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22 April 2008

A Short Guide to International IPR Treaties

IPR treaties create common rules and regulations

(The following article is taken from the U.S. Department of State publication, Focus on Intellectual Property Rights.)

A Short Guide to International IPR Treaties
By Paul E. Salmon

Strong protection for intellectual property rights (IPR) worldwide is vital to the future economic growth and development of all countries. Because they create common rules and regulations, international IPR treaties, in turn, are essential to achieving the robust intellectual property protection that spurs global economic expansion and the growth of new technologies.

The international community, however, did not have a single source for intellectual property obligations and norms until the 1994 Uruguay Round of the General Agreement on Tariffs and Trade created the World Trade Organization (WTO) and included the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

The significance of the TRIPS Agreement is three-fold:

(1) It is the first single, truly international agreement that establishes minimum standards of protection for several forms of intellectual property;

(2) It is the first international intellectual property agreement that mandates detailed civil, criminal, and border enforcement provisions; and

(3) It is the first international intellectual property agreement that is subject to binding, enforceable dispute settlement. TRIPS, in effect, lays the groundwork for a strong and modern IPR infrastructure for the world community.

As a strong adherent of the TRIPS Agreement and all other international IPR treaties discussed below, the U.S. government encourages other countries to join and implement them.

TRIPS

The TRIPS Agreement came into force in 1995, as part of the Agreement Establishing the World Trade Organization. TRIPS incorporates and builds upon the latest versions of the primary intellectual property agreements administered by the World Intellectual Property Organization (WIPO), the Paris Convention for the Protection of Industrial Property, and the Berne Convention for the Protection of Literary and Artistic Works, agreements that go back to the 1880s.

TRIPS is unique among these IPR accords because membership in the WTO is a "package deal," meaning that WTO members are not free to pick and choose among agreements. They are subject to all the WTO's multilateral agreements, including TRIPS.

TRIPS applies basic international trade principles to member states regarding intellectual property, including national treatment and most-favored-nation treatment. TRIPS establishes minimum standards for the availability, scope, and use of seven forms of intellectual property: copyrights, trademarks, geographical indications, industrial designs, patents, layout designs for integrated circuits, and undisclosed information (trade secrets). It spells out permissible limitations and exceptions in order to balance the interests of intellectual property with interests in other areas, such as public health and economic development. (For the complete text of the TRIPS Agreement, as well as an explanation of its provisions, see the WTO web site at http://www.wto.org.)

According to TRIPS, developed countries were to have implemented the agreement fully by January 1, 1996. Developing-country members and members in transition to a market economy were entitled to delay full implementation of TRIPS obligations until January 1, 2000. Least-developed members were given until January 1, 2006, to implement their obligations, with the possibility of further transition upon request. Developing countries that did not provide patent protection for particular areas of technology on their date of application were given an additional five years, until January 1, 2005, to provide such protection.

At the 2001 WTO Ministerial Conference in Doha, least-developed countries were given an additional 10 years to implement TRIPS patent and "undisclosed information" provisions as they relate to pharmaceuticals.

Because the TRIPS Agreement is a decade old, however, it does not address several new developments, such as the Internet and digital copyright issues, advanced biotechnology, and international harmonization, the process of creating uniform global standards of laws or practice. It sets the floor for minimum IPR protection, not the ceiling.

Since the conclusion of the TRIPS Agreement, the World Intellectual Property Organization has addressed digital copyright issues in the so-called Internet Treaties, namely the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT).

What follows are summaries of other WIPO treaties that complement the TRIPS Agreement, particularly in addressing new technological developments. For texts of the WIPO treaties discussed below, see: http://www.wipo.int/.

TRADEMARK LAW TREATY

The Trademark Law Treaty (TLT), adopted on October 27, 1994, entered into force on August 1, 1996. Thirty-three states, including the United States, are party to the TLT as of July 1, 2005. The TLT was enacted to simplify procedures in the application and registration process and to harmonize trademark procedures in different countries. The TLT harmonizes procedures of national trademark offices by establishing the maximum requirements a contracting party can impose.

The TLT gives service marks – the distinctive identifiers of businesses that offer a service, as opposed to goods – "equal" status with trademarks. Previously, many foreign countries treated trademarks and service marks differently. The TLT requires member nations to register service marks and treat them as they would trademarks.

From the trademark owner's perspective, the TLT saves time and money in the preparation and filing of documents for the application. It streamlines the process for post-registration renewals, recording assignments, changes of name and address, and powers of attorney. Member countries to the TLT are now required to permit the use of multi-class applications, enabling trademark owners to file a single application covering multiple classes of goods and services.

Another significant feature of the TLT that benefits trademark owners is its prohibition of requirements by national offices for authentication or certification of documents as well as signatures on trademark applications and correspondence. Many countries had required that any signatures submitted in support of registration of a mark be notarized or otherwise legalized in accordance with the laws of that nation. Under the TLT, it is no longer necessary in most instances to go through these procedures. This feature enables trademark owners to complete and file trademark documents more quickly, at less cost.

An additional advantage of the TLT is the harmonization of the initial and renewal terms of trademark registration among signatory countries: The TLT provides for an initial 10-year term, with 10-year renewals.

Other key features of the TLT include the introduction of an intent-to-use application system (with proof of use prior to registration); streamlined renewal procedures; minimization of the elements to obtain an application filing date; and simplified procedures for recording changes in name and ownership of trademark applications and registrations.

Overall, the TLT is intended to facilitate international trade: It is of particular importance to individuals and small businesses looking for markets in other countries. Currently, WIPO's Standing Committee on Trademarks, Industrial Designs, and Geographical Indications (SCT) is conducting negotiations on proposed revisions to the TLT. This standing committee has recommended that the WIPO General Assembly hold a diplomatic conference March 13-31, 2006, to consider adoption of the revised TLT.

PATENT LAW TREATY

The Patent Law Treaty (PLT), adopted by WIPO in June of 2000, entered into force on April 28, 2005. The PLT is the product of several years of multilateral negotiations on harmonizing global patent systems. The PLT harmonizes certain patent application procedures in order to reduce or eliminate formalities and the potential for loss of rights. The PLT does not harmonize substantive patent law, that is, the laws of each country that set forth the conditions that must be met in order to receive a patent for an invention in that country. WIPO, however, is holding discussions regarding harmonization of substantive patent law.

The PLT will make it easier for patent applicants and patent owners to obtain and maintain patents throughout the world by simplifying and, to a large degree, merging national and international formal requirements associated with patent applications and patents.

The PLT:

• simplifies and minimizes patent application requirements to obtain a filing date;

• imposes a limit on the formal requirements that Contracting Parties may impose;

• eases representation requirements for formal matters;

• provides a basis for the electronic filing of applications;

• provides relief with respect to time limits that may be imposed by the Office of a Contracting Party and reinstatement of rights where an applicant or owner has failed to comply with a time limit and that failure has the direct consequence of causing a loss of rights; and

• provides for correction or addition of priority claims and restoration of priority rights.

PATENT COOPERATION TREATY SYSTEM

The roots of the Patent Cooperation Treaty (PCT) go back to 1966, when the Executive Committee of the Paris Convention for the Protection of Intellectual Property called for a study of how to reduce, for applicants and patent offices, the duplication of effort involved in filing and obtaining patent applications for the same invention in different countries. The resulting WIPO treaty, the PCT, was signed in Washington, D.C., in 1970 and entered into force in 1978. The treaty was amended in 1979, 1984, 2001, and 2004. As of September 15, 2005, there are 128 Contracting Parties to the PCT.

By simplifying patent application filing, the PCT assists innovators in obtaining patent protection throughout the world. It also encourages small businesses and individuals to seek patent protection abroad.

Under this WIPO-administered treaty, nationals or residents of a contracting state file a single patent application, called an "international" application, with their national patent office or with WIPO as a receiving office. This automatically lodges the application for patent protection in all 127 Contracting Parties of the PCT.

The treaty provides a longer period of time, 30 months, before applicants must commit themselves to undertake the expenses of translation, national filing fees, and prosecution in every country in which they want protection. By providing applicants with more time and information to evaluate the strength of their potential patent and to determine marketing plans, the 30-month period allows applicants to be more selective as to the countries in which they will file. This is a major improvement over the 12-month priority period provided under the Paris Convention for patent applicants.

