WIPO NATIONAL SEMINAR ON OMANI TRADITIONAL VALUES IN A GLOBALIZED

WORLDMuscat, February 13 and 14, 2005

International Legal Framework for the Protection of Industrial

Property

WIPO Secretariat

Industrial Property

1. International legal framework2. Main “substantive” treaties in the

field of industrial property

Industrial Property

1. International legal framework

Industrial Property

a. Substantive standards (concerning the acquisition, use and loss of rights)

b. Adjective standards (concerning the enforcement of rights)

c. International registration and other procedural matters (enhancing access to internationally substantive protection)

Industrial Property

a. Substantive standards (concerning the acquisition, use and loss of rights)

(i) Paris Convention for the Protection of Industrial Property (1883) (the original purpose of the Paris Convention was simply articulating national regimes of protection regardless of their level of protection; later some minimum standards on patents and trademarks were incorporated as well minimum obligations on trade names, industrial designs, geographical indications and unfair competition)

(ii) Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods (1891) (later partly incorporated into the Paris Convention)

(iii) Lisbon Agreement for the Protection and Registration of Appellations of Origin and their International Registration (1958) (including standards and procedural aspects)

Industrial Property

a. Substantive standards (cont.)(iv) Nairobi Treaty on the Protection of the

Olympic Symbol (1981)(v) Washington Treaty on Intellectual Property in

Respect of Integrated Circuits (1989) (never entered into force but was later partly incorporated into the TRIPS Agreement; N.B. The Treaty does not deal with integrated circuits as such, but with their layout-designs (known as “topographies”)

(vi) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) (1994)

Industrial Property

b. Adjective standards (concerning the enforcement of rights)

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

(ii) Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods (1891)

(iii) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) (1994)

International Protection Standards in the Field of Industrial Property

c. International registration and other procedural matters (enhancing access to national and/or international substantive protection)

(i) Madrid Agreement Concerning the International registration of Trademarks (1891) and Protocol Relating to the Madrid Agreement (1989)

(ii) Hague Agreement Concerning the International Deposit of Industrial Designs (1925) and Geneva Act (1999)

(iii) Trademark Law Treaty (1954)

(iv) Lisbon Agreement for the Protection and Registration of Appellations of Origin and their International Registration (1958)

Industrial Property

c. International registration and other procedural matters (cont.)

(v) Patent Cooperation Treaty (PCT) (1970)(vi) Budapest Treaty on the International Recognition of the

Deposit of Microorganisms for the Purposes of Patent Procedure (1977)

(vii) Patent Law Treaty (2000)(viii) Classification Treaties: 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 on Trademarks (1957); Strasbourg Agreement Concerning the International Patent Classification (1971); Vienna Agreement Establishing and International Classification of the Figurative Elements of Marks (1973)

Industrial Property

2. Main “substantive” treaties in the field of industrial

property

Industrial Property

THE PARIS CONVENTION1. Objectives

a) To articulate national systems with different standards of protection in the fields of patents and utility modelsb) To establish the obligation to protect some other types of industrial property assets but without establishing minimum standards (trademarks “as is”, industrial designs, trade names, repression of unfair competition)

Industrial Property

THE PARIS CONVENTION (cont.)

2. Principlesa) National treatmentb) Independence (as regards patents and trademarks)c) Priority (as regards patents, utility models, industrial designs, trademarks, inventors’ certificates)d) Temporary protection (as regards patents, utility models, industrial designs, trademarks)

3. Standards(i) Patents – restrictions of sale; compulsory licenses; exceptions to rights; importation(ii) Industrial designs – obligation to protect

Industrial Property

THE PARIS CONVENTION (cont.)

3. Standards (cont.) (iii) Marks – conditions of registration; well-known marks; state emblems; assignment; registration and protection “telle quelle”; protection of service marks; abuse by representatives; nature of goods; collective marks

(iv) Trade names – obligation to protect without filing or registration(iv) Unfair competition – obligation to protect against

Industrial Property

THE TRIPS AGREEMENT1. Objectives

a) To reduce distortions and impediments to tradeb) To protect private property rights

2. Principlesa) National treatment (of persons)b) Most-favoured-nation treatmentc) Other GATT principles: national treatment of goods, transparency, elimination of quantitative restrictions

Industrial Property

The TRIPS Agreement (cont.)3. General provisions:

(i) On implementation;(ii) On the incorporation of the Paris Convention: a solution for eventual conflicts (Art. 2.1)(iii) Exhaustion(iv) Objectives of intellectual property protection and enforcement(v) Measures taken to protect matters of public interest and competition

Industrial Property

The TRIPS Agreement (cont.)4. Substantive standards (some examples):

(i) Trademarks a) well-known trademarks; b) other requirements(ii) Geographical indications

a) two levels of protection: “normal” protection and “additional” protection for g.i.’s for wines and spirits

b) (built-in agenda) multilateral system of notification and registration and extended protection

c) exceptionsd) exception to the principle of independence

of rights

Industrial Property

The TRIPS Agreement (cont.)

4. Substantive standards (some examples) (cont.):

(iii) Industrial designsa) criteria for protectionb) special protection for textiles; term of

protection(iv) Patents

a) prohibition against discriminationb) limitations on exclusions from patentability on

morality and ordre public grounds - the two-step necessity test

c) mandatory protection and exclusions; built-in agenda under Article 27.3(b)

Industrial Property

The TRIPS Agreement (cont.)

4. Substantive standards (some examples)(iv) Patents (cont.):

d) exceptions to rights conferred

e) compulsory licensesf) term of protectiong) reversal of the burden of proof

(v) Layout-designs (topographies) of integrated circuitsa) departure from the IPIC Treaty: innocent infringement (Art. 37) and compulsory licenses

(vi) Undisclosed informationa) scope of protection – trade secretsb) protection of test data: a sui generis regime

Industrial Property

Thank you!

If you have any questions as regards this presentation, please do not hesitate to

contact

nuno.carvalho@wipo.int