INTELLECTUAL PROPERTY RIGHTS

AND

BIOSAFETY

UNIT-1

(Introduction to Intellectual Property

Types of IP: Patents, Trademarks, Copyright & Related Rights, Industrial Design, TraditionalKnowledge, Geographical Indications, Protection of GMOs IP as a factor in R&D; IPs ofrelevance to Biotechnology and few Case Studies)

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***Types of Intellectual property***

The four main types of non-physical things considered by this point of view are copyrights, patents, trademarks and trade secrets. Common types of intellectual property rights include conflicting areas of law:

Copyrights, which give the holder some exclusive rights to control some reproduction ofworks of authorship, such as books and music, for a certain period of time.

Patents give the holder an exclusive right to prevent third parties from commerciallyexploiting an invention for a certain period, typically 20 years from the filing date of apatent application.

Trademarks are distinctive names, phrases or marks used to identify products toconsumers.

Trade secrets, where a company keeps information secret, perhaps by enforcing acontract under which those given access to information are not permitted to disclose it toothers.

There are also more specialized varieties of so-called sui generis intellectual property rights,such as circuit design rights, plant breeder rights, plant variety rights, industrial design rights,supplementary protection certificates for pharmaceutical products and database rights.

These rights, conferred by law, can be given, sold, rented (called “licensing”) and, in somecountries, even mortgaged, in much the same way as physical property (especially real property).However, the rights typically have limitations, sometimes including term limits and otherexceptions (such as fair use for copyrighted works). These limitations are sometimes analogousto public easements, they grant the public certain rights which are considered essential.

It is important to understand that it is the rights that are the property, and not the intellectualwork they apply to. A patent can be bought and sold, but the invention that it covers is not ownedat all. For this and other reasons, some people think that the term intellectual property ismisleading. Some use the term “intellectual monopoly” instead, because such so-called“intellectual property” is actually a government-granted monopoly on certain types of action.Others object to this usage, because of negative connotation of the term “monopoly” and thewide-availability of substitute goods. Others still prefer not to use a generic term because ofdifferences in the nature of copyright, patent and trademark law, and try to be specific aboutwhich they are talking.

What is Intellectual Property

The term intellectual property encompasses various types of creations of mind, like inventions. An intellectual property could be anything like a music composition, a movie, book, painting or even a brand name. According to the concept of intellectual property, such creations of mind are intangible or non-monetary assets with commercial value. The owners of such non-monetary assets (creations of mind) are assigned some exclusive rights over their creation, so that they benefit financially. However, it is not possible to recover or replace an intellectual property that is stolen. If stolen, the interests of the owner, over his/her creation will get affected. So, there must be laws to protect the moral as well as material interests of the owner over his/her intellectual property. IP law deals with the rights assigned to owners of intellectual property.

*Intellectual Property Rights*

As mentioned earlier, the creators or owners are granted certain exclusive rights over their creations or works. Such exclusive rights are called intellectual property rights. These rights help them benefit from their creations and also enable them to protect their work. In that way, intellectual property is like any other real property which is financially beneficial for the owner. The monetary benefits are said to encourage people to come up with new inventions and creations.

Intellectual property rights also enable the owners or creators to protect their work. These rights can be related to Article 27 of the Universal Declaration of Human Rights. According to this statute, "everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author". So, owners of intellectual property can benefit through protection of the moral and material interests of their creations.

*Types of Intellectual Property Rights*

An intellectual property can be either artistic or commercial. The artistic works come under the category of copyright laws, while the commercial ones (also known as industrial properties), include patents, trademarks, industrial design rights, and trade secrets. Copyright laws deal with the intellectual property of creative works like books, music, software, painting, etc. Industrial properties cover those created and used for industrial or commercial purposes. As stated earlier, intellectual property is categorized into various types as per the nature of work. The most common types of intellectual property rights are copyrights, trademarks, patents, industrial design rights and trade secrets. So, these rights safeguard the interests of the owners of IP. If you are an author, who has written a new book, you can apply for a copyright for your work. Likewise, patents can be obtained for inventions. Once you establish your IP right, you can protect your work legally.

1.Copyrights: A copyright is a right conferred on the owner of a literary or artistic work. It is an exclusive right to control the publication, distribution and adaptation of creative works. The right lies withthe owner-cum-copyright holder for a certain period. As the time lapses, the work can be republished or reproduced by others. Usually, in most countries the timespan of a copyright extends through the entire life of the owner and lasts up to a period of about 50 to100 (70 years in the U.S.) years after his/her death.

In case of anonymous works, the right lasts for 95 years from the date of first publication or 120 years from the date of creation.

2.Trademarks: A trademark is a symbol generally used to identify a particular product, which indicates its source. A trademark can be a combination of words, phrases, symbols, logos, designs, images, or devices, used by an individual, legal entity or business organization to distinguish their products from others. For example, you can identify the products of Nike Inc., from the logo, which is embossed on theirproducts. Once registered, trademarks are protected legally and the owners can sue persons for unauthorized use of their trademarks.

3.Patents: Patents are rights related to new inventions. Such rights are conferred on persons who invent any new machine, process, article of manufacture or composition of matter, biological discoveries, etc. In order to be patented, the invention should fit into specific criteria, which may differ from country to country. In general, the invention must be new and should be useful or can be applied in industries. The person who receives a patent for his invention has an exclusive right to prevent others from making, using, selling or distributing the patented invention without permission. Generally, the time limit of a patent is 20 years from the date of filing the application (for the patent).

4.Industrial Design Rights: These rights protect the visual design of objects that are not purely utilitarian, but have an aesthetic or ornamental value. It may refer to the creation of a shape, color, pattern or a combination of all these things. It can be an industrial commodity or a handicraft. The design can be either two-dimensional (based on pattern, colors and lines) or three-dimensional (as per shape and surface). An industrial design right is conferred after considering factors like novelty, originality and visual appeal. The person who has an industrial design right has the exclusive right to make or sell any objects in which the design is applicable. The right is conferred for a period of 10 to 25 years.

5.Trade Secrets: Trade secrets are the designs, practices, formulas, instruments, processes, recipes, patterns, or ideas which are used by a company to gain an economic advantage over its competitors. The owner of a trade secret does not possess any right over anyone who gains access to that secret independently, but he can prevent the use of the trade secret by anyone who has learned it through the owner. For example, an employer can protect trade secrets through contracts with his employees. Trade secrets differ from other types of intellectual property rights, because it is the responsibility of the owner to keep the secret and it is not protected through government policies. Once the trade secret is leaked, it can be used by any person.Intellectual property rights have encouraged people to come up with indigenous creations, as the law protects their rights over their works. Thus, it is very important to respect these rights and refrain from infringing them.

TRADITIONAL KNOWLEDGE

A number of cases relating to traditional knowledge have attracted international attention. As aresult, the issue of traditional knowledge has been brought to the fore of the general debate surroundingintellectual property. These cases involve what is often referred to as “biopiracy” (See Boxes 4.1 and 4.2).

The examples of turmeric, neem and ayahuasca illustrate the issues that can arise when patent protectionis granted to inventions relating to traditional knowledge which is already in the public domain. In thesecases, invalid patents were issued because the patent examiners were not aware of the relevant traditionalknowledge. In another example, a patent was granted on a plant species called Hoodia. Here, the issuewas not whether the patent should or should not have been granted, but rather on whether the local peopleknown as the San, who had nurtured the traditional knowledge underpinning the invention, were entitledto receive a fair share of any benefits arising from commercialisation. Partly as a result of these well known cases, many developing countries, holders of traditionalknowledge, and campaigning organisations are pressing in a multitude of traditional knowledge to bebetter protected. Such pressure has led, for example, to the creation of an Intergovernmental Committeeon Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore in WIPO. Theprotection of traditional knowledge and folklore is also being discussed within the framework of theCBD and in other international organisations such as UNCTAD, WHO, FAO and UNESCO.6 In addition,the Doha WTO Ministerial Declaration highlighted the need for further work in the TRIPS Council onprotecting traditional knowledge. The Nature of Traditional Knowledge and the Purpose of Protection How can traditional knowledge be defined? Whilst the vast majority of the knowledge is old in thesense that it has been handed down through the generations, it is continually refined and new knowledgedeveloped, rather as the modern scientific process proceeds by continual incremental improvement ratherthan by major leaps forward. One of the speakers at our conference suggested that the term “folklore” bereplaced by the more appropriate “expressions of culture” which represents living, functional traditions,rather than souvenirs of the past. Whilst most traditional knowledge and folklore is passed on orally, someof it, such as textile designs and Ayurveda medicinal knowledge, is codified.

The groups that hold traditional knowledge are very diverse:individuals, groups or groups ofcommunities may all be custodians. Such communities might be indigenous to the land or descendents oflater settlers. The nature of the knowledge is also diverse: it covers, for example, literary, artistic orscientific works, song, dance, medical treatments and practices and agricultural technologies andtechniques.Whilst a number of definitions for traditional knowledge and folklore have been put forward,there is no widely acceptable definition for either of them. It is not only the broad scope of traditionalknowledge that has confounded the debate so far. There is also some confusion about exactly what ismeant by “protection” and its purpose. It should certainly not be equated directly with the use of the word“protection” in its IP sense.

In its report on a series of fact-finding missions, WIPO8 sought to summarise the concerns oftraditional knowledge holders as follows:• concern about the loss of traditional life styles and of traditional knowledge, and the reluctanceof the younger members of the communities to carry forward traditional practices• concern about the lack of respect for traditional knowledge and holders of traditional knowledge• concern about the misappropriation of traditional knowledge including use of traditionalknowledge without any benefit sharing, or use in a derogatory manner

GEOGRAPHICAL INDICATIONSAt the beginning of this chapter we consider the relevance of geographical indications for protectingtraditional knowledge. However, geographical indications have a much wider application and for somecountries constitute one of the most important categories of intellectual property. This is reflected in theTRIPS Agreement.

Geographical Indications and TRIPSThe negotiations on the geographical indication section of the TRIPS Agreement were among the mostdifficult.41 This stemmed from clear divisions between the main proponents of the TRIPS Agreement –the US and EU. In addition, as has been borne out in the subsequent discussions in the Integrating Intellectual Property Rights and Development PolicyTRIPS Council, divisions also exist among other developed countries and among developing countries.The final text of the agreement reflects these divisions and, in mandating further work,recognises that agreement could not be reached in a number of important areas. The outcome was that thecurrent text of TRIPS provides a basic standard of protection, and ahigher standard specifically for winesand spirits. The inclusion of this higher standard does not refer to the unique characteristics of wines andspirits, but was rather a compromise reached in negotiations. This imbalance in protection has led todemands for additional protection from a number of countries including India, Pakistan, Kenya, Mauritiusand Sri Lanka.42 Other countries, such as Argentina, Chile, and Guatemala argue that extending theadditional protection to other products would impose extra financial and administrative burdens on allWTO Members and that these would outweigh any trade benefit. They believe that such burdens wouldfall most heavily on developing countries.In the absence of a reliable economic assessment, it is difficult to evaluate the merits of both sets ofarguments. They also, of course, reflect differences in perceived economic interest between bothdeveloped and developing countries. A few countries, for example Egypt and Paraguay, have alreadyindicated that the additional protection for geographical indications for wines and spirits will be madeavailable under their national laws for other products.43 It will be interesting to see whether providingsuch comprehensive additional protection leads to significant additional costs or benefits, in the absenceof international recognition.Multilateral Register of Geographical Indications

As well as providing increased protection for geographical indications on wines and spirits,TRIPS also requires negotiations to be undertaken in the TRIPS Council concerning the establishment ofa multilateral register of geographical indications for wines. The Doha Ministerial Conference extendedthis mandate to negotiate the establishment of a system that includes spirits. The purpose of the registerhas not been clearly defined. As noted below, groups of countries differ in their views. Some wish to useit as a full international register that would oblige all member countries to provide protection togeographical indications meeting the requirements for registration.Others want it as a voluntary system ofregistration and source of information.

To date, three different proposals for a multilateral register have been presented. The EUenvisages a register that has an effect on all WTO Members irrespective of whether or not they have anygeographical indications included on the register.44 Any WTO Member wishing to challenge theinclusion of a geographical indication in the register is required to notify the country concerned and enterinto negotiations with a view to resolving the disagreement. The Hungarian proposal provides that whereone WTO Member has successfully challenged the inclusion of a geographical indication on certainspecified grounds, then that geographical indication will not need to be protected by other WTOMembers.45 In both of these proposals, inclusion of a geographical indication in the register wouldconstitute a presumption of eligibility for protection under any legal means provided for protectinggeographical indications in any WTO Member.By contrast, the joint proposal from the US, Canada, Chile and Japan provides a system of registrationthat is binding only on those seeking to participate in the system.46 Participating members would

make use of the register when, for example, examining trademark applications containing orconsisting of a geographical indication. Non-participating WTO Members would be encouraged tomake similar use of the register. Negotiations on the register are, according to the recent Doha WTOMinisterial Conference, to be completed by the next Conference in Mexico in 2003.The TRIPS Council Secretariat has already begun to shed some light on how a number of WTOMembers, including some developing countries, have met their obligations under TRIPS.47 The vastmajority of countries from which information has been obtained provide specific legislation.

Integrating Intellectual Property Rights and Development Policy 89 It covering geographical indications although it is unclear whether this legislation stems directlyfrom the TRIPS Agreement or was already in place to meet, for example, bilateral commitments.Theadministrative burden in giving effect to new legislation for those countries without current protectionwould not appear that great. This is because TRIPS does not currently require any formal nationalregistration system for geographical indications, and the burden and costs of compelling enforcementtherefore falls on the holders of the geographical indication, not the government. As mentioned below,however, the costs of ensuring compliance with quality standards and promoting and enforcinggeographical indications abroad may be significant.4EG. 1. Geographical Indications: The Basmati Case

Basmati is a variety of rice from the Punjab provinces of India and Pakistan. The rice is aslender,aromatic long grain variety that originated in this region and is a major export crop for bothcountries. Annual basmati exports are worth about $300m, and represent the livelihood of thousands offarmers.

The “Battle for Basmati” started in 1997 when US Rice breeding firm RiceTec Inc. was awardeda patent (US5663484) relating to plants and seeds, seeking a monopoly over various rice lines includingsome having characteristics similar to Basmati lines. Concerned about the potential effect on exports,India requested a re-examination of this patent in 2000. The patentee in response to this request withdrewa number of claims including those covering basmati type lines. Further claims were also withdrawnfollowing concerns raised by the USPTO. The dispute has however moved on from the patent to themisuse of the name “Basmati.” In some countries the term “Basmati” can be applied only to the longgrain aromatic rice grown in India and Pakistan. RiceTec also applied for registration of the trademark‘Texmati’ in the UK claiming that “Basmati” was a generic term. It was successfully opposed, and the UKhas established a code of practice for marketing rice. Saudi Arabia (the world’s largest importer ofBasmati rice) has similar regulations on the labelling of Basmati rice. The code states that “the belief inconsumer, trade and scientific circles [is] that the distinctiveness of authentic Basmati rice can only beobtained from the northern regions of India and Pakistan due to the unique and complex combination ofenvironment, soil, climate,agricultural practices and the genetics of the Basmati varieties.”

But in 1998 the US Rice Federation submitted that the term “Basmati” is generic and refers to atype of aromatic rice. In response, a collective of US and Indian civil society organizations filed a petitionseeking to prevent US-grown rice from being advertised with the word “Basmati”. The US Department ofAgriculture and the US Federal Trade Commission rejected it in May 2001.Neither considered thelabeling of rice as “American-grown Basmati” misleading, and deemed “Basmati” a generic term.Theproblem is not just limited to the US; Australia, Egypt, Thailand and France also grow basmati type riceand may take the lead from the US and officially deem “basmati” a generic term.The name "Basmati"

(and the Indian and Pakistani export markets) can be protected by registering it as a GeographicalIndication. However, India and Pakistan will have to explain why they did not take action against thegradual adoption of generic status of basmati over the last 20 years. For example, India did not lodge aformal protest when the US Federal Trade Commission formally declared “basmati” generic.Integrating Intellectual Property Rights and Development PolicyThe Economic Impact of Geographical Indications

In considering positions to take on the discussions on both the multilateral register and thepossible extension of the scope of protection, it is important that developing countries consider carefullythe potential costs and benefits. Indeed as we have suggested elsewhere, we believe that comprehensiveeconomic impact assessments need to be undertaken before any new IP-related obligations are introducedfor developing countries.The economic consequences for a developing country are difficult to assess. Themain economic benefit of geographical indications would be to act as a quality mark which will play apart in enhancing export markets and revenues. But increased protection, particularly appliedinternationally, may adversely affect local enterprises which currently exploit geographical indicationsthat may become protected by another party. Thus there will be losses to countries producing substitutesfor goods that become protected by geographical indications. A proliferation of geographical indicationswould tend to reduce their individual value.It has also been suggested that geographical indications maybe of particular interest to a number of developing countries who might have, or might be able to achieve,a comparative advantage in agricultural products and processed foods and beverages.48 For thesecountries, seeking and enforcing protection for geographical indications abroad may have economicgains. However the costs involved in such actions, especially enforcement, might be prohibitively high. Inaddition, prior to seeking protection abroad, it is necessary both to develop and protect the geographicalindication in the country of origin. Resources may need to be deployed to ensure that the required quality,reputation or other characteristics of the product covered by the geographical indication are developedand maintained. Effort will also be needed to ensure that the geographical indication does not become anaccepted generic term, freely useable by all (see Box 4.5).

In our view it is far from clear whether these countries will be able to gain significantly from theapplication of geographical indications. By way of example, the Lisbon Agreement, which is aninternational system of protection administered by WIPO for the protection of appellations of origin, wasagreed in 1958.49 To date only 20 countries (seven of which are developed) have acceded to theagreement, and as of 1998, 766 appellations of origin are protected under the agreement,of whichEuropean countries hold 95%.Even taking into account the well documented weaknesses in the LisbonAgreement, such as the lack of an appropriate exception for geographical indications that had becomegeneric, that make it unattractive to both developed and developing countries alike, the level of interest,even for those developing countries who deemed it worthwhile to join, seems very limited.50 Within theframework of the discussions in the WTO on a multilateral register, it has been proposed that moreconsideration should be given, inter alia, to the likely cost of introducing the type of register proposed bythe EU.51 A similar call for this type of analysis was made by a number of developing countries duringrecent discussions in WIPO.52 However the necessary support to take it forward was not forthcomingfrom some of the same countries now pressing for such work in the WTO. We, like others, believe onlywith this type of analysis will developing countries,particularly low income ones, be able to take informedpositions on the continuing debates on geographical indications, especially within the WTO.53Further research should be undertaken, as a matter of urgency, by a competent body, possiblyUNCTAD, to assess in respect of developing countries:

• the actual or likely costs of implementing existing geographical indications provisionsunder TRIPS• what role geographical indications could play in the development of these countries4Integrating Intellectual Property Rights and Development Policy 91• the likely costs and benefits of extending the current additional protection for wines and spiritsto other products• the costs and benefits of the various proposals put forward for establishing a multilateralregister of geographical indications.1

INTERNATIONAL IP PROTECTION FOR GMO – A BIOTECH ODYSSEY

Clemens Kerle[*]This paper deals with IP protection for genetically modified organisms (GMOs) under the

Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPs). It outlines the potential ofGMOs and shows why effective patent protection is a necessary prerequisite for research in this area. Itargues that the TRIPs minimum requirements do not mandate sufficient standards for GMO patents – theydo not require patent protection for most biotechnological inventions.Subsequently, it explores theconsequences of this lack of harmonization. Employing salient arguments for and against IP-harmonization, it demonstrates that harmonized effectivepatent protection for GMOs confers significant advantages on the participating countries, but hardly anydisadvantages. Moreover, it indicates that effective IPRs mitigate the more widespread use of Genetic UseRestriction Technology(ies) (GURTs). It concludes with showing why multilateral harmonization isnecessary and why developing countries are deterred from unilaterally raising the standard of IPprotection for GMOs.LIST OF ABBREVIATIONS

DNA: Deoxyribonucleic AcidEPO: European Patent OfficeFDI: Foreign Direct InvestmentGATT: General Agreement on Tariffs and TradeGM: Genetically ModifiedGMO(s): Genetically Modified Organism(s)GURT(s): Genetic Use Restriction Technology(ies)IP: Intellectual PropertyIPR: Intellectual Property Right(s)PBR(s): Plant Breeders’ Right(s)R & D: Research and DevelopmentTRIPs: Agreement on Trade-related Aspects of Intellectual Property RightsUPOV: International Convention for the Protection of New Varieties of PlantsWIPO: World Intellectual Property Organisation

WTO: World Trade Organisation

[*149]Odyssey: A long wandering and eventful journey[1]

I. INTRODUCTION

The promises and risks of biotechnology, the harmonization of IPRs (Intellectual Property Rights),the ever-explosive relationship between rich and poor, and the developed “North” and the developing“South”[2] are among the issues touched upon by controversial IP protection for GMOs (GeneticallyModified Organisms). Myth, fiction and reality are often confused in the course of highly emotionaldisputes in which the Agreement on Trade-related Aspects of Intellectual Property Rights[3] appears tohave become the epicentre of this lasting discussion that is rich and heterogeneous in quality and content,and that has triggered such eventful developments that the use of the term “odyssey” is appropriate.Following the enactment of TRIPs, after years of negotiations, the “long wandering” appeared to havecome to an end. However,“while . . . Article [27 of TRIPs] settled the longstanding conflicts over pharmaceutical product patents, [it] has created new complications regarding protection for biologicalmatter and agricultural biotechnology in particular.”[4]

Thus, the journey might not be over yet. Numerous scholars have addressed the complications thatTRIPs, and specifically Article 27, has created, underlining the importance of the questions that thisagreement raises and, arguably, leaves unanswered.[5][*150]

This paper focuses on an essential part of the odyssey – IP protection for GMOs mandated byTRIPS – and aims to provide an alternate view of welfare and development implications resulting fromIPR harmonization in this field. I will argue that TRIPs, and Article 27 in particular, leave too muchflexibility for the WTO member states in that respect; I will show that this flexibility results in suboptimalIP standards for GMOs, particularly in developing countries. The following threefold structure will beused to prove this argument: First, I will define the term GMO, indicate the economic and scientific potential of genetic engineering,and outline relevant factors that influence biotechnological research. Assuming that continuing suchprivate research and development (R&D) is desirable, I will demonstrate why patent protection appears tobe essential from a utilitarian viewpoint. Second, I will show that the built-in flexibility in TRIPs permits the reduction of GMOs eligible for IPprotection to an extent where most would fall outside the mandated minimum requirements forinventions. I will conclude that in fact no harmonization has been achieved in this field. Third, I will analyze the consequences of such a lack of harmonization. While the overall effects of IPharmonization on the global economy may be ambiguous, I will distinguish the creation of new GMOsfrom other innovative areas of economic activity and argue that harmonized effective patent protection isto be regarded as crucial for sufficient private investment in R&D in this area. I will show thatmultilateral harmonization is necessary because developing countries are deterred from unilaterally

raising the standard of IP protection for GMOs. In conclusion, I will describe how this odyssey can havea happy ending.[*151]

1. THE PROMISES OF EMBARKING ON THE ODYSSEY – THE RATIONALE OF GMOPROTECTION

1.1. GMOs and their potential

GMOs are biological entities created or altered to serve a certain purpose. According to onedefinition, a GMO is “an organism whose genome has been altered by techniques of genetic engineeringso that its DNA contains one or more genes not normally found there.”[6] Genetic engineering enablesscientists to transfer certain biological characteristics across species; its potential is not confined to theexchange of genes between organisms that would be capable of sexual reproduction with each other. Thepossibility of moving genes (and consequently, their phenotypic expression) from one species to the othermight permit scientists to create “tailor-made” organisms, perfectly apt for whatever purposes they aredesigned. Among other things, GMOs could potentially greatly contribute to developing countries’economies even though their benefits have so far been mainly confined to the developed world.[7]

First, the creation of crops designed for specific environments such as arid lands[8] and havingenhanced nutritional value (e.g., vitamin A-rich golden rice)[9] that will produce higher yields or reducethe amount of pesticides, fungicides and herbicides required to control insects and plant pests seemsachievable. In this way, biotechnology can contribute to increased food security and help fight hunger andpoverty.[10] Second, [*152]scientists envisage projects such as “vaccination through nutrition,”[11]which points out a diabetes vaccine contained in tobacco plants. Third, the development and productionof drugs for (orphan) diseases might be facilitated through the use of biotechnological means, particularlytrough transgenic organisms producing pharmaceuticals – a process often referred to as “bio-pharming.”[12] The potential of transgenic animals is similarly breathtaking, even though the “bluerevolution” has just begun.[13] In short, GMOs are capable of positively influencing many areas, eventhose not intuitively related to biology, and might help to overcome some of the problems the developingworld is facing.

However, although the “first wave”[14] of GMOs may already consist of “tailor-made”organisms to some extent, they are almost exclusively created to grow in temperate climate zones. AsGaisford notes, “the potential benefits of biotechnology have not [yet] reached countries with subtropicaland tropical climate.”[15] Evidently, there seems to be very little private R&D spending for theseregions.[16] It seems clear that the scarcity of privately funded research is caused by many factors:smaller local R&D capacities and markets, regulatory obstacles, consumer fears,[17] and politicalconsiderations.[18] The list is obviously not exhaustive, and many other factors might have an influence on this regrettable situation. One might suspect, however, that the [*153]comparatively weak IP system inthe “South” also plays a significant role.[19] Referring to a common critique of “northern” IP systems,the (UK) Commission on IPR “considers that, if anything, the costs of getting the IP system ‘wrong’ in adeveloping country are likely to be far higher than in developed countries.”[20] This statement seemsintuitively right – perhaps developing economies are more vulnerable to wrong policy choices. But inlight

of the sluggish (biotechnological) progress in these regions and, or perhaps in spite of, weak IPRs, it isalso tempting to ask how much worse it could get with stronger IPRs.

1.2. Destination: effective protection

IP protects the results of intellectual efforts in a variety of forms – books, widgets, databases,CDs and even biological material, through the possibility of excluding others from their use. Over time,societies have developed many different kinds and shapes of these rights – copyrights, patents, plantbreeders’ rights (PBRs), industrial designs, various sui generis rights, as well as trademarks and tradesecrets. As far as the former types of IPR are concerned, the most commonly accepted rationale for theirexistence is that they induce innovation and provide incentives for disclosure and dissemination of new knowledge through granting limited monopolies.[21]

While this underlying basic mechanism is commonly accepted, the ideal scope and duration ofthese rights is practically impossible to determine, and therefore remains controversial. Kitch, however,has legitimately pointed out that “whether or not [patent law] works in practice is a matter of experience, not theory.”[22] Reality seems to prove that the current system does work.Organisms, as well as theirparts, have only become eligible, as a practical matter, for IP protection in recent decades.[23] The firstregimes aimed to protect the results of [*154]traditional plant breeding, but with the rise of modernbiotechnology, these systems became insufficient and, in many legal systems, a variety of IPRs are nowavailable for the result of modern biotechnological research.[24] This seems only logical – like otherproducts of intellectual effort, biological inventions are also (largely) non-excludable. Therefore, in theabsence of protection, free “copying” and using could not be prevented, and recouping R&D investmentswould be impossible. Thus, the economic justification for the existence of IPRs in general is equally validfor bio-IPRs, because due to their nature, organisms (and their parts) can be reproduced practicallywithout cost and indefinitely by almost anybody.

As a response to recent technological progress, and the need for private R&D in this field,biological material has become gene rally patentable in many jurisdictions.25 But that in itself may notsuffice, because the protection that is actually available is quite diverse in different legal orders – for several reasons:

First and foremost, large differences exist as to what kind of biological material can qualify forprotection. Theoretically, as far as GMOs are concerned, the following processes and products might beencompassed by principally patentable subject matter: the transgenic organism itself, a cell containing thealtered DNA, the isolated and purified gene or gene sequence that is later inserted into the alien DNA, therespective processes, and the respective products by these processes.[26] Other relevant biotechnological patents could include vectors and plasmids; more generally, patents might be awarded for essentialbiotechnological techniques such as the famous “Cohen-Boyer” patent, which, based on the firstsuccessful expression of recombinant proteins, covers one of the most fundamental building blocks ofgenetic engineering.[27]

Secondly, and although there is a fairly broad consensus within the academic [*155]communitythat granting biotech patents is in principle an advantageous policy choice,[28] a different issue arises asto how far the patent protection extends and what constitutes infringement. The impact of patents on aneconomy depends to a large extent on their shape, defined mainly by their duration and scope. Theformer seems to be a “settled issue,”[29] while the latter, largely within the discretion of the granting

authority, is delineated by the claims of a patent, where the applicant specifies the limitations of the legalmonopoly for which he is applying.It is important to note that drafting patent claims is a complex task. The broader the monopoly sought, the greater the risk of invalidity but the higher the potential reward.[30] As more competing activity can be legally prevented, more profits can be potentially made.[31] Thesignificance of a patent scope for a biological invention can be illustrated with an example: If a gene thatleads to increased herbicide resistance is protected by a patent, the crucial question to answer is whetheror not unauthorized propagation of a plant containing this gene infringes the exclusive right of the owner.Should this be answered in the negative, the patent can effectively only prevent further research on thisparticular gene; otherwise, it might be used by a seed company to effectively control the marketing of itsproduct or even catch cases of “pollen drift.”[32]

It follows from the above that the concept of “biotech patents” can in principle embrace a largevariety of different kinds of patents with very broad or rather narrow scopes, protecting inventions withlargely differing characteristics at quite different stages of (bio)technological development. This is also tosay that “biotech patents” can be obtained for results of upstream as well as downstream research,[33]which adds further [*156]complexity to the highly intricate task of assessing the economic impacts ofbiotech patents. Therefore, if the concept of biopatents in general is analysed, it is almost impossible toarrive at an unambiguous conclusion.

However, if we focus on GMOs only, such a result can be obtained.When it comes tobiopatents in general, scholars seem particularly concerned about overly broad patents,[34] patent“thickets” impeding further innovation through largely increased transaction costs – the now famous“anti-commons” theory,[35] “bracketing,”[36] detrimentally low non-obviousness and utilitystandards[37] and blocking/increasing costs of ongoing innovation through the patenting of upstream“research tools.”[38] There are many responses to each issue. First and foremost, as mentioned above, empirical evidence weakens the persuasiveness of thesearguments. The influence of all these allegedly problematic developments on biotechnological researchcannot be that detrimental – after all, in no other country does related R&D flourish at a comparable levelas the U.S.,[39] on which most scholarly critiques focused.[40] Second, the patent system probably needs some time to adapt itself to this new technology. For example,it seems that the U.S. Patent and Trademark Office (PTO) has partially reversed some of its allegedlymost problematic practices, such as granting patents for expressed sequence tags without the disclosure ofa specific use.[41] Third, it appears that most critics are concerned mainly about detrimental upstream patents. While those might, in addition to the ordinary incentive theory, serve a valuable “prospect function,”[42] upstreampatents [*157]are only of limited direct relevance for GMOs. Obviously it is impossible to draw a clearline between upstream and downstream research; clearly downstream products will never enter the marketwithout the respective upstream research.

Despite these considerations, it must be emphasized that in most cases GMOs are marketedproducts themselves; therefore, it appears safe to say that a vast majority of useful GMOs will fall into thedownstream product category. Thus, many of the concerns scholars have expressed with regard tobiotech patenting do not seem to be applicable to GMOs, or perhaps only to a lesser extent.

For these reasons, an interim result can be noted: patenting GMOs is probably in principle notdetrimental to continuing innovation. To the contrary, if private investment is regarded as desirable,awarding patents for such inventions must be considered as necessary.[43] This essay does not intend to

provide detailed guidance on the exact shape of GMO patents. For the purposes of this paper, it sufficesto hold that GMO patent protection must be effective, and must ensure that the recouping of sunkeninvestments is possible. The minimum requirements for effective protection, and whether this interimconclusion is true for every economy in an international context, will be addressed in greater detail below.

The analysis so far has shown that patents are essential for private innovations in this field.However, two other ways of protecting GMOs exist, which are seemingly of enormous potential,particularly for the agricultural sector: through contract agreements or self policing techniques.

Parties can use contracts to establish IP-like protection, or to extend granted statutory rights.[44] However, like every other IP protection technique that has been described so far, “bag label,” “seedwrap” licences and the like come with a significant disadvantage for the inventor: enforcement of hisrights is difficult and controversial.[45] Seed developers would have to send out employees to test cropsof non-customers for protected characteristics[46] in order to detect infringers and collect evidence. Thismight be a very labor-intensive task due to the high degree of similarity between protected andunprotected types of plants.[47] Besides, contracts could obviously not bind those who had not, or whocould not be deemed to have accepted their terms. From the inventor’s perspective, the solution mightlie in “self-policing” technologies – means to prevent the reproduction of plants. Farmers growing certain[*158]crops such as corn are already supplied with seeds that do not produce progeny with the samequality,[48] and are forced to purchase new seeds every year. Modern biotechnology has begun to offereven more effective means of controlling the use of GMOs: Genetic Use Restriction Technologies(GURTs).[49] These include the famous “terminator gene” – which makes plants containing the gene kill its seed byproducing a toxin, thus effectively sterilizing the organism. This appears to be only the first step.[50]More sophisticated methods already appear on the horizon:In one embodiment of the technology, it is possible to introduce into the seed a genetic ‘switch’ that willexpress, or turn off, the toxin production when the seed is exposed to a particular chemical. This in effectsupplies a chemical ‘password’ to seed activate germination, and which can be used to control the termsof seed usage from year to year. Yearly application of the control chemical, obtained from the seed ownerfor payment, would allow the owner to activate or deactivate seeds in return for prescribed payment. Onecan easily envision other types of switches, sensitive to temperature, precipitation, soil alkalinity, or other environmental factors, that could be used to limit use of the seed to certaingeographical regions or seasonal applications.[51] Such prophecies for the agriculture of tomorrow haveled to public outcry in some regions[52] and will confront legal systems with various complex issues. These technological control mechanisms potentially provide the inventor with more control than any legalmeans could ever do.While any IP law grants a more or less limited monopoly for a definite period, whichis often combined with exceptions (e.g., fair use, research exception, farmer’s privilege) and is inherentlyincomplete, technological protection could, in principle, be infinite and absolute. It remains to be seenhow legislators and courts respond to more widespread use of such technologies.GURTs can certainlyovercome the imitation problem that the inventor faces. But contrary to patents, they are not limitedrights granted by the public in exchange for something novel, non-obvious and useful. Therefore,whether a GMO enjoys technological protection or not, and more importantly, for how long, is largelywithin the discretion of the seed companies that can use such technologies.[54] That means that firmscould potentially acquire market power for products that would otherwise not be protected. Even if thiswas improbable due to the availability of close substitutes, which would be likely in such a case, GURTscould artificially extend the IP protection beyond its statutory length.

The existence of GURTs could induce more research into new GMOs, which could besubsequently protected by these means. In this way, a prediction as to their effects might resemble thepatent incentive theory. However, one of patent law’s crucial features, which is of great benefit for thepublic, is the disclosure requirement. If GURTs became sufficiently effective and subsequently replacedpatents, the public would be deprived of this benefit. Obviously, widespread use of GURTs might alsohave implications for agronomic development[55] – research and further improvement of the plantcontaining a terminator gene, not being able to be propagated any longer, would most probably beimpossible or more difficult. Basically, innovation that builds on previous results would be largelyimpeded. Furthermore, a study[56] on the welfare implications of different levels of appropriability[57]in the seed industry leads to the conclusion “that the optimum level of IPR appropriability is greater thanthat which existed in the North American seed corn market in 1996 and 1997, but that it is lower thanwould exist if GURTs were to become [*160]widely used.”[58]

For these reasons, this chapter can be concluded as follows: While protection against GMOpiracy through patents appears to be an advantageous policy choice, the level of beneficial protection canbe exceeded. The above results indicate that self-policing means such as GURTs might have the potentialto lead to such results. The implications of this finding for IP policy will be further addressed below.

Case study: the Iguana Management Programme

The Green Iguana Iguana iguana of Latin America is a highly prized source of meat andeggs. Green Iguanas are arboreal herbivores which can grow up to 2m in length and can weigh asmuch as 6kg (about 82% of the lizard is edible). They need about half as much food as a chickenor rabbit to produce the same amount of meat. The species is now widely threatened because ofexcess hunting and habitat destruction.

Research into the reproductive behavior of the Green Iguana was begun in 1983 and resulted indevelopment of new management techniques for ranching. A 'genetic brood stock' of adultiguanas which are larger, faster growing and more productive has been developed. The researchhas largely been the work of the Pro Iguana Verde Foundation (formed by Dagmar Werner in1985). The Foundation's programme for training and advice on Iguana ranching is called theIguana Management Programme (IMP). The IMP is based in Costa Rica but it is intended toimplement it throughout Latin America and possibly elsewhere.

The primary purpose of the IMP is to conserve living natural resources; its basic premise is thatif farmers can raise iguanas as a food crop, the status of the wild species will be improved andforest clearance might be reduced. Farmers adopting iguana ranching would have to protect orre-establish areas of forest to provide food for stock. Research indicates that meat production perhectare by iguanas is approximately three times higher than by cattle. Income can be derivedfrom selling iguanas and their products (meat, eggs, leather) and products from the forest.

The new technology and expertise which have been incorporated into an iguana ranching modelare being applied for an industrial purpose (i.e. agriculture) and are of commercial value; theythus fall within the area of intellectual property law as applied to biotechnology. Thebiotechnological components of the ranching model are the genetic brood stock (the Fundacionhas 'bioengineered' an improved stock of Green Iguanas) and the husbandry procedures (egglaying and incubation, nutrition, disease control, release and harvesting). These are forms of'original or traditional biotechnology', as opposed to 'new biotechnology' which is largelylaboratory-based and dependent upon human manipulation of genetic material.

Intellectual property rights provide the means for compensating the Fundacion for its efforts. Thetechnologies involved in the IMP are vulnerable to piracy. Much of the work of the Fundacion iscontained in the genetic make-up of the Genetic Brood Stock. Once these Iguanas are transferredor sold the Fundacion loses its direct control over the animals. In addition, the success of theIguana ranching model is dependent on the expertise to use the technologies efficiently; this isinformation which took years to develop but which can be pirated very easily once a license ispurchased. The Fundacion needs to be able to disseminate its innovations and expertise in thesecurity of knowing that it cannot be re-sold by pirates and that there will be no reduction of thelicensing potential. Only internationally recognized intellectual property law can provide thesetypes of protection.

Because of the uncertainties of the world's intellectual laws with regard to biotechnology theavailability of protection for the most important components of the IMP is questionable. Atpresent there is widespread discrimination against the application of intellectual property rightsto natural genetic materials and in favor of human-modified genetic materials. This provides noincentives for exploitation of useful genetic materials in the natural environment, even though indeveloping countries natural resources are obvious subjects for investment. However, oneimportant way to limit conversion of natural resources is to ensure that fair value is paid forcurrent uses of the existing resource base. Intellectual property rights could be a means ofinfluencing developing countries to maintain and develop diverse resources in return for thevalue that these resources render to the world community.

REGULATED TRADING IN WILDLIFE PRODUCTSRegulated trading in wildlife products has the capacity of returning benefits to the users ofnatural habitats. It could do this if the trade were regulated in such a way as to support prices,much as is done at present with respect to agricultural commodities, where price supportsprovide incentives for maintaining land in its current state, as opposed to converting it to otherpurposes.

At present, there is no regulated trading mechanism of exactly this nature. There are, however, anumber of existing international agreements which do seek to regulate trade in wildlife products.Early examples are the Western Hemisphere Convention and the 1950 Paris InternationalConvention for Protection of Birds. These simply outlined in broad terms an obligation to controltrade in wildlife products but created little structure within which these controls could beimplemented. Both conventions consequently became 'sleeping treaties'. Undoubtedly the mostimportant and effective convention which places some control on the economic exploitation ofwildlife products and thereby protects biological diversity is the Convention on InternationalTrade in Endangered Species of Wild Fauna and Flora (CITES).

The evolution of CITES

CITES is the most widely accepted of international treaties on the conservation of naturalresources. The number of Parties has been steadily increasing from the initial signing of theconvention in 1973 to a total of 113 in 1992 (Fig. 31. 1)

The convention attempts to prevent commercial trade in species of wildlife which are in dangerof extinction and to control the trade in species which might become so if their trade was allowedto continue unchecked. It does this by means of two lists of species: Appendix I contains thosespecies banned from international commercial trade and Appendix II, those for which trade may

take place provided that export permits have been issued. Importing countries are obliged toensure that all imports of Appendix II specimens are accompanied by correct export permits.

One of the main obligations of Parties is to submit to the Convention Secretariat annual reportsof all of their trade in species included in the Appendices. The number of annual reportssubmitted is also shown in Fig. 31.1. These data are then compiled on a computer database andin this way it is possible to determine the global levels of trade in each species. At a fine level ofresolution, the trade emanating from each range state can then be compared with what is knownabout the wild population in that country to enable an estimation of whether it is sustainable orwhether it might be detrimental to its survival. At a coarser scale, the data can show long-termtrends in trade levels or trade routes, which can be used to help in understanding and thereforecontrolling the trade.

The convention covers not only live animals and plants but also products and derivatives of thespecies listed. These range from whole skins and manufactured leather products, through ivorycarvings, tortoiseshell jewelry, meat, seeds, and feathers to medicinal products extracted fromplants such as ginseng. This causes problems for the implementation of the Convention becauseit is necessary for enforcement of officers to determine not only what species the product isderived from but also whether the species is included in the Appendices.

(Agreements and Treaties

History of GATT & TRIPS Agreement; Madrid Agreement; Hague Agreement; WIPO Treaties;Budapest Treaty; PCT; Indian Patent Act 1970 & recent amendments)

---------------------------------

General Agreement on Tariffs and Trade(GATT)

The General Agreement on Tariffs and Trade (GATT) is a multilateral agreementregulating international trade. According to its preamble, its purpose is the "substantial reductionof tariffs and other trade barriers and the elimination of preferences, on a reciprocal and mutuallyadvantageous basis."

It was negotiated during the UN Conference on Trade and Employment and was the outcome ofthe 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 TradeOrganization in 1995. The original GATT text (GATT 1947) is still in effect under the WTOframework, subject to the modifications of GATT 1994.[1]

Contents 1 Rounds

o 1.1 Annecy Round - 1949

o 1.2 Torquay Round - 1951

o 1.3 Geneva Round - 1955-1956

o 1.4 Dillon Round - 1960-1962

o 1.5 Kennedy Round - 1962-1967

o 1.6 Tokyo Round - 1973-1979

o 1.7 Uruguay Round - 1986-1994

2 GATT and the World Trade Organization

RoundsGATT held a total of 8 rounds,

GATT and WTO trade rounds[2]

Name StartDuration

Countries

Subjectscovered

Achievements

GenevaApril 1946 7 months23 Tariffs Signing ofGATT, 45,000

tariffconcessionsaffecting $10billion of trade

AnnecyApril 1949 5 months13 Tariffs

Countriesexchangedsome 5,000tariffconcessions

Torquay

September1950

8 months38 Tariffs

Countriesexchangedsome 8,700tariffconcessions,cutting the1948 tarifflevels by 25%

GenevaII

January 1956 5 months26Tariffs,admissionof Japan

$2.5 billion intariffreductions

DillonSeptember1960

11months

26 Tariffs

Tariffconcessionsworth $4.9billion of worldtrade

Kennedy

May 196437months

62Tariffs, Anti-dumping

Tariffconcessionsworth $40billion of worldtrade

TokyoSeptember1973

74months

102

Tariffs, non-tariffmeasures,"framework"agreements

Tariffreductionsworth morethan $300billion dollarsachieved

Uruguay

September1986

87months

123 Tariffs, non-tariffmeasures,rules,

The round ledto the creationof WTO, andextended the

services,intellectualproperty,disputesettlement,textiles,agriculture,creation ofWTO, etc

range of tradenegotiations,leading tomajorreductions intariffs (about40%) andagriculturalsubsidies, anagreement toallow fullaccess fortextiles andclothing fromdevelopingcountries, andan extensionof intellectualpropertyrights.

DohaNovember2001

? 141

Tariffs, non-tariffmeasures,agriculture,laborstandards,environment,competition,investment,transparency, patentsetc

The round isnot yetconcluded.

Annecy Round - 1949

The second round took place in 1949 in Annecy, France. 13 countries took part in the round. Themain focus of the talks was more tariff reductions, around 5000 in total.

Torquay Round - 1951

The third round occurred in Torquay, England in 1950. Thirty-eight countries took part in theround. 8,700 tariff concessions were made totaling the remaining amount of tariffs to ¾ of thetariffs which were in effect in 1948. The contemporaneous rejection by the U.S. of the HavanaCharter signified the establishment of the GATT as a governing world body.[3]

Geneva Round - 1955-1956

The fourth round returned to Geneva in 1955 and lasted until May 1956. Twenty-six countriestook part in the round. $2.5 billion in tariffs were eliminated or reduced.

Dillon Round - 1960-1962

The fifth round occurred once more in Geneva and lasted from 1960-1962. The talks were namedafter U.S. Treasury Secretary and former Under Secretary of State, Douglas Dillon, who firstproposed the talks. Twenty-six countries took part in the round. Along with reducing over $4.9billion in tariffs, it also yielded discussion relating to the creation of the European EconomicCommunity (EEC).

Kennedy Round - 1962-1967

Kennedy Round took place from 1962-1967. $40 billion in tariffs were eliminated or reduced.

Tokyo Round - 1973-1979

Reduced tariffs and established new regulations aimed at controlling the proliferation of non-tariff barriers and voluntary export restrictions. 102 countries took part in the round. Concessionswere made on $190 billion worth.

Uruguay Round - 1986-1994

The Uruguay Round began in 1986. It was the most ambitious round to date, hoping to expandthe competence of the GATT to important new areas such as services, capital, intellectualproperty, textiles, and agriculture. 123 countries took part in the round. The Uruguay Round wasalso the first set of multilateral trade negotiations in which developing countries had played anactive role.[4]

Agriculture was essentially exempted from previous agreements as it was given special status inthe areas of import quotas and export subsidies, with only mild caveats. However, by the time ofthe Uruguay round, many countries considered the exception of agriculture to be sufficientlyglaring that they refused to sign a new deal without some movement on agricultural products.These fourteen countries came to be known as the "Cairns Group", and included mostly smalland medium sized agricultural exporters such as Australia, Brazil, Canada, Indonesia, and NewZealand.

The Agreement on Agriculture of the Uruguay Round continues to be the most substantial tradeliberalization agreement in agricultural products in the history of trade negotiations. The goals ofthe agreement were to improve market access for agricultural products, reduce domestic supportof agriculture in the form of price-distorting subsidies and quotas, eliminate over time exportsubsidies on agricultural products and to harmonize to the extent possible sanitary andphytosanitary measures between member countries.

GATT and the World Trade OrganizationMain article: Uruguay Round

In 1993, the GATT was updated (GATT 1994) to include new obligations upon its signatories.One of the most significant changes was the creation of the World Trade Organization (WTO).The 75 existing GATT members and the European Communities became the founding membersof the WTO on 1 January 1995. The other 52 GATT members rejoined the WTO in the following

two years (the last being Congo in 1997). Since the founding of the WTO, 21 new non-GATTmembers have joined and 29 are currently negotiating membership. There are a total of 153member countries in the WTO.

Of the original GATT members, Syria [5][6] and the SFR Yugoslavia has not rejoined the WTO.Since FR Yugoslavia, (renamed to Serbia and Montenegro and with membership negotiationslater split in two), is not recognised as a direct SFRY successor state; therefore, its application isconsidered a new (non-GATT) one. The General Council of WTO, on 4 May 2010, agreed toestablish a working party to examine the request of Syria for WTO membership.[7][8] Thecontracting parties who founded the WTO ended official agreement of the "GATT 1947" termson 31 December 1995. Serbia and Montenegro are in the decision stage of the negotiations andare expected to become the newest members of the WTO in 2012 or in near future.

Whereas GATT was a set of rules agreed upon by nations, the WTO is an institutional body. TheWTO expanded its scope from traded goods to trade within the service sector and intellectualproperty rights. Although it was designed to serve multilateral agreements, during several roundsof GATT negotiations (particularly the Tokyo Round) plurilateral agreements created selectivetrading and caused fragmentation among members. WTO arrangements are generally amultilateral agreement settlement mechanism of GATT.[9

2.Agreement on Trade-Related Aspects of IntellectualProperty Rights

(TRIPS)

The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) isan international agreement administered by the World Trade Organization (WTO) that sets downminimum standards for many forms of intellectual property (IP) regulation as applied tonationals of other WTO Members.[1] It was negotiated at the end of the Uruguay Round of theGeneral Agreement on Tariffs and Trade (GATT) in 1994.

The TRIPS agreement introduced intellectual property law into the international trading systemfor the first time and remains the most comprehensive international agreement on intellectualproperty to date. In 2001, developing countries, concerned that developed countries wereinsisting on an overly narrow reading of TRIPS, initiated a round of talks that resulted in theDoha Declaration. The Doha declaration is a WTO statement that clarifies the scope of TRIPS,stating for example that TRIPS can and should be interpreted in light of the goal "to promoteaccess to medicines for all."

Specifically, TRIPS contains requirements that nations' laws must meet for copyright rights,including the rights of performers, producers of sound recordings and broadcastingorganizations; geographical indications, including appellations of origin; industrial designs;integrated circuit layout-designs; patents; monopolies for the developers of new plant varieties;trademarks; trade dress; and undisclosed or confidential information. TRIPS also specifiesenforcement procedures, remedies, and dispute resolution procedures. Protection andenforcement of all intellectual property rights shall meet the objectives to contribute to thepromotion of technological innovation and to the transfer and dissemination of technology, to themutual advantage of producers and users of technological knowledge and in a manner conduciveto social and economic welfare, and to a balance of rights and obligations.

Contents 1 Background and history

2 The requirements of TRIPS

o 2.1 Access to essential medicines

o 2.2 Software and business method patents

3 Implementation in developing countries

4 Post-TRIPS expansion

5 Panel reports

6 Criticism

7 See also

o 7.1 Related treaties and laws

o 7.2 Related organizations

o 7.3 Related topics

8 References

9 External links

Background and historyTRIPS was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs andTrade (GATT) in 1994. Its inclusion was the culmination of a program of intense lobbying by theUnited States, supported by the European Union, Japan and other developed nations. Campaignsof unilateral economic encouragement under the Generalized System of Preferences andcoercion under Section 301 of the Trade Act played an important role in defeating competingpolicy positions that were favored by developing countries, most notably Korea and Brazil, butalso including Thailand, India and Caribbean Basin states. In turn, the United States strategy oflinking trade policy to intellectual property standards can be traced back to the entrepreneurshipof senior management at Pfizer in the early 1980s, who mobilized corporations in the UnitedStates and made maximizing intellectual property privileges the number one priority of tradepolicy in the United States (Braithwaite and Drahos, 2000, Chapter 7).

After the Uruguay round, the GATT became the basis for the establishment of the World TradeOrganization. Because ratification of TRIPS is a compulsory requirement of World TradeOrganization membership, any country seeking to obtain easy access to the numerousinternational markets opened by the World Trade Organization must enact the strict intellectualproperty laws mandated by TRIPS. For this reason, TRIPS is the most important multilateralinstrument for the globalization of intellectual property laws. States like Russia and China thatwere very unlikely to join the Berne Convention have found the prospect of WTO membership apowerful enticement.

Furthermore, unlike other agreements on intellectual property, TRIPS has a powerfulenforcement mechanism. States can be disciplined through the WTO's dispute settlementmechanism.

The requirements of TRIPSTRIPS requires member states to provide strong protection for intellectual property rights. Forexample, under TRIPS:

Copyright terms must extend to 50 years after the death of the author. (Art. 12 and 14)[2]

[not in citation given]

Copyright must be granted automatically, and not based upon any "formality," such asregistrations, as specified in the Berne Convention. (Art. 9)

Computer programs must be regarded as "literary works" under copyright law andreceive the same terms of protection.

National exceptions to copyright (such as "fair use" in the United States) are constrainedby the Berne three-step test

Patents must be granted for "inventions" in all "fields of technology" provided they meetall other patentability requirements (although exceptions for certain public interests areallowed (Art. 27.2 and 27.3)[3] and must be enforceable for at least 20 years (Art 33).

Exceptions to exclusive rights must be limited, provided that a normal exploitation of thework (Art. 13) and normal exploitation of the patent (Art 30) is not in conflict.

No unreasonable prejudice to the legitimate interests of the right holders of computerprograms and patents is allowed.

Legitimate interests of third parties have to be taken into account by patent rights(Art 30).

In each state, intellectual property laws may not offer any benefits to local citizens whichare not available to citizens of other TRIPS signatories under the principle of nationaltreatment (with certain limited exceptions, Art. 3 and 5).[4] TRIPS also has a most favorednation clause.

Many of the TRIPS provisions on copyright were copied from the Berne Convention for theProtection of Literary and Artistic Works and many of its trademark and patent provisions weremodeled on the Paris Convention for the Protection of Industrial Property.

Access to essential medicines

The most visible conflict has been over AIDS drugs in Africa. Despite the role that patents haveplayed in maintaining higher drug costs for public health programs across Africa, thiscontroversy has not led to a revision of TRIPs. Instead, an interpretive statement, the DohaDeclaration, was issued in November 2001, which indicated that TRIPs should not prevent statesfrom dealing with public health crises. After Doha, PhRMA, the United States and to a lesserextent other developed nations began working to minimize the effect of the declaration.

A 2003 agreement loosened the domestic market requirement, and allows developing countriesto export to other countries where there is a national health problem as long as drugs exported

are not part of a commercial or industrial policy.[5] Drugs exported under such a regime may bepackaged or colored differently to prevent them from prejudicing markets in the developedworld.

In 2003, the Bush administration also changed its position, concluding that generic treatmentsmight in fact be a component of an effective strategy to combat HIV. Bush created the PEPFARprogram, which received $15 billion from 2003–2007, and was reauthorized in 2008 for $48billion over the next five years. Despite wavering on the issue of compulsory licensing, PEPFARbegan to distribute generic drugs in 2004-5.

Software and business method patents

Main article: Software patents under TRIPs Agreement

Another controversy has been over the TRIPS Article 27 requirements for patentability "in allfields of technology", and whether or not this necessitates the granting of software and businessmethod patents.

Implementation in developing countriesThe obligations under TRIPS apply equally to all member states, however developing countrieswere allowed extra time to implement the applicable changes to their national laws, in two tiersof transition according to their level of development. The transition period for developingcountries expired in 2005. The transition period for least developed countries to implementTRIPS was extended to 2013, and until 1 January 2016 for pharmaceutical patents, with thepossibility of further extension.[6]

It has therefore been argued that the TRIPS standard of requiring all countries to create strictintellectual property systems will be detrimental to poorer countries' development.[7] Manyargue[who?] that it is, prima facie, in the strategic interest of most if not all underdeveloped nationsto use any flexibility available in TRIPS to legislate the weakest IP laws possible.[who?]

This has not happened in most cases. A 2005 report by the WHO found that many developingcountries have not incorporated TRIPS flexibilities (compulsory licensing, parallel importation,limits on data protection, use of broad research and other exceptions to patentability, etc.) intotheir legislation to the extent authorized under Doha.[8]

This is likely caused by the lack of legal and technical expertise needed to draft legislation thatimplements flexibilities, which has often led to developing countries directly copying developedcountry IP legislation,[9] or relying on technical assistance from the World Intellectual PropertyOrganization (WIPO), which, according to critics such as Cory Doctorow, encourages them toimplement stronger intellectual property monopolies.

Post-TRIPS expansionThe neutrality of this article is disputed. Please see the discussion on the talk page.Please do not remove this message until the dispute is resolved. (May 2011)

The requirements of TRIPS are, from a policy perspective, extremely stringent. Despite this,lobbyists for the industries that benefit from various intellectual property laws have continuedsince 1994 to campaign to strengthen existing forms of intellectual property and to create newkinds:

The creation of anti-circumvention laws to protect Digital Rights Management systems.This was achieved through the 1996 World Intellectual Property Organization CopyrightTreaty (WIPO Treaty) and the WIPO Performances and Phonograms Treaty.

The desire to further restrict the possibility of compulsory licenses for patents has led toprovisions in recent bilateral US trade agreements.

It is one thing for states to have intellectual property laws on their statutes, and anotherfor governments to enforce them aggressively. This distinction has led to provisions inbilateral agreements, as well as proposals for WIPO and European Union rules onintellectual property enforcement. The 2001 EU Copyright Directive was to implementthe 1996 WIPO Copyright Treaty.

The wording of TRIPS Art 27 of non-discrimination is used to justify an extension of thepatent system.

The campaign for the creation of a WIPO Broadcasting Treaty that would givebroadcasters (and possibly webcasters) exclusive rights over the copies of works theyhave distributed.

Panel reportsAccording to WTO 10th Anniversary, Highlights of the first decade, Annual Report 2005 page142,[10] in the first ten years, 25 complaints have been lodged leading to the panel reports andappellate body reports on TRIPS listed below.

The WTO website has a gateway to all TRIPS disputes (including those that did not lead to panelreports) here [1].

2005 Panel Report:[11]

o European Communities - Protection of Trademarks and Geographical Indicationsfor Agricultural Products and Foodstuffs.

2000 Panel Report:[12] Part 2[13] and 2000 Appellate Body Report[14]

o Canada - Term of Patent Protection.

2000 Panel Report, Part 1:[15] and Part 2[16]

o United States - Section 110(5) of the US Copyright Act.

2000 Panel Report:[17]

o Canada - Patent Protection of Pharmaceutical Products.

2001 Panel Report:[18] and 2002 Appellate Body Report[19]

o United States - Section 211 Omnibus Appropriations Act of 1998.

1998 Panel Report:[20]

o India - Patent Protection for Pharmaceutical and Agricultural Chemical Products.

1998 Panel Report:[21]

o Indonesia - Certain Measures Affecting the Automobile Industry.

CriticismSince TRIPS came into force it has received a growing level of criticism from developingcountries, academics, and Non-governmental organizations. Some of this criticism is against theWTO as a whole, but many advocates of trade liberalization also regard TRIPS as bad policy(see, for example, Jagdish Bhagwati's In Defense of Globalization for a discussion on thedetrimental effect of TRIPS on access to medicines in developing countries). TRIPS' wealthredistribution effects (moving money from people in developing countries to copyright andpatent owners in developed countries) and its imposition of artificial scarcity on the citizens ofcountries that would otherwise have had weaker intellectual property laws, are a common basisfor such criticisms.

Peter Drahos writes that "It was an accepted part of international commercial morality that stateswould design domestic intellectual property law to suit their own economic circumstances. Statesmade sure that existing international intellectual property agreements gave them plenty oflatitude to do so."[22]

Daniele Archibugi and Andrea Filippetti [23] argue that the importance of TRIPS in the process ofgeneration and diffusion of knowledge and innovation has been overestimated by both theirsupporters and their detractors. Claude Henry and Joseph E. Stiglitz [24] argue that the currentintellectual property global regime may impede both innovation and dissemination, and suggestreforms to foster the global dissemination of innovation and sustainable development.

3. Madrid system

The Madrid system for the international registration of marks, also conveniently known asthe Madrid System, is the primary international system for facilitating the registration oftrademarks in multiple jurisdictions around the world. It legal basis is the multilateral treatyMadrid Agreement Concerning the International Registration of Marks of 1891 as well as theProtocol Relating to the Madrid Agreement (of 1989).

The Madrid system provides a centrally administered system of obtaining a bundle of trademarkregistrations in separate jurisdictions. Registration through the Madrid system does not create an'international' registration, as in the case of the European CTM[clarification needed] system, rather itcreates a bundle of national rights, able to be administered centrally. Madrid provides amechanism for obtaining trademark protection in many countries around the world, which ismore effective than seeking protection separately in each individual country or jurisdiction ofinterest.

Madrid now permits the filing, registration and maintenance of trade mark rights in more thanone jurisdiction, provided that the target jurisdiction is a party to the system.(1) The Madridsystem is administered by the International Bureau of the World Intellectual PropertyOrganisation (WIPO) in Geneva, Switzerland.

Contents 1 Members

2 Advantages

3 Disadvantages

4 Recent developments

5 See also

6 Notes

7 References

8 External links

MembersAdherence to the convention or the protocol includes membership of the "Madrid Union". As of25 February 2012, there are 85 members. The original treaty has 56 members all 55 of which (allexcept Algeria) are also party to the protocol. The original treaty has [1] comprising the MadridUnion of jurisdictions which have become party to the Agreement or the Protocol or both.

The primary reason the Protocol — which has been in operation since 2004 and has 78 members— is more popular than the Agreement — which has been in operation for more than 110 yearsand has 56 members[1] — is that the Protocol introduced a number of changes to the Madridsystem which significantly enhanced its usefulness to trademark owners.

For example, under the Protocol it is possible to obtain an international registration based on apending trade mark application, so that a trade mark owner can effectively apply for internationalregistration concurrently with or immediately after filing an application in a member jurisdiction.By comparison, the Agreement requires that the trade mark owner already holds an existingregistration in a member jurisdiction, which may often take many months and sometimes yearsto obtain in the first place. In addition, the Agreement does not provide the option to ‘convert’international registrations which have been ‘centrally attacked’ (see below).

AdvantagesThe Madrid system provides a mechanism whereby a trademark owner who has an existingtrademark application or registration (known as the 'basic application' or 'basic registration') in amember jurisdiction may obtain an ‘international registration’ for their trademark from theWIPO. The trademark owner may then extend the protection afforded to the internationalregistration to one or more member jurisdictions, a process known as ‘designation’. A usefulfeature of the Madrid system is that this protection may generally be extended to additionaljurisdictions at any time, such that international trade mark protection can be extended to newjurisdictions which subsequently join Madrid, or to such other jurisdictions as the trade markowner may choose. In basic terms, the primary advantage of the Madrid system is that it allows atrademark owner to obtain trademark protection in any or all member states by filing oneapplication in one jurisdiction with one set of fees, and make any changes (e.g. changes of nameor address) and renew registration across all applicable jurisdictions through a singleadministrative process.

DisadvantagesOne disadvantage of the Madrid system is that any refusal, withdrawal or cancellation of thebasic application or basic registration within five years of the registration date of the

international registration will lead to the refusal, withdrawal or cancellation of the internationalregistration to the same extent. For example, if a basic application covers 'clothing, headgear andfootwear', and 'headgear' is then deleted from the basic application (for whatever reason),'headgear' will also be deleted from the international application. Therefore, the protectionafforded by the international registration in each designated member jurisdiction will only extendto 'clothing and footwear'. If the basic application is rejected as a whole, the internationalregistration would also be totally refused.

The process of attacking the basic application or basic registration for this purpose is generallyknown as ‘central attack’. Under the Madrid Protocol, the effects of a successful central attackcan be mitigated by transforming the international registration into a series of applications ineach jurisdiction designated by the international registration, a process known as‘transformation’. Although transformation is an expensive option of last resort, the resultingapplications will receive the registration date of the international registration as their filing date.

In 1997, less than half of a percent of international registrations were canceled as a result ofcentral attack.[2]

The costs savings which usually result from using the Madrid system may be negated by therequirement to use local agents in the applicable jurisdiction if any problems arise.

Recent developmentsTwo significant recent developments in international trade mark law were the accession of theUnited States and the European Union to the Madrid Protocol on 2 November 2003 and 1October 2004, respectively. With the addition of these jurisdictions to the Protocol, most majortrading jurisdictions have joined the Madrid system.

4. Hague Agreement:

The Hague Agreement Concerning the International Deposit of Industrial Designs, alsoknown as the Hague system provides a mechanism for registering an industrial design in severalcountries by means of a single application, filed in one language, with one set of fees. Thesystem is administered by WIPO.

Contents 1 History

2 Contracting Parties (member countries)

3 Qualification to use the Hague system

4 Application requirements

5 Examination and registration procedure

6 Duration & renewal

7 References

8 External links

HistoryThe Hague Agreement consists of several separate treaties,[1] the most important of which

are: the London Act of June 2, 1934,[2] the Hague Act of November 28, 1960,[3] and the GenevaAct of July 2, 1999.[4]

Countries can sign up to the 1960 (Hague) Act, the 1999 (Geneva) Act, or both (the 1934Act is frozen as of January 1, 2010). If a country signs up to only one Act, then applicants fromthat country can only use the Hague system to obtain protection for their designs in othercountries which are signed up to the same Act. For instance, because the European Union hasonly signed up to the 1999 (Geneva) Act, applicants which qualify to use the Hague systembecause their domicile is in the European Union can only get protection in countries which havealso signed up to the 1999 Act or to both the 1999 and 1960 Acts.

Contracting Parties (member countries)A list of the Contracting Parties is maintained by WIPO.

Qualification to use the Hague systemApplicants can qualify to use the Hague system on the basis of any of the following criteria:

the applicant is a national of a Contracting Party (i.e. member country)

the applicant is domiciled in a Contracting Party

the applicant has a real and effective industrial or commercial establishment in aContracting Party

the applicant has its habitual residence in a Contracting Party (only available if theContracting Party in question has adhered to the 1999 (Geneva) Act)

An applicant who does not qualify under one of these headings cannot use the Hague system.The Contracting Parties include not only individual countries, but also intergovernmentalorganisations such as the African Intellectual Property Organization (OAPI) and the EuropeanUnion. This means an applicant domiciled in an EU member country that is not a ContractingParty, such as Austria or the United Kingdom, can nevertheless use the Hague system on thebasis of his or her domicile in the European Union.

Application requirementsAn application may be filed in English, French, or Spanish, at the choice of the applicant. Theapplication must contain one or more views of the designs concerned and can include up to 100different designs provided that the designs are all in the same class of the InternationalClassification of Industrial Designs (Locarno Classification).

The application fee is composed of three types of fees: a basic fee, a publication fee, and adesignation fee for each designated Contracting Party.

Examination and registration procedureThe application is examined for formal requirements by the International Bureau of WIPO,which provides the applicant with the opportunity to correct certain irregularities in theapplication. Once the formal requirements have been met, it is recorded in the International

Register and details are published electronically in the International Designs Bulletin on theWIPO website.

If any designated Contracting Party considers that a design which has been registered forprotection in that Contracting Party does not meet its domestic criteria for registrability (e.g. itfinds that the design is not novel), it must notify the International Bureau that it refuses theregistration for that Contracting Party. In every Contracting Party that does not issue such arefusal, the international registration takes effect and provides the same protection as if thedesign(s) had been registered under the domestic law of that Contracting Party.

Duration & renewalThe duration of an international registration is five years, extendable in further five-year periodsup to the maximum duration permitted by each Contracting Party.

Renewals are handled centrally by the International Bureau. The applicant pays a renewal feeand notifies the International Bureau of the countries for which the registration is to be renewed.

5. WIPO treaty:

The World Intellectual Property Organization (WIPO) is one of the 17 specialized agenciesof the United Nations. WIPO was created in 1967 "to encourage creative activity, to promote theprotection of intellectual property throughout the world."[1]

WIPO currently has 185 member states,[2] administers 24 international treaties,[3] and isheadquartered in Geneva, Switzerland. The current Director-General of WIPO is Francis Gurry,who took office on October 1, 2008.[4] 184 of the UN Members as well as the Holy See areMembers of WIPO. Non-members are the states of Cook Islands, Kiribati, Marshall Islands,Federated States of Micronesia, Nauru, Niue, Palau, Solomon Islands, Timor-Leste, Tuvalu, andthe states with limited recognition. Palestine has observer status.[5]

Contents 1 History

2 Criticism

3 Information network

4 See also

5 Notes andreferences

6 External links

HistoryThe predecessor to WIPO was the BIRPI (Bureaux Internationaux Réunis pour la Protection dela Propriété Intellectuelle, French acronym for United International Bureaux for the Protectionof Intellectual Property), which had been established in 1893 to administer the Berne Convention

for the Protection of Literary and Artistic Works and the Paris Convention for the Protection ofIndustrial Property.

WIPO was formally created by the Convention Establishing the World Intellectual PropertyOrganization, which entered into force on April 26, 1970. Under Article 3 of this Convention,WIPO seeks to "promote the protection of intellectual property throughout the world." WIPObecame a specialized agency of the UN in 1974. The Agreement between the United Nations andthe World Intellectual Property Organization[6] notes in Article 1 that WIPO is responsible

"for promoting creative intellectual activity and for facilitating the transfer oftechnology related to industrial property to the developing countries in orderto accelerate economic, social and cultural development, subject to thecompetence and responsibilities of the United Nations and its organs,particularly the United Nations Conference on Trade and Development, theUnited Nations Development Programme and the United Nations IndustrialDevelopment Organization, as well as of the United Nations Educational,Scientific and Cultural Organization and of other agencies within the UnitedNations system."

The Agreement marked a transition for WIPO from the mandate it inherited in 1967 from BIRPI,to promote the protection of intellectual property, to one that involved the more complex task ofpromoting technology transfer and economic development. [7][Need quotation to verify]

Unlike other branches of the United Nations, WIPO has significant financial resourcesindependent of the contributions from its Member States. In 2006, over 90% of its income of justover CHF 250 million[8] was expected to be generated from the collection of fees by theInternational Bureau (IB) under the intellectual property application and registration systemswhich it administers (the Patent Cooperation Treaty, the Madrid system for trade marks and theHague system for industrial designs).

CriticismAs with all United Nations multi-government forums, WIPO is not an elected body. WIPOusually attempts to reach decisions by consensus, but in any vote, each Member State is entitledto one vote, regardless of population or contribution to the funding. This has highlighted adisagreement over certain issues, due to the North-South divide in the politics of intellectualproperty. During the 1960s and 1970s, developing nations were able to block expansions tointellectual property treaties, such as universal pharmaceutical patents, which might haveoccurred through WIPO.[vague]

In the 1980s, this led to the United States and other developed countries "forum shifting"intellectual property standard-setting out of WIPO and into the General Agreement on Tariffs andTrade, which later evolved into the World Trade Organization, where the North had greatercontrol of the agenda. This strategy eventually resulted in the enactment of Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).[citation needed]

Much of the work at WIPO is done through committees, including the Standing Committee onPatents (SCP), the Standing Committee on Copyright and Related Rights (SCCR), the AdvisoryCommittee on Enforcement (ACE), and the Intergovernmental Committee (IGC) on Access to

Genetic Resources, Traditional Knowledge and Folklore, and the Working Group on Reform ofthe Patent Cooperation Treaty.[who?]

In October 2004, WIPO agreed to adopt a proposal offered by Argentina and Brazil, the"Proposal for the Establishment of a Development Agenda for WIPO" - from the GenevaDeclaration on the Future of the World Intellectual Property Organization.[9] This proposal waswell supported by developing countries. A number of civil society bodies have been working ona draft Access to Knowledge (A2K)[10] Treaty which they would like to see introduced.

The Washington Post reported in 2003 that Lois Boland (USPTO Director of InternationalRelations) said "that open-source software runs counter to the mission of WIPO, which is topromote intellectual-property rights." Also saying, "To hold a meeting which has as its purposeto disclaim or waive such rights seems to us to be contrary to the goals of WIPO."[11]

Information networkWIPO has established WIPOnet, a global information network. The project seeks to link over300 intellectual property offices (IP offices) in all WIPO Member States. In addition to providinga means of secure communication among all connected parties, WIPOnet is the foundation forWIPO's intellectual property services.[12]

See also Anti-Counterfeiting Trade Agreement

Geneva Declaration on the Future of the World Intellectual PropertyOrganization

Intellectual property

List of parties to international copyright agreements

Substantive Patent Law Treaty (SPLT)

Treaties administered by the World Intellectual Property Organization

Uniform Domain-Name Dispute-Resolution Policy

World Intellectual Property Day (April 26)

World Intellectual Wealth Organisation

6.BUDAPEST treaty:

The Budapest Treaty on the International Recognition of the Deposit of Microorganisms forthe Purposes of Patent Procedure, or Budapest Treaty, is an international treaty signed inBudapest, Hungary, on April 28, 1977. It entered into force on August 9, 1980, and was lateramended on September 26, 1980. The treaty is administered by the World Intellectual PropertyOrganization (WIPO).

As of May 2012, 76 countries were party to the Budapest Treaty.[1] The Budapest Treaty willenter into force with respect to Brunei Darussalam, the 75th contracting state, on 24 July 2012.[2]

The accession to the Treaty is open to States party to the Paris Convention for the Protection ofIndustrial Property of 1883. The African Regional Industrial Property Organization (ARIPO), the

Eurasian Patent Organization (EAPO) and the European Patent Organisation (EPO) have filed adeclaration of acceptance under Article 9(1)(a) [3] of the Treaty.

The treaty allows "deposits of microorganisms at an international depositary authority to berecognized for the purposes of patent procedure". [4] Usually, in order to meet the legalrequirement of sufficiency of disclosure, patent applications and patents must disclose in theirdescription the subject-matter of the invention in a manner sufficiently clear and complete to becarried out by the person skilled in the art (see also: reduction to practice). When an inventioninvolves a microorganism, completely describing said invention in the description to enable thirdparties to carry it out is usually impossible. This is why, in the particular case of inventionsinvolving microorganisms, a deposit of biological material must be made in a recognisedinstitution. The Budapest Treaty ensures that an applicant, i.e. a person who applies for a patent,needs not to deposit the biological material in all countries where he/she wants to obtain a patent.The applicant needs only to deposit the biological material at one recognised institution, and thisdeposit will be recognised in all countries party to the Budapest Treaty.

Contents 1 International depositary

authority

2 Depositable subject matter

3 References

4 See also

5 External links

International depositary authorityThe deposits are made at an international depositary authority (IDA) in accordance with the rulesof the Treaty on or before the filing date of the complete patent application. Article 7 of theBudapest treaty outlines the requirements for a facility to become an International DepositaryAuthority. As of March 1, 2008, there were 37 IDAs in approximately 20 countries worldwide. [4]

Depositable subject matterIDA's have accepted deposits for biological materials which do not fall within a literalinterpretation of "microorganism". The Treaty does not define what is meant by“microorganism.”

The range of materials able to be deposited under the Budapest Treaty includes:

cells, for example, bacteria, fungi, eucaryotic cell lines, plant spores;

genetic vectors (such as plasmids or bacteriophage vectors or viruses)containing a gene or DNA fragments;

organisms used for expression of a gene (making the protein from the DNA).

There are many types of expression systems: bacterial; yeast; viral; plant or animal cell cultures;

yeast, algae, protozoa, eucaryotic cells, cell lines, hybridomas, viruses, planttissue cells, spores, and hosts containing materials such as vectors, cellorganelles, plasmids, DNA, RNA, genes and chromosomes;

purified nucleic acids; or

deposits of materials not readily classifiable as microorganisms, such as“naked” DNA, RNA, or plasmids

International Treaties and Conventions on Intellectual PropertyThe Paris Convention for the Protection of IndustrialPropertyHistoryPrincipal ProvisionsAdministrative and Financial ProvisionsThe Berne Convention for the Protection of Literary and Artistic WorksHistoryPrincipal ProvisionsThe Latest (Paris) Act of the ConventionAdministrationDeveloping Countries and the Berne ConventionThe WIPO Copyright Treaty (WCT) IntroductionLegal Nature of the WCT and its Relationship with OtherInternational TreatiesSubstantive Provisions of the WCTAdministrative ProvisionsThe Patent Cooperation Treaty (PCT)IntroductionThe Functioning of the PCT SystemAdvantages of the PCT SystemBudapest Treaty on the International Recognition of the Deposit ofMicroorganisms for the Purposes of Patent ProcedureBackground to the TreatySummary of the TreatyMain Advantages of the TreatyThe Madrid Agreement Concerning the International Registration ofMarks and the Protocol Relating to the Madrid AgreementIntroductionThe Functioning of the System of International RegistrationBecoming Party to the Agreement or ProtocolAdvantages of the SystemThe Hague Agreement Concerning the International Deposit ofIndustrial DesignsIntroductionThe Principle of International DepositMain Provisions of the Hague AgreementBenefits of Accession to the Hague AgreementThe Geneva Act of the Hague AgreementThe Trademark Law Treaty (TLT)

IntroductionProvisions of the Treaty and the RegulationsThe Patent Law Treaty (PLT)IntroductionProvisions of the Treaty and the RegulationsAdvantages of the PLTTreaties on ClassificationIntroductionThe Strasbourg Agreement Concerning the International PatentClassificationThe Nice Agreement Concerning the International Classification ofGoods and Services for the Purposes of the Registration of MarksThe Vienna Agreement Establishing an International Classificationof the Figurative Elements of MarksThe Locarno Agreement Establishing an International Classificationfor Industrial DesignsSpecial Conventions in the Field of Related Rights: The InternationalConvention for the Protection of Performers, Producers of Phonogramsand BroadcastingOrganizations (“the Rome Convention”)IntroductionRelation between the Protection of Related Rights and CopyrightPrincipal ProvisionsThe Implementation of the Rome ConventionThe Rome Convention and Developing CountriesOther Special Conventions in the Field of Related RightsThe Other Special ConventionsReasons for and Purposes of the Special ConventionsMain Features of the Special ConventionsSubstantive Provisions of the Phonograms ConventionSubstantive Provisions of the Satellites ConventionThe Phonograms and Satellites Conventions and DevelopingCountriesThe WIPO Performances and Phonograms Treaty (WPPT)IntroductionLegal Nature of the WPPT and its Relationship with OtherInternational TreatiesSubstantive Provisions of the WPPTAdministrative ProvisionsAudiovisual PerformancesThe International Convention for the Protection of New Varieties ofPlantsIntroductionThe International Union for the Protection of New Varieties ofPlants (UPOV)The 1991 Act of the UPOV ConventionDevelopments in Plant Variety ProtectionThe Agreement on Trade-Related Aspects of Intellectual PropertyRights (“TRIPS”) and WIPO-WTO Cooperation IntroductionGeneral Provisions, Basic Principles and Final Provisions (Parts I

and VII)Standards Concerning the Availability, Scope and Use of IntellectualProperty Rights (Part II)Enforcement of Intellectual Property Rights (Part III)Acquisition and Maintenance of Intellectual Property Rights andRelated Procedures (Part IV)Dispute Prevention and Settlement (Part V)Cooperation between the World Intellectual Property Organizationand the World Trade OrganizationProgressive Development of International Intellectual Property LawIntroductionThe Joint Recommendation Concerning Provisions for theProtection of Well-Known MarksThe Joint Recommendation Concerning Trademark LicensesThe Joint Recommendation Concerning the Protection of Marks, andOther Industrial Property Rights in Signs, on the Internet240 WIPO Intellectual Property Handbook: Policy, Law and UseChapter 5 - International Treaties and Conventions on Intellectual Property 241The Paris Convention for the Protection of Industrial PropertyHistory5.1 During the last century, before the existence of any international convention in thefield ofindustrial property, it was difficult to obtain protection for industrial property rights inthe variouscountries of the world because of the diversity of their laws. Moreover, patentapplications had tobe made roughly at the same time in all countries in order to avoid a publication in onecountrydestroying the novelty of the invention in the other ppcountries. These practicalproblems created astrong desire to overcome such difficulties.5.2 During the second half of the last century the development of a more internationallyoriented flow of technology and the increase of international trade made harmonizationofindustrial property laws urgent in both the patent and the trademark field.5.3 When the Government of the Empire of Austria-Hungary invited the other countriestoparticipate in an international exhibition of inventions held in 1873 at Vienna,participation washampered by the fact that many foreign visitors were not willing to exhibit theirinventions at thatexhibition in view of the inadequate legal protection offered to exhibited inventions.5.4 This led to two developments: firstly, a special Austrian law secured temporaryprotectionto all foreigners participating in the exhibition for their inventions, trademarks andindustrialdesigns. Secondly, the Congress of Vienna for Patent Reform was convened during thesame year,1873. It elaborated a number of principles on which an effective and useful patentsystem shouldbe based, and urged governments “to bring about an international understanding uponpatent

protection as soon as possible.”5.5 As a follow-up to the Vienna Congress, an International Congress on IndustrialProperty wasconvened at Paris in 1878. Its main result was a decision that one of the governmentsshould beasked to convene an international diplomatic conference “with the task of determiningthe basis ofuniform legislation” in the field of industrial property.5.6 Following that Congress, a final draft proposing an international “union” for theprotectionof industrial property was prepared in France and was sent by the French Government toa numberof other countries, together with an invitation to attend the 1880 InternationalConference in Paris.That Conference adopted a draft convention which contained in essence the substantiveprovisionsthat today are still the main features of the Paris Convention.5.7 A Diplomatic Conference was convened in Paris in 1883, which ended with finalapprovaland signature of the Paris Convention for the Protection of Industrial Property. The ParisConvention was signed by 11 States: Belgium, Brazil, El Salvador, France, Guatemala,Italy, theNetherlands, Portugal, Serbia, Spain and Switzerland. When it came into effect on July 7,1884,Great Britain, Tunisia and Ecuador had adhered as well, bringing the initial number ofmembercountries to 14. El Salvador, Guatemala and Ecuador later denounced the ParisConvention to joinagain in the 1990s. It was only during the first quarter of the 20th century and thenparticularlyafter World War II that the Paris Convention increased its membership more significantly.5.8 The Paris Convention has been revised from time to time after its signature in 1883.Each ofthe revision conferences, starting with the Brussels Conference in 1900, ended with theadoption of242 WIPO Intellectual Property Handbook: Policy, Law and Usea revised Act of the Paris Convention. With the exception of the Acts concluded at therevisionconferences of Brussels (1897 and 1900) and Washington, D.C. (1911), which are nolonger inforce, all those earlier Acts are still of significance, although the great majority of thecountries arenow party to the latest Act, that of Stockholm of 1967.Principal Provisions5.9 The provisions of the Paris Convention may be sub-divided into four maincategories:- a first category contains rules of substantive law which guarantee a basic right knownas theright to national treatment in each of the member countries;- a second category establishes another basic right known as the right of priority;- a third category defines a certain number of common rules in the field of substantivelaw

which contain either rules establishing rights and obligations of natural persons andlegalentities, or rules requiring or permitting the member countries to enact legislationfollowingthose rules;- a fourth category deals with the administrative framework which has been set up toimplement the Convention, and includes the final clauses of the Convention.National Treatment5.10 National treatment means that, as regards the protection of industrial property,eachcountry party to the Paris Convention must grant the same protection to nationals of theothermember countries as it grants to its own nationals. The relevant provisions arecontained inArticles 2 and 3 of the Convention.5.11 The same national treatment must be granted to nationals of countries which arenot partyto the Paris Convention if they are domiciled in a member country or if they have a “realandeffective” industrial or commercial establishment in such a country. However, norequirement as todomicile or establishment in the country where protection is claimed may be imposeduponnationals of member countries as a condition for benefiting from an industrial propertyright.5.12 This national treatment rule guarantees not only that foreigners will be protected,but alsothat they will not be discriminated against in any way. Without this, it would frequentlybe verydifficult and sometimes even impossible to obtain adequate protection in foreigncountries forinventions, trademarks and other subjects of industrial property.5.13 The national treatment rule applies first of all to the “nationals” of the membercountries.The term “national” includes both natural persons and legal entities. With respect tolegal entities,the status of being a national of a particular country may be difficult to determine.Generally, nonationality as such is granted to legal entities by the various national laws. There is ofcourse nodoubt that State-owned enterprises of a member country or other entities created underthe publiclaw of such country are to be considered as nationals of the member country concerned.Legalentities created under the private law of a member country will usually be considered anational ofthat country. If they have their actual headquarters in another member country, theymay also beconsidered a national of the headquarters country. According to Article 2(1), the nationaltreatment rule applies to all advantages that the various national laws grant tonationals.Chapter 5 - International Treaties and Conventions on Intellectual Property 243

5.14 This means furthermore, that any requirement of reciprocity of protection isexcluded.Supposing that a given member country has a longer term of patent protection thananothermember country: the former country will not have the right to provide that nationals ofthe lattercountry will enjoy a term of protection of the same length as the term of protection is inthe law oftheir own country. This principle applies not only to codified law but also to the practiceof thecourts (jurisprudence), and to the practice of the Patent Office or other administrativegovernmentalinstitutions as it is applied to the nationals of the country.5.15 The application of the national law to the national of another member country doesnot,however, prevent him from invoking more beneficial rights specially provided in theParisConvention. These rights are expressly reserved. The national treatment principle mustbe appliedwithout prejudice to such rights.5.16 Article 2(3) states an exception to the national treatment rule. The national lawrelating tojudicial and administrative procedure, to jurisdiction and to requirements ofrepresentation isexpressly “reserved.” This means that certain requirements of a mere procedural naturewhichimpose special conditions on foreigners for purposes of judicial and administrativeprocedure, mayalso validly be invoked against foreigners who are nationals of member countries. Anexample is arequirement for foreigners to deposit a certain sum as security or bail for the costs oflitigation.Another example is expressly stated: the requirement that foreigners should eitherdesignate anaddress for service or appoint an agent in the country in which protection is requested.This latter isperhaps the most common special requirement imposed on foreigners.5.17 Article 3 provides for the application of the national treatment rule also to nationalsofnon-member countries, if they are domiciled or have an industrial or commercialestablishment in amember country.5.18 The term “domiciled” is generally interpreted not only in the strict legal sense ofthe term.A mere residence, more or less permanent as distinct from a legal domicile, is sufficient.Legalentities are domiciled at the place of their actual headquarters.5.19 If there is no domicile, there may still be an industrial or commercial establishmentwhichgives a person the right to national treatment. The notion of the industrial orcommercial

establishment in a member country of a national of a non-member country is furtherqualified bythe text of the Convention itself. It requires that there must be actual industrial orcommercialactivity. A mere letter box or the renting of a small office with no real activity is notsufficient.The Right of Priority5.20 The right of priority means that, on the basis of a regular application for anindustrialproperty right filed by a given applicant in one of the member countries, the sameapplicant (or itsor his successor in title) may, within a specified period of time (six or 12 months), applyforprotection in all the other member countries. These later applications will then beregarded as ifthey had been filed on the same day as the earliest application. Hence, these laterapplicationsenjoy a priority status with respect to all applications relating to the same invention filedafter thedate of the first application. They also enjoy a priority status with respect to all actsaccomplishedafter that date which would normally be apt to destroy the rights of the applicant or thepatentability of his invention. The provisions concerning the right of priority arecontained inArticle 4 of the Convention.5.21 The right of priority offers great practical advantages to the applicant desiringprotection inseveral countries. The applicant is not required to present all applications at home andin foreign244 WIPO Intellectual Property Handbook: Policy, Law and Usecountries at the same time, since he has six or 12 months at his disposal to decide inwhichcountries to request protection. The applicant can use that period to organize the stepsto be takento secure protection in the various countries of interest in the particular case.5.22 The beneficiary of the right of priority is any person entitled to benefit from thenationaltreatment rule who has duly filed an application for a patent for invention or anotherindustrialproperty right in one of the member countries.5.23 The right of priority can be based only on the first application for the sameindustrialproperty right which must have been filed in a member country. It is therefore notpossible tofollow a first application by a second, possibly improved application and then to use thatsecondapplication as a basis of priority. The reason for this rule is obvious: one cannot permitan endlesschain of successive claims of priority for the same subject, as this could, in fact,considerablyprolong the term of protection for that subject.

5.24 Article 4A(l) of the Paris Convention recognizes expressly that the right of prioritymay alsobe invoked by the successor in title of the first applicant. The right of priority may betransferred toa successor in title without transferring at the same time the first application itself. Thisallows inparticular also the transfer of the right of priority to different persons for differentcountries, apractice which is quite common.5.25 The later application must concern the same subject as the first application thepriority ofwhich is claimed. In other words, the same invention, utility model, trademark orindustrial designmust be the subject of both applications. It is, however, possible to use a firstapplication for apatent for invention as priority basis for a registration of a utility model and vice versa.The samechange of form of protection in both directions may also be possible, in accordance withnationallaws, between utility models and industrial designs.5.26 The first application must be “duly filed” in order to give rise to the right of priority.Anyfiling, which is equivalent to a regular national filing, is a valid basis for the right ofpriority. Aregular national filing means any filing that is adequate to establish the date on whichtheapplication was filed in the country concerned. The notion of “national” filing is qualifiedbyincluding also applications filed under bilateral or multilateral treaties concludedbetween membercountries.5.27 Withdrawal, abandonment or rejection of the first application does not destroy itscapacityto serve as a priority basis. The right of priority subsists even where the first applicationgeneratingthat right is no longer existent.5.28 The effect of the right of priority is regulated in Article 4B. One can summarize thiseffectby saying that, as a consequence of the priority claim, the later application must betreated as if ithad been filed already at the time of the filing, in another member country, of the firstapplicationthe priority of which is claimed. By virtue of the right of priority, all the actsaccomplished duringthe time between the filing dates of the first and the later applications, the so-calledpriority period,cannot destroy the rights which are the subject of the later application.5.29 In terms of concrete examples, this means that a patent application for the sameinventionfiled by a third party during the priority period will not give a prior right, although it wasfiled before

the later application. Likewise, a publication or public use of the invention, which is thesubject ofthe later application, during the priority period would not destroy the novelty orinventive characterof that invention. It is insignificant for that purpose whether that publication is made bytheapplicant or the inventor himself or by a third party.Chapter 5 - International Treaties and Conventions on Intellectual Property 2455.30 The length of the priority period is different according to the various kinds ofindustrialproperty rights. For patents for invention and utility models the priority period is 12months, forindustrial designs and trademarks it is six months. In determining the length of thepriority period,the Paris Convention had to take into account the conflicting interests of the applicantand of thirdparties. The priority periods now prescribed by the Paris Convention seem to strike anadequatebalance between them.5.31 The right of priority as recognized by the Convention permits the claiming of“multiplepriorities” and of “partial priorities.” Therefore, the later application may not only claimthe priorityof one earlier application, but it may also combine the priority of several earlierapplications, each ofwhich pertaining to different features of the subject matter of the later application.Furthermore, inthe later application, elements for which priority is claimed may be combined withelements forwhich no priority is claimed. In all these cases, the later application must of coursecomply with therequirement of unity of invention.5.32 These possibilities correspond to a practical need. Frequently after a first filingfurtherimprovements and additions to the invention are the subject of further applications inthe countryof origin. In such cases, it is very practical to be able to combine these various earlierapplicationsinto one later application, when filing before the end of the priority year in anothermembercountry. This combination is even possible if the multiple priorities come from differentmembercountries.Provisions Concerning PatentsIndependence of Patents5.33 Patents for invention granted in member countries to nationals or residents ofmembercountries must be treated as independent of patents for invention obtained for thesame inventionin other countries, including non-member countries. The rule concerning the“independence” ofpatents for invention is contained in Article 4bis.

5.34 This principle is to be understood in its broadest sense. It means that the grant of apatentfor invention in one country for a given invention does not oblige any other membercountry togrant a patent for invention for the same invention. Furthermore, the principle meansthat a patentfor invention cannot be refused, invalidated or otherwise terminated in any membercountry on theground that a patent for invention for the same invention has been refused orinvalidated, or that itis no longer maintained or has terminated, in any other country. In this respect, the fateof aparticular patent for invention in any given country has no influence whatsoever on thefate of apatent for the same invention in any of the other countries.5.35 The underlying reason and main argument in favor of this principle is that nationallaws andadministrative practices are usually quite different from country to country. A decisionnot to grantor to invalidate a patent for invention in a particular country on the basis of its law willfrequentlynot have any bearing on the different legal situation in the other countries. It would notbe justifiedto make the owner lose the patent for invention in other countries, on the ground thathe or shelost a patent in a given country as a consequence of not having paid an annual fee inthat country,or as a consequence of the patent’s invalidation in that country, on a ground which doesnot existin the laws of the other countries.5.36 A special feature of the principle of independence of patents for invention iscontained inArticle 4bis(5). This provision requires that a patent granted on an application whichclaimed thepriority of one or more foreign applications, must be given the same duration which itwould have246 WIPO Intellectual Property Handbook: Policy, Law and Useaccording to the national law if no priority had been claimed. In other words, it is notpermitted todeduct the priority period from the term of a patent invoking the priority of a firstapplication. Forinstance, a provision in a national law starting the term of the patent for invention fromthe(foreign) priority date, and not from the filing date of the application in the country,would be inviolation of this rule.The Right of the Inventor to be Mentioned5.37 A general rule states that the inventor must have the right to be mentioned assuch in thepatent for invention. This is stated in Article 4ter.5.38 National laws have implemented this provision in several ways. Some give theinventor only

the right for civil action against the applicant or owner in order to obtain the inclusion ofhis namein the patent for invention. Others — and that tendency seems to be increasing —enforce thenaming of the inventor during the procedure for the grant of a patent for invention onan ex officiobasis. In the United States of America, for example, it is even required that the applicantfor apatent be the inventor himself.Importation, Failure to Work and Compulsory Licenses5.39 The questions of importation of articles covered by patents, of failure to work thepatentedinvention and of compulsory licenses, are dealt with in Article 5A of the Convention.5.40 With respect to importation, the provision states that importation by the patentee,into thecountry where the patent has been granted, of articles covered by the patent andmanufactured inany of the countries of the Union will not entail forfeiture of the patent. This provision isquitenarrowly worded, and hence only applies when several conditions are met.Consequently thecountries of the Union have considerable leeway to legislate with respect to importationofpatented goods under any of the circumstances which are different to those foreseen inthisprovision.5.41 This Article applies to patentees who are entitled to benefit from the ParisConvention andwho, having a patent in one of the countries of the Paris Union, import to this countrygoods(covered by the patent) which were manufactured in another country of the Union. Insuch a case,the patent granted in the country of importation may not be forfeited as a sanction forsuchimportation. In this context, the term “patentee” would also cover the representative ofthepatentee, or any person who effects the importation in the name of such patentee.5.42 With respect to the goods that are imported, it suffices that they be manufacturedin acountry of the Union. The fact that the goods, having been manufactured in a country oftheUnion, are thereafter circulated through other countries and eventually imported from acountrywhich is not a member of the Union, would not prevent this Article from beingapplicable.5.43 Finally, it may be mentioned that the term “forfeiture” in Article 5A(1) includes anymeasurewhich has the effect of definitively terminating the patent. Therefore it would cover theconceptsof invalidation, revocation, annulment, repeal, etc. Whether “forfeiture” may, in the lightof the

purpose of this Article or the spirit of the Paris Convention, be construed as coveringalso othermeasures that would have the effect of preventing importation (fines, suspension ofrights, etc.) isleft for the national legislation and courts to decide.5.44 With respect to the working of patents and compulsory licenses, the essence of theprovisions contained in Article 5A is that each country may take legislative measuresproviding forChapter 5 - International Treaties and Conventions on Intellectual Property 247the grant of compulsory licenses. These compulsory licenses are intended to preventthe abuseswhich might result from the exclusive rights conferred by a patent for invention, forexample failureto work or insufficient working.5.45 Compulsory licenses on the ground of failure to work or insufficient working are themostcommon kind of coercive measure against the patent owner to prevent abuses of therightsconferred by the patent for invention. They are expressly dealt with by Article 5A.5.46 The main argument for enforcing working of the invention in a particular country istheconsideration that, in order to promote the industrialization of the country, patents forinventionshould not be used merely to block the working of the invention in the country or tomonopolizeimportation of the patented article by the patent owner. They should rather be used tointroducethe use of the new technology into the country. Whether the patent owner can really beexpectedto do so, is first of all an economic consideration and then also a question of time.Working in allcountries is generally not economical. Moreover, it is generally recognized thatimmediate workingin all countries is impossible. Article 5A therefore tries to strike a balance between theseconflictinginterests.5.47 Compulsory licenses for failure to work or insufficient working of the invention maynot berequested before a certain period of time has elapsed. This time limit expires either fouryears fromthe date of filing of the patent application or three years from the date of the grant ofthe patentfor invention. The applicable time is the one which, in the individual case, expires last.5.48 The time limit of three or four years is a minimum time limit. The patent ownermust begiven a longer time limit, if he can give legitimate reasons for his inaction — forexample, that legal,economic or technical obstacles prevent working, or working more intensively, theinvention in thecountry. If that is proven, the request for a compulsory license must be rejected, at leastfor a

certain period. The time limit of three or four years is a minimum also in the sense thatnational lawcan provide for a longer time limit.5.49 The compulsory license for non-working or insufficient working must be a non-exclusivelicense and can only be transferred together with the part of the enterprise benefitingfrom thecompulsory license. The patent owner must retain the right to grant other non-exclusivelicensesand to work the invention himself. Moreover, as the compulsory license has beengranted to aparticular enterprise on the basis of its known capacities, it is bound to that enterpriseand cannotbe transferred separately from that enterprise. These limitations are intended toprevent acompulsory licensee from obtaining a stronger position on the market than is warrantedby thepurpose of the compulsory license, namely, to ensure sufficient working of the inventionin thecountry.5.50 All these special provisions for compulsory licenses in Article 5A(4) are onlyapplicable tocompulsory licenses for non-working or insufficient working. They are not applicable tothe othertypes of compulsory licenses for which the national law is free to provide. Such othertypes may begranted to prevent other abuses, for example, excessive prices or unreasonable termsforcontractual licenses or other restrictive measures which hamper industrial development.5.51 Compulsory licenses may also be granted for reasons of the public interest, incases wherethere is no abuse by the patent owner of his rights — for example, in the fields ofmilitary securityor public health.5.52 There are also cases where a compulsory license is provided for to protect thepublic interestin unhampered technological progress. This is the case of the compulsory license infavor of the248 WIPO Intellectual Property Handbook: Policy, Law and Useso-called dependent patents. If a patented invention cannot be worked without using anearlierpatent for invention granted to another person, then the owner of the dependentpatent, in certaincircumstances, may have the right to request a compulsory license for the use of thatinvention. Ifthe owner of the dependent patent for invention obtains the compulsory license, hemay in turn beobliged to grant a license to the owner of the earlier patent for invention.5.53 All these other types of compulsory licenses can be grouped together under thegeneralheading of compulsory licenses in the public interest. National laws are not preventedby the Paris

Convention from providing for such compulsory licenses, and they are not subject to therestrictionsprovided for in Article 5A. This means in particular that compulsory licenses in the publicinterestcan be granted without waiting for the expiration of the time limits provided forcompulsorylicenses that relate to failure to work or insufficient working.5.54 It should be noted, however, that Article 31 of the TRIPS Agreement furtherprovides anumber of conditions with respect to the use of subject matter of a patent without theauthorization of the right-holder.Grace Period for the Payment of Maintenance Fees5.55 Article 5bis provides for a grace period for the payment of maintenance fees forindustrialproperty rights and deals with the restoration of patents for invention in case of non-payment offees.5.56 In most countries the maintenance of certain industrial property rights, mainly therights inpatents for invention and trademarks, is subject to the periodical payment of fees. Forpatents, themaintenance fees must generally be paid annually, and in that case are also calledannuities.Immediate loss of the patent for invention in the event that one annuity is not paid atthe due datewould be too harsh a sanction. Therefore, the Paris Convention provides for a period ofgrace,during which the payment can still be made after the due date to maintain the patent.That periodis six months, and is established as a minimum period, leaving countries free to accepta longerperiod.5.57 The delayed payment of the annuity may be subjected to the payment of asurcharge. Inthat case, both the delayed fee and the surcharge must be paid within the grace period.During thegrace period, the patent for invention remains provisionally in force. If the payment isnot madeduring the grace period, the patent for invention will lapse retroactively, that is, as ofthe originaldue date of the annuity.Patents in International Traffic5.58 Another common rule of substantive importance, containing a limitation of therights of thepatent owner in special circumstances, is contained in Article 5ter. It deals with thetransit ofdevices on ships, aircraft or land vehicles through a member country in which suchdevice ispatented.5.59 Where ships, aircraft or land vehicles of other member countries enter temporarilyor

accidentally a given member country and have on board devices patented in thatcountry, theowner of the means of transportation is not required to obtain prior approval or alicense from thepatent owner. Temporary or accidental entry of the patented device into the country insuch casesconstitutes no infringement of the patent for invention.Chapter 5 - International Treaties and Conventions on Intellectual Property 2495.60 The device on board the ship, aircraft or vehicle must be in the body, in themachinery,tackle, gear or other accessories of the conveyance, and must be used exclusively foroperationalneeds.5.61 The provision covers only the use of patented devices. It does not allow the makingofpatented devices on board a means of transportation, nor the sale to the public ofpatentedproducts or of products obtained under a patented process.Inventions Shown at International Exhibitions5.62 A further common rule of a substantive nature is the provision concerningtemporaryprotection in respect of goods exhibited at international exhibitions, contained in Article11 of theConvention.5.63 The principle stated in Article 11 is that the member countries are obliged to grant,inconformity with their domestic legislation, temporary protection to patentableinventions, utilitymodels, industrial designs and trademarks in respect of goods exhibited at official orofficiallyrecognized international exhibitions held in the territory of any member country.5.64 Temporary protection may be provided by various means. One is to grant a specialright ofpriority, similar to that provided for in Article 4. This priority right would start from thedate of theopening of the exhibition or from the date of the introduction of the object at theexhibition. Itwould be maintained for a certain period from that date, say 12 months, and wouldexpire if theapplication for protection does not follow the exhibition within that period.5.65 Another means which is found in a number of national laws, in particular withrespect topatents for invention, is that of prescribing that, during a certain period of, say, twelvemonthsbefore the filing or priority date of a patent application, a display of the invention at aninternational exhibition will not destroy the novelty of the invention. When choosing thatsolution,it is important to protect the inventor or other owner of the invention during the sameperiod alsoagainst abusive acts of third parties. This means in particular that the person exhibitingthe

invention must be protected against any copying or usurpation of the invention forpurposes of apatent application by a third party. The owner of the invention must also be protectedagainstdisclosure, based on the exhibition, by third parties.5.66 Article 11 applies only to official or officially recognized exhibitions. Theinterpretation ofthat term is left to the member country where protection is sought. An interpretationcorresponding to the spirit of Article 11 is to consider an exhibition “official” if it isorganized by aState or other public authority, to consider it “officially recognized” if it is not official buthas atleast been recognized as official by a State or other public authority, and to consider it“international” if goods from various countries are exhibited.Provisions Concerning TrademarksUse of Trademarks5.67 The Convention touches on the issue of the use of marks in Article 5C(1), (2) and(3).5.68 Article 5C(1) relates to the compulsory use of registered trademarks. Some of thecountrieswhich provide for the registration of trademarks also require that the trademark, onceregistered,be used within a certain period. If this use is not complied with, the trademark may beexpungedfrom the register. For this purpose, “use” is generally understood as meaning the sale ofgoods250 WIPO Intellectual Property Handbook: Policy, Law and Usebearing the trademark, although national legislation may regulate more broadly themanner inwhich use of the trademark is to be complied with. The Article states that wherecompulsory use isrequired, the trademark’s registration may be cancelled for failure to use the trademarkonly after areasonable period has elapsed, and then only if the owner does not justify such failure.5.69 The definition of what is meant by “reasonable period” is left to the nationallegislation ofthe countries concerned, or otherwise to the authorities competent for resolving suchcases. Thisreasonable period is intended to give the owner of the mark enough time andopportunity toarrange for its proper use, considering that in many cases the owner has to use hismark in severalcountries.5.70 The trademark owner’s justification of non-use would be acceptable if it werebased onlegal or economic circumstances beyond the owner’s control, for example if importationof themarked goods had been prohibited or delayed by governmental regulations.5.71 The Convention also establishes in Article 5C(2) that the use of a trademark by itsproprietor, in a form differing in elements which do not alter the distinctive character ofthe mark as

it was when formerly registered in one of the countries of the Union, shall not entailinvalidation ofthe registration nor diminish the protection granted to the mark. The purpose of thisprovision is toallow for unessential differences between the form of the mark as it is registered andthe form inwhich it is used, for example in cases of adaptation or translation of certain elements forsuch use.This rule applies also to differences in the form of the mark as used in the country of itsoriginalregistration.5.72 Whether in a given case the differences between the mark as registered and themark asactually used alter the distinctive character is a matter to be decided by the competentnationalauthorities.Concurrent Use of the Same Trademark by Different Enterprises5.73 Article 5C(3) of the Convention deals with the case where the same mark is usedforidentical or similar goods by two or more establishments considered as co-proprietors ofthetrademark. It is provided that such concurrent use will not impede the registration of thetrademarknor diminish the protection in any country of the Union, except where the said useresults inmisleading the public or is contrary to the public interest. Such cases could occur if theconcurrentuse misleads the public as to the origin or source of the goods sold under the sametrademark, or ifthe quality of such goods differs to the point where it may be contrary to the publicinterest toallow the continuation of such use.5.74 This provision does not, however, cover the case of concurrent use of the mark byenterprises which are not co-proprietors of the mark, for instance when use is madeconcurrently bythe owner and a licensee or a franchisee. These cases are left for the national legislationof thevarious countries to regulate.Grace Period for the Payment of Renewal Fees5.75 Article 5bis requires that a period of grace be allowed for the payment of fees duefor themaintenance of industrial property rights. In the case of trademarks this provisionconcernsprimarily the payment of renewal fees, since it is by renewal that trademarkregistrations (and hencethe rights that depend on such registrations) may be maintained. A failure to renew theregistrationwill normally entail the lapse of the registration, and in some cases the expiration of theright to theChapter 5 - International Treaties and Conventions on Intellectual Property 251mark. The period of grace provided by the Convention is intended to diminish the risksof a mark

being lost by an involuntary delay in the payment of the renewal fees.5.76 The countries of the Paris Union are obliged to accord a period of grace of at leastsixmonths for the payment of the renewal fees, but are free to provide for the payment ofa surchargewhen such renewal fees are paid within the period of grace. Moreover, the countries arefree toprovide for a period of grace longer than the minimum six months prescribed by theConvention.5.77 During the period of grace, the registration remains provisionally in force. If thepayment ofthe renewal fees (and surcharge where appropriate) is not made during the period ofgrace, theregistration will lapse with retroactive effect to the original date of expiration.Independence of Trademarks5.78 Article 6 of the Convention establishes the important principle of the independenceoftrademarks in the different countries of the Union, and in particular the independence oftrademarks filed or registered in the country of origin from those filed or registered inothercountries of the Union.5.79 The first part of Article 6 states the application of the basic principle of nationaltreatmentto the filing and registration of marks in the countries of the Union. Regardless of theorigin of themark whose registration is sought, a country of the Union may apply only its domesticlegislationwhen determining the conditions for the filing and registration of the mark. Theapplication of theprinciple of national treatment asserts the rule of independence of marks, since theirregistrationand maintenance will depend only on each domestic law.5.80 This Article also provides that an application for the registration of a mark, filed inanycountry of the Union by a person who is entitled to the benefits of the Convention, maynot berefused, nor may a registration be canceled, on the ground that filing, registration orrenewal of themark has not been effected in the country of origin. This provision lays down theexpress rule thatobtaining and maintaining a trademark registration in any country of the Union may notbe madedependent on the application, registration or renewal of the same mark in the countryof origin ofthe mark. Therefore no action with respect to the mark in the country of origin may berequired asa prerequisite for obtaining a registration of the mark in that country.5.81 Finally, Article 6 states that a mark duly registered in a country of the Union shallberegarded as independent of marks registered in the other countries of the Union,including the

country of origin. This means that a mark once registered will not be automaticallyaffected by anydecision taken with respect to similar registrations for the same marks in othercountries. In thisrespect, the fact that one or more such similar registrations are, for example,renounced, cancelledor abandoned will not, eo ipso, affect the registrations of the mark in other countries.The validityof these registrations will depend only on the provisions applicable in accordance withthelegislation of each of the countries concerned.Well-Known Trademarks5.82 The Convention deals with well-known trademarks in Article 6bis. This Articleobliges amember country to refuse or cancel the registration and to prohibit the use of atrademark that isliable to create confusion with another trademark already well known in that membercountry. Theeffect of this Article is to extend protection to a trademark that is well-known in amember countryeven though it is not registered or used in that country. The protection of the well-known252 WIPO Intellectual Property Handbook: Policy, Law and Usetrademark results not from its registration, which prevents the registration or use of aconflictingtrademark, but from the mere fact of its reputation.5.83 The protection of well-known trademarks is deemed justified on the grounds that atrademark that has acquired goodwill and a reputation in a member country ought togive rise to aright for its owner. The registration or use of a confusingly similar trademark would, inmost cases,amount to an act of unfair competition and be prejudicial to the interests of the public,who wouldbe misled by the use of a conflicting trademark for the same or identical goods thanthose inconnection with which the well-known trademark is registered.5.84 The trademark that is protected by Article 6bis must be a “well-known” trademark,asdetermined in a member country by its competent administrative or judicial authorities.Atrademark may not have been used in a country, in the sense that goods bearing thattrademarkhave not been sold there; yet that trademark may be well-known in the country becauseof publicitythere or the repercussions in that country of advertising in other countries.5.85 The protection of a well-known trademark under Article 6bis exists only where theconflicting trademark has been filed, registered or used for identical or similar goods, asdeterminedby the administrative or judicial authorities of the country in which protection isclaimed.5.86 The protection of a well-known trademark under Article 6bis results from theobligation of a

member country to take ex officio, where its legislation so permits, or at the request ofaninterested party, the following type of action:- first, refusal of the application for registration of the conflicting trademark;- second, cancellation of the registration of a conflicting trademark, allowing at least aperiodof five years from the date of registration within which a request for cancellation of theconflicting trademark may be made, unless that trademark was registered in bad faith,inwhich event no time limit may be fixed;- third, prohibition of the use of the conflicting trademark, the request for which may bewithin a period of time prescribed by a member country; however, no time limit may befixed for such a request in the case of a conflicting trademark used in bad faith.State Emblems, Official Hallmarks and Emblems of International Organizations5.87 The Convention deals with distinctive signs of States and internationalintergovernmentalorganizations in Article 6ter. This Article obliges a member country, in certaincircumstances, torefuse or invalidate the registration and to prohibit the use, either as trademarks or aselements oftrademarks, of the distinctive signs specified in that Article of member countries andcertaininternational intergovernmental organizations.5.88 The purpose of Article 6ter is not to create an industrial property right in favor ofthe Stateor the intergovernmental organization in respect of the distinctive signs concerned, butsimply toprevent the use of those signs as trademarks in industrial or commercial activities.5.89 The provisions of Article 6ter do not apply if the competent authorities of themembercountry allow the use of its distinctive signs as trademarks. Similarly, the competentauthorities ofan intergovernmental organization may allow others to use its distinctive signs astrademarks.Moreover, in the case of the distinctive signs of a member country, nationals of anymemberChapter 5 - International Treaties and Conventions on Intellectual Property 253country that are authorized to use the distinctive signs of their country may do so evenif thosesigns are similar to those of another member country.5.90 The distinctive signs of States that are referred to in Article 6ter are the following—armorial bearings, flags and other emblems, official signs and hallmarks indicatingcontrol andwarranty and any imitation of those signs from a heraldic point of view.5.91 The objective of the provisions of Article 6ter, insofar as the distinctive signs ofStates areconcerned, is to exclude the registration and use of trademarks that are identical orpresent acertain similarity to the armorial bearings, flags or other emblems of States. Suchregistration would

violate the right of the State to control distinctive signs of its sovereignty and, further,mightmislead the public with respect to the origin of the goods to which such marks would beapplied.5.92 To give effect to the provisions of Article 6ter, a procedure is established pursuantto thatArticle whereby the distinctive signs of the member countries and intergovernmentalorganizationsconcerned are communicated to the International Bureau of WIPO, which in turntransmits thosecommunications to all the member countries.Assignment of Trademarks5.93 Article 6quater of the Convention deals with the assignment of trademarks. Therule ofArticle 6quater arises because of the situation where a trademark is used by anenterprise in variouscountries and it is desired to make a transfer of the right to the trademark in one ormore of thosecountries.5.94 Some national legislations allow an assignment without a simultaneous orcorrespondingtransfer of the enterprise to which the trademark belongs. Others make the validity oftheassignment depend on the simultaneous or corresponding transfer of the enterprise.5.95 Article 6quater states that it shall suffice for the recognition of the validity of theassignmentof a trademark in a member country, that the portion of the business or goodwill locatedin thatcountry be transferred to the assignee, together with the exclusive right to manufacturein the saidcountry, or to sell therein, the goods bearing the trademark assigned. Thus, a membercountry isfree to require, for the validity of the assignment of the trademark, the simultaneoustransfer of theenterprise to which the trademark belongs, but such a requirement must not extend toparts of theenterprise that are located in other countries.5.96 It should be noted that Article 6quater leaves a member country free not to regardas validthe assignment of a trademark with the relevant part of the enterprise, if the use of thattrademarkby the assignee would be of such a nature as to mislead the public, particularly asregards importantfeatures of the goods to which the trademark is applied. This freedom may be exercised,forexample, if a trademark is assigned for part only of the goods to which it is applied, andif thosegoods are similar to other goods for which the trademark is not assigned. In such cases,the publicmay be misled as to the origin or essential qualities of similar goods to which theassignor andassignee will apply the same trademark independently.

Protection of Trademarks Registered in one Country of the Union in other Countries ofthe Union5.97 Parallel to the principle of independence of marks which is embodied in theprovisions ofArticle 6, the Convention establishes a special rule for the benefit of owners oftrademarksregistered in their country of origin. This exceptional rule is governed by Article6quinquies of theConvention.254 WIPO Intellectual Property Handbook: Policy, Law and Use5.98 The provisions of Article 6quinquies come into operation in the case where aregistration inthe country of origin is invoked in the country where protection is sought. Whereas theprinciple ofnational treatment of applications calls for the normal rule of complete independence oftrademarks(as recognized in Article 6), in the exceptional situation regulated by Article 6quinquiesthe oppositerule prevails, providing for extraterritorial effects of the registration in the country oforigin.5.99 There are two main reasons for this special rule. On the one hand, it is in theinterest ofboth owners of trademarks and the public to have the same trademark apply to thesame goods invarious countries. On the other hand, there are some important differences in thedomesticlegislation of the member countries regarding the registration of trademarks. As aconsequence,the differences in domestic legislation could prevent this uniform use of the sametrademark.5.100 In order to diminish the impact of those differences on the registration oftrademarks inrespect of goods in international trade, Article 6quinquies of the Paris Conventionestablishescertain effects where registration in the country of origin has taken place and is invokedin anothermember country where registration and protection is sought. This provision has theeffect ofbringing about a certain uniformity of the law of the various countries as to the conceptoftrademarks.5.101 For Article 6quinquies to apply it is necessary that the trademark concernedshould be dulyregistered in the country of origin. A mere filing or use of the trademark in that countryis notsufficient. Moreover, the country of origin must be a country of the Union in which theapplicanthas a real and effective industrial or commercial establishment or, alternatively, inwhich he has hisdomicile, or otherwise, the country of the Union of which he is a national.5.102 The rule established by Article 6quinquies provides that a trademark which fulfilsthe

required conditions must be accepted for filing and protected — as is (to use theexpression foundin the English version) or telle quelle (to use the expression adopted in the originalFrench text) — inthe other member countries, subject to certain exceptions. This rule is often called the“telle quelle” principle.5.103 It is to be noted that the rule only concerns the form of the trademark. In thisrespect, therule in this Article does not affect the questions relating to the nature or the function ofthetrademarks as conceived in the countries where protection is sought. Thus a membercountry is notobliged to register and extend protection to subject matter that does not fall within themeaning ofa trademark as defined in the law of that country. If, for example, under the law of amembercountry, a three-dimensional object or musical notes indicating tunes is not considereda trademarkin that country, it is not obliged to accept that subject matter for registration andprotection.5.104 Article 6quinquies, Section B, contains certain exceptions to the obligation ofaccepting aregistered trademark “as is” for registration in the other countries of the Union. That listofexceptions is exhaustive so that no other grounds may be invoked to refuse orinvalidate theregistration of the trademark. However, the list does not exclude any ground for refusalofprotection for which there is a need in national legislation.5.105 The first permitted ground for refusal or invalidation of a trademark exists wherethetrademark infringes rights of third parties acquired in the country where protection isclaimed.These rights can be either rights in trademarks already protected in the countryconcerned or otherrights, such as the right to a trade name or a copyright.5.106 The second permitted ground for refusal or invalidation is when the trademark isdevoid ofdistinctive character, or is purely descriptive, or consists of a generic name.Chapter 5 - International Treaties and Conventions on Intellectual Property 2555.107 The third permissible ground for refusal or invalidation exists where thetrademark iscontrary to morality or public order, as considered in the country where protection isclaimed. Thisground includes, as a special category, trademarks which are of such a nature as todeceive thepublic.5.108 A fourth permissible ground for refusal or invalidation exists if the registration ofthetrademark would constitute an act of unfair competition.5.109 A fifth and last permissible ground for refusal or invalidation exists where thetrademark is

used by the owner in a form which is essentially different from that in which it has beenregisteredin the country of origin. Unessential differences may not be used as grounds for refusalorinvalidation.Service Marks5.110 A service mark is a sign used by enterprises offering services, for example,hotels,restaurants, airlines, tourist agencies, car-rental agencies, employment agencies,laundries andcleaners, etc., in order to distinguish their services from those of other enterprises. Thusservicemarks have the same function as trademarks, the only difference being that they applyto servicesinstead of products or goods.5.111 Article 6sexies was introduced into the Paris Convention in 1958 to dealspecifically withservice marks, but the revision Conference did not accept a more ambitious proposal toassimilateservice marks to trademarks entirely. However, a member country is free to apply thesame rules itapplies for trademarks also to service marks in analogous situations or circumstances.5.112 By virtue of Article 6sexies, member countries undertake to protect servicemarks, but arenot required to provide for the registration of such marks. This provision does not obligea membercountry to legislate expressly on the subject of service marks. A member country maycomply withthe provision not only by introducing special legislation for the protection of servicemarks, but alsoby granting such protection by other means, for example, in its laws against unfaircompetition.Registration in the Name of the Agent without the Proprietor’s Authorization5.113 Article 6septies of the Convention deals with the relationship between the ownerof atrademark and his agent or representative regarding registration or use of thetrademark by thelatter. This Article regulates those cases where the agent or representative of the personwho is theowner of a trademark applies for or obtains the registration of a trademark in his ownname, oruses a trademark, without the owner’s authorization.5.114 In such cases, Article 6septies confers upon the owner of the trademark the rightto opposethe registration or to demand cancellation of the registration or, if the national law soallows, todemand an assignment of the registration in his favor. In addition, Article 6septiesconfers uponthe owner of a trademark the right to oppose the unauthorized use of the trademark byhis agentor representative, whether or not application for registration of the trademark has beenmade or its

registration has been granted.Nature of the Goods to which a Trademark is Applied5.115 Article 7 of the Convention stipulates that the nature of the goods to which atrademark isto be applied shall in no case be an obstacle to the registration of the mark.256 WIPO Intellectual Property Handbook: Policy, Law and Use5.116 The purpose of this rule, and also the comparable rule in Article 4quaterregarding patentsfor invention, is to make the protection of industrial property independent of thequestion whethergoods in respect of which such protection would apply may or may not be sold in thecountryconcerned.5.117 It sometimes occurs that a trademark concerns goods which, for example, do notconformto the safety requirements of the law of a particular country. For instance, the food anddrug lawsof a country may prescribe requirements concerning the ingredients of a food product orthe effectsof a pharmaceutical product and allow its sale only after approval of the competentauthorities, onthe basis of an examination of the food product or of clinical trials as to the effect of theuse of thepharmaceutical product on human beings or animals.5.118 In all such cases, it would be unjust to refuse registration of a trademarkconcerning suchgoods. The safety or quality regulations may change and the product may be permittedfor salelater on. In those cases where no such change is contemplated but the approval of thecompetentauthorities of the country concerned is still pending, such approval, if imposed as acondition offiling or registration in that country, may be prejudicial to an applicant who wishes tomake a timelyfiling for protection in another member country.Collective Marks5.119 A collective mark may be defined as a sign which serves to distinguish thegeographicalorigin, material, mode of manufacture, quality or other common characteristics of goodsor servicesof different enterprises that simultaneously use the collective mark under the control ofits owner.The owner may be either an association of which those enterprises are members or anyother entity,including a public body.5.120 Article 7bis of the Convention deals with collective marks. It obliges a membercountry toaccept for filing and to protect, in accordance with the particular conditions set by thatcountry,collective marks belonging to “associations.” These will generally be associations ofproducers,manufacturers, distributors, sellers or other merchants, of goods that are produced or

manufactured in a certain country, region or locality or that have other commoncharacteristics.Collective marks of States or other public bodies are not covered by the provision.5.121 In order that Article 7bis be applicable, the existence of the association to whichthecollective mark belongs must not be contrary to the law of the country of origin. Theassociationdoes not have to prove that it conforms to the legislation of its country of origin, butregistrationand protection of its collective mark may be refused if the existence of the association isfound tobe contrary to that legislation.5.122 Refusal of registration and protection of the collective mark is not possible on thegroundthat the association is not established in the country where protection is sought, or isnotconstituted according to the law of that country. Article 7bis adds a further stipulationthat theassociation may not even be required to possess an industrial or commercialestablishmentanywhere. In other words, an association, without possessing any industrial orcommercialestablishment itself, may be one that simply controls the use of a collective mark byothers.Trademarks Shown at International Exhibitions5.123 The provision concerning marks shown at international exhibitions is contained inArticle 11of the Convention, which also applies to other titles of industrial property.Chapter 5 - International Treaties and Conventions on Intellectual Property 2575.124 The principle stated in Article 11 is that the member countries are obliged togrant, inconformity with their domestic legislation, temporary protection to trademarks inrespect of goodsexhibited at official or officially recognized international exhibitions held in the territoryof anymember country.5.125 The temporary protection may be provided by various means. One is to grant aspecial rightof priority, similar to that provided for in Article 4. Another possibility for protection,which is foundin certain national laws, consists of the recognition of a right of prior use in favor of theexhibitor ofthe goods bearing the trademark as against possible rights acquired by third parties.5.126 In order to apply its national legislation regarding temporary protection, thecompetentauthorities of the country may require proof, both as to the identity of the goodsexhibited and asto the date of their introduction at the exhibition, in whatever form of documentaryevidence theyconsider necessary.Provisions Concerning Industrial Designs, Trade Names, Appellations of Origin andIndications of

Source and Unfair CompetitionIndustrial Designs5.127 The Paris Convention deals with industrial designs in Article 5quinquies. Thisprovisionmerely states the obligation of all member countries to protect industrial designs.Nothing is saidabout the way in which this protection must be provided.5.128 Member countries can therefore comply with this obligation through theenactment ofspecial legislation for the protection of industrial designs. They can, however, alsocomply with thisobligation through the grant of such protection under the law on copyright or the lawagainstunfair competition.5.129 The normal solution, chosen by a great number of countries for compliance withtheobligations under Article 5quinquies is, however, to provide for a special system ofprotection ofindustrial designs by registration or by the grant of patents for industrial designs.5.130 There is a special provision dealing with forfeiture in the case of industrialdesigns. It iscontained in Article 5B, and states that the protection of industrial designs may not inanycircumstances be subject to any measure of forfeiture as a sanction, in cases of failureto work orwhere articles corresponding to those protected are imported. “Forfeiture” in thisprovisionincludes equivalent measures, such as cancellation, invalidation or revocation. Membercountriescould, however, provide other sanctions for those cases, such as compulsory licenses inorder toensure working. “Working” means here the manufacture of products representing orincorporating the industrial design.Trade Names5.131 Trade names are dealt with by the Convention in Article 8. This Article states thattradenames shall be protected in all the countries of the Union without the obligation of filingor ofregistration, whether or not they form part of a trademark.5.132 The definition of a trade name for the purposes of protection, and the manner inwhichsuch protection is to be afforded, are both matters left to the national legislation of thecountriesconcerned. Therefore, protection may result from special legislation on trade names orfrom moregeneral legislation on unfair competition or the rights of personality.258 WIPO Intellectual Property Handbook: Policy, Law and Use5.133 In no case can protection be made conditional upon filing or registration of thetrade name.However, if in a member country protection of trade names were dependent on the useof the

name and to the extent that another trade name may cause confusion or prejudice withrespect tothe first trade name, such a requirement and criterion could be applied by that membercountry.Appellations of Origin and Indications of Source5.134 Appellations of origin and indications of source are included among the variousobjects ofprotection of industrial property under the Paris Convention (Article 1(2)).5.135 Both these objects can be referred to under the broader concept of geographicalindications, although traditionally, and for the purposes of certain special treaties (e.g.,the MadridAgreement for the Repression of False or Deceptive Indications of Source on Goods andthe LisbonAgreement for the Protection of Appellations of Origin and their InternationalRegistration), bothconcepts have been distinguished.5.136 Indications of source include any name, designation, sign or other indicationwhich refers toa given country or to a place located therein, which has the effect of conveying thenotion that thegoods bearing the indication originate in that country or place. Examples of indicationsof sourceare the names of countries (e.g., Germany, Japan, etc.) or of cities (e.g., Hong Kong,Paris, etc.)when used on or in connection with goods in order to indicate their place ofmanufacture or theirprovenance.5.137 Appellations of origin have a more limited meaning, and may be considered aspecial typeof indication of source. An appellation of origin is the geographical name of a country,region orlocality which serves to designate a product originating therein, the quality andcharacteristics ofwhich are due exclusively or essentially to the geographical environment, includingnatural andhuman factors.5.138 The Paris Convention contains in Articles 10 and 10bis provisions on theprotection ofindications of source. These provisions cover in general any direct or indirect use of afalseindication of the source (including, where applicable, the appellation of origin) of thegoods or theidentity of the producer, manufacturer or merchant, as well as any act of unfaircompetition by theuse of indications or allegations which are liable to mislead the public as to the natureor thecharacteristics of the goods for which they are applied.5.139 The Convention requires the countries to seize the goods bearing false indicationsor toprohibit their importation, or otherwise to apply any other measures that may beavailable in orderto prevent or stop the use of such indications. However, the obligation to seize goods on

importation only applies to the extent that such a sanction is provided for under thenational law.5.140 The Convention provides that action may be taken not only by the publicprosecutor butalso by any interested party. In this connection, Article 10(2) states that any producer,manufacturer or merchant, whether a natural person or a legal entity, engaged in theproduction,manufacture or trade in such goods established in the locality, region or country falselyindicated asthe source or in the country where such false indications are used, is in any casedeemed to be aninterested party. Moreover, Article 10ter, requires the countries to enable federationsandassociations representing interested industrialists, producers and merchants to takeaction beforethe competent authorities with a view to the repression of the acts referred to above.Chapter 5 - International Treaties and Conventions on Intellectual Property 259Unfair Competition5.141 The Convention provides in Article 10bis that the countries of the Union are boundtoassure to persons entitled to benefit from the Convention effective protection againstunfaircompetition. The Convention does not specify the manner in which such protectionshould begranted, leaving this to the laws existing in each of the member countries.5.142 Article 10bis defines acts of unfair competition as those acts of competition whicharecontrary to honest practices in industrial or commercial matters. Further, the Articlegives sometypical examples of acts of unfair competition which should be prohibited in particular.5.143 The first example refers to all acts of such a nature as to create confusion by anymeanswhatever with the establishment, the goods or the industrial or commercial activities ofacompetitor. These acts cover not only the use of identical or similar marks or names,which couldbe attacked as an infringement of proprietary rights, but also the use of other meanswhich cancreate confusion. Such could be the form of packages, the presentation or style used onproductsand on their corresponding outlets or points of distribution, titles of publicity, etc.5.144 The second example relates to false allegations in the course of trade of such anature as todiscredit the establishment, the goods, or the industrial or commercial activities of acompetitor. Ithas been left to the domestic legislation or case law of each country to decide whether,and in whatcircumstances, discrediting allegations which are not strictly untrue may also beconsidered acts ofunfair competition.5.145 The third example of acts of unfair competition concerns indications andallegations which

are liable to mislead the public as to the nature, the manufacturing process, thecharacteristics, thesuitability for their purpose or the quality of their goods. This provision may bedistinguished fromthe previous cases to the extent that it is concerned with the interests and well-being ofthe publicand is one of the provisions in the Convention that is more directly related to theconsumerprotection role of industrial property.Administrative and Financial ProvisionsOrgans of the Paris Union5.146 The countries party to the Paris Convention constitute a “Union” for the ProtectionofIndustrial Property. In creating a Union, the Paris Convention goes beyond a mere treatyestablishing rights and obligations. It also establishes a legal entity in international lawwith thenecessary organs to carry out certain tasks. The Union forms a single administrativeentity, and anadministrative link between the various Acts of the Paris Convention.5.147 Under this concept of the Union, a state which becomes a member of the Unionbyacceding to the most recent (the Stockholm) Act of the Paris Convention becomesbound withrespect to all member countries, even those not yet party to it. Article 27(3) of theConvention saysthat such a country must apply the Stockholm Act also to member countries of theUnion not yetparty to it, and must recognize that member countries not yet bound by the substantiveprovisionsof the Stockholm Act may apply, in their relations with it, that earlier Act which is themost recentof the Acts to which they are party.260 WIPO Intellectual Property Handbook: Policy, Law and Use5.148 The Union has three administrative organs, the Assembly, the ExecutiveCommittee and theInternational Bureau of WIPO, headed by the Director General of the World IntellectualPropertyOrganization (WIPO).5.149 The Assembly is dealt with in Article 13. It consists of all member countries boundat leastby the administrative provisions of the Stockholm Act. The Assembly is the chiefgoverning body ofthe Union in which all policymaking and controlling powers are vested. It deals with allmattersconcerning the maintenance and development of the Union and the implementation ofthe ParisConvention. In particular, it gives directions for the preparation of conferences ofrevision of theConvention; it reviews and approves the reports and activities of the Director General ofWIPOconcerning the Union, and gives him instructions concerning matters within thecompetence of the

Union; it determines the program, adopts the biennial budget of the Union and approvesits finalaccounts. The Assembly meets once in every second calendar year in ordinary session,togetherwith the General Assembly of WIPO.5.150 The Assembly has an Executive Committee, which is dealt with in Article 14. Itconsists ofone-fourth of the countries members of the Assembly, and is elected by the Assemblyfor the periodbetween two ordinary sessions with due regard to an equitable geographicaldistribution. TheExecutive Committee meets once a year in ordinary session, together with theCoordinationCommittee of WIPO.5.151 The Executive Committee is the smaller governing body of the Union. It deals withall thefunctions which have to be carried out during the period between the ordinary sessionsof theAssembly and for which the Assembly is too big a body. It prepares the meetings of theAssemblyand takes all necessary measures to ensure the execution of the program. However,certainadministrative changes are now under consideration (see under Constitutional Reform,Chapter 1).5.152 The provisions concerning the International Bureau are contained in Article 15.TheInternational Bureau of WIPO is the administrative organ of the Union. It performs alladministrativetasks concerning the Union. It provides the secretariat of the various organs of theUnion. Its head,the Director General of WIPO, is the chief executive of the Union.Finances5.153 The financial provisions are contained in Article 16. The Union has its own budgetwhich ismainly financed by mandatory contributions from member countries. The contributionsarecalculated in applying a class and unit system to the total sum of contributions neededfor a givenbudgetary year. The highest class I corresponds to a share of 25 units, the lowest classVII to ashare of one unit. Each member country determines freely the class to which it wishesto belong,but it may also change class afterwards.Amendments and Revision5.154 Article 18 contains the principle of periodical revision of the Paris Convention. TheConvention must be submitted to revision with a view to the introduction ofamendments designedto improve the system of the Union. These revisions are dealt with by diplomaticconferences ofrevision in which delegations appointed by the governments of the member countriesparticipate.

According to Article 18(2), such conferences must be held successively in one of themembercountries.5.155 The preparations for the conferences of revision of the Paris Convention arecarried out bythe International Bureau of WIPO in accordance with the directions of the Assembly andinChapter 5 - International Treaties and Conventions on Intellectual Property 261cooperation with the Executive Committee. In doing so, the International Bureau ofWIPO may alsoconsult with other intergovernmental and with international non-governmentalorganizations.Special Agreements5.156 An important provision among the administrative clauses of the Paris ConventionisArticle 19, dealing with special agreements.5.157 According to that provision, the member countries have the right to makeseparately amongthemselves special agreements for the protection of industrial property. Theseagreements must,however, comply with the condition that they do not contravene the provisions of theParisConvention.5.158 Such special agreements may take the form of bilateral agreements ormultilateral treaties.Special agreements in the form of multilateral treaties may be agreements preparedandadministered by the International Bureau of WIPO, or agreements prepared andadministered byother intergovernmental organizations.Becoming Party to the Convention5.159 Accession to the Paris Convention is effected by the deposit of an instrument ofaccessionwith the Director General of WIPO, as provided in Article 21. The Convention enters intoforce,with respect to a country so adhering, three months after the accession has beennotified by theDirector General of WIPO to all Governments of the member countries. Accessiontherefore needsonly unilateral action by the interested country and does not require any decision by thecompetentbodies of the Union.5.160 Accession to the Convention automatically entails acceptance of all the clauses intheConvention, as well as admission to all the advantages thereof, as is indicated in Article22.5.161 Provisions concerning denunciation are contained in Article 26 of the Convention.Anymember country may denounce the Convention by addressing a notification to theDirector Generalof WIPO. In that case, the denunciation takes effect one year after the day on which theDirector

General receives the notification to that effect. It is provided, however, that the right ofdenunciation may not be exercised by any country before the expiration of five yearsfrom the dateon which it became a member of the Union.Disputes5.162 The matter of disputes is dealt with in Article 28 of the Convention. Any disputebetweentwo or more countries of the Union concerning the interpretation or application of theConvention,which has not been settled by negotiation, may be brought, by any of the countriesconcerned,before the International Court of Justice. However, the countries concerned may agreeon anyother method for settling their dispute, for example, by international arbitration. In anycase, itshould be noted that the International Bureau of WIPO may not take a position incontroversiesconcerning the interpretation or application of the Paris Convention among membercountries.5.163 Any country acceding to the Convention may declare upon accession that it doesnotconsider itself bound by the preceding provisions, concerning the solving of disputesbefore theInternational Court of Justice.262 WIPO Intellectual Property Handbook: Policy, Law and Use5.164 The States party to the Paris Convention for the Protection of Industrial Propertyare listed inthe appropriate document to be found inserted in the back flap of this volume.The Berne Convention for the Protection of Literary and Artistic WorksHistory5.165 Copyright protection on the international level began by about the middle of thenineteenthcentury on the basis of bilateral treaties. A number of such treaties providing for mutualrecognition of rights were concluded but they were neither comprehensive enough norof auniform pattern.5.166 The need for a uniform system led to the formulation and adoption on September9, 1886,of the Berne Convention for the Protection of Literary and Artistic Works. The BerneConvention isthe oldest international treaty in the field of copyright. It is open to all States.Instruments ofaccession or ratification are deposited with the Director General of the World IntellectualPropertyOrganization (WIPO).5.167 The Berne Convention has been revised several times in order to improve theinternationalsystem of protection which the Convention provides. Changes have been effected inorder to copewith the challenges of accelerating development of technologies in the field ofutilization of

authors’ works, in order to recognize new rights as also to allow for appropriaterevisions ofestablished ones. The first major revision took place in Berlin in 1908, and this wasfollowed by therevisions in Rome in 1928, in Brussels in 1948, in Stockholm in 1967 and in Paris in1971.5.168 The purpose of the Stockholm revision was to provide for rapid technologicaldevelopmentsas well as the needs of newly independent developing countries, and to introduceadministrativeand structural changes. As for the preferential provisions for developing countriesworked out inStockholm, these were further taken up at the Paris Revision Conference in 1971, wherenewcompromises were worked out.5.169 The aim of the Berne Convention, as indicated in its preamble, is “to protect, in aseffectiveand uniform a manner as possible, the rights of authors in their literary and artisticworks.”Article 1 lays down that the countries to which the Convention applies constitute aUnion for theprotection of the rights of authors in their literary and artistic works.Principal ProvisionsBasic Principles5.170 The Convention rests on three basic principles. Firstly, there is the principle of“nationaltreatment”, according to which works originating in one of the member States are to begiven thesame protection in each of the member States as these grant to works of their ownnationals.Secondly, there is automatic protection, according to which such national treatment isnotdependent on any formality; in other words protection is granted automatically and isnot subjectto the formality of registration, deposit or the like. Thirdly, there is independence ofprotection,Chapter 5 - International Treaties and Conventions on Intellectual Property 263according to which enjoyment and exercise of the rights granted is independent of theexistence ofprotection in the country of origin of the work.Works Protected5.171 Article 2 contains a non-limitative (illustrative and not exhaustive) list of suchworks, whichinclude any original production in the literary, scientific and artistic domain, whatevermay be themode or form of its expression. Derivative works, that is those based on other pre-existing works,such as translations, adaptations, arrangements of music and other alterations of aliterary or artisticwork, receive the same protection as original works (Article 2(3)). The protection ofsome

categories of works is optional; thus every State party to the Berne Convention maydecide to whatextent it wishes to protect official texts of a legislative, administrative and legal nature(Article 2(4)),works of applied art (Article 2(7)), lectures, addresses and other oral works (Article2bis(2)) andworks of folklore (Article 15(4)). Furthermore, Article 2(2) provides for the possibility ofmaking theprotection of works or any specified categories thereof subject to their being fixed insome materialform. For instance, protection of choreographic works may be dependent on their beingfixed insome form.5.172 One of the important provisions is the one that covers works or expressions ofwhat is called“folklore.” Without mentioning the word, the Convention provides that any membercountry maygive protection to unpublished works where the identity of the author is unknown, butwhere thereis every ground to presume that the author is a national of that country, by designating,throughthe national legislation, the competent authority which should represent the author ofunknownidentity and protect and enforce his rights in the countries party to the Convention. Byprovidingfor the bringing of actions by authorities designated by the State, the Berne Conventionoffers tocountries whose folklore is a part of their heritage, a possibility of protecting it.Owners of Rights5.173 Article 2(6) lays down that protection under the Convention is to operate for thebenefit ofthe author and his successors in title. For some categories of works, however, such ascinematographic works (Article 14bis), ownership of copyright is a matter for legislationin thecountry where protection is claimed.Persons Protected5.174 Authors of works are protected, in respect of both their unpublished or publishedworks if,according to Article 3, they are nationals or residents of a member country;alternatively, if, notbeing nationals or residents of a member country, they first publish their works in amembercountry or simultaneously in a non-member and a member country.Minimum Standards of Protection5.175 Certain minimum standards of protection have been prescribed relating to therights ofauthors and the duration of protection.Rights Protected5.176 The exclusive rights granted to authors under the Convention include the right oftranslation(Article 8), the right of reproduction in any manner or form, which includes any sound orvisual

recording, (Article 9), the right to perform dramatic, dramatico-musical and musicalworks (Article11), the right to broadcast and communicate to the public, by wire, rebroadcasting or264 WIPO Intellectual Property Handbook: Policy, Law and Useloudspeaker or any other analogous instrument, the broadcast of the work (Article11bis), the rightof public recitation (Article 11ter), the right to make adaptations, arrangements or otheralterationsof a work (Article 12) and the right to make cinematographic adaptations andreproductions of awork (Article 14). The so-called “droit de suite” provided for in Article 14ter (concerningoriginalworks of art and original manuscripts) is optional and applicable only if legislation in thecountry towhich the author belongs permits.5.177 Independently of the author’s economic rights, Article 6bis provides for “moralrights” —that is, the right of the author to claim authorship of his work and to object to anydistortion,mutilation or other modification of, or other derogatory action in relation to, the workwhich wouldbe prejudicial to his honor or reputation.Limitations5.178 As a sort of counterbalance to the minimum standards of protection there are alsootherprovisions in the Berne Convention limiting the strict application of the rules regardingexclusiveright. It provides for the possibility of using protected works in particular cases withouthaving toobtain the authorization of the owner of the copyright and without having to pay anyremunerationfor such use. Such exceptions, which are commonly referred to as free use of protectedworks, areincluded in Articles 9(2) (reproduction in certain special cases), 10 (quotations and useof works byway of illustration for teaching purposes), 10bis (reproduction of newspaper or similararticles anduse of works for the purpose of reporting current events) and 11bis(3) (ephemeralrecordings).5.179 There are two cases where the Berne Convention provides the possibility ofcompulsorylicenses — in Articles 11bis(2), for the right to broadcast and communicate to the public,by wire,rebroadcasting or loudspeaker or any other analogous instrument, the broadcast of thework,and 13(1) for the right of recording musical works.5.180 As far as the exclusive right of translation is concerned, the Berne Conventionoffers achoice, in that a developing country may, when acceding to the Convention, make areservationunder the so-called “ten-year rule” (Article 30(2)(b)). This provides for the possibility ofreducing

the term of protection in respect of the exclusive right of translation; this right,according to thesaid rule, ceases to exist if the author has not availed himself of it within 10 years fromthe date offirst publication of the original work, by publishing or causing to be published, in one ofthemember countries, a translation in the language for which protection is claimed.Duration of Protection5.181 The minimum standards of protection provided for in the Berne Convention alsorelate tothe duration of protection. Article 7 lays down a minimum term of protection, which isthe life ofthe author plus 50 years after his death.5.182 There are, however, exceptions to this basic rule for certain categories of works.Forcinematographic works, the term is 50 years after the work has been made available tothe public,or, if not made available, then 50 years after the making of such a work. Forphotographic worksand works of applied art, the minimum term of protection is 25 years from the makingof the work(Article 7(4)).5.183 A majority of countries in the world have legislated for life plus a 50-year term ofprotectionsince it is felt fair and right that the lifetime of the author and the lifetime of his childrenshould becovered; this could also provide the incentive necessary to stimulate creativity, andconstitute a fairbalance between the interests of the authors and the needs of society.Chapter 5 - International Treaties and Conventions on Intellectual Property 2655.184 The term of protection, in so far as moral rights are concerned, extends at leastuntil theexpiry of the economic rights.Application in time5.185 The Protection under the Berne Convention is retrospective, since it applies to allworkswhich, at the moment of its coming into force for a specific country, have not yet falleninto thepublic domain in the country of their origin through the expiry of the term of protection.The Latest (Paris) Act of the Convention5.186 The Berne Convention was developed initially according to the standards andrequirementsof the industrialized countries in Europe. Particularly in the wake of the Second WorldWar, whenthe political map of the world changed considerably, the Berne Convention also had toface newproblems of development. Various newly independent countries had to consider thequestion ofpossible accession to the international system of copyright protection as contained intheConvention. They were free to join or not to join it or, where they were already membersby virtue

of a past colonial or similar status, to withdraw from the Convention.5.187 While it was almost universally recognized that authors and other creators shouldbeafforded the necessary protection for their intellectual creations, there was also aconsciousness thatthe newly independent developing countries had genuine problems in gaining greaterand easieraccess to works protected by copyright, particularly for their technological andeducational needs,from the developed countries. Meanwhile, the advance of technology made moreattractive theextension of the geographical scope of the international conventions and multilateralagreements toan increasingly larger number of countries.5.188 Deliberations at the more recent revision conferences were therefore directed toadaptingthe systems of international protection of literary and artistic works to the needs ofthese newlyindependent countries.5.189 The question of incorporating into the Convention special provisions for thedevelopingcountries was initially mooted at an African Copyright Meeting in Brazzaville in 1963.This matterwas pursued at the Conference called in Stockholm in 1967 for revision of the BerneConvention,where a “protocol regarding developing countries” known as the Stockholm Protocolwas added tothe Convention.5.190 However, it soon became clear that the solution (the Stockholm Protocol)proposed wasunlikely to gain much acceptance among Union countries, particularly those whoseworks werelikely to be made use of under the provisions of the Protocol.5.191 The Revision Conference convened in Paris in 1971 was predominantly concernedwithfinding solutions in order to support the universal effect of the Convention and toestablish anappropriate basis for its operation, particularly in relation to developing countries. Thequestion wasasked whether it was fair and workable to ask the developing countries to take onobligationsunder the Convention that were agreed upon by developed countries, without takingintoconsideration the special circumstances of the former. There was certainly a challengethen posedto international copyright itself and this was, in a manner, sorted out through the give-and-takethat culminated in the special provisions concerning developing countries that wereincorporated inan Appendix, which now forms an integral part of the Convention.266 WIPO Intellectual Property Handbook: Policy, Law and Use

5.192 The Appendix to the Paris (1971) Act of the Berne Convention provides for specialfacultiesopen to developing countries concerning translation and reproduction of works offoreign origin.The Appendix augments the Convention’s existing exceptions to the author’s exclusiverights,including those of reproduction and translation (Articles 2bis, 9(2), 10(2), 10bis) and theten-yearrule (Article 30(2)(b)).5.193 According to this Appendix, countries which are regarded as developing countriesinconformity with the established practice of the General Assembly of the United Nationsmay, undercertain conditions, depart from the minimum standards of protection provided for in theConvention. This exceptional regime concerns two rights, the right of translation and theright ofreproduction. Details of such provisions in favor of developing countries appear below,inparagraphs 5.201 to 5.205.AdministrationAdministrative Provisions5.194 The provisions of the Berne Convention fall into two categories, those ofsubstance coveringthe material law and the administrative and final clauses covering matters ofadministration andstructure. In the latest text of the Convention as revised at Paris in 1971, Articles 1 to 21and theAppendix contain the substantive provisions and Articles 22 to 38 the administrativeand finalclauses.5.195 The Berne Convention is administered by the World Intellectual PropertyOrganization(WIPO). The administrative tasks performed by WIPO include assembling and publishinginformation concerning the protection of copyright. Each member countrycommunicates to WIPOall new copyright laws. WIPO conducts studies and provides services designed tofacilitateprotection of copyright; as the Secretariat, it participates in all meetings of theAssembly, theExecutive Committee, the Standing Committee on Copyright and Related Rights orWorkingGroups. In accordance with the directions of the Assembly and in cooperation with theExecutiveCommittee, it shall also, when required, make preparations for the conferences to revisetheConvention.5.196 The administrative provisions provide for an Assembly in which the Governmentof eachmember State shall be represented by one delegate. The Assembly determines theprogram, adoptsthe budget and controls the finances of the Union. It also elects members of theExecutive

Committee of the Assembly. One fourth of the number of member countries are to beelected tothe Executive Committee. The Executive Committee meets once every year in ordinarysession.However, certain administrative changes are now under consideration (see underConstitutionalReform, Chapter 1).Becoming Party to the Convention5.197 In order to become a party to the Berne Convention, an instrument of accessionhas to bedeposited with the Director General of WIPO (Article 29(1)). Accession to the BerneConventionand membership of the Berne Union becomes effective three months after the date onwhich theDirector General of WIPO has notified the deposit of the above-mentioned instrument ofaccession(Article 29(2)(a)). In accordance with Article I of the Appendix, a developing country hastospecifically declare, at the time of its ratification of or accession to the Paris Act, that itwill availChapter 5 - International Treaties and Conventions on Intellectual Property 267itself of the provisions in the Appendix concerning the compulsory licenses fortranslation and/orreproduction.5.198 In becoming party to the Berne Convention, the State concerned becomes amember of theBerne Union. It would therefore be entitled:- to full membership (right to vote) in the Berne Union Assembly (Article 22(3)(a));- to the right to vote in elections of or to be elected to the Executive Committee of theBerneUnion (Article 23(2)(a));- to automatic membership in the WIPO Coordination Committee during the period of itsmembership in the Executive Committee of the Berne Union (Convention establishingWIPO,Article 8(1)(a)).5.199 To become a member of the Berne Union is in the interest of every country thatwants toestablish healthy conditions for the development of its culture and economy, and it isparticularly inthe interest of every developing country.Developing Countries and the Berne Convention5.200 The predominant concern at the last revision of the Berne Convention remainedthereinforcement of the Convention, while continuing to address the preoccupations ofdevelopingcountries. The latest (1971) Paris Act of the Berne Convention thus recognizes a specialright infavor of developing countries. It provides that in the case of unpublished works, wherethe identityof the author is unknown, but where there is every ground to presume that he is anational of a

country of the Union, the rights in such a work are to be acknowledged in all countriesof theUnion. By this provision the Berne Convention has rendered it possible for thedeveloping countriesto protect their folklore also abroad. It was made a matter for legislation in the countryof origin ofsuch works to designate the competent authority which should represent the unknownauthor andprotect and enforce his rights in the countries of the Union. By providing for the bringingof actionsby authorities designated by the State, the Berne Convention offers to developingcountries, whosefolklore is a part of their heritage, a possibility of protecting it.5.201 In the Appendix which forms an integral part of the Paris Act, special provisionswereincluded concerning developing countries. The Appendix provides for the possibility ofgrantingnon-exclusive and non-transferable compulsory licenses in respect of (i) translation forthe purposeof teaching, scholarship or research, and (ii) reproduction for use in connection withsystematicinstructional activities, of works protected under the Convention. These licenses may begranted,after the expiry of certain time limits and after compliance with certain proceduralsteps, by thecompetent authority of the developing country concerned. They must provide for justcompensation in favor of the owner of the right. In other words the payment to be madeby thecompulsory licensee must be consistent with standards of royalties normally in vogue inrespect oflicenses freely negotiated between persons in the two countries concerned. Provisionhas also to bemade to ensure a correct translation or an accurate reproduction of the work, as thecase may be,and to specify the name of the author on all copies of such translations orreproductions. Copies oftranslations and reproductions made and publication under licenses are not, however,allowed to beexported. Since the license is non-exclusive, the copyright owner is entitled to bring outand placeon the market his own equivalent copies, upon which the power of the licensee tocontinue making268 WIPO Intellectual Property Handbook: Policy, Law and Usecopies under the license would cease. However, in that event, the compulsory licensee’sstock canbe exhausted.5.202 Compulsory licenses for translations can be granted for languages generallyspoken in thedeveloping country concerned. There is a distinction between languages in general usealso in oneor more developed countries (English, French and Spanish, for example) and those notin general

use there (largely local languages of developing countries). In the case of a language ingeneral usein one or more developed countries, a period of three years, starting on the date of thefirstpublication of the work has to elapse before a license can be applied for, whereas forotherlanguages the period has been reduced to one year. To this has to be added a period ofsix to ninemonths, as the case may be, for obtaining licenses according to the formalities providedfor in theConvention. It is also important here to point out that the system of translation licensesincludeslicenses for broadcasting, and this is important when we take into account the partplayed intoday’s context by the radio and television for educational purposes. These licenses,however, arenot for authorizing the broadcasting of a translated work; they relate only to translationsmade forbroadcasting purposes.5.203 In respect of reproduction, the period after which licenses can be obtained variesaccordingto the nature of the work to be reproduced. Generally it is five years from the firstpublication. Forworks connected with the natural and physical sciences and with technology (and thisincludesmathematical works) the period is three years; while for works of fiction, poetry anddrama, theperiod is seven years.5.204 The possibility that the Appendix provides for the grant of a compulsory license, ifauthorization is desired, may favorably influence negotiation and may lead to increasedscope forvoluntary licensing.5.205 In so far as compulsory licenses for translation are concerned, instead of availingitself of thefacility offered by the system mentioned earlier, the Berne Convention offers a choice inthat adeveloping country may, when ratifying or acceding to the Paris Act, make a reservationunder theso-called “ten-year rule” (Article 30(ii) (b)), which provides for the possibility of reducingthe term ofprotection as far as the exclusive right of translation is concerned; this right, accordingto the saidrule, ceases to exist if the author has not availed himself of it within 10 years from thedate of firstpublication of the original work, by publishing or causing to be published, in one of thecountries ofthe Berne Union, a translation in the language for which protection is claimed. TheAppendix to theParis Act of the Berne Convention thus allows a choice between a compulsory licensesystem andthe possibility of limiting the right of translation to 10 years as provided for in thisConvention. Any

developing country may choose between those possibilities but cannot combine them.In otherwords, this “ten-year” system provides that for 10 years from the publication of thework theauthor’s consent has to be sought before the right to translate is obtained; after thisperiod theright of translation is in the public domain.5.206 The States party to the Berne Convention for the Protection of Literary andArtistic Worksare listed in the appropriate document to be found inserted in the back flap of thisvolume.Chapter 5 - International Treaties and Conventions on Intellectual Property 269The WIPO Copyright Treaty (WCT)Introduction5.207 The Berne Convention for the Protection of Literary and Artistic Works, after itsadoption in1886, was revised quite regularly, approximately every 20 years, until revisions whichtook place inStockholm in 1967 and in Paris in 1971. The revision conferences were convened, ingeneral, inorder to find responses to new technological developments, such as sound recordingtechnology,photography, radio, cinematography and television.5.208 In the 1970s and 1980s, a number of important new technological developmentstookplace — reprography, video technology, compact cassette systems facilitating “hometaping,”satellite broadcasting, cable television, the increase of the importance of computerprograms,computer storage of works and electronic databases, etc.5.209 For a while, the international copyright community followed the strategy of“guideddevelopment” by study and discussion, rather than trying to establish new internationalnorms. Therecommendations, guiding principles and model provisions worked out by the variousWIPO bodies(in the beginning, sometimes in cooperation with Unesco) offered guidance togovernments onhow to respond to the challenges of new technologies. Those recommendations, guidingprinciplesand model provisions were based, in general, on interpretation of existing internationalnorms,particularly the Berne Convention (for example, concerning computer programs,databases, “hometaping,” satellite broadcasting and cable television). But they also included some newstandards(for example, concerning distribution and rental of copies). The guidance thus offered inthe“guided development” period had an important impact on national legislation,contributing to thedevelopment of copyright all over the world. At the end of the 1980s, however, it wasrecognized

that guidance would not suffice any longer.5.210 The preparation of new, binding international norms began in two forums —within GATT,in the framework of the Uruguay Round negotiations, and at WIPO, first, in onecommittee ofexperts and later, in two parallel committees of experts.5.211 After the adoption of the TRIPS Agreement under the auspices of GATT, thepreparatorywork of new copyright and related rights norms in the WIPO committees was intensifiedto dealwith problems not addressed by the TRIPS Agreement. To this end, in 1996 the WIPODiplomaticConference on Certain Copyright and Related Rights Questions adopted two treaties, theWIPOCopyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT).Legal Nature of the WCT and its Relationship with Other International Treaties5.212 The first sentence of Article 1(1) of the WCT provides that “This Treaty is a specialagreement within the meaning of Article 20 of the Berne Convention for the Protectionof Literaryand Artistic Works, as regards Contracting Parties that are countries of the Unionestablished bythat Convention.” Article 20 of the Berne Convention contains the following provision:“TheGovernments of the countries of the Union reserve the right to enter into specialagreementsamong themselves, in so far as such agreements grant to authors more extensive rightsthan thosegranted by the Convention, or contain other provisions not contrary to this Convention.”Thus, the270 WIPO Intellectual Property Handbook: Policy, Law and Useabove-quoted provision of Article 1(1) of the WCT makes clear that no interpretation ofthe WCT isacceptable which may result in any lowering of the level of protection granted by theBerneConvention.5.213 Article 1(4) of the Treaty establishes a further guarantee for fullest possiblerespect of theBerne Convention, since it includes, by reference, all substantive provisions of the BerneConvention, providing that “Contracting Parties shall comply with Articles 1 to 21 andtheAppendix of the Berne Convention.” Article 1(3) of the Treaty clarifies that, in thiscontext, theBerne Convention means the 1971 Paris Act of that Convention. These provisions shouldbeconsidered in the light of the provisions of Article 17 of the Treaty, discussed below,under whichnot only countries party to the said 1971 Paris Act, and, in general, not only countriesparty to anyact of the Berne Convention, but also any member countries of WIPO, irrespective ofwhether ornot they are party to the Convention, and also certain intergovernmental organizations,may adhere

to the Treaty.5.214 Article 1(2) of the Treaty contains a safeguard clause similar to the one includedinArticle 2.2 of the TRIPS Agreement: “Nothing in this Treaty shall derogate from existingobligationsthat Contracting Parties have to each other under the Berne Convention for theProtection ofLiterary and Artistic Works.” The scope of this safeguard clause differs from the parallelprovision inthe TRIPS Agreement. The TRIPS safeguard clause also has importance from theviewpoint of atleast one article of the Berne Convention which contains substantive provisions —namelyArticle 6bis on moral rights — since that article is not included by reference in the TRIPSAgreement.Article 1(2) of the WCT only has relevance from the viewpoint of Articles 22 to 38 of theBerneConvention containing administrative provisions and final clauses which are notincluded byreference (either in the WCT or the TRIPS Agreement) and only to the extent that thoseprovisionsprovide obligations for Contracting Parties.5.215 The second sentence of Article 1(1) of the WCT deals with the question of therelationshipof the WCT with treaties other than the Berne Convention. It states that “This Treatyshall not haveany connection with treaties other than the Berne Convention, nor shall it prejudice anyrights andobligations under any other treaties.” The TRIPS Agreement and the Universal CopyrightConvention are examples of such “other treaties.”5.216 It should also be pointed out that there is no specific relationship between theWCT and theWPPT either, and the latter is also an “other” treaty covered by the second sentence ofArticle 1(1)of the WCT. There is also no such relationship between the WCT and the WPPTequivalent to thatbetween the Berne Convention and the Rome Convention. Under Article 24(2) of theRomeConvention, only those countries may adhere to that Convention which are party to theBerneConvention or the Universal Copyright Convention. While, in principle, any membercountry ofWIPO may accede to the WPPT, it is not a condition that they be party to the WCT (orthe BerneConvention or the Universal Copyright Convention). It is another matter that such aseparateadherence is not desirable.Substantive Provisions of the WCTProvisions Relating to the So-called “Digital Agenda”5.217 During the preparatory work, it became clear that the most important and mosturgent task

was to clarify existing norms and, where necessary, create new norms to respond to theproblemsChapter 5 - International Treaties and Conventions on Intellectual Property 271raised by digital technology, and particularly by the Internet. The issues addressed inthis contextwere referred to as the “digital agenda.”5.218 The provisions of the WCT relating to the “agenda” cover the following issues —the rightsapplicable to the storage and transmission of works in digital systems, the limitations onandexceptions to rights in a digital environment, technological measures of protection andrightsmanagement information. As discussed below, the right of distribution may also berelevant inrespect of transmissions in digital networks; its scope, however, is much broader. Alsodue to itsrelationship with the right of rental, the right of distribution is discussed, together withthe formerright, below.Storage of Works in Digital Form in an Electronic Medium5.219 In June 1982, a WIPO/Unesco Committee of Governmental Experts clarified thatstorage ofworks in an electronic medium is reproduction. The Diplomatic Conference adopted anagreedstatement which reads as follows: “The reproduction right, as set out in Article 9 of theBerneConvention, and the exceptions permitted thereunder, fully apply in the digitalenvironment, inparticular to the use of works in digital form. It is understood that the storage of aprotected workin digital form in an electronic medium constitutes a reproduction within the meaning ofArticle 9of the Berne Convention.”5.220 It follows from this first sentence that Article 9(1) of the Convention is fullyapplicable. Thismeans that the concept of reproduction under Article 9(1) of the Convention, whichextends toreproduction “in any manner or form” irrespective of the duration of the reproduction,must not berestricted merely because a reproduction is in digital form through storage in anelectronic memory,and just because a reproduction is of a temporary nature. It also follows from the samefirstsentence that Article 9(2) of the Convention is also fully applicable, which offers anappropriatebasis to introduce any justified exceptions such as the above-mentioned cases oftransient andincidental reproductions in national legislation, in harmony with the “three-step test”provided forin that provision of the Convention (see below, in this section, under “Limitations andExceptions”).

5.221 The second sentence of the agreed statement confirms the definition of storageof works.It is another matter that the word “storage” may still be interpreted in somewhatdiffering ways.Transmission on Digital Networks5.222 During the preparatory work, an agreement emerged that the transmission ofworks on theInternet and in similar networks should be the object of an exclusive right ofauthorization of theauthor or other copyright owner, with appropriate exceptions.5.223 There was, however, no agreement concerning the right or rights which shouldactually beapplied, although the rights of communication to the public and distribution wereidentified as thetwo major possibilities. It was also noted, however, that the Berne Convention does notoffer fullcoverage for those rights; the former does not extend to certain categories of works,while explicitrecognition of the latter covers only one category, namely that of cinematographicworks.5.224 Differences in the legal characterization of digital transmissions were partly dueto the factthat such transmissions are of a complex nature, and that the various expertsconsidered one aspectmore relevant than another. However, the most fundamental reason was that coverageof theabove-mentioned two rights differs to a great extent in national laws. It became evidentthat itwould be difficult to reach consensus on a solution based on one right over the other.272 WIPO Intellectual Property Handbook: Policy, Law and Use5.225 A specific solution was therefore adopted, which provided that the act of digitaltransmission should be described in a neutral way, free from specific legalcharacterization; thatsuch a description should not be excessively technical and, at the same time, shouldconvey theinteractive nature of digital transmissions; that, in respect of legal characterization ofthe exclusiveright — that is, in respect of the actual choice of the right or rights to be applied —sufficientfreedom should be left to national legislation; and, finally, that the gaps in the BerneConvention inthe coverage of the relevant rights — the right of communication to the public and theright ofdistribution — should be covered. This solution was referred to as the “umbrellasolution.”5.226 The WCT applies this “umbrella solution” by extending applicability of the right ofcommunication to the public to all categories of works, and clarifies that that right alsocoverstransmissions in interactive systems described in a manner free of legalcharacterization. ThusArticle 8 of the Treaty reads as follows: “Without prejudice to the provisions of Articles11(1)(ii),

11bis(1)(i) and (ii), 11ter(1)(ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authorsof literary andartistic works shall enjoy the exclusive right of authorizing any communication to thepublic of theirworks, by wire or wireless means, including the making available to the public of theirworks in sucha way that members of the public may access these works from a place and at a timeindividuallychosen by them.” It was stated in the Diplomatic Conference that Contracting Partiesare free toimplement the obligation to grant an exclusive right to authorize such “making availableto thepublic” also through the application of a right other than the right of communication tothe publicor through the combination of different rights. By the “other” right, first of all, the rightofdistribution was meant, but “other” right might also be a specific new right such as thatof makingavailable to the public as provided for in Articles 10 and 14 of the WPPT.5.227 An agreed statement was adopted concerning this Article 8. It reads as follows: “Itisunderstood that the mere provision of physical facilities for enabling or making acommunicationdoes not in itself amount to communication within the meaning of this Treaty or theBerneConvention. It is further understood that nothing in Article 8 precludes a ContractingParty fromapplying Article 11bis(2).” This statement is intended to clarify the issue of liability ofservice andaccess providers in digital networks like the Internet: it is evident that, if a personengages in an actnot covered by a right provided in the Convention (and in corresponding national laws),suchperson has no direct liability for the act covered by such a right.Limitations and Exceptions in the Digital Environment5.228 An agreed statement was adopted in this respect, which reads as follows: “It isunderstoodthat the provisions of Article 10 [of the Treaty] permit Contracting Parties to carryforward andappropriately extend into the digital environment limitations and exceptions in theirnational lawswhich have been considered acceptable under the Berne Convention. Similarly, theseprovisionsshould be understood to permit Contracting Parties to devise new exceptions andlimitations thatare appropriate in the digital network environment. It is also understood that Article10(2) [of theTreaty] neither reduces nor extends the scope of applicability of the limitations andexceptionspermitted by the Berne Convention.” The provisions of Article 10 of the Treaty referredto in the

agreed statement are discussed below. It is obvious that extending limitations andexceptions intothe digital environment, or devising new exceptions and limitations for suchenvironment, is subjectto the three-step test included in that Article (see below, in this section, under“Limitations andExceptions”).Technological Measures of Protection and Rights Management Information5.229 No rights in respect of digital uses of works, particularly uses on the Internet, maybeapplied efficiently without the support of technological measures of protection andrightsChapter 5 - International Treaties and Conventions on Intellectual Property 273management information necessary to license and monitor uses. The application ofsuch measuresand information are left to the interested right-owners, but appropriate legal provisionsare includedin Articles 11 and 12 of the Treaty.5.230 Under Article 11 of the Treaty, Contracting Parties must provide “adequate legalprotectionand effective legal remedies against the circumvention of effective technologicalmeasures that areused by authors in connection with the exercise of their rights under this Treaty or theBerneConvention and that restrict acts, in respect of their works, which are not authorized bythe authorsconcerned or permitted by law.”5.231 Article 12(1) of the Treaty obliges Contracting Parties to “provide adequate andeffectivelegal remedies against any person knowingly performing any of the following actsknowing, or withrespect to civil remedies having reasonable grounds to know, that it will induce, enable,facilitate orconceal an infringement of any right covered by this Treaty or the Berne Convention, (i)to removeor alter any electronic rights management information without authority; (ii) todistribute, importfor distribution, broadcast or communicate to the public, without authority, works orcopies ofworks knowing that electronic rights management information has been removed oralteredwithout authority.” Article 12(2) defines “rights management information” as meaning“information which identifies the work, the author of the work, the owner of any right inthe work,or information about the terms and conditions of use of the work, and any numbers orcodes thatrepresent such information, when any of these items of information is attached to acopy of a workor appears in connection with the communication of a work to the public.”5.232 An agreed statement was adopted by the Diplomatic Conference concerningArticle 12 of

the Treaty, which is in two parts. The first part reads: “It is understood that thereference to‘infringement of any right covered by this Treaty or the Berne Convention’ includes bothexclusiverights and rights of remuneration.” The second part reads: “It is further understood thatContracting Parties will not rely on this Article to devise or implement rightsmanagement systemsthat would have the effect of imposing formalities which are not permitted under theBerneConvention or this Treaty, prohibiting the free movement of goods or impeding theenjoyment ofrights under this Treaty.”Other Substantive ProvisionsCriteria of Eligibility for Protection5.233 The WCT settles certain issues — country of origin, national treatment, formalityfreeprotection, possible restriction of (“backdoor”) protection in respect of works ofnationals of certaincountries not party to the Treaty — in a simple way: in Article 3, it provides for themutatismutandis application of Articles 3 to 6 of the Berne Convention.5.234 An agreed statement was also adopted by the Diplomatic Conference as guidancein themutatis mutandis application of those provisions, which reads as follows: “It isunderstood that, inapplying Article 3 of this Treaty, the expression ‘country of the Union’ will be read as if itwere areference to a Contracting Party to this Treaty in the application of those Berne Articlesin respect ofprotection provided for in this Treaty. It is also understood that the expression ‘countryoutside theUnion’ in those Articles in the Berne Convention will, in the same circumstances, be readas if itwere a reference to a country that is not a Contracting Party to this Treaty, and that ‘thisConvention’ in Articles 2(8), 2bis(2), 3, 4 and 5 of the Berne Convention will be read as ifit were areference to the Berne Convention and this Treaty. Finally, it is understood that areference inArticles 3 to 6 of the Berne Convention to a ‘national of one of the countries of theUnion’ will,when these Articles are applied to this Treaty, mean, in regard to an intergovernmentalorganization274 WIPO Intellectual Property Handbook: Policy, Law and Usethat is a Contracting Party to this Treaty, a national of one of the countries that ismember of thatorganization.”Subject Matter and Scope of Protection5.235 Article 3 of the Treaty, dealt with above, also prescribes the mutatis mutandisapplication ofArticles 2 and 2bis of the Berne Convention. The scope of the subject matter covered bycopyright,

particularly in relation to computer programs and databases, was explored in the WCT.The Treatyshares the same concept of literary and artistic works as is found in the BerneConvention. TheTreaty also includes, however, some clarifications on the matter in common with thosein the TRIPSAgreement.5.236 First, Article 2 of the Treaty clarifies that “Copyright protection extends toexpressions andnot to ideas, procedures, methods of operation or mathematical concepts as such.” Thisis virtuallythe same as the clarification included in Article 9.2 of the TRIPS Agreement. Nor is theprinciplereflected in Article 2 new in the context of the Berne Convention, since countries partyto theConvention have always understood the scope of protection under the Convention inthat way.5.237 Second, Articles 4 and 5 of the Treaty contain clarifications concerning theprotection ofcomputer programs as literary works and of compilations of data (databases), which aresimilar tothose included in Article 10 of the TRIPS Agreement. Two agreed statements specify thatthe scopeof protection for computer programs under Article 4 of the Treaty and for compilations ofdata(databases) under Article 5 of the Treaty “is consistent with Article 2 of the BerneConvention andon par with the relevant provisions of the TRIPS Agreement.”Rights to be Protected5.238 Article 6(1) of the WCT provides an exclusive right to authorize the makingavailable to thepublic of originals and copies of works through sale or other transfer of ownership, thatis, anexclusive right of distribution. Under the Berne Convention, it is only in respect ofcinematographicworks that such a right is granted explicitly. Such a right, surviving at least until the firstsale ofcopies, may be deduced as an indispensable corollary to the right of reproduction, and,in somelegal systems, the right of distribution is in fact recognized on this basis. Article 6(1) ofthe WCTshould be considered at least a useful clarification of the obligations under the BerneConvention(and also under the TRIPS Agreement, which includes by reference the relevantprovisions of theConvention), and at the most as adding to both.5.239 Article 6(2) of the Treaty deals with the issue of the exhaustion of the right ofdistribution.It does not oblige Contracting States to choose national/regional exhaustion orinternationalexhaustion — or to regulate at all the issue of exhaustion — of the right of distributionafter the

first sale or other first transfer of ownership of the original or a copy of the work, withtheauthorization of the author.5.240 Article 7 of the Treaty provides an exclusive right of authorizing commercial rentalto thepublic in respect of the same categories of works — computer programs,cinematographic worksand works embodied in phonograms, as determined in the national laws of ContractingParties —as those covered by Articles 11 and 14.4 of the TRIPS Agreement, and with the sameexceptions.The exceptions are in respect of computer programs which are not themselves theessential objectsof the rental, in respect of cinematographic works unless commercial rental leads towidespreadcopying of such works, materially impairing the exclusive right of reproduction, and inrespect of aContracting Party which, on April 15, 1994, had and still has in force a system ofequitableremuneration for rental of copies of works included in phonograms, instead of anexclusive right: inChapter 5 - International Treaties and Conventions on Intellectual Property 275the latter case the Contracting Party may maintain that system provided thatcommercial rentaldoes not give rise to the material impairment of the exclusive right of authorization.5.241 An agreed statement was adopted by the Diplomatic Conference on Articles 6 and7 of theTreaty. It reads: “As used in these Articles, the expressions ‘copies’ and ‘original andcopies,’ beingsubject to the right of distribution and the right of rental under the said Articles, referexclusively tofixed copies that can be put into circulation as tangible objects.”Duration of Protection of Photographic Works5.242 Article 9 of the WCT removes the unjustified discrimination against photographicworks asto the duration of protection. It obliges Contracting Parties not to apply Article 7(4) ofthe BerneConvention, which, as also for works of applied art, prescribes a shorter term — 25years — forphotographic works than for the general 50-year term.Limitations and Exceptions5.243 Paragraph (1) of Article 10 determines the types of limitations on, or exceptionsto, therights granted under the Treaty which may be applied, while paragraph (2) of thatArticle providescriteria for the application of limitations of, or exceptions to, the rights under the BerneConvention.5.244 Both paragraphs use the three-step test included in Article 9(2) of the BerneConvention todetermine the limitations and exceptions allowed. That is to say, exceptions andlimitations are onlyallowed in certain special cases:

- provided that they do not conflict with a normal exploitation of the work;- provided that they do not unreasonably prejudice the legitimate interests of theauthors.5.245 Under Article 9(2) of the Berne Convention, this test is applicable only to the rightofreproduction, while both paragraphs of Article 10 of the Treaty cover all rights providedfor in theTreaty and the Berne Convention respectively. In this, the provisions of Article 10 aresimilar toArticle 13 of the TRIPS Agreement, which applies the same test for all rights provided forin theTRIPS Agreement, either directly or through inclusion by reference to the substantiveprovisions ofthe Berne Convention.Application in Time5.246 Article 13 of the WCT refers simply to Article 18 of the Berne Convention todetermine theworks to which the Treaty applies at the moment of its entry into force for a givenContractingState, and stipulates that the provisions of that Article must also be applied to theTreaty.Enforcement of Rights5.247 Article 14, paragraph (1) is a mutatis mutandis version of Article 36(1) of theBerneConvention. It provides that “Contracting Parties undertake to adopt, in accordance withtheirlegal systems, the measures necessary to ensure the application of this Treaty.”5.248 Paragraph (2) of Article 14 is a mutatis mutandis version of the first sentence ofArticle 41.1of the TRIPS Agreement. It reads: “Contracting Parties shall ensure that enforcementproceduresare available under their law so as to permit effective action against any act ofinfringement of276 WIPO Intellectual Property Handbook: Policy, Law and Userights covered by this Treaty, including expeditious remedies to prevent infringementsand remedieswhich constitute a deterrent to further infringements.”Administrative Provisions5.249 The administrative provisions and final clauses, in general, are the same as orsimilar to theprovisions of other WIPO treaties on the same issues. Two specific features should bementioned,namely the possibility of intergovernmental organizations becoming party to the Treatyand thegreater number of instruments of ratification or accession needed for entry into force ofthe Treaty.5.250 Article 17 of the Treaty provides for eligibility for becoming party to the Treaty.Underparagraph (1), any Member State of WIPO may become party to the Treaty. Paragraph(2) providesthat “The Assembly may decide to admit any intergovernmental organization to becomeparty to

this Treaty which declares that it is competent in respect of, and has its own legislationbinding onall its Member States on, matters covered by this Treaty and that it has been dulyauthorized, inaccordance with its internal procedures, to become party to this Treaty.” Paragraph (3)adds thefollowing: “The European Community, having made the declaration referred to in theprecedingparagraph in the Diplomatic Conference that has adopted this Treaty, may becomeparty to thisTreaty.”5.251 The number of instruments of ratification or accession needed for the entry intoforce of theWCT was fixed at 30. The WCT entered into force on March 6, 2002. The States party tothe WCTare listed in the appropriate document to be found inserted in the back flap of thisvolume.The Patent Cooperation Treaty (PCT)IntroductionThe National Patent System5.252 The national patent system requires the filing of individual patent applications foreachcountry for which patent protection is sought, with the exception of the regional patentsystemssuch as the African Intellectual Property Organization (OAPI) system, the Harare Protocolsystemestablished in the framework of the African Regional Industrial Property Organization(ARIPO), theEurasian patent system and the European patent system. Under the traditional ParisConventionroute, the priority of an earlier application can be claimed for applications filedsubsequently inforeign countries but such later applications must be filed within 12 months of the filingdate of theearlier application. This involves for the applicant the preparation and filing of patentapplicationsfor all countries in which he is seeking protection for his invention within one year of thefiling ofthe first application. This means expenses for translation, patent attorneys in thevarious countriesand payment of fees to the Patent Offices, all at a time when the applicant often doesnot knowwhether he is likely to obtain a patent or whether his invention is really new comparedwith thestate of the art.5.253 Filing of patent applications under the national system means that every singlePatent Officewith which an application is filed has to carry out a formal examination of everyapplication filedChapter 5 - International Treaties and Conventions on Intellectual Property 277with it. Where Patent Offices examine patent applications as to substance, each Officehas to make

a search to determine the state of the art in the technical field of the invention and hasto carry outan examination as to patentability.5.254 The principal difference between the national patent system and the regionalpatentsystems such as those mentioned above is that a regional patent is granted by onePatent Office forseveral States. Otherwise, the procedure is the same, and the explanations given in theprecedingtwo paragraphs are equally valid.History of the PCT5.255 In order to overcome some of the problems involved in the national system, inSeptember 1966, the Executive Committee of the International (Paris) Union for theProtection ofIndustrial Property invited BIRPI (the predecessor of WIPO) to undertake urgently astudy of solutionsto reduce the duplication of the effort both for applicants and national Patent Offices. Inthefollowing years, a number of BIRPI meetings prepared drafts and a DiplomaticConference held inWashington, D.C., in June 1970 adopted a treaty called the Patent Cooperation Treaty.The PatentCooperation Treaty or “PCT” entered into force on January 24, 1978, and becameoperational onJune 1, 1978, with an initial 18 Contracting States.5.256 The progress of the PCT demonstrates the certainty that many more countries,developingas well as developed, will become party to the PCT in the years ahead and that its use,evidenced bythe number of applications filed, will continue to increase significantly. Statisticalindications of thissuccess can be found in the relevant document in the back flap of this volume.Objectives of the PCT5.257 As its name suggests, the Patent Cooperation Treaty is an agreement forinternationalcooperation in the field of patents. It is often spoken of as being the most significantadvance ininternational cooperation in this field since the adoption of the Paris Convention itself. Itis howeverlargely a treaty for rationalization and cooperation with regard to the filing, searchingandexamination of patent applications and the dissemination of the technical informationcontainedtherein. The PCT does not provide for the grant of “international patents”: the task ofandresponsibility for granting patents remains exclusively in the hands of the Patent Officesof, or actingfor, the countries where protection is sought (the “designated Offices”). The PCT doesnotcompete with but, in fact, complements the Paris Convention. Indeed, it is a specialagreement

under the Paris Convention open only to States which are already party to thatConvention.5.258 The principal objective of the PCT is, by simplification leading to moreeffectiveness andeconomy, to improve on — in the interests of the users of the patent system and theOffices whichhave responsibility for administering it — the previously established means of applyingin severalcountries for patent protection for inventions.5.259 To achieve its objective, the PCT:- establishes an international system which enables the filing, with a single Patent Office(the“receiving Office”), of a single application (the “international application”) in onelanguagehaving effect in each of the countries party to the PCT which the applicant names(“designates”) in his application;- provides for the formal examination of the international application by a single PatentOffice, the receiving Office;278 WIPO Intellectual Property Handbook: Policy, Law and Use- subjects each international application to an international search which results in areportciting the relevant prior art (mainly published patent documents relating to previousinventions) which may have to be taken into account in deciding whether the inventionispatentable;- provides for centralized international publication of international applications with therelated international search reports, as well as their communication to the designatedOffices;- provides an option for an international preliminary examination of the internationalapplication, which gives the applicant and subsequently the Offices that have to decidewhether or not to grant a patent, a report containing an opinion as to whether theclaimedinvention meets certain international criteria for patentability.5.260 The procedure described in the preceding paragraph is commonly called the“internationalphase” of the PCT procedure, whereas one speaks of the “national phase” to describethe last partof the patent granting procedure, which is the task of the designated Offices, i.e., thenationalOffices of, or acting for, the countries which have been designated in the internationalapplication.In PCT terminology, a reference to “national” Office, “national” phase or “national” feesincludesthe reference to the procedure before a regional patent Office.5.261 Especially in more developed countries with a greater number of patentapplications, PatentOffices have been struggling for years with heavy workloads (leading to delays), andwith questionsof how best to allocate resources so as to ensure that the patent system yields thegreatest returnfrom the available manpower. Under the PCT system, by the time the internationalapplication

reaches the national Office, it has already been examined as to form by the receivingOffice, beensearched by the International Searching Authority and possibly examined by anInternationalPreliminary Examining Authority. These centralized procedures of the internationalphase thusreduce the workload of the national Patent Offices.5.262 Further main objectives of the PCT are to facilitate and accelerate access byindustry andother interested sectors to technical information related to inventions and to assistdevelopingcountries in gaining access to technology.The Functioning of the PCT SystemFiling an International Application5.263 Any national or resident of a PCT Contracting State can file an internationalapplication.International applications can be filed in most cases with the national Office, which willact as a PCTreceiving Office. In addition, the International Bureau can act as a receiving Office as anoption fornationals and residents of all PCT Contracting States.5.264 An international application has the effect, as of the international filing date, of anationalapplication in those PCT Contracting States which the applicant designates for anational patent inhis application. It has the effect of a regional patent application in those PCT ContractingStateswhich are party to a regional patent treaty, providing they are designated for a regionalpatent (thatis, an ARIPO patent, a Eurasian patent, a European patent or an OAPI patent).Chapter 5 - International Treaties and Conventions on Intellectual Property 2795.265 The PCT prescribes certain standards for international applications. Aninternationalapplication which is prepared in accordance with these standards will be acceptable, sofar as theform and contents of the application are concerned, to all the PCT Contracting States,and nosubsequent modifications because of varying national or regional requirements (and thecostassociated therewith) will become necessary. No national law may require compliancewithrequirements relating to the form or contents of the international application differentfrom oradditional to those which are provided for by the PCT.5.266 Only a single set of fees is incurred for the preparation and filing of theinternationalapplication, and they are payable in one currency and at one Office, the receivingOffice. Paymentof national fees to the designated Offices is delayed. The national fees become payablemuch laterthan for a filing by the traditional Paris Convention route.

5.267 The fees payable to the receiving Office for an international application consist ofthreemain elements:- the transmittal fee, to cover the work of the receiving Office;- the search fee, to cover the work of the International Searching Authority;- the international fee, to cover the work of the International Bureau.5.268 An applicant who is a natural person and who is a national of and resides in aState whoseper capita national income is below a certain level, based on income figures used by theUnitedNations for determining its scale of assessments for contributions to it, is entitled to asizablereduction of certain PCT fees, including the international fee. If there are severalapplicants, eachmust satisfy the above-mentioned criteria.5.269 The language in which an international application can be filed depends upon therequirements of the receiving Office with which the application is filed and of theInternationalSearching Authority which is to carry out the international search. The main languagesin whichinternational applications may be filed are Chinese, English, French, German, Japanese,Russian andSpanish; other languages also accepted, so far, are Danish, Dutch, Finnish, NorwegianandSwedish.5.270 The receiving Office, after having accorded an international filing date and madea formalcheck, sends a copy of the international application to the International Bureau of WIPO(the“record copy”) and another copy (the “search copy”) to the International SearchingAuthority. Itkeeps a third copy (the “home copy”). The receiving Office also collects all the PCT feesandtransfers the search fee to the International Searching Authority and the internationalfee to theInternational Bureau.International Search5.271 Every international application is subjected to an international search, that is, ahigh qualitysearch of the patent documents and other technical literature in those languages inwhich mostpatent applications are filed (English, French and German, and in certain cases Chinese,Japanese,Russian and Spanish). The high quality of the international search is assured by thestandardsprescribed in the PCT for the documentation, staff qualifications and search methods oftheInternational Searching Authorities, which are experienced Patent Offices that havebeen speciallyappointed to carry out international searches by the Assembly of the PCT Union (thehighest280 WIPO Intellectual Property Handbook: Policy, Law and Use

administrative body created under the PCT) on the basis of an agreement to observePCT standardsand time limits.5.272 The following Offices have been appointed to act as International SearchingAuthorities:the Australian Patent Office, the Austrian Patent Office, the Chinese Patent Office, theEuropeanPatent Office, the Japanese Patent Office, the Russian Patent Office, the Spanish PatentandTrademark Office, the Swedish Patent Office and the United States Patent andTrademark Office.5.273 Each International Searching Authority is required to have at least the prescribedPCTminimum documentation, properly arranged for search purposes, which can bedescribed in generalas comprising the patent documents, as from 1920, of the major industrializedcountries, togetherwith agreed items of non-patent literature. The International Searching Authority, inmaking thesearch, must make use of its full facilities, i.e., the minimum documentation and anyadditionaldocumentation it may possess. The obligation to consult at least the PCT minimumdocumentationguarantees a high level of international searching.5.274 The results of the international search are given in an international search report,which isnormally made available to the applicant by the fourth or fifth month after theapplication is filed.The citations of documents of relevant prior art in the international search report enabletheapplicant to calculate his chances of obtaining a patent in or for the countriesdesignated in theinternational application, and to decide whether it is worth continuing to seek protectionfor hisinvention in the designated States.5.275 An international search report which is favorable, that is, in which the citations ofprior artwould appear not to prevent the grant of a patent, assists the applicant in thesubsequentprosecution of the application before the designated Offices. If a search report isunfavorable, theapplicant has the opportunity to amend the claims in his international application tobetterdistinguish the invention from the state-of-the-art or to withdraw the application beforeit ispublished.5.276 The international search report assists designated Offices, in particular Officeswhich do nothave technically qualified staff and an extensive collection of patent documentsarranged in amanner suitable for search purposes, in examining applications and otherwiseevaluating the

inventions described.5.277 The International Searching Authority sends the international search report to theapplicantand to the International Bureau. The International Bureau includes the search report intheinternational publication of the international application and sends a copy to thedesignated Offices.International Publication5.278 International publication serves two main purposes: to disclose to the public theinvention(i.e., in general, the technological advance made by the inventor) and to set out thescope of theprotection which may ultimately be obtained.5.279 The International Bureau publishes a PCT pamphlet which contains a front pagesetting outbibliographic data furnished by the applicant, together with data such as theInternational PatentClassification (IPC) symbol assigned by the International Searching Authority, theabstract and alsothe description, the claims, any drawings and the international search report. If theclaims of theinternational application have been amended, the claims are published both as filed andasamended. International publication occurs, in general, 18 months after the priority dateof theinternational application.Chapter 5 - International Treaties and Conventions on Intellectual Property 2815.280 The pamphlet is published in the language of the international application asfiled, if thatlanguage is Chinese, English, French, German, Japanese, Russian or Spanish. If,however, theinternational application is published in Chinese, French, German, Japanese, Russian orSpanish, thetitle of the invention, the abstract and the international search report are also publishedin English.If the international application has been filed in any other language, it is translated andpublished inEnglish.5.281 The publication of each pamphlet is announced in the PCT Gazette, which lists thepublished international applications in the form of entries reproducing data taken fromthe frontpages of the pamphlets. Each issue of the PCT Gazette also contains a ClassificationIndex, allowingthe selection of the published international applications by technical fields.5.282 These publications, the pamphlet and the PCT Gazette, are distributed free ofcharge by theInternational Bureau on a systematic basis to all PCT Contracting States. They are nowalsoavailable in CD-ROM format in searchable form. To the public, they are supplied onrequest,against payment of a fee.International Preliminary Examination

5.283 Once the applicant has received the international search report, he may make aspecificrequest for international preliminary examination (by filing a “demand” in whichdesignated Statesare “elected”) in order to obtain an opinion as to whether the claimed invention meetsany or all ofthe following criteria — whether it appears to be novel, whether it appears to involve aninventivestep and whether it appears to be industrially applicable. A fee for internationalpreliminaryexamination is due when a demand is filed with the International Preliminary ExaminingAuthority,together with a handling fee to cover the work of the International Bureau. Applicantsfrom certainStates are entitled to a sizable reduction of the handling fee (see paragraph 5.268,above).5.284 As in the case of the International Searching Authorities, the InternationalPreliminaryExamining Authorities are appointed by the Assembly of the PCT Union. The Officeswhich havebeen appointed are the same as those appointed as International Searching Authorities,with theexception of the Spanish Patent and Trademark Office. The results of the internationalpreliminaryexamination are given in a report which is made available to the applicant and the“elected Offices”(which are the Offices of, or acting for, the elected States) through the InternationalBureau, whichis also responsible for translating the report into English, if required by any electedOffice. Theopinion on the patentability of the invention, on the basis of the international criteriamentionedabove, provides the applicant with an even stronger basis for calculating his chance ofobtaining apatent, and the elected Offices have an even better basis for their decision whether togrant apatent. In countries where patents are granted without examination as to substance,theinternational preliminary examination report will provide a solid basis for partiesinterested in theinvention (e.g., for licensing purposes) to evaluate the validity of such patents.5.285 Usually upon publication of the international application (but at the latest by theend of the19th month after the priority date), the International Bureau communicates theinternationalapplication to the designated Offices. The copy communicated will be used for thesubsequentprosecution of the international application before those Offices since, as explainedabove, the PCTis only a system for filing and not for granting patents, the latter remaining theexclusive task and

responsibility of the designated Offices. In practice, more than half of these Offices havewaivedthe weekly communications of copies of published international applications andreceive, instead, afree-of-charge complete collection on CD-ROM of all such applications. A CD-ROMworkstation isalso provided by the International Bureau. The main advantages of the CD-ROM formatare rapidaccess via computer and the limited storage space required. It is noted that, in anycase, a282 WIPO Intellectual Property Handbook: Policy, Law and Usedesignated Office is entitled to receive, upon specific request, copies (on paper) of theinternationalapplications and of related documents in which it is designated.5.286 The processing of an international application before the designated (or elected)Offices —the national phase — may not start prior to the expiration of 20 months (or 30 months ifChapter IIis applicable) from the priority date of the international application, unless the applicantrequests anearlier start.Prosecution Before the Designated or Elected Offices (the “National Phase”)5.287 After having received an international search report and, where appropriate, aninternational preliminary examination report, and after having had the possibility ofamending hisapplication, the applicant is now in a good position to decide whether he has a chanceof obtainingpatents in the designated States. If he sees no likelihood, he can either withdraw hisapplication ordo nothing; in the latter case, the international application will lose the effect of anationalapplication and the procedure will automatically come to an end. The applicant has insuch a casesaved himself great expense, namely, the costs involved in filing separate nationalapplicationsunder the traditional Paris Convention route. He has not paid for applications andtranslations forthe national Offices, he has not paid fees to those Offices, and he has not appointedlocal agents:all this is required under the traditional Paris Convention route within 12 months fromthe prioritydate, and must be done without having the basis for evaluating the likelihood ofobtaining apatent, which is afforded under the PCT by the international search report and,optionally, theinternational preliminary examination report.5.288 Where the applicant decides to continue the procedure, and only in that event, hemust paythe prescribed national fees to the designated (or elected) Offices and, if required,furnish to theseOffices translations of his international application into their official language; a localagent may

also have to be appointed. The furnishing of the translation and the payment of thenational feesmust be effected within 20 months (or 30 months, if Chapter II is applicable) from thepriority date.Once national processing starts, the normal national procedures apply, subject tospecific exceptionsarising out of the PCT procedure, for example, matters of form and contents of theinternationalapplication, and the provision of copies of the priority document.5.289 WIPO has published a PCT Applicant’s Guide. Volume I of this Guide containsgeneralinformation for users of the PCT, relating to the international phase; Volume II containsinformationon the procedure before the designated and elected Offices, relating to the nationalphase. Furtherinformation is regularly published in the PCT Gazette, (Section IV — Notices andInformation of aGeneral Character), and in the PCT Newsletter, a monthly publication which contains upto datenews about the PCT. WIPO’s home page on the Internet includes the PCT Applicant’sGuide andthe PCT Newsletter as well as other information of a general nature on the PCT. TheWorld WideWeb address is: http://www.wipo.intAdvantages of the PCT SystemAdvantages for Patent Offices5.290 More and more Patent Offices are having to consider how to employ theiravailablemanpower to the greatest advantage. This is true not only because of the number ofpatentapplications which they must handle (in a country in the process of development, thenumber willsurely rise considerably in the future as a consequence of an increase in the country’sindustrialChapter 5 - International Treaties and Conventions on Intellectual Property 283activity) but also because of the expanding role that Patent Offices are being required tofulfil: theyprovide technical advisory services to local industry (because of available patentdocumentation andtechnically trained staff), either in terms of advising on available technologies or inconnection withnational research and development activities. The PCT assists Patent Offices in meetingthesedemands in various ways, outlined in the following paragraphs.5.291 Patent Offices can expect to employ their available manpower to handle morepatentapplications, since those applications coming via the PCT have already been verifiedwith regard tocompliance with formal requirements during the international phase.5.292 Patent Offices can save part of the cost of publishing. If the internationalapplication has

been published in an official language of the country, they can forgo publicationaltogether.Countries having a different official language may limit themselves to publishing only atranslationof the abstract which accompanies international applications. Copies of the full text oftheinternational application could be supplied upon request to interested parties.5.293 The PCT does not affect the revenue of designated Offices unless they decidevoluntarily togive a rebate on national fees in view of the savings they make through the PCT, and inorder tomake the use of the international application route more attractive to the applicant. Inany case,the most profitable source of revenue for most Offices is from annual or renewal fees,which arenot affected by the Treaty.5.294 Examining Patent Offices benefit, in respect of most applications filed byforeigners, from aninternational search report and an international preliminary examination report. Theirsearch costsare also thereby reduced.5.295 Non-examining Offices receive an application which has already been examinedas to form,which is accompanied by an international search report and possibly by an internationalpreliminaryexamination report. This will put the Office, and the national industry affected by apatent and/orinterested in licensing, in a much better position than under the system of filing nationalor regionalapplications. National authorities involved in approving licensing agreements likewisebenefit fromthe greater value of a patent granted on the basis of an international application.5.296 Patent Offices of States party to the Harare Protocol, to the Eurasian PatentConvention orto the European Patent Convention which opt to close the national route are notinvolved in theprocessing of international applications designating such States. Choosing this option isthereforeparticularly advisable if the national Patent Office is less well equipped than the regionalOffice andis not prepared to receive and process increasing numbers of applications.Advantages for the Applicant5.297 Applicants may file their application in their own country (or, where applicable,with thecompetent regional Office, or with the International Bureau as receiving Office) witheffect inforeign countries, and have more time to make up their minds as to those foreigncountries inwhich they wish to seek protection. In a typical case, they have spent much less moneyin the stageprior to a granted patent than otherwise.

5.298 If the applicant does not use the international procedure offered by the PCT, hemust startpreparations for filing abroad three to six months before the expiration of the priorityperiod. Hemust prepare translations of his application and have them put into a different form foreachcountry. Under the PCT, the applicant files only one application (the internationalapplication),within the priority year, with effect in all States he has designated; that application,which may be284 WIPO Intellectual Property Handbook: Policy, Law and Usefiled until the last day of the priority year, may be identical both as to language andform with hisown national application.5.299 The cost of further translation has to be met eventually, but not until eight (or 18)monthslater than under a procedure which does not use the PCT, and only if the applicant,havingevaluated the international search report and, where available, the internationalpreliminaryexamination report also, is still interested in the countries concerned. If not, he saves allsubsequentcosts.Advantages for the National Economy and for Industry5.300 International applications will be pursued in the national phase only if theapplicant believes,after seeing the results of the international search and usually also the internationalpreliminaryexamination, that there are sound economical and technical reasons for doing so. Thuspatentsgranted on the basis of international applications will usually provide a sounder basis forinvestmentand transfer of technologies.5.301 Technological progress is an essential factor of national economic development. Itisrecognized that real technological progress cannot be achieved or cannot continue in acountry,however industrialized, without constant stimulation of domestic inventive activities andat thesame time importation (via licenses) of advanced technologies from foreign countries.Since thePCT system greatly facilitates the obtaining of patent protection on an internationallevel, and sincethe patents granted through the PCT route have been subjected to high-qualityinternational searchand usually also international preliminary examination, more and more applicants areseekingpatent protection on an international level through the PCT, thus preparing the route fortechnology transfer and licensing agreements.5.302 With more licensed technology, foreign investment will be stimulated. And withmore

advanced technologies and more investment, there will be increased levels of localemployment andthe technical skills of the local work force will be enhanced. As the level of economicandtechnological development rises, an increasing number of nationals will use and greatlybenefitfrom the PCT system when they seek patent protection abroad for their inventions, thusaiding inthe penetration of export markets by local industry.5.303 The economies of many developing countries are growing rapidly; moreinvestment andtechnology transfer in various areas, depending on the country concerned, are needed,as well asthe creation and modernization, locally, of certain types of industries (manufacturers,etc.) andservices. Since foreign investors and licensors are relatively more interested in investingin andtransferring technologies to a country whose economy is growing and where productioncosts arerelatively low, the PCT will often serve as an indispensable part of the country’s strategyto foster itsgrowing economy and to promote the steady rise of its economic and technologicallevel.Technical Information5.304 A further important advantage of the PCT for developing countries lies in itsinformationeffect. It can be very difficult to obtain a complete picture of all the patent documentspublished inmany countries and many languages and of the most recent state of the art resultingfrom them.Since many important inventions are the subject of PCT applications, developingcountries have,through the international publication of these applications, early and easier access tomoderntechnological information. The access will be early, because international applicationsare published18 months after the priority date of the application. It will be easier, because theapplication will bepublished in one of the most important languages and, where not in English, with anChapter 5 - International Treaties and Conventions on Intellectual Property 285English-language abstract, and because the international search report, publishedtogether with theapplication, will make it easier to evaluate the technology disclosed in the application.PatentOffices of PCT Contracting States are entitled to receive, free of charge, a copy of allpublishedinternational applications, of the PCT Gazette and of any other publication of generalinterestpublished by the International Bureau in connection with the PCT.5.305 The PCT offers distinct advantages for developing countries participating in thissystem of

international patent cooperation and requires no payment of contributions. That there issufficientawareness of these advantages is confirmed by the impressive number of developingcountriesalready party to the Treaty.5.306 The States party to the Patent Cooperation Treaty are listed in the appropriatedocument tobe found inserted in the back flap of this volume.The Budapest Treaty on the International Recognition of the Deposit ofMicroorganisms for the Purposes of Patent Procedure5.307 The Budapest Treaty on the International Recognition of the Deposit ofMicroorganisms forthe Purposes of Patent Procedure (the Budapest Treaty), which is a special agreementunderArticle 19 of the Paris Convention, entered into force on August 9, 1980. The Statesparty to theTreaty are listed in the appropriate document in the back flap of this volume.Background to the Treaty5.308 Disclosure of the invention is a generally recognized requirement for the grant ofpatents.Normally, an invention is disclosed by means of a written description. Where aninvention involvesa microorganism, or the use of a microorganism, which is not available to the public,such adescription is not always sufficient for disclosure. That is why in the patent procedure ofanincreasing number of countries it is necessary not only to file a written description butalso todeposit, with a specialized institution, a sample of the microorganism. Patent Offices arenotequipped to handle microorganisms, whose preservation requires special expertise andequipmentto keep them viable, to protect them from contamination and to protect health or theenvironmentfrom contamination. Such preservation is costly. The furnishing of samples also requiresspecializedexpertise and equipment.5.309 When protection is sought in several countries for an invention involving amicroorganism orthe use of a microorganism, the complex and costly procedures of the deposit of themicroorganismmight have to be repeated in each of those countries. It was in order to eliminate orreduce suchmultiplication, in order to enable one deposit to serve the purpose of all the depositswhich wouldotherwise be necessary, that the Treaty was concluded.Summary of the Treaty5.310 The main feature of the Treaty is that a Contracting State which allows or requiresthedeposit of microorganisms for the purposes of patent procedure must recognize, forsuch purposes,

the deposit of a microorganism with any “international depositary authority” (Article3(1)(a)),irrespective of whether such authority is on or outside the territory of the said State. Inotherwords, one deposit, with one international depositary authority, will suffice for thepurposes ofpatent procedure before the national Patent Offices (called “industrial property offices”in theTreaty) of all of the Contracting States and before any regional Patent Office (forexample the286 WIPO Intellectual Property Handbook: Policy, Law and UseEuropean Patent Office) which has filed a declaration of acceptance under Article 9(1)(a)of theTreaty.5.311 What the Treaty calls an “international depositary authority” is a scientificinstitution —typically a “culture collection” — which is capable of storing microorganisms. Such aninstitutionacquires the status of “international depositary authority” through the furnishing, by theContracting State on the territory of which it is located, of assurances to the DirectorGeneral ofWIPO to the effect that the said institution complies, and will continue to comply, withtherequirements specified in Article 6(2), including, in particular, that it will be available, forthepurposes of the deposit of microorganisms, to any “depositor” (person, firm, etc.) underthe sameconditions, that it will accept and store the deposited microorganisms and that it willfurnishsamples thereof to anyone entitled to such samples but to no one else. The saidassurances may befurnished also by certain intergovernmental industrial property organizations (Article7(1)(a)).5.312 The Regulations contain detailed provisions (Rule 11) on who is entitled — andwhen — toreceive samples of the deposited microorganism. The depositor himself has a right to asample atany time (Rule 11.2(i)). He may authorize any third party (authority, natural person,legal entity) toask for a sample and such a third party will receive a sample upon producing such anauthorization(Rule 11.2(ii)). Any “interested” industrial property office to which the Treaty appliesmay ask for asample and will receive one; an industrial property office will mainly be regarded as“interested”where the microorganism is needed for the purposes of patent procedure before thesaid office(Rule 11.1). Any other party may obtain a sample if, roughly stated, an industrialproperty office towhich the Treaty applies certifies that, under the applicable law, such a party has theright to a

sample of the given microorganism; the elements of the certification are provided for indetail toensure that the maximum extent of caution will be exercised by the industrial propertyoffice beforeit issues a certification (Rule 11.3(a)).5.313 The Treaty and the Regulations contain provisions allowing for what is called a“new”deposit where no samples of the originally deposited microorganism can be furnished(Article 4), forthe termination or limitation of the status of international depositary authority at the willof theContracting States where the said authority does not, or does not fully, comply with itsassumedduties (Article 8), and for all microorganisms deposited with an international depositaryauthority tobe transferred to another such authority if the former is about to cease functioning assuch (Rule5.1). They also regulate the contents of the receipt that each international depositaryauthority isrequired to issue to the depositor for the deposited microorganism (Rule 7), and providefor thetesting of the viability of the deposited microorganisms and the issuance of viabilitystatements(Rule 10), for the international depositary authority to charge a fee for each deposit, thefeecovering the minimum 30 years during which the deposited microorganism must bestored (Rules 9and 12). They also contain provisions related to the applicability of the Treaty tointergovernmentalindustrial property organizations (Article 9).Main Advantages of the Treaty5.314 The Treaty is primarily advantageous to the depositor who is an applicant forpatents inseveral countries. It will save him money because, instead of depositing themicroorganism in eachand every country in which he files a patent application referring to that microorganism,he candeposit it only once, with one depositary, with the consequence that in all but one of thecountriesin which he seeks protection he will save the fees and costs that deposits would haveotherwiseentailed. In most cases, there will be at least one international depositary authority inthe countryof the depositor, which means that he will deal with an authority which is close to him,with whichhe can deal in his own language, to which he can pay the fees in his own currency andwhich hemay even know from personal experience.Chapter 5 - International Treaties and Conventions on Intellectual Property 2875.315 The security of the depositor is increased by the fact that, for an institution tobecome an

international depositary authority, solemn assurances as to the seriousness andcontinued existenceof that institution must be given; such assurances must be given by a State or by anintergovernmental industrial property organization and they are addressed to all themember Statesof the Budapest Union. Consequently, it may be expected that the assurances will bestrictlyrespected, all the more so since, if they are not so respected, the member States maytake awayfrom the defaulting institution the status of international depositary authority.5.316 Finally, it is to be noted that adherence to the Treaty entails no financial burden orobligation for any Government.The Madrid Agreement Concerning the International Registration ofMarksand the Protocol Relating to that AgreementIntroduction5.317 The system of international registration of marks is governed by two treaties, theMadridAgreement Concerning the International Registration of Marks, which dates from 1891,and theProtocol Relating to the Madrid Agreement, which was adopted in 1989, entered intoforce onDecember 1, 1995, and came into operation on April 1, 1996. Common Regulationsunder theAgreement and Protocol also came into force on that last date. The system isadministered by theInternational Bureau of WIPO, which maintains the International Register and publishesthe WIPOGazette of International Marks.5.318 The reason for the much more recent Protocol, following the original MadridAgreement of1891 (last amended at Stockholm in 1967), was the absence from the Madrid Union ofsome of themajor countries in the trademark field — for example, Japan, the United Kingdom andthe UnitedStates of America. The Protocol is intended to make the Madrid system acceptable tomorecountries. It differs from the Agreement in offering such options as:- a choice for the applicant, allowing international registrations to be based on nationalapplications and not only on national registrations;- a period of 18 months, instead of one year, for Contracting Parties to refuse protection,with the possibility of a longer period in the case of a refusal based on an opposition;- the possibility for the office of a designated Contracting Party to receive, instead of asharein the revenue from the standard fees, an “individual fee” whose amount may not behigher than the fees it charges for national or regional registration or renewal, the saidamount being diminished by the savings resulting from the international procedure;- the transformation of an international registration which is no longer protectedbecause thebasic mark has ceased to have effect in the country of origin, international or regionalapplications in some or all of the designated Contracting Parties, with the filing date,and

where applicable the priority date, of the international registration;288 WIPO Intellectual Property Handbook: Policy, Law and Use- the possibility for the Protocol to be joined not only by States, but in addition by anyintergovernmental organization which has an office for registering marks with effect initsterritory.The Functioning of the System of International RegistrationFiling an International Registration5.319 An application for international registration (an “international application”) maybe filedonly by a natural person or a legal entity which has a real and effective industrial orcommercialestablishment in, or is domiciled in, or is a national of, a country which is party to theMadridAgreement or the Madrid Protocol, or who has such an establishment in, or is domiciledin, theterritory of an intergovernmental organization which is a party to the Protocol, or is anational of amember State of such an organization.5.320 The Madrid system of international registration cannot be used by a person orlegal entitywhich does not have the necessary connection, through establishment, domicile ornationality, witha member of the Madrid Union. Nor can it be used to protect a trademark outside theMadridUnion.5.321 A mark may be the subject of an international application only if it has alreadybeenregistered (or, where the international application is governed exclusively by theProtocol, ifregistration has been applied for) in the Office of origin. In the case of an internationalapplicationgoverned exclusively by the Agreement or by both the Agreement and Protocol (seeparagraph5.313), the Office of origin is the Trademark Office of the Contracting State in which theapplicanthas a real and effective industrial or commercial establishment; if he has noestablishment in such aState, it is the Office of the Contracting Party where he has a domicile; if he has nodomicile in sucha State, it is the Office of the Contracting State of which he is a national. In the case ofaninternational application governed exclusively by the Protocol, these restrictions on thechoice ofOffice of origin (sometimes referred to as the “cascade”) do not apply; the Office oforigin may bethe Office of any Contracting Party with respect to which a person or entity fulfills one ormore ofthe above conditions.5.322 An international application must designate one or more Contracting Parties (notthe

Contracting Party whose Office is the Office of origin) in which the mark is to beprotected. FurtherContracting Parties may be designated subsequently. A Contracting Party may bedesignated only ifthat Contracting Party and the Contracting Party whose Office is the Office of origin areboth partyto the same treaty, that is, the Agreement or the Protocol.5.323 The designation of a given Contracting Party is made under that treaty which iscommon tothat Contracting Party and the Contracting Party whose Office is the Office of origin.Where bothContracting Parties are party to both the Agreement and the Protocol, it is theAgreement whichgoverns the designation; this follows from the so-called “safeguard” clause, Article9sexies of theProtocol. It follows that there are three kinds of international application:- an international application governed exclusively by the Agreement; this means thatall thedesignations are made under the Agreement;- an international application governed exclusively by the Protocol; this means that allthedesignations are made under the Protocol;Chapter 5 - International Treaties and Conventions on Intellectual Property 289- an international application governed by both the Agreement and the Protocol; thismeansthat some of the designations are made under the Agreement and some under theProtocol.5.324 An international application must be presented to the International Bureauthrough theOffice of origin. It must contain, inter alia, a reproduction of the mark (which must beidenticalwith that in the basic registration or basic application) and a list of the goods andservices for whichprotection is sought, classified in accordance with the International Classification ofGoods andServices (Nice Classification). If the international application is governed exclusively bytheagreement, it must be in French; if it is governed exclusively by the Protocol or by boththeAgreement and the Protocol, it may be in either English or French, though the Office oforigin mayrestrict the applicant’s choice to one of these languages.5.325 An international application may claim priority under Article 4 of the ParisConvention,whether from the application with the Office of origin or from a prior application withanotherOffice, which need not be the Office of a party to the Agreement or Protocol.5.326 The international application is subject to the payment of the following fees:- the basic fee;- a complementary fee in respect of each designated Contracting Party for which noindividual fee is payable;

- an individual fee in respect of any Contracting Party which is designated under theProtocoland has declared that it wishes to receive such a fee the amounts of the individual feesaredetermined by the respective Contracting Parties and are published in the Gazette; eachofthese Contracting Parties has the possibility, under the Common Regulations, to specifythatsuch a fee is to be paid in two parts (the first part being payable at the time of filing andthe second part when – and provided that – the Office concerned is satisfied that themarkqualifies for protection);- a supplementary fee in respect of each class of goods and services beyond the thirdclass; nosupplementary fee is payable, however, where all the designations are ones in respectofwhich an individual fee has to be paid.5.327 These fees may be paid direct to the International Bureau or, where the Office oforiginaccepts to collect and forward such fees, through that Office. The individual fees aretransferred bythe International Bureau to the Contracting Parties in respect of which they have beenpaid,whereas the complementary and supplementary fees are distributed among theContracting Partiesnot receiving individual fees in proportion to the number of designations made for eachof them.5.328 The Office of origin must certify that the mark is the same as that in the basicregistration orbasic application, that any indications such as a description of the mark or a claim tocolor as adistinctive feature of the mark are the same as those contained in the basic registrationor basicapplication, and that the goods and services indicated in the international applicationare coveredby the list of goods and services in the basic registration or basic application. The Officeof originmust also certify the date on which it received the request to present the internationalapplication;provided the application is received by the International Bureau within two months ofthat date(and provided that certain crucial elements are not missing), it is that date that will bethe date ofthe international registration.290 WIPO Intellectual Property Handbook: Policy, Law and Use5.329 The International Bureau checks that the international application complies withtherequirements of the Agreement or Protocol and the Common Regulations, includingrequirementsrelating to the indication of goods and services and their classification, and that therequired fees

have been paid. The Office of origin and the holder are informed of any irregularities,which mustbe remedied within three months, otherwise the application will be consideredabandoned. Wherethe international application complies with the applicable requirements, the mark isrecorded in theInternational Register and published in the Gazette. The International Bureau thennotifies eachContracting Party in which protection has been requested.5.330 An international registration is effective for 10 years. It may be renewed forfurther periodsof 10 years on payment of the prescribed fees.Effects of the International Registration5.331 From the date of the international registration, the protection of the mark in eachof thecountries of the designated Contracting Parties is the same as if the mark had been thesubject ofan application for registration filed directly with the Office of that Contracting Party. If norefusal isnotified to the International Bureau within the relevant time limit, the protection of themark in thecountry of each designated Contracting Party is the same as if it had been registered bythe Officeof that Contracting Party.5.332 The effects of an international registration can be extended to a Contracting Partynotcovered by the international application by filing a subsequent designation. Theprinciples thatdetermine whether such a designation can be made, and whether it is governed by theAgreementor by the Protocol, are as described in paragraphs 5.312 and 5.313 above. A subsequentdesignation may be made where the Contracting Party concerned was not a party to theAgreement or Protocol at the time of the international application.Refusal of Protection5.333 Each designated Contracting Party has the right to refuse protection. Any refusalmust benotified to the International Bureau by the Office of the Contracting Party concernedwithin thetime limits specified in the Agreement or Protocol. The refusal is recorded in theInternationalRegister and published in the Gazette and a copy is transmitted to the holder of theinternationalregistration. Any subsequent procedure, such as review or appeal, is carried out directlybetweenthe holder and the administration of the Contracting Party concerned, without anyinvolvement onthe part of the International Bureau. The Contracting Party concerned must, however,notify theInternational Bureau of the final decision taken in respect of such review or appeal. Thisdecision isalso recorded in the International Register and published in the Gazette.

5.334 The time limit for a Contracting Party to notify a refusal is generally 12 months.Under theProtocol, however, a Contracting Party may declare that this period is to be 18 months,or longer inthe case of a refusal based on an opposition.5.335 The Office of the designated Contracting Party has the possibility, under theCommonRegulations, to issue a statement of grant of protection. The practical benefit resultingfrom such astatement of grant of protection is that the holder of the international registration doesnot have towait for the expiry of the refusal period to know whether his/her mark is protected in thecountryconcerned.Chapter 5 - International Treaties and Conventions on Intellectual Property 291Dependence on the Basic Mark5.336 For a period of five years from the date of its registration, an internationalregistrationremains dependent on the mark registered or applied for in the Office of origin. If, andto theextent that, the basic registration ceases to have effect, whether through cancellationfollowing adecision of the Office of origin or a court, through voluntary cancellation or through non-renewal,within this five-year period, the international registration will no longer be protected.Similarly,where the international registration was based on an application in the Office of origin, itwill becanceled if, and to the extent that, that application is refused or withdrawn within thefive-yearperiod, or if, and to the extent that, the registration resulting from that applicationceases to haveeffect within that period. The Office of origin is required to notify the InternationalBureau of factsand decisions concerning such ceasing of effect or refusal and, where appropriate, torequest thecancellation (to the extent applicable) of the international registration. Such cancellationispublished in the Gazette and notified to the designated Contracting Parties.5.337 After the expiry of this period of five years, the international registration becomesindependent of the basic registration or basic application.Changes in the International Register and Cancellation5.338 A change in the name or address of the holder may be recorded in theInternationalRegister on request. Likewise a change in the ownership of an international registrationmay berecorded, in respect of all or some of the goods and services and all or some of thedesignatedContracting Parties. A person may, however, be recorded as the holder of aninternationalregistration in respect of a given Contracting Party only if he would be entitled (on thebasis of

establishment, domicile or nationality, as described in paragraphs 5.309 and 5.310) todesignatethat Contracting Party in an international application.5.339 The following may also be recorded in the International Register:- a limitation of the list of goods and services in respect of all or some of the designatedContracting Parties;- a renunciation in respect of some of the designated Contracting Parties for all thegoodsand services;- a cancellation of the international registration in respect of all the designatedContractingParties for all or some of the goods or services.5.340 Such changes and cancellation are published in the Gazette and notified to otherdesignated Contracting Parties.5.341 No change may be made in the mark that is the subject of an internationalregistration,either on renewal or at any other time. Nor may the list of goods and services bechanged in a waythat would extend the scope of protection.5.342 Provision has also been made, in the Common Regulations, for the recording, intheInternational Register, of licenses relating to international registration. Thus, holders ofinternational registrations are not required to record such licenses in each of theContracting Partiesconcerned.292 WIPO Intellectual Property Handbook: Policy, Law and UseBecoming Party to the Agreement or Protocol5.343 Any State which is a party to the Paris Convention for the Protection of IndustrialPropertymay become a party to the Agreement or the Protocol or both. In addition, anintergovernmentalorganization may become a party to the Protocol (but not the Agreement) where thefollowingconditions are fulfilled: at least one of the Member States of the organization is a partyto the ParisConvention and the organization maintains a regional office for the purposes ofregistering markswith effect in the territory of the organization.5.344 States party to the Agreement and/or the Protocol and organizations party to theProtocolare referred to collectively as Contracting Parties. A list of the Contracting Parties is tobe found inthe appropriate document inserted in the back flap of this volume.5.345 Every member of the Madrid Union is a member of its Assembly. Among the mostimportant tasks of the Assembly are the adoption of the program and budget of theUnion and theadoption and modification of the implementing regulations, including the fixing of feesconnectedwith the use of the Madrid system.Advantages of the System5.346 International registration has several advantages for the owner of the mark. After

registering the mark, or filing an application for registration, with the Office of origin, hehas only tofile one application in one language with one Office, and to pay fees to one Office; this isinstead offiling separately with the Trademark Offices of the various Contracting Parties indifferentlanguages, and paying a separate fee to each Office. Similar advantages exist when theregistrationhas to be renewed or modified.5.347 International registration is also to the advantage of Trademark Offices. Forexample, theydo not need to examine for compliance with formal requirements, or classify the goodsor services,or publish the marks. As stated above, the individual and other designation feescollected by theInternational Bureau are transferred to the Contracting Parties in which protection issought.Furthermore, if the International Registration Service closes its biennial accounts with aprofit, theproceeds are divided among the Contracting Parties.5.348 Statistical indications of the success of the system can be found in the relevantdocument inthe back flap of this volume. Further information concerning the system of internationalregistrations of marks, including the updated list of Contracting Parties to theAgreement and theProtocol and the fees, the latest annual statistics and the full text of the Agreement,Protocol andCommon Regulations, as well as the text of the Guide to the International Registration ofMarks, isalso available on WIPO’s website (www.wipo.int) under the heading “Madrid System.”Chapter 5 - International Treaties and Conventions on Intellectual Property 293The Hague Agreement Concerning the International Deposit ofIndustrialDesignsIntroduction5.349 On November 6, 1925, the Hague Agreement Concerning the InternationalDeposit ofIndustrial Designs (hereinafter referred to as “the Hague Agreement”) was adoptedwithin theframework of the Paris Convention. The Agreement entered into force on June 1, 1928,and hasbeen revised and supplemented several times. Two Acts of the Hague Agreement arecurrently inforce: the London Act of 1934 and the Hague Act of 1960 (referred to respectively as“the 1934Act” and “the 1960 Act”). These two Acts are autonomous and totally independent ofeach other.Each of them, in other words, in itself constitutes a fully-fledged international treaty. Thegeneralremarks in paragraphs 5.338 and 5.339 apply to both of these Acts. However, sincearound 95%

of international deposits are effected under the 1960 Act, the subsequent detaileddescription ofthe provisions relates to that Act. A further Act, the Geneva Act of 1999, which is not yetin force, is described in paragraphs 5.359 to 5.361.The Principle of International Deposit5.350 The main aim of the international deposit of industrial designs is to enableprotection to beobtained for one or more industrial designs in a number of States through a singledeposit filedwith the International Bureau of WIPO. Under the Hague Agreement, any person entitledto effectan international deposit has the possibility of obtaining, by means of a single depositmade with theInternational Bureau of WIPO, protection for his industrial designs in Contracting Statesof theAgreement with a minimum of formalities and expense.5.351 The applicant is thus relieved of the need to make a separate national deposit ineach of theStates in which he requires protection, thus avoiding the inherent complication ofprocedures thatvary from one State to another.Main Provisions of the Hague Agreement5.352 An international deposit may be made by any natural or legal person who is anational ofone of the Contracting States or has his domicile or a real and effective industrial orcommercialestablishment in one of those States.5.353 An international deposit does not require any prior national deposit. It is madedirectly withthe International Bureau of WIPO by the depositor or his representative on a formprovided free ofcharge by the International Bureau. It may, however, be made through the nationalOffice of aContracting State if the law of such State so permits (Article 4(1)). The law of aContracting Statemay also require, in cases where that State is the State of origin, that the internationaldeposit bemade through the national Office of that State. Non-compliance with this requirementdoes notprejudice the effects of the international deposit in the other Contracting States (Article4(2)).294 WIPO Intellectual Property Handbook: Policy, Law and Use5.354 The owner of an international deposit enjoys the priority right afforded underArticle 4 ofthe Paris Convention for the Protection of Industrial Property if he claims this right and iftheinternational deposit is made within six months of the first national, regional orinternationaldeposit made in, or having effect in, a State party to the Paris Convention or a Memberof theWorld Trade Organization.

5.355 A single international deposit may comprise several designs, up to a maximum of100. Allthe designs in a single deposit must however be in, or be intended for incorporation inarticles listedin, the same class of the International Classification (Locarno Classification).5.356 International deposit is subject to the payment of fees, in Swiss francs, theamounts ofwhich are decided by the Assembly of the Hague Union.5.357 The working languages for the implementation of the 1960 Act of the HagueAgreementare English and French. An international application may be filed in either of theselanguages, atthe choice of the applicant. International deposits and any amendment affecting themare enteredin the international register and published in both English and French. Anycorrespondencebetween the International Bureau and the depositor is in the language in which theinternationalapplication was filed.5.358 The international deposit has the same effect in each of the States designated bytheapplicant as if the designs included in the deposit had been directly deposited in thatState on thedate of the international deposit, and as if all formalities required by domestic law hadbeencomplied with and all administrative acts required for the grant of protection had beenaccomplished, subject to the right to refuse protection on substantive grounds (seeparagraphs 5.350 and 5.351).5.359 An international deposit shall, however, have no effect in the State of origin if thelaws ofthat State so provide.5.360 International deposits are published by the International Bureau in theInternational DesignsBulletin, a publication which is distributed on a monthly basis and only on CD-ROM.Publicationcomprises, in particular, a reproduction of the article or articles in which the depositeddesigns areto be incorporated. The national Office of each Contracting State is entitled to receivefree ofcharge from the International Bureau a certain number of copies of the Bulletin.5.361 The depositor may ask for publication to be deferred for a period of his choice,which maynot, however, exceed 12 months as from the date of the international deposit or, whereappropriate, from the date of priority claimed.5.362 Any Contracting State whose domestic legislation offers the possibility of refusingprotection, as the result of an administrative ex officio examination or of opposition by athird party,may refuse protection for any industrial design not meeting the requirements of itsdomestic law.Refusal of protection may not, however, extend to the formalities and otheradministrative acts that

must be considered by each Contracting State as having been accomplished as of thetime theinternational deposit is recorded at the International Bureau. No Contracting State mayrequire, inparticular, publication of the international deposits other than that made by theInternationalBureau.5.363 Refusal of protection must be notified to the International Bureau within sixmonths of thedate on which the national Office received the issue of the Bulletin in which theinternationaldeposit concerned was published. The International Bureau transmits a copy of therefusal to theChapter 5 - International Treaties and Conventions on Intellectual Property 295depositor, who has the same remedies against the decision to refuse as he would havehad if hehad deposited the design or designs concerned with the Office that has taken thedecision torefuse. Where no refusal is notified within the period of time referred to above, theprotection ofthe designs included in the international deposit is the same as if the deposit had beenentered inthe national register of the State concerned.5.364 An international deposit is made for an initial term of five years. It can berenewed at leastonce, for an additional period of five years, for all or part of the designs included in thedeposit, orfor all or some only of the States in which it has effect. For those Contracting Stateswhosedomestic legislation allows a term of protection of more than 10 years for nationaldeposits, aninternational deposit may be renewed more than once, in each case for an additionalperiod of fiveyears, with effect in each such State up to expiry of the total allowed term of protectionfor nationaldeposits under that State’s domestic legislation.Benefits of Accession to the Hague Agreement5.365 Nationals of a member State of the Hague Union are able to obtain protection fortheirdesigns in a number of States with a minimum of formalities and expense. In particular,they arerelieved of the need to make a separate national deposit in each of the States in whichthey requireprotection, thus avoiding the complications arising from procedures which differ fromState toState. They do not have to submit the required documents in various languages norkeep a watchon the deadlines for renewal of a whole series of national deposits, varying from oneState to theother. They also avoid the need to pay a series of national fees and agents’ fees invarious

currencies. Under the Hague Agreement, the same results can be obtained by means ofa singleinternational deposit, made in one language, on payment of a single set of fees, in onecurrencyand with one Office (i.e. the International Bureau).5.366 The simplification of the formalities and the reduction of the cost of obtainingprotectionabroad favorably influence the development of foreign trade. Domestic manufacturersand tradersare encouraged to apply for protection of their designs in the States party to the HagueAgreementand to export their products to those States. International deposits therefore assistdomesticmanufacturers and traders who are export-oriented.5.367 The manufacturers and traders in other States party to the Hague Agreement are,in turn,able to protect their designs more easily in a State which has acceded to the Agreementand thushave more incentive to export their products to that State. The result is a growth intrade and anincreased likelihood of new industrial and commercial activities being set up on theterritory of thenew member State, thus promoting its economic development.5.368 A part of the fees paid by depositors is distributed each year, by the InternationalBureau, tothe competent authorities of the States party to the Hague Agreement.5.369 The Offices of the Contracting States have no specific tasks in the implementationof theHague Agreement, except in those cases where the domestic or regional legislation ofthe Statepermits or requires the international deposit to be effected through them or lays down anoveltyexamination for deposited designs.5.370 A list of States party to the Hague Agreement Concerning the InternationalDeposit ofIndustrial Designs is to be found in the appropriate document inserted in the back flapof thisvolume. Further information concerning the system of international deposit of industrialdesigns,296 WIPO Intellectual Property Handbook: Policy, Law and Useincluding the updated list of Contracting States and the fees, the latest annual statisticsand the fulltexts of the Agreement, Regulations and Administrative Instructions, is also available onWIPO’swebsite (www.wipo.int) under the heading “Hague system.”The Geneva Act of the Hague Agreement5.371 By 1990, only 29 countries were party to the Hague Agreement. Absent from itwereseveral countries active in the field of industrial designs, such as Japan, the UnitedKingdom, theUnited States of America and the Scandinavian countries. Moreover, only around

4,000 international deposits were filed each year. For these reasons, a DiplomaticConference washeld in June/July 1999 in order to conclude a new Act of the Hague Agreement, aimed atmakingthe system more responsive to the needs of users and facilitating adherence bycountries whoseindustrial designs systems do not permit them to accede to the 1960 Act. This latestAct, known asthe Geneva Act, will introduce into the Hague system a number of new features,including:- the possibility for a Contracting Party to declare that the standard time limit of sixmonthsallowed for it to refuse protection shall be replaced by 12 months;- the possibility for an applicant to request deferment of publication of his designs for upto30 months; however, a Contracting Party may declare that, where it is designated, theperiod of deferment will be of a lesser duration (specified in the declaration), or todeclarethat, where it is designated, the request for deferment shall be disregarded; in the lattercase, the design will be published six months after the date of the internationalregistrationunless the application requests immediate publication;- the possibility, where the design is two-dimensional and deferment of publication isrequested, of filing specimens of the design instead of reproductions;- the possibility for a Contracting Party to opt to receive, instead of a standarddesignation feefixed in the schedule of fees, an individual fee whose amount is fixed by thatContractingParty but may not be higher than the amount it would receive in respect of a grant ofprotection at the national level; where, in the national system, there are separate feesforapplication and grant, the individual fee may similarly be payable in two parts;- while normally it is possible to designate the applicant’s own country, a ContractingPartymay close this option, thereby avoiding the risk that it is overwhelmed by applicationsfromits own nationals coming via the international route in English or French;- in addition, provision is made for a Contracting Party to notify a number of specialrequirements concerning such matters as the mandatory contents of the application,therequired number of reproductions of the design, unity of design or the entitlement of anapplicant to file the application.5.372 Furthermore, the Geneva Act provides for accession not only by States but also byanyintergovernmental organization which maintains an Office in which protection ofindustrial designsmay be obtained with effect in its territory.5.373 Article 33(2) of the Geneva Act provides for it to remain open for signature for oneyearafter its adoption. At the expiry of this period, 29 States had signed the treaty. Accordingto

Article 28(2), it will enter into force three months after six States have ratified oracceded, providedChapter 5 - International Treaties and Conventions on Intellectual Property 297that three of them have a certain minimum level of activity (specified in that provision)in the field ofindustrial designs.The Trademark Law Treaty (TLT)Introduction5.374 The Trademark Law Treaty was adopted on October 27, 1994, at a DiplomaticConferencein Geneva. The purpose of the Trademark Law Treaty is to simplify and harmonize theadministrative procedures in respect of national applications and the protection ofmarks. Individualcountries may become party to the Treaty, as well as intergovernmental organizationswhichmaintain an office for the registration of trademarks with effects in the territory of itsmemberStates, such as the European Union (EU) and the African Intellectual PropertyOrganization (OAPI).The provisions of the Treaty are supplemented by the Regulations and ModelInternational Forms.The Treaty does not deal with the substantive parts of trademark law covering theregistration ofmarks. The Treaty entered into force on August 1, 1996.Provisions of the Treaty and the RegulationsMarks to Which the Treaty Applies5.375 According to Article 2, the Treaty applies to marks for goods and services. Not allcountriescurrently register service marks and an effect of accession by a country to the Treaty is,therefore,that the country will be obliged to register such marks. In addition, such a country isalso obliged,according to Article 16, to apply the provisions of the Paris Convention which concerntrademarksto service marks.5.376 Collective marks, certification marks and guarantee marks are not covered by theTreaty,since the registration of these marks normally requires the fulfillment of special, vastlyvaryingconditions in the different countries, which would make harmonization particularlydifficult.Holograms and non-visible signs, such as sound marks and olfactory marks are alsoexcluded fromthe scope of application, because they are not easily reproduced by graphic means andbecauseonly very few countries provide for the protection of these marks in their national law.5.377 A registrable mark must consist of visible signs, and, as far as three-dimensionalmarks areconcerned, only those countries that accept three-dimensional marks for registrationare obliged toapply the Treaty to such marks.Applications

5.378 Article 3 of the Treaty contains an exhaustive list of information which may berequired byan Office in respect of an application for the registration of a trademark. Suchindications are, forexample, the name and address of the applicant and of the representative, if any, adeclaration ofpriority if priority of an earlier application is claimed, one or more reproductions of themarkdepending on the colors or dimensions of the mark, names of the goods or services forwhichregistration is sought grouped according to the classes of the Nice Classification, or adeclaration of298 WIPO Intellectual Property Handbook: Policy, Law and Useintention to use the mark or of actual use. No Office may require other information thanthatreferred to in the Treaty, such as an extract from a Commercial Register, an indicationthat theapplicant is carrying out an industrial or commercial activity or that the applicant iscarrying out anactivity corresponding to the goods or services listed in the application.5.379 The same application may relate to several goods or services. According to Article6 of theTreaty, the Office must accept the application irrespective of whether the goods orservices belongto several classes of the Nice Classification. In this case the application must lead to asingleregistration.5.380 An Office cannot refuse an application in writing on paper if it is on a formcorrespondingto the model application form contained in the Regulations or, where the transmittal ofcommunications to the Office by facsimile link is allowed, the paper copy resulting fromsuchtransmittal corresponds to the application form.Representation5.381 Article 4 of the Treaty allows a Contracting Party to require that the representativeof anapplicant or a holder be a representative admitted to practice before its Office, and thata personwith neither a domicile nor a real and effective industrial or commercial establishmenton itsterritory be so represented. According to this provision the power of attorney may relateto severalexisting or future applications or registrations.Filing Date5.382 The grant of a filing date is essential in view of the rights which come intoexistence on thatdate, and in view of the possibility of claiming a right of priority effective from the saiddate inrespect of successive applications in other countries. Article 5 of the Treaty provides forthemaximum information that an Office may require for the grant of a filing date. Theseinclude the

identification of the applicant, information sufficient to contact the applicant or hisrepresentative, areproduction of the mark, a list of the goods and services for which registration issought, etc. Inaddition, for granting a filing date, an Office may require the payment of a fee if thenationaltrademark law applied this condition before that country adhered to the Treaty.Division of the Application and of the Registration5.383 If registration of a trademark is refused in respect of certain goods or services,Article 7 ofthe Treaty provides that the applicant can divide the application in order to avoid anydelay inobtaining registration for the trademark on the goods or services that have not beenrefused, andstill keep the filing date of the initial application or the priority date, if any. At the sametime theapplicant may proceed with an appeal regarding the application concerning the goodsor serviceswhich have been refused.5.384 The same option of division is recognized for registrations whose validity isdisputed by athird party, or in the course of any appeal against a decision taken by the IndustrialProperty Officein connection with such a procedure.Signature5.385 Article 8 of the Treaty contains provisions in respect of the signature and othermeansallowing the identification of the source of a communication such as the filing of anapplication tothe Office, in particular where the transmission of the communication is by facsimile orelectronicChapter 5 - International Treaties and Conventions on Intellectual Property 299means. Instead of a handwritten signature, the Office may accept a printed or stampedsignatureor the use of a seal. Of special importance is the prohibition of requirements for theattestation,notarization, authentication, legalization or other certification of the signature, exceptwhere thesignature concerns the surrender of a registration, if such an exception is prescribed inthe nationallaw.Changes and Corrections Concerning Applications and Registrations5.386 The Treaty sets forth in Articles 10 and 11 the requirements that apply to requestsforchanges in name, address and ownership to be recorded. Article 12 contains themaximumrequirements that an Office may request for the correction of mistakes made by anapplicant orholder in any communication to the Office, which is reflected in the register. Theprovisions inArticles 10 to 12 apply equally to changes or corrections in respect of applications andregistrations.

These provisions provide that a single request is sufficient even where the changes orcorrectionsrelate to several applications or registrations or to both. The request must clearlyidentify thepresent relevant information held by the Office and the changes or correctionsrequested. TheOffice may not ask for further information than that mentioned in the Treaty, exceptwhere theOffice may reasonably doubt the veracity of the information received, for example if itsuspects thata change in name and address is in fact a change in ownership. In particular, the Officeis notallowed to require the furnishing of any certificate concerning the change of a name oraddress,evidence to the effect that the new owner carries on an activity corresponding to thegoods orservices affected by the change in ownership, or that the holder transferred his businessto the newowner.5.387 In case of a request for a change in ownership to be recorded the Office may,according toArticle 11, require a certified copy or extract of the contract, a certificate of transfer andadocument of transfer. Where the change in ownership results from a merger or from anoperationof law or a court decision, for example in case of inheritance or bankruptcy, the Officemay requirethat the request be accompanied by a certified copy of a document evidencing thechange inownership.5.388 A mistake made by the Office must be corrected ex officio or on request.Duration and Renewal of Registration5.389 Article 13 of the Treaty provides for a duration of 10 years for the initial period ofregistration of the trademark with a possibility of renewal for further ten-year periods.With respectto renewal, the provision enumerates the maximum requirements that an Office canimpose. Thesecorrespond to those in respect of the filing of an application. In particular, the Officemay not, forthe purposes of effecting the renewal, examine the registration as to the substance orrequest areproduction of the mark or the furnishing of evidence concerning use of the mark.Other Provisions in the Treaty5.390 Where it is intended to refuse a request for a change of name, address andownership, forthe correction of a mistake or for renewal to be recorded, the Office must, according toArticle 14,give the requesting party an opportunity to make observations on the intended refusalwithin areasonable time limit.5.391 In general, where the Treaty sets forth the maximum requirements that an Officemay

request in respect of applications, representation, renewal, etc., the Office is entitled torequirefurther information if it may reasonably doubt the veracity of the information received.300 WIPO Intellectual Property Handbook: Policy, Law and Use5.392 The Treaty further allows an Office to request that any filing or communication toberegistered must be submitted in the language, or in one of the languages, admitted bythe Office.Compliance with other Conventions5.393 The Trademark Law Treaty contains no obligations for a Contracting Party to beparty toother international conventions. However, it provides in Article 15 that ContractingParties mustcomply with the provisions in the Paris Convention which concern marks. It follows fromArticle 3concerning the filing of an application that Contracting Parties must ensure that the NiceClassification is applied in respect of the grouping of the names on goods and servicesin theapplication.Regulations and Model International Forms5.394 The provisions of the Treaty are supplemented by the Regulations, which providerulesconcerning details useful in the implementation of the provisions on administrativerequirementsand procedures according to the Treaty. The rules apply to the requirements in respectofapplications, representation, filing date, signature, duration, renewal, the manner ofindicatingnames and addresses and the identification of an application without its applicationnumber. Therules prescribe, for example, the number of reproductions of the mark that shouldaccompany theapplication, time limits concerning the payment of fees and other communications tothe Officesuch as the filing of the power of attorney, invitation to make corrections in case ofnon-compliance, etc.5.395 The Regulations also contain eight Model International Forms which concern thefiling of anapplication, the requests for renewal, for changes of name, address and ownership to berecorded,correction of mistakes, appointment of a representative, certificates of transfer andtransferdocuments. In cases where the request of information is not required under national lawbutnevertheless permitted according to the Treaty, for example in respect of an application,the Officemay prepare an “Individualized International Form.” This form must not containmandatoryrequirements additional to or contrary to the Treaty or the Regulations. By using theModelInternational Forms or the Individualized International Forms, applicants and otherparties are

assured that no Office of a Contracting Party can refuse an application or a request onthe basis ofthe forms.Transitional Provisions5.396 The transitional provisions of the Treaty allow a Contracting Party to postpone theconformity of its national trademark law with the Treaty at the latest by October 28,2004, inrespect of, for example, the multiple class application system, prohibition ofrequirementsconcerning certification of signature of an application and a power of attorney, andconcerningfurnishing of a declaration and/or evidence of use on the occasion of renewal of atrademarkregistration, and concerning substantive examination on the occasion of renewal.5.397 A list of States which have signed the Trademark Law Treaty is to be found in theappropriate document inserted in the back flap of this volume.Chapter 5 - International Treaties and Conventions on Intellectual Property 301The Patent Law Treaty (PLT)Introduction5.398 The Patent Law Treaty (PLT) was adopted on June 1, 2000 at a DiplomaticConference inGeneva. The purpose of the PLT is to harmonize and streamline formal procedures inrespect ofnational and regional patent applications and patents. With a significant exception forthe filingdate requirements, the PLT provides maximum sets of requirements which the Office ofaContracting Party may apply: the Office may not lay down any additional formalrequirements inrespect of matters dealt with by this Treaty.5.399 Any State which is party to the Paris Convention for the Protection of IndustrialProperty orwhich is a member of WIPO may become party to the PLT. In addition, anyintergovernmentalorganization may become party to the Treaty if the following conditions are fulfilled: (i)at least oneof the Member States of the organization is party to the Paris Convention or a memberState ofWIPO; (ii) the organization has been duly authorized to become party to the Treaty inaccordancewith its internal procedures; (iii) the organization is competent to grant patents witheffect for itsmember States, or it has own legislation binding on all its member States concerningmatterscovered by the Treaty and has, or has designated, a regional Office for the purpose ofgrantingpatents.Provisions of the Treaty and the RegulationsApplications and Patents to Which the Treaty Applies5.400 According to Article 3, the Treaty applies to national and regional applications thatare

applications for patents for invention, applications for patents of addition and divisionalapplicationsfor patents for invention or for patents of addition. These terms are to be construed inthe samesense as the corresponding terms in Article 2(i) of the Patent Cooperation Treaty (PCT).The PLTalso applies to international applications for patents for invention and for patents ofaddition filedunder the PCT once the international applications have entered into the “nationalphase.” It alsoapplies to the time limits for the entry of international applications into the nationalphase underPCT Articles 22 and 39(1).5.401 As regards patents, the Treaty applies to all patents for invention, and to patentsofaddition, that have been granted by the Office of a Contracting Party or by anotherOffice on behalfof that Contracting Party.Filing Date Requirements5.402 The grant of a filing date is essential to deciding who has priority for the grant ofa patent ineach country and to determining prior art and the patentability of the invention. It isalso relevantto claiming a right of priority under the Paris Convention as well as to the calculation ofthe term ofpatent protection.5.403 Article 5 of the Treaty sets up requirements for obtaining a filing date andprocedures toavoid loss of the filing date because of a failure to comply with other formalityrequirements. In302 WIPO Intellectual Property Handbook: Policy, Law and Useprinciple, the Office of any Contracting Party shall accord a filing date to an applicationon the basisof three elements. These are: (i) an indication that what was filed is intended to be apatentapplication; (ii) indications which identify the applicant and/or allow the applicant to becontacted;and (iii) a part which on the face of it appears to be a description. A Contracting Partymay,however, accept evidence that establishes the identity of, or allows a contact to, theapplicant in theplace of indications referred to in (ii) above, or accept a drawing in the place of a partreferred to in(iii) above. Further, for the purpose of obtaining a filing date, an applicant may file adescription inany language, although he/she may need to file a translation later.5.404 Article 5 also provides for the rules to establish a filing date where a part of thedescriptionor drawing is missing from the initially filed application, or where the descriptions and/ordrawingsare replaced by a reference to another application.Standardized Application and Forms

5.405 The Treaty establishes a single internationally standardized set of formalrequirements fornational and regional applications. In order to avoid having international “doublestandards,” theformal requirements in respect of international applications under the PCT areincorporated into thePLT, wherever appropriate.5.406 First, in accordance with Article 6(1), the requirements relating to the form orcontents ofinternational applications under the PCT, both concerning the international phase andthe nationalphase, are incorporated by reference into the PLT, with minor exceptions. Second, thecontents ofthe “request” of an international application under the PCT are also incorporated byreference intothe PLT (Article 6(2)(a)). Third, Rule 3(2) provides that a Contracting Party shall acceptrequest formsthat are based on the PCT request form.5.407 In addition to the request form, the Treaty provides for the establishment ofseveraladditional Model International Forms that have to be accepted by all Offices ofContracting Parties(Article 8(3)). These Forms, which will be established by the Assembly, relate to thefollowingcommunications (Rule 20(1)): (i) a power of attorney; (ii) a request for recordation ofchange inname or address; (iii) a request for recordation of change in applicant or owner; (iv) acertificate oftransfer; (v) a request for recordation, or cancellation of recordation, of a license; (vi) arequest forrecordation, or cancellation of recordation, of a security interest; and (vii) a request forcorrectionof a mistake. By using the Model International Forms, that is, filling in a single form andfiling itwith any Office of a Contracting Party, applicants and other parties are assured that noOffice mayrefuse the communication on the basis of non-compliance with formality requirements.Simplified Procedures Before the OfficeRestriction on Mandatory Representation5.408 The Treaty allows a Contracting Party to require that an applicant, owner or otherinterestedperson appoint a representative for the purposes of any procedure before the Office,except forcertain procedures (Article 7(2)). These procedures are: (i) the filing of an application forthepurposes of the filing date; (ii) the mere payment of a fee; (iii) the filing of a copy of anearlierapplication for the purpose of establishing a filing date where a part of the descriptionor a drawinghas been missing from the initial filing; (iv) the filing of a copy of a previously filedapplication for

the purpose of establishing a filing date where the description and any drawings havebeenreplaced by a reference; (v) the issue of a receipt or notification by the Office in respectof anyprocedure under (i) to (iv). Although an applicant or owner may carry out theseprocedures vis-à vispatent Offices in foreign countries without engaging any representative, in accordancewithChapter 5 - International Treaties and Conventions on Intellectual Property 303Article 8(6) and Rule 10(2), a Contracting Party may require that the applicant or ownernevertheless provide an address for correspondence and/or for legal service on theterritory of thatcountry.Restriction on Requiring Evidence5.409 In order to reduce any unnecessary burden on applicants, the PLT provides thatevidence insupport of formal contents of an application, declarations of priority or theauthentication oftranslations may only be required where the Office has a reasonable doubt as to theveracity of theindications or the accuracy of the translation submitted by the applicant (Article 6(6)).Such alimitation with respect to evidence is also applicable to the indications contained inothercommunications such as a power of attorney (Rule 7(4)), a request for recordation ofchange inname or address (Rule 15(4)) etc.5.410 However, with regard to a request for the recording of a change of applicant orowner or arequest for recording, or cancellation of the recording, of a license or a security interest,the PLTexpressly allows a Contracting Party to require limited documentation supporting thefact of suchchange or license, as the case may be.5.411 As regards signature, a Contracting Party may require evidence only where theOffice has areasonable doubt as to its authenticity (Article 8(4)(c)). Otherwise, the Office cannotrequire anyattestation, notarization, authentication, legalization or other certification of a signature(Article 8(4)(b)), except in the case of so called “digital signatures” (Rule 9(6)).Restriction on Requirements to Submit a Copy of an Earlier Application and Translationthereof5.412 Rule 4(3) prohibits a Contracting Party to require a copy or a certified copy of theearlierapplication or the previously filed application if such earlier application or previouslyfiled applicationhas been filed with the Office of that Contracting Party. The same applies to the caseswhere theOffice could obtain the copy or the certification from other Offices through a digitallibrary which isaccepted by that Office for that purpose. Further, Rule 4(4) provides that the Office mayrequire a

translation of the earlier application only where the validity of the priority claim isrelevant to thedetermination of whether the invention concerned is patentable.Single Communication5.413 The PLT allows an applicant or owner to consolidate a number of similar requestsin onecommunication under certain circumstances (Rule 7(2)(b)). For example, a ContractingParty shallaccept a single power of attorney if it relates to one or more applications and/or patentsof thesame person.Avoiding Loss of Rights5.414 The Treaty provides procedures for the avoidance of unintentional loss of rights asa resultof failure to comply with formality requirements.Relief in Respect of Time Limits and Reinstatement of Rights5.415 The PLT provides three types of relief procedures. The first is an extension of thetime limit,for at least two months, where an applicant or owner requests the extension prior to theexpirationof the time limit (Article 11(1)(i)). The second is an extension of the time limit, for atleast twomonths, where an applicant or owner requests the extension after the expiration of theunobserved304 WIPO Intellectual Property Handbook: Policy, Law and Usetime limit (Article 11(1)(ii)). The third is continued processing (Article 11(2)). AContracting Party isnot obliged to provide the first type of extension. However, it is obliged to provide eitherthesecond type of extension or continued processing, if the circumstances meet therequirementsunder the Treaty and the Regulations. Relief under these provisions is limited to non-compliancewith a time limit fixed by the Office for an action in a procedure before the Office. Itdoes not applyto time limits fixed by legislation.5.416 The PLT also provides safeguard provisions if an applicant or owner fails to meet atime limitand, as a consequence, loses his rights with respect to an application or patentunintentionally or inspite of all due care required by the circumstances (Article 12). Reinstatement of rightsshall begranted if a request to that effect is made, and all the relevant requirements arecomplied with,within a time limit of not less than two months from the date on which the reason of thenon-compliance with the time limit is removed, or of not less than 12 months from theexpiration ofthe missed time limit, whichever is shorter (Rule 13(2)). In contrast to the relief inrespect of timelimits, reinstatement of rights is applicable to all time limits, including time limits set bylegislation.Correction and Addition of Priority Claim and Restoration of Priority Right

5.417 As in the case of international applications under the PCT (PCT Rule 26bis), Article13(1) andRule 14(1) to (3) provide for the possibility of addition and correction of priority claimsfornational/regional applications.5.418 The PLT also provides for a remedy for the loss of a priority right due tounintendednon-compliance with related time limits in two cases. The first is, where an application isfiled afterthe expiration of the 12-month priority period, under certain conditions, an applicant isentitled tothe restoration of the priority right if the failure to claim a priority within 12 monthsoccurred inspite of all due care taken by the applicant, or was unintentional and the circumstancesmeetcertain conditions (Article 13(2)). The application has to be filed, and a request forrestorationmade, within a time limit, which must not be less than two months from the date onwhich thepriority period expired, but before the completion of any technical preparation forpublication of theapplication.5.419 The second is, where an applicant cannot submit a copy of an earlier applicationwithin 16months from the priority date because of a delay in the Office with which the earlierapplicationwas filed, in order to safeguard the applicant in such cases, Article 13(3) and Rule 14(6)and (7)provide for restoration of priority rights.Paper and Electronic Communication5.420 The goal of the PLT concerning paper and electronic filing is to facilitate theimplementationof electronic filing of applications and other communications, to the advantage of bothOffices andtheir users, while ensuring the co-existence of both paper and electroniccommunications at theglobal level. The principle under the PLT is that any Contracting Party is neither obligedto acceptthe filing of communications in electronic form or by electronic means (Article 8(1)(b))norobliged to exclude the filing of communications on paper (Article 8(1)(c)).5.421 Rule 8(1) provides that, in general, all Contracting Parties shall permit the filing ofapplications and communications on paper until June 2, 2005. After that date, aContracting Partymay implement full electronic filing (and so exclude paper filing), or it may continue toacceptpaper. However, even after June 2, 2005, applicants will be allowed to file applicationsandcommunications on paper in all Offices for the purposes of acquiring a filing date andcomplyingwith a time limit.Chapter 5 - International Treaties and Conventions on Intellectual Property 305

Advantages of the PLT5.422 From the viewpoint of inventors, applicants and patent attorneys, standardizationandsimplification of the formality requirements lead to a reduced risk of formality errors,and thus willresult in a less frequent loss of rights as well as in cost reductions. They may rely on afamiliar set ofpatent formalities in all countries party to the PLT, since the PCT provisions regardingform orcontent of an international application, which are incorporated by reference into the PLT,areknown to applicants and patent attorneys of many countries. Further, due to thepossibility ofcorrecting formality defects before the Offices and to the introduction of variousprocedurestending to avoid the loss of rights, they may face a reduced risk of loss of rights throughfailure tocomply with formality requirements.5.423 On the other hand, by eliminating unnecessarily complex procedures andstreamlining thewhole process, Offices may operate more efficiently, and therefore reduce their costs.Treaties on ClassificationIntroduction5.424 As early as the nineteenth century, it was recognized that in all the major fields ofindustrialproperty — patents, trademarks and industrial designs — it was essential to createclassificationsystems. The reasons were, immediately, administrative order for handling andregistration withinnational industrial property offices, and, progressively thereafter, organizeddocumentation tocreate conditions for easier retrieval, examination and other search procedures, and theneed forharmonization on an international scale, in order to facilitate and further promotegrowinginternational cooperation in these fields.5.425 Although the International Patent Classification (IPC) was among the laterclassificationagreements to be signed, it is dealt with below as the first, to reflect its particularworldwideimportance, its long antecedents and the volume of documentation that it hasgenerated.The Strasbourg Agreement Concerning the International Patent ClassificationIntroduction5.426 The industrial property offices, which have to handle such enormous numbers ofpatentdocuments, are faced with two different problems, namely, the administrativeprocessing of thepatent applications and the maintenance of the search files containing the publishedpatentdocuments. The search files are established for the purposes of carrying outdocumentary searches

necessary for the examination of patent applications and for retrieving the documentsrelevant tospecific technical fields. Special systems for arranging the patent documents arerequired to permitthe economical handling of patent applications and patent documents within the offices,and thegreater the number of patent documents, the better the system has to be.306 WIPO Intellectual Property Handbook: Policy, Law and Use5.427 On the one hand, patent applications have to be provided with a symbol ornumber foradministrative purposes, that is, for registration and handling within an industrialproperty office.For this purpose a serial number is usually used. On the other hand, patent applicationsalso haveto be provided with special symbols which relate to the technical field or fields to whichthe patentapplication relates. These symbols are required to assist the public concerned, forexample industry,and also to facilitate the orderly and classified arrangement of patent documents inorder to permitsearching and thereby the retrieval of documents relating to distinct technical subjectmatter. Thedevelopment of such special classification systems for patent documents becamenecessary becauseexisting classifications systems, as used in libraries for instance, proved unsuitable fortheclassification of patent documents. Different national classification systems were thuselaborated indifferent offices.5.428 National classification systems were established as early as in 1831 at the PatentOffice ofthe United States of America, in 1877 at the German Patent Office and in 1880 at theUnitedKingdom Patent Office. The initial system of mere registration of patent applications wasgraduallyabandoned and replaced by examination of patent applications, in the course of whichthe patentapplications were compared with existing national patent documents. The next step wastheinclusion of the universal state of the art in the area covered by the examination ofpatentapplications, in other words, the inclusion also of patent documents published by othercountries.For the purpose of this type of examination procedure, the industrial property officeswere obligedto search for distinct patent documents dealing with specific technical subjects, and tolocate themamong a great number of foreign patent documents bearing the symbols of othernationalclassification systems.5.429 One attempt at overcoming this problem was to establish concordance tablesbetween two

different national classification systems. But different concordance tables had to be setup between,on the one hand, a country’s own national classification and, on the other hand, each ofthe othernational classifications that were of interest. This method did not therefore offer anacceptablesolution.5.430 Another possibility for overcoming this problem was for each country to reclassifytheforeign patent documents according to its own national classification. This also provedto be anunacceptable solution because of the high number of documents which would have tobereclassified, the specialists required for such high-level technical work and the linguisticknowledgerequired for work with foreign-language patent documents. Thus, the need for aninternationalclassification system to solve these problems became more and more apparent.5.431 Many years of international cooperation, which started in 1956 under theauspices of theCouncil of Europe and the World Intellectual Property Organization (WIPO), resulted in1971 in theStrasbourg Agreement Concerning the International Patent Classification, and providedaworldwide forum for the International Patent Classification (IPC). It entered into force onOctober 7, 1975.Basic features of the IPC and its Utilization5.432 The IPC is based on an international multilateral treaty administered by WIPO.ThisClassification subdivides technology into 8 sections, 20 subsections, 118 classes, 624subclasses andover 67,000 groups (of which approximately 10% are “main groups” and the remainderare“subgroups”). Each of the sections, classes, subclasses, groups and subgroups has atitle and asymbol, and each of the subsections has a title. The symbol or symbols of at least thesubclass orsubclasses to which the technical invention described in any patent document belongsare indicatedgenerally on the patent document by the industrial property office of the country wheretheChapter 5 - International Treaties and Conventions on Intellectual Property 307application is filed. Thus, the document is retrievable according to its subject matter,with the helpof the IPC.5.433 The IPC exists in two authentic versions, English and French, which are publishedby WIPO;complete texts of the sixth edition of the IPC have however been prepared andpublished in theChinese, Czech, German, Hungarian, Japanese, Korean, Polish, Russian and Spanishlanguages

among others. The extent to which the IPC is used is reflected in the figures given in therelevantdocument inserted in the back flap of this volume.5.434 Since 1992, WIPO, in cooperation with certain national Patent Offices, has madeavailablethe IPC:CLASS (International Patent Classification Cumulative and Linguistic AdvancedSearchSystem) CD-ROM, which contains all IPC editions in the authentic (English and French)versions.IPC:CLASS also contains several editions of the IPC in other languages. IPC:CLASS is asearch toolthat makes it possible to identify the relevant places in different editions of the IPCwithout havingto resort to voluminous printed publications.The IPC Assembly and the Committee of Experts5.435 On becoming party to the Strasbourg Agreement, a country automaticallybecomes amember of the IPC Union Assembly, which meets in ordinary session once every twoyears. TheAssembly’s most important task is the adoption of the Union’s program and budget. In amoregeneral way, it deals with all matters concerning the development of the Union.5.436 The revision of the IPC itself, to keep it up to date, is effected by anIntergovernmentalCommittee of Experts, of which all States party to the Agreement are members. TheCommittee ofExperts, taking note of the fact that the IPC is a means for obtaining an internationallyuniformclassification of patent documents, has agreed that:“as the primary purpose, the IPC is to be an effective search tool for the retrieval ofrelevant patentdocuments by industrial property Offices and other users in order to establish thenovelty andevaluate the inventive step (including the assessment of technical advance and usefulresults orutility) of patent applications.” It also serves as:“- an instrument for the orderly arrangement of patent documents in order to facilitateaccessto the information contained therein;- a basis for selective dissemination of information to all users of patent information;- a basis for investigating the state of the art in given fields of technology;- a basis for the preparation of industrial property statistics which in turn permit theassessment of technological development in various areas.”5.437 A list of States party to the Strasbourg Agreement Concerning the InternationalPatentClassification is to be found in the appropriate document inserted in the back flap of thisvolume.308 WIPO Intellectual Property Handbook: Policy, Law and UseThe Nice Agreement Concerning the International Classification of Goods andServices for the Purposes of the Registration of MarksIntroduction

5.438 The Nice Agreement Concerning the International Classification of Goods andServices forthe Purposes of the Registration of Marks is a multilateral international treaty signed onJune 15, 1957. It entered into force on April 8, 1961, was revised at Stockholm on July14, 1967,and at Geneva on May 13, 1977 (the text resulting from this latter revision is referred tohereinafteras “the Geneva Act”). This exposé is based on the provisions of the Geneva Act.5.439 The International Classification Under the Nice Agreement comprises:- a List of Classes, accompanied, where appropriate, by explanatory notes; the listcomprises34 classes of goods and eight classes of services;- an Alphabetical List of Goods and Services (hereinafter referred to as “the AlphabeticalList”), giving the class in which each product or service is classified.5.440 The Nice Classification exists in both English and French authentic texts. Thereare alsoofficial texts or official translations of the Classification in Chinese, Croatian, Czech,Danish, Dutch,German, Italian, Japanese, Lithuanian, Macedonian, Norwegian, Polish, Portuguese,Russian,Slovene, Spanish and Swedish.Legal Scope and Application of the Nice Classification5.441 Under Article 2(3) of the Nice Agreement, the countries of the Nice Union arerequired toinclude, in the official documents and publications concerning the registrations ofmarks, thenumbers of the classes of the Classification to which the goods or services for which themark isregistered belong.5.442 The effect of the Nice Classification is that given to it by each Nice Union country.Forexample, the classification does not bind the Nice Union countries either as regardsevaluation ofthe extent of protection of a mark or the recognition of service marks (Article 2(1)).5.443 Furthermore, Article 2(2) of the Nice Agreement provides that each of the NiceUnioncountries will reserve the right to use the Nice Classification either as a principal systemor as asubsidiary system. This means that the Nice Union countries are free to adopt the NiceClassification of Goods and Services as the sole classification to be used for thepurposes ofregistration of marks, or to keep an existing national system of classification of goodsand servicesand to use the Nice Classification as a supplementary classification which will also beshown in theofficial publications of marks.5.444 Finally, Article 2(4) of the Nice Agreement stipulates that the fact that a term isincluded inthe Alphabetical List of Goods and Services of the Nice Classification in no way affectsany rightswhich may subsist in that term.Chapter 5 - International Treaties and Conventions on Intellectual Property 309

The Nice Union Assembly and the Committee of Experts5.445 On becoming party to the Nice Agreement, a country automatically becomes amember ofthe Nice Union Assembly. The Assembly meets in ordinary session once every two years.It dealswith all matters concerning the maintenance and development of the special Union andtheimplementation of the Nice Agreement. In particular, it determines the program andadopts thebudget of the Union.5.446 Each country party to the Nice Agreement is also represented in the Committee ofExpertsset up by the Agreement. The Committee of Experts:- decides on any changes to be made to the Classification;- addresses recommendations to the countries of the special Union for the purpose offacilitating use of the Classification and promoting its uniform application;- takes any other measures which, without financial implication for the budget of thespecialUnion or of the Organization, are such as to facilitate application of the Classification bythedeveloping countries;- is empowered to set up subcommittees and working groups.5.447 In practice, the proposed changes to the Nice Classification are examined by suchsubcommittees or working groups and have then to be adopted by the Committee ofExperts forincorporation in the Classification.5.448 Membership of the Nice Union therefore enables countries to participate activelyin theperiodical reviews of the Nice Classification and to adapt it as far as possible totechnicaldevelopments and to national interests.Utilization and Updating of the Nice Classification5.449 In addition to the countries party to the Nice Agreement, many others use theNiceClassification, bringing the number of users to well over 100 countries.5.450 A Trademark Classification Service has been set up at the International Bureau ofWIPO. Itsaim is to give advice in classification to anyone so requesting. The requester may bejust as well thenational Office of any country, an agent, an individual or a private undertaking. Thisservice isparticularly useful where it is necessary to classify new products or products that arenot specificallynamed in the Alphabetical List and may, therefore, raise difficulties in classification.5.451 The Nice Classification has to be kept constantly up to date. It must be borne inmind thatthe first full draft of the Alphabetical List was produced in 1935. An amended draft wasadopted atthe Nice Diplomatic Conference in 1957. During all those years, numerous productsshown in thefirst Alphabetical List have disappeared from the market, whereas numerous otherproducts have

appeared. For instance, new plastic goods have appeared, as have the laser, thecomputer andtext-processing systems, which have completely revolutionized traditional ways ofworking. Allthese new products have to be incorporated in the Alphabetical List and the productsthat are nolonger marketed must be removed. The updating of the Nice Classification is carried outby theCommittee of Experts composed of representatives of the countries party to the NiceAgreement(see paragraphs 5.434 to 5.436 above).310 WIPO Intellectual Property Handbook: Policy, Law and Use5.452 The Committee of Experts meets regularly every five years at the invitation of theDirectorGeneral of WIPO. The Committee of Experts decides on the amendments to be made totheAlphabetical List, on the wording of the class headings and the relevant explanatorynotes and onthe general remarks preceding the list of classes.5.453 The amendments to the Alphabetical List may take the following forms:- deletion of an item shown in the Alphabetical List. This is done particularly in thosecaseswhere the product can no longer be found on the market or where a more generic termcovers the product in question;- addition of a product to the Alphabetical List. Products added to the Alphabetical Listareabove all new articles that have appeared on the market between sessions of theCommittee of Experts;- amendment of the wording of an item in the Alphabetical List. It is sometimesnecessary todetail the existing wording by adding the function or purpose of a product, or todistinguishbetween homonyms that are to be classified differently;- transfer of a product from one class to another. Although such a change is quite rare, itisnevertheless necessary on occasion to carry out this operation.5.454 The wording of the class headings and of the explanatory notes is also constantlyreviewedin order to improve the definition of the content of each class, and to adapt it tochanges in tradeand industry.5.455 Countries that are not party to the Nice Agreement, intergovernmentalorganizations thatspecialize in marks and also representatives of international non-governmentalorganizations, maybe invited by the Director General of WIPO to send observers to meetings of theCommittee ofExperts.5.456 In practice, the updating of the Nice Classification takes place as follows: to beginwith, theInternational Bureau invites the member countries of the Nice Union to send to it anyproposed

changes to the Classification that they would like the Committee of Experts to consider;subsequently, the International Bureau prepares a document, on the basis of theproposals received,which it sends to the member countries of the Preparatory Working Group forexamination. Whenthey meet, the members of the Preparatory Working Group submit their observationsand decide onthe recommendations to be made to the Committee of Experts, that is, on which of theproposalsthey recommend accepting, on which should be rejected or on how they should beamendedbefore acceptance. Owing to the fact that the number of countries represented on thePreparatoryWorking Group is relatively small, the work progresses more rapidly than would be thecase in theCommittee of Experts. The Committee of Experts is therefore able to work on proposalsforamendments that have already been discussed and should not lead to protracteddebate.5.457 The States party to the Nice Agreement Concerning the InternationalClassification ofGoods and Services for the Purposes of the Registration of Marks are listed in theappropriatedocument to be found inserted in the back flap of this volume.Chapter 5 - International Treaties and Conventions on Intellectual Property 311The Vienna Agreement Establishing an International Classification of theFigurative Elements of MarksIntroduction5.458 The Vienna Agreement Establishing an International Classification of theFigurative Elementsof Marks was adopted on June 12, 1973, by a Diplomatic Conference held in Vienna,Austria. TheAgreement entered into force on August 9, 1985.Basic Features of the Agreement5.459 The Agreement is closely aligned with other instruments, particularly the NiceAgreementconcerning the International Classification of Goods and Services for the Purposes of theRegistration of Marks, of June 15, 1957, and the Strasbourg Agreement Concerning theInternational Patent Classification, of March 24, 1971.5.460 As with the above-mentioned Agreements, the Vienna Agreement hasestablished, underthe Paris Convention for the Protection of Industrial Property, a special union(hereinafter referred toas “the Union”) which uses a common classification for the figurative elements of marks(hereinafter referred to as “the International Classification”). A large number oftrademarks andservice marks contain such figurative elements and the Classification makes it possibleto identifymarks composed of elements that are alike or similar.5.461 The International Classification is defined in the Agreement as comprising “a listof

categories, divisions and sections in which the figurative elements of marks areclassified, togetherwith, as the case may be, explanatory notes.” The authentic copy, in English andFrench, of theInternational Classification is at present deposited with the Director General of WIPO.German andSpanish versions have been drawn up by the International Bureau.5.462 The main aim of the International Classification being to facilitate anticipationsearching, ithas no effect, pursuant to the Agreement itself, on the scope of protection afforded to amark.However, States are at liberty to give the Classification the legal scope they wish,beyond the simpleadministrative scope afforded to it by the Agreement.5.463 The Union States may use the International Classification either as a principal oras asubsidiary system. In other words, they are free to consider the InternationalClassification as thesole classification to be used or to use it at the same time as a national classification.5.464 The responsible Offices of the Union countries are required, by the Agreement, toinclude inthe official documents and publications relating to registrations and renewals of marksthe numbersof the categories, divisions and sections in which the figurative elements of those markshave beenplaced. However, this requirement is not retroactive to the extent that the Offices of thecountriesparty to the Agreement are not required to classify figurative marks registered prior toentry intoforce of the Agreement for their territory; on the other hand, they have to be classifiedas andwhen the registration of such marks is renewed.5.465 The numbers of the categories, divisions and sections given in the officialdocuments andpublications relating to registrations must be preceded by the words “Classification ofFigurativeElements” or the abbreviation “CFE”, determined by the Committee of Experts (seeparagraph 5.458 below).312 WIPO Intellectual Property Handbook: Policy, Law and Use5.466 The Agreement permits the member countries to reserve the possibility of notapplying theInternational Classification (or not applying wholly) as far as the finest subdivisions areconcerned,that is to say the sections. This provision is of importance particularly for those Officesthat onlyregister a small number of marks.5.467 The International Classification contains not only the sections required to place allfigurativeelements. It also contains auxiliary sections intended for figurative elements that arealreadycovered by main sections, but which it is considered useful to group according to aparticular

criterion in order to facilitate searching.5.468 Otherwise, the countries party to the Agreement are required to apply theInternationalClassification as it stands. They may not, for example, change the content or number ofcategories,divisions or sections, group together varying sections to form a single one or create newsections,whether main or auxiliary.5.469 Since it is not possible to directly place obligations on intergovernmentalorganizations, theAgreement provides that, if a country party to the Agreement entrusts the registrationof marks toan intergovernmental authority, it must take all possible measures to ensure that suchauthorityuses the International Classification in accordance with the Agreement. Once it hasdone so, suchan authority would be in the same situation, as far as application of the InternationalClassificationis concerned, as a national Office. In particular, it would have the same possibility ofentering thereservation referred to above.5.470 The Agreement has established a Committee of Experts to make amendmentsandadditions, as required by changes in technology and trade or as dictated by experience,to theInternational Classification. This Committee of Experts is made up of representatives ofthe Unioncountries and, in addition to its revision work, described above, has the task offacilitating the useof the Classification — particularly by the developing countries — and of promoting itsuniformapplication. The intergovernmental organizations specialized in the field of marks, asalso otherintergovernmental organizations or non-governmental organizations, may berepresented asobservers if so decided by the Committee of Experts or the Director General.5.471 The amendments and additions made by the Committee of Experts, together withitsrecommendations, are notified by the International Bureau of WIPO to the competentOffices in theUnion countries, and enter into force six months after notification; they are contained inanauthentic copy deposited with the Director General of WIPO. Additionally, theInternational Bureauof WIPO incorporates the amendments and additions in the Classification and publishesthem in theperiodicals designated by the Assembly of the Union.Advantages of the International Classification5.472 The internationalization of industrial, technical and commercial relations demandsthecreation of uniform tools of work in the industrial property field. Such is the case of the

international classifications produced by cooperation between States, and by means ofwhich thenational Offices are provided with tools which each of them would otherwise have beenobliged toestablish and maintain. When documents are exchanged, there is no need to reclassifythem.5.473 These advantages are particularly telling for the developing countries that do notalwayshave the necessary staff to undertake such tasks, and which permit them to makenoticeablesavings in means and time so that they can devote themselves to other priorities.Chapter 5 - International Treaties and Conventions on Intellectual Property 3135.474 In the specific field of marks, there already exists an International Classification ofGoodsand Services established by the Nice Agreement of June 15, 1957. That Classificationconstitutesfor the Offices responsible for anticipation searching a working tool whose usefulnessandeffectiveness have long since been proved.5.475 However, in carrying out those searches, it is also necessary to classify thefigurativeelements of marks. Thus, a uniform classification facilitates the anticipation searchingwork of thenational Offices. For its part, the International Bureau of WIPO uses the InternationalClassificationof the Figurative Elements of Marks for coding the figurative marks that areinternationallyregistered under the Madrid Agreement and under the Protocol Relating to the MadridAgreement.5.476 The States party to the Vienna Agreement Establishing an InternationalClassification of theFigurative Elements of Marks are listed in the appropriate document to be foundinserted in theback flap of this volume.The Locarno Agreement Establishing an International Classification forIndustrialDesignsIntroduction5.477 The Locarno Agreement Establishing an International Classification for IndustrialDesigns is amultilateral international treaty, which was signed on October 8, 1968. It entered intoforce onApril 27, 1971.5.478 The Agreement has established a Committee of Experts to make amendmentsandadditions, as required by changes in technology and trade or as dictated by experience,to theInternational Classification.5.479 The Locarno Classification comprises three parts:- a List of Classes and Subclasses; in total, there are 31 classes and 211 subclasses;- an Alphabetical List of Goods in which industrial designs are incorporated; this Listcontains

in total approximately 6,000 entries;- explanatory notes.5.480 The Locarno Classification has been established in the English and Frenchlanguages, bothtexts being equally authentic. Official texts of the Locarno Classification, in suchlanguages as theAssembly may designate, are established after consultation with the interestedGovernments by theInternational Bureau of the World Intellectual Property Organization (WIPO).5.481 Translations of the Locarno Classification have been established in German,Italian,Portuguese and Spanish.Legal Effect and Use of the Locarno Classification5.482 According to Article 2(3) of the Locarno Agreement, the industrial property officesof thecountries of the Locarno Union must include in the official documents for the deposit orregistration314 WIPO Intellectual Property Handbook: Policy, Law and Useof designs, and if they are officially published, in the publications in question, thenumbers of theclasses and subclasses of the Locarno Classification in which the goods incorporatingthe designsbelong.5.483 Each country may attribute to such classification the legal consequences, if any,which itconsiders appropriate. In particular, the Locarno Classification does not bind thecountries of theLocarno Union as regards the nature and the scope of protection afforded to the designin thosecountries (Article 2(1)).5.484 Further, Article 2(2) of the Locarno Agreement provides that each of the countriesof theLocarno Union reserves the right to use the Locarno Classification either as a principalor as asubsidiary system. This means that the countries of the Locarno Union are free to adopttheLocarno Classification as the only classification to be used for industrial designs, or tomaintain anexisting national classification system for industrial designs and to use the LocarnoClassification as asupplementary classification, also to be included in official documents and publicationsconcerningthe deposit or registration of designs.5.485 Finally, Article 2(4) of the Locarno Agreement provides that the inclusion of anyword in theAlphabetical List of Goods is not an expression of opinion of the Committee of Experts,on whetheror not such a word is subject to exclusive rights.5.486 The States party to the Locarno Agreement Establishing an InternationalClassification forIndustrial Designs are listed in the appropriate document to be found inserted in theback flap of

this volume.Special Conventions in the Field of Related Rights: The InternationalConvention for the Protection of Performers, Producers of Phonogramsand Broadcasting Organizations (“the Rome Convention”)5.487 Several international conventions on related rights are administered by WIPO. Thefollowingsections will describe the important aspects of the International Convention for theProtection ofPerformers, Producers of Phonograms and Broadcasting Organizations, generallyreferred to as “theRome Convention.” Other treaties in the field of related rights will be dealt with in thefollowingsections.Introduction5.488 Related rights are primarily an offshoot of technological development. At thenational level,it was first the phonogram industry that looked for protection against unauthorizedduplication ofsound recordings of musical performances. At the international level, it was likewise thedevelopment of the phonogram industry that promoted the establishment of specialprotection forthe so-called related rights.5.489 As in the case of some national laws, the first proposals aiming at the protectionofproducers of phonograms and performers at the international level were also based oncopyrightprotection. The rights involved were discussed by the Berne Union for the Protection ofLiterary andArtistic Works at its Diplomatic Conference in Rome in 1928, where it was proposed that“when aChapter 5 - International Treaties and Conventions on Intellectual Property 315musical work has been adapted to a mechanical instrument by the contribution ofperformingartists these latter should also benefit from the protection granted to that adaptation.”Corresponding to this approach, a resolution was passed asking governments toconsider thepossibility of adopting measures to safeguard the interests of performers.5.490 Later on, in 1934, CISAC, the International Confederation of Societies of AuthorsandComposers, signed an agreement in Stresa with the International Federation of theGramophoneIndustry according to which during the forthcoming revision of the Berne Convention (i)theprotection of phonograms against unauthorized duplication and (ii) the right ofproducers ofphonograms to equitable remuneration for communication to the public of theirphonograms bybroadcasting or cinematography should be proposed by means of an annex to be addedto theBerne Convention. On the other hand, the International Labour Organization (ILO) hadmaintained

since 1926 a continuing interest in the protection of performers and the problem wasconsidered ata meeting in Samaden, Switzerland, in 1939. Drafts were prepared in cooperation withthe Bureauof the Berne Union but all progress was stopped for several years by the outbreak ofWorld War II.5.491 After the war, different committees of experts prepared drafts of conventionswhich alsoincluded protection of the interests of broadcasting organizations — the so-called RomeDraft(1951), a draft produced under the sponsorship of the International Labour Organization(1957) andthe Monaco Draft (1957) prepared by experts convened by the International Bureau ofthe BerneUnion and by Unesco. Finally, in 1960, a committee of experts convened jointly byWIPO, Unescoand the International Labour Organization met at The Hague and drew up the draftconvention.This served as a basis for the deliberations in Rome, where a Diplomatic Conferenceagreed on thefinal text of the International Convention for the Protection of Performers, Producers ofPhonograms and Broadcasting Organizations, the Rome Convention of October 26,1961.Relation between the Protection of Related Rights and Copyright5.492 Considering that the use of literary and artistic works was usually implicit in thework ofperformers, recorders and broadcasters, the Diplomatic Conference at Rome establisheda link withcopyright protection. The first article of the Rome Convention provides that theprotection grantedunder the Convention shall leave intact and shall in no way affect the protection ofcopyright inliterary and artistic works. Under the text of Article 1 it is clear that whenever, by virtueof thecopyright law, the authorization of the author is necessary for the use of his work, theneed for thisauthorization is not affected by the Rome Convention.5.493 The majority of the Conference at Rome decided to go even further. Theyconsidered thepossibility that the performers, producers of phonograms and broadcastingorganizations of acountry would enjoy international protection even when the literary and artistic worksthey usedmight be denied protection in that country because it was not party to at least one ofthe majorinternational copyright conventions. The Rome Convention therefore provides that inorder tobecome a party to the Convention a State must not only be a member of the UnitedNations, butalso a member of the Berne Union or party to the Universal Copyright Convention(Article 24(2)).

Accordingly, a Contracting State ceases to be a party to the Rome Convention as fromthe time atwhich it is no longer party either to the Berne or to the Universal Copyright Convention(Article 28(4)). Because of this link with the copyright conventions, the RomeConvention issometimes referred to as a “closed” convention from the point of view of the circle ofStates thatmay adhere to it.316 WIPO Intellectual Property Handbook: Policy, Law and UsePrincipal ProvisionsNational Treatment5.494 As in the Berne Convention, the protection accorded by the Rome Conventionconsistsbasically of the national treatment that a State grants under its domestic law todomesticperformances, phonograms and broadcasts (Article 2(1)). National treatment is,however, subject tothe minimum of protection specifically guaranteed by the Convention, and also to thelimitationsspecifically provided for in the Convention (Article 2(2)). This means that, apart from therightsguaranteed by the Convention itself as constituting that minimum of protection, andsubject tospecific exceptions or reservations allowed for by the Convention, performers, producersofphonograms and broadcasting organizations to which the Convention applies enjoy inContractingStates the same rights as those countries grant to their nationals.Eligibility for Protection5.495 One of the most important questions to be answered unequivocally by eachinternationalconvention is: to whom and in what cases does it apply? The Rome Convention providesfor itsapplication by determining criteria of eligibility for national treatment.5.496 National treatment should be granted to performers, if the performance takesplace inanother Contracting State (irrespective of the country to which the performer belongs)or if it isincorporated in a phonogram protected under the Convention (irrespective of thecountry to whichthe performer belongs or where the performance actually took place) or if it istransmitted “live”(not from a phonogram) in a broadcast protected by the Convention (irrespective againof thecountry to which the performer belongs) (Article 4). These alternative criteria ofeligibility forprotection allow for the application of the Rome Convention to the widest possible circleofperformances.5.497 National treatment should be granted to producers of phonograms if the produceris a

national of another Contracting State (criterion of nationality) or the first fixation wasmade inanother Contracting State (criterion of fixation) or the phonogram was first orsimultaneouslypublished in another Contracting State (criterion of publication) (Article 5).5.498 The Convention allows reservations in respect of these alternative criteria. Bymeans of anotification deposited with the Secretary-General of the United Nations, any ContractingState mayat any time declare that it will not apply the criterion of publication or, alternatively, thecriterion offixation. Any State which, on the day the Convention was signed at Rome, grantedprotection toproducers of phonograms solely on the basis of the criterion of fixation, can excludeboth thecriteria of nationality and publication. This possibility has been provided for mainly inview of thecontemporary Nordic legislation, so that implementation of the Rome Convention couldbe adaptedto conditions of protection already existing under different national laws.5.499 National treatment has to be granted to broadcasting organizations if theirheadquarters issituated in another Contracting State (principle of nationality), or the broadcast wastransmittedfrom a transmitter situated in another Contracting State, irrespective of whether theinitiatingbroadcasting organization was situated in a Contracting State (principle of territoriality).Contracting States may declare that they will protect broadcasts only if both thecondition ofnationality and that of territoriality are met in respect of the same Contracting State(Article 6).Chapter 5 - International Treaties and Conventions on Intellectual Property 317The Minimum Protection Required by the Convention5.500 The minimum protection guaranteed by the Convention to performers is providedby “thepossibility of preventing certain acts” done without their consent. Instead ofenumerating theminimum rights of performers, this expression was used in order to allow countries likethe UnitedKingdom to continue to protect performers by virtue of penal statutes, determiningoffenses andpenal sanctions under public law. It was agreed, however, that the enumerated actswhich may beprevented by the performer, require his consent in advance. In fact, the possibility ofpreventingcertain acts as defined in the Convention amounts to a distinct bundle of rights grantedtoperformers.5.501 The restricted acts comprise: broadcasting or communication to the public of a“live”performance; recording an unfixed performance; reproducing a fixation of theperformance,

provided that the original fixation was made without the consent of the performer or thereproduction is made for purposes not permitted by the Convention or the performer(Article 7).5.502 Producers of phonograms have the right to authorize or prohibit the direct orindirectreproduction of their phonograms (Article 10). The Rome Convention does not providefor anyright to authorize performances of the phonogram and does not explicitly prohibitdistribution orimportation of unauthorized duplicates of phonograms.5.503 Broadcasting organizations have the right to authorize or prohibit: thesimultaneousrebroadcasting of their broadcasts, the fixation of their broadcasts, the reproduction ofunauthorized fixations of their broadcasts or reproduction of lawful fixations for illicitpurposes andthe communication to the public of their television broadcasts by means of receivers inplacesaccessible to the public against payment. It should be noted, however, that this last-mentionedright does not extend to communication to the public of merely sound broadcasts, andthat it is amatter for domestic legislation to determine the conditions under which such a rightmay beexercised. It should also be observed that the Rome Convention does not protectagainstdistribution by cable of broadcasts.Provisions for Discretionary Regulation of the Exercise of Rights5.504 The Rome Convention, over and above the minimum requirements of protection,alsocontains provisions allowing national laws to regulate certain aspects of protection attheirdiscretion.5.505 As regards the protection of performers, it is a matter for domestic legislation toregulatethe protection against rebroadcasting of the performance and fixation thereof forbroadcastingpurposes, where the broadcasting of the performance was consented to by theperformer. Theprinciple of preeminence of contractual arrangements was embodied in a provisionrequiring thatdomestic laws shall not operate to deprive performers of the ability to control bycontract theirrelations with broadcasting organizations (Article 7(2)) whereas it was understood thatthe meaningof contract in this context includes collective agreements and also decisions of anarbitration board,if involved.5.506 If several performers participate in the same performance, the manner in whichthey shouldbe represented in connection with the exercise of their rights may be specified by eachContractingState (Article 8).

5.507 Concerning both the protection of performers and producers of phonograms,Article 12(perhaps the most controversial part of the Convention) provides that if a phonogrampublished for318 WIPO Intellectual Property Handbook: Policy, Law and Usecommercial purposes is used directly for broadcasting or any communication to thepublic, anequitable remuneration shall be paid by the user to the performers, or to the producersof thephonogram, or to both. This Article does not grant any right to either the performers orproducersof phonograms to authorize or to prohibit the secondary use of a phonogram. Byguaranteeing asingle remuneration for the use of the phonogram it seems to establish a sort of non-voluntarylicense. It does not, however, obligatorily specify the beneficiary or beneficiaries of theremuneration for the secondary use of the performance and the phonogram embodyingit.Article 12 only says that at least one of the interested parties should be paid for the use;nevertheless it provides that in the absence of agreement between these parties,domestic law mayoptionally lay down the conditions for the sharing of this remuneration.5.508 The implementation of these provisions, however, can be excluded or restrictedby theContracting States at any time by an appropriate notification (Article 16(1)(a)). A Statemay declarethat it will not apply the provisions of Article 12. A Contracting State may declare that itwill notapply this article in respect of certain uses, for instance as regards communications tothe publicother than broadcasting, or broadcasting of phonograms acquired before the date of theConvention, etc. It is also possible to apply this Article only as regards phonograms ofwhich theproducer is a national of another Contracting State. Furthermore, as regardsphonograms of whichthe producer is a national of another Contracting State, the extent and term ofprotection can belimited so as to correspond to the protection granted by the other State concerned. Thefact,however, that the protection in both countries concerned is not granted to the samebeneficiary,cannot be considered as justifying the restriction of the protection provided for in Article12.Limitations5.509 The Rome Convention allows for certain limitations of the rights granted and, asregards theperformers, also imposes limitations on rights itself.5.510 Any Contracting State may provide for exceptions as regards private use, use ofshortexcerpts in connection with reporting current events, ephemeral fixation by abroadcasting

organization by means of its own facilities and for its own broadcasts, and for all kindsof use solelyfor the purpose of teaching or scientific research (Article 15(1)). This latter possibility ofintroducingexceptions may be of special benefit to developing countries.5.511 Besides the exceptions specified by the Convention, any Contracting State mayalso providefor the same kind of limitations with regard to the protection of performers, producers ofphonograms and broadcasting organizations as it provides for in connection withcopyrightprotection. There is, however, an important difference: compulsory licenses may beprovided foronly to the extent to which they are compatible with the Rome Convention (Article15(2)).5.512 In view of the cinematographic industry’s interest in exclusively exploiting thecontributionsmade to their productions, Article 19 of the Rome Convention provides that once aperformer hasconsented to the incorporation of his performance in a visual or audiovisual fixation, heshall haveno further rights under the Rome Convention as regards the performance concerned.Duration of Protection5.513 The minimum term of protection under the Rome Convention is a period of twentyyears, tobe computed from the end of the year in which the fixation was made, as far asphonograms andperformances incorporated therein are concerned, or the performance took place, asregardsperformances not incorporated in phonograms, or the broadcast took place, forbroadcasts(Article 14).Chapter 5 - International Treaties and Conventions on Intellectual Property 319Restriction of Formalities5.514 If a country requires compliance with formalities as a condition of protectingrelated rightsin relation to phonograms, these should be considered as fulfilled if all copies incommerce of thepublished phonogram or their containers bear a notice consisting of the symbol P,accompanied bythe year date of the first publication. If the copies of their containers do not identify theproduceror his licensee, the notice shall also include the name of the owner of the rights of theproducer,and if the copies or their containers do not identify the principal performers, the noticeshall alsoinclude the name of the person who owns the rights of such performers (Article 11). Itshould beemphasized that this provision is not a formality requirement; it is a restriction offormalities, whichmay be required by some national laws.The Implementation of the Rome Convention

5.515 The Rome Convention has been referred to as a “pioneer convention.” Whereastheconventions concluded towards the end of the nineteenth century for the protection ofcopyrightresulted from developments in national laws, this Convention defined standards ofprotection ofrelated rights at a time when very few countries had any rules enacted to protectperforming artists,producers of phonograms and broadcasting organizations. Thus it was only natural thattheimpetus of the Convention in the field of the protection of related rights during the firstyearsfollowing its adoption, could not be measured so much by the number of ratifications oraccessionsas by the impact the Convention had on national laws.5.516 Since 1961, many countries have legislated on the protection of related rights,thus greatlyincreasing the number of national laws protecting producers of phonograms orbroadcastingorganizations, and the majority of them as a result of the coming into existence of theRomeConvention. The disproportion between the number of national laws protectingperformers’ rightsand those granting protection to producers of phonograms and broadcastingorganizations is stillunduly great. There are, however, further draft laws under preparation in severalcountries, whichcontinue to demonstrate the tendency to pay more attention to the protection ofperformers’rights.5.517 The comparatively slow progress of national laws in the field of related rights, andinparticular the unequal development of protection as regards different beneficiaries ofthese rights,even today hinders accession to the Rome Convention, since it requires at the sametime protectionof performers, producers of phonograms and broadcasting organizations.The Rome Convention and Developing Countries5.518 A large number of the States party to the Rome Convention are developingcountries. Thisis quite natural since most developing countries attach great importance to music,dance and othercreations in their national heritage. The value of the Rome Convention to such countriesstemsfrom the fact that it affords protection to those who contribute to the dissemination ofthatheritage abroad.5.519 The Convention is particularly important to those countries whose civilization andtraditionare oral and where the author is often the performer as well. In this context, the placeoccupied by

expressions of folklore must be borne in mind and the interests of the artists constantlyperforming,320 WIPO Intellectual Property Handbook: Policy, Law and Useand thus perpetuating them, must be safeguarded when use is made of theirperformances. Whilstthe possibilities of protecting creations of folklore by copyright seem to be limited, andtheestablishment of a more adequate kind of protection sui generis appears to requiremore time,expressions of folklore can efficiently be protected indirectly by protectingperformances, fixations,and broadcasts of them.5.520 By also protecting the producers of phonograms, the Rome Convention promotes,particularly in developing countries, industry in a dynamic tertiary sector of theeconomy. Such anindustry, while guaranteeing the dissemination of national culture, both within thecountry andthroughout the world, can additionally constitute a substantial source of revenue for thecountry’seconomy and, in those cases where its activities extend beyond frontiers, can attract aninflux offoreign currency.5.521 By giving performers and phonogram producers the possibility of benefiting fromtheirperformances and productions, the Rome Convention is instrumental in promoting theartisticheritage and represents an important incentive to creativity. It is also certain that,where theinterests of performers and producers of phonograms are safeguarded by law, works willenjoygreater development and suffer less from the competition of unprotected performancesof foreignworks. Where performances and phonograms are exported, there is one reason more toprotectthem internationally, that is, by accepting the relevant international conventions.5.522 Finally, the part played by the broadcasting organizations in the developingcountries shouldnot be forgotten either, since they also have an interest in the protection of their costlyprogramagainst rebroadcasting, reproduction and communication to the public of theirbroadcasts. Therebroadcasting or reception of television broadcasts in public places can be veryprofitable,especially when the subject of the original broadcast is an exceptional event.Frequently, theorganizers of such events only allow broadcasting for certain territories or on thecondition that nopublic reception close to the place of the event drains away potential spectators. Thebroadcastingorganization must therefore be able to prohibit rebroadcasting and public reception. Thesame

applies to broadcasting of performances or recordings of expressions of nationalfolklore: thebroadcasting organization should be entitled internationally to prevent rebroadcastingor fixationfor reproduction of its own broadcast of works of the national heritage.5.523 The States party to the International Convention for the Protection of Performers,Producersof Phonograms and Broadcasting Organizations (“the Rome Convention”) are listed intheappropriate document to be found inserted in the back flap of this volume.Other Special Conventions in the Field of Related RightsThe Other Special Conventions5.524 Besides the Rome Convention of 1961, a basic legal instrument discussed in theprevioussection, two other international instruments have been drawn up with regard to certainrelatedrights. These are the Convention for the Protection of Producers of Phonograms AgainstUnauthorized Duplication of Their Phonograms, concluded in Geneva in October 1971andgenerally referred to as “the Phonograms Convention,” and the Convention Relating totheDistribution of Programme-Carrying Signals Transmitted by Satellite, concluded inBrussels inMay 1974 and known briefly as “the Satellites Convention.” These two Conventions arealso withinChapter 5 - International Treaties and Conventions on Intellectual Property 321the area of related rights, and their purpose is to protect producers of phonograms andbroadcasting organizations, respectively, against certain prejudicial acts that have beenwidelyrecognized as infringements or acts of piracy.5.525 With regard to the Rome Convention, the Phonograms Convention and theSatellitesConvention may be regarded as special agreements, the conclusion of which is reservedforContracting States insofar as the agreements grant to performers, producers ofphonograms orbroadcasting organizations more extensive rights than those granted by the RomeConvention, orcontain other provisions not contrary to that Convention (Article 22 of the RomeConvention).Reasons for and Purposes of the Special Conventions5.526 The reason for the rapid acceptance (see the list of member States in the backflap of thisvolume) of the Phonograms Convention is due, on one hand, to the acceleratingincrease ininternational piracy during the last two decades and, on the other hand, to the legalcharacteristicsof the Convention itself.5.527 While a number of countries were preparing new legislation in the field of relatedrights inview of the standards set by the Rome Convention, international piracy of soundrecordings was

growing. The total value of pirated sound recordings sold worldwide has been increasingsteadily.This made it necessary, even in the early seventies, to establish a special conventionwithout delay.The subject was raised in May 1970 in the Preparatory Committee for the revision of thetwo majorcopyright conventions, and the new Convention was signed in Geneva after less than 18months.5.528 The Phonograms Convention takes into account all the measures that had alreadybeenadopted in various national laws, and allows for the application of all of them instead ofrequiring auniform solution, as is the case under the Rome Convention, which provides for thegranting toproducers of phonograms the right to authorize or prohibit the reproduction of theirphonograms.Thus, amendments of existing national laws became largely unnecessary to Stateswhich alreadyprotected producers of phonograms by some other means and wanted to extend thiskind ofprotection also at the international level.5.529 The Satellites Convention was adopted because the use of satellites ininternationaltelecommunications has, since about 1965, been presenting a new problem for theprotection ofbroadcasting organizations.5.530 Nowadays the transmission of programs by satellite still takes place mainlyindirectly.Electronic signals carrying broadcast programs pass through a satellite to reach remoteparts of theglobe that cannot be reached by traditional broadcasting; but the programme-carryingsignalspassed on by the satellite cannot be picked up directly by conventional receiversgenerally used bythe public at large. They first have to be picked up by ground stations, which distributethem to thepublic.5.531 In the case of satellite broadcasting, the signals sent to the satellite aredemodulated by thesatellite itself; as a result, the signals transmitted down to earth can be received directlyfrom spaceby ordinary receivers, without the intervention of ground receiving stations. However,the signalstransmitted upwards to the satellite remain inaccessible to the public even with thismode oftransmission.322 WIPO Intellectual Property Handbook: Policy, Law and Use5.532 The legal problem stems from the wording of Article 3 of the Rome Convention,underwhich broadcasting means the transmission by wireless means for public reception ofsounds or of

images and sounds. The difficulties with regard to satellite transmission are twofold: onone hand,the signals emitted by the originating organization are not suitable for public reception;on theother hand, the derived signals, generally obtained by means of ground stations, arefrequentlytransmitted to the public by wire and not by wireless means.5.533 The Satellites Convention provides a solution by requiring Contracting States totakeadequate measures to prevent the distribution of any programme-carrying signals byany distributorfor whom the signal emitted to or passing through the satellite is not intended.“Distribution” isdefined by the Convention as the operation by which a distributor transmits derivedsignals to thepublic, and therefore also encompasses cable distribution.Main Features of the Special Conventions5.534 While it can be said that the Phonograms Convention and the SatellitesConventionsupplement the Rome Convention to a certain extent, it should nevertheless bementioned thattheir approach is different, in three main respects.5.535 First, the Rome Convention gives the beneficiaries of related rights essentially aright toauthorization or prohibition, without overlooking the safeguarding of the rights ofauthors. ThePhonograms and Satellites Conventions, on the other hand, do not introduce privaterights butrather leave the Contracting States free to choose the legal means of preventing orrepressing actsof piracy in that area.5.536 Second, the Rome Convention is based on the “national treatment” principle. Thatmeansthat the protection prescribed by the Rome Convention is only minimum protection andthat, apartfrom the rights guaranteed by that Convention itself as constituting that minimum ofprotection,and within the limits of reservations conceded by it, performers, producers ofphonograms andbroadcasting organizations enjoy the same rights in countries party to the Conventionas thosecountries grant their nationals. The Phonograms Convention does not speak of thesystem of“national treatment”, but defines expressly the unlawful acts against which ContractingStates haveto provide effective protection; consequently, the States are not bound to grantforeignersprotection against all acts prohibited by their national legislation for the protection oftheir ownnationals. For instance, countries whose national legislation provides protection againstthe public

performance of phonograms are not obliged to make this form of protection available totheproducers of phonograms of other Contracting States, because the PhonogramsConvention doesnot itself guarantee any protection against the use in public of lawfully reproduced anddistributedphonograms. It should be mentioned, however, that even the Phonograms Convention isin no wayto be interpreted as limiting the protection available to foreigners under any domesticlaw orinternational agreement (Article 7(1)). The question of national treatment does notarise, as ageneral rule, in the Satellites Convention either. This Convention places ContractingStates underthe obligation to take the necessary steps to prevent just one type of activity, namelythedistribution of program-carrying signals by any distributor for whom the signals emittedto orpassing through the satellite are not intended.5.537 Third, in the interests of combating piracy over the widest possible area, the newinternational agreements were made open to all States members of the United Nationsor any ofthe specialized organizations brought into relationship with the United Nations, orparties to theStatute of the International Court of Justice (virtually all States of the world). In contrastthe RomeChapter 5 - International Treaties and Conventions on Intellectual Property 323Convention is a “closed” Convention, its acceptance being reserved for States party toat least oneof the two major international copyright conventions.Substantive Provisions of the Phonograms Convention5.538 As far as the substantive provisions are concerned, the Phonograms Conventiondiffers fromthe Rome Convention mainly as regards (i) the criteria of eligibility for protection, (ii) thescope ofprotection and (iii) the means of ensuring the protection provided for.5.539 The Phonograms Convention requires only the criterion of nationality as acondition ofgranting protection. Any Contracting State, however, which on October 29, 1971,affordedprotection solely on the basis of the place of first fixation may, by a declarationdeposited with theDirector General of WIPO, declare that it will apply this criterion.5.540 Protection is granted not only against making duplicates of the phonogram, butalso againstthe distribution of illicit duplicates and importation of such duplicates for distribution(Article 2). Onthe other hand, the scope of protection does not extend to claiming remuneration forsecondaryuses of the phonogram.5.541 The means by which the Phonograms Convention is to be implemented are amatter for

domestic legislation. They may include protection by granting copyright in thephonogram, bygranting other specific (neighboring) rights, by the law relating to unfair competition, orby penalsanctions (Article 3).5.542 The Phonograms Convention permits the same limitations as those accepted inrelation tothe protection of authors. The Convention also permits compulsory licenses ifreproduction isintended exclusively for teaching or scientific research, limited to the territory of theState whoseauthorities give the license, and in return for equitable remuneration.5.543 Regarding the term of protection, the same minimum duration is required by thePhonograms Convention as by the Rome Convention: if the domestic law prescribes aspecificduration for the protection, that duration shall not be less than 20 years from the endeither of theyear in which the sounds embodied in the phonogram were first fixed or of the year inwhich thephonogram was first published.5.544 It should be noted that the Phonograms Convention also contains a provisionconcerningperformers. Under its Article 7, the national legislation of each Contracting State maylay down,where necessary, the scope of protection afforded to performers whose performance isfixed on aphonogram and the conditions of enjoying such protection.Substantive Provisions of the Satellites Convention5.545 The Satellites Convention enlarges the scope of the protection of broadcastingorganizations by preventing the unlawful distribution of programme-carrying signalstransmitted bysatellite irrespective of whether or not such signals are suited to reception by the public,and henceirrespective of the fact that their emission does not constitute broadcasting according tothedefinition of that notion under the Rome Convention. Furthermore, the protectionprovided for bythe Satellites Convention also applies when the derived signals are distributed by cableand not by324 WIPO Intellectual Property Handbook: Policy, Law and Usewireless means, a kind of communication to the public of broadcasts not covered by theRomeConvention. Formally, however, the Convention gives no new right to the broadcastingorganizations. It obliges the Contracting States to prevent the distribution of program-carryingsignals by any distributor for whom the signals passing through the satellite are notintended.5.546 It should be noted that the Satellites Convention does not protect the transmittedprogram,since the subject of the protection is the signals emitted by the originating organization.As regards

the rights related to the programs, the Convention simply lays down that it may not beinterpretedin any way as limiting or prejudicing the protection afforded to authors, to performers,tophonogram producers and to broadcasting organizations.5.547 The Satellites Convention permits the distribution of program-carrying signals bynon-authorized persons, if those signals carry short excerpts containing reports ofcurrent events or,as quotations, short excerpts of the program carried by the emitted signals, or, in thecase ofdeveloping countries, if the program carried by the emitted signals is distributed solelyfor thepurposes of teaching, including adult teaching or scientific research.5.548 With regard to the duration of the protection, the Satellites Convention refers tonationallegislation in this special context. In any State in which the application of the abovemeasures islimited in time, the duration is to be fixed by its domestic law.5.549 The Satellites Convention is not to be applied when the signals emitted by theoriginatingorganization are intended for direct reception from a satellite by the public (Article 3). Insuch casesthe signals emitted are not intended for any intervening distributor of derived signals;they aredirectly accessible to the public at large.The Phonograms and Satellites Conventions and Developing Countries5.550 It is particularly significant that the States that have joined the Phonograms andSatellitesConventions, as with the countries party to the Rome Convention, are not necessarilyhighlyindustrialized market economy States. This may be explained by the role that protectionof relatedrights is capable of playing in the development of those countries: the role of suchprotection indevelopment, as explained under the Rome Convention (see paragraphs 5.506 to 5.510in theprevious section) is similar where the Phonograms and Satellites Conventions areconcerned.5.551 The recognition and international protection of the rights of performers, producersofphonograms and broadcasting organizations, in conjunction with copyright, quitedefinitelycontribute to the development of nations, as does protection of intellectual property asa whole.Thus it is desirable that more developing countries recognize the necessity ofestablishing legalprotection of authors, performers, producers of phonograms and broadcastingorganizations as aninterdependent system, both at the national and international levels.5.552 The States party to the Convention for the Protection of Producers of PhonogramsAgainst

Unauthorized Duplication of Their Phonograms and the States party to the ConventionRelating tothe Distribution of Programme-Carrying Signals Transmitted by Satellite are listed in theappropriatedocument to be found inserted in the back flap of this volume.Chapter 5 - International Treaties and Conventions on Intellectual Property 325The WIPO Performances and Phonograms Treaty (WPPT)Introduction5.553 The WIPO Diplomatic Conference on Certain Copyright and Neighboring RightsQuestions,held in Geneva in December 1996, adopted two treaties: the WIPO Copyright Treaty (thethirdsection dealt with in this chapter) and the WIPO Performances and Phonograms Treaty(WPPT).5.554 In view of the technological developments of the 1980s, as also in the field ofcopyright, itwas recognized that guidance in the form of recommendations, guiding principles andmodelprovisions would no longer suffice, and that binding new norms were indispensable. TheWCT andthe WPPT were prepared in parallel at the same Diplomatic Conference.Legal Nature of the WPPT and its Relationship with Other InternationalTreaties5.555 The WPPT has a certain relationship with the Rome Convention which has beenregulated ina way similar to the relationship between the TRIPS Agreement and the RomeConvention. Thismeans that (i) in general, application of the substantive provisions of the RomeConvention is not anobligation of the Contracting Parties, (ii) only a few provisions of the Rome Conventionare includedby reference (those relating to the criteria of eligibility for protection), and (iii) Article1(2) of theTreaty contains, mutatis mutandis, practically the same provision as Article 2.2 of theTRIPSAgreement, stating that nothing in the Treaty derogates from obligations thatContracting Partieshave to each other under the Rome Convention.5.556 Article 1(3) of the Treaty, in respect of the relation to the other treaties, includes aprovisionsimilar to Article 1(2) of the WCT: “The Treaty shall not have any connection with, norshall itprejudice any rights and obligations under, any other treaties.”5.557 The title of Article 1 of the WPPT is “Relation to Other Conventions”, butparagraph (2) ofthe Article deals with a broader question, namely the relationship between copyright onthe onehand and “related rights,” provided for in the Treaty, on the other. This provisionreproduces thetext of Article 1 of the Rome Convention word for word: “Protection granted under thisTreaty shall

leave intact and shall in no way affect the protection of copyright in literary and artisticworks.Consequently, no provision of this Treaty may be interpreted as prejudicing suchprotection.”5.558 The Diplomatic Conference adopted an agreed statement which reads: “It isunderstoodthat Article 1(2) clarifies the relationship between rights in phonograms under thisTreaty andcopyright in works embodied in the phonograms. In cases where authorization isneeded fromboth the author of a work embodied in the phonogram and a performer or producerowning rightsin the phonogram, the need for the authorization of the author does not cease to existbecause theauthorization of the performer or producer is also required, and vice versa.”326 WIPO Intellectual Property Handbook: Policy, Law and UseSubstantive Provisions of the WPPTProvisions Relating to the So-called “Digital Agenda”5.559 The provisions of the WPPT relating to the “digital agenda” cover the followingissues:certain definitions, rights applicable to storage and transmission of performances andphonogramsin digital systems, limitations on and exceptions to rights in a digital environment,technologicalmeasures of protection and rights management information. As discussed below, theright ofdistribution may also be relevant in respect of transmissions in digital networks; itsscope, however,is much broader. Also due to its relationship with the right of rental, the right ofdistribution isdiscussed, together with the former right, below.Definitions5.560 The WPPT follows the structure of the Rome Convention, in the sense that itcontains, inArticle 2, a series of definitions. The definitions cover more or less the same terms asthose whichare defined in Article 3 of the Rome Convention: “performers”, “phonogram”, “producerofphonograms”, “publication”, “broadcasting.” They cover more, in the sense that theWPPT alsodefines “fixation” and “communication to the public,” and less, in the sense that they donotdefine “reproduction” and “rebroadcasting.”5.561 The impact of digital technology is present in the definitions, on the basis of therecognitionthat phonograms do not necessarily mean the fixation of sounds of a performance orother soundsany more; now they may also include fixations of (digital) representations of sounds thathavenever existed, but that have been directly generated by electronic means. Thereference to suchpossible fixations appears in the definitions of “phonogram,” “fixation,” “producer of

phonogram,” “broadcasting” and “communication to the public.” It should be stressed,however,that the reference to “representations of sounds” does not expand the relevantdefinitions asprovided under existing treaties; it only reflects the desire to offer a clarification in theface ofadvancing technology.Storage of Works in Digital Form in an Electronic Medium5.562 In June 1982, a WIPO/Unesco Committee of Governmental Experts clarified thatstorage ofworks and objects of related rights in an electronic medium is reproduction. TheDiplomaticConference adopted an agreed statement which reads: “The reproduction right, as setout inArticles 7 and 11 [of the WPPT], and the exceptions permitted thereunder throughArticle 16 [of theWPPT], fully apply in the digital environment, in particular to the use of performancesandphonograms in digital form. It is understood that the storage of a protectedperformance orphonogram in digital form in an electronic medium constitutes a reproduction within themeaningof these Articles.”5.563 The first sentence states the obvious, that the provisions of the Treaty on therights ofreproduction are fully applicable in a digital environment. The concept of reproductionmust not berestricted merely because a reproduction is in digital form through storage in anelectronic memory,or because a reproduction is of a temporary nature. It also follows from the same firstsentencethat Article 16 of the Treaty is also fully applicable, offering an appropriate basis tointroduce anyjustified exceptions, such as in respect of certain transient and incidental reproductions,in nationallegislation, in harmony with the “three-step test” provided for in that provision of theTreaty (seebelow).Chapter 5 - International Treaties and Conventions on Intellectual Property 3275.564 The second sentence of the agreed statement simply confirms the definition ofstorage ofworks. It is another matter that the word “storage” may still be interpreted in somewhatdifferingways.Transmission in Digital Networks5.565 The background to the provisions of the WPPT concerning transmission of worksin digitalnetworks, including the so-called “umbrella solution”, can be found in the third sectionof thischapter.5.566 In the WPPT, the relevant provisions regarding transmission in digital networksare Articles

10 and 14, under which performers and producers of phonograms, respectively, mustenjoy “theexclusive right of authorizing the making available to the public” of their performancesfixed inphonograms and of their phonograms, respectively, “by wire or wireless means, in sucha way thatmembers of the public may access them from a place and at a time individually chosenby them.”Taking into account the freedom of Contracting Parties to choose differing legalcharacterization ofacts covered by certain rights provided for in the treaties, it is clear that, also in thiscase,Contracting Parties may implement the relevant provisions not only by applying such aspecific rightbut also by applying some other rights such as the right of distribution or the right ofcommunication to the public — providing their obligations to grant an exclusive right ofauthorization concerning the acts described are fully respected.5.567 On the question of whether the mere provision of physical facilities for enabling ormaking acommunication in itself amounts to communication within the meaning of the WCT orthe BerneConvention, the agreed statement, which was adopted in relation to Article 8 of theWCT, intendsto clarify the issue of the liability of service and access providers in digital networks likethe Internet.It is clear that, although this was not stated explicitly, the principle reflected in theagreed statementis also applicable, mutatis mutandis, to the above-mentioned provisions of Articles 10and 14 of theWPPT concerning “making available to the public.”Limitations and Exceptions in the Digital Environment5.568 The Diplomatic Conference affirmed that the agreed statement concerninglimitations andexceptions is applicable mutatis mutandis also to Article 16 of the WPPT on limitationsandexceptions. That provision of the WPPT is discussed below. It is obvious that anylimitations andexceptions — existing or new — in the digital environment are only applicable if they areacceptableunder the “three-step test” indicated in Article 16(2) of the Treaty (see below).Technological Measures of Protection and Rights Management Information5.569 The provisions in Articles 18 and 19 of the WPPT concerning technologicalmeasures andrights management information correspond to the similar provisions of the WCT (see thethirdsection dealt with in this chapter).5.570 An agreed statement was adopted by the Diplomatic Conference concerningArticle 12 ofthe WCT, which contains provisions similar to those of Article 19 of WPPT. The first partof theagreed statement reads: “It is understood that the reference to ‘infringement of anyright covered

by this Treaty or the Berne Convention’ includes both exclusive rights and rights ofremuneration.”The second part reads: “It is further understood that Contracting Parties will not rely onthis Articleto devise or implement rights management systems that would have the effect ofimposingformalities which are not permitted under the Berne Convention or this Treaty,prohibiting the freemovement of goods or impeding the enjoyment of rights under this Treaty.” TheDiplomatic328 WIPO Intellectual Property Handbook: Policy, Law and UseConference stated that the two-part statement quoted above was applicable mutatismutandis alsoto Article 19 of the WPPT.Other Substantive ProvisionsCriteria for Eligibility5.571 Article 3 provides for the application of the criteria under the Rome Convention(Articles 4,5, 17 and 18).National Treatment5.572 Article 4 provides for the same kind of national treatment as that prescribed byArticle 3.1of the TRIPS Agreement in respect of related rights, that is, national treatment onlyextends to therights granted under the Treaty.Coverage of the Rights of Performers5.573 The coverage of the rights of performers is similar to that under the TRIPSAgreement; itonly extends to live aural performances and performances fixed in phonograms, exceptfor the rightof broadcasting and communication to the public of live performances, which underArticle 6(i)extends to all kinds of live performances, not only to aural ones (as under the secondsentence ofArticle 14.1 of the TRIPS Agreement).5.574 It is a question for interpretation whether the right to authorize fixation of unfixedperformances under Article 6(ii) extends to all fixations or only to fixations onphonograms. Thetext of the provision may suggest a broader coverage; if, however, the definition of“fixation”under Article 2(c) is also taken into account, it seems that a narrower interpretation isjustified.According to the said definition, “fixation” only means “the embodiment of sounds, ortherepresentation thereof, from which they can be perceived, reproduced or communicatedthrough adevice” (emphasis added). Thus, Article 6(ii) seems to only extend to fixation onphonograms.Moral Rights of Performers5.575 Article 5(1) provides as follows: “Independently of a performer’s economic rights,and even

after the transfer of those rights, the performer shall, as regards his live auralperformances orperformances fixed in phonograms, have the right to claim to be identified as theperformer of hisperformances, except where omission is dictated by the manner of the use of theperformance, andto object to any distortion, mutilation or other modification of his performances thatwould beprejudicial to his reputation.” This provision, in its main lines, follows Article 6bis of theBerneConvention (on the moral rights of authors) but it requires a somewhat lower level ofprotection: inrespect of the right to be identified as the performer, the element of practicability isbuilt in, and thescope of “the right to respect” is also narrower. Article 5(2) and (3), on the duration ofprotectionof, and the means of redress for safeguarding, the rights, are mutatis mutandis versionsofArticle 6bis(2) and (3) of the Berne Convention.Economic Rights of Performers5.576 In addition to the “right of making available,” discussed above under the “digitalagenda,”and a right of distribution, discussed below, the WPPT provides for practically the sameeconomicrights for performers — right of broadcasting and communication to the public ofunfixedperformances (but in Article 6(ii) it is added: “except where the performance is alreadya broadcastChapter 5 - International Treaties and Conventions on Intellectual Property 329performance”), right of reproduction and right of rental (Articles 6, 7 and 9) — as therightsgranted in the TRIPS Agreement (Articles 14.1 and 14.4).5.577 As far as the distribution right is concerned, Article 8(1) provides that performershave anexclusive right of authorizing the making available to the public of the original andcopies of theirperformances fixed in phonograms, through sale or other transfer of ownership. Article8(2) dealswith the issue of the exhaustion of this right. It does not oblige Contracting States tochoosenational/regional exhaustion or international exhaustion, or to regulate at all the issue ofexhaustion.Rights of Producers of Phonograms5.578 In addition to the right of “making available” discussed above under the “digitalagenda”and a right of distribution, the WPPT provides the same rights for producers ofphonograms — rightof reproduction and right of rental (Articles 11 and 13) — as those granted under theTRIPSAgreement (Articles 14.2 and 14.4).5.579 Article 12 contains, mutatis mutandis, the same provisions concerning a right ofdistribution

for producers of phonograms in respect of their phonograms, as Article 8 doesconcerning such aright for performers in respect of their performances fixed in phonograms (see above).Right to Remuneration for Broadcasting and Communication to the Public5.580 Article 15 provides practically the same kind of right of remuneration toperformers andproducers of phonograms as Article 12 of the Rome Convention (except that, while thelatter leavesit to national legislation whether this right is granted to performers, to producers or toboth, theformer provides that this right must be granted to both, in the form of a single equitableremuneration) and with the same extent of possible reservations as under Article16.1(a) of theRome Convention.5.581 A specific feature of Article 15 appears in paragraph (4) which provides as follows:“For thepurposes of this Article, phonograms made available to the public by wire or wirelessmeans in sucha way that members of the public may access them from a place and at a timeindividually chosenby them shall be considered as if they had been published for commercial purposes.”Limitations and Exceptions5.582 Under Article 16(1) of the WPPT, Contracting Parties may “provide for the samekinds oflimitations or exceptions with regard to the protection of performers and producers ofphonogramsas they provide for, in their national legislation, in connection with the protection ofcopyright inliterary and artistic works.” This provision corresponds in substance to Article 15.2 ofthe RomeConvention. It is, however, an important difference that the Rome Convention, in itsArticle 15.1,also provides for specific limitations independent of those provided for in a givendomestic lawconcerning copyright protection. Two of those specific limitations (use of short excerptsforreporting current events and ephemeral fixations by broadcasting organizations) are inharmonywith the corresponding provisions of the Berne Convention; the third specific limitation,however,is not, since it provides for the possibility of limitations in respect of private use withoutany furtherconditions, while, in the Berne Convention, limitations for private use are also coveredby thegeneral provisions of Article 9(2) and, consequently, are subject to the “three-step test”(see underthe WCT, paragraph 5.244).330 WIPO Intellectual Property Handbook: Policy, Law and Use5.583 If a country adheres to both the WCT and the WPPT, which is desirable, on thebasis of theabove-quoted Article 16(1) of the WPPT, it is obliged to apply the “three-step test” alsofor any

limitations and exceptions to the rights provided for in the WPPT. Article 16(2) of theWPPT,however, contains a provision which prescribes this directly also (and, thus, that test isapplicableirrespective of whether or not a given country also adheres to the WCT); it reads:“ContractingParties shall confine any limitations of or exceptions to rights provided for in this Treatyto certainspecial cases which do not conflict with a normal exploitation of the performance orphonogramand do not unreasonably prejudice the legitimate interests of the performer or of theproducer ofthe phonogram.”Transferability of Rights5.584 The Treaty–similarly to the Berne Convention and the WCT — does not containanylimitation on the transferability of economic rights. The transferability of economicrights isconfirmed also by the introductory phrase of Article 5(1) on moral rights of performerswhich reads:“Independently of a performer’s economic rights and even after the transfer of thoserights.....”(emphasis added).Duration of Protection5.585 Under Article 17 of the WPPT, the “term of protection to be granted to performersshalllast, at least, until the end of a period of 50 years computed from the end of the year inwhich theperformance was fixed in a phonogram.”5.586 The term of protection of phonograms differs in substance from the term providedfor inthe TRIPS Agreement. Under Article 14.5 of the Agreement, the 50-year term is alwayscomputedfrom the end of the year in which the fixation was made, while under Article 17(2) of theWPPT, theterm is calculated from the end of the year in which the phonogram was published, andit is only incase of absence of publication that it is calculated as under the TRIPS Agreement. Sincepublicationnormally takes place after fixation, the term under the Treaty, in general, is somewhatlonger.Formalities5.587 Under Article 20 of the WPPT, the enjoyment and exercise of rights provided for intheTreaty must not be subject to any formality.Application in Time5.588 Article 22(1) of the WPPT, in general, provides for the mutatis mutandisapplication ofArticle 18 of the Berne Convention. Article 22(2), however, allows for Contracting Partiesto limitthe application of Article 5 on moral rights to performances which take place after theTreaty enters

into force for them.Enforcement of Rights5.589 The provisions on enforcement in Article 20 of the WPPT correspond to the similarprovisions in Article 14 of the WCT, which are explained in the third section of thischapter.Chapter 5 - International Treaties and Conventions on Intellectual Property 331Administrative Provisions5.590 These provisions, in general, are the same as, or similar to, the provisions of otherWIPOtreaties on the same issues, and they correspond to the similar provisions of the WCT,dealt with inthe third section of this chapter.5.591 The number of instruments of ratification or accession needed for the entry intoforce of theWPPT was fixed at 30. The WPPT entered into force on May 20, 2002. The States partyto theWPPT are listed in the appropriate document to be found inserted in the back flap of thisvolume.Audiovisual Performances5.592 The definitions of the terms “phonogram” and “fixation” in Article 2(b) and (c) ofthe WPPTlimit the application of the Treaty to recordings of sounds. As regards audiovisual use ofperformances (that is use through moving images, with or without sound) the WPPT onlygrantsprotection against live broadcasting (Article 6(i)). The 1996 Diplomatic Conferencewhich adoptedthe WPPT also discussed a possible extension of the scope of protection to cover suchaudiovisualuse, but agreement was not reached at the time. In accordance with a Resolution,adopted by theDiplomatic Conference, work on the issue continued in the WIPO Standing Committee onCopyright and Related Rights. At the Diplomatic Conference on the Protection ofAudiovisualPerformances, which was held in Geneva in December 2000, agreement was reached onall issues,except for the question of international recognition of statutory provisions on thetransfer of rightsfrom performers to producers.The International Convention for the Protection of New Varieties ofPlantsIntroduction5.593 The availability to growers of improved, new plant varieties is critically importantto theagricultural and horticultural industries of all countries. Improved disease resistance,higher yieldsand improvements in a host of other features of plants can dramatically affect theeconomics of theproduction of a crop and its acceptability to its final consumers. Food security for arapidly growingworld population, sustainable agricultural production, the need to raise farm incomesand toenhance economic development call for sustained efforts in breeding new varieties.

5.594 However, new varieties, developed after many years of patient work and heavyinvestment,are frequently capable of self-reproduction, with the result that the release of a smallquantity ofreproductive material of a plant variety can mean that it is thenceforth available to all.Since theplant breeder is unable to secure a sufficient economic return from the initial release ofmaterial ofhis variety, the granting to breeders of rights of exclusive exploitation of their varietieshas proved tobe essential to provide an incentive for private investment in plant breeding in manyspecies.332 WIPO Intellectual Property Handbook: Policy, Law and UseThe International Union for the Protection of New Varieties of Plants (UPOV)History5.595 As early as 1930, the United States of America introduced a special form ofexclusive rightcalled a plant patent, which was, however, available only for asexually reproducedvarieties.Subsequently a group of European States came together in 1961 to establish theInternationalConvention for the Protection of New Varieties of Plants (the Convention), which wasrevised in1972, 1978 and 1991. The Convention also establishes the International Union for theProtectionof New Varieties of Plants which is known as UPOV (the name “UPOV” is an acronymderived fromthe French translation of these words); its 1978 revised form is hereafter referred to as“the 1978Act.” The Convention as revised in 1991 is called “the 1991 Act.” The Conventionpotentiallyprotects all plant varieties irrespective of their mode of reproduction or of thetechnology used intheir development.5.596 States adhering to the Convention undertake to create a system for the grant ofplantbreeders’ rights, within their domestic laws, in accordance with internationally agreedand uniformprinciples. Each UPOV member State must entrust the granting of breeders’ rights to anappropriate administrative unit. Plant breeders’ rights are granted in each memberState for its ownterritory, and not on an international basis. After the entry into force of the 1991 Act, onApril 24,1998, the 1978 Act was closed for further accessions with the exception of those Stateswhich hadalready initiated the accession procedure by that time.5.597 UPOV is an independent, international, intergovernmental organization, with aninternational legal personality. Its headquarters are in Geneva, and it employs its ownstaff.5.598 UPOV cooperates very closely in administrative matters with the WorldIntellectual Property

Organization (WIPO), a specialized agency of the United Nations. The Secretary-Generalof UPOV isthe Director General of WIPO, the UPOV headquarters is in the same building as WIPO,and UPOVreceives a range of support services from WIPO.5.599 Existing member States only become bound by the 1991 Act when they havemodified theirexisting laws and deposited an instrument of accession to the new Act.5.600 The next section will consider the 1978 Act of the Convention, and a subsequentsectionwill outline the 1991 Act.The Criteria for Protection5.601 The 1978 Act provides a system for the protection of a new plant variety, that isto say, thephysical unit of plant material selected by the plant breeder with its set ofmorphological andphysiological characteristics. If a legal right in this unit of plant material is to beeffectivelyenforced, the identity of the plant material must be established beyond doubt. Whenconcludingwhether particular plant material constitutes or belongs to a “variety”, the classifiermust decide onthe extent of its distinctness from other material, its uniformity in the sense thatvariations from astandard description are within reasonable limits, and its stability in the sense that it willretain itsdistinguishing features from one generation to the next. The 1978 Act accordinglyrequires inArticle 6 that member States adopt the three criteria of distinctness, uniformity (the1978 Act usesthe word “homogeneity”) and stability as the technical basis for the protection of plantvarieties,and adds the further two requirements of commercial novelty and the submission of anacceptabledenomination for the variety.Chapter 5 - International Treaties and Conventions on Intellectual Property 3335.602 A variety must be commercially novel to secure protection. Article 6(1)(b) of the1978 Actprovides that the variety must not, prior to the date of application, have been offeredfor sale ormarketed with the agreement of the breeder in the territory of the State where theapplication inquestion has been filed. States are, however, given a choice in relation to this provisionand arepermitted, if they wish, to permit varieties to be offered for sale or market in their ownterritoriesfor a maximum of one year prior to the date of application. In addition, the variety mustnot havebeen offered for sale or marketed with the agreement of the breeder in the territory ofany otherstate for longer than six years, in the case of certain woody species, or for four years inthe case of

all other species. These periods of grace relating to commercialization in other countriesrecognizethe lengthy nature of trials to ascertain the agronomic value of varieties before makinganapplication for protection, without prejudicing the right to protection.5.603 The novel variety must be given a denomination in accordance with theprovisions ofArticle 13 of the 1978 Act. Article 13 provides that the variety must be designated by adenomination which is destined to be its generic designation and it establishes rulesdesigned toensure that, in the interests of growers and consumers, this denomination does indeedprovide aclear-cut generic designation. Thus the denomination may not consist solely of figures,exceptwhere this is an established practice for designating varieties of a particular species. Itmust not beliable to mislead or cause confusion concerning the characteristics of the variety or itsvalue oridentity and it must, of course, be different from every designation which designates inany UPOVmember State another variety of the same species or of a closely related species.5.604 The technical criteria of distinctness, uniformity and stability, and the furthercriteria ofcommercial novelty and the establishment of a denomination accordingly represent thestandardconditions that must be fulfilled to secure protection for a new plant variety under thelaws ofUPOV member States. The 1978 Act stipulates in Article 6(2) that, provided the breedercomplieswith its necessary formalities, a UPOV member State may not make the grant ofprotection subjectto conditions other than the five conditions described above.The Scope of Protection5.605 Article 5 of the 1978 Act establishes the nature of the rights that member Statesmust as aminimum undertake to grant to breeders. The breeder’s right is limited to the exclusiveproductionand sale of reproductive or vegetative propagating material of his variety. The breederdoes not, forinstance, in the case of a cereal variety, have the exclusive right to sell grain of thatvariety, but onlyseed. It is a question of fact to be established by evidence whether a sale is of seed orgrain. Afurther very important aspect to note here is that under the 1978 Act the breeder’sexclusive rightrelates only to production for the purposes of commercial marketing. If production ofreproductivematerial is not for that purpose, or if such material is not marketed, it is not covered bythebreeders’ rights: a farmer, for instance, who produces seed on his own farm for thepurposes ofresowing on his own farm, can do so freely without obligation to the breeder.

5.606 The 1978 Act only establishes the minimum scope of the right that States mustgrant.Member States are expressly permitted, under their own laws, to grant to breeders of aparticulargenera or species a more extensive right than that described above, even extending tothe marketedproduct of the variety. In practice, however, few states have availed themselves of thisright.5.607 Article 5 further provides that any authorization given by the breeder in relationto theproduction or marketing of his variety may be made subject to such conditions as hemay specify.The breeder is thus to be free to decide whether he will exploit his exclusive right byproducing andselling all the reproductive or propagating material of his variety that is needed by themarket, orwhether he will grant licenses to others, perhaps in exchange for a royalty. The practicein334 WIPO Intellectual Property Handbook: Policy, Law and Useindividual states varies. In many countries, in relation to species where very largevolumes of seedmust be produced and sold, and where the ease of keeping their own seed influencesthe price thatfarmers are prepared to pay, the practice of plant breeders is to select the least costlymethod ofproduction and distribution. For example, in the case of small grain cereals, in mostEuropeancountries, licenses are granted very widely to organizations such as local cooperativesand grainmerchants, who provide a wide range of services and supplies to farmers. Organizationsof thiskind produce seed locally under contract and sell it back to local farmers, thusminimizing the costof transportation. The breeder is content to receive a royalty on each ton of seed whichis sold. Inthe case of more specialized seed production such as the production of some cross-pollinatingspecies, of hybrid varieties, of high-quality vegetable seed or of new varieties of trees orvines, thepractice of the breeder is probably to control very tightly the production of seed orplants in orderto maintain the quality and reputation of his variety. In these cases he may seek hisreward directlyin the price of the seed. Many different situations exist, however, depending upon thecommercialstructure of seed and nursery plant distribution in each country and the logisticalaspects of theproduction and distribution of a particular species. The 1978 Act is silent on all thesemarketingquestions. It simply requires of UPOV member States that they permit breeders tospecifyconditions of licenses for their varieties.

5.608 Article 5(3) of the 1978 Act contains a truly fundamental principle. It states thattheauthorization of the breeder shall not be required for the utilization of the variety as aninitial sourceof variation for the purpose of creating other varieties. The only permitted exception tothis rulearises when the repeated use of the variety is necessary for the commercial productionof anothervariety. This limited exception relates to the use of an inbred line in the commercialproduction ofseed of a hybrid. The free availability of protected varieties as a germ plasm source forotherbreeders is a fundamental tenet of the 1978 Act, and demonstrates that its authorswereagriculturalists who were totally aware of the nature of plant breeding and of themanner in whichincremental progress is achieved by building upon the progress embodied in existingvarieties.5.609 The 1978 Act requires States to grant a minimum period of protection of 18 yearsin thecase of vines, forest trees, fruit trees, and ornamental trees and 15 years in the case ofall otherplants.5.610 The 1978 Act does not immediately impose upon its member States theobligation toprotect all botanical genera and species. The 1978 Act states that its provisions may beapplied toall botanical genera and species, without requiring member States to protect all these.What it doesrequire is that member States apply the Convention to a minimum of five genera whenfirstacceding to the UPOV Convention and that, over a period of years, they progressivelyapply theConvention to a greater number of protected species. Most member States protect allspecies ofeconomic importance in their countries and, in an increasing number of cases, theentire plantkingdom.5.611 Article 10 of the 1978 Act includes amongst its provisions one to the effect thatthe breederof a protected variety shall forfeit his right if he is no longer in a position to provide theauthoritieswith reproductive or propagating material capable of reproducing the protected variety,with itsmorphological and physiological characteristics, as defined when the right was granted.In otherwords, the breeder must competently maintain his variety if he wishes to retain thebenefit ofprotection.5.612 Article 2 of the 1978 Act provides that a state may provide protection for plantvarieties in

the form of plant variety protection or of a patent, but once it has opted to protectvarieties of aspecies by plant breeders’ rights it may not subsequently protect varieties of that samespecie bypatent. This is the so-called prohibition on “double protection.”Chapter 5 - International Treaties and Conventions on Intellectual Property 3355.613 Article 3 of the 1978 Act states that each member State must accord to nationalsandresidents of other member States the same treatment as that which it accords to itsown nationals.5.614 Article 7 of the 1978 Act provides that member States shall only grant protectionafter theexamination of the variety in the light of the criteria of distinctness, uniformity, stabilityandcommercial novelty referred to above. This provision has been interpreted to mean thatmemberStates should require a growing test which should be conducted either by the State orby thebreeder, provided that the test follows relevant guidelines and that the breeder isrequired to supplya sample of the variety at the time of application and to permit persons authorized bythe State tovisit the trials.5.615 Article 9 of the 1978 Act provides that UPOV member States may not restrict theexercise ofthe exclusive right accorded to the breeder otherwise than for reasons of public interestand that,where any such restriction is imposed, the member State involved shall take allnecessary measuresto ensure that the breeder receives equitable remuneration.5.616 Article 10 of the 1978 Act provides that the right of the breeder should not beannulledunless it is shown that the variety did not fulfil the commercial novelty and distinctnessrequirements when the rights were granted, or be cancelled unless the breeder fails tomaintain thevariety or pay the necessary fees.5.617 Article 12 of the 1978 Act requires member States to establish rules givingpriority for aperiod of 12 months to an application for a variety where an application has alreadybeen filed forthat variety in another country. This means that an application in a member State mustbe treatedas if filed on the date of an earlier application in another member State for whichpriority is claimed.5.618 Article 14 of the 1978 Act provides that the grant or refusal of breeders’ rights fora varietymust be independent of the regulation in any UPOV member State which is concernedwith theproduction, certification and marketing of seeds.5.619 Articles 1 to 14 of the 1978 Act are the Articles which establish the main legalrules which

the member States of UPOV undertake to incorporate in their national laws. Theremainingprovisions of the 1978 Act are for the most part concerned with the establishment ofUPOV and itsmanagement.5.620 The 1978 Act has worked well in practice, and is the basis of a rapidly expandingprotectionsystem. The question immediately arises: “Why was revision necessary, and whatchanges havebeen incorporated in the 1991 Act?”The 1991 Act of the UPOV Convention5.621 Advances in technology and the experience of operating the Convention since1961 led to anumber of suggestions for improvements to the Convention. Accordingly, in 1987, theCouncil ofUPOV decided to effect a revision of the 1978 Act. After extensive consultation ofinterested circlesand numerous sessions of expert committees, the Council approved in October 1990 adraft revisedConvention (“the Basic Proposal”) and decided to hold a Diplomatic Conference in March1991 torevise the Convention.5.622 The Diplomatic Conference adopted unanimously, on March 19, 1991, a revised1991 Actof the UPOV Convention (“the 1991 Act”). Fifteen member States of UPOV signed the1991 Act336 WIPO Intellectual Property Handbook: Policy, Law and Useeither at the conclusion of the Conference or during the period when it remained openforsignature. The effect of signature is not, of course, to bind the signatory State butsimplyrepresents an acknowledgment of its intention to enact a law based on the Conventionand, in duecourse, to ratify the Convention. It is only the ratification of the Convention by anexisting memberState which has signed the Convention, or accession to the Convention by a newmember State,which creates an international legal obligation.5.623 Article 37 of the 1991 Act provided that it would come into force one month afterfiveStates had deposited their instruments of adherence, provided that at least three ofsuchinstruments were deposited by existing member States of UPOV. In the event, it enteredinto forceon April 24, 1998. Owing to the fact that two States had deposited their instruments ofadherenceon the same date one month before, there was one more member State than the fiverequired byArticle 37 when the new Act came into force. After this, the 1978 Act was, in principle,closed tofurther accessions.5.624 Article 34(1)(b) of the 1991 Act provides for possible membership of UPOV by an

intergovernmental organization. This provision facilitates the membership of theEuropeanCommunity when the proposal for the Council Regulation (EEC) on Community PlantVariety Rightswas adopted by the Community and came into force on April 27, 1995. Article 26(6)(b),whichconcerns voting in the Council, and Article 6(3) and 16(3) concerning novelty andexhaustion, alsocontain provisions which reflect the interests of the Community. Article 34(1)(b) appliesalso, forexample, to the African Intellectual Property Organization (Organisation africaine de lapropriétéintellectuelle (OAPI)) which, in the form of Annex X of the Revised Bangui Agreement,adopted aregional system of plant variety protection in line with the 1991 Act of the UPOVConvention.5.625 The structure of the 1978 Act was fundamentally revised in the new Act. In the1991 Act,the articles are grouped together in ten chapters and the chapters follow a chronologicalorderdealing first with the “General Obligations of the Contracting Parties,” followed by“Conditions forthe Grant of the Breeder’s Right,” provisions concerning the “Application for the Grant oftheBreeder’s Right,” “the Rights of the Breeder,” “Variety Denomination” and “Nullity andCancellation of the Breeder’s Right.” The administrative and final provisions of theConvention arecontained in the last three chapters.5.626 The remainder of this section examines the text of the 1991 Act in the numericalorder ofthe articles, mentioning the corresponding articles in the old text and the nature of thechanges. Itis not exhaustive and deals only with the parts of the Act which are of major substantiveimportance.Definitions5.627 Article 1 contains “definitions” which are, for the most part, self-explanatory. Item(vi)contains a definition of “variety.” The 1978 Act contains no definition of “variety” whilethe 1961Act of the Convention provides that “For the purposes of this Convention, the word“variety”applies to any cultivar, clone, line, stock or hybrid which is capable of cultivation andwhich satisfiesthe provisions of subparagraph (1)(c) and (d) of Article 6.” The provisions of thesesubparagraphsspecify the conditions of homogeneity and stability which must be satisfied by a plantvariety priorto a grant of breeders’ rights.5.628 The definition of “variety” incorporated into the 1961 Act of the Convention isalmost, butnot quite, synonymous with “variety which is protectable under the Convention.” Inframing a

definition in 1991, it was thought that there should be a clear distinction between thedefinition of“variety” and a variety which meets the technical criteria of Articles 7, 8 and 9 of the1991 Act ofChapter 5 - International Treaties and Conventions on Intellectual Property 337the Convention so as to be a protectable variety. This is to ensure that a variety with alevel ofuniformity which is unacceptable for the purposes of a grant of rights may still exist as a“variety”and be taken into account, for example, for the purposes of common knowledge anddistinctnessunder Article 7. The fact that the definition of “variety” is wider than “protectablevariety” is madeclear by the use of the words “irrespective of whether the conditions for the grant of abreeder’sright are fully met” in the introductory phrase.5.629 In order to establish an identity for any variety, protectable or otherwise, it mustbe distinctfrom other varieties, certain characteristics must be displayed with reasonableuniformity by itscomponent individuals, and it must retain its identity from one generation to the next.Theconditions of distinctness, uniformity and stability which are necessary for the purposesofestablishing an identity for a unit of plant material to which breeders’ rights are toattach, are thusalso necessary, but possibly to a more limited extent, when deciding that particularplant materialconstitutes a variety. The three indents in the definition correspond respectively to therequirementsfor uniformity, distinctness and stability but were considered to set these requirementsat a lowerlevel than that necessary for protection.5.630 The expression “plant grouping” used within the definition corresponds to theFrench“ensemble végétal” and leaves open the question whether a variety must invariably beconstitutedby more than one whole plant.The Basic Obligation of Contracting Parties5.631 The basic obligation of States party to the Convention that “each ContractingParty shallgrant and protect breeders’ rights” is imposed by Article 2. “Breeder’s right” is definedin Article 1as “the right of the breeder provided for in this Convention.” Accordingly, each Stateparty to theConvention must grant protection on the conditions specified in Chapter III (and subjectto nofurther and different conditions), with the minimum scope of protection required byChapter V, andin accordance with all other relevant provisions of the Convention. The provisions ofArticle 2correspond to the provisions of Articles 1 and 30(3) of the 1978 Act.

5.632 Unlike the first sentence of Article 2(1) of the 1978 Act, the 1991 Act is silent onthe formof the breeder’s right. It may take the form of a special sui generis breeder’s right, or itmay becalled a “patent” or given any other designation provided it has the minimum substanceprovidedfor in the Convention. The 1991 Act equally contains no provision corresponding to thesecondsentence of Article 2(1) of the 1978 Act (the so-called “ban on double protection”) sothat aContracting Party is, so far as the 1991 Act is concerned, free to protect varieties, inaddition to thegrant of a breeder’s right, by the grant of other titles, particularly patents. A memberStateexercising this freedom to grant patents in addition to the breeder’s right is free todecide whetheran applicant must choose between a breeder’s right and a patent, or whether he canapply for andbe granted both. If, for any given variety, cumulative protection of this kind is obtained,theresolution of any conflict between the two kinds of protection is left to the legislationand courts ofthe member State where the titles were obtained and is not regulated by theConvention.Genera and Species to be Protected5.633 Article 3 corresponds to Article 4 of the 1978 Act and is concerned with thegenera andspecies to be protected. The system of the 1978 Act requires member States to protecta minimumof five genera or species on accession to the Convention, and thereafter to protectadditionalgenera or species on a progressive basis, leading to a minimum of 24 genera or speciesafter eightyears. Article 4 of the 1978 Act does contain a provision that member States shouldundertake toadopt all measures necessary for the progressive application of the Convention to thelargest338 WIPO Intellectual Property Handbook: Policy, Law and Usepossible number of botanical genera and species, but in no way imposes on memberStates a clearcommitment to protect the whole plant kingdom. Article 3 of the 1991 Act, however,requiresexisting member States to protect all plant genera and species five years afterbecoming bound bythe new text, and requires new member States to protect all plant genera and species10 years afterthey become bound by the 1991 Act, so that over time a worldwide UPOV system ofplant varietyprotection will emerge which requires all member States to protect all plant genera orspecies.5.634 The emergence of such a system has some interesting implications for the future,

particularly in view of the increased scope of protection which is now provided in Article14 ofthe 1991 text. Since Sweden, for example, modified its national law so as to conformwiththe 1991 Act, it should in due course become possible to protect a new banana varietyin Sweden,notwithstanding the fact that the variety will never be grown there, with a view totaking actionagainst imports derived from the unlicensed propagation of the variety in countrieswhere plantvariety protection is not available. The absence under the 1978 Act of any protection oftheharvested material of a plant variety in importing countries has meant that it has beena matter ofno concern to exporting countries without breeders’ rights if varieties were piraticallyexploited intheir territories with no reward to the breeders of the varieties. This situation may wellchange inthe future in relation to species where the harvested material of the variety moves ininternationaltrade.Conditions for the Grant of the Breeder’s Right5.635 These articles contain the conditions for the grant of a breeder’s right andcorrespond toArticle 6 of the 1978 Act of the Convention. There have been extensive changes inlanguage but,except where some express reference is made below, there is no specific intention tochange thesubstance.5.636 Article 6 of the new text deals with the novelty-destroying prior commercializationof avariety. In the existing text, a variety must not have been offered for sale or marketedwith theagreement of the breeder prior to the filing of an application for protection in theterritory wherethe application is filed or, where the law of the relevant State so provides, for one yearprior to suchfiling. The new text requires all member States to make provision in their laws for thisone-yeargrace period; it is no longer optional.5.637 The provisions of Article 6(1)(b) of the 1978 Act state that the variety must nothave beenoffered for sale or marketed with the agreement of the breeder prior to the date ofapplication.The provisions of Article 6 of the 1991 Act state that propagating or harvested materialof thevariety must not have been sold or otherwise disposed of to others by or with theconsent of thebreeder for the purposes of exploitation of the variety. The language of the 1991 Act isverydifferent from that of Article 6(1)(b) of the 1978 Act, and may have the effect ofencompassing

certain commercial activities with varieties that fall outside the corresponding provisionsin theexisting laws of some UPOV member States. An example might be the use of an inbredline as theparent of a hybrid where the inbred line was not itself sold or marketed. It has beenclaimed thatthe use of an inbred in this way, perhaps protected by trade secrecy, would not debarits breederfrom applying for protection for the inbred line many years after it was first used forcommercialpurposes.5.638 Paragraph (3) of Article 6 of the 1991 Act makes reference to special rules thatmay beadopted where sales are effected in the member States of an intergovernmentalorganization. Thisprovision relates to the UPOV membership of the EC, and enables the EC and itsmember States toenact provisions which will make a sale in one EC member State a novelty-destroyingevent for allEC member States, thereby conforming to the concept of the single market.Chapter 5 - International Treaties and Conventions on Intellectual Property 3395.639 Article 7 of the 1991 Act deals with distinctness and requires simply that a varietymust beclearly distinguishable from any other variety whose existence is a matter of commonknowledge atthe time of the filing of the application. The language of the existing text, by which avariety mustbe clearly distinguishable by one or more important characteristics from any othervariety, has beenabandoned, since it was considered needlessly ambiguous. The word “important” hasfrequentlysuggested to persons reading the text of the 1978 Act for the first time that a varietymust, to beprotectable, be distinct from existing varieties by some feature related to merit. Thishas never beenthe case. The view has been consistently taken over the years in UPOV circles that theworth ormerit of a variety varies too greatly with time and environment to be used as a criterionfor thegrant of protection in an international intellectual property rights’ system. The simplifiednew textavoids the ambiguity of the word “important.”5.640 The 1978 Act provided a non-exhaustive list of examples of common knowledgewhichincluded “an entry in an official register of varieties already made or in the course ofbeing made”,which plainly does not constitute common knowledge in the normal sense, since therelevantinformation may not necessarily be publicly available. Accordingly, Article 7 in the newtext leavesthe notion of common knowledge undefined and refers only to the specific instances of

applications for protection or entry in an official register where, for the purposes of theConvention,common knowledge is deemed to exist notwithstanding that the information may not begenerallyavailable.5.641 An application for the grant of a breeder’s right or for the entering of a variety inan officialregister of varieties does not, however, make the variety in question a matter ofcommonknowledge unless the application leads to the granting of a breeder’s right or theentering of thevariety in an official register of varieties. This is to avoid a situation where the systembecomescluttered with large numbers of “varieties” put forward in applications which have beenrefused orwithdrawn and which no longer exist since they have been discarded by their breeders.Examination of the Application5.642 Article 12 of the 1991 Act deals with the examination of the application andcorresponds toArticle 7 of the 1978 Act. There is some change of emphasis in the latest text in that itexpresslymakes reference to the authority responsible for the test “taking into account theresults ofgrowing tests or other trials which have already been carried out.” The eventualextension ofprotection to the whole plant kingdom under Article 3 of the 1991 Act means thatexaminingauthorities may be called upon to examine plant varieties of any species fordistinctness, uniformityand stability, including species which are rare or unknown or in relation to which theauthority haslittle or no knowledge or experience. In these circumstances, the authority may notitself be in aposition to conduct the necessary tests and may find it necessary to ask the breeder toconductthem or to take into account data originating from the breeder. In cases of this kind,testsconducted by the breeder may be acceptable provided that the data in question ispresented in acommon format, and is generated by tests which follow the principles established in theGeneralIntroduction to the UPOV Guidelines for the Conduct of Tests for Distinctness, UniformityandStability, and that a sample of the variety is made available to the authority at the dateofapplication.Provisional Protection5.643 Provisional protection is dealt with in Article 7(3) of the 1978 Act which does not,however,make it compulsory for member States to provide provisional protection. Article 13 ofthe 1991

Act, however, obliges member States to make provision for protecting the interests ofthe breederduring the period between the filing or the publication of an application and thesubsequent grant.340 WIPO Intellectual Property Handbook: Policy, Law and UseThe Article requires Contracting Parties to ensure that, as a minimum, the holder of thebreeder’sright should be entitled to equitable remuneration in respect of acts which will requirethe breeder’sauthorization once the right has been granted. The Article reflects the present practiceof somecountries by enabling Contracting Parties to ensure that the provision of protection shallonly takeeffect in relation to persons whom the breeder had notified of the filing of theapplication.Scope of the Breeder’s Right5.644 Article 5 of the 1978 Act provides that the prior authorization of the breeder“shall berequired for:- the production for purposes of commercial marketing,- the offering for sale,- the marketing- of the reproductive or vegetative propagating material, as such, of the variety.”The article further provides that “vegetative propagating material shall be deemed toinclude wholeplants” and that “the right of the breeder shall extend to ornamental plants or partsthereof,normally marketed for purposes other than propagation, when they are usedcommercially aspropagating material in the production of ornamental plants or cut flowers.”5.645 The fact that the breeder’s authorization is only required for the production ofpropagatingmaterial “for purposes of commercial marketing” means that production of propagatingmaterialthat is not intended for marketing, but only for use on the farm where it was produced,fallsoutside the scope of protection. This has the effect of creating implicitly the so-called“farmer’sprivilege,” whereby farmers may replant on their farms propagating material from thepreviousyear’s harvest.5.646 Article 14(1) of the 1991 Act provides that, in respect of the propagating materialof aprotected variety, any production, reproduction (multiplication), conditioning for thepurpose ofpropagation, offering for sale, selling or other marketing, exporting or importing, orstocking forany of these purposes, shall require the authorization of the breeder. Accordingly, thebasic scopeof the protection extends to all production or reproduction (multiplication) without areference to its

purpose and, unlike the 1978 Act, does not have the effect of creating, by implication, a“farmer’sprivilege.”5.647 The very different agricultural industries of UPOV member States and the varyingpoliticalsituations in these States have nonetheless led to the inclusion in the new Act of aprovisionentitling States to the option of excluding the planting of farm-saved seed from therequirement forthe breeder’s authorization. The provision in question is contained in Article 15(2). Thestructure ofthe provision should ensure that countries give careful thought to the interests of plantbreederswhen exercising this option. It was intended that States would examine the issuesinvolved on aspecies by species basis. The Diplomatic Conference formally recommended that theprovision ofArticle 15(2) “should not be read so as to be intended to open the possibility ofextending thepractice commonly called “farmer’s privilege” to sections of agricultural or horticulturalproductionin which such a privilege is not a common practice.”5.648 Apart from the special provision relating to the production of ornamental plants orcutflowers, the mandatory minimum scope of protection under Article 5 of the 1978 Act islimited toChapter 5 - International Treaties and Conventions on Intellectual Property 341the reproductive or vegetative propagating material, as such, of the variety. Paragraph(4) ofArticle 5 does provide that member States may grant to breeders, in respect of certainbotanicalgenera or species, a more extensive right than that otherwise provided in Article 5,extending, inparticular, to the marketed product. Few States took advantage of this optionalprovision. A majorquestion debated in the course of the revision process was whether the scope of thebreeder’s rightshould be extended in a more general way to the harvested material of the protectedvariety andeven to products produced by processing the harvested material.5.649 The Diplomatic Conference decided the above question in the affirmative. Article14(2) ofthe 1991 Act does make provision for the scope of the breeder’s right to extend toharvestedmaterial, including entire plants and parts of plants where these have been obtainedthrough theunauthorized use of propagating material of a protected variety, but qualifies the scopebyproviding that this scope of protection exists, “unless the breeder has had reasonableopportunityto exercise his right in relation to the propagating material of the variety.”

5.650 The majority of the member States of UPOV which voted in the DiplomaticConference onthe text of Article 14(2) were not prepared to extend to the breeder an untrammeledchoicebetween the exercise of his right in relation to the propagating material and its exercisein relationto the harvested material. They were not, for example, prepared to permit the breederto be totallyfree to exercise his intellectual property right over the grain instead of the seed. Therewas,however, general agreement in the Diplomatic Conference that a breeder needed tohave a rightexercisable over the harvested material of his variety when he had had no opportunityto exercise aright in relation to the propagating material. The most commonly quoted example of thebreederbeing unable to exercise his right was that of the piratical use of a breeder’s variety inanothercountry, perhaps a country which makes no provision for plant variety protection,followed by asubsequent import of harvested material of the variety into a country where the varietyis protected.A further example would be the exercise by the breeder of his right in relation to anyharvestedmaterial which arises from an infringement, of which he was unaware, of his rights inrespect ofpropagating material.5.651 Article 14(2) provides that the breeder has a right to protection in relation toharvestedmaterial “unless he has reasonable opportunity to exercise his right in relation to thepropagatingmaterial.” Accordingly, it is the alleged infringer who will usually bear the burden ofestablishingthat the breeder has indeed had reasonable opportunity to exercise his right in relationto thepropagating material of the variety.5.652 Article 14(3) of the 1991 Act provides for the further extension of the right of thebreederto products made directly from harvested material. This provision is not, however, partof themandatory minimum scope of protection under the 1991 Act. States adhering to the1991 Act maychoose whether they wish to extend the breeder’s right in accordance with Article 14(3).Under theArticle, the authorization of the breeder is required to produce, sell, market, etc. anyproduct madedirectly from harvested material, provided that the harvested material itself results frominfringement. Once again, the exercise by the breeder of any right under the Article inrelation toproducts made directly from harvested material exists “unless the breeder has hadreasonable

opportunity to exercise his right in relation to the harvested material.” The provisosattached toArticle 14(2) and (3) together constitute what has been called a “cascade.” The idea ofthose whopromote the notion of a cascade is that the breeder should only exercise his right inrelation toharvested material if he has not been able to exercise it in relation to the propagatingmaterial, andthat he should only exercise his right in relation to a product made directly fromharvested materialif he has been unable to exercise his right in relation to the harvested material.342 WIPO Intellectual Property Handbook: Policy, Law and Use5.653 As already mentioned, interesting future consequences arising from the extendedscope ofprotection in the 1991 Act can be envisaged once protection extends to the whole plantkingdom.Essentially Derived Varieties5.654 Under the provisions of Article 6(1)(a) of the 1978 Act, any variety is protectablewhich,inter alia, is clearly distinguishable, at the time of application, by one or more importantcharacteristics from other commonly known varieties and which is sufficiently uniformand stable.Article 5(3) of the 1978 Act provides that a protected variety may be used as an initialsource ofvariation for the purpose of creating other varieties. The two provisions taken togethercreate asituation in which an existing protected variety may be used as a source of initialvariation and avariety selected therefrom may be freely exploited by the selector, free of anyobligation to thebreeder of the protected variety, provided that the selection is clearly distinguishable byone ormore important characteristics from the protected variety. Since the word “important” inthiscontext has been construed to mean “important for the purposes of making adistinction” and not“important in the sense of having value,” this has meant that a person selecting amutant or aminor variant from an existing variety or inserting an additional gene into it by back-crossing orsome other procedure, can protect the resulting variety without rewarding the originalbreeder forhis contribution to the final result. Typical examples are the selection of a color mutantfrom anornamental variety, the insertion of a single gene into a maize line by back-crossing(under thefavorable conditions of the tropics, multiple back-crosses can be effected in one year)and morerecently, the insertion of a single gene by genetic engineering. The fact that the 1978Act does notenable the breeder to prevent breeding approaches of this kind, has been criticized asunjust by

industrial circles and the 1991 Act remedies this situation by introducing the principle of“essentialderivation.” Article 14(5) of the 1991 Act provides that a variety which is essentiallyderived from aprotected variety cannot be exploited without the authorization of the breeder of theprotectedvariety. A variety is deemed to be essentially derived from another variety (“the initialvariety”) forthis purpose when:“(a) it is predominantly derived from the initial variety or from a variety that is itselfpredominantly derived from the initial variety while retaining the expression of theessentialcharacteristics that result from the genotype or combination of genotypes of the initialvariety;it is clearly distinguishable from the initial variety;except for the differences which result from the act of derivation, it conforms to theinitialvariety in the expression of the essential characteristics that result from the genotype orcombination of genotypes of the initial variety.”5.655 Article 14(5) provides a non-exhaustive list of examples of acts that may result inessentialderivation, including the selection of a natural or induced mutant, or of a somaclonalvariant, theselection of a variant individual from plants of an initial variety, back-crossing, ortransformation bygenetic engineering.5.656 It is not envisaged that a determination concerning the essential derivation of avariety willbe made by an examining office as part of the grant procedure, but rather that thequestion will beresolved between plant breeders by agreement, or in the last resort through litigation.5.657 The existence of the new principle should ensure in future that those working asinnovatorsin the field of plants will reach agreement before they undertake a program of activitywhich couldresult in varieties that are essentially derived from protected varieties. If a plant breederinserts agene falling within the claims of an invention relating to genetic information (a“patented gene”)Chapter 5 - International Treaties and Conventions on Intellectual Property 343into his variety, the resulting variety could fall within the scope of the patent enablingthe patentee,in effect, to prohibit the exploitation of the variety. If, on the other hand, the patenteeinserts thepatented gene into the same variety, the breeder of the variety has no possibility atpresent toforbid the exploitation of the modified variety. In future, if a patentee of a gene insertshispatented gene into a protected variety, there will exist the possibility that the modifiedvariety willbe essentially derived and fall within the scope of protection of the protected variety. Itis

considered that the new balance established between the two systems in this way willfacilitate theexchange of technology between plant breeders and biotechnologists. Plant breedersandbiotechnologists are described here as if they pursue fundamentally separate activities.UPOV is wellaware that their activities may be pursued in one and the same organization or by oneperson but itdoes still help, occasionally, for present purposes to talk of the two activities separately.It shouldbe noted that there is no suggestion in the essential derivation provision that thebreeder of anessentially derived variety should be able to force the breeder of the initial variety togrant a license,through some compulsory license procedure.Exceptions to the Breeder’s Right5.658 A description has already been given, in connection with the scope of protection,of theprovisions of Article 15(2) relating to an optional exception from the scope of protectionin favor ofcertain farmers in certain circumstances. Article 15(1)(iii) provides that “acts done forthe purposeof breeding other varieties” are compulsorily excepted from the breeder’s right. Thisprovisionreproduces the substance of Article 5(3) of the 1978 Act whereby the authorization ofthe breederis not required for the utilization of a protected variety as an initial source of variationfor thepurpose of creating other varieties, thus creating the so-called “breeder’s exemption.”5.659 This is a very important feature of the Convention and is strongly supported byplantbreeders and by interested circles generally. The breeder’s exemption principle wasstronglyreaffirmed by the Diplomatic Conference. Some parties suggested that the introductionof theprinciple of essential derivation represents a fundamental departure from the breeder’sexemption.Essential derivation is not seen in this light in UPOV. A variety will be essentially derivedfromanother only when it retains the expression of the essential characteristics that resultfrom thegenotype or combination of genotypes of the initial variety. Accordingly, a variety willonly beencompassed by the essential derivation provision when it resembles the initial varietyvery closelyand uses virtually the whole genetic structure of the initial variety apart from specificlimitedmodifications.5.660 Any variety may still be used under the 1991 Act of the Convention for thepurpose ofbreeding other varieties and, unless they fall within the limited category of varietieswhich are

essentially derived, such newly bred varieties may be freely exploited. The nature of theessentialderivation principle is such that any breeder who embarks upon a program which willresult in avariety which is essentially derived, will know what he is doing and why, and will eitherreachagreement with the breeder of the initial variety or will take the risk that the time andeffort of hisprogram will be wasted if the breeder of the initial variety declines to grant a license.5.661 The new principle is seen in UPOV circles as an important extension of the zone ofprotection around a protected variety. This zone will in future comprise the minimumdistance thatresults from the existing distinctness rule together with an additional zone created bythe essentialderivation principle.344 WIPO Intellectual Property Handbook: Policy, Law and UseExhaustion of the Breeder’s Right5.662 The breeder’s right (Article 16) does not extend to acts concerning any materialof theprotected variety which has been sold or otherwise marketed by the breeder or with hisconsent,unless such acts:- involve further propagation of the variety, or- involve an export of material of the variety, which enables the propagation of thevariety,into a country which does not protect varieties of the plant genus or species to whichthevariety belongs, except where the exported material is for final consumption purposes.5.663 The breeder’s right to prohibit propagation of the variety is thus never exhausted.Duration of the Breeder’s Right5.664 Article 19 adjusts the minimum period of the breeder’s right from 18 years fortrees andvines and 15 years for all other species, to periods of 25 years and 20 yearsrespectively for thesesame categories. In large measure, these adjustments reflect the existing practice ofmemberStates. The substitution of the 20-year period for the 18-year period of protectionensures that theperiod of protection available for the majority of applicants in the plant breeders’ rightssystem willbe the same as that available in the patent system.Administrative and Final Provisions5.665 For the most part, the administrative and final provisions of the 1991 Act, whicharecontained in Articles 21 to 42, reproduce the substance of the 1978 Act.5.666 Article 35 of the 1991 Act is worthy of comment. It provides that any State which,at thetime of becoming a party to the 1991 Act, is a party to the Act of 1978 and which, as farasvarieties reproduced asexually are concerned, provides for protection by an industrialproperty title

other than a breeder’s right, shall have the right to continue to do so without applyingthisConvention to those varieties. This provision is designed, as was Article 37 of the 1978Act,specifically for the situation of the United States of America, which protects asexuallyreproducedplant varieties, other than potatoes and Jerusalem artichokes, by a special form of plantpatent(which does not strictly conform to the provisions of the UPOV Convention) and whichprotectssexually reproduced and tuber-propagated varieties by a Plant Variety Protection Act(which doesconform to the provision of the UPOV Convention). Accordingly, unless the United StatesofAmerica changes its law fundamentally, it will not be in a position to meet therequirements ofArticles 2 and 3 which will ultimately require it to grant and protect breeders’ rights(that is, rightswhich conform to the UPOV Convention) for all plant genera and species. Article 35 ofthe 1991Act, which can only apply to the United States of America, enables it in large measure tocontinuewith its present system, unless or until, it decides to rationalize the present provisions ofits law.5.667 The 1991 Act of the UPOV Convention entered into force on April 24, 1998. Due tothefact that two states had deposited their instruments of adherence on the same date onemonthbefore, there were six adherences when the new Act came into force, one more thanrequested inArticle 37.Chapter 5 - International Treaties and Conventions on Intellectual Property 345Developments in Plant Variety Protection5.668 Increasing numbers of countries, both in the developed and developing world, areinterested in the UPOV Convention or taking steps to accede to it. Still others areenacting or havealready enacted legislation on plant variety protection, which is in conformity with, orinfluenced by,the UPOV Convention.5.669 Protection of plant varieties is addressed in the TRIPS Agreement (see sectionbelow).Article 27 of that Agreement, which relates to patents, provides that members of theWorld TradeOrganization may exclude from patentability plants and animals other thanmicroorganisms, andessentially biological processes for the production of plants and animals other than non-biologicaland microbiological processes, but must provide for the protection of plant varietieseither bypatents or by an effective sui generis system or by any combination thereof. A model ofan“effective sui generis system” is provided by the UPOV Convention.

5.670 The States party to the International Convention for the Protection of NewVarieties ofPlants (UPOV) are listed in the appropriate document to be found inserted in the backflap of thisvolume.The Agreement on Trade-Related Aspects of Intellectual PropertyRights(“TRIPS”) and WIPO-WTO CooperationIntroductionGATT, the WTO and the TRIPS Agreement5.671 The Uruguay Round of multilateral trade negotiations held in the framework ofthe GeneralAgreement on Tariffs and Trade (“GATT”) was concluded on December 15, 1993. Theagreementembodying the results of those negotiations, the Agreement Establishing the WorldTradeOrganization (“WTO Agreement”), was adopted on April 15, 1994, in Marrakech.5.672 Those negotiations included, for the first time within the GATT, discussions onaspects ofintellectual property rights related to international trade. The result of thosenegotiations,contained in an Annex to the WTO Agreement, was the Agreement on Trade-RelatedAspects ofIntellectual Property Rights (the “TRIPS Agreement”).5.673 The WTO Agreement, including the TRIPS Agreement (which is binding on all WTOMembers), entered into force on January 1, 1995. The former agreement established aneworganization, the World Trade Organization, which began its work on January 1, 1995.Transitional Arrangements and Technical Cooperation (Part VI)5.674 Member States of WTO were given certain periods of time after the entry intoforce of theAgreement establishing WTO before being obliged to apply the TRIPS Agreement. Thedate onwhich the relevant transitional period expires for a Member, referred to as the date ofapplication ofthe Agreement for that Member, is as follows:346 WIPO Intellectual Property Handbook: Policy, Law and Use- generally, January 1, 1996 (Article 65.1);- developing countries in the process of transformation into a market, free-enterpriseeconomy, of structural reform of intellectual property systems, and facing specialproblems,January 1, 2000, excepting obligations involving national treatment andmost-favored-nation treatment (Articles 65.2 and 65.3);- developing countries obliged by the Agreement to extend product patent protection totypes of products not previously patentable in those countries, January 1, 2005, beforeapplying the agreement to such products (Article 65.4);- least-developed countries, excepting provisions involving national treatment andmost-favored-nation treatment, January 1, 2006, extendable upon duly motivatedrequest(Article 66.1).5.675 The TRIPS Agreement also requires developed country Members to provide, onrequest and

on mutually agreed terms and conditions, technical and financial cooperation in favor ofdevelopingand least-developed country Members, including assistance in preparation of laws andsupportregarding establishment or reinforcement of domestic offices and agencies, includingtraining ofpersonnel (Article 67).Institutional Arrangements (Part VII)5.676 The WTO Agreement creates a three-tiered organizational structure. The highesttier is theMinisterial Conference, which meets at least once every two years (Article IV.1). It hasthe authorityto take decisions on all matters under the WTO Agreement. The second tier is theGeneral Council,consisting of representatives of all the Members, which is to meet “as appropriate” tocarry out itsown duties as well as those of the Ministerial Conference in the intervals betweenmeetings of thelatter body (Article IV.2). The General Council also serves as the Dispute SettlementBody and theTrade Policy Review Body (Article IV.3 and IV.4).5.677 The WTO Agreement (Article IV.5) also establishes a Council for Trade-RelatedAspects ofIntellectual Property Rights (the “TRIPS Council”) which, under the general guidance ofthe GeneralCouncil, is to oversee the functioning of the TRIPS Agreement (Article IV.5). Membershipin theTRIPS Council is open to representatives of all Members. Under the provisions of theTRIPSAgreement (Part VII, Article 68), the TRIPS Council is responsible for monitoring theoperation of theTRIPS Agreement and Members’ compliance with the obligations under that Agreement.The TRIPSCouncil shall also review the implementation of the TRIPS Agreement after theexpiration of thetransitional period for developing countries (that is, after January 1, 2000), and everytwo yearsthereafter, or when amendment or modification is warranted by new developments(Article 71.1).The first meeting of the TRIPS Council was held on March 9, 1995.Arrangements for Cooperation with WIPO5.678 Consultations to establish arrangements for cooperation and a mutuallysupportiverelationship between the WTO and WIPO concerning intellectual property are requiredby the TRIPSAgreement.5.679 The TRIPS Agreement further states that the TRIPS Council, in carrying out itsfunctions, mayconsult with and seek information from any source it deems appropriate and that, inconsultationwith WIPO, the Council is to seek to establish, within one year of its first meeting,appropriate

arrangements for cooperation with bodies of WIPO (Article 68). Consultations for specificareas ofChapter 5 - International Treaties and Conventions on Intellectual Property 347cooperation between WIPO and WTO are also required by the Agreement, in particular,underArticle 63.2, which concerns notification of laws and regulations by Members to theTRIPS Council.General Provisions, Basic Principles and Final Provisions (Parts I and VII)5.680 A basic principle concerning the nature and scope of obligations under the TRIPSAgreement is that Members must give effect to the provisions of the Agreement andaccord thetreatment provided for in the Agreement to the nationals of other Members. A “national”isunderstood as meaning those natural or legal persons who would be eligible forprotection if allMembers of WTO were also bound by the Paris, Berne and Rome Conventions and bytheWashington Treaty on Intellectual Property in Respect of Integrated Circuits (“the IPICTreaty”).5.681 Members are free to determine the appropriate method of implementing theprovisions ofthe TRIPS Agreement within their own legal system and practice, and may implementmoreextensive protection than is required, provided that such additional protection does notcontraveneother provisions of the Agreement (Article 1.1 and 1.3).Definition of Intellectual Property5.682 The TRIPS Agreement states that, for the purposes of the Agreement, the term“intellectualproperty” refers to all categories of intellectual property that are the subject of Sections1 through 7of Part II of the TRIPS Agreement, namely, copyright and related rights, trademarks,geographicalindications, industrial designs, patents, layout-designs (topographies) of integratedcircuits andundisclosed information (Article 1.2).Incorporation by Reference of the Paris and Berne Conventions5.683 The TRIPS Agreement is built on principles more than a century old, embodied inthe ParisConvention for the Protection of Industrial Property and the Berne Convention for theProtection ofLiterary and Artistic Works. In fact, almost all the substantive provisions of these twoConventionsare incorporated by reference directly in the TRIPS Agreement.5.684 Concerning industrial property, the TRIPS Agreement requires that Memberscomply withArticles 1 through 12 and Article 19, of the Paris Convention, in respect of Parts II, III andIV of theAgreement (Article 2.1). This includes all the substantive provisions of the ParisConvention.5.685 In the field of copyright, Members are required to comply with Articles 1 through21 of the

Berne Convention and its Appendix. However, Members do not have rights orobligations inrespect of Article 6bis of the Berne Convention concerning moral rights, or of the rightsderivedtherefrom (Article 9.1).5.686 The TRIPS Agreement, however, stipulates that nothing in Parts I to IV of theAgreementshall derogate from existing obligations that Members may have to each other underthe Paris orBerne Conventions (Article 2.2).The Principle of National Treatment5.687 TRIPS provides for the principle of national treatment, requiring that Membersaccord thetreatment provided for in the Agreement to the nationals of other Members, the latterdefined, forthe corresponding rights, in terms of the relevant provisions of the Paris, Berne andRome348 WIPO Intellectual Property Handbook: Policy, Law and UseConventions and the IPIC Treaty. Exceptions provided for under the relevant conventionsarerespected within the context of the TRIPS Agreement. As regards industrial property andcopyright,this principle applies to all rights. As regards rights in respect of performers, producersofphonograms and broadcasting organizations, the obligation only applies in respect ofthe rightsprovided under the Agreement. Also exempted from this principle are proceduresprovided inmultilateral agreements concluded under the auspices of WIPO relating to theacquisition ormaintenance of intellectual property rights.The Most-Favored-Nation Principle (MFN)5.688 The TRIPS Agreement contains the most-favored-nation principle, which has nottraditionallybeen provided for in the context of intellectual property rights on the multilateral level.Thisprinciple provides that any advantage, favor, privilege or immunity granted by aMember to thenationals of any other country (whether a Member or not) shall be accordedimmediately andunconditionally to the nationals of all other Members, with certain specified exemptions.As is thecase for national treatment, procedures provided in multilateral agreements concludedunder theauspices of WIPO relating to the acquisition or maintenance of intellectual propertyrights areexempted from this principle.Protection of Existing Subject Matter5.689 The TRIPS Agreement contains specific provisions regarding the effect of theAgreement onthe subject matter of intellectual property rights that exists, on the date of applicationof the

Agreement, in a Member. While the Agreement does not give rise to obligations inrespect of actswhich occurred before the date of application of the Agreement for the Member inquestion(Article 70.1), the Agreement does give rise to obligations in respect of all subjectmatter existingand protected on the date of application of the Agreement, or which then orsubsequently meetsthe criteria for protection under the terms of the Agreement (Article 70.2). However,copyrightobligations with respect to existing works and obligations in connection with the rightsof producersof phonograms and performers in existing phonograms are determined solely underArticle 18 ofthe Berne Convention (Article 70.2).5.690 A Member may provide for limited remedies for acts which become infringing as aresult ofthe implementation of the Agreement and which were commenced, or in respect ofwhich asignificant investment was made, before the date of acceptance of the Agreement.These mustinclude at least the payment of equitable remuneration (Article 70.4).5.691 There are certain exceptions to these general rules. In particular, there is noobligation torestore protection to subject matter which has fallen into the public domain (Article70.3). Inaddition, certain obligations concerning computer programs, cinematographic worksandphonograms (Articles 11 and 14(4)) need not be applied with respect to originals orcopiespurchased prior to the date of application of this Agreement (Article 70.5). Further,provisionsconcerning guidelines for use without authorization (Article 31) and non-discriminationas to thefield of technology (Article 27.1) need not be applied to use without the authorization oftheright-holder where authorization for such use had been granted by the governmentbefore the datethe Agreement became known (Article 70.6).5.692 Applications for protection of intellectual property rights which are pending on thedate ofapplication of the Agreement may be amended to claim any enhanced protectionprovided underthe Agreement, but such amendments may not include new matter (Article 70.7).Chapter 5 - International Treaties and Conventions on Intellectual Property 349Reservations5.693 Reservations may not be entered in respect of any of the provisions of theAgreementwithout the consent of the other Members (Article 72).Security Exceptions5.694 The Agreement provides a general exception for matters which are deemed to beessential

to national security interests; a Member is not required to furnish any information if itconsidersdisclosure to be contrary to its essential security interests. In addition, it may take anyaction whichit considers necessary for the protection of its essential security interests relating tofissionablematerials or the materials from which they are derived, relating to traffic in arms,ammunition andimplements of war and to such traffic in other goods and materials as is carried ondirectly orindirectly for the purpose of supplying a military establishment, or taken in time of waror otheremergency in international relations. It may also take any action in pursuance of itsobligationsunder the United Nations Charter for the maintenance of international peace andsecurity(Article 73).Standards Concerning the Availability, Scope and Use of Intellectual PropertyRights (Part II)5.695 Part II of the TRIPS Agreement provides minimum standards concerning theavailability,scope and use of intellectual property rights. This Part contains eight sections relating,respectively,to copyright and related rights, trademarks, geographical indications, industrial designs,patents,layout-designs (topographies) of integrated circuits, protection of undisclosedinformation andcontrol of anti-competitive practices in contractual licenses (the latter subject is notcontained in thedefinition of intellectual property of Article 1.2).Copyright and Related Rights (Section 1)5.696 The essential elements of the standards concerning the availability, scope anduse ofcopyright and related rights include the following:- Members must comply with Articles 1-21 of the 1971 Paris Act of the Berne Conventionand, where applicable, with the Appendix to that Act (containing special provisions fordeveloping countries). However, Members do not have rights or obligations under theAgreement concerning the subject matter of Article 6bis of the Berne Convention(concerning moral rights), or of the rights derived therefrom (Article 9.1);- copyright protection shall extend to the expression and not to ideas, procedures,methods ofoperation or mathematical concepts as such (Article 9.2);- computer programs, whether in source or object code, must be protected as literaryworksunder the Berne Convention (Article 10.1);- compilations of data or other material, whether in machine readable or other form,whichby reason of the selection or arrangement of their contents constitute intellectualcreationsshall be protected “as such.” The protection does not extend to, but is without prejudicetoany copyright subsisting in, the data or material itself (Article 10.2);

350 WIPO Intellectual Property Handbook: Policy, Law and Use- a commercial rental right is provided in respect of at least computer programs exceptwherethe program itself is not the essential object of the rental, and to cinematographicworks;however, Members are excepted from the latter obligation unless such rental has led towidespread copying which materially impairs the exclusive right of reproduction in aMember (Article 11);- the term of protection for works other than photographic works or works of applied art,where the term is calculated on a basis other than the life of a natural person, shall benoless than 50 years from the end of the calendar year of authorized publication or, ifpublication has not taken place within 50 years from the making of the work, 50 yearsfromthe end of the calendar year of the making of the work (Article 12);- limitations or exceptions to exclusive rights are confined to cases which do not conflictwithnormal exploitation of the work and do not unreasonably prejudice the legitimateinterestsof the right-holder (Article 13);- with respect to related rights, performing artists shall have the right to prevent thefixationand reproduction of their unfixed performances on phonograms, and the wirelessbroadcasting and communication to the public of their live performances (Article 14.1);- producers of phonograms shall have the right to authorize or prohibit the direct orindirectreproduction of their phonograms (Article 14.2);- broadcasting organizations (or, if such rights are not granted to broadcastingorganizations,the owners of copyright in the subject matter of broadcasts) shall have the right toprohibitthe fixation, reproduction, wireless rebroadcasting and communication to the public bytelevision broadcast (Article 14.3);- a rental right is provided for producers of, and certain other right-holders in,phonograms;Members may maintain systems, in existence on April 15, 1994, of equitableremunerationin respect of the rental of phonograms, provided such system does not materially impairexclusive rights of reproduction (Article 14.4);- the term of protection for performers and producers of phonograms is at least 50 yearsfrom the end of the calendar year of fixation or performance, and for broadcasters atleast20 years from the end of the calendar year of broadcast (Article 14.5);- the conditions, limitations, exceptions and reservations permitted by the RomeConventionmay be applied to certain related rights (under paragraphs 14.1 to 14.3) granted in theAgreement; however, the provisions of Article 18 of the Berne Convention apply,mutatis mutandis, to the rights of performers and producers of phonograms inphonograms(Article 14.6).Trademarks (Section 2)

5.697 The essential elements of the standards concerning the availability, scope anduse oftrademark rights include the following:- any sign capable of distinguishing the goods or services of one undertaking from thoseofother undertakings (thus including service marks) shall be eligible for registration as atrademark (Article 15.1);Chapter 5 - International Treaties and Conventions on Intellectual Property 351- registrability may be conditional upon visual perceptibility and, for signs which are notinherently distinctive, on distinctiveness acquired through use (Article 15.1);- registrability may be conditional upon use (Article 15.2), but use may not be acondition forfiling and an application may not be refused solely on the ground that intended use hasnottaken place within three years of the filing date (Article 15.3);- the nature of the goods or services to which a trademark is to be applied may not beanobstacle to the registration of the mark (Article 15.4);- Members shall publish each trademark and afford a reasonable opportunity forpetitions tocancel the registration, and may afford an opportunity to oppose the registration(Article 15.5);- the rights conferred by registration shall include the exclusive right to prevent thirdpartiesfrom using identical or similar signs for identical or similar goods or services, wheresuch usewould result in a likelihood of confusion, the latter to be presumed where the goods orservices are identical (Article 16.1), subject to certain allowable exceptions such as thefairuse of descriptive terms (Article 17);- certain rights are provided for the owners of well-known trademarks and service marks(Article 16.2 and 16.3);- the term of initial registration and renewals shall be no less than seven years,renewableindefinitely (Article 18);- if a showing of use is required for the maintenance of a registration, the registrationmay becancelled only after an uninterrupted period of at least three years of non-use, unlessvalidreasons for non-use are shown (Article 19.1);- certain restrictions on use are not permitted (Article 20);- compulsory licensing of trademarks is not permitted (Article 21);- trademarks may be assigned with or without the transfer of the business to which thetrademark belongs (Article 21).Geographical Indications (Section 3)5.698 The essential elements of the standards concerning the availability, scope anduse of rightsinvolving geographical indications include the following:- “geographical indications” are defined as indications which identify a product asoriginatingin the territory of a Member, or a region or locality in that territory, where a givenquality,

reputation or other characteristic of the product is essentially attributable to itsgeographicalorigin (Article 22.1);- Members must provide the legal means for interested parties to prevent the use ofindications that misleadingly indicate or suggest that a good originates in ageographicalarea other than the true place of origin (Article 22.2(a));352 WIPO Intellectual Property Handbook: Policy, Law and Use- Members shall refuse or invalidate the registration of a trademark which consists of amisleading indication (Article 22.3), and provide means to prevent any use whichconstitutesan act of unfair competition within the meaning of Article 10bis of the Paris Convention(Article 22.2(b));- protection shall be applicable against a geographical indication which is literally truebutmisleading (Article 22.4) and, in the case of wines or spirits, even where the true originofthe goods is indicated or the geographical indication is used in translation oraccompaniedby expressions such as ‘kind’, ‘type’, ‘style’, ‘imitation’ or the like (Article 23.1);- protection is not required in respect of a geographical indication of another Memberwhichis identical with the common name for goods or services, or, for products of the vine,whichis identical with the customary name of a grape variety existing in the territory of thatMember as of the date of entry into force of the WTO Agreement (Article 24.6);- there is no obligation to protect geographical indications which are not or cease to beprotected in their country of origin, or which have fallen into disuse in that country(Article 24.9);- guidelines are provided for additional protection for geographical indications for winesandspirits (Article 23), including concurrent protection of homonymous geographicalindicationsfor wines (Article 23.3), certain exceptions to substantive rights such as prior rights(Article 24.4) and the right to use personal names (Article 24.8), and time limits forregistration in certain cases (Article 24.7);- in order to facilitate the protection of geographical indications for wines, negotiationsare tobe undertaken in the TRIPS Council, concerning the establishment of a multilateralsystem ofnotification and registration of geographical indications for wines, which would beeffectivefor those Members participating in the system (Article 23.4).Industrial Designs (Section 4)5.699 The essential elements of the standards concerning the availability, scope anduse ofindustrial design rights include the following:- Members shall provide protection for independently created industrial designs that areoriginal or new, certain standards for determining protectability being allowed (Article25.1);- requirements for protection of textile designs, which may be provided throughindustrial

design or copyright law, shall not unreasonably impair the opportunity to obtainprotection,particularly in regard to any cost, examination or publication (Article 25.2);- exclusive rights shall include the right to prevent third parties from making, selling orimporting, for commercial purposes, articles bearing or embodying a protectedindustrialdesign (Article 26.1), subject to certain allowable exceptions (Article 26.2);- the duration of protection shall amount to at least 10 years (Article 26.3).Patents (Section 5)5.700 The essential elements of the standards concerning the availability, scope anduse of patentrights include the following:Chapter 5 - International Treaties and Conventions on Intellectual Property 353- patents shall be available for products and processes in all fields of technology,providedthey are new, involve an inventive step and are capable of industrial application(Article 27.1), except that Members may exclude inventions, the prevention within theirterritory of the commercial exploitation of which is necessary to protect ordre public(publicsafety), including to protect human, animal or plant life or health or to avoid seriousprejudice to the environment, provided that such exclusion is not made merely becausetheexploitation is prohibited by their law (Article 27.2); and Members may further excludediagnostic, therapeutic and surgical methods for the treatment of humans or animals,plantsand animals other than microorganisms, and essentially biological processes for theproduction of plants or animals other than non-biological and microbiological processes(Article 27.3); however, Members shall provide for the protection of plant varietieseither bypatents or by an effective sui generis system or by any combination thereof (Article27.3);- patents shall be available and patent rights enjoyable without discrimination as to theplaceof invention, the field of technology and whether products are imported or locallyproduced(Article 27.1);- exclusive rights shall include, for products, the right to prevent third parties frommaking,using, offering for sale, selling or importing the patented product, and for processes, theright to prevent third parties from using the process and from using, offering for sale,sellingor importing for those purposes the product obtained directly by that process (Article28.1),subject to certain allowable exceptions (Article 30);- patents shall be assignable, transferable and shall be available for licensing (Article28.2);- certain conditions are imposed concerning the disclosure of the invention in a patentapplication (Article 29);- any use allowed without the authorization of the right-owner (commonly known as acompulsory license), and such use by the government, is made subject to certainenumerated conditions (Article 31); such use in the case of semi-conductor technologyis

limited to certain enumerated purposes (Article 31(c));- judicial review shall be available for any decision to revoke or forfeit a patent (Article32);- the term of protection shall be at least 20 years from the date of the filing of theapplication(Article 33);- the burden of proof concerning whether a product was made by a patented processshall incertain cases be placed on the alleged infringer (Article 34).5.701 In addition to the foregoing obligations, where a Member had not made available,as of thedate of entry into force of the WTO Agreement (that is, January 1, 1995), patentprotection forpharmaceutical and agricultural chemical products commensurate with its obligationsunderArticle 27, that Member must provide as from that date a means by which applicationsfor patentsfor such inventions can be filed. The Member must, as of the date of application of theAgreement,apply to such applications the criteria for patentability as if those criteria were beingapplied on thefiling date or priority date of the application. If the subject matter of the applicationmeets thecriteria for protection, the Member must provide patent protection for the remainder ofthe patentterm counted from the filing date (Article 70.8).354 WIPO Intellectual Property Handbook: Policy, Law and Use5.702 Where such an application is filed, exclusive marketing rights must be granted fora periodof five years after the obtaining of marketing approval or until a product patent isgranted orrejected in that Member, whichever period is shorter, provided that, subsequent to theentry intoforce of the WTO Agreement, a patent application has been filed and a patent grantedfor thatproduct in another Member and marketing approval obtained in that other Member(Article 70.9).Layout-Designs (Topographies) of Integrated Circuits (Section 6)5.703 The TRIPS Agreement incorporates nearly all the substantive provisions, with afewexceptions, of the Treaty. The Treaty provides for a regime of legal protection for layout-designs(topographies) of integrated circuits, and includes provisions on, inter alia, protectablesubjectmatter, the legal form of protection, national treatment, scope of protection,exploitation,registration, disclosure and duration of protection. The requirements of the TRIPSAgreement are asfollows:- Members must provide protection for the layout-designs (topographies) of integratedcircuits in accordance with Articles 2 through 7 (other than Article 6(3), which contains

provisions on compulsory licenses), Article 12 and Article 16(3) of the IPIC Treaty (Article35);- the TRIPS Agreement substitutes a minimum term of ten to 15 years instead of theminimum term of eight years provided in Article 8 of the IPIC Treaty (Article 38);- the TRIPS Agreement restricts the circumstances in which layout-designs may be usedwithout the consent of right-holders (Article 37.2);- the TRIPS Agreement contains an additional prohibited act to those listed in the IPICTreaty,namely any act relating to an article incorporating an integrated circuit, but only in sofar asit continues to contain an unlawfully reproduced layout-design (Article 36);- the TRIPS Agreement provides that certain acts engaged in unknowingly will notconstituteinfringement (Article 6(4) of the IPIC Treaty explicitly allows such exclusions), but that areasonable royalty shall be payable with respect to stock on hand after notice is given(Article 37.1).Protection of Undisclosed Information (Section 7)5.704 The TRIPS Agreement provides that, in the course of ensuring effective protectionagainstunfair competition as provided in Article 10bis of the Paris Convention, Members shallprotectundisclosed information and data submitted to governments or governmental agenciesinaccordance with the following provisions (Article 39.1):- natural and legal persons shall have the possibility of preventing information lawfullywithintheir control from being disclosed to, acquired by, or used by others without theirconsent ina manner contrary to honest commercial practices (Article 39.2);- such protection is required for information which is secret (that is, not generally knownamong or readily accessible within the circles that normally deal with such information),which has commercial value because it is secret, and which has been subject toreasonablesteps to keep it secret (Article 39.2);- certain undisclosed test or other data submitted as a condition of approving themarketingof pharmaceutical or agricultural chemical products which utilize new chemical entities,shallChapter 5 - International Treaties and Conventions on Intellectual Property 355be protected against unfair commercial use and, under certain circumstances, againstdisclosure (Article 39.3).Control of Anti-Competitive Practices in Contractual Licenses (Section 8)5.705 Recognizing that some licensing practices or conditions pertaining to intellectualpropertyrights which restrain competition may have adverse effects on trade and may impedethe transferand dissemination of technology (Article 39.1), the TRIPS Agreement provides thatMembers mayspecify in their national laws licensing practices or conditions which may, in particularcases,constitute an abuse of intellectual property rights with an adverse effect on thecompetition in the

relevant market, and that they may adopt appropriate measures to control or preventsuch practices(Article 40.2).5.706 Members agree to enter into consultations with each other, upon request, tosecurecompliance with laws in this regard (Article 40.3) or where their nationals are subject tosuchproceedings in the territory of other Members (Article 40.4).Enforcement of Intellectual Property Rights (Part III)General Obligations (Section 1)5.707 The TRIPS Agreement requires that specified enforcement procedures beavailable to permiteffective action against any act of infringement of intellectual property rights coveredby theAgreement, including expeditious remedies to prevent infringements and remedieswhich constitutea deterrent to further infringements. The procedures must be applied in such a manneras to avoidthe creation of barriers to legitimate trade and to provide for safeguards against theirabuse(Article 41.1).5.708 Enforcement procedures are to be fair and equitable, not unnecessarilycomplicated orcostly, nor entail unreasonable time-limits or unwarranted delays (Article 41.2).Decisions on themerits of a case shall preferably be in writing and reasoned, shall be made available atleast to theparties to the proceeding without undue delay, and shall be based only on evidence inrespect ofwhich parties were offered the opportunity to be heard (Article 41.3). Parties to aproceeding shallhave an opportunity for review of final administrative decisions and of at least the legalaspects ofinitial judicial decisions on the merits of a case, except for acquittals in criminal cases(Article 41.4).5.709 However, Members have no obligation to put in place a judicial system forintellectualproperty enforcement distinct from that for the enforcement of law in general, nor forthedistribution of resources as between enforcement of intellectual property rights and theenforcement of law in general (Article 41.5).Civil and Administrative Procedures and Remedies (Section 2)5.710 The TRIPS Agreement establishes guidelines concerning civil and administrativeprocedureswhich must be followed with respect to enforcement of intellectual property rights.These includeprovisions on fair and equitable procedures (Article 42), evidence (Article 43),injunctions(Article 44), damages (Article 45), and other remedies, such as the authority to orderdisposal ofinfringing goods or materials and implements used in the creation of infringing goods(Article 46);

these provisions also deal with right of information, for example the authority to orderthat theinfringer inform the right-owner of the identity of third persons involved in theproduction and356 WIPO Intellectual Property Handbook: Policy, Law and Usedistribution of infringing goods or services and of their channels of distribution (Article47),indemnification of the defendant (Article 48), and application of the above guidelines toadministrative procedures (Article 49).Provisional Measures (Section 3)5.711 The TRIPS Agreement establishes guidelines concerning provisional measures toprevent aninfringement of any intellectual property right from occurring, and in particular toprevent the entryof goods into the channels of commerce in their jurisdiction, including imported goodsimmediatelyafter customs clearance. These measures cover also the preservation of relevantevidence in regardto the alleged infringement, and the adoption of provisional measures inaudita alteraparte, wheredelay is likely to cause irreparable harm or where there is a risk of evidence beingdestroyed(Article 50).Special Requirements Related to Border Measures (Section 4)5.712 The TRIPS Agreement provides for certain enforcement procedures related tobordermeasures, to enable a right-holder who has valid grounds for suspecting that theimportation ofcounterfeit trademark or pirated copyright goods may take place, to lodge anapplication for thesuspension by the customs authorities of the release into free circulation of such goods.Guidelinesare established with respect to suspension of release by customs authorities (Article51), applicationfor such procedures (Article 42), security or equivalent assurance (Article 53), notice ofsuspension(Article 54), duration of suspension (Article 55), indemnification of the importer and ofthe owner ofthe goods (Article 56), right of inspection and information (Article 57), ex officio action(Article 58),remedies (Article 59) and de minimis imports (Article 60).Criminal Procedures (Section 5)5.713 The TRIPS Agreement requires that Members provide for criminal procedures andpenaltiesto be applied at least in cases of willful trademark counterfeiting or copyright piracy onacommercial scale. They also have to provide for remedies such as imprisonment,monetary finesand seizure, forfeiture and destruction of the infringing goods and of any materials andimplementspredominantly used for the commission of the offense.Acquisition and Maintenance of Intellectual Property Rights and Related

Procedures (Part IV)5.714 The TRIPS Agreement contains general provisions on principles concerningprocedures foracquisition and maintenance of industrial property rights. Members may require, as acondition ofthe acquisition or maintenance of the industrial property rights covered by theAgreement (exceptprotection of undisclosed information), compliance with reasonable procedures andformalitiesconsistent with the Agreement (Article 62.1). Any procedures for grant or registrationmust permita reasonable period of time to avoid unwarranted curtailment of the period of protection(Article 62.2). Procedures concerning acquisition, maintenance, administrativerevocation and interpartes procedures are to be governed by the guidelines applicable to enforcement(Article 62.4,referring to Article 41.2 and 41.3), and most final administrative decisions are subject tojudicial orquasi-judicial review (Article 62.5).5.715 The Agreement also stipulates that Article 4 of the Paris Convention concerningthe right ofpriority shall apply, mutatis mutandis, to service marks.Chapter 5 - International Treaties and Conventions on Intellectual Property 357Dispute Prevention and Settlement (Part V)Transparency5.716 The TRIPS Agreement requires that laws and regulations, final judicial decisions,administrativerulings of general application and bilateral agreements pertaining to the subject matterof theAgreement be published or made publicly available by Members (Article 63.1).5.717 Members are further required to notify such laws and regulations to the TRIPSCouncil. TheCouncil, in turn, is to attempt to reduce this burden on Members by engaging inconsultations withWIPO on the possible establishment of a common register containing these laws andregulations(Article 63.2).5.718 The TRIPS Council will also consider, in this connection, any action on notificationspursuantto the obligations under the Agreement which arise from Article 6ter of the ParisConvention.Dispute Settlement5.719 A particularly important element of the TRIPS Agreement is the system of disputesettlementestablished under the WTO Agreement. The TRIPS Agreement itself invokes theprovisions ofArticles XXII and XXIII of GATT 1994 (the WTO Agreement), as elaborated by the WTOUnderstanding on Rules and Procedures Governing the Settlement of Disputes (includedas anAnnex to the WTO Agreement), which applies to consultations and the settlement ofdisputesunder the TRIPS Agreement (Article 64.1).

5.720 However, subparagraphs 1(b) and 1(c) of Article XXIII of GATT 1994, which refertoso-called “non-violation” dispute settlement cases, are not to apply to the settlement ofdisputesunder the TRIPS Agreement for at least five years from the date of entry into force ofthe WTOAgreement (that is, at least until January 1, 2000). Any extensions of that period are tobe decidedin the Ministerial Conference by consensus (Article 64.2 and 64.3).Cooperation Between the World Intellectual Property Organization and theWorldTrade Organization5.721 The cooperation is based upon a WIPO-WTO Agreement signed by the DirectorsGeneral ofthe two organizations which entered into force on January 1, 1996. It contains threesubstantiveareas, namely laws and regulations, implementation of Article 6ter of the ParisConvention andlegal-technical assistance to developing countries. The relevant activities undertaken byWIPO underthe WIPO-WTO Agreement are described below.Laws and RegulationsInformation and Documentation Service in the Field of Intellectual Property Legislation5.722 WIPO provides an information and documentation service which responds to bothinternaland external enquiries and requests, concerning national legislation and treaties in theintellectualproperty field, and makes available copies of the relevant texts and/or informationconcerningWIPO’s database, the Collection of Laws for Electronic Access (CLEA).358 WIPO Intellectual Property Handbook: Policy, Law and UseMaintaining and Updating the Collection of Laws5.723 WIPO’s Collection of Laws contains texts of treaties administered by WIPO and thetexts ofintellectual property-related treaties not administered by WIPO, as well as theintellectual propertylegislation of the European Communities and of more than 150 other countries.5.724 CLEA has been available on the WIPO website free of charge since September1999 andcontains at present the texts of treaties administered by WIPO and the texts ofintellectualproperty-related treaties not administered by WIPO, the intellectual property legislationof67 countries and of the European Communities. As of March 2003, it containsbibliographicreferences for 2,781 texts and permits access to 2,909 documents in English, Frenchand/or Spanishwith hyperlinks for around 1,500 legislative texts. The legislative texts have beencommunicated toWIPO by its Member States under Article 15(2) of the Paris Convention and Article 24(2)of the

Berne Convention, or notified to the Council for TRIPS and communicated to WIPO byWTO underArticle 2(4) of the WIPO-WTO Cooperation Agreement.Publishing Texts of Laws and Treaties5.725 In its periodical Intellectual Property Laws and Treaties (in English and French),WIPOpublishes two legislative inserts, “Industrial Property Laws and Treaties” and “CopyrightandRelated Rights Laws and Treaties,” in which texts of national laws and treaties arepublished in theirmost recent (whenever possible consolidated) versions. Since 2002, IntellectualProperty Laws andTreaties has been published in an electronic version only, to be found on the WIPOwebsite.IPLEX5.726 An updated version of the IPLEX CD-ROM, which is a database containinglegislative texts(multilateral treaties, regional laws, bilateral treaties, national laws) in English andFrench in the fieldof intellectual property, is currently in preparation for publication in the last quarter of2003. TheIPLEX CD-ROM is user-friendly and functional and offers an extensive and flexible searchsystem.Assistance in the Translation of Laws5.727 Assistance in the translation of laws and regulations is given by WIPO to itsMember Statesunder the Organization’s ongoing programs. In accordance with Article 2(5) of the WIPO-WTOAgreement, this service was made available to developing country Members of WTOthat are notMember States of WIPO to enable them to fulfill their obligation to notify their laws andregulationsto the TRIPS Council. Between January 1996 and December 31, 2002, assistance intranslation hasbeen given to 191 countries (not limited to developing countries), for which laws andregulationshave been translated from or into Arabic, Dutch, English, French, German, Portugueseand Spanish.Article 6ter of the Paris Convention5.728 Under Article 3 of the WIPO-WTO Agreement, the procedure relating to thecommunicationof emblems and transmittal of objections under the TRIPS Agreement are to beadministered by theInternational Bureau of WIPO, in accordance with the procedures applicable underArticle 6ter ofthe Paris Convention.5.729 Since January 1, 1996, the International Bureau, pursuant to Article 3 of the WIPO-WTOAgreement, has communicated:Chapter 5 - International Treaties and Conventions on Intellectual Property 359- to WTO Members not party to the Paris Convention all the State emblems, officialhallmarks

and emblems of intergovernmental organizations communicated to the States party totheParis Convention before and since that date.5.730 It should be noted that such communications are without prejudice to the date onwhichWTO Members are bound, under the TRIPS Agreement, to protect the emblems thatwere thesubject of the communication.Joint Activities of WIPO and WTO5.731 The two Organizations are committed under the WIPO-WTO Agreement to providelegaltechnicalassistance and to enhance their technical cooperation activities under Article 4 of theAgreement. Specifically, each Organization agrees to make available to developingcountriesMembers of the other Organization “the same legal-technical assistance relating to theTRIPS Agreement as it makes available to [its own] Member States” under paragraph 1of the Agreement.They further agree, in paragraph 2 of the Agreement, to “enhance cooperation in theirlegal-technical assistance and technical cooperation activities relating to the TRIPSAgreement fordeveloping countries, so as to maximize the usefulness of those activities and ensuretheir mutuallysupportive nature.” Lastly, they specify in paragraph 3 of the Agreement, that the twoOrganizations “shall keep in regular contact and exchange non-confidential information”for thepurposes of legal-technical assistance to developing countries.5.732 Numerous activities have been undertaken by WIPO and WTO under Article 4 oftheWIPO-WTO Agreement, including attendance at each other’s meetings as observers,provision ofresource persons in each other’s symposia, workshops, seminars and training coursesand, inparticular, joint organization of symposia.WIPO-WTO Joint Initiative5.733 In furtherance of the cooperation specified in the WIPO-WTO Agreement, WIPOlaunched ajoint initiative with WTO in July 1998. The purpose of the joint initiative was to assistdevelopingcountries Members of WTO in meeting the January 1, 2000, deadline for conforming totheTRIPS Agreement.5.734 The joint initiative was in the form of a joint communication by the DirectorsGeneral of thetwo Organizations, Dr. Kamil Idris of WIPO and Mr. Renato Ruggiero of WTO, which wassent tothe ministers of each of the developing countries concerned. Its aim was for WIPO andWTO tomaximize their use of available resources in the coming critical period by improvedplanning andcoordination of technical cooperation activities, with an understanding that the bulk oftheassistance would be coming from WIPO.

5.735 Many responses have been received from developing and least developedcountries sincethe launching of the joint initiative. Many of the requests were incorporated into theactivities ofthe development cooperation programs.5.736 In response to the requests made under the joint initiative, officials of the twoOrganizationshave met on several occasions and discussed the coordination of efforts and, in somecases, thejoint handling of specific requests by holding a joint consultation with the requestingcountry orterritory. The assistance requested has been provided to the Members concerned in thecourse of1999 and 2000. In particular, a large number of WIPO and WTO missions took place in1999,including a joint regional symposium on “Implementation of the TRIPS Agreement” inBangui,Central African Republic, for French-speaking sub-Saharan African countries from March23 to 26,360 WIPO Intellectual Property Handbook: Policy, Law and Use1999. In addition, three national seminars were planned and carried out jointly by WIPOand WTOin Colombia, Cuba and Venezuela during the latter part of 1999 and in 2000.5.737 For the least-developed country Members of WTO facing the January 1, 2006,deadline, asimilar joint effort is planned for 2001.Progressive Development of International Intellectual Property LawIntroduction5.738 The development of industrial property law has traditionally been based oninternationaltreaties between sovereign states. These treaties now form the foundation of theinternationalsystem for the protection of intellectual property. The pace of change in the field ofintellectualproperty, however, makes it necessary to consider new options for accelerating thedevelopment ofinternational harmonized common principles and rules. An outstanding example isWIPO’sresponse to the challenge increasingly faced by trademark owners because of abusiveregistrationand use of Internet domain names by third parties: WIPO has undertaken a process ofinternationalconsultation which has produced a series of recommendations on mechanisms tocombat suchpractices. This has led to the adoption of the Uniform Domain Name Dispute ResolutionPolicy (seechapter 7).5.739 In the field of harmonization of industrial property principles and rules, a moreflexibleapproach, or the coordination of administrations, could produce more rapid results, thusensuring

earlier practical benefits for administrators and users of the industrial property system.Suchapproaches have been referred to on occasion as “soft law” instruments.5.740 Several options exist in this respect: projects of an essentially administrativenature could,for example, culminate in a Memorandum of Understanding (MoU), rather than a formaltreaty;activities aimed at harmonization of national laws could be advanced through theadoption of aresolution by the WIPO General Assembly (or another WIPO Assembly), recommendingthatMember States and interested intergovernmental Organizations adopt and implementparticularprinciples and rules. Work requiring a rapid, interim result could, pending furtheragreements, beachieved through the publication of model principles and rules that would be availableto anylegislator or other authority seeking guidance on how to solve specific problems.5.741 The General Assembly of WIPO and the Assembly of the Paris Union have adoptedthreesuch instruments: a Joint Recommendation Concerning Provisions on the Protection ofWell-KnownMarks (1999), a Joint Recommendation on Trademark Licenses (2000) and a JointRecommendationConcerning the Protection of Marks, and Other Industrial Property Rights in Signs, on theInternet(2001). These Recommendations do not, of course, have the same legal effect as atreaty which islegally binding on all States party to it. As recommendations by Member Statesrepresentatives intwo authoritative bodies of WIPO, they will, however, have a strong influence. It ishoped that theywill persuade States to bring their national legislation into line with these provisions.The TradeMarks Act (adopted in 1999) of the Republic of India, for example, explicitly refers to theJointRecommendation Concerning Provisions on the Protection of Well-Known Marks (TradeMarks Act,1999, Chapter II, 11(6) to (10)).5.742 Their adoption as recommendations does not preclude the provisions from beingincorporated into a treaty at a later stage. Thus, a recommendation might constitute afirst stepChapter 5 - International Treaties and Conventions on Intellectual Property 361towards the creation of international rules and standards which, once matured, could beformallyadopted as, or inserted in, an international treaty.The Joint Recommendation Concerning Provisions for the Protection ofWell-Known Marks5.743 The Joint Recommendation Concerning Provisions for the Protection of Well-KnownMarksis intended to clarify, consolidate and supplement the existing international protectionof

well-known marks as established by Article 6bis of the Paris Convention for theProtection ofIndustrial Property (Paris Convention) and by Article 16.2 and 16.3 of the Agreement onTrade-Related Aspects of Intellectual Property Rights (TRIPS). It includes detailedprovisionsregarding the determination of whether a mark is a well-known mark in a Member State(Article 2),and remedies in cases of conflict between well-known marks and other marks (Article4), businessidentifiers (Article 5) or domain names (Article 6). The provisions will thus facilitate theapplicationof the existing international standards.5.744 They supplement these standards in that:- they provide, in Article 2(1), a non-exhaustive list of factors that Member States canconsiderwhen determining whether a mark is well-known, such as, in particular, that a markshall beconsidered to be well-known if it is determined to be so in at least one relevant sector ofthepublic of a Member State (Article 2(2)(b));- they list, in Article 2(3), factors that Member States shall not require as a condition fordetermining whether a mark is well-known, such as, in particular, that a mark has beenused or registered or that an application for registration has been filed in that MemberState(Article 2(3)(i));- they require that a well-known mark, which is not registered in the country whereprotection is sought, be protected against use of an identical or similar mark fordissimilargoods or services, even though in certain cases a Member State may require that themarkbe well-known by the public at large (Article 4(1)(b) and (c));- they provide for remedies in cases of conflicts between well-known marks andbusinessidentifiers (Article 5 of the draft provisions) and domain names (Article 6 of the draftprovisions).The Joint Recommendation Concerning Trademark Licenses5.745 Many countries require the recordal of trademark licenses with a governmentalauthority.The requirements for such recordal vary from country to country and, in someinstances, imposeheavy burdens on trademark owners and licensees. The Recommendation ConcerningTrademarkLicenses aims at harmonizing and simplifying the formal requirements for recording. Inthatrespect, the Recommendation supplements the Trademark Law Treaty of October 27,1994 whichdoes not address trademark licenses.5.746 The Recommendation provides a maximum list of indications and elements thatan Officemay require for the recording of a license (Article 2(1)); Offices are free to require someonly of the362 WIPO Intellectual Property Handbook: Policy, Law and Use

listed elements, but may not require other or additional information (Article 2(7)). Inorder tofacilitate the processing of requests in several countries, the Recommendation providesa ModelInternational Form which groups all the information that may be required by an Office.Offices areobliged to accept requests that contain all the indications or elements specified in thatForm(Article 2(3)). The Recommendation also attempts to limit the effect of non-compliancewithrecording requirements to the license agreement itself by stipulating that the non-recording of alicense should not affect:- the validity of the trademark which is the subject of the license (Article 4(1));- any right that a licensee might have under the legislation of Member States to joininfringement proceedings initiated by the holder (Article 4(2)(a)), unless the law of aMember State expressly prohibits a non-recorded licensee from joining suchproceedings(Article 4(2)(b));- the question whether use of a mark by a third person can be considered use by thetrademark holder, which can be relevant in the context of use requirements (Article 5).The Joint Recommendation Concerning the Protection of Marks, and OtherIndustrial Property Rights in Signs, on the Internet5.747 Whilst industrial property rights and particularly mark rights are territorial innature, theInternet is globally accessible. Rights in a mark, used for similar or even identical goodsor services,may in the real world coexist peacefully in different countries, but used on the Internetmarks canbe seen by visitors coming from all over the world on their computer screen.Coexistence of rightsmay therefore easily turn into conflicts of rights. The Joint Recommendation has beenestablishedin order to help the authorities and courts involved in such conflicts and in all otherquestionsarising from the contradiction between the principle of territoriality of rights and theglobal natureof the Internet. These issues include the following:- under what conditions can the use of a sign on the Internet be considered to haveoccurred in a particular country?- what can be done in order to avoid conflict where the owners of rights in identical orsimilar signs, granted for use in different countries, all use these signs on the Internet?- how can courts take account of the territorial basis of industrial property rights whendetermining remedies?5.748 The first question is relevant for determining whether use on the Internetcontributed toestablishing, maintaining or infringing an industrial property right in a sign in aparticular country.In general, this requires that the sign can be deemed to have been used in the countryconcerned.Under the Recommendation, only use that has a “commercial effect” in a particularcountry shall be

deemed to have occurred in that country. To facilitate this determination, the provisionsprovide adetailed, but non-exhaustive, list of factors which can be relevant in that context, suchas actualdelivery of goods or services, language, interactivity of the web site, and registration ofthe web siteunder a country code top level domain.5.749 The second question relates to conflicting rights in signs. Because industrialproperty rightsare limited to individual countries or regions for which they were granted, differentowners can holdChapter 5 - International Treaties and Conventions on Intellectual Property 363industrial property rights in identical or similar signs in different countries. This createsproblems ifsuch a sign is used on the Internet. Because of the necessarily global nature of theInternet, suchuse might be considered as infringing a right under the law of another country in whichthe user’sright is not recognized.5.750 To address such conflicts, the provisions introduce a “notice and avoidance ofconflict”procedure under which right-owners and other legitimate users are exempt from liabilityuntil theyare notified of a conflicting right. Right-owners and other legitimate users can thereforeuse“their” sign on the Internet without first having to undertake a worldwide search forconflictingregistered or unregistered rights. A user, once notified of a conflicting right, must takecertainmeasures for avoiding the conflict. The user who fails to do so, can be subject to liability.In orderto provide right-holders and other legitimate users in good faith with a sufficient degreeof legalcertainty as to how to avoid liability for the infringement of conflicting rights, it isrecommendedthat a “disclaimer” be regarded as sufficient. Such disclaimers are statements designedto avoid acommercial effect in a particular country. The disclaimer is only effective if the user actson itsstated intent by asking customers where they are located, and refusing delivery tothose whoindicate that they are based in the country disclaimed. The user would not, however, berequired toverify such indications.5.751 The third question addresses another problem resulting from the tension betweenterritorialrights and a global medium. An injunction to cease every use of a sign on the Internetwould go farbeyond the territory for which the conflicting right was granted. Its effect wouldpotentially be asglobal as the Internet. A decision as to remedies should therefore take the territoriallimitation of

marks or other rights in signs into account. Remedies should be limited, as far aspossible, to theterritory in which the right is recognized, and they should only be available if theallegedly infringinguse of the sign can be deemed to have taken place in that territory. This is determinedwith regardto the “commercial effect” of such use in the Member State in question. Thus, theRecommendation proposes that the “commercial effect” of Internet use should serve asa yardstickfor determining a “proportionate” remedy. Use of a sign on the Internet that infringes anindustrialproperty right in a Member State should not be prohibited any more than isproportionate to thecommercial effect that such use has produced in that Member State.364 WIPO Intellectual Property Handbook: Policy, Law and Use

HistoryThe Washington Diplomatic Conference on the Patent Cooperation Treaty was held inWashington from May 25 to June 19, 1970. The Patent Cooperation Treaty was signed on the lastday of the conference on June 19, 1970. The Treaty entered into force on January 24, 1978,initially with 18 contracting states.[4] The first international applications were filed on June 1,1978.[4] The Treaty was subsequently amended in 1979, and modified in 1984 and 2001.

AccessionAny contracting state to the Paris Convention for the Protection of Industrial Property canbecome a member of the PCT.

A majority of the world's countries are signatories to the PCT, including all of the majorindustrialised countries (with a few exceptions, including Argentina and Taiwan). As of May 5,2012, there were 145 contracting states to the PCT. Brunei Darussalam became the 145thcontracting state on April 24, 2012. The PCT will enter into force for Brunei Darussalam on July24, 2012.[5][6]

ProcedureThe main advantages of the PCT procedure, also referred to as the international procedure, arethe possibility to delay as much as possible the national or regional procedures, and therespective fees and translation costs, and the unified filing procedure.

An international patent application (also called PCT application, as mentioned above) has twophases. The first phase is the international phase in which patent protection is pending under asingle patent application filed with the patent office of a contracting state of the PCT. The secondphase is the national and regional phase which follows the international phase in which rights arecontinued by filing necessary documents with the patent offices of separate contracting states ofthe PCT.[7] A PCT application, as such, is not an actual request that a patent be granted, and it isnot converted into one unless and until it enters the "national phase".[8]

Filing

The first step of the procedure consists in filing an international (patent) application with asuitable patent office, called a Receiving Office (RO). This application is usually called an

international application or simply a PCT application since it does not result in an internationalpatent nor in a PCT patent (both of which do not exist). The international application needs to befiled in one language only, although translations may still be required for international search andinternational publication, depending on the language of filing and the International SearchingAuthority to be used. At least one applicant (either a physical or legal person) must be a nationalor resident of a contracting state to the PCT; otherwise, no international filing date is accorded. [9]

In most member states, the applicant or at least one of the applicants of the application isrequired to be a national or resident of the state of the receiving office where the application isfiled. Applicants from any contracting state may file an international patent application at theInternational Bureau in Geneva.[10]

Upon filing of the international application, all contracting states are automatically designated. [11]

[12] Subject to reservations made by any contracting state, an international patent applicationfulfilling the requirements of the treaty and accorded an international filing date has the effect ofa regular national application in each designated state as of the international filing date, whichdate is considered to be the actual filing date in each designated State.[13] However, in somecountries, the prior effect of an international application filed outside such countries may bedifferent from the prior effect of a local national application.[14] For example, in the UnitedStates, an international patent application filed outside the United States has a different prior arteffect than a direct US application.

International Searching Authorities (ISA)and International Preliminary ExaminingAuthorities (IPEA)[15]

1. Austrian Patent Office (AT).

2. Australian Patent Office (AU).

3. National Institute of Industrial Property (BR).[16]

4. Canadian Intellectual Property Office (CA).

5. State Intellectual Property Office of thePeople’s Republic of China (CN).

6. European Patent Office (EP).

7. Spanish Patent and Trademark Office (ES).

8. National Board of Patents and Registration

of Finland (FI).

9. Israel Patent Office (IL) (as of 1 June 2012[17]).

10. Japan Patent Office (JP).

11. Korean Intellectual Property Office (KR).

12. Federal Service for Intellectual Property,Patents and Trademarks (Russian Federation)(RU).

13. Swedish Patent and Registration Office(SE).

14. United States Patent and Trademark Office(US).

15. Nordic Patent Institute (XN).

Note 1: All International Searching Authorities arealso International Preliminary Examining Authorities.

Note 2: The Egyptian Patent Office was appointedas ISA and IPEA on September 25, 2009. Theappointment will become effective when it is readyto begin operations.[18]

Search and written opinion

A search or international search is then made by an authorized International SearchingAuthority (ISA) to find the most relevant prior art documents regarding the claimed subjectmatter. The search results in an International Search Report (ISR), together with a writtenopinion regarding patentability.[19]

The ISR is supposed to be provided by the ISA to the applicant 9 months after filing of theapplication in the event of a first filing and 16 months after the priority date in the event of asubsequent filing (i.e., claiming the priority of a first filing). However, long delays may occur,[vague] even to the point where the ISR is not received by the 30/31-month national phase deadline.[citation needed]

The ISR is published together with the international application (or as soon as possibleafterwards). The written opinion is initially confidential, but unless it is superseded by anInternational Preliminary Examination Report (see optional examination, below), it is madeavailable in the form of an International Preliminary Report on Patentability (Chapter I of thePatent Cooperation Treaty, or IPRP Chapter I), within 30 months of the filing date or a prioritydate, if any.[20] If the ISR is not in English, it is translated into English for publication. [21] Adesignated Office may require a translation of the IPRP Chapter I into English.[22]

The international search report can help the applicant to decide whether it would be worthwhileto seek national protection, and if so, in how many countries, as it costs fees and other expenses,including costs of translation, to enter the national phase in each country. Yet another advantageof filing an international application under the PCT is that many national patent authorities willrely on the international search report (although the PCT does not obligate them to do so) insteadof performing a prior art search themselves, and the applicant may thus be able to save searchfees.[23]

In addition to the compulsory international search, one or more optional supplementaryinternational searches may also be carried out by participating International SearchingAuthorities,[24] upon request by the applicant[25] and payment of corresponding fees.[26] Thepurpose is to reduce the likelihood of seeing new prior art being cited in the subsequent nationalphases.[27] A supplementary international search is said to allow applicants to obtain an additionalsearch report "taking into account the growing linguistic diversity of the prior art being found".[27] In 2009 and 2010, the demand for supplementary international searches was relatively low.[28]

Publication

18 months after the filing date or the priority date, the international application is published bythe International Bureau at the WIPO, based in Geneva, Switzerland, in one of the ten"languages of publication": Arabic, Chinese, English, French, German, Japanese, Korean,Portuguese, Russian, and Spanish.[29] There is an exception to this rule, however. If 18 monthsafter the priority date, the international application designates only the United States, then theapplication is not automatically published.[30]

Optional examination

An international preliminary examination may optionally be requested ("demanded").[31][32] Theinternational preliminary examination is conducted by an authorized International PreliminaryExamination Authority (IPEA) and its objective is "to formulate a preliminary and non-bindingopinion on the questions whether the claimed invention appears to be novel, to involve aninventive step (to be non-obvious), and to be industrially applicable".[33] This results in anInternational Preliminary Examination Report (IPER). Since 2004, the IPER bears the title"international preliminary report on patentability (Chapter II of the Patent Cooperation Treaty)"(commonly abbreviated "IPRP Chapter II").[34] The filing of a demand for internationalpreliminary examination, which must be done within a time limit,[35] is subject to the payment ofa "handling fee" for the benefit of the International Bureau[36] and a "preliminary examinationfee" for the benefit of the IPEA.[37] The cost of filing a demand varies depending on the IPEAused by the applicant.[32]

If the written opinion established by the International Searching Authority (ISA) is positive,"there is little value to be obtained from filing a demand".[32] However, "[for] cases where thewritten opinion of the ISA contains negative findings, the savings in the applicant’s/agent’s time

and, where applicable, agent’s fees, required by multiple responses to national offices may welljustify the use of the Chapter II procedure."[38] There are many advantages, such as cost and effortsavings ("as well as possibly shortened pendency/faster grants"[38]), in receiving a favorable IPRPChapter II, i.e. a favorable report following an international preliminary examination. [38] Forinstance, national offices "with a smaller examining staff and those without examiners tend torely more heavily on the results in the IPRP Chapter II".[38]

When an examination is demanded, the contracting states for which the examination isdemanded are called Elected Offices (under Chapter II), otherwise they are called DesignatedOffices (under Chapter I). The election of a contracting state correspondingly means electing itwhen demanding (requesting) the examination.

An alternative to the filing of a demand for international preliminary examination is to fileinformal comments in response to the written opinion established by the ISA. These informalcomments are not published. The informal comments should be submitted to the InternationalBureau (IB), and not to the ISA or the IPEA.[39] They are kept in the file of the internationalapplication and, in the case where no demand is filed, forwarded to the designated offices, [32][39]

which are free to require a translation of the informal comments.[39]

Subject matter

The PCT does not make any specific provision concerning the types of invention which may bethe subject of an international application. Rules 39 and 67 permit International Searching andPreliminary Examining Authorities not to carry out search and examination on certain types ofsubject matter, such as scientific and mathematical theories, methods of doing business andcomputer programs to the extent that the Authority is not equipped to carry out a search orinternational preliminary examination concerning such programs. However, while a lack ofinternational search may make national processing more difficult, Article 27(5) PCT makes clearthat this does not affect the issue of whether the invention is patentable under the laws of thedesignated States:

"Nothing in this Treaty and the Regulations is intended to be construed asprescribing anything that would limit the freedom of each contracting state toprescribe such substantive conditions of patentability as it desires. (...)"

National and regional phase

Finally, at 30 months[40] from the filing date of the international application or from the earliestpriority date of the application if a priority is claimed, the international phase ends and theinternational application enters in national and regional phase. However, any national law mayfix time limits which expire later than 30 months. For instance, it is possible to enter theEuropean regional phase at 31 months from the earliest priority date. National and regionalphases can also be started earlier on the express request of the applicant, even before publicationof the international application.[41]

If the entry into national or regional phase is not performed within the prescribed time limit, theinternational application generally ceases to have the effect of a national or regional application.[42]

Indian patent act 1970The Indian Patent Office is administered by the Office of the Controller General of Patents,Designs & Trade Marks (CGPDTM). This is a subordinate office of the Indian government andadministers the Indian law of Patents, Designs and Trade Marks.

Contents 1 Patent administration

2 Amendments to the PatentsAct

3 Patent duration

4 Geographical Indicationstags

5 Criticism

6 Modernization

7 References

8 External links

Patent administrationThe CGPDTM reports to the Department of Industrial Policy and Promotion(DIPP) under theMinistry of Commerce and Industry and has five main administrative sections:

Patents

Designs

Trade Marks

Geographical indications

Patent Information System

The patent office is headquartered at Kolkata with branches in Chennai, New Delhi and Mumbai,but the office of the CGPDTM is in Mumbai. The office of the Patent Information System is atNagpur.

The Controller General, who supervises the administration of the Patents Act, the Designs Act,and the Trade Mark's Act, also advises the Government on matters relating to these subjects. Mr.P.H.Kurian was the first IAS officer to serve as Controller General. Mr Chaitanaya Prasad hasassumed charge as CGPDTM recently.Under the office of CGPDTM, a Geographical IndicationsRegistry has been established in Chennai to administer the Geographical Indications of Goods(Registration and Protection) Act, 1999.

The Indian Patent Office has 75 Patent Examiners, 70 Assistant Controllers, 7 DeputyControllers, 1 Joint Controller, and 1 Senior Joint Controller, all of whom operate from four

branches. Although the designations of the Controllers differ, all of them (with the exception ofthe Controller General) have equal authority in administering the Patents Act.

The unwarranted promotion of many Examiners as Assistant Controllers has further led to animbalance in the set-up of the Patent Office, thereby disrupting the normal functioning of theorganization . Now there are more supervisors(Controllers) than workers(Examiners).[1] [26].

An Indian Patent Examiner is mandated to search for prior art and for objections under any otherground as provided in the Patent's Act ,to report to the Controller, who has the power to eitheraccept or reject Examiner's reports.Unlike the USPTO /EPO/JPO , Examiners at IPO have onlyrecommending power and the controllers are empowered by statute either to accept or refuse therecommendation.(Sections 12 -15 of the Patent's Act, page 100,Item 8.04.10 of Patent officemanual).Examiner's report to Controller are not open to public unless Court's allow (section 144of the Patent's Act).A Parliamentary committee has recommended for repealing S144 [27].

Examiner attrition seems to be issue with the Office.[2][3] Despite the attrition the number of firstoffice actions have increased from 2004-05 probably due to increased output from the Office.[4]

Ex-Controller General, Mr. P.H.Kurian, in an interview, had promised time-bound promotions toOfficers and recruitment of new Examiners. This may mitigate the crisis of lack of officers andthe problem of attrition due to low pay and lack of promotion, if implemented. There are around75 examiners who have been languishing in the same post without promotion for over 8 yearsfrom 2003 onwards.[5]. A big chunk of very high-qualified (some of them has internationalreputation for their research and academic attainments) examiners has left the Indian PatentOffice as IPO couldn't provide good working atmosphere within the office. [6] [7] [8] [9] [10]

However this promise made by the former CGPDTM was not kept and is leading to a biggercrisis of mass attrition by newly recruited examiners who were recruited by the HR wing ofCSIR after spending huge amounts of exchequer's money. CSIR charged 4-5 crores INR forconduction the selection examination. Out of the announced 257 posts only less than 150selected candidates had expressed interest to join. Among those who joined, many have alreadysubmitted their resignations and still more are waiting in the wings to resign soon.This is anindication of the deep malaise within the system which is being ignored or covered up silently[11].

A recent report of a concerned government official has recommended outsourcing of search inview of increased work load. IPO has started to outsource prior-art searches violating thestipulations of the prevailing Patents Act [28].

According to Indian newspaper Mint, Indian patent examiners have the world's highest workloadand lowest pay. While a patent examiner in the European Patent Office would handle less thanseven patent applications per month and a USPTO examiner would handle eight applications permonth, an Indian examiner reportedly handles at least 20 applications a month. However anIndian examiner’s monthly salary is less than a third of his/her counterparts in other foreignpatent offices.[29] The Ministry of commerce has come out with a discussion paper in order toaddress the issues plaguing the Indian Patent Office. Granting financial and administrativeautonomy, Separation of Patent and Trademark offices, setting up of additional offices are someof the issues put forth for input from stakeholders.[12]

Amendments to the Patents ActAmendments (in 1999, 2002, 2005, 2006) were necessitated by India's obligations under TRIPS,allowing product patents in drugs and chemicals. Another important feature was the introductionof pre-grant representation (opposition) in addition to the existing post-grant oppositionmechanism. The pre-grant representation has had success in a short span. One example is theabandonment of a patent application by Novartis on Glivec (Imatinib Mesylate), revoking theearlier granted EMR on the same drug used to treat Leukemia.[13]

A controversial provision of this amendment was on software patent-ability, which was laterwithdrawn in another amendment (Patents Act, 1970, as amended by Patents (Amendment) Act,2005). It is clear from the legislative history and interpretation of provisions in the Patent Act,1970 (as amended in 2005) that the Patent office should not allow intrinsic patent-ability ofcomputer programs.[14] But there is evidence suggesting that the Patent office has actedotherwise.[14] Patent Rules 2003 were amended in 2005 and again in 2006. Some of the importantfeatures of both the 2005 & 2006 Rules are the introduction of reduced time lines and a feestructure based on specification size and number of claims, in addition to a basic fee.

'Though clause (k) of Section (3) of the Indian Patent Act holds computer programmes 'per se' oralgorithms as non-patentable, technical 'application of software' or 'software combined withhardware'[15] including embedded systems, may be granted patent' according to R S Praveen Raj,former patent examiner from Indian Patent Office.

Patent durationTerm of every patent in India is 20 years from the date of filing of patent application, irrespectiveof whether it is filed with provisional or complete specification. However, in case of applicationsfiled under PCT the term of 20 years begins from International filing date (See No.41 of FAQson Indian Patent Office website).[16]

Geographical Indications tagsFurther information: List of Geographical Indications in India

India, as a member of the World Trade Organization (WTO), enacted the GeographicalIndications of Goods (Registration & Protection) Act, 1999 has come into force with effect from15 September 2003. GIs have been defined under Article 22(1) of the WTO Agreement onTrade-Related Aspects of Intellectual Property Rights(TRIPS) Agreement as: “Indications whichidentify a good as originating in the territory of a member, or a region or a locality in thatterritory, where a given quality, reputation or characteristic of the good is essentially attributableto its geographic origin.”[17]

The GI tag ensures that none other than those registered as authorised users (or at least thoseresiding inside the geographic territory) are allowed to use the popular product name. Darjeelingtea became the first GI tagged product in India, in 2004-05, since then by September 2010, 132had been added to the list, this include, Salem Fabric, Kancheepuram Silk Sarees, MaduraiSungudi Sarees, Bhavani Jamukkalam, Coimbatore wet grinders, Bikaneri Bhujia fromRajasthan, Guntur Sannam chilli, Tirupati Laddu,[18] Hyderabadi haleem and Gadwal sarees fromAndhra Pradesh, Nashik valley wine, Mahabaleshwar strawberry and Paithani sarees fromMaharashtra, Kinnauri shawl from Himachal Pradesh, Kasaragod sarees and Kuthampully sarees

from Kerala, Sandur Lambani embroidery and Kasuti embroidery [19] from Karnataka, andBanarasi brocades and sarees and hand-made carpet from Bhadohi in Uttar Pradesh.[20][21]

Other GI patented items from Karnataka include: Ilkal sarees, Channapatna toys, HoovinaHadagali jasmine, Monsooned Malabar coffee, Monsooned Malabar Robusta Coffee and CoorgGreen Cardamom, Molakalmuru sarees, bronze ware, Navalgund Durries, Mysore Ganjifa cards,Mysore silk, Mysore agarbathis (incense sticks), Bidriware (metal design), Mysore rosewoodinlay, Mysore sandalwood oil, Mysore Sandal Soap, Mysore traditional paintings, Coorg orange,Mysore betel leaf, Nanjangud banana, Mysore jasmine and Udupi jasmine.[17]

All the items with GI tags are listed below:

State Items

AndhraPradesh

Guntur Sannam chilli, Tirupati Laddu,Hyderabadi haleem and Gadwalsarees

HimachalPradesh

Kinnauri shawl

Karnataka

Sandur Lambani embroidery, Kasuti embroidery, Ilkal sarees,Channapatna toys, Hoovina Hadagali jasmine, Monsooned Malabarcoffee, Monsooned Malabar Robusta Coffee and Coorg Green Cardamom,Molakalmuru sarees, bronze ware, Navalgund Durries, Mysore Ganjifacards, Mysore silk, Mysore agarbathis (incense sticks), Bidriware (metaldesign), Mysore rosewood inlay, Mysore sandalwood oil, Mysore SandalSoap, Mysore traditional paintings, Coorg orange, Mysore betel leaf,Nanjangud banana, Mysore jasmine and Udupi jasmine.

Kerala Kasaragod sarees, Kuthampully sarees, Mattu Gulla

Maharashtra

Nashik valley wine, Mahabaleshwar strawberry and Paithani sarees

Rajasthan Bikaneri Bhujia

Tamil NaduSalem Fabric, Kancheepuram Silk Sarees, Madurai Sungudi Sarees,Bhavani Jamukkalam, Coimbatore wet grinders

UttarPradesh

Banarasi brocades and sarees and hand-made carpet from Bhadohi

WestBengal

Darjeeling tea

CriticismAs per An Indian patent Attorney in a Leading IP magazine, patents which were beyond the Actwere granted by the Office.[22] The Indian Patent office seems to have unusually high grant rate(refer to page 14 of the patent office annual report[23] for the year 2005-06 in respect of number ofrefused patent applications), compared to other major patent Offices (EPO annual report for

2006, p22), and indicates the complete failure of the "well established" quality assurance systemscovering the patent granting procedures.[24] The reason behind this is attributed to the fact that amajority of patent applications filed in India are PCT National Phase cases which have anInternational Search/Examination report. Therefore it is easy for Controllers to decide ongranting a patent for the application.This is not the case in well established Patent offices ofdeveloped countries where a majority of the applications are local(ordinary) applications. Here asearch has to be carried out and based on the documents recovered during this search, the finaloutcome of the application is decided. Hence there can be no comparison with the number ofcases examined and granted in India and abroad. Further, the monthly target for Indian examinersis 16 new applications per month (in addition to amended applications and other responsibilities)as compared to a maximum of 5 abroad. More importantly, the Indian Patent Office strictly hasonly 12 months to grant/refuse the application as compared to foreign patent offices whereapplicants can extend the final date indefinitely. Knowledge commission, an Indian govtappointed body has recommended measures regarding the functioning of the Office.[25] Recentlythe patent grant of a pharma drug has attracted attention.[26][27] It should also be noted that thePatent office has not come up with final guidelines (Manual of Patent Practice and Procedure). Itis unclear whether the patent office is still revising its draft manual which is kept for publicinspection since 2005. A Delhi high court judgment has found that the Indian Patent Office hasfollowed a lowered inventive step criterion (TSM method)in respect of a cancer drug patent.

The patent office is also not enforcing the rules and regulation mentioned in the act.

According to the section 24 of patent act "The period for which an application for patent shallnot ordinarily be open to public under sub-section (1) of section 11A shall be 18 month from thedate of priority. The controller shall publish the application in the Journal shall ordinarily be onemonth from the date of expiry of said period, or one month from the date of request forpublication under rule 24-A"

The rules are un-clear and there is no fixed action stated. The word "shall" is been used as aprotection shield by the Patent office and has never published any of the application within onemonth from the date of request or expiry of said period. This is one of the examples, many morecan be listed. It seems to be that Patent Office is biased.

Generally, the time taken by the Indian Patent Office (IPO) to grant a patent is around 3–4 yearsfrom the date of first filing. US Attorneys are behind USPTO to reduce the 2 years period takenby the USPTO.

A very constructive criticism and subsequent evidences of corruption, bribery, nepotism and theuse of extra-Constitutional authority of power by a set of coterie-driven officials led by seniorofficials of the Indian patent office have emerged from Dr. Arijit Bhattacharya, a formerController of the Kolkata Patent Office [28].

ModernizationThe Indian Patent Office has implemented a modernization program according to an Indian govtwebsite. And according to this website "Efforts have been made to improve the working of thePatent Offices within the resources available and that the problem of backlog is also beingattacked through 50% higher monthly target for disposal of patent applications per Examiner". [29]

Full text of Indian Patents are now available along with prosecution history [30],[31]. E- Filingof Patents & Trademarks is made possible and according to an Indian Minister the first phase of

the modernization comes to an end and the Indian Patent office wishes to be an Internationalsearch Authority.[30] The second phase of modernization has been proposed with the aim ofachieving US patent examination efficiency among others.[31] Patent filings during the year 2007-08 were 35000.[32]

UNIT-3(Patent filing procedures

National & PCT filing procedure; Time frame and cost; Status of the patent applications filed;Precautions while patenting – disclosure/non-disclosure; Financial assistance for patenting -introduction to existing schemes Patent licensing and agreement Patent infringement- meaning,scope, litigation, case studies)

1.Introduction to patent:

A United States patent is the form of intellectual property protection which protects thefundamental idea of an invention. It gives the patent holder the exclusive right (monopoly) tomake, use, or sell the patented invention for a period of twenty years from the date ofapplication. If another party makes, uses, or sells the patented invention within the United States,the patent holder may take the 'infringer' to court and seek damages. In effect, a patent is a tradebetween the inventor and the government. In consideration for sharing his/her invention with thegovernment and therefore the public, the inventor is given twenty years of exclusive rights.

2. Types of patent:

Types of Patents

The U.S. Patent and Trademark Office (PTO) issues several different types of patent documents offering different kinds of protection and covering different types of subject matter.

A recently issued PTO patent document is one of six types,generally described below. See U.S. Code Title 35 - Patents, fora full description of patents and patent laws.

* Utility Patent- Issued for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof, it generally permits its owner to exclude others from making, using, or selling the invention for a period of up to twenty years from the date of patent application filing ++, subject to the payment of maintenance fees. Approximately 90% of the patent documents issued by the PTO in recent years have been utility patents, also referred to as "patents for invention."

* Design Patent- Issued for a new, original, and ornamental design for an article of manufacture, it permits its owner to exclude others from making, using, or selling the design for a period of fourteen years from the date of patent grant. Design patents are not subject to the payment of maintenance fees.

* Plant Patent- Issued for a new and distinct, invented

or discovered asexually reproduced plant including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, it permits its owner to exclude others from making, using, or selling the plant for a period of up to twenty years from the date of patent application filing ++. Plant patents are not subject to the payment of maintenance fees.

* Reissue Patent- Issued to correct an error in an already issued utility, design, or plant patent, it does not affect the period of protection offered by the original patent.

* Defensive Publication (DEF)- Issued instead of a regular utility, design, or plant patent, it offers limited protection, defensive in nature, to prevent others from patenting an invention, design, or plant. The Defensive Publication was replaced by the Statutory Invention Registration in 1985-86.

* Statutory Invention Registration (SIR)- This document replaced the Defensive Publication in 1985-86 and offers similar protection.

++ Although, the length of utility and plant patent protection(patent term) was previously seventeen years from the date ofpatent grant, utility and plant patents filed after June 8, 1995now have a patent term of up to twenty years from the date offiling of the earliest related patent application. Utility andplant patents which were applied for prior to June 8, 1995, andwhich were or will be in force after June 8, 1995, now have apatent term of seventeen years from the date of patent grant ortwenty years from the date of filing of the earliest relatedpatent application, whichever is longer. Utility patents aresubject to the payment of periodic maintenance fees to keep thepatent in force. Patent terms can be extended under some specificcircumstances. See the U.S. Code Title 35 - Patents for a fulldescription of patent laws.

TYPES OF PATENT APPLICATIONS

1. Ordinary Application

2. Convention application

3. PCT- International Application

4. PCT -National Phase Application

5. Application for Patent of Addition

6. Divisional Application

Ordinary ApplicationThe first application for patent filed in the Patent Office without claiming priority from anyapplication or without any reference to any other application under process in the Patent office iscalled an ordinary application.

Convention applicationWhen an applicant files a patent application, claiming a priority date based on the same orsubstantially similar application filed in one or more of the convention countries, it is called aconvention application. To get a convention status, an applicant should file the application beforeany of the patent offices within 12 months from the date of first application in the conventioncountry.

PCT- International ApplicationThe Patent Cooperation Treaty or PCT is an international agreement for filing patentapplications. However, there is nothing called as a 'world patent'

The PCT application does not provide for the grant of an international patent, it simply providesa streamlined process for the patent application process in many countries at the same time.Some of the benefits of the system are:

It simplifies the process of filing patent applications i.e., an applicant can file a singleinternational patent application in one language with one receiving patent office in order tosimultaneously seek protection for an invention in up to 138 countries throughout the world.

It provides internationally recognized priority date, which has an effect in each of the countriesdesignated.

Delays the expenses associated with applying for patent protection in various countries.

PCT gives 30 to 31 months time to enter into various countries from the priority date orinternational filing date whichever is earlier unlike the convention method which gives only 12months time to file for a patent application in the country of interest from the priority date.Hence, the PCT route allows the inventor more time to assess the commercial viability of his/herinvention.

It provides an international search report. The results of this search are very valuable to theapplicant. They allow the applicant to make more informed choices early in the patent process,and to amend the application to deal with any conflicting material, before the major expenses ofthe national phase of the patent process begin.

Provides an option of an International Preliminary Examination Report that is forwarded to theelected Offices and the applicant, the report containing an opinion as to whether the claimedinvention meets certain international criteria for patentability.

These reports give the applicant a fair idea about the patentability of the invention beforeincurring charges for filing and prosecution in each individual country.

National Phase Application under PCTThe PCT-national phase must follow the international phase. The applicant must individually'enter into the national phase'. i.e. file a National phase application in each county he wishes toenter. The applicant can enter the national phase in up to 138 countries within 30-31 months(depends on the laws of the designated countries) from the international filing date or prioritydate (whichever is earlier). If the applicant does not enter the national phase within the

prescribed time limit, the International Application loses its effect in the designated or electedStates.

Patent of Addition Patent of addition is an application made for a patent in respect of any improvement ormodification of an invention described or disclosed in the complete specification already appliedfor or has a patent.

In order to be patentable an improvement, should be something more than a mere workshopimprovement and must independently satisfy the test of invention. The major benefit is theexemption of renewal fee so long as the main patent is renewed. A patent of addition lapses withthe cessation of the main patent.

Divisional Application A divisional application is one which has been "divided" from an existing application. Theapplicant, at any time before the grant of a patent can file a further application, if he so desires orif an objection is raised by the examiner on the ground that the claims disclosed in the completespecification relates to more than one invention. A divisional application can only contain subjectmatter in the application from which it is divided (its parent), but retains the filing and prioritydate of that parent. A divisional application is useful if a unity of invention objection is issued, inwhich case the second invention can be protected as a divisional application

Specification

In order to obtain a patent, an applicant must fully and particularly describe the invention therein claimed

in a complete specification. The disclosure of the invention in a complete specification must be such that a

person skilled in the art may be able to perform the invention. This is possible only when an applicant

discloses the invention fully and particularly including the best method of performing the invention. The

Specification is a techno-legal document containing full scientific details of the invention and claims to

the patent rights. The Specification, thus, forms a crucial part of the Patent Application. It is mandatory on

the part of an applicant to disclose fully and particularly various features constituting the invention. The

Specification may be filed either as a Provisional or as a complete Specification.

The Specification (provisional or complete) is to be submitted in Form-2 along with the Application in

Form-1 and other documents, in duplicate, along with the prescribed fee as given in the First Schedule.

The first page of the Form 2 shall contain:

a) Title of the invention;

b) Name, address and nationality of each of the applicants for the Patent; and

c) Preamble to the description.

The title of the invention shall sufficiently indicate the specific features of the invention. Every

Specification whether Provisional or complete shall describe the invention. The applicant shall submit

drawings, wherever required. The Controller may also require the applicant to submit drawings, if

necessary at the examination stage. Such drawings shall form a part of the Specification and suitable

references thereto shall be made in the Specification. The Controller may require the applicant to submit,

anytime before the grant, models or samples related to the invention for better illustration of the invention.

However, such models or samples shall not form part of the Specification.

Section 9, 10. Rule 13.

Form-1, 2

Provisional Specification

a) When the applicant finds that his invention has reached a stage wherein it can be disclosed on

paper, but has not attained the final stage, he may prepare a disclosure of the invention in the form

of a written description and submit it to Patent Office as a Provisional Specification which

describes the invention.

b) A Provisional Specification secures a priority date for the application over any other application

which is likely to be filed in respect of the same invention being developed concurrently.

c) Immediately on receiving the Provisional Specification the Patent office accords a filing date and

application number to the Application.

d) An application accompanying a provisional specification is deemed to be abandoned if no

complete specification is filed within twelve months from the date of filing of the provisional

specification. However, the applicant has an option to post-date the provisional specification under

Section 17, before the expiry of twelve months from the date of filing. Such request for post-

dating shall not be allowed after the expiry of twelve months from the date of application. Such

abandoned applications are not published.

Once abandoned for reasons mentioned above, no priority can be claimed from such application,

for any other application such as divisional application etc.

e) If two provisional specifications filed by an applicant are cognate or if one is a modification of

the other, the applicant may file one complete specification covering both the provisional

applications. Such a complete specification shall have to be filed within twelve months from the

date of filing of the first provisional application. In such cases, date of filing of application is the

date of filing of the earliest provisional specification and shall bear the number of that application.

f) An applicant may, within twelve months from the filing of a complete specification (not being a

convention application or a PCT National Phase Application), convert the same into a provisional

specification. Consequently, the applicant has to file a complete specification within twelve

months from the date of first filing.

g) A provisional specification (i.e. the one filed directly or the one converted from a complete

specification) may be post-dated to the date of filing of the complete Specification.

Section 9, 11A(3)(b)

05.02.01

Provisional Specification – General

A Provisional Specification is not a rough draft or a skeleton of the Complete Specification. The Complete

Specification, which follows a Provisional Specification, does not replace the latter. Both are permanent

and separate documents and remain so in the file.

05.02.02

Contents of Provisional Specification

a) A Provisional Specification shall essentially contain the title and description of the invention and

shall start with a preamble ‘The following Specification describes the invention.’ Claims may not

be included in the Provisional Specification as the purpose of filing a Provisional Specification is

to claim a priority date.

b) The description starts from the second page starting with the field of invention and containing the

background of the invention, object of the invention and statement of the invention.

c) It is advisable to include in the Provisional Specification as much information as the applicant has

at the time of filing.

d) It may be noted that a Provisional Specification cannot be filed in case of a Divisional,

Convention or a PCT National Phase Application. In such cases, filing a Complete Specification is

a mandatory requirement.

05.03

Complete Specification

The Complete Specification is a techno-legal document which fully and particularly describes the

invention and discloses the best method of performing the invention.

As the Complete Specification is an extremely important document in the patent proceedings it is advised

that it should be drafted with utmost care without any ambiguity. The important elements of the Complete

Specification are further discussed below.

Section 10

05.03.01

Complete Specification

Every complete specification shall:

a) fully and particularly describe the invention and its operation or use and the method by which it

is performed;

b) disclose the best method of performing the invention which is known to the applicant for which

he is entitled to claim protection;

c) end with a claim or set of claims defining the scope of the invention for which the protection is

claimed;

d) make reference to deposit of the biological material in the international depository authority, if

applicable; and

e) be accompanied by an abstract.

Section 10(4)

05.03.02

National phase applications

In case of national phase applications, the title, description, drawings, abstract and claims filed with the

international application are taken as a complete specification. (For further details of the PCT National

Phase Applications, please see Chapter 7)

Section 10(4A)

05.03.03

Title

The title should be sufficiently indicative of the subject matter of the invention and shall disclose the

specific features of the invention. It need not be the same as the preamble of the main claim. It shall be

brief, free from fancy expressions or ambiguity and as precise and definite as possible, but it need not go

into the details of the invention itself and should not ordinarily exceed fifteen words.

The following are not permissible in the title:

Inventor’s name, the word ‘Patent’, words in other languages, the abbreviation “etc”, fancy words e.g.

“Washwell Soap”, “Universal Rest Easy Patent Chair”.

Rule 13(7)(a)

05.03.04

Field of the Invention and use of Invention

The description should preferably begin with a general statement of the invention so as to indicate briefly

the subject matter to which the invention relates, e.g. “This invention relates to …………………”.

Thereafter, the advantages of the invention may be mentioned to bring out clearly the areas of application

and preferable use of the invention. The applicant may substantiate industrial applicability of the invention

in this part.

05.03.05

Prior Art and problem to be solved

This part should indicate the status of the technology in the field of invention with reference to

developments in the field, patents and pending patent applications in the specific art. When the invention

relates to an improvement on an existing product or process, a short statement of the closest prior art

known to the applicant shall also be given. However, the description should fully and particularly describe

the invention, by clearly distinguishing it from such a closest prior art, known to the applicant.

05.03.06

Objects of the Invention

The purpose of this part is to clearly bring out the necessity of the invention. It shall clearly mention the

technical problems associated with the existing technology and the solution for that, bringing out the

differences between the claimed invention and the prior art. The solution sought by the invention should

be clearly brought out as object(s) of inventions with statements like “It has already been proposed

………………” followed by the objects which the inventions has in view e.g. “The principal object of this

invention is ……………”, “Another object of this invention is ……………..”, “A further object of this

invention is ………….”etc.

05.03.07

Summary of the Invention

The description should include a summary of invention before giving the details of the invention and the

method of performing it. The statement should clearly set forth the distinguishing novel features of the

invention for which protection is desired. This part is intended to declare different aspects of the

invention.

05.03.08

Detailed Description of the Invention

a) Description of an invention is required to be furnished in sufficient detail so as to give a

complete picture of the invention and follows the Summary of invention. The nature of

improvements or modifications effected with respect to the prior art should be clearly and

sufficiently described. The details of invention described should be sufficient for a person skilled

in the art to perform the invention. It may include examples / drawings or both for clearly

describing and ascertaining the nature of invention. Examples must be included in the description,

especially in the case of chemical related inventions.

b) The details of invention described should enable a person skilled in the art to reduce the

invention into practice without further experimentation.

c) Reference to the drawings should be specific and preferably in the following form: “This

invention is illustrated in the accompanying drawings, throughout which, like reference numerals

indicate corresponding parts in the various figures. The Specification in respect of a Patent of

Addition should contain at the beginning of the description, a definite statement indicating an

improvement in or modification of, the original invention, and the serial number of the

Application for Patent in respect of the original invention. The Specifications should also contain

a short statement of the invention as disclosed in the earlier Specification.

d) Terms in other languages, if any, used in the description should be accompanied by their English

equivalents. The use of vague slang, words and colloquialisms is objectionable and shall be

avoided.

e) When a biological material is described in the specification and when such material is not

available to the public and cannot be described adequately as per the provisions of the Act, such

material shall be deposited in order to make the application complete. The deposit shall be made

with the International Depository Authority under the Budapest Treaty, on or before the date of

filing. The International Depository Authority in India is Microbial Type Culture Collection and

Gene Bank (MTCC) – Chandigarh.

http://ipindia.nic.in/ipr/patent/d_inst_456.pdf.

For further information on Microbial Type Culture Collection and Gene Bank (MTCC) please

visit – http://wdcm.nig.ac.jp/CCINFO/CCINFO.xml?773]; http://www.imtech.res.in/mtcc.]

f) Reference to such biological material shall be made in the Specification within three months

from the date of filing, giving all the available characteristics of the material required for it to be

correctly identified or indicated including the name, address of the depository institution and the

date and number of the deposit of the material at the institution.

g) Further, the source and geographical origin of the biological material specified in the

Specification shall also be disclosed.

h) In the case of Biotechnology related inventions, relevant numbers of the sequence listing shall be

mentioned at appropriate place in the specification.

i) Sequence listing should also be given in electronic form. However, the fees with respect to the

corresponding number of pages should be paid.

j) Access to the material is available in the depository institution only after the date of the

application of patent in India.

05.03.09

Drawings

a) Drawings or sketches, which require a special illustration of the invention, shall not appear in the

description itself. Such drawings shall be on separate sheet(s).

b) Drawings shall be prepared neatly and clearly on durable paper sheet.

c) Drawings shall be on standard A4 size sheets with a clear margin of at least 4 cm on the top and

left hand and 3 cm at the bottom and right hand of every sheet.

d) Drawings shall be on a scale sufficiently large to show the inventions clearly and dimensions

shall not be marked on the drawings.

e) Drawings shall be sequentially or systematically numbered and shall bear—

i. in the left hand top corner, the name of the applicant;

ii. in the right hand top corner, the number of the sheets of drawings, and the

consecutive number of each sheet; and

iii. in the right hand bottom corner, the signature of the applicant or his agent.

f) No descriptive matter shall appear on the drawings except in the flow diagrams.

Rule 15

05.03.10

Abstract

a) Every complete specification shall be accompanied by an abstract to provide technical

information on the invention. The abstract shall commence with the title of the invention.

b) The abstract shall be so drafted that it constitutes an efficient instrument for the purposes of

searching in the particular technical field, in particular by making it possible to assess whether

there is a need to consult the specification itself.

c) The abstract shall contain a concise summary of the matter contained in the specification. The

summary shall indicate clearly the technical field to which the invention belongs, technical

problem to which the invention relates and the solution to the problem through the invention and

principal use or uses of the invention. Where necessary, the abstract shall contain the chemical

formula, which characterizes the invention.

d) The abstract may not contain more than one hundred and fifty words. If the specification contains

any drawing, the applicant shall indicate on the abstract the figure, or exceptionally, the figures of

the drawings which may accompany the abstract when published. Each main feature mentioned in

the abstract and illustrated by a drawing shall be followed by the reference sign used in that

drawing.

e) The Controller may amend the abstract for providing better information to third parties.

Rule 13(7)

05.03.11

Best Method

The Act specifically requires that the complete specification must describe the best method of performing

the invention known to the applicant, including that, which he may have acquired during the period of

provisional protection prior to the date of filing the complete specification.

Section 10

05.03.12

Claims

Claims define the contours of rights, if and when a patent is granted for an invention. Hence, claims are

the most critical part of a Patent Application. In a complete specification the description is followed by

claims. Since, claims define the scope of legal protection, it is suggested that they should be drafted

carefully to cover all the aspects of the protection being sought at the same time adequately

distinguishing the prior art from the claimed invention.

Section 10(4)(c)

05.03.13

Unity of invention and clarity of claims

a) Claim(s) of a Complete Specification shall relate to a single invention, or to a group of inventions

linked so as to form a single inventive concept.

b) Claims shall be clear and succinct and fairly based on the matter disclosed in the specification.

Section 10(5)

05.03.14

Significance of Claims

a) A claim is a statement of technical facts expressed in legal terms defining the scope of the invention

sought to be protected. No exclusivity is obtained for any matter described in the Complete

Specification unless it is claimed in the claims.

b) What is not claimed in the ‘claims’ stands disclaimed, and is open to public use, even if the matter is

disclosed in the description. Claims define the boundaries of legal protection sought by the patentee

and form a protective fence around the invention which is defined by the words and phrases in the

claims.

c) The claims shall define clearly the scope of the invention with conciseness, precision and accuracy,

so that others may know the exact boundary into which they should not trespass.

d) Each claim is evaluated on its own merit and, therefore, if one of the claims is objected, it does not

mean that the rest of the claims are invalid. It is therefore important to make claims on all aspects of

the invention to ensure that the applicant gets the widest possible protection.

05.03.15

Scope of claims

a) Claims must not be too broad to embrace more than what the applicant has in fact invented. A Claim

which is too broad may encroach upon the subject matter which is in public domain or belongs to

others.

b) However, a claim may not be too narrow also because such a Claim would not be sufficiently

effective against potential infringement. An infringer would go scot-free, if the claims were too

narrow and hence, the full benefit of the invention may not accrue to the inventor.

c) Having many claims, where each claim has a different scope, allows the applicant to have a legal title

to different aspects of the invention. A good drafting may begin with broad claims and develops

towards claims that are narrower in scope.

d) Terms of the claim which confuse the scope of the invention, or claims that are not specific (e.g. Any

novel matter) should be avoided.

e) A claim shall be for the protection of either a product or process, as the case may be, and shall be in

one sentence according to the standard practice.

05.03.16

Structure of Claims

a) The description of invention in the complete specification is to be followed by a “statement of

Claims” preceded by the prescribed preamble, “I / We Claim” as the case may be.

b) Claims should start from a fresh page, after detailed description of the invention and should be

serially numbered.

c) Each claim should be in a single sentence and should be clearly worded.

d) A claim should not be verbose.

e) There is no restriction as to the number of claims that can be incorporated in the specification.

Applicant has to pay additional fee, if total number of claims are more than ten.

f) Each claim should be fairly based on matter disclosed in the specification. This means that all the

characteristics of the invention that form part of the Claims must be fully explained in the description.

g) A claim should be clear in the sense that it should not cause the reader to speculate. For example, if

words like “thin”, “strong”, “a major part”, “such as”, “when required” or “any” are used, the reader

may make a subjective judgment unless such expression follows some definite value.

h) A claim must be specific and not vague, ambiguous or hypothetical in nature. Each claim should be

complete so that it covers the inventive feature and enough elements around it to put the invention in

the proper context.

i) In Addition, any term, which is used in the claim, must be either found in the description or fairly

inferred from the description.

j) Trade Marks are an indication of the origin rather than the composition or content of goods, and

should not be used in Patent Applications where a generic term can be used instead. Trade Marks are

only permitted in Claims where it can be shown that their use is unavoidable and does not introduce

ambiguity. Where Marks that are registered are mentioned, they should be acknowledged as such. If a

Trade Mark is not registered, its owner should be indicated.

k) A Claim usually consists of three parts:

- Preamble,

- Transitional phrase; and

- Body.

l) The introductory phrase identifies the category of the invention and sometimes the purpose (for

example, a machine for waxing paper, a composition for fertilizing soil).

m) The transition phrase may be words and phrases such as:

- comprising of

- including

- consisting of

- consisting essentially of

n) If the invention is an improvement on a product or a process existing in the prior art, the invention

should be distinguished very clearly by characterizing the claim with respect to the prior art. In such

cases, the claim will have two parts separated by the word ‘characterized by’ or ‘wherein’. The part

coming before ‘characterized by’ is the prior art while that comes after will be the features of the

invention. In the following example “A data input device” is the introductory phrase, “comprising” is

the transition phrase, and the rest of the claim is the body:

“A data input device comprising: an input surface adapted to be locally exposed to a pressure

or pressure force, a sensor means disposed below the input surface for detecting the position of the

pressure or pressure force on the input surface and for outputting an output signal representing said

position and; an evaluating means for evaluating the output signal of the sensor means.”

o) The first claim is always an independent claim also known as ‘Principal Claim’. It should clearly

define the essential novel features of the most preferred embodiment of the process/product that

constitutes the invention. The claim may be properly characterized with respect to the ‘prior art’,

defining all the technical features essential to the invention or inventive concept. The claim should

bring out sufficient details of interrelationship, operation or utility to establish that the invention

achieves the intended objectives.

p) There may be more than one independent claim in a single application if the claims fall under a

single inventive concept.

While there is no restriction as to the number of claims, including independent claims, it is advisable

to limit the number of claims, as well as the number of independent claims in a single application so

that the claims are all of cognate character and are linked so as to form a single inventive concept.

Inclusion of multiple independent claims directed at non-cognate aspects of the claimed invention is

not desirable. If claims relate to a plurality of distinct inventions, it may be objected on ground of

lack of unity of invention.

q) A dependent claim derives antecedence from an independent claim and reads into it the features of

the independent claim and may contain additional non-essential features and even the minute aspects

and optional features. As for example:

“A wrapper as claimed in Claim 1, wherein a narrow area of the tear tape, spaced from each edge of

the tear-tape, is united to a narrow area of the wrapper defined on each side by a line of perforations

which are covered by the outer portions of the tear-tape, the perforations facilitating tearing of the

wrapper to remove the portion bounded to the tear-tape.”

“A gramophone record according to Claim 1, wherein the percentage of filler employed in the record

is from 1 to 70 per cent.”

“A tool according to Claim 1, wherein the means for guiding the tool and facilitating the removal of

the waste metal and the means for preventing the distortion of the spindle comprise two separate

plates slidable and removable mounted on the spindle”.

r) Further independent claims are justified where the single inventive concept covers more than one

category e.g. process, product, complementary versions within one category e.g. plug and socket,

transmitter and receiver, which work only together.

s) Claims should not contain:

i. A claim which is unsearchable by reason of the number of alternatives embraced, or the

choice of characterizing parameters.

ii. Dependent Claims that are not fully limited by the terms of the preceding independent

claim, e.g. dependent claims which omit, modify or substitute a feature of an independent

claim.

t) The practice of including an omnibus claim does not have any legal basis under the Patents Act. In

fact, such a claim cannot be allowed as per Section 10(4)(c) of the Act. As such claims are unclear,

vague and unsearchable, it is desirable to avoid omnibus claims in a patent application.

05.04

Priority of a claim

Each claim of a complete specification shall have a priority date. If the complete specification is filed

along with the application, the date of filing of the application is the date of the priority of the claim(s) of

the specification if the claim(s) are fairly based on the matter disclosed in the specification.

Section 2(1)(w), 11

05.04.01

General

a) When a Complete Specification is filed pursuant to a Provisional Specification, the priority date

thereof shall be the date of filing of the provisional application.

b) When a complete specification is filed based on two or more provisional specifications which

are cognate, the priority dates for claims arising from each of the provisional specifications will

be the date of the respective provisional specification.

c) When a complete specification is converted into a provisional specification and a fresh complete

specification is filed thereafter, the priority date of claims shall be the date of disclosure of the

relevant specification in which the claimed subject matter was first disclosed.

d) When a complete specification is filed after the provisional specification, the Controller may on

the request of the applicant made any time before the grant, cancel the provisional specification

and post-date the provisional specification to the date of complete specification.

Prior art (also known as state of the art, which also has other meanings, or background art[1]),in most systems of patent law,[2] constitutes all information that has been made available to thepublic in any form before a given date that might be relevant to a patent's claims of originality. Ifan invention has been described in prior art, a patent on that invention is not valid.

Information kept secret, for instance, as a trade secret, is not usually prior art, provided thatemployees and others with access to the information are under a non-disclosure obligation. Withsuch an obligation, the information will typically not be regarded as prior art. Therefore, a patentmay be granted on an invention, although someone else already knew of the invention. A personwho used an invention in secret may in some jurisdictions be able to claim "prior user rights" andthereby gain the right to continue using the invention. As a special exception, earlier-filed andunpublished patent applications do qualify as prior art as of their filing date in certaincircumstances.

In order to anticipate a claim, prior art is generally expected to provide a description sufficient toinform an average worker in the field (or the person skilled in the art) of some subject matterfalling within the scope of the claim. Prior art must be available in some way to the public, andin many countries, the information needs to be recorded in a fixed form somehow. Prior artgenerally does not include unpublished work or mere conversations (though according to theEuropean Patent Convention, oral disclosures also form prior art—see Article 54(2) EPC). It isdisputed whether traditional knowledge (e.g., of medical properties of a certain plant) constitutesprior art.

Patents disclose to society how an invention is practiced, in return for the right (during a limitedterm) to exclude others from manufacturing, selling, offering for sale or using the patentedinvention without the patentee's permission. Patent offices deal with prior art searches in thecontext of the patent granting procedure. To assess the validity of a patent application, patentoffices explore the prior art that was disclosed before the invention occurred (in the UnitedStates) or before the filing date (in the rest of the world).

e) If the Claim is fairly based on the matter disclosed partly in one and partly in another such

previous application accompanying provisional specification, the priority date of the claim shall

be the date of the later filed Specification.

f) Where a complete specification based on a previously filed application in India has been filed

within twelve months from the date of that application and the claim is fairly based on the matter

disclosed in the previously filed application, the priority date of that claim shall be the date of the

previously filed application in which the matter was first disclosed.

g) A claim in a complete specification of a patent shall not be invalidated by the reason only of:

a. the publication or use of the invention so far as claimed in that claim on or after the

priority date of such claim; or

b. the grant of another patent which claims the invention, so far as claimed in the first

mentioned claim, in a claim of the same or a later priority date.

Patent database:

Indian databases:

The database are quite user friendly and equipped with latest search tools andlogical operations. Value addition has been done in the databases to make the

information easily accessible.

Ekaswa- A Database: Patent applications filed in India as published in

the issues of the Gazette of India (Part III, Section 2) from January 1995 to.

Ekaswa-B Database: Patent applications notified for opposition in theGazette of lndia (Part III, Section 2) published from January 1995 to

December 2004

Ekaswa-C Database: Patent applications published in official Journalof Patent office (18 month publications) published from January 2005

onwards.

The access to the database is online through internet or you can alsosubscribe a CD-ROM

International Patent Databases

PCT database (External website that opens in a new window)(1997 - present,free searching and front page display )The PCT database is provided by WIPO (External website that opens in a newwindow) (World Intellectual Property Organization) which is anintergovernmental organization and one of the 16 specialized agencies of theUnited Nations. The database contains the first page data (bibliographic data,abstract and drawing) of all published PCT (Patent Cooperation Treaty)applications since January 1, 1997, updated weekly. There are two ways toaccess the database: Guest and Account. For Guest access, click on theSearch or Browse button and enter: Username: guest & Password: guest . ForAccount access (to create a new account if you don't have an account, it isfree of charge ), simply click on the Search or Browse button and enter yourown name and password. With an account access, a search query history ismaintained across connections. There will be a VIEW IMAGES button on thedisplayed front pages of hit-list cases if the full text of the patent is available.Online help on the PCT Database search is available on the site. PCTapplications published before 1997 may be consulted on the European PatentOffice's esp@cenet database.

Europe's Network Patent Databases - esp@cenet (External website that opensin a new window)(1997 - present, free searching and full text ) Theesp@cenet is a free service on the internet provided by the European PatentOrganization through the EPO (European Patent Office) and the nationaloffices of its members states: Austria , Belgium , Cyprus , Denmark , Finland ,France , Germany , Hellenic Republic , Ireland , Italy , Liechtenstein ,Luxembourg , Monaco , Portugal , Spain , Sweden , Switzerland and UnitedKingdom . The database contains European patents since Oct. 1997 andworld patents published by WIPO (The World Intellectual Property Org.) sinceNov. 1997, as well as Japanese patents since 1980 individual Europeancountries , go to the esp@cenet, UK site (External website that opens in anew window).

IBM Intellectual Property Network (External website that opens in a newwindow) ( free searching and full text and front page display ) IntellectualProperty Network (IPN) is a free IBM patent site provided by IBM (InternationalBusiness Machines Corporation) The database contains:

o United States patents (US): 1971-present & updated weekly. Full text /full image.

o European patents - applications (EP-A): 1979-present, updated weekly.Front page & claims / full images.

o European patents - issued (EP-B): 1980-present, updated weekly. Frontpage & claims / Full images

o WIPO (World Intellectual Property Organization) PCT publications (WO):1990-present, updated weekly. Front page & claims / full images

o Patent Abstracts of Japan (JP): 1976-present, updated weekly. Frontpage & claims / Representative image

MicroPatentWeb Full Text (External website that opens in a new window)(fee-based, full text) and MicroPatentWeb Front Page (External website that opensin a new window)(front page only) Micro Patent Web Full Text and Front Pageare fee-based databases provided Micro Patent (External website that opensin a new window), a global supplier of patent and trademark information.

The MicroPatentWeb Full Text database contains PCT patents (World patents, 1983-currentweek), European Patents (EP, 1988-current week), United States patents (1976-current week) andJapanese patents abstracts (1976-current update). New US patents are available two days afterissue from the U.S. Patent Office. The database can sort search results by assignee or IPC(International Patents Classifications), reprocess saved queries, and add constraints, search oncurrent data only or an entire file, navigate quickly through records using "GOTO", and createreports to print or email. The new SEARCH HISTORY enables you to build a complex searchthat combines the results from simpler queries, using Boolean operators and parentheses tocombine queries. SEARCH HISTORY also enable you to apply "OR" and "NOT" operatorsbetween the search fields themselves and sort and edit your results, so that your review includesonly the most relevant full text records. Subscription fees is daily (US$95 full text or US$35front page only) or annually (US$7,500 full text or US$2,500 front page only).

PATENT SEARCH

Sl.NoCountry wisePatent Search

URL's

1 Australian patents http://www.patentlens.net/daisy/patentlens/patentlens.html

2 Canada http://patents.ic.gc.ca/cipo/cpd/en/introduction.html

3 Japan http://www19.ipdl.inpit.go.jp/PA1/cgi-bin/PA1INIT?

4 UK http://www.ipo.gov.uk/patent/p-find/p-find-number.htm

5 France http://www.inpi.fr/

6 Germany

http://depatisnet.dpma.de/DepatisNet/depatisnet?window=1&space=menu&content=index&action=recherche&session=c23b66f230d6b54122e9102741d6846ef15598a38f12&stamp=95618

7 Singapore http://www.epatents.gov.sg/PE/

8 China http://search.cnpat.com.cn/Search/EN/

9 Taiwan http://www.tipo.gov.tw/eng/howto/blsearch.asp

10 New Zealand http://www.iponz.govt.nz/cms/banner_template/IPSEARCH

11 Google http://www.google.com/patents

12 European http://ep.espacenet.com/quickSearch?locale=en_EP

13 PCT countries http://www.wipo.int/pctdb/en/

14 USA http://www.uspto.gov/#

15 Indian patents http://india.bigpatents.org/applicant/browse/A

16 Indian patents http://www.getthepatent.com/Search/

17US and Europepatents

http://www.freepatentsonline.com/search.html

18 Patent search Engine http://www.surfip.gov.sg/_patent-f.htm

19 US patent http://www.pat2pdf.org/

20 Korea http://www.kipo.go.kr/kpo/user.tdf?a=user.english.html.HtmlApp&c=50100&catmenu=ek50100

Unit-4

A patent application is a relatively long process where the time frame and costs can varysignificantly from one application to another and depend primarily on costs for patent attorneys.Bearing this in mind, we have tried to put together a rough overview of the first phases of theprocess including normal price ranges.

Before the first application, novelty searchThere are a few things you should do before filing a patent application. One essential task is todo a novelty search to see if this really is a brand new idea and if a patent would be granted.

You can get an introductory overview yourself of the technical landscape by searching throughpatent databases and other technical publications available on, for instance, the PRV web site orin resources at the KTH library.

More thorough novelty searches can be done by professional organizations which KTHInnovation is happy to help you get in touch with.

Cost: SEK 0-25000

First application, priority date A patent application is usually developed together with a patent attorney. In most cases youwould first apply for a patent in Sweden and/or the USA. In the USA you can also file a “USProvisional Application” which is not reviewed formally. You may also choose to apply in othercountries where a European application is relatively common.

First application date, also called priority date, is crucial as this date becomes the point ofreference for the novelty criteria in the application. Details about the invention that comes intothe public domain after the priority date does not affect patentability. If two applications for thesame invention are filed, the one that was filed first is granted the patent (however, in the USAthe so called “first to invent” principle applies).

The patent authority will review the application during the first 12 months and notify you if theapplication needs to be amended.

Cost:

Application in the USA (US provisional – no formal review) SEK 10-30000

Application in Sweden (formal review) SEK 50-70000

Application EU SEK 60-90000

PCT Application The most common way to proceed is to file a PCT application (Patent Cooperation Treaty ) nolater than 12 months after the priority date. Optionally you can proceed to national phase directlyafter 12 months. For example, If you have started the process in the USA you will now file acomplete American patent application (and possibly in other countries).

The PCT phase lasts a maximum of 18 months and the review in this phase will give a clearindication of whether or not the patent will be granted in the 137 PCT member states. In essence,a PCT application means that you have a further 18 months to evaluate the potential of yourinvention before you have to decide in which countries you will apply for a patent. You are alsodeferring large costs.

You have to complete your PCT application within approx. 30 months from the priority date ineach country or region where you want to be granted a patent. A PCT application and allsubsequent national applications will refer to the same priority date as the original firstapplication.

You can also initially file a PCT application as a basis for the priority, a practice which isbecoming more common.

Cost: SEK 40-100000

Publishing the patent applicationThe patent authority will publish the patent application 18 months after the priority date. Prior tothis date, the application and its contents is not an official document. You can withdraw yourapplication prior to this date if you, for whatever reason, decide that you do no longer want topatent and publicize your technology/invention.

National completionThe PCT application has to be completed in the countries where you want the patent to begranted no later than 30 or 31 months after the priority date. This national phase includeshandling of the application in each of the individual countries/systems where it was filed, andcan take one or several years.

During this phase the costs will increase significantly as a result of the handling of theapplication in each country and the need for translations that may arise.

After a possible granting of the patent in one country (although not in the USA for example)there would normally be a period of appeal, usually 3-9 months, when anyone may appealagainst the validity of the patent.

Cost:

SEK 20-50000 in most countries

SEK 60-80000 in countries where translations are particularly expensive (Japan is an example)

Total application cost during the first 2,5 years in the most common countries will beupwards of SEK 200-400000

Granting and Maintenance If you are granted a patent you will incur additional costs tied to the granting and maintenanceneeded to keep the patent active.

It is not uncommon for patents to be abandoned as they do not hold a commercial value thatcorresponds to the costs involved in keeping them active.

Patent law(patents for inventions)

Overviews

Patents

History

Economics

Societal views

Processes

Application

Prosecution

Licensing

Infringement

Patentability

Patentable subject matter

Novelty

Utility

Inventive step and non-obviousness

Industrial applicability

Person skilled in the art

Prior art

Inventorship

Additional requirements

Sufficiency of disclosure

Unity of invention

By region / country

Europe

Japan

Canada

United States

Australia

China

Subject-matter

Biological patent

Gene patent

Business method

Tax patent

Chemical patent

Software patent

See also

Category

Glossary

v

t

e

A patent application is a request pending at a patent office for the grant of a patent for theinvention described and claimed by that application. An application consists of a description ofthe invention (the patent specification), together with official forms and correspondence relatingto the application. The term patent application is also used to refer to the process of applyingfor a patent, or to the patent specification itself (i.e. the content of the document filed with a viewto initiating the process of applying for a patent [1]).

In order to obtain the grant of a patent, a person, either legal or natural, must file an applicationat a patent office with jurisdiction to grant a patent in the geographic area over which coverage isrequired. This will often be a national patent office but could be a regional body, such as theEuropean Patent Office. Once the patent specification complies with the laws of the officeconcerned, a patent may be granted for the invention described and claimed by the specification.

The process of "negotiating" or "arguing" with a patent office for the grant of a patent, andinteraction with a patent office with regard to a patent after its grant, is known as patentprosecution. Patent prosecution is distinct from patent litigation which relates to legalproceedings for infringement of a patent after it is granted.

Contents 1 Definition

2 National, regional and international applications

o 2.1 National applications

o 2.2 Regional applications

o 2.3 International applications (under the Patent CooperationTreaty)

3 Types of applications

o 3.1 Standard application

o 3.2 Provisional applications

o 3.3 Continuation applications

o 3.4 Divisional applications

4 Application preparation, filing and prosecution

o 4.1 Patent specification

o 4.2 Claims

o 4.3 Filing date

o 4.4 Priority claim

o 4.5 Security issues

o 4.6 Publication

o 4.7 Patent pending

o 4.8 Patentable subject matter

o 4.9 Search and examination

o 4.10 Issue or grant

o 4.11 Post-issue or grant

5 References and notes

6 See also

7 Further reading

DefinitionAs pointed out by Peter Prescott QC, the expression "patent application" is ambiguous.[1] It canbear two different meanings:

1. The legal state of affairs that is constituted when a person requests thecompetent authority to grant him a patent and that request is stilloutstanding.

2. The content of the document or documents which that person filed with aview to initiating the above; most pertinently, a description of the inventiontogether with at least one claim purporting to define it.

The first of those – the request for a legal privilege to which you will be entitled if yourapplication be well founded – is an institutional fact, and is temporal by its very nature. It ceasesto exist as soon as your application is withdrawn, is refused, or is granted. The second of those,the informational content of the document as filed (or in other, prosaic words, the piece ofpaper), is a historical fact that never goes away, no matter what the Patent Office does, or anyoneelse does. It exists in perpetuity.[1][2] The expression "application" is often employed withoutbeing conscious of its ambiguity.[3] The expression is capable of misleading even experiencedprofessionals.[3]

National, regional and international applicationsDepending upon the office at which a patent application is filed, that application could either bean application for a patent in a given country, or may be an application for a patent in a range of

countries. The former are known as "national (patent) applications", and the latter as "regional(patent) applications".

National applications

National applications are generally filed at a national patent office, such as the United KingdomPatent Office, to obtain a patent in the country of that office. The application may either be fileddirectly at that office, or may result from a regional application or from an internationalapplication under the Patent Cooperation Treaty (PCT), once it enters the national phase.

Regional applications

A regional patent application is one which may have effect in a range of countries. The EuropeanPatent Office (EPO) is an example of a Regional patent office. The EPO grants patents whichcan take effect in some or all countries contracting to the European Patent Convention (EPC),following a single application process.

Filing and prosecuting an application at a regional granting office is advantageous as it allowspatents in a number of countries to be obtained without having to prosecute applications in all ofthose countries. The cost and complexity of obtaining protection is therefore reduced.

International applications (under the Patent Cooperation Treaty)

The Patent Cooperation Treaty (PCT) is operated by World Intellectual Property Organization(WIPO) and provides a centralised application process, but patents are not granted under thetreaty.

Exemplary PCT procedure, with a U.S. provisional application as a first filing

The PCT system enables an applicant to file a single patent application in a single language. [4]

The application, called an international application, can, at a later date, lead to the grant of apatent in any of the states contracting to the PCT. WIPO, or more precisely the InternationalBureau of WIPO, performs many of the formalities of a patent application in a centralisedmanner, therefore avoiding the need to repeat the steps in all countries in which a patent mayultimately be granted. The WIPO coordinates searches performed by any one of the InternationalSearching Authorities (ISA), publishes the international applications and coordinates preliminaryexamination performed by any one of the International Preliminary Examination Authorities(IPEA). Steps such as naming inventors and applicants, and filing certified copies of prioritydocuments can also be done centrally, and need not be repeated.

The main advantage of proceeding via the PCT route is that the option of obtaining patents in awide range of countries is retained, while the cost of a large number of applications is deferred.

Types of applicationsPatent offices may define a number of types of applications, each offering different benefits andbeing useful in different situations. Each office utilises different names for the types ofapplications, but the general groups are detailed below. Within each group there are specific typeof applications, such as utility patents, plant patents, and design patents, each of which can havetheir own substantive and procedural rules.

Standard application

A standard patent application is a patent application containing all of the necessary parts (e.g. awritten description of the invention and claims) that are required for the grant of a patent. Astandard patent may or may not result in the grant of a patent depending upon the outcome of anexamination by the patent office it is filed in. In the U.S., a standard patent application is referredto as a "non-provisional" application.

Provisional applications

Provisional patent applications can be filed at many patent offices, such as the USPTO in theU.S. A provisional application provides an opportunity to place an application on file to obtain afiling date (thereby securing a priority date), but without the expense and complexity of astandard patent application. The disclosure in a provisional application may, within a limitedtime (one year in the U.S.), be incorporated into a standard patent application if a patent is to bepursued. Otherwise, the provisional application expires. No enforceable rights can be obtainedsolely through the filing of a provisional application.

Continuation applicationsFor more details on this topic, see continuing application.

In certain offices a patent application can be filed as a continuation of a previous application.Such an application is a convenient method of including material from a previous application ina new application when the priority year has expired and further refinement is needed. Varioustypes of continuation application are possible, such as continuation and continuation-in-part.

Divisional applicationsFor more details on this topic, see continuing application.

A divisional application is one which has been "divided" from an existing application. Adivisional application can only contain subject matter in the application from which it is divided(its parent), but retains the filing and priority date of that parent. A divisional application isuseful if a unity of invention objection is issued, in which case the second (and third, fourth, etc.)inventions can be protected in divisional applications.

[edit] Application preparation, filing and prosecution

Swedish patent application from 1864; Alfred Nobel requests patent for thediscoveries that would lead to dynamite.

The process of obtaining the grant of a patent begins with the preparation of a specificationdescribing the invention. That specification is filed at a patent office for examination andultimately a patent for the invention described in the application is either granted or refused.

UNIT-4

(Patent filing procedures

National & PCT filing procedure; Time frame and cost; Status of the patent applications filed;Precautions while patenting – disclosure/non-disclosure; Financial assistance for patenting -introduction to existing schemes Patent licensing and agreement Patent infringement- meaning,scope, litigation, case studies)

Patent specification

A patent specification is a document describing the invention for which a patent is sought andsetting out the scope of the protection of the patent. As such, a specification generally contains asection detailing the background and overview of the invention, a description of the inventionand embodiments of the invention and claims, which set out the scope of the protection. Aspecification may include figures to aid the description of the invention, gene sequences andreferences to biological deposits, or computer code, depending upon the subject matter of theapplication. Most patent offices also require that the application includes an abstract whichprovides a summary of the invention to aid searching. A title must also generally be provided forthe application.

Each patent office has rules relating to the form of the specification, defining such things aspaper size, font, layout, section ordering and headings. Such requirements vary between offices.

Since a description cannot generally be modified once it is filed (with narrow exceptions), it isimportant to have it done correctly the first time.

ClaimsMain article: Claim (patent)

The claims of a patent specification define the scope of protection of a patent granted by thepatent. The claims describe the invention in a specific legal style, setting out the essentialfeatures of the invention in a manner to clearly define what will infringe the patent. Claims areoften amended during prosecution to narrow or expand their scope.

The claims may contain one or more hierarchical sets of claims, each having one or more main,independent claim setting out the broadest protection, and a number of dependent claims whichnarrow that protection by defining more specific features of the invention.

In the U.S., claims can be amended after a patent is granted, but their scope cannot be broadenedbeyond what was originally disclosed in the specification. No claim broadening is allowed morethan two years after the patent issues.

Filing dateMain article: Filing date

The filing date of an application is important as it sets a cutoff date after which any publicdisclosures will not form prior art (but the priority date must also be considered), and alsobecause, in most jurisdictions, the right to a patent for an invention lies with the first person tofile an application for protection of that invention (See: first to file and first to invent). It istherefore generally beneficial to file an application as soon as possible.

To obtain a filing date, the documents filed must comply with the regulations of the patent officein which it was filed. A full specification complying with all rules may not be required to obtaina filing date. For example, in the U.K., claims and an abstract are not required to obtain a filingdate, but can be added later. However, since no subject matter can be added to an applicationafter the filing date, it is important that an application disclose all material relevant to theapplication at the time of filing. If the requirements for the award of a filing date are not met, thepatent office will notify the applicant of the deficiencies. Depending upon the law of the patentoffice in question, correction may be possible without moving the filing date, or the applicationmay be awarded a filing date adjusted to the date on which the requirements are completed.

A filed application generally receives an application number.

Priority claimMain article: Priority right

A patent application may claim priority from another previously filed application in order to takeadvantage of the filing date of information disclosed in that earlier application. Claiming priorityis desirable because the earlier effective filing date reduces the number of prior art disclosures,increasing the likelihood of obtaining a patent.

The priority system is useful in filing patent applications in many countries, as the cost of thefilings can be delayed by up to a year, without any of the applications made earlier for the sameinvention counting against later applications.

The rules relating to priority claims are in accordance with the Paris Convention for theProtection of Industrial Property, and countries which provide a priority system in conformity

with the Paris Convention are said to be convention countries. These rules should not beconfused with the rules under the Patent Cooperation Treaty (PCT), outlined above.

Security issues

Many national patent offices require that security clearance is given prior to the filing of a patentapplication in foreign countries. Such clearance is intended to protect national security bypreventing the spread and publication of technologies related to (amongst others) warfare ornuclear arms.

The rules vary between patent offices, but in general all applications filed are reviewed and ifthey contain any relevant material, a secrecy order may be imposed. That order may prevent thepublication of the application, and/or the foreign filing of patents relating to the invention.

Should it be desired to file an application in a country other than an inventor's country ofresidence, it may be necessary to obtain a foreign filing licence from the inventor's nationalpatent office to permit filing abroad. Some offices, such as the USPTO, may grant an automaticlicense after a specified time (e.g., 6 months), if a secrecy order is not issued in that time.

Anyone working on government contracts involving national security technologies would bewell advised to carefully coordinate patent applications with the relevant agencies. Similarly,patent applicants should be aware of the arms export-control laws that may restrict the types oftechnical information that can be disclosed to any foreign nationals.

Publication

Patent applications are generally published 18 months after the earliest priority date of theapplication. Prior to that publication the application is confidential to the patent office. Afterpublication, depending upon local rules, certain parts of the application file may remainconfidential, but it is common for all communications between an Applicant (or his agent) andthe patent office to be publicly available.

The publication of a patent application marks the date at which it is publicly available andtherefore at which it forms full prior art for other patent applications worldwide.

Patent pendingMain article: Patent pending

Patent pending is a term used to describe an alleged invention that is the subject of a patentapplication. The term may be used to mark products containing the invention to alert a third partyto the fact that the third party may be infringing a patent if the product is copied after the patentis granted. The rules on the use of the term to mark products vary among patent offices, as do thebenefits of such marking. In general, it is permissible to apply the term patent pending to aproduct if there is, in fact, a patent pending for any invention implemented in the product.

Patentable subject matterMain article: Patentable subject matter

Patents are granted for the protection of an invention, but while an invention may occur in anyfield, patent laws have restrictions on the areas in which patents can be granted. Such restrictionsare known as exclusions from patentability.

The scope of patentable subject is significantly larger in the U.S. than in Europe. For example, inEurope, things such as computer software or methods of performing mental acts are notpatentable. The subject of what should be patentable is highly contentious, particularly as tosoftware and business methods.

Search and examinationFor more details on this topic, see Patent prosecution.

After filing, either systematically or, in some jurisdictions, upon request, a search is carried outfor the patent application. The purpose of the search is to reveal prior art which may be relevantto the patentability of the alleged invention (that is, relevant to what is claimed, the "claimedsubject-matter"). The search report is published, generally with the application 18 months afterthe priority date of the application, and as such is a public document. The search report is usefulto the applicant to determine whether the application should be pursued or if there is prior artwhich prevents the grant of a useful patent, in which case the application may be abandonedbefore the applicant incurs further expense. The search report is also useful for the public and thecompetitors, so that they may have an idea of the scope of protection which may be granted tothe pending patent application.[5]

In some jurisdictions including the U.S., a separate search is not conducted, but rather search andexamination are combined. In such case, a separate search report is not issued, and it is not untilthe application is examined that the applicant is informed of prior art which the patent officeexaminer considers relevant.

Examination is the process of ensuring that an application complies with the requirements of therelevant patent laws. Examination is generally an iterative process, whereby the patent officenotifies the applicant of its objection. (see office action) The applicant may respond with anargument or an amendment to overcome the objection. The amendment and the argument maythen be accepted or rejected, triggering further response, and so forth, until a patent is issued orthe application is abandoned.

Issue or grant

Once the patent application complies with the requirements of the relevant patent office, a patentwill be granted further official fees, and in some regional patent systems, such as the Europeanpatent system, translations of the application into the official languages of the states in whichprotection is desired must be filed to validate the patent.

The date of issue effectively terminates prosecution of a specific application, after whichcontinuing applications cannot be filed, and establishes the date upon which infringement may becharged. Furthermore, an issue date for an application in the U.S. filed prior to 1995 also factorsinto the term of the patent, whereas the term of later filings is determined solely by the filingdate.

Post-issue or grant

Many jurisdictions require periodic payment of maintenance fees in order to retain the validity ofa patent after it is issued and during its term. Failure to timely pay the fees results in loss of thepatent's protection.

The validity of an issued patent may also be subject to post-issue challenges of various types,some of which may cause the patent office to re-examine the application.

UNIT-5

(Biosafety

Introduction; Historical Backround; Introduction to Biological Safety Cabinets; PrimaryContainment for Biohazards; Biosafety Levels; Biosafety Levels of Specific Microorganisms;Recommended Biosafety Levels for Infectious Agents and Infected Animals; Biosafetyguidelines - Government of India; Definition of GMOs & LMOs; Roles of Institutional BiosafetyCommittee, RCGM, GEAC etc. for GMO applications in food and agriculture; Environmentalrelease of GMOs; Risk Analysis; Risk Assessment; Risk management and communication;Overview of National Regulations and relevant International Agreements including CarteganaProtocol.)

------------------------------------

Biosafety is the prevention of large-scale loss of biological integrity, focusing both on ecologyand human health.[1]

Biosafety is related to several fields:

In ecology (referring to imported life forms from beyond ecoregion borders),

In agriculture (reducing the risk of alien viral or transgenic genes, or prionssuch as BSE/"MadCow", reducing the risk of food bacterial contamination)

In medicine (referring to organs or tissues from biological origin, or genetictherapy products, virus; levels of lab containment protocols measured as 1, 2,3, 4 in rising order of danger),

In chemistry (i.e., nitrates in water, PCB levels affecting fertility) and

In exobiology (i.e., NASA's policy for containing alien microbes that may existon space samples - sometimes called "biosafety level 5").

The international Cartagena Protocol on Biosafety deals primarily with the agricultural definitionbut many advocacy groups seek to expand it to include post-genetic threats: new molecules,artificial life forms, and even robots which may compete directly in the natural food chain.

Biosafety in agriculture, chemistry, medicine, exobiology and beyond will likely requireapplication of the precautionary principle, and a new definition focused on the biological natureof the threatened organism rather than the nature of the threat.

When biological warfare or new, currently hypothetical, threats (i.e., robots, new artificialbacteria) are considered, biosafety precautions are generally not sufficient. The new field ofbiosecurity addresses these complex threats.

Biosafety level refers to the stringency of biocontainment precautions deemed necessary by theCenters for Disease Control and Prevention (CDC) for laboratory work with infectious materials.

Typically, institutions that experiment with or create potentially harmful biological material willhave a committee or board of supervisors that is in charge of the institutions biosafety. Theycreate and monitor the biosafety standards that must be met by labs in order to prevent theaccidental release of potentially destructive biological material.

Contents 1 Biosafety in synthetic

biology

2 See also

3 References

4 External links

Biosafety in synthetic biologyWith the potential future creation of man-made unicellular organisms, some are beginning toconsider the effect that these organisms will have on biomass already present. Scientists estimatethat within the next few decades, organism design will be sophisticated enough to accomplishtasks such as creating biofuels and lowering the levels of harmful substances in the atmosphere.[2]

Scientist that favor the development of synthetic biology claim that the use of biosafetymechanisms such as suicide genes and nutrient dependencies will ensure the organisms cannotsurvive outside of the lab setting in which they were originally created.[3] Organizations like theETC Group argue that regulations should control the creation of organisms that could potentiallyharm existing life. They also argue that the development of these organisms will simply shift theconsumption of petroleum to the utilization of biomass in order to create energy.[

A biosafety level is the level of the biocontainment precautions required to isolate dangerousbiological agents in an enclosed facility. The levels of containment range from the lowestbiosafety level 1 (BSL-1) to the highest at level 4 (BSL-4). In the United States, the Centers forDisease Control and Prevention (CDC) have specified these levels.[1] In the European Union, thesame biosafety levels are defined in a directive.[2]

Contents 1 History

2 Rationale

3 Levels

o 3.1 Biosafety level 1

o 3.2 Biosafety level 2

o 3.3 Biosafety level 3

o 3.4 Biosafety level 4

4 List of BSL-3 and BSL-4facilities

5 See also

6 References

7 External links

HistoryThe first prototype Class III (maximum containment) biosafety cabinet was fashioned in 1943 byHubert Kaempf Jr., then a U.S. Army soldier, under the direction of Dr. Arnold G. Wedum,Director (1944–69) of Industrial Health and Safety at the United States Army Biological WarfareLaboratories, Camp Detrick, Maryland. Kaempf was tired of his MP duties at Detrick and wasable to transfer to the sheet metal department working with the contractor, the H.K. Ferguson Co.[3]

On 18 April 1955, fourteen representatives met at Camp Detrick in Frederick, Maryland. Themeeting was to share knowledge and experiences regarding biosafety, chemical, radiological,and industrial safety issues that were common to the operations at the three principal biologicalwarfare (BW) laboratories of the U.S. Army[4][5] Because of the potential implication of the workconducted at biological warfare laboratories, the conferences was restricted to top level securityclearances. Beginning in 1957, these conferences were planned to include non-classified sessionsas well as classified sessions to enable broader sharing of biological safety information. It wasnot until 1964, however, that conferences were held in a government installation not associatedwith a biological warfare program.[6]

Over the next ten years, the biological safety conferences grew to include representatives fromall federal agencies that sponsored or conducted research with pathogenic microorganisms. By1966 it began to include representatives from universities, private laboratories, hospitals, andindustrial complexes. Throughout the 1970s, participation in the conferences continued toexpand and by 1983 discussions began regarding the creation of a formal organization.[6] TheAmerican Biological Safety Association (ABSA) was officially established in 1984 and aconstitution and bylaws were drafted the same year. As of 2008, ABSA has includes some 1,600members in its professional association.[6]

Rationale

CDC technician dons an older-model positive-pressure suit before entering one ofthe CDC’s earlier maximum containment labs.

Biocontainment can be classified by the relative danger to the surrounding environment asbiological safety levels (BSL). As of 2006, there are four safety levels. These are called BSL1through BSL4, with one anomalous level BSL3-ag for agricultural hazards between BSL3 andBSL4. Facilities with these designations are also sometimes given as P1 through P4 (forPathogen or Protection level), as in the term P3 laboratory. Higher numbers indicate a greaterrisk to the external environment. See biological hazard.

At the lowest level of biocontainment, the containment zone may only be a chemical fume hood.At the highest level the containment involves isolation of the organism by means of buildingsystems, sealed rooms, sealed containers, positive pressure personnel suits (sometimes referredto as "space suits") and elaborate procedures for entering the room, and decontaminationprocedures for leaving the room. In most cases this also includes high levels of security foraccess to the facility, ensuring that only authorized personnel may be admitted to any area thatmay have some effect on the quality of the containment zone. This is considered a hot zone.

LevelsBiosafety level 1

This level is suitable for work involving well-characterized agents not known to consistentlycause disease in healthy adult humans, and of minimal potential hazard to laboratory personneland the environment (CDC,1997).[7]

It includes several kinds of bacteria and viruses including canine hepatitis, non-pathogenicEscherichia coli, as well as some cell cultures and non-infectious bacteria. At this level,precautions against the biohazardous materials in question are minimal and most likely involvegloves and some sort of facial protection. The laboratory is not necessarily separated from thegeneral traffic patterns in the building. Work is generally conducted on open bench tops usingstandard microbiological practices. Usually, contaminated materials are left in open (butseparately indicated) waste receptacles. Decontamination procedures for this level are similar inmost respects to modern precautions against everyday microorganisms (i.e., washing one's handswith anti-bacterial soap, washing all exposed surfaces of the lab with disinfectants, etc.). In a labenvironment all materials used for cell and/or bacteria cultures are decontaminated via autoclave.Laboratory personnel have specific training in the procedures conducted in the laboratory and aresupervised by a scientist with general training in microbiology or a related science.

Biosafety level 2

This level is similar to Biosafety Level 1 and is suitable for work involving agents of moderatepotential hazard to personnel and the environment.[7] It includes various bacteria and viruses thatcause only mild disease to humans, or are difficult to contract via aerosol in a lab setting, such asC. difficile, most Chlamydiae, hepatitis A, B, and C, influenza A, Lyme disease, Salmonella,mumps, measles, HIV,[8] scrapie, MRSA, and VRSA. BSL-2 differs from BSL-1 in that:

1. laboratory personnel have specific training in handling pathogenic agents andare directed by scientists with advanced training;

2. access to the laboratory is limited when work is being conducted;

3. extreme precautions are taken with contaminated sharp items; and

4. certain procedures in which infectious aerosols or splashes may be createdare conducted in biological safety cabinets or other physical containmentequipment.

Biosafety level 3

This level is applicable to clinical, diagnostic, teaching, research, or production facilities inwhich work is done with indigenous or exotic agents which may cause serious or potentiallylethal disease after inhalation.[7] It includes various bacteria, parasites and viruses that can causesevere to fatal disease in humans but for which treatments exist, such as Leishmania donovani,Mycobacterium tuberculosis, Bacillus anthracis, Chlamydophila psittaci, West Nile virus,Venezuelan equine encephalitis virus, Eastern equine encephalitis virus, SARS coronavirus,Salmonella typhi, Coxiella burnetii, Rift Valley fever virus, Rickettsia rickettsii, and yellow fevervirus.

Laboratory personnel have specific training in handling pathogenic and potentially lethal agents,and are supervised by competent scientists who are experienced in working with these agents.This is considered a neutral or warm zone.

All procedures involving the manipulation of infectious materials are conducted withinbiological safety cabinets, specially designed hoods, or other physical containment devices, or bypersonnel wearing appropriate personal protective clothing and equipment. The laboratory hasspecial engineering and design features.

It is recognized, however, that some existing facilities may not have all the facility featuresrecommended for Biosafety Level 3 (i.e., double-door access zone and sealed penetrations). Inthis circumstance, an acceptable level of safety for the conduct of routine procedures, (e.g.,diagnostic procedures involving the propagation of an agent for identification, typing,susceptibility testing, etc.), may be achieved in a biosafety level 2 (P2) facility, providing

1. the filtered exhaust air from the laboratory room is discharged to theoutdoors,

2. the ventilation to the laboratory is balanced to provide directional airflow intothe room,

3. access to the laboratory is restricted when work is in progress, and

4. the recommended Standard Microbiological Practices, Special Practices, andSafety Equipment for Biosafety Level 3 are rigorously followed.

The decision to implement this modification of biosafety level 3 recommendations is made onlyby the laboratory director.

Biosafety level 4

The Galveston National Laboratory BSL-4 (P4) lab on the Campus of the Universityof Texas Medical Branch

This level is required for work with dangerous and exotic agents that pose a high individual riskof aerosol-transmitted laboratory infections, agents which cause severe to fatal disease in humansfor which vaccines or other treatments are not available, such as Bolivian and Argentinehemorrhagic fevers, Marburg virus, Ebola virus, Lassa fever, Crimean-Congo hemorrhagic fever,smallpox, and various other hemorrhagic diseases. When dealing with biological hazards at thislevel the use of a positive pressure personnel suit, with a segregated air supply, is mandatory. Theentrance and exit of a level four biolab will contain multiple showers, a vacuum room, anultraviolet light room, and other safety precautions designed to destroy all traces of thebiohazard. Multiple airlocks are employed and are electronically secured to prevent both doorsopening at the same time. All air and water service going to and coming from a biosafety level 4(or P4) lab will undergo similar decontamination procedures to eliminate the possibility of anaccidental release.

Agents with a close or identical antigenic relationship to biosafety level 4 agents are handled atthis level until sufficient data is obtained either to confirm continued work at this level, or towork with them at a lower level.

Members of the laboratory staff have specific and thorough training in handling extremelyhazardous infectious agents and they understand the primary and secondary containmentfunctions of the standard and special practices, the containment equipment, and the laboratorydesign characteristics. They are supervised by qualified scientists who are trained andexperienced in working with these agents. Access to the laboratory is strictly controlled by thelaboratory director.

The facility is either in a separate building or in a controlled area within a building, which iscompletely isolated from all other areas of the building. A specific facility operations manual isprepared or adopted. Building protocols for preventing contamination often use negativelypressurized facilities, which, even if compromised, would severely inhibit an outbreak of aerosolpathogens.

Within work areas of the facility, all activities are confined to Class III biological safety cabinets,or Class II biological safety cabinets used with one-piece positive pressure personnel suitsventilated by a life support system.

List of BSL-3 and BSL-4 facilitiesThis section's factual accuracy is disputed. Please help to ensure that disputedfacts are reliably sourced. See the relevant discussion on the talk page.

This section requires expansion with:information completing the table, andcitations.

According to the United State Government Accountability Office (GAO) report published onOctober 4, 2007, a total of 1356 CDC/USDA registered BSL-3 facilities were identifiedthroughout the United States (GAO-08-108T [9]). This represents a very conservative estimate ofthe number of facilities in the US in 2007. Approximately 36% of these laboratories are locatedin academia. Only 15 BSL-4 facilities were identified at the time, including 9 at federal labs.[9]

Name LocationLevel

Established

Discontinued

Description

University ofQueensland - SirAlbert SakzewskiVirus Research Centre(SASVRC) RoyalWomen's HospitalBrisbane P3 (BL3)

Australia,Queensland,Herston

3+4

University ofQueensland - St LuciaMicrobiology Building76 P3 (BL3)

Australia,Queensland,St Lucia

3

Virology Laboratory ofthe QueenslandDepartment of Health

Australia,Queensland,CoopersPlains

4

Australian AnimalHealth Laboratory

Australia,Victoria,Geelong

4

Centre for Cellularand Molecular Biology

Hyderabad,India

4 2009 National Bio-Safety Level-4ContainmentFacility forHumanInfectious

Diseases &Clinical ResearchFacility inRegenerativeMedicine [10][11]

National HighSecurity Laboratory

Australia,Victoria,NorthMelbourne

4

National HighSecurityLaboratoryOperates underthe auspice ofthe VictoriaInfectiousDiseasesReferenceLaboratory.

University ofAuckland, School ofMedical Sciences

NewZealand,Auckland

3Constructioncompleted June2011

Republican Researchand Practical Centerfor Epidemiology andMicrobiology

Belarus,Minsk

4

Department ofMolecularEpidemiology &InnovationalBiotechnologies

British ColumbiaCentre for DiseaseControl

Canada,BritishColumbia

3

The BritishColumbia Centrefor DiseaseControl, operatesthree biosafetylevel 3 labs.

National MicrobiologyLaboratory

Canada,Manitoba,Winnipeg

4 Located at theCanadianScience Centrefor Human andAnimal Health, itis jointlyoperated by thePublic HealthAgency ofCanada and the

Canadian FoodInspectionAgency.

SaskatchewanDisease ControlLaboratory

Canada,Saskatchewan, Regina

3

Officially openedin May 2010, thenew building fortheSaskatchewanDisease ControlLaboratory islocated atInnovation PlaceResearch Park,on the campusof the Universityof Regina. It isoperated by theSaskatchewanMinistry ofHealth.

International VaccineCenter

Canada,Saskatchewan, Saskatoon

3

2011(underconstruction)

Located on theUniversity ofSaskatchewancampus, part ofthe Vaccine andInfectiousDiseaseOrganization

Centre National deBiologieExpérimentale

Canada,Quebec,Quebec

3

Located at theInstitut nationalde la recherchescientifique.

Canada,Ontario,Toronto

4

This facilitynever openeddue tocommunityopposition in the1990s.[12]

Biological DefenseCenter

CzechRepublic

4

Located at theCentrumbiologickéochranyTěchonín(BiologicalDefense Center)[13]

ÚOCHB (Center ofchemistry andbiochemistryresearch)

CzechRepublic,Prague

3 02/2012

Located inPrague, Dejvicedistrict, builtmainly for HIVdrug treatmentresearch

National Institute forHealth and Welfare

Finland,Hermanni,Helsinki

3

Document fromNational Institutefor Health andWelfare thatmentions thefacility.[14]

National Institute forHealth and Welfare

Finland,Tilkanmäki,Helsinki

3

Document fromNational Institutefor Health andWelfare thatmentions thefacility.[14]

Laboratoire P4 JeanMérieux

France,Rhône-Alpes,Lyon

41999-03-05

Jean Mérieuxlaboratory is aco-operationbetween thePasteur Instituteand INSERM.Note that inFrance, it is P4for Pathogen orProtection level4.[15]

Centre Internationalde Recherches

Gabon 4 This facility isoperated by a

Médicales deFranceville

researchorganizationsupported byboth Gabonese(mainly) andFrenchgovernments,and is WestAfrica's only P4lab (BSL-4).[16]

Robert Koch InstituteGermany,Berlin

4

The facility waslicenced forconstruction byCity of Berlin onNovember 30,2008.

Bernhard NochtInstitute for TropicalMedicine

Germany,Hamburg

4

Philipps University ofMarburg

Germany,Marburg

4 2008

The facility islicenced to workwith geneticallymodifiedorganisms

Friedrich LoefflerInstitute on the Isle ofRiems

Germany, theIsle of Riems(Greifswald)

4 2010Deals especiallywith virology

National JALMAInstitute for Leprosy &Other MycobacterialDiseases (NCJILOMD),Agra

India, Agra 3 2002

This facility dealswith theMycobacterialstrains & theirpathogenicity &epidemiology.

Institute of MolecularMedicine, TrinityCollege Dublin

Ireland,Dublin

3

Works onMycobacteriumtuberculosis andHepatitis Cimmunology.[17]

Laboratory ofEpidemiology andPublic Health (LEPH),Yale

UnitedStates, NewHaven, CT

3

This facility dealswithpathogenicity &epidemiology.

High Security AnimalDisease Laboratory(HSADL)

India, Bhopal 4 1998

This facility dealsespecially tozoonoticorganisms andemerginginfectiousdisease threats.

All India Institute ofMedical Sciences

India, NewDelhi

1-4 1993

Conducts studieson majorpathogenicorganisms. Hascontributed indiscovering newstrains &vaccines.

Institute of TropicalDisease (ITD)

Indonesia,East Java,Surabaya

3 2008

Operated byInstitute ofTropical Disease- AirlanggaUniversity, BuildCooperation withJapan.

Azienda OspedalieraOspedale Luigi Sacco

Italy,Lombardy,Milano

4

A universityhospital in PoloUniversitario; itcontains twospecial vehiclesfor transportinginfectiouspersons.

Istituto NazionaleMalattie Infettive

Italy, Rome,Rome

4 This facility,(trans.) NationalInstitute ofInfectiousDiseases,

operates withinthe LazzaroSpallanzaniHospital.

Institute for MedicalResearch (IMR),Ministry of Health

Malaysia,KualaLumpur

3

This facility isable to conductresearch andtests onacarology,bacteriology,medicalentomology,parasitology andvirology.

National Institute forInfectious Diseases

Japan, Kantō,Tokyo

3 (4)

Located atNational Institutefor InfectiousDiseases,Department ofVirology I; thislab has thepotential ofoperating as aBSL-4, howeverit is limited toperform work ononly BSL-3agents due toopposition fromlocal residentsandcommunities.

Institute of Physicaland ChemicalResearch

Japan, Kantō,Tsukuba

(4)This is a non-operating BSL-4facility.

Netherlands NationalInstitute for PublicHealth and theEnvironment (RIVM)

Netherlands,Bilthoven

3 - 42009

Laboratory forInfectious Diseases(Laboratorium voorInfectieziekten)

Netherlands,Groningen

3 2012-02

Only non-academic BSL-laboratory of TheNetherlands

Erasmus MedicalCenter

Netherlands,Rotterdam

3

Biological ThreatsIdentification andCountermeasureCentre of the MilitaryInstitute of Hygieneand Epidemiology

Poland,Puławy

3 [18]

Sanitary andEpidemiologicalStation

Poland,Warsaw

3 25.03.2010 [19]

National Institute ofHealth Dr. RicardoJorge

Portugal,Lisbon

3 [20]

Molecular MedicineInstitute

Portugal,Lisbon

3 [21]

Wuhan Institute ofVirology of theChinese Academy ofSciences

People'sRepublic ofChina, Hubei,Wuhan

3 - 42010 (P4) Wuhan Instituteof Virologyalready hosts aBSL-3 laboratory.A distinct BSL-4facility iscurrently beingbuilt based onP4 standards,the originaltechnology forconfinementdeveloped byFrance.[22][23] Itwill be the firstat level 4 inChina, under thedirection of Shi

Zhengli.[24]

CantacuzinoMicrobiologicalResearch Institute(INCDMI)

Romania,Bucharest

4 [25]

"Dr. Carol Davila"Central MilitaryHospital

Romania,Bucharest

3 - 4 [26]

State ResearchCenter of Virologyand BiotechnologyVECTOR

Russia,NovosibirskOblast,Koltsovo

1 - 4

It is one of twofacilities in theworld thatofficially holdsmallpox. Theother RussianBSL-4 facilitieshave beendismantled.

DSO NationalLaboratories

Singapore 3

Singapore'sHealth ScienceAuthority alsohas a mobileBSL-4 autopsyfacility, with thegoal to conductautopsies duringa potentialdeadly epidemicoutbreak. .[27]

National Institute forCommunicableDiseases

South Africa,Johannesburg

4 National InstituteforCommunicableDiseases ofSpecialPathogens Unitis one of onlytwo BSL-4facilities in Africabut the only suitlaboratory on

the continent.

University of Iceland,The Department ofMedical Virology

Iceland,Reykjavik

3 1990

The Departmentof MedicalVirology at theUniversity ofIceland servesas a

diagnostic unit forvirus diseases forhospitals andpractisingphysicians.

Swedish Institute forCommunicableDisease Control

Sweden,Solna

4

Swedish InstituteforCommunicableDisease Controlis Scandinavia'sP4 facility.

Institute of VirologyandImmunoprophylaxis(IVI)

Switzerland,Mittelhäusern

42007-02-01

This facility onlydeals withanimal diseaseswhich do nottransmit tohumans, and isthe only P4facility wherecompleteisolation suitsare not used.

High ContainmentLaboratory DDPS(SiLab)

Switzerland,Spiez

4

Underconstruction, itwill startoperations in2010. Thislaboratory willcomply with BSL-4 standards.

Preventive MedicalInstitute of ROC

(Taiwan) 4

Ministry of NationalDefense

Kwen-yangLaboratory (昆陽實驗室 ) Center of DiseaseControl

(Taiwan) 4

Part of theDepartment ofHealth Republicof China.

Institute for AnimalHealth

UnitedKingdom,Pirbright

4

National Institute forMedical Research

UnitedKingdom,London

4 [28]

Health ProtectionAgency's Centre forInfections

UnitedKingdom,Colindale

4Located in theViral Zoonosisunit.

Defence Science andTechnologyLaboratory

UnitedKingdom,Porton Down

4

Health ProtectionAgency

UnitedKingdom,Porton Down

4SpecialPathogensReference Unit.

Health ProtectionAgency

UnitedKingdom,Porton Down

4 Botulism.

University of FloridaMedical EntomologyLaboratory

United Statesof America,Florida, VeroBeach

3

Also anarthropodcontainmentfacility, used tostudy mosquito-borne virusesincluding WestNile Virus,dengue virus,and chikungunyavirus.

Centers for DiseaseControl and

United Statesof America,

4 Currentlyoperates in two

PreventionGeorgia,Atlanta

buildings. One oftwo facilities inthe world thatofficially holdsmallpox.

Georgia StateUniversity

United Statesof America,Georgia,Atlanta

4

Is an olderdesign"glovebox"facility.

Integrated ResearchFacility

United Statesof America,Maryland,Fort Detrick

4

Underconstruction.This facility willbe operated byNational Instituteof Allergy andInfectiousDiseases(NIAID), it isplanned to beginoperating at2009 at theearliest.

National BiodefenseAnalysis andCountermeasuresCenter (NBACC)

United Statesof America,Maryland,Fort Detrick

4

Underconstruction, itwill be operatedfor theDepartment ofHomelandSecurity.

National Institutes ofHealth (NIH)

United Statesof America,Maryland,Bethesda

4

Located on theNIH Campus, itcurrently onlyoperates withBSL-3 agents.

US Army MedicalResearch Institute ofInfectious Diseases(USAMRIID)

United Statesof America,Maryland,Fort Detrick

4 Old building

US Army MedicalResearch Institute ofInfectious Diseases(USAMRIID)

United Statesof America,Maryland,Fort Detrick

4

New building,currently underdesignconstruction

National EmergingInfectious DiseasesLaboratory (NEIDL)

United Statesof America,Massachusetts, Boston

4

Underconstruction byBostonUniversity,building andstaff trainingcomplete,waiting forregulatoryapproval.

Tufts CummingsSchool of VeterinaryMedicine

United Statesof America,Massachusetts, Grafton

3

NIAID Rocky MountainLaboratories

United Statesof America,Montana,Hamilton

4

National Instituteof Allergy andInfectiousDiseases

Albert EinsteinCollege of Medicineof Yeshiva University

United Statesof America,New York,The Bronx

3 2008

The Michael F.Price Center forGenetic andTranslationalMedicine in theHarold andMuriel BlockResearchPavilionoperated byEinstein.[29]

Stony BrookUniversity Centers forMolecular MedicineCenter for InfectiousDiseases

United Statesof America,New York,Stony Brook

3 1999 Operated byState Universityof New York atStony Brook, aBSL-3 facilitystudying Borrelia

burgdorferi(Lyme Disease),Yersinia pestis(Suspectedbacterium causeof Black Death)and Francisellatularensis(Rabbit fever)

Institute for FoodSafety and Health

United Statesof America,Illinois,Bedford Park

3 2010

Located off-campus of theIllinois Instituteof Technology [30]

University of NewMexico

United Statesof America,New Mexico,Albuquerque

3

University ofNew Mexicooperates severalBSL-3 and ABSL-3 labs as part ofthe School ofMedicine.

University ofPittsburgh,Department ofBiological Sciences(Clapp/Langley/Crawford Complex)

United Statesof America,Pennsylvania, Pittsburgh

3 2012-04

Currently underconstruction.The facility isunique in that itincludes aninstructionalviewing roomnext to the BSL-3 lab. Highresolutioncameras in thebiosafetycontainmenthoods will allowstudents to viewwork beingperformed. [31]

Galveston NationalLaboratory, NationalBiocontainment

United Statesof America,Texas,

4 Opened in 2008,facility isoperated by the

Facility GalvestonUniversity ofTexas MedicalBranch.[32]

Shope Laboratory

United Statesof America,Texas,Galveston

4

Operated by theUniversity ofTexas MedicalBranch (UTMB).

Texas BiomedicalResearch Institute

United Statesof America,Texas, SanAntonio

3+4

The onlyprivately-ownedBSL-4 lab in theUS.

George MasonUniversity BiomedicalResearch Laboratory

United Statesof America,Virginia,Manassas

3

This facility iscurrently underconstruction ona 10-acre(40,000 m2) siteadjacent toGeorge MasonUniversity'sPrince WilliamCampus. It isscheduled to befully operationalin the Spring of2010.

Division ofConsolidatedLaboratory Services

United Statesof America,Virginia,Richmond

4

This facility ispart of theDepartment ofGeneral Servicesof theCommonwealthof Virginia. It isso called "surge"BSL-4 capacity.

National Bio andAgro-Defense Facility(NBAF)

United Statesof America,Kansas StateUniversity,Manhattan,

4 Facility to beoperated by theDepartment ofHomelandSecurity, and

Kansas

replace the PlumIsland AnimalDisease Center.Planned to beoperational by2014.

Plum Island AnimalDisease Center

United Statesof America,New York,Plum Island

3-ag

Facilityscheduled to bereplaced by theNational Bio andAgro-DefenseFacility.Researcheszoonoticpathogens only.

Saint Louis UniversityDoisy ResearchBuilding

United Statesof America,Missouri, St.Louis

3

Saint LouisUniversity's newcenter forbiomedicalresearch.Monkeypox isthe primary BSL-3 agent studied.

University ofCalifornia, Berkeley

United Statesof America,California,Berkeley

3

The UC BerkeleyBSL3 Facility iscurrently housedin a singlelocation but willbe expanded in2011 to includea second site (ina building underconstruction).

National AgriculturalTechnology Institute

Argentina,BuenosAires,Castelar

3-AInstituto deVirologia(CICVyA)

Veterinary ResearchInstitute (VRI),

Malaysia, 3 This facilitycreated a

Department ofVeterinary Services

Ipoh, Perak

breakthrough inidentifying theNipah virus,[citation

needed] which isclassifiedinternationallyas a BSL-4agent.

International VaccineInstitute

Republic ofKorea, Seoul

3+ 2009

Opened in 2009.This facility isoperated byInternationalVaccine Institutesupported byUNDP, WHO andRepublic ofKoreaGovernment.[33]

Ministry of Health'sNational Institute ofHygiene andEpidemiology

SocialistRepublic ofVietnam,Hanoi

3 2006 Built in Hanoiwith theassistance of theJapaneseInternationalCooperationAgency, WorldHealthOrganization,and otherinternationalplayers. Japanand the WHOwould providefinancial andtechnicalassistance inbuilding a BSL-3standards lab forfour years(2006–2010) inorder to helpcombat

emerginginfectiousdiseases.[34] Theaid was inresponse tocriticism ofVietnam'shandling ofrecent diseaseoutbreaks.[35]

CISA-INIA / AnimalHealth ResearchCenter

Valdeolmos,Madrid,Spain

3 -3+

[36]

Gauhati MedicalCollege and Hospital

Guwahati,Assam, India

2011

Global Bio Lab

United Statesof America,California,Los Angeles

3

2011UnderConstruction

Pendingcertification,underconstruction,joint projectbetween UCLASchool of PublicHealth and LosAlamos NationalLaboratory [37]

Kent State University,Kent Campus

United Statesof America,Ohio, Kent

3-4

Operates as aclean lab at level3 for trainingpurposes.Scheduled forconversion to ahot level 4 lab inresponse to abioterrorismevent in theUSA.

BiotechnologyResearch Institute(BRI), Universiti

Malaysia,Sabah, Kota

3 2011 This facility is anenhanced ABSL3and BSL3. The

Malaysia Sabah Kinabalufirst in the islandof Borneo.

Brody School ofMedicine, EastCarolina University

United Statesof America,NorthCarolina,Greenville

3

The lab isset up toresearchBrucellosis

Emerging PathogensInstitute(EPI),University of Florida

United Statesof America,Florida,Gainesville

3 2010 [38]