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UNIT-6

Intellectual Property

Intellectual property has a dual nature, i.e. it has both a national and international dimension.
For instance, patents are governed by national laws and rules of a given country, while
international conventions on patents ensure minimum rights and provide certain measures for
enforcement of rights by the contracting states. Within Europe, the European Union is
pushing for the harmonisation of both substantive and procedural laws.

General Conventions

 Convention for the Protection of Industrial Property Rights signed in Paris on 20


March 1883, as last revised on 14 July 1967 (Paris Convention).
 Berne Convention for the Protection of Literary and Artistic Works Paris Act of 24
July 1971. This was first drafted on 9 September 1886, completed in Paris on 4 May
1896, revised in Berlin on 13 November 1908, completed in Berne on 20 March 1914,
revised: Rome 2 June 1928, Brussels 26 June 1948, Stockholm 14 July 1967, Paris 24
July 1971 and amended on 28 September 1979.
 Convention establishing the World Intellectual Property Organisation (WIPO), signed
at Stockholm on 14 July 1967, amended on 28 September 1979.
 Agreement on Trade-Related Aspects of Intellectual Property Rightsincluding trade in
counterfeit goods (TRIPS Agreement) part of the GATT Uruguay Round signed in
April 1994. The TRIPS Agreement, negotiated during the Uruguay Round, sets
minimum standards for most categories of IPRs.

Berne Convention

The Berne Convention for the Protection of Literary and Artistic Works (hereinafter referred
to as the Convention) is the oldest international agreement in the field of copyright.

Copyright is the protection given by the law to original literary and artistic works. The
Convention is the most important treaty that governs the area of copyright. It has also
been described as being to copyright what the Paris Convention for the Protection of
Industrial Property (hereinafter referred to as the Paris Convention) is to industrial
property rights.

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The Convention was signed in 1886 and has been revised several times. These revisions
typically occur at twenty-year intervals, however, the last revision was done in Paris
in 1971.

The Paris 1971 Revision was notable because it added to the Convention the Appendix
containing the Special Provisions Regarding Developing Countries.

THE BERNE UNION

Article 1 of the Convention established a Union of Member States of the Convention, with
the aim of protecting the rights of creators of literary and artistic works. The
Convention also established an administrative secretariat known as the “International
Bureau”.

This secretariat later amalgamated with the secretariat established by the Paris Convention
and the resulting combined secretariat later became the World Intellectual Property
Organization (hereinafter referred to as WIPO).

WORKS PROTECTED BY THE CONVENTION

The expression “literary and artistic works” is defined as including every production in the
literary, scientific and artistic domain, irrespective of the mode or form of the production’s
expression.10 This expression is general in the sense that it encompasses every original work
of authorship, regardless of the work’s literary or artistic merit.11 According to Article 2 (1)
of the Convention, literary and artistic works include-

“books, pamphlets and other writings; lectures, addresses, sermons and other works of the
same nature; dramatic or dramatico-musical works; choreographic works or entertainments in
dumb show; musical compositions with or without words; cinematographic works to which
are assimilated works expressed by a process analogous to cinematography; works of
drawing, painting, architecture, sculpture, engraving and lithography; photographic works to
which are assimilated works expressed by a process analogous to photography; works of
applied art; illustrations, maps, plans, sketches and three dimensional works relative to
geography, topography, architecture or science.”.

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The Convention can best be described as the most versatile international agreement in the
arena of copyright law. It can also be described as the most dominant international copyright
agreement on the basis of the fact that it has virtually eclipsed the rival Universal Copyright

Convention. The Convention protects a host of literary and artistic works thereby ensuring
that the creators of these protected works recover some compensation for the time, money,
effort and thought they invested into the creation of such works. This protection has fostered
the growth of copyright industries such as the music industry into multi-billion dollar
businesses.

This success of the music industry has not only benefited developed countries but also
developing countries as well. The popularity of “world music” is a testament to this fact.
World music is a brand of music from the developing world involving the fusion of
traditional music and modern pop music. Examples of world music range from calypso, soca,
punta and zouk from the Caribbean, to township jive from South Africa and Soul Makossa
from Cameroon. The importance of effectively protecting intellectual property is eloquently
summed up in the inscription on the cupola of the headquarters of WIPO- “Human genius is
the source of all works of art…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….”.

The Convention is surely one of the best weapons in the armory of copyright protection. The
adherence of developing countries such as Belize, Trinidad and Tobago and South Africa to
the provisions of the Convention is a testament to this fact.

Paris Convention

The Paris Convention applies to industrial property in the widest sense, including patents,
trademarks, industrial designs, utility models (a kind of "small-scale patent" provided for by
the laws of some countries), service marks, trade names (designations under which an
industrial or commercial activity is carried out), geographical indications (indications of
source and appellations of origin) and the repression of unfair competition.

The substantive provisions of the Convention fall into three main categories: national
treatment, right of priority, common rules.

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(1) Under the provisions on national treatment, the Convention provides that, as regards the
protection of industrial property, each Contracting State must grant the sameprotection to
nationals of other Contracting States that it grants to its own nationals. Nationals of non-
Contracting States are also entitled to national treatment under the Convention if they are
domiciled or have a real and effective industrial or commercial establishment in a Contracting
State.
(2) The Convention provides for the right of priority in the case of patents (and utility
models where they exist), marks and industrial designs. This right means that, on the basis of
a regular first application filed in one of the Contracting States, the applicant may, within a
certain period of time (12 months for patents and utility models; 6 months for industrial
designs and marks), apply for protection in any of the other Contracting States. These
subsequent applications will be regarded as if they had been filed on the same day as the first
application. In other words, they will have priority (hence the expression "right of priority")
over applications filed by others during the said period of time for the same invention, utility
model, mark or industrial design. Moreover, these subsequent applications, being based on
the first application, will not be affected by any event that takes place in the interval, such as
the publication of an invention or the sale of articles bearing a mark or incorporating an
industrial design. One of the great practical advantages of this provision is that applicants
seeking protection in several countries are not required to present all of their applications at
the same time but have 6 or 12 months to decide in which countries they wish to seek
protection, and to organize with due care the steps necessary for securing protection.
(3) The Convention lays down a few common rules that all Contracting States must follow.
The most important are:
(a) Patents. Patents granted in different Contracting States for the same invention
are independent of each other: the granting of a patent in one Contracting State does not
oblige other Contracting States to grant a patent; a patent cannot be refused, annulled or
terminated in any Contracting State on the ground that it has been refused or annulled or
has terminated in any other Contracting State.
The inventor has the right to be named as such in the patent.
The grant of a patent may not be refused, and a patent may not be invalidated, on the
ground that the sale of the patented product, or of a product obtained by means of the
patented process, is subject to restrictions or limitations resulting from the domestic law.

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Each Contracting State that takes legislative measures providing for the grant of
compulsory licenses to prevent the abuses which might result from the exclusive rights
conferred by a patent may do so only under certain conditions. A compulsory license (a
license not granted by the owner of the patent but by a public authority of the State
concerned), based on failure to work or insufficient working of the patented invention,
may only be granted pursuant to a request filed after three years from the grant of the
patent or four years from the filing date of the patent application, and it must be refused if
the patentee gives legitimate reasons to justify this inaction. Furthermore, forfeiture of a
patent may not be provided for, except in cases where the grant of a compulsory license
would not have been sufficient to prevent the abuse. In the latter case, proceedings for
forfeiture of a patent may be instituted, but only after the expiration of two years from the
grant of the first compulsory license.
(b) Marks. The Paris Convention does not regulate the conditions for the filing and
registration of marks which are determined in each Contracting State by domestic law.
Consequently, no application for the registration of a mark filed by a national of a
Contracting State may be refused, nor may a registration be invalidated, on the ground
that filing, registration or renewal has not been effected in the country of origin. The
registration of a mark obtained in one Contracting State is independent of its possible
registration in any other country, including the country of origin; consequently, the lapse
or annulment of the registration of a mark in one Contracting State will not affect the
validity of the registration in other Contracting States.
Where a mark has been duly registered in the country of origin, it must, on request, be
accepted for filing and protected in its original form in the other Contracting States.
Nevertheless, registration may be refused in well-defined cases, such as where the mark
would infringe the acquired rights of third parties; where it is devoid of distinctive
character; where it is contrary to morality or public order; or where it is of such a nature
as to be liable to deceive the public.
If, in any Contracting State, the use of a registered mark is compulsory, the registration
cannot be canceled for non-use until after a reasonable period, and then only if the owner
cannot justify this inaction.

Each Contracting State must refuse registration and prohibit the use of marks that
constitute a reproduction, imitation or translation, liable to create confusion, of a mark
used for identical and similar goods and considered by the competent authority of that

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State to be well known in that State and to already belong to a person entitled to the
benefits of the Convention.
Each Contracting State must likewise refuse registration and prohibit the use of marks that
consist of or contain, without authorization, armorial bearings, State emblems and
official signs and hallmarks of Contracting States, provided they have been communicated
through the International Bureau of WIPO. The same provisions apply to armorial
bearings, flags, other emblems, abbreviations and names of certain intergovernmental
organizations.
Collective marks must be granted protection.
(c) Industrial Designs. Industrial designs must be protected in each Contracting State,
and protection may not be forfeited on the ground that articles incorporating the design
are not manufactured in that State.
(d) Trade Names. Protection must be granted to trade names in each Contracting State
without there being an obligation to file or register the names.
(e) Indications of Source. Measures must be taken by each Contracting State against
direct or indirect use of a false indication of the source of goods or the identity of their
producer, manufacturer or trader.
(f) Unfair competition. Each Contracting State must provide for effective protection
against unfair competition.
The Paris Union, established by the Convention, has an Assembly and an Executive
Committee. Every State that is a member of the Union and has adhered to at least the
administrative and final provisions of the Stockholm Act (1967) is a member of the
Assembly. The members of the Executive Committee are elected from among the members of
the Union, except for Switzerland, which is a member ex officio. The establishment of the
biennial program and budget of the WIPO Secretariat – as far as the Paris Union is concerned
– is the task of its Assembly.
The Paris Convention, concluded in 1883, was revised at Brussels in 1900, at Washington in
1911, at The Hague in 1925, at London in 1934, at Lisbon in 1958 and at Stockholm in 1967,
and was amended in 1979.

The Convention is open to all States. Instruments of ratification or accession must be


deposited with the Director General of WIPO.

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WIPO

The World Intellectual Property Organization (WIPO) is one of the specialized agencies of
the United Nations (UN) system of organizations. The “Convention Establishing the World
Intellectual Property Organization” was signed at Stockholm in 1967 and entered into force in
1970. However, the origins of WIPO go back to 1883 and 1886, with the adoption of the
Paris Convention and the Berne Convention respectively. Both of these conventions provided
for the establishment of international secretariats, and both were placed under the supervision
of the Swiss Federal Government. The few officials who were needed to carry out the
administration of the two conventions were located in Berne, Switzerland.

WIPO is the global forum for intellectual property services, policy, information and
cooperation. We are a self-funding agency of the United Nations, with 187 member states.

The mission is to lead the development of a balanced and effective international intellectual
property (IP) system that enables innovation and creativity for the benefit of all. Our
mandate, governing bodies and procedures are set out in the WIPO Convention, which
established WIPO in 1967.

Mission and Activities

The mission of WIPO is to promote through international cooperation the creation,


dissemination, use and protection of works of the human mind for the economic, cultural and
social progress of all mankind. Its effect is to contribute to a balance between the stimulation
of creativity worldwide, by sufficiently protecting the moral and material interests of creators

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on the one hand, and providing access to the socio-economic and cultural benefits of such
creativity worldwide on.

Quick facts

History: established in 1967 | Membership: 187 member states | Director General: Francis
Gurry | Headquarters: Geneva, Switzerland

What do WIPO do?

WIPO help governments, businesses and society realize the benefits of IP.

It provides:

 a policy forum to shape balanced international IP rules for a changing world;

 global services to protect IP across borders and to resolve disputes;

 technical infrastructure to connect IP systems and share knowledge;

 a world reference source for IP information

 cooperation and capacity-building programs to enable all countries to use IP for


economic, social and cultural development;

Member States

WIPO’s member states determine the direction, budget and activities of the Organization
through the decision-making bodies. It currently has 187 member states.

To become a member, a state must deposit an instrument of ratification or accession with


the Director General. The WIPO Convention provides that membership is open to any state
that is:

 a member of the Paris Union for the Protection of Industrial Property, or member of
the Berne Union for the Protection of Literary and Artistic Works; or

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 a member of the United Nations, or of any of the United Nations' Specialized
Agencies, or of the International Atomic Energy Agency, or that is a party to the Statute of
the International Court of Justice; or

 Invited by the WIPO General Assembly to become a member state of the


Organization.

Observers

WIPO welcomes the inclusion of stakeholder organizations and interest groups as observers
at the formal meetings of member states.

WIPO also seeks to involve NGOs, IGOs, industry groups and all other stakeholders as
widely as possible in consultation processes and debates about current issues.

Director General Francis Gurry

Francis Gurry has led WIