IPL Notes | Mahindra Prabu

Internationalization of IP
Four Phases of development

The Early Days

The BIRPI Phase: 1883-1971
The TRIPS Phase: 1971-1994
Pre TRIPS Discussion (1971-1986)
The Uruguay Round (1986-1994)
1994-Today: The Paradigmatic Phase

A. Early Days
Privileges
Statutory Recognition
Related Rights
Pre 1883: Bilateral Phase

Domestic only protection

National Creations & Inventions v. Foreign Creations & Inventions
Foreign Works Pirated @ lower price

Issues

Bilaterals
Spider web of Treaties
No Uniformity
Differences in recognizing the Intellectual creations in different regions
Complexity of subject matter criteria

BIRPI Phase

Paris Convention (1883)

Berne Convention (1886)
BIRPI Bureaux Internationaux Reunis pour la Protection de la Propriete Intellectuelle

B. Multilateral Phase:
Paris Convention
Industrial Property:

Patents
Utility models
Industrial designs
Trademarks
Service marks

Trade names
Indication of source or appellation of
origin
Repression of unfair competition

IPL Notes | Mahindra Prabu

Basic Principles of Paris Convention

Principle of National Treatment:

Principle of Independence of Patents
Right to Priority

Berne Convention for the Protection of Literary and Artistic Works

Objective

Authors and their Works

Influence of Publishers
The Country of first publication becomes the country of origin of the work (geographical
criterion)
Unpublished Works: Country of origin of the author

Convention Law & Referral Rules

Convention Law consists of those rights which every country has to apply jure conventionis i.e.
Minimum Rights Jure Conventionis
Referral rules indicate to the Courts of the country where protection is claimed that they may
have to look apart from their own law to the country of origin of the work which may be the
country of first publication or country of which the author is national.

Principles

Minimum Rights
Principle of National Treatment
Principle of Reciprocity
National Treatment v. Principle of Reciprocity
Principle of Automatic Protection
The Case of Reservations

Patent Cooperation Treaty, 1977

Territoriality Concept
Procedural Problems
Stages of Patent procedure
Application
Examination: PCT Phase
Opposition
Grant of Patents: National Phase
Membership of Paris Convention is a pre-requisite condition to join PCT
Objective: To make the acceptance, search and examination stages of the patent procedure to
be conducted on an international basis
An PCT applicant not entitled to International Patent

IPL Notes | Mahindra Prabu

Madrid System

International Registration of Trade Mark

Madrid Agreement (1891)
Madrid Protocol (1989)
One Application International Bureau of WIPO
Protection in Designate Countries

Madrid Agreement

1891
Basic Registration
Country of Origin
Filing of Intl application on Country of Origin
IP Bureau
Fee
Supplementary fee (No. of Countries you sought protection)
Complimentary fee (Regarding NICE classifications)
Extra fee (For Colour)
Term (20 Yrs)

Madrid Protocol

1989
Basic Application
Individual Fees as per requirement of countries (replaced supplementary & Complimentary fees)
Term (10 Yrs)

Difference between Madrid Agreement & Madrid Protocol

Madrid Agreement
Central Attack ( 5yrs period of time)
Entire system collapses
Madrid Protocol
Central Attack ( 5yrs period of time)
Instead of collapse it is transformed into National application of Union Countries
TRIPS Agreement
1971-1986 Phase: Pre-TRIPS Discussions
Why IP was included in GATT?

1948
Counterfeit Goods
Art. IX (6)
Art. XX (d)

IPL Notes | Mahindra Prabu

Institutional features of GATT/WTO:

Dissatisfaction with the treaty negotiations hosted by WIPO (attempts to undermine Paris
Convention)
US, EU & Japan enjoys significant negotiating leverage in the GATT/WTO
Package:
Protection of IP in Developing Countries (Developed)
Access to developed markets for Agricultural Products, Textile (Developing)
Dispute Settlement Board (DSB)

1986-1994: The Uruguay Round

Agenda: Inclusion of IP
Subject Matter:

Services
Intellectual Property
Investment Policy
IP Negotiations entrusted to GNG (Group of Negotiation on Goods)
1990s witnessed more active participation from EU following US and Japan
Major achievement of the Uruguay Round
Restructuring of DS rules to make decisions binding on all states and to authorize the use of
retaliatory sanctions by prevailing states if their opponents did not alter WTO-incompatible
national laws or provide compensation.

Dunkel Draft
Marrakesh Agreement, 1994 (TRIPS Agreement)

Annex 1C of the Marrakesh Agreement establishing the WTO, was signed in Marrakesh,
Morocco on 15th April 1994
Countries are free to determine the appropriate method for implementing the Agreement
within their own legal system & practice (Art.1 of TRIPS)

National Treatment & Most Favored National Treatment

Structure of TRIPS

General Provisions & Basic Principles (1)

Standards concerning the availability, scope & use of IPRs (2)
CR & RR; TM; GI; ID; P; LD; UDI & Control of Anti-competitive practices in contractual licenses
Enforcement of IPRs (3)
Acquisition & Maintenance (4)
Dispute Prevention & Settlement (5)
Transitional Arrangements (6)
Institutional Arrangements (7)

IPL Notes | Mahindra Prabu

Salient features:

Universal Minimum Standards

Subject matter to be protected
Rights to be conferred
Permissible exceptions to those rights
Minimum duration of protection
Art 2.1 & Art 9.1 (Berne & Paris Plus Agreement)
Enforcement
Domestic procedures and remedies for the enforcement of IPRs
General Principles applicable to all IPR enforcement procedures
Civil & Administrative Procedure & Remedies
Special requirements related to border measures and criminal procedures
Dispute Settlement

Important Cases:
India:

DS50: (US) Mail box & EMR

DS79: (EU) Mail box & EMR

Canadian Pharmaceutical Case:

Art.30 (3 step test)

Stockpiling exception v. Regulatory review exception

Roche Products, Inc v. Bolar Pharmaceutical Co., Inc., 733 F.2d 858 (1984).
Grounds for Compulsory License

Art.7 & 8

Public Health & Nutrition

Environmental Protection
Public Interest
Socio-Economic Development
To prevent abuse of IPR
Promote Transfer of Technology

Art.31 reduces the scope of CL

Compulsory License must be non-exclusive, non-assignable & subject to a remuneration to be

paid to the patentee

IPL Notes | Mahindra Prabu

International Treaties on IP
IP Protection:
Patent:

Paris Convention for the Protection of Industrial Property (1883)

Patent Law Treaty (2000)

Layout Designs:

Treaty on Intellectual Property in Respect of Integrated Circuits (Washington Treaty) (1989)

Trademarks:

Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods
(1891)
Nairobi Treaty on the Protection of the Olympic Symbol (1981)
Trademark Law Treaty (TLT) (1994)
Singapore Treaty on the Law of Trademarks (2006)

Copyrights & Related Rights:

Berne Convention for the Protection of Literary and Artistic Works (1886)
Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting
Organisations (1961)
Geneva Convention for the Protection of Producers of Phonograms Against Unauthorized
Duplication of their Phonograms (1971)
Brussels Convention Relating to the Distribution of Programme Carrying Signals Transmitted by
Satellite (1974)
WIPO Copyright Treaty (WCT) (1996)
WIPO Performances and Phonograms Treaty (WPPT) (1996)
Beijing Treaty on Audiovisual Performances (2012)
Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually
Impaired, or Otherwise Print Disabled (MVT) (2013)

Global Protection

Madrid Agreement on International Registration of Marks (1891) and the Protocol relating to
that Agreement (1989).
Hague Agreement Concerning the International Registration of Industrial Designs (1925)
Lisbon Agreement for the Protection of Appellations of Origin and their International
Registration (1958)
Patent Cooperation Treaty (1970)
Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the
Purposes of Patent Procedure (1977)

IPL Notes | Mahindra Prabu

Classification

Nice Agreement Concerning the International Classification of Goods and Services for the
Purposes of the Registration of Marks (1957)
Locarno Agreement Establishing an International Classification for Industrial Designs (1968)
Strasbourg Agreement Concerning the International Patent Classification (1971)
Vienna Agreement Establishing an International Classification of the Figurative Elements of
Marks (1973)
Draft Substantive Patent Law Treaty
WIPOs Standing Committee on the Law of Patents (SCP)

TRIPS Plus Phase: FTAs, BITs, RTAs