of WIPO. The Convention applies to industrial property
in the widest sense, including inventions, marks, industrial designs, utility models (a kind of
“small patent” provided for by the laws of some countries), trade names (designations under
which an industrial or commercial activity is carried on), geographical indications (indications
of source and appellations of origin) and the repression of unfair competition. The
substantive provisions of the Convention fall into three main categories: national treatment,
right of priority, common rules. The Paris Union has an Assembly and an Executive
Committee. Every State member of the Union which has adhered to at least the
administrative and final provisions of the Stockholm Act (1967) is a member of the
Assembly. The members of the Executive Committee are elected from among the members
of the Union, except for Switzerland, which is a member ex officio. On March 1, 1999, the
Executive Committee had 37 members. The establishment of the biennial program and
budget of the WIPO Secretariat - as far as the Paris Union is concerned - is the task of its
Assembly. (See http://www.wipo.int).
Patent:
A patent is a document, issued by a government office, which describes the invention and
creates a legal situation in which the patented invention can normally only be exploited
(made, used, sold, imported) by, or with the authorization of, the patentee. The protection of
inventions is limited in time (generally 20 years from the filing date of the application for the
grant of a patent).
Patent application:
(HIDIP, p. 10.1.19).
A document filed by the applicant, or by an agent (representative) on his (its) behalf,
requesting the grant of a patent. It usually contains a detailed description of the invention, the
claims, and drawings when necessary for the understanding of the invention. According to the
patent legislation of some countries, the patent application is published 18 months after the
filing date or, where appropriate, priority date, sometimes together with a search report.
Conditions of patentability:
Draft 1991, Art. 11.
(1) [Novelty]
(a) An invention shall be considered novel if it does not form part of the prior art. For the
determination of novelty, items of prior art may only be taken into account individually.
(b) The prior art shall consist of everything which, before the filing date or, where priority
is claimed, the priority date of the application claiming the invention, has been made
available to the public anywhere in the world.
[(c) Notwithstanding subparagraph`(b), any Contracting Party shall be free to exclude from
the prior art matter made available to the public, by oral communication, by display or
through use, in a place or space which is not under its sovereignty or, in the case of an
intergovernmental organization, under the sovereignty of one of its member States.]

Conditions of an invention:
PCT, Art. 33.
(2) For the purposes of the international preliminary examination, a claimed invention shall
be considered novel if it is not anticipated by the prior art as defined in the Regulations.
(3)For the purposes of the international preliminary examination, a claimed invention shall
be considered to involve an inventive step if, having regard to the prior art as defined in the
Regulations, it is not, at the prescribed relevant date, obvious to a person skilled in the art.
be considered industrially applicable if, according to its nature, it can be made or used (in the
technological sense) in any kind of industry. "Industry" shall be understood in its broadest
sense, as in the Paris Convention for the Protection of Industrial Property.
(5)The criteria described above merely serve the purposes of international preliminary
examination. Any Contracting State may apply additional or different criteria for the purpose
of deciding whether, in that State, the claimed invention is patentable or not.
(6)The international preliminary examination shall take into consideration all the documents
cited in the international search report. It may take into consideration any additional
documents considered to be relevant in the particular case.
Substantive conditions of patentability:

PCT, Art. 27(5).
(5) Nothing in this Treaty and the Regulations is intended to be construed as prescribing
anything that would limit the freedom of each Contracting State to prescribe such substantive
conditions of patentability as it desires. In particular, any provision in this Treaty and the
Regulations concerning the definition of prior art is exclusively for the purposes of the
international procedure and, consequently, any Contracting State is free to apply, when
determining the patentability of an invention claimed in an international application, the
criteria of its national law in respect of prior art and other conditions of patentability not
constituting requirements as to the form and contents of applications.
Patentable invention:
See Paris, Art. 11(1); WIPO Model Law (Inventions), Sec. 113.
Paris, Art. 11(1)
(1) The countries of the Union shall, in conformity with their domestic legislation, grant
temporary protection to patentable inventions, utility models, industrial designs, and
trademarks, in respect of goods exhibited at official or officially recognized international
exhibitions held in the territory of any of them.
WIPO Model Law (Inventions), Sec. 113

This Section sets out the three basic conditions for patentability of an invention: novelty, inventive step and
industrial applicability.
Patent Cooperation Treaty (PCT):
The Patent Cooperation Treaty is an agreement for international cooperation in the field of
patents. It is often spoken of as being the most significant advance in international
cooperation in this field since the adoption of the Paris Convention itself. It is however,
largely a treaty for rationalization and cooperation with regard to the filing, searching and
examination of patent applications and the dissemination of the technical information
contained therein. The PCT does not provide for the grant of "international patents": the task
remains exclusively in the hands of the patent Offices of, or acting for, the countries where
protection is sought (the "designated Offices"). The PCT does not compete with the Paris
Convention; it is a special agreement under the Paris Convention open only to States which
are also party to the Paris Convention. The principal objectives of the PCT is to simplify and
to render more effective and more economical—in the interests of the users of the patent
system and the Offices which have responsibility for administering it—the previously
established means of applying in several countries for patent protection for inventions.
Patentee:
(HIDIP, 10.1.21).
The owner of the patent, i.e., the holder of the right represented by the patent.
Performance of a work:
Generally understood as meaning the presentation of a work by action such as playing,
reciting, singing, dancing or projecting, either to a group of listeners or spectators in their
presence or by transmitting the presentation by means of such technical devices or processes
as microphones, broadcasting or cable television. Performance of works of folklore is
consistent with the common understanding of the term “performance of literary and artistic
works”, as used in the Rome Convention. Performance, however, may also consist of
presentations other than performing such works, for example in the case of performances of
variety artists. (See GCNR, p.182).
Petits droits:
The commonly used French expression for non-dramatic performing rights in musical works
with or without a corresponding text. They are administered as a rule by authors’ societies or
other appropriate organizations which are entitled to authorize the performance of all works in
the repertoire of which they have charge. The authorization (license) is granted against
payment of fees collected on behalf of the owners of copyright for periodic distribution
among them in accordance with the frequency of the use of each musical composition and
with the relevant statute and approved rules of the competent society or other organization. In
most countries there is only one organization administering these rights; the repertoire of
such an organization includes practically all musical works and it can be presumed in good
faith that the authorization obtained from that organization covers all musical performances
organized by the authorized person. (See GCNR, p. 186).
Public performance:
Under numerous national laws, a "public performance" is considered any performance of a
work at a place where the public is or can be present, or at a place not open to the public, but
where a substantial number of persons outside the normal circle of a family and its closest
social acquaintances is present.
Performers:
(WPPT, Art.2 (a)).
Performers are actors, singers, musicians, dancers, and other persons who act, sing, deliver,
declaim, play in, interpret, or otherwise perform literary or artistic works or expressions of
folklore.
Person having ordinary skill in the art:

See WIPO Model Law (Inventions), Sec. 115.
a. This Section defines the second condition of patentability referred to in Section 113, that is,
inventive step (sometimes called "non-obviousness").
h. For an invention to be patentable, it is not enough for it to be new; it must also not be
obviously deducible from the prior art. The prior art available for the purposes of evaluating
inventive step is the same as that available for evaluating novelty and is specified in Section
114. Prior art therefore includes the contents of earlier applications in accordance with
Section 114(2)(b); additionally, if the invention is disclosed to the public in the circumstances
referred to in Section 114(3) or (4), this disclosure will not be taken into account in the
evaluation of inventive step.
c. In the same way as for novelty, the definition of inventive step is negative. inventive step
exists where the invention is not obviously deducible from the prior art. This condition is
satisfied if, at the date of filing the patent application (or of possible priority), the invention is
unexpected, in relation to the prior art, for a person having ordinary skill in the art.
d. The person having ordinary skill in the art, with regard to whom the inventive step is
evaluated, is someone specialized, in the country, in the field in question but not necessarily
the best expert of the country in that field, as the use of the adjective "ordinary" denotes.
e. In evaluating inventive step, the prior art is to be considered as a whole (see Rule 115),
whereas, for the purpose of evaluating novelty, anticipations are taken into account
individually (see paragraph j of the comments on Section 114).
Person skilled in the art:

See PCT, Arts. 5 and 33(3); Draft 1991, Art. 3(1).
PCT, Arts. 5
The description shall disclose the invention in a manner sufficiently clear and complete for
the invention to be carried out by a person skilled in the art.
PCT, Arts. 33(3)

be considered to involve an inventive step if, having regard to the prior art as defined in the
Regulations, it is not, at the prescribed relevant date, obvious to a person skilled in the art.
Draft 1991, Art. 3(1)
(1) [Disclosure]
(a) The application shall disclose the invention in a manner sufficiently clear and complete
for the invention to be carried out by a person skilled in the art.
(b) Where the application refers to biologically reproducible material which cannot be
disclosed in the application in such a way as to enable the invention to be carried out by a
person skilled in the art and such material is not available to the public, the application shall
be supplemented by a deposit of such material with a depositary institution. Any Contracting
Party may require that the deposit be made on or before the filing date or, where priority is
claimed, the priority date of the application.
Phonogram:
(WPPT, art.2 (b)).
Phonogram means the fixation of the sounds of a performance or of other sounds, or of a
representation of sounds, other than in the form of a fixation incorporated in a
cinematographic or other audiovisual work
Piracy:
Commonly understood in the fields of copyright and neighboring rights as reproducing
published works or phonograms by any appropriate means for public distribution and also
rebroadcasting another’s broadcast without proper authorization. Unlawful fixation of live
performances is referred to in common parlance as “bootlegging.” (See GCNR, p. 190).
Trademark piracy:
Trademark piracy means the registration or use of a generally well-known foreign trademark
that is not registered in the country (or is invalid as a result of non-use). (See ITLP, 13.1, p.
97).
Trademark piracy means the registration or use of a generally well-known foreign trademark
that is not registered in the country (or is invalid as a result of non-use).
The Paris Convention provides in its Article 6bis that a well-known trademark must be
protected even if it is not registered in the country. This is a important basis for the protection
of well-known brands against piracy. Article 6bis is restricted to identical and similar goods,
however. Often well-known trademarks are used by pirates on totally different goods, or for
services. Furthermore, courts sometimes require a trademark to be well known in the country
and deny protection, even if the true owner of the trademark can prove that it is internationally
well-known in a considerable number of countries. Improved protection against trademark
piracy is therefore needed. Section 6(1)(d) of the Model Law extends protection to
well-known trademarks and trade names independently of the goods or services concerned.
This is no doubt an important improvement, but it is still stipulated that the trademark must be
well known in the country, a requirement that fails to take sufficient account of the increasing
importance of international trade.
Pirated copyright goods:

(TRIPS, Art. 51, Footnote 14(b)).
"Shall mean any goods which are copies made without the consent of the right holder or
person duly authorized by the right holder in the country of production and which are made
directly or indirectly from an article where the making of that copy would have constituted an
infringement of a copyright or a related right under the law of the country of importation."
Prior art:
Prior art simply stated is all the knowledge that existed prior to the relevant filing or priority
date of a patent application, whether it existed by way of written or oral disclosure.
Conditions for any priority claim:

See Paris, Art. 4D; PCT, Art. 8(2)(a).
Paris, Art. 4D
(1) Any person desiring to take advantage of the priority of a previous filing shall be
required to make a declaration indicating the date of such filing and the country in which it
was made. Each country shall determine the latest date on which such declaration must be
made.
(2) These particulars shall be mentioned in the publications issued by the competent
authority, and in particular in the patents and the specifications relating thereto.
(3) The countries of the Union may require any person making a declaration of priority to
produce a copy of the application (description, drawings, etc.) previously filed. The copy,
certified as correct by the authority which received such application, shall not require any
authentication, and may in any case be filed, without fee, at any time within three months of
the filing of the subsequent application. They may require it to be accompanied by a
certificate from the same authority showing the date of filing, and by a translation.
(4) No other formalities may be required for the declaration of priority at the time of filing the
application. Each country of the Union shall determine the consequences of failure to comply
with the formalities prescribed by this Article, but such consequences shall in no case go
beyond the loss of the right of priority.
(5)Subsequently, further proof may be required. Any person who avails himself of the priority
of a previous application shall be required to specify the number of that application; this
number shall be published as provided for by paragraph (2), above.
PCT, Art. 8(2)(a)

(2)(a) Subject to the provisions of subparagraph (b), the conditions for, and the effect of, any
priority claim declared under paragraph (1) shall be as provided in Article 4 of the Stockholm
Act of the Paris Convention for the Protection of Industrial Property.
Producer of Phonograms:
(WPPT, Art.2 (d)).
Producer of a phonogram means the person, or the legal entity, who or which takes the
initiative and has the responsibility for the first fixation of the sounds of a performance or
other sounds, or the representations of sounds.
Programme-carrying signal:
An electronically generated carrier transmitting programmes of broadcasting organizations
through space. “Emitted signal” is understood to be any programme-carrying signal that goes
to or passes through a satellite; “derived signal” is a signal obtained by modifying the
technical characteristics of the emitted signal mainly for purposes of transmission to the
general public. Programme in this context means a body of live or recorded material
consisting of images, sounds, or both, embodied in signals emitted for the purpose of ultimate
distribution. (See GCNR, p. 201).
Property:
The most important feature of property is that the owner of the property may use it as he
wishes; nobody else can lawfully use his property without his authorization. The property
owner may be a human being or a legal entity, such as a corporation. In general terms, there
are three types of property. One is property consisting of movable things, such as a
wristwatch, a car, or furniture in a home. In some legal systems, this is known as "movable
property." No one except the owner of the wristwatch, the car or the furniture can use these
items of property. This legal right is referred to as "exclusive," because the owner has the
"exclusive" right to use his property. Naturally, the proprietor may authorize others to use the
property, but without such authorization, use by others is illegal. The second type of property
is immovable property, or as it is sometimes known, real property. Land and things
permanently fixed on it, such as houses, are immovable property, because they cannot be
lifted or moved. The third type of property is intellectual property, which protects the
creations of the human mind, the human intellect. This is why this kind of property is called
"intellectual" property.
Prosecution:
The term generally applied to the process of guiding a patent application from genesis to final
determination, whether or not successful, and involving representations to the Patent Office,
and to any challenges instituted against the applicant.
Protection:
Understood in the fields of copyright and neighboring rights as providing, by law, for rights,
or sometimes the prohibition of specified wrongful acts, for the benefit of authors, other
owners of copyright , performers, producers of phonograms and broadcasting organizations,
in order to safeguard the just and reasonable interests of the aforementioned persons in
relation to their works, performances, phonograms and broadcasts, especially in regard to
their use by others. Affording legal protection also means giving effect to the rights
mentioned by appropriate sanctions and application of remedies in infringement proceedings
against illicit acts affecting lawful interests. (See GCNR, p. 202).
Public domain:
Also referred to as “domaine public”, it means from the copyright aspect the realm of all
works which can be exploited by everybody without any authorization, mostly because of the
expiration of the term of protection or the lack of an international instrument ensuring
protection in the case of foreign works. (See GCNR, p. 207).
Publication:
(HIDIP, 10.1.22).
In publications on industrial property information matters, the terms "publication" and
"published," relating to industrial property documents, are normally used in the sense of
making available the contents of a document to the public.
Depending on the particular national law, patent documents may be published on several
levels of publication, as given in WIPO Standard ST.16, and in one of the following forms:
(1) by making the patent document available to the public at the industrial property office by
(i) laying it open to public inspection, within a determined period. The beginning of that
period, as well as its duration, are fixed by industrial property laws of the respective country;
(ii) supplying a copy of the document on request;
(2) by producing multiple copies of a document by printing or like process and offering to
anyone for buying;
(3) by reproducing the entire patent document in the official gazette.
According to some national laws, industrial property offices publish in the official gazette a
reference to the patent document which either
(i) may have already been published at an earlier procedural stage (e.g., the case of a patent
application which was published 18 months after its filing or priority date and to which a
reference is later published in the official gazette at the time of the grant of the patent
thereon), or
(ii) is made available to the public at the industrial property office.
Trademarks and industrial designs are usually published as entries in official gazettes.
See also "Official Gazette."
Publication of an application:
See PCT, Art. 21(1); Draft 1991, Art.15.
PCT, Art. 21(1)

(1) The International Bureau shall publish international applications.
Draft 1991, Art.15.

(1) [Requirement to Publish the Application]
(a) Subject to paragraphs`(2) to`(4), the Office shall publish the application as soon as
possible after the expiration of 18`months from the filing date or, where priority is claimed,
the priority date.
(b) Notwithstanding subparagraph`(a), any Contracting Party that, at the time of depositing
its instrument of ratification of, or accession to, this Treaty, does not provide for the
publication of applications as provided in subparagraph (a) may notify the Director General
at the said time that it reserves the right to publish applications as soon as possible after the
expiration of 24`months, rather than 18`months, from the filing date or, where priority is
claimed, the priority date.
International publication:
PCT, Art. 21.
(1) The International Bureau shall publish international applications.
(2)
(a) Subject to the exceptions provided for in subparagraph (b) and in Article 64(3), the
international publication of the international application shall be effected promptly
after the expiration of 18 months from the priority date of that application.
(b) The applicant may ask the International Bureau to publish his international
application any time before the expiration of the time limit referred to in
subparagraph (a). The International Bureau shall proceed accordingly, as provided in
the Regulations.
(3) The international search report or the declaration referred to in Article 17(2)(a) shall be
published as prescribed in the Regulations.
(4) The language and form of the international publication and other details are governed
by the Regulations.
(5) There shall be no international publication if the international application is withdrawn

or is considered withdrawn before the technical preparations for publication have been
completed.
(6) If the international application contains expressions or drawings which, in the opinion of
the International Bureau, are contrary to morality or public order, or if, in its opinion,
the international application contains disparaging statements as defined in the
Regulations, it may omit such expressions, drawings, and statements, from its
publications, indicating the place and number of words or drawings omitted, and
furnishing, upon request, individual copies of the passages omitted.
Publication of the invention:

Paris, Art. 4B.
Consequently, any subsequent filing in any of the other countries of the Union before the
Published work:
Often also referred to as a publication, a published work is frequently understood as meaning
any work made accessible to the public. In a more restricted legal sense, however, a
published work generally means only a work made available to the public through
reproduction and distribution of copies thereof. More detailed conditions to be fulfilled in
respect of a work before it can be national laws; for example, publication conforming with
the Universal Copyright Convention is subject to distribution to the public of copies from
which the work can be read or otherwise visually perceived, a condition not required in the
Berne Convention, which also recognizes publication in the form of phonograms. Published
works are governed in some respects by special rules both under international and national
copyright law. (See GCNR, 211).
Ratification:
The act of giving confirmation to a previous action or statement.
(to) Ratify:
In matters of treaty law, to confirm the previous act of signing by a State of a bilateral or
multilateral Agreement.
Refusal:
The first permitted ground for refusal or invalidation of a trademark exists where the
trademark infringes rights of third parties acquired in the country where protection is claimed.
These rights can be either rights in trademarks already protected in the country concerned or
other rights, such as the right to a trade name or a copyright. The second permitted ground for
refusal or invalidation is when the trademark is devoid of distinctive character, or is purely
descriptive, or consists of a generic name. The third permissible ground for refusal or
invalidation exists where the trademark is contrary to morality or public order, as considered
in the country where protection is claimed. This ground includes, as a special category,
trademarks which are of such a nature as to deceive the public. A fourth permissible ground
for refusal or invalidation exists if the registration of the trademark would constitute an act of
unfair competition. A fifth and last permissible ground for refusal or invalidation exists where
the trademark is used by the owner in a form which is essentially different from that in which
it has been registered in the country of origin. Unessential differences may not be used as
grounds for refusal or invalidation.
Regional patent treaty:

PCT, Art. 45.
(1) Any treaty providing for the grant of regional patents ("regional patent treaty"), and
giving to all persons who, according to Article 9, are entitled to file international applications
the right to file applications for such patents, may provide that international applications
designating or electing a State party to both the regional patent treaty and the present Treaty
may be filed as applications for such patents.
(2) The national law of the said designated or elected State may provide that any designation
or election of such State in the international application shall have the effect of an indication
of the wish to obtain a regional patent under the regional patent treaty.
Regional patent (under the PCT):

(PCT, art. 2 (iv))
Regional patent means a patent granted by a national or an intergovernmental authority
having the power to grant patents effective in more than one State.
.
Register (of Industrial Property Rights):

(HIDIP, 10.1.23).
Register kept by an industrial property office in which is recorded the legal status of different
industrial property rights. Usually, the office keeps separately a patent register, a trademark
register and an industrial design register
(to) Register marks:

Paris, Art. 5C(1).
(1) If, in any country, use of the registered mark is compulsory, the registration may be
cancelled only after a reasonable period, and then only if the person concerned does not
justify his inaction.
Related rights:
The purpose of related rights is to protect the legal interests of certain persons and legal
entities who either contribute to making works available to the public or produce subject
matter which, will not qualifying as "works" under the copyright systems of all countries,
express creativity or technical and organizational skill sufficient to justify recognition of a
copyright-like property right.
Remuneration:
Understood in the fields of copyright and neighboring rights as meaning payments to be made
by users of authors’ works, performances, phonograms and broadcasts to authors, performers,
producers of phonograms, broadcasting organizations and other owners of the rights
concerned, inasmuch as they are protected as regards the respective use. Remuneration may
consist of one single payment (also called “outright compensation” or “lump sum”) made for
specific uses. Authors’ fees are frequently stipulated in the form of royalties with or without
an advance payment on their account. (See GCNR, p. 224).
(to) Renew the registration of a mark:

See renewal (of a trademark) and Paris, Art. 6quinquies E.
Paris, Art. 6quinquies E
However, in no case shall the renewal of the registration of the mark in the country of origin
involve an obligation to renew the registration in the other countries of the Union in which
the mark has been registered.
Renewal (of a trademark):

(ITLP, 4.6, p. 40).
Since trademarks do not grant a monopoly right that could be exploited, there is no need to
limit their validity. For administrative reasons, a time limit is generally provided for in
trademark laws, but it is possible to renew registrations when the time limit expires.
One of the reasons for imposing such time limits is that the office can charge a fee for
renewal, and this is a welcome source of revenue. Furthermore, the registration of trademarks
without a time limit would lead to an undesirable amount of trademark registrations that are
no longer of any interest to their owners. Even if unused marks may be removed from the
register, such a procedure would be costly and time-consuming for the interested party, and
not always successful. Consequently, the requirement of renewal and the payment of a
renewal fee is a welcome opportunity for a trademark owner to consider whether it is still
worth having his registration renewed, as the trademark may have been superseded in its
graphic form, or may even be no longer in use. For this reason, the renewal fee should be not
too low, indeed probably even higher than the original registration fee. Excessive fees should
also be avoided, however. In any case, renewals should be made simply on payment of the
fee, without any new examination of the mark for absolute or relative grounds for refusal. Of
course, it should be possible for the owner to make a voluntary restriction of the list of goods
of the original registration, especially if he can save fees by doing so.
The term of the original registration and the additional renewal periods vary from country to
country. The system provided for in Section 16 of the Model Law follows the modern trend. It
specifies an initial registration period of ten years, and the trademarks are then renewable for
further consecutive ten-year periods.
Should alterations to the trademark be allowed at the time of renewal? In principle they
should not, as renewal is a purely administrative act without any examination. Some laws do
nevertheless allow slight alterations. The law of Sri Lanka, for example, allows such changes
as do not substantially affect the identity of the mark. There may indeed be a certain interest
in allowing such changes, arising for instance from the wish to modernize an
old-fashioned-looking trademark, but they should normally be allowed at any time and not
only on renewal.
Reproduction rights:
The right of the owner of copyright to prevent others from making copies, or reproductions, of
his works is the most basic right under copyright. For example, the making of copies of a
protected work is the act performed by a publisher who wishes to distribute copies of a text-
based work to the public, whether in the form of printed copies or digital media such as CD-
ROMS. Likewise, the right of a phonogram producer to manufacture and distribute compact
discs (CDs) containing recorded performances of musical works is based, in part, on the
authorization given by the composers of such works to reproduce their compositions in the
recording. Therefore, the reproduction right is the legal basis through which the copyright
holder controls the exploitation of his or her works protected by copyright.
Revocation of a patent:
See Paris, Art. 5A(3); Draft 1991, Art. 18.
Paris, Art. 5A(3)

