IPR Notes

GATT & WTO

• The General Agreement on Tariffs and Trade (typically abbreviated GATT) was negotiated during the UN
Conference on Trade and Employment. It was the outcome of the failure of negotiating governments to
create the International Trade Organization (ITO). GATT was signed in 1947 and lasted until 1993, when it
was replaced by the World Trade Organization (WTO) in 1995. The original GATT text (GATT 1947) is still in
effect under the WTO framework, subject to the modifications of GATT 1994.

• International Treaties –
IP Protection
§ PARIS CONVENTION - Protection of Industrial Property (1883)
§ BERNE CONVENTION - Protection of Literary & Artistic Works – 1886
§ MADRID AGREEMENT - Repression of False or Deceptive Indications of Source on Goods (1891)
§ ROME CONVENTION - Protection of Performers, Producers of Phonograms and Broadcasting
Organisations (1961)
§ PHONOGRAMS CONVENTION - Protection of Producers of Phonograms against Unauthorized
Duplication of their Phonograms (1971)
§ BRUSSELS CONVENTION - Distribution of Programme-Carrying Signals Transmitted by Satellite
(1974)
§ NAIROBI TREATY on the Protection of the Olympic Symbol (1981)
§ INTEGRATED CIRCUITS - Treaty on Intellectual Property in Respect of Integrated Circuits
(1989)
§ TLT - Trademark Law Treaty (1994)
§ WCT - WIPO Copyright Treaty (1996)
§ WPPT - WIPO Performances and Phonograms Treaty (1996)
§ PLT - Patent Law Treaty 2000
§ SINGAPORE TREATY - Law of Trademarks (2006)
Global Protection System
§ BUDAPEST TREATY - on the international recognition of the deposit of microorganisms for the
purposes of patent procedure (1977)
§ HAGUE AGREEMENT - Concerning the International Registration of Industrial Designs (1925)
§ LISBON AGREEMENT - for the Protection of Appellations of Origin and their International
Registration (1958)
§ MADRID AGREEMENT - Concerning the International Registration of Marks (1891) and the
Protocol Relating to that Agreement (1989)
§ PCT - Patent Cooperation Treaty (1970)
Classification
§ LOCARNO AGREEMENT - Establishing an International Classification for Industrial Designs (1968)
§ NICE AGREEMENT - Concerning the International Classification of Goods and Services for the
Purposes of the Registration of Marks (1957)
§ STRASBOURG AGREEMENT - Concerning the International Patent Classification (1971)
§ VIENNA AGREEMENT - Establishing an International Classification of the Figurative Elements of
Marks (1973)

Paris Convention for the Protection of Industrial Property (1883)

The Convention applies to industrial property in the widest sense, including patents, marks, industrial designs,
utility models (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.

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(1) Under the provisions on national treatment, the Convention provides that, as regards the protection of
industrial property, each contracting State must grant the same protection to nationals of the other contracting
States as it grants to its own nationals. Nationals of non-contracting States are also entitled to national
treatment under the Convention if they are domiciled or have a real and effective industrial or commercial
establishment in a contracting State.

(2) The Convention provides for the right of priority in the case of patents (and utility models, where they
exist), marks and industrial designs. This right means that, on the basis of a regular first application filed in one
of the contracting States, the applicant may, within a certain period of time (12 months for patents and utility
models; 6 months for industrial designs and marks), apply for protection in any of the other contracting States;
these later applications will then be regarded as if they had been filed on the same day as the first application.
In other words, these later applications will have priority (hence the expression “right of priority”) over
applications which may have been filed during the said period of time by other persons for the same invention,
utility model, mark or industrial design. Moreover, these later applications, being based on the first application,
will not be affected by any event that may have taken place in the interval, such as any publication of the
invention or sale of articles bearing the mark or incorporating the industrial design. One of the great practical
advantages of this provision is that, when an applicant desires protection in several countries, he is not required
to present all his applications at the same time but has six or 12 months at his disposal to decide in which
countries he wishes protection and to organize with due care the steps he must take to secure protection.