Under the PCT, WIPO publishes the "international application," together with a nonbinding indication as to the potential patentability of the invention. This nonbinding indication is a preliminary search and/or examination by an "International Authority," one of 11 patent offices designated by WIPO that currently meet the treaty's minimum staffing and documentation requirements. The nonbinding indication helps applicants decide whether to proceed with their patent applications in national or regional offices. Patent offices also benefit from these nonbinding indications of patentability when deciding whether to grant national or regional patents based upon PCT applications. Foreign search reports identify relevant documents that help patent offices to conserve resources in the examination process and to improve the quality of examination.

MADRID SYSTEM FOR THE INTERNATIONAL REGISTRATION OF MARKS

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks – the Madrid Protocol – was adopted in Spain's capital on June 27, 1989, and entered into force on December 1, 1995. The protocol is one of two treaties comprising the Madrid System for international registration of trademarks. The first treaty, the 1891 Madrid Agreement, provides for the registration of trademarks in several countries through the filing of one international trademark registration with WIPO in Geneva.

The Madrid Protocol, developed because some countries had problems with the operation of the Madrid Agreement, is seen as an improvement to the system for international registration of trademarks. As a result, more and more trademark owners are using the Madrid Protocol every year to protect their trademarks in foreign countries. As of September 15, 2005, there were 66 contracting parties to the Madrid Protocol.

The Madrid Protocol is a filing treaty and not a substantive harmonization treaty. It provides a cost-effective and efficient way for trademark holders – individuals and businesses – to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency. Moreover, no local agent is needed to file the application. Applications may be filed in English, French, or Spanish.

An application for international registration has the same effect as a national application for registration of the mark in each of the countries designated by the applicant. Once the trademark office in a designated country grants protection, the mark is protected just as if that office had registered it.

The Madrid Protocol also simplifies the subsequent management of the mark, since a simple, single procedural step serves to record subsequent changes in ownership or in the name or address of the holder with WIPO's International Bureau.

Before the protocol was enacted, burdensome administrative requirements for the normal transfer of business assets often made it difficult for trademark owners to carry out valid assignments of their marks internationally. The protocol allows the holder of an international registration to file a single request with a single payment, in order to record the assignment of a trademark with all the member countries. Registration renewal also involves a simple, single procedural step. International registration lasts 10 years, with 10-year renewal periods.

Trademark owners may designate additional countries if they decide to seek protection in more member countries or if new countries accede to the protocol.

If the basic application – or registration upon which the international registration is based – is cancelled for any reason in the first five years, the Madrid Protocol gives the holder of the international registration the opportunity to turn the international registration into a series of national applications in each designated country. This series of applications keeps the priority date of the original international registration in each country. The holder also preserves the rights acquired in each member country, even if international registration fails.

THE HAGUE SYSTEM FOR THE INTERNATIONAL DEPOSIT OF INDUSTRIAL DESIGNS

The Hague System is an international registration system that enables owners to obtain protection for their industrial designs with a minimum of formality and expense. A single international application filed with WIPO's International Bureau replaces a whole series of applications previously required in a number of states and/or intergovernmental organizations party to the Hague System. The subsequent management of the international registration is considerably easier under this system. For example, one single step is all that is needed to record a change in the name or address of the holder, or a change in ownership for some or for all of the designated contracting parties.

The Hague System had 42 contracting parties as of April 26, 2005.

BUDAPEST TREATY ON THE INTERNATIONAL RECOGNITION OF THE DEPOSIT OF MICROORGANISMS FOR THE PURPOSE OF PATENT PROCEDURE

The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purpose of Patent Procedure, signed on April 28, 1977, was amended on September 26, 1980. The Budapest Treaty eliminates the need to deposit microorganisms in each country where patent protection is sought.

Under the treaty, the deposit of a microorganism with an "international depositary authority" satisfies the deposit requirements of treaty members' national patent laws. An "international depositary authority" is capable of storing biological material and has established procedures that assure compliance with the Budapest Treaty. Such procedures include requirements that the deposit will remain available for the life of the patent and that samples will be furnished only to those persons or entities entitled to receive them.

The establishment of "international depositary authorities" offers several advantages to both patent applicants and contracting states. Patent applicants benefit because the need to deposit in many countries in which they seek patent protection is dramatically reduced. Since a single deposit in any "international depositary authority" will satisfy the national disclosure requirements of any member state, patent applicants' costs are much lower. Using a single authority as a deposit increases the deposit's security, and provides a mechanism of distribution of the deposit. Contracting states benefit because they can rely on the treaty's uniform standards to assure effective deposit and public availability. They no longer need to independently establish a 'recognized' depositary to meet national patentability disclosure requirements.

As of May 2005, there are 60 Patent Offices that abide by the terms of the Budapest Treaty and 35 "international depositary authorities" in 22 different countries.

INTERNATIONAL CONVENTION FOR THE PROTECTION OF NEW VARIETIES OF PLANTS

The International Convention for the Protection of New Varieties of Plants (UPOV) established an internationally recognized intellectual property system for the protection of new plant varieties. The UPOV Convention encourages and rewards the ingenuity and creativeness of breeders developing new varieties of plants. Anyone who develops a new variety of plant that may be disease resistant, drought resistant, cold tolerant, or simply aesthetically more pleasing is no less an inventor than someone who improves an automobile engine or develops a new medicinal drug. The only difference is that the plant breeder works with living material, rather than inanimate matter.

The process of creating a new plant variety is often long and expensive. Reproducing an existing plant variety, however, can be quick and relatively easy. Thus, an effective system of intellectual property protection needs to reward innovation by permitting inventors to recover their investment and, at the same time, disseminate the knowledge of that innovation for others to improve upon. The UPOV system establishes basic legal principles of protection that reward breeders for their inventiveness by providing exclusive rights to their plant invention, while encouraging the development of new plant varieties.

Under the 1991 UPOV system, the most recently concluded of these, the exclusive rights granted to the inventor (commonly referred to as "breeder's rights") require that another party other than the owner of the breeder's rights receive the breeder's authorization to:

• produce or reproduce the protected variety;

• condition the variety for propagation purposes; and

• offer to sell or market, import, export, or to stock the protected variety.

To receive a breeder's right, a breeder must invent a plant variety that is new, distinct, uniform, and stable. Under the UPOV Convention, however, a plant breeder generally does not need breeder authorization to use protected plant varieties for noncommercial or experimental acts or acts done for the purposes of breeding new plant varieties. The UPOV Convention also allows each member nation to restrict the breeder's right in relation to any variety to allow farmers to use part of their harvest for subsequent plantings in their own land. These restrictions, however, must be within reasonable limits and subject to the safeguarding of the legitimate interests of the breeder.

UPOV member states hold biannual meetings of the Council, a permanent body of the convention. Other UPOV bodies include the Consultative Committee, the Administrative and Legal Committee, and the Technical Committee, made up of several Technical Working Parties (TWPs) across several agricultural sectors. The TWPs meet periodically to share and discuss observations and advancements in agricultural sectors, which helps to standardize examination standards among member states. These TWP meetings benefit breeders as well, since more uniform standards lead to greater consistency of application filings in different territories.

As of June 29, 2005, there were 59 member States to the UPOV Convention. UPOV membership is expected to continue to increase in the next several years.

For more information on UPOV, see http://www.upov.int.

CONCLUSION

In the information age, with technology advancing at an accelerating rate, simply implementing the TRIPS Agreement is not enough to establish a robust intellectual property system. While it was the first comprehensive IPR agreement of its time, it is a decade old, and reflects a "snapshot" in time. Technological advances in information technology, biotechnology, and other fields require the updating of national and international laws that protect IP. Fortunately, WIPO has led the way in developing new international norms to meet these challenges.

WIPO also has led the way in simplifying and streamlining the procedures for seeking, obtaining, and maintaining rights in multiple countries. Through its "Global Protection Services" and its harmonization treaties, it saves creators and national IP offices a great deal of time and effort. WIPO also makes available its excellent technical assistance for establishing and improving IPR systems worldwide. Countries should look to both the WTO and to WIPO when crafting their IPR systems.

[Paul E. Salmon is a patent attorney in the U.S. Patent and Trademark Office's Office of International Relations. Mr. Salmon also served as the Intellectual Property Attache in Geneva, Switzerland, where he represented the U.S. government in meetings of WIPO and the WTO. He lectures frequently on the subject of international patent law.]