3) Forfeiture of the patent shall not be provided for except in cases where the grant of
compulsory licenses would not have been sufficient to prevent the said abuses. No
proceedings for the forfeiture or revocation of a patent may be instituted before the expiration
of two years from the grant of the first compulsory license.
Draft 1991, Art. 18

(1) [Administrative Revocation]
(a) Where a patent was granted after substantive examination, any person shall have the
right to request the competent Office to revoke the patent, in whole or in part, at least on the
ground that, because of one or several documents available to the public, the conditions of
novelty or inventive step are not satisfied.
(b) The request for revocation may be presented during a period to be fixed by the
Contracting Party which shall commence from the announcement in the official gazette of the
grant of the patent and shall not be less than six months.
(c) No request for revocation may be based on grounds of non-compliance with formal or
procedural requirements.
(d) No decision may be made by the Office departing from the request unless the person
having made the request has had at least one opportunity to present his arguments on the
grounds on which the Office intends to depart from the request.
(e) The Office may not revoke the patent, in whole or in part, at the request of a third party,
unless the owner of the patent has had at least one opportunity to present his arguments on
the grounds on which the Office intends to revoke the patent.
(1) [Prohibition of Pre-grant Opposition]

(a) No Contracting Party may allow any party to oppose, before its Office, the grant of
patents ("pre-grant opposition").
(b) Notwithstanding subparagraph (a), any Contracting Party which, at the time of
becoming party to this Treaty, provides for the possibility of pre-grant opposition may, for a
period not exceeding the expiration of the tenth calendar year after the year in which this
Treaty was adopted, continue to do so and, for the same period, it shall not be obliged to
apply paragraph`(1).
(c) Any Contracting Party that wishes to avail itself of the faculty provided for in
subparagraph`(b) shall address a corresponding notification to the Director General. As
long as the notification has effect, any reference in this Treaty or in the Regulations to the
time when the application is in order for grant shall be replaced, with respect to that
Contracting Party, by a reference to the time when the application is in order for publication
for the purposes of pre-grant opposition.
Revocation of registration:
Madrid Protocol, Art. 6(3).
(3) The protection resulting from the international registration, whether or not it has been
the subject of a transfer, may no longer be invoked if, before the expiry of five years from the
date of the international registration, the basic application or the registration resulting
therefrom, or the basic registration, as the case may be, has been withdrawn, has lapsed, has
been renounced or has been the subject of a final decision of rejection, revocation,
cancellation or invalidation, in respect of all or some of the goods and services listed in the
international registration. The same applies if
(a) an appeal against a decision refusing the effects of the basic application,
(ii) an action requesting the withdrawal of the basic application or the revocation,
cancellation or invalidation of the registration resulting from the basic application or of the
basic registration, or
(iii) an opposition to the basic application results, after the expiry of the five-year
period, in a final decision of rejection, revocation, cancellation or invalidation, or ordering
the withdrawal, of the basic application, or the registration resulting therefrom, or the basic
registration, as the case may be, provided that such appeal, action or opposition had begun
before the expiry of the said period. The same also applies if the basic application is
withdrawn, or the registration resulting from the basic application or the basic registration is
renounced, after the expiry of the five-year period, provided that, at the time of the
withdrawal or renunciation, the said application or registration was the subject of a
proceeding referred to in item (i), (ii) or (iii) and that such proceeding had begun before the
expiry of the said period.
Right of priority:
The right of priority means that, on the basis of a regular application for a patent, utility
model, industrial design or trademark protection filed by a given applicant in one of the
member countries, the same applicant (or its or his successor in title) may, within a specified
period of time (6 or l2 months), have certain rights when applying for protection in all the
other member countries. These later applications will be regarded as if they had been filed on
the same day as the first (or earlier) application. In other words, these later applications enjoy
a priority status with respect to all applications relating to the same invention filed after the
date of the first application. They also enjoy a priority status with respect to all acts
accomplished after that date which would normally be apt to destroy the rights of the
applicant or the patentability of his invention. See Paris, Art. 4A(1); Draft 1991, Art. 7(2).
Paris, Art. 4A(1)
A (1) Any person who has duly filed an application for a patent, or for the registration of a
Draft 1991, Art. 7(2)

[(2) [Delayed Filing of the Subsequent Application] Where the application ("the subsequent
application") which claims or could have claimed the priority of an earlier application is filed
after the date on which a period of 12`months from the filing date of the earlier application
expired but before the expiration of a period of two months from the date on which that 12-
month period expired, the Office shall restore the right of priority upon an express request
submitted to the Office before the expiration of the said two-month period, if the request states
and the Office finds that, in spite of all due care required by the circumstances, the
subsequent application could not have been filed within the said 12-month period. The
request for restoration shall state the grounds on which it is based, and the Office may
require the production of corresponding evidence.]
Right to a patent:
Draft 1991, Art. 9.
(1) [Right of Inventor] The right to a patent shall belong to the inventor . Any Contracting
Party shall be free to determine the circumstances under which the right to the patent shall
belong to the employer of the inventor or to the person who commissioned the work of the
inventor which resulted in the invention.
(2) [Right Where Several Inventors Independently Made the Same Invention] Where two or
more inventors independently have made the same invention, the right to a patent for that
invention shall belong,
(i) where only one application is filed in respect of that invention, to the applicant, as long
as the application is not withdrawn or abandoned, is not considered withdrawn or
abandoned, or is not rejected, or
(ii) where two or more applications are filed in respect of that invention, to the applican t
whose application has the earliest filing date or, where priority is claimed, the earliest
priority date, as long as the said application is not withdrawn or abandoned, is not
considered withdrawn or abandoned, or is not rejected.
Third-party right:
Paris, Art. 4B.
B. Consequently, any subsequent filing in any of the other countries of the Union before the
Right of adaptation:
Adaptations are works protected by copyright. Therefore, in order to reproduce and publish an
adaptation, authorization must be obtained from both the owner of the copyright in the
original work and of the owner of copyright in the adaptation. (Adapted from Overview of
Copyrights, CD-ROM).
Right of (public) performance:

On the basis of the right of public performance, the author or other owner of copyright may
authorize live performances of a work, such as the presentation of a play in a theater or an
orchestra performance of a symphony in a concert hall. Public performance also includes
performance by means of recordings; thus, musical works embodied in phonograms are
considered "publicly performed" when the phonograms are played over amplification
equipment in such places as discotheques, airplanes, and shopping malls. (Adapted from
Overview of Copyrights, CD-ROM).
Right of translation:
Translations are works protected by copyright. Therefore, in order to reproduce and publish a
translation, authorization must be obtained from both the owner of the copyright in the
original work and of the owner of copyright in the translation. (Adapted from Overview of
Copyrights, CD-ROM).
Royalty:
Royalty is a sum paid to a patent owner for the use of IP rights, or to an author, etc. for each
copy of a book sold, or for each public performance of a work.
Scientific discoveries:
WIPO Convention, Art. 2(viii).

Scientific work:
A work dealing with problems in such a way as to correspond to the requirements of scientific
approach. The coverage of this category of works is not at all restricted to the field of natural
sciences or to literary works of a scientific character. A computer program could under
certain circumstances also be a scientific work. In copyright laws, a general reference to
scientific works is often understood as meaning all kinds of works other than artistic or
fictional, such as technical writings, reference books, popular scientific writings, or practical
guides. However, scientific works protected by copyright do not comprise scientific
inventions, discoveries, research work or scientific undertakings. (See GCNR, p. 236).
Secondary meaning:
Secondary meaning for purposes of trademark laws, refers to protection afforded geographic
or descriptive terms that producer has used to such an extent as to lead general public to
identify producer or the product with the mark, and thus establishment of “secondary
meaning” permits users to protect and otherwise unprotectable mark. (See West’s Law and
Commercial Dictionary in Five Languages p. 505).
Secondary meaning Doctrine of -secondary meaning," for purposes of trademark laws, refers
to protection afforded geographic or descriptive terms that producer has used to such an
extent as to lead general public to identify producer or the product with the mark, and thus
establishment of "secondary meaning" permits users to protect an otherwise unprotectable
mark. Mushroom Makers, Inc. v. R. G. Barry Corp., D.C.N.Y., 441 F.Supp. 1220, 1226.
Secondary meaning exists when a party through advertising or massive exposure has
established its trademark in minds of consumers as an indication of origin from one particular
source. FS Services, Inc. v. Custom Farm Services, Inc., C.A.111, 471 F.2d 671, 674. For
purposes of unfair competition, term refers to association formed in the mind of the consumer
which links an individual product with its manufacturer or distributor. J. Josephson, Inc. v.
General Tire & Rubber Co., D.C.N.Y., 357 F.Supp. 1047, 1048.
Service mark:
A service mark is a sign used by enterprises offering services, for example, hotels, restaurants,
airlines, tourist agencies, car-rental agencies, employment agencies, laundries and cleaners,
etc., in order to distinguish their services from those of other enterprises. Thus service marks
have the same function as trademarks, the only difference being that they apply to services
instead of products (or goods).
Signs:
It follows from the purpose of the trademark that virtually any sign that can serve to
distinguish goods from other goods is capable of constituting a trademark. Trademark laws
should not therefore attempt to draw up an exhaustive list of signs admitted for registration.
If examples are given, they should be a practical illustration of what can be registered, without
being exhaustive. If there are to be limitations, they should be based on practical
considerations only, such as the need for a workable register and the need for publication of
the registered trademark. If we adhere strictly to the principle that the sign must serve to
distinguish the goods of a given enterprise from those of others, the following types and
categories of signs can be imagined: words; letters and numerals; devices; combinations of
any of those mentioned above including logotypes and labels; colored marks; three-
dimensional signs; audible signs (sound marks); olfactory marks (smell marks); other
(invisible) signs. (See ITLP, 2.1) p. 15).
It follows from the purpose of the trademark that virtually any sign that can serve to
distinguish goods from other goods is capable of constituting a trademark. Trademark laws
should not therefore attempt to draw up an exhaustive list of signs admitted for registration. If
examples are given, they should be a practical illustration of what can be registered, without
being exhaustive. If there are to be limitations, they should be based on practical
considerations only, such as the need for a workable register and the need for publication of
the registered trademark.
If we adhere strictly to the principle that the sign must serve to distinguish the goods of a
given enterprise from those of others, the following types and categories of signs can be
imagined:
(i) Words
This category includes company names, surnames, forenames, geographical names and any
other words or sets of words, whether invented or not, and slogans.
(ii) Letters and numerals
Examples are one or more letters, one or more numerals or any combination thereof.
(iii) Devices
This category includes fancy devices, drawings and symbols and also twodimensional
representations of goods or containers.
(iv) Combinations of any of those listed under (i), (ii) and (iii), including logotypes and
labels.
(v) Colored marks
This category includes words, devices and any combinations thereof in color, as well as color
combinations and color as such.
(vi) Three-dimensional signs
A typical category of three-dimensional signs is the shape of the goods or their packaging.
However, other three-dimensional signs such as the three-pointed Mercedes star can serve as
a trademark.
(vii) Audible signs (sound marks)
Two typical categories of sound marks can be distinguished, namely those that can be
transcribed in musical notes or other symbols and others (e.g. the cry of an animal).
(viii) Olfactory marks (smell marks)
Imagine that a company sells its goods (e.g. writing paper) with a certain fragrance and the
consumer becomes accustomed to recognizing the goods by their smell.
(ix) Other (invisible) signs
Examples of these are signs recognized by touch
Smell mark (Olfactory marks):

(ITLP, 2.1, p. 16).
viii) Olfactory marks (smell marks)
Imagine that a company sells its goods (e.g. writing paper) with a certain fragrance and the
consumer becomes accustomed to recognizing the goods by their smell.
Sound mark (Audible signs):

(ITLP, 2.1, p. 16).
(vii) Audible signs (sound marks)
Two typical categories of sound marks can be distinguished, namely those that can be
transcribed in musical notes or other symbols and others (e.g. the cry of an animal).
State of the art:

State of the art is the current stage of development of a specific field of technology. New
inventions are compared to the state-of-the-art. An applicant must demonstrate an inventive
step, or similar progress, relating to the applied-for invention or utility model; the application
must present a novel aspect which takes it beyond the presently known relevant scientific or
technological knowledge.
Technology:
Mans systematic knowledge for the manufacture of a product, the application of a process or
the rendering of a service, whether that knowledge be reflected in an invention, an industrial
design, a utility model, or a new plant variety, or in technical information or skills, or in the
services and assistance provided by experts for the design, installation, operation, or
maintenance of an industrial plant or for the management of an industrial or commercial
enterprise or its activities. (See LGDC, Part I (H)viii)).
(viii) "Technology- means systematic knowledge for the manufacture of a product, the
application of a process or the rendering of a service, whether that knowledge be reflected in
an invention, an industrial design, a utility model, or a new plant variety, or in technical
information or skills, or in the services and assistance provided by experts for the design,
installation, operation, or maintenance of an industrial plant or for the management of an
industrial or commercial enterprise or its activities.
Term of renewal:
See ‘renewal’.
Term of the registration of a mark:

Paris, Art. 6quinquies E.
However, in no case shall the renewal of the registration of the mark in the country of origin
involve an obligation to renew the registration in the other countries of the Union in which
the mark has been registered.
Territorial effect:
Madrid Protocol, Art. 3bis.
The protection resulting from the international registration shall extend to any Contracting
Party only at the request of the person who files the international application or who is the
holder of the international registration. However, no such request can be made with respect
to the Contracting Party whose Office is the Office of origin.
Title of the invention:

(HIDIP, 10.1.25).
Several words contained in the request part of the application indicating clearly, concisely and
as specifically as possible the subject matter of the invention
Trademark:
See ‘mark’. See also TRIPS Agreement, Art. 15 Protectable Subject Matter:
1. 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. Such signs, in particular words including personal names, letters, numerals,
figurative elements and combinations of colors as well as any combination of such signs,
shall be eligible for registration as trademarks. Where signs are not inherently capable of
distinguishing the relevant goods or services, Members may make registrability depend on
distinctiveness acquired through use. Members may require, as a condition of registration,
that signs be visually perceptible.
Trade name:
The definition of a trade name for the purposes of protection, and the manner in which such
protection is to be afforded, are both matters left to the national legislation of the countries
concerned. Therefore, protection may result from special legislation on trade names or from
more general legislation on unfair competition or the rights of personality.
Trade secret:
Trade secrets are items of information of commercial value to the holder, and may, depending
on the country, be either manufacturing (or industrial) secrets, or commercial secrets. Their
value is usually proportionately tied to the extent of the secret held: Unwarranted disclosure
of a trade secret is often a violation of unfair competition laws.
Translation:
The expression of written or oral works in a language other than that of the original version.
It must render the work faithfully and truly as regards both its contents and its style.
Copyright is granted to translators in acknowledgement of their creative handling of another
language, without prejudice, however, to the rights of the author of the work translated; a
translation is subject to appropriate authorization as the right to translate the work is a specific
component of copyright. (See GCNR, p. 259).
TRIPS Agreement:
The World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS) is an attempt to narrow the gaps in the way these rights are
protected around the world, and to bring them under common international rules. The
agreement covers five broad issues: a) how basic principles of the trading system and other
international intellectual property agreements should be applied; b) how to give adequate
protection to intellectual property rights; c) how countries should enforce those rights
adequately in their own territories; d) how to settle disputes on intellectual property between
members of the WTO; and e) special transitional arrangements during the period when the
new system is being introduced.
Unfair competition:
Acts or practices, in the course of trade or business, that are contrary to honest practices,
including, in particular: 1) acts which may cause confusion with the products or services, or
the industrial or commercial activities, of an enterprise; 2) false allegations which may
discredit the products or services, or the industrial or commercial activities, of an enterprise;
3) indications or allegations which may mislead the public, in particular as to the
manufacturing process of a product or as to the quality, quantity or other characteristics of
products or services; 4) acts in respect of unlawful acquisition, disclosure or use of trade
secrets; 5) acts causing a dilution or other damage to the distinctive power of another's mark
or taking undue advantage of the goodwill or reputation of another's enterprise.
Utility model:
(LGDC, para. 78 (iii)).
Utility model means an invention protectable, upon application through the registration, by a
government office, of the description, drawing or other picture or also by the filling of a
model, in accordance with requirements somewhat less strict than for “patentable” inventions
(e.g., lower fees, only in certain technical fields, without inventive steps) but also protected to
a lesser extent (e.g., shorter duration); otherwise the rights under the utility model are similar
to those under a patent.
Unpatentable invention:
PCT, Art. 35(2).
2) The international preliminary examination report shall not contain any statement on the
question whether the claimed invention is or seems to be patentable or unpatentable
according to any national law. It shall state, subject to the provisions of paragraph (3), in
relation to each claim, whether the claim appears to satisfy the criteria of novelty, inventive
step (non-obviousness), and industrial applicability, as defined for the purposes of the
international preliminary examination in Article 33(1) to (4). The statement shall be
accompanied by the citation of the documents believed to support the stated conclusion with
such explanations as the circumstances of the case may require. The statement shall also be
accompanied by such other observations as the Regulations provide for.
Well-known mark:
Paris, Art. 6bis.
(2) A period of at least five years from the date of registration shall be allowed for requesting
the cancellation of such a mark. The countries of the Union may provide for a period within
which the prohibition of use must be requested.
(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of
marks registered or used in bad faith.
Words (in the field of marks):

other words or sets of words, whether invented or not, and slogans. (See ITLP, 2.1, p. 15;
and also under “Signs”).
ITLP, 2.1, p. 15
(i) Words
other words or sets of words, whether invented or not, and slogans.
Insufficient working:
Paris, Art. 5A(4).
(4) A compulsory license may not be applied for on the ground of failure to work or
insufficient working before the expiration of a period of four years from the date of filing of
the patent application or three years from the date of the grant of the patent, whichever
period expires last; it shall be refused if the patentee justifies his inaction by legitimate
reasons. Such a compulsory license shall be non-exclusive and shall not be transferable, even
in the form of the grant of a sub-license, except with that part of the enterprise or goodwill
which exploits such license.
Working of an invention:
WIPO Model Law (Inventions), Sec. 134(3).
i. Subsection (3).. This provision defines “working”. The definition given is valid for all
provisions of the Model Law in which reference is made to working (Sections 138 and 148,
for instance). Purely commercial acts such as importing or selling do not constitute working:
there must be manufacture of the product or use of the process. Working may be of an
artisanal nature; thus, it does not necessarily imply the existence of a factory.
World Intellectual Property Organization (WIPO):

The World Intellectual Property Organization (WIPO) is an international organization
dedicated to helping to ensure that the rights of creators and owners of intellectual property
are protected worldwide and that inventors and authors are, thus, recognized and rewarded for
their ingenuity. This international protection acts as a spur to human creativity, pushing
forward the boundaries of science and technology and enriching the world of literature and
the arts. By providing a stable environment for the marketing of intellectual property
products, it also oils the wheels of international trade. The number of member States
belonging to WIPO now stands at 175(1st of september of 2000)(updated list available),
almost 90 per cent of the world's countries - a reflection of the increasing importance and
relevance attached to the work of the Organization. With a staff of some 778* drawn from
around the world, WIPO carries out many tasks related to the protection of intellectual
property rights, such as administering international treaties, assisting governments,
organizations and the private sector, monitoring developments in the field and harmonizing
and simplifying relevant rules and practices. In all that it does, the key words are
communication and international cooperation.
*(1st of October of 2000)
World Trade Organization (WTO):

The World Trade Organization (WTO) is the only international body dealing with the rules of
trade between nations. At its heart are the WTO agreements, negotiated and signed by the
bulk of the world's trading nations. These documents provide the legal ground-rules for
international commerce. They are essentially contracts, binding governments to keep their
trade policies within agreed limits. Although negotiated and signed by governments, the goal
is to help producers of goods and services, exporters, and importers conduct their business.

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GLOSSARY: TERMS AND DEFINITIONS

Texts of WIPO-administered treaties: http://www.wipo.int/treaties/en/

(to) Abandon an application:

(to) Abandon the registration of a mark:

(iii) The License Contract

(iv) The Know-How Contract

3.48 It is possible to include provisions concerning know-how in a writing or document that

3.50 The know-how may be communicated in a tangible form. Documents, photographs,

(to) assign a mark:

(to) Cancel a patent:

(to) Cancel the registration of a mark:

Cancellation of the registration of a mark:

Distinctive character of a mark:

Non-obvious character of an invention:

PCT, Art. 33(1)

Draft 1991 Art. 11(1)

Draft 1991 Art. 11(3)

Communication to the public:

Confusingly similar mark:

Counterfeit trademark goods:

-performances of performing artists, phonograms, and broadcasts,

-inventions in all fields of human endeavor,

-trademarks, service marks, and commercial names and designations,

-protection against unfair competition,

Distinctive character of a mark:

In conclusion, a sign is distinctive for the goods to which it is to be applied when it is

The distinctiveness of a sign is not an absolute and unchangeable factor. It is a purely

Element of the invention:

Exclusive rights conferred by a patent:

Expiry of the international registration:

Figurative elements of a mark:

Art. 4 (1) to (6)

Actual filing date:

Filing date of an application:

(ii) the international application is in the prescribed language,

(a) an indication that it is intended as an international application,

(b) the designation of at least one Contracting State,

(c) the name of the applicant, as prescribed,

(d) a part which on the face of it appears to be a description,

(e) a part which on the face of it appears to be a claim or claims.

(iii) a part which on the face of it appears to be a description.

(4) [Subsequent Compliance with Requirements]

(5) [Notification Concerning Missing Part of Description or Drawing] Where, in

(6) [Filing Date Where Missing Part of Description or Drawing Is Filed]

(7) [Replacing Description and Drawings by Reference to a Previously Filed Application]

(8) [Exceptions] Nothing in this Article shall limit:

(ii) to be considered as reversed by an amendment under Article 34.

(2) Furthermore, it is permissible to file a utility model in a country by virtue of a right of

(ii) the international application is in the prescribed language,

(iii) the international application contains at least the following elements:

(a) an indication that it is intended as an international application,

(b) the designation of at least one Contracting State,

(c) the name of the applicant, as prescribed,

(d) a part which on the face of it appears to be a description,

(e) a part which on the face of it appears to be a claim or claims.

(iii) any further requirements prescribed in the Regulations.

(b) Notwithstanding subparagraph (a), and subject to Article 8(1), a

(5) [Priority Document] Where the priority of an earlier application is claimed, a

(8) [Non-Compliance with Requirements] (a) Where one or more of the

(ii) the international application is in the prescribed language,

(iii) the international application contains at least the following elements:

(a) an indication that it is intended as an international application,

(b) the designation of at least one Contracting State,