2 Industrial Property 1. Introduction: notion of industrial property 2. International legal...

EWIPO/IP/JU/RYD/04/10

ORIGINAL: English

DATE: October 2004

KINGDOM OF SAUDI ARABIA WORLD INTELLECTUALPROPERTY ORGANIZATION

WIPO NATIONAL WORKSHOP FOR JUDGES

organized bythe World Intellectual Property Organization (WIPO)

in cooperation withthe Government of the Kingdom of Saudi Arabia

Riyadh, December 13 to 15, 2004

INTERNATIONAL LEGAL FRAMEWORK FOR THE PROTECTION OF INDUSTRIAL PROPERTY

prepared by Mr. Nuno Pires de Carvalho, Deputy Director and Head,Economic Development Sector, Industrial Property Law Section, WIPO

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Industrial Property

1. Introduction: notion of industrial property

2. International legal framework3. Main “substantive” treaties in the

field of industrial property

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Industrial Property

Intellectual property is a set of principles and rules that discipline the acquisition, use and loss of rights and interests in differential intangible assets susceptible of being used in commerce.

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IP does not protect all intangible assets of merchants but only those that constitute elements of differentiation vis-à-vis their competitors!

(For example, rights of credit and other personal obligations are intangible assets of firms, but nevertheless they are not protected by IP.)

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IP is about preserving competitors’ differentials. This explains why notions such as originality, novelty, distinctiveness, creativity, inventiveness, non-obviousness and avoiding confusion, are so important to IP — all these notions contribute to form the concept of uniqueness, of difference.

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Two types of IP:

a) Copyright and related rights: the right to prevent others from reproducing and fixing protected works; they cover essentially expressions b) Industrial property: the right to prevent others from using the protected assets; they cover essentially ideas

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(A cooking book provides for a good illustration of the difference. As the book is protected by copyright, the recipes it contains may not be reproduced. But the technical instructions they contain may be used for preparing the various dishes described. In contrast, if a patent is obtained for a new and inventive recipe, no one can use its technical instructions for cooking. But the patent itself, that is, the text describing the recipe’s technical specifications may be copied freely [actually, millions of valid and enforceable patents are available for downloading from the internet]).

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INDUSTRIAL PROPERTY RIGHTS: three partly overlapping areas

1. Technical creations (patents, utility models, layout-designs of integrated circuits, industrial designs)

2. Distinctive signs (trade and service marks, collective and certifications marks, trade names, indications of source and appellations of origin [geographical indications])

3. Non-proprietary competitive advantages (repression of unfair competition: trade secrets, exclusive test data, good-will [good reputation, clientèle], trade dress)

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2. International legal framework

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

b. Adjective standards (concerning the enforcement of rights)

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

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

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

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

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

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

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

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

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

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b. Adjective standards (concerning the enforcement of rights)

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

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

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

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International Protection Standards in the Field of Industrial Property

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

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

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

(iii) Trademark Law Treaty (1954)

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

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

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

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

(vii) Patent Law Treaty (2000)(viii) Classification Treaties: Locarno Agreement Establishing

an International Classification for Industrial Designs (1968); Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration on Trademarks (1957); Strasbourg Agreement Concerning the International Patent Classification (1971); Vienna Agreement Establishing and International Classification of the Figurative Elements of Marks (1973)

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

property

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THE PARIS CONVENTION1. Objectives

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

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THE PARIS CONVENTION (cont.)

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

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

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THE PARIS CONVENTION (cont.)

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

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

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THE TRIPS AGREEMENT1. Objectives

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

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

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

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

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

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

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

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

c) exceptionsd) exception to the principle of independence

of rights

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

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

protection(iv) Patents

a) prohibition against discriminationb) limitations on exclusions from

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

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

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

d) exceptions to rights conferrede) compulsory licensesf) term of protectiong) reversal of the burden of proof

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

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

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Thank you!

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

contact

nuno.carvalho@wipo.int