(3) The Convention lays down a few common rules which all the contracting States must follow. The more
important are the following:

(a) As to Patents: Patents granted in different contracting States for the same invention are independent of
each other: the granting of a patent in one contracting State does not oblige the other contracting States to
grant a patent; a patent cannot be refused, annulled or terminated in any contracting State on the ground that
it has been refused or annulled or has terminated in any other contracting State.

The inventor has the right to be named as such in the patent.

The grant of a patent may not be refused, and a patent may not be invalidated, on the ground that the sale of
the patented product, or of a product obtained by means of the patented process, is subject to restrictions or
limitations resulting from the domestic law.

Each contracting State that takes legislative measures providing for the grant of compulsory licenses to prevent
the abuses which might result from the exclusive rights conferred by a patent may do so only with certain
limitations. Thus, a compulsory license (license not granted by the owner of the patent but by a public authority
of the State concerned) based on failure to work the patented invention may only be granted pursuant to a
request filed after three or four years of failure to work or insufficient working of the patented invention and it
must be refused if the patentee gives legitimate reasons to justify his inaction. Furthermore, forfeiture of a
patent may not be provided for, except in cases where the grant of a compulsory license would not have been
sufficient to prevent the abuse. In the latter case, proceedings for forfeiture of a patent may be instituted, but
only after the expiration of two years from the grant of the first compulsory license.

(b) As to Marks: The Paris Convention does not regulate the conditions for the filing and registration of marks
which are therefore determined in each contracting State by the domestic law. Consequently, no application for
the registration of a mark filed by a national of a contracting State may be refused, nor may a registration be
invalidated, on the ground that filing, registration or renewal has not been effected in the country of origin.
Once the registration of a mark is obtained in a contracting State, it is independent of its possible registration in
any other country, including the country of origin; consequently, the lapse or annulment of the registration of a
mark in one contracting State will not affect the validity of registration in other contracting States.

Where a mark has been duly registered in the country of origin, it must, on request, be accepted for filing and
protected in its original form in the other contracting States. Nevertheless, registration may be refused in well-
defined cases, such as when the mark would infringe acquired rights of third parties, when it is devoid of

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distinctive character, when it is contrary to morality or public order, or when it is of such a nature as to be liable
to deceive the public.

If, in any contracting State, the use of a registered mark is compulsory, the registration cannot be canceled
until after a reasonable period, and only if the owner cannot justify his inaction.

Each contracting State must refuse registration and prohibit the use of marks which constitute a reproduction,
imitation or translation, liable to create confusion, of a mark considered by the competent authority of that
State to be well known in that State as being already the mark of a person entitled to the benefits of the
Convention and used for identical or similar goods.

Each contracting State must likewise refuse registration and prohibit the use of marks which consist of or
contain without authorization, armorial bearings, State emblems and official signs and hallmarks of contracting
states, provided they have been communicated through the International Bureau of WIPO. The same provisions
apply to armorial bearings, flags, other emblems, abbreviations and names of certain intergovernmental
organizations.

Collective marks must be granted protection.

(c) As to Industrial Designs: Industrial designs must be protected in each contracting State, and protection may
not be forfeited on the ground that the articles incorporating the design are not manufactured in that State.

(d) As to Trade Names: Protection must be granted to trade names in each contracting State without the
obligation of filing or registration.

(e) As to Indications of Source: Measures must be taken by each contracting State against direct or indirect use
of a false indication of the source of the goods or the identity of the producer, manufacturer or trader.

(f) As to Unfair Competition: Each contracting State must provide for effective protection against unfair
competition.

The Paris Union, established by the Convention, 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.

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.

The Paris Convention, concluded in 1883, was revised at Brussels in 1900, at Washington in 1911, at The
Hague in 1925, at London in 1934, at Lisbon in 1958 and at Stockholm in 1967, 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.

Patent Cooperation Treaty (PCT) (1970)

The Patent Cooperation Treaty makes it possible to seek patent protection for an invention simultaneously in
each of a large number of countries by filing an “international” patent application. Such an application may be
filed by anyone who is a national or resident of a PCT contracting State. It may generally be filed with the
national patent office of the contracting State of which the applicant is a national or resident or, at the
applicant’s option, with the International Bureau of WIPO in Geneva.

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If the applicant is a national or resident of a contracting State which is party to the European Patent
Convention, the Harare Protocol on Patents and Industrial Designs (Harare Protocol), the Bangui Agreement, or
the Eurasian Patent Convention, the international application may also be filed with the European Patent Office
(EPO), the African Regional Industrial Property Organization (ARIPO), The African Intellectual Property
Organization (OAPI) or the Eurasian Patent Office (EAPO), respectively.

The Treaty regulates in detail the formal requirements with which any international application must comply.

The filing of a PCT application automatically has the effect of the designation of all PCT contracting States. The
effect of the international application in each designated State is the same as if a national patent application
had been filed with the national patent office of that State.

The international application is subjected to what is called an “international search.” That search is carried out
by one of the major patent offices and results in an “international search report,” that is, a listing of the
citations of published documents that might affect the patentability of the invention claimed in the international
application. In addition, a preliminary and non-binding, written opinion on whether the invention appears to
meet the patentability criteria in light of the search report results is also issued.

The international search report and the written opinion are communicated to the applicant who, after
evaluating their content, may decide to withdraw his application, in particular where the content of the report
and opinion suggest that the granting of patents is unlikely, or he may decide to amend the claims in the
application.

If the international application is not withdrawn, it is, together with the international search report, published by
the International Bureau. The written opinion is not published at this time.

If the applicant decides to continue with the international application with a view to obtaining national (or
regional) patents, he can, in relation to most contracting States, wait until the end of the thirtieth month from
the priority date to commence the national procedure before each designated Office by furnishing a translation
(where necessary) of the application into the official language of that Office, paying to it the necessary fees and
acquiring the services of local patent agents.

If the applicant wishes to make amendments to the application, for example, in order to overcome documents
identified in the search report and conclusions made in the written opinion, and to have the potential
patentability of the “as-amended” application reviewed, the optional international preliminary examination may
be used. The result of the preliminary examination is an international preliminary report on patentability (IPRP
Chapter II) which is prepared by one of the major patent offices [2] and which contains, once again, a
preliminary and non-binding opinion on the patentability of the claimed invention. It provides the applicant with
an even stronger basis on which to evaluate his chances of obtaining patents, and, if the report is favorable, a
stronger basis on which to continue with his application before the national and regional patent Offices.

The procedure under the PCT has great advantages for the applicant, the patent offices and the general public:

(i) applicants have up to 18 months more than if they had not used the PCT to reflect on the desirability of
seeking protection in foreign countries, to appoint local patent agents in each foreign country, to prepare the
necessary translations and to pay the national fees;

(ii) applicants can rest assured that, if their international application is in the form prescribed by the PCT, it
cannot be rejected on formal grounds by any PCT contracting State patent Office during the national phase of
the processing of the application;

(iii) on the basis of the international search report and the written opinion, applicants can evaluate with
reasonable probability the chances of their invention being patented;

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(iv) applicants have the possibility during the optional international preliminary examination to amend the
international application and thus put it in order before processing by the various patent Offices;

(v) the search and examination work of patent Offices can be considerably reduced or eliminated thanks to the
international search report, the written opinion and, where applicable, the international preliminary report on
patentability which are communicated to the national and regional Offices together with the international
application;

(vi) since each international application is published together with an international search report, third parties
are in a better position to formulate a well-founded opinion about the potential patentability of the claimed
invention; and

(vii) for applicants, international publication puts the world on notice of their applications, which can be an
effective means of advertising and looking for potential licensees.

Ultimately, the PCT:

- brings the world within reach;

- postpones the major costs associated with international patent protection;
- provides a strong basis for patenting decisions; and
- is used by the world’s major corporations, research institutions and universities when they seek international
patent protection.

The PCT created a Union, which has an Assembly. Every State party to the PCT is a member of the Assembly.

The Assembly of the PCT Union has established a special measure to the benefit of (1) natural persons who are
nationals of and reside in States whose per capita national income is below US$ 3,000, and (2) applicants,
whether a natural person or not, who are nationals of and reside in States which are classed as least developed
countries by the United Nations. That benefit consists of a reduction of 75 percent of certain fees under the
Treaty.

The PCT was concluded in 1970, amended in 1979 and modified in 1984 and in 2001.

UPOV

The International Union for the Protection of New Varieties of Plants or UPOV (French: Union internationale
pour la protection des obtentions végétales) is an intergovernmental organization with headquarters in Geneva,
Switzerland. UPOV was established by the International Convention for the Protection of New Varieties of
Plants. The Convention was adopted in Paris in 1961 and revised in 1972, 1978 and 1991. The objective of the
Convention is the protection of new varieties of plants by an intellectual property right. UPOV aims to
encourage the development of new varieties of plants for the benefit of society.

Definitions under UPOV-

“breeder” means the person who bred, or discovered and developed, a variety, the person who is the
employer of the aforementioned person or who has commissioned the latter’s work, where the laws of the
relevant Contracting Party so provide, or the successor in title of the first or second aforementioned person, as
the case may be;
“breeder’s right” means the right of the breeder provided for in this Convention;
“variety” means a plant grouping within a single botanical taxon of the lowest known rank, which grouping,
irrespective of whether the conditions for the grant of a breeder’s right are fully met, can be defined by the
expression of the characteristics resulting from a given genotype or combination of genotypes, distinguished

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from any other plant grouping by the expression of at least one of the said characteristics and considered as a
unit with regard to its suitability for being propagated unchanged;

For plant breeders' rights to be granted, the new variety must meet four criteria under the rules established by
UPOV-
1. The new plant must be novel, which means that it must not have been previously marketed in the country
where rights are applied for.
2. The new plant must be distinct from other available varieties.
3. The plants must display homogeneity.
4. The trait or traits unique to the new variety must be stable so that the plant remains true to type after
repeated cycles of propagation.

Protection can be obtained for a new plant variety (legally defined) however it has been obtained, through
conventional breeding techniques or genetic engineering.

Breeders Rights (Article 14)

• Following acts in respect of the propagating material of the protected variety shall require the authorization
of the breeder-
i. production or reproduction (multiplication),
ii. conditioning for the purpose of propagation,
iii. offering for sale,
iv. selling or other marketing,
v. exporting,
vi. importing,
vii. stocking for any of the purposes mentioned in (i) to (vi), above.

Exceptions to Breeders Rights (Article 15)

• The breeder’s right shall not extend to –
i. acts done privately and for non-commercial purposes,
ii. acts done for experimental purposes and
iii. acts done for the purpose of breeding other varieties, and, except where the provisions of Article
14(5) apply, acts referred to in Article 14(1) to (4) in respect of such other varieties.

Exhaustion of the Breeder’s Right (Article 16)

• The breeder’s right shall not extend to acts concerning any material of the protected variety, or of a variety
covered by the provisions of Article 14(5), which has been sold or otherwise marketed by the breeder or
with his consent in the territory of the Contracting Party concerned, or any material derived from the said
material, unless such acts –
i. involve further propagation of the variety in question or
ii. involve an export of material of the variety, which enables the propagation of the variety, into a
country which does not protect varieties of the plant genus or species to which the variety belongs,
except where the exported material is for final consumption purposes.

Duration of the Breeder’s Right (Article 19)

• The breeder’s right shall be granted for a fixed period.
• The said period shall not be shorter than 20 years from the date of the grant of the breeder’s right.
• For trees and vines, the said period shall not be shorter than 25 years from the said date.

UPOV & Genetically Modified Plants-

• Under the UPOV Convention alone, genetically modified crops and the intellectual property rights granted to
them are no different than the intellectual property rights granted for traditionally bred varieties.

It is important to note that this necessarily includes the ability to use protected varieties for subsistence farming
and for research.

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