Concepts adopted by TRIPS agreement from Paris Convention and Berne

Convention

Sawani Khare13PIM1839

Dept. of PharmacoinformaticsNIPER, S.A.S. Nagar

GE-553

Other IP conventions incorporated by reference into the TRIPS Agreement

According to Article 2.1 of the Agreement, the WTO Members shall, in

respect of Parts II, III and IV of the Agreement, comply with Articles 1

through 12, and Article 19, of the Paris Convention

Article 9.1 of the Agreement requires Members to comply with Articles 1

through 21 of the Berne Convention (1971)

The Agreement contains some references to certain provision of the Rome

Convention

Paris Convention

For the protection of industrial property viz. Patents, Trademarks, Trade

names, Industrial designs, and unfair competition

The treaty was drafted in 1880 and became effective in 1884

Convention is in force among 144 member states, including all of the

developed nations and most of the developing nations.

India joined the treaty in Dec 1998

Need for treaty:

1. no availability of international patent procurement procedure

2. limited access to foreign inventors

3. maintaining priority in international filing

National Treatment

Under reciprocity, each government need award to foreign inventors only

those patent rights that the foreign inventor’s own government awards to

non-nationals

In order to overcome the problem of reciprocity, the members of the Paris

Convention decided to abide by a new concept of national treatment

places foreign inventors on par with national inventors in terms of rules,

regulations and benefits and a foreign applicant is treated no less favorably

than a domestic applicants

“Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the

advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this

Convention”

Priority Filing

Variations in national patent practices created procedural obstacles to the

international assertion of patent rights

Applying for a patent in one country could thus create an absolute barrier

to obtaining a valid patent in another

to get rid of this problem, the Paris convention adopted the concept of

international priority

As result of this provision, an inventor could establish a date of filing in all

member countries via an initial filing in a single country

“Any person who has duly filed an application for a patent, or for theregistration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for

the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed”

Compulsory licenses

A patentee is rewarded through exclusive marketing, manufacturing rights

and by monopoly rent.

A patentee’s entitlement to monopoly rents would be an abuse of the

system if the patent were not worked in the country where the right was

granted

Remedy to this through working requirements and grant of compulsory

licensing

Independence of patents

IP protection is required in multiple countries at a time

All countries have distinct laws for IP protection, enforcement,

infringement etc.

More important in case of infringement cases

Article 4bis of Paris Convention

“Patents applied for in the various countries of the Union by nationals of countries of the Union shall be independent of patents obtained for the

same invention in other countries, whether members of the Union or not”

Well-known marks

Earlier defensive registration is permitted for well-known trademarks

Defensive registration is the registration of trademarks in classes

where the company does not have any goods in the market

To protect the brand images of multi product companies

Article 6bis of Paris Convention and article 16 of TRIPS agreement

“The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a

reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration

or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an

imitation liable to create confusion therewith”

Berne Convention

For the Protection of Literary and Artistic Works (copyright)

The first version of the Berne Convention treaty was made in 1886

There are 168 states that are parties to the Berne Convention

authorizes countries to allow fair uses of copyrighted works in other

publications or broadcasts

Country of origin

Work can be published simultaneously in many countries

For works simultaneously published in a signatory country and one or

more non-signatory countries, the signatory country is the country of

origin

works first published in a non-signatory country, the author's nationality

usually provides the country of origin

“Protection in the country of origin is governed by domestic law. However, when the author is not a national of the country of origin of the work for

which he is protected under this Convention, he shall enjoy in that country the same rights as national authors”

Right of Translation

Translation of essential documents

“Authors of literary and artistic works protected by this Convention shall enjoy the exclusive right of making and of authorizing the translation of

their works throughout the term of protection of their rights in the original works”