1. THE INTERNATIONAL LEGAL FRAMEWORK OF INTERNATIONAL PROPERTY RIGHTS AND THE ROLE OF WIPO Budapest 25/ C/Simon-Vianes/Taiex/Budapest
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2. History :Why the international property rights ?
In 1873 foreign exhibitors refused to attend
the International Exhibition of Inventions in
Vienna in 1873 because
- they were afraid their ideas would be stolen and
- exploited commercially in other countries
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3. The Paris Convention
- In1883 : Paris convention for the protection of Industrial Property.
- This convention set up an International Bureau to carry out the administrative tasks.
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4. The Paris Convention - Aim : to help people of one country
- obtain protection in other countries
- for their intellectual creations
- in the form of industrial property rights as :
. Patents (inventions)
. Trademarks
. Industrial designs
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5. The Bern Convention
- In 1886 : the Bern Convention for the Protection of Literary and Artistic Works
- This convention set up an International Bureau to carry out the administrative tasks.
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6. The Bern Convention - Aim : to help nationals of its Member States
- obtain international protection of their right
- to control and receive payment for the use of their creative works such as:
. novels, stories, plays, poems;
. songs, operas, musicals, sonatas; and
. drawings, paintings, sculptures, architectural works
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7. The 2 branches of Intellectual Property
The international legal framework of intellectual
property rights was set up by these two
conventions
1. “industrial” property (Paris)
2. “copyright” (Bern)
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8. The creation of WIPO - In 1893 these two Bureaus united
- to form an international organization
- called the United International Bureaus for the protection of Intellectual Property
(French acronym : BIRPI) in Bern.
- In 1960 BIRPI moved to Geneva.
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9. The creation of WIPO : Milestones
- In 1970 : entry into force of the Convention establishing WIPO
- In 1974 : WIPO became a specialized Agency of the UN System with a mandate to administer intellectual property matters
- In 1978 : building on the Place des Nations
- In 1996 : Cooperation agreement with World Trade Organization (WTO)
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10. What is WIPO ? - It’s a UN Agency specialized in Intellectual Property
- Headquarters in Geneva (Switzerland)
- 180 Member States (90% of the world’s countries)
- around 1000 staff from 95 countries
- Budget : 639 millions Swiss francs for the biennium
2004/2005
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11. How is WIPO funded ? - WIPO is a self-financed organization
- 7% contributions of the Member States
- 8% sales of WIPO publications
- 85% fees from the international registration
systems (PCT 76%)
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12. What does WIPO ? - WIPO administers 23 international Treaties
15 on industrial property
7 on copyright and related rights
plus the convention creating WIPO
which set out
- internationally agreed rights and
- common standards for their protection.
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13. What does WIPO ? - So WIPO actively encourages States to sign
its treaties and to enforce them in order to :
. Promote the protection of IP rights worldwide
. Extend the benefits of the international IP system to all Member States
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14. WIPO Today
1 - establishes international standards for intellectual property laws (harmonization)
2 - provides services for international registrations global protection systems (PCT, Budapest Treaty, Madrid Agreement, Lisbon Agreement and the Hague Agreement)
3 - extends legal/technical assistance to countries:
global cooperation system/monitoring development
. with developing countries and countries in transition
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15. WIPO’ Today
4 - facilitates resolution of IP disputes WIPO Arbitration and mediation Center)
5 - uses computer technology to allow wide
access to, use and exchange of IP information (IPDL, WIPOnet)
6 - administers treaties
7 - promotes protection and use of IP throughout the world through international cooperation
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16. WIPO’s Tasks In linking IP with - economic, (private sector, SMEs)
- technological and
- cultural progress
WIPO
is forging principles, standards and institutions for the
benefit of generation to come and
is promoting creativity by protecting the works of the
mind
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17. the protection of the arts and inventions.”
There is an inscription in the cupola, in the hall of the WIPO building in Geneva.
The inscription is in Latin. Its English translation is the following:
“Human genius is the source of all works of art and invention. These works are the guarantee of a life worthy of men. It is the duty of the State to ensure with diligence
the protection of the arts and inventions.”
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18. WIPO Tomorrow -WIPO’s program is dedicated
- to identifying and exploring emerging intellectual property issues and
- to enabling the timely development of responses to new challenges
. in respect of traditional knowledge and the folklore
. the conservation, preservation, management
sustainable utilization and benefit-sharing of genetic resources
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19. WIPO’s Strategy - WIPO promotes an IP culture by :
. Increasing understanding of IP
. Encouraging use of IP system
. Enhancing respect for IP rights (enforcement)
- WIPO helps to develop, protect, enforce, manage and commercially exploit IPRs for economic development
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20. Intellectual Property
Industrial Property
Paris Convention (1883)
Copyright
and related rights
Bern Convention (1886)
Literary and artistic works such as
Novels, poetry, theater plays
Songs, operas, etc, and
Drawings, paintings, sculptures,
architectural plans
Among others:
Inventions (patents) (PCT)
Trade Marks (Madrid Agreement
and Protocol)
Industrial Designs (The Hague Agreement )
Integrated Circuits
(Washington Treaty)
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21. 1. Industrial Property
Patent for the fountain pen that could store ink
Utility Model for the grip and pipette for injection of ink
Industrial Design: smart design with the grip in the shape of an arrow
Trademark: provided on the product and the packaging to distinguish it from other pens
Source: Japanese Patent Office
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22. 1.1.Patents Example: ring-pull cans
The inventor licensed the system to Coca-Cola at 1/10 of a penny per can. During the period of validity of the patent the inventor obtained 148,000 UK pounds a day on royalties.
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23. The international treaties dealing with patents
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24. a) The PCT, in brief Treaty signed in 1970 in Washington
June 1978: became operational in 18 States
Only for inventions
Establishes a procedure for the filing of patent applications covering up to a maximum of 124 Contracting States by way of “designations”
There is no “PCT patent”: the decision to grant patents can be made exclusively by the national or regional offices
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25. General Remarks on the PCT System
The PCT System provides for:
an international phase comprising:
filing of the international application
international search and written opinion
international publication; and
international preliminary examination
a national/regional phase before designated/elected offices
“Chapter I”
“Chapter II”
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26. PCT System Filing of a local patent application
International
Search 30
(months) 12 16 18 19 20 28
Entry
into
National
Phase
International
Preliminary
Examination
File
application
locally
File
international
application
International
Publication
Filing of a local patent application
Filing of an international application under the PCT within 12 months (Priority year under Paris Convention)
Entry into the national phase: 30 months
1 set of formality requirements 1 international filing dee
1 enhanced international search with a written opinion on patentability
1 international publication
1 international preliminary examination
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27. 110,114
(1)As you can appreciate, during the year 2000, the International Bureau of WIPO received 90,948 international applications filed worldwide (from some 67 countries), which is 16,925 (or 22.9%) more than in 1999.
(2) Those 90,948 international applications had the potential effect of 4,806,623 national applications, and of 262,793 regional applications which would be equivalent to 3,650,549 applications for patent protection in the member States of the regional patent systems, that is, a notional equivalent effect, in total, of 8,457,172 national applications.
It is also important to note that in February 2000, the PCT reached a milestone in its history with the filing of the 500,000th application. It is interesting to note that the 250,000th application was received in February 1996, 18 years after the start of PCT operations, and it took only four years to receive the next 250,000.
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28. Technical Field (IPC) for PCT Applications in 2003
Fields of technology
The main fields of technology to which published international applications related were physics, chemistry and metallurgy, and electricity. The chart below shows the breakdown of PCT applications published in 2003 according to the eight main technical fields of the International Patent Classification (IPC)
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29. b) The Strasbourg Agreement concerning the international patent classification (IPC)
This classification divides the technology into 8 sections with around subdivisions
This classification is indispensable for the search for “prior art”
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30. c) Budapest Treaty on the international recognition of the deposit of microorganisms for the purpose of patent procedure (1977)
The main feature of this treaty is that a Contracting State which allows or requires the deposit of microorganisms for the purposes of patent procedure must recognize, for such purposes, the deposit of a microorganism with any international depositary authority, irrespective of whether such authority is on or outside the territory of the said country.
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31. 1.2. Industrial Designs
Generally speaking, an industrial design is the ornamental or aesthetic aspect of a useful article.
It may depend on the shape, pattern or color of the article.
It must appeal to the sense of sight.
It must be reproducible by industrial means; (this is the essential purpose of the design, and is why the design is called “industrial.”)
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32. Example of Industrial Design
Business point of view:
Make your product appealing to consumers
Customize products in order to target different customers (e.g. Swatch)
Develop the brand (e.g. Apple ’s « Think Different » strategy)
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33. Example of Industrial Design
Rocking Kangaroo (wood) registered in Australia in 1995 by Daniel Gasser
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34. Example of Industrial Design
Chair, registered in Australia in August 5, 1985 by Raymond Leslie Strachan and Brenda Mary Strachan, trading as Strachan Woodworks
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35. Example of Industrial Design
Trax® is a system of public seating manufactured by OMK Design Ltd.
Originally designed for British Rail. Had to be visually appealing, comfortable and weather-resistant
In 1990, installed in railway stations in UK
12 years later, installed in over 60 airports
Industrial design protection in UK, France, Germany, Italy, Benelux, Australia and the US has guaranteed a degree of exclusivity keeping imitators away
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36. The international treaties dealing with Industrial Designs
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37. a) the Hague Agreement
- It concerns the International Deposit of Industrial Designs offers a procedure for an international registration.
- With a single international deposit the design will be protected in as many member countries of the treaty as the applicant wishes.
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38. b) The Locarno Agreement
- It establishes an International Classification for Industrial Designs
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39. 1.3. Trademarks
Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.
Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colors as well as any combination of such signs, shall be eligible for registration as trademarks (Article 15.1 of the TRIPS Agreement).
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40. Examples of Trademarks
Trademarks are identifiers
Trademarks are a guarantee of good quality
Nike, Adidas, Reebok, ...
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41. Examples of Trademarks
Trademarks are valuable business assets
Interbrand 2003 Annual Survey of the world’s most valuable global brands:
Coca-Cola: billion US$ Microsoft : billion US$ IBM: US$.
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42. The International Treaties dealing with Trade Marks
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43. a) The Madrid Agreement (1891) and the Protocol (1989)
- The system makes it possible to protect a mark in a large number of countries by obtaining an international registration which has effect in each of the Contracting Parties that have been designated.
- An international registration may be obtained by simply filing one application with WIPO (through the office of the home country) in one language and paying one set of fees only.
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44. The Madrid Agreement (1891) and Protocol (1989)
- The system is administered by WIPO which
- maintains the international register and
- publishes the WIPO Gazette of international marks
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45. b) The Nice Agreement (1957)
- It concerns the international classification of goods and services for the purposes of the registration of marks.
- It consists of a list of classes - 34 for goods and 8 for services and an alphabetical list of the goods and services.
- These lists are amended and supplemented from time to time by a Committee of experts.
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46. c) The Vienna Agreement (1973)
- It establishes a classification for marks which consist of or contain figurative elements.
- It consists of 29 categories, 144 divisions and some sections in which the figurative elements of marks are classified.
It is revised periodically. The edition in force in 1998 is the fourth.
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47. 1.4. Geographical Indications
Tequila
In 1977 Tequila was registered as a geographical indication in Mexico
Tequila registered through Lisbon agreement and mutual recognition agreements with the EU
Only Mexican producers from 5 specified regions of the country (where the raw material “agave” grows) are entitled to produce Tequila
Over 190 million liters produced annually, employment giving direct employment to over 36,000 Mexicans
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48. The international treaty dealing with Appellation of Origin The Lisbon Agreement (1958)
The aim of this agreement is to provide for the protection of appellations of origin, that is “geographical name of a country, region or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographic environment, including natural and human factors.
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49. 2. Copyright, collective rights, neighbouring rights and related rights
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50. 2.1 Copyright - Copyright relates to artistic creations.
- It grants authors, artists and the other creators protection for their literary and artistic creations (work).
- It is an exclusive right to use or authorize others to use the work on agreed terms.
- Bern Convention.
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51. WIPO Copyright Treaty (WCT) (1996 into force 2002 )
This Treaty mentions two subject matters to be protected by copyright,
(i) computer programs, whatever may be the mode or form of their expression, and
(ii) compilations of data or other materials “databases”,in any form, which by reason of the selection or arrangement of their contents constitute intellectual creations. (Where a database does not constitute such a creation, it is outside the scope of this Treaty).
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52. 2.2. Collective Rights
- WIPO contributes to the overall assistance provided to countries and in creating and strengthening collective management systems for copyright and related rights on a national and regional scale.
- Such management organizations provide and secure adequate remuneration for authors, composers, performers and publishers.
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53. 2.3. Neighbouring rights related rights
- They provide rights similar or identical to those of copyright to other beneficiaries :
. Performers (actors/musicians)
. Producers of sound recordings (cassette, compact discs) and
. Broadcasting organizations (TV programs)
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54. 2.3. Neighbouring rights/related rights a) the Brussels Convention
- This convention relates to the Distribution of Programme-Carrying Signals Transmitted by Satellite (1974) [Satellites Convention].
- This convention provides for the obligation of each Contracting State to take adequate measures to prevent the unauthorized distribution on or from its territory of any programme-carrying signal transmitted by satellite.
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55. 2.3. Neighbouring rights/related rights b) the Geneva Convention
- This convention relates to the Protection of Producers of Phonograms against Unauthorized Duplication of Their Phonograms (1971) [the Phonograms Convention].
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56. 2.3. Neighbouring rights/related rights b) the Geneva Convention
- It provides for the obligation of each Contracting State to protect a producer of phonograms who is a national of another contracting State
. against the making of duplicates without the consent of the producer,
. against the importation of such duplicates, where the making or importation is for the purposes of distribution to the public, and
. against the distribution of such duplicates to the public.
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57. 2.3. Neighbouring rights/related rights c) the Rome Convention
This Convention relates to the Protection of Performers, Producers of Phonograms and Broadcasting Organization (1961).
- It secures protection in
. performances of performers (actors, singers),
. phonograms of producers of phonograms and
. broadcasts of broadcasting organizations
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58. 2.3. Neighbouring rights/related rights d) the WIPO Performances and Phonograms Treaty (WPPT) 1996
- This Treaty updates the Rome Convention
- WPPT “Internet Treaty” has clarified international norms aimed at preventing unauthorized access to and use of creative works on Internet.
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59. IP : A Tool for Development
Kamil Idriss, WIPO Director General:
“In the age of the knowledge economy, the efficient and creative use of knowledge is a key determinant of international competitiveness, wealth creation and improved social welfare.”
“An effective IP system embedded within a national strategy which anchors IP considerations firmly within the policy-making process will help a nation to promote and protect its intellectual assets, thereby driving economic growth and wealth creation”.
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60. THANK YOU
FOR YOUR ATTENTION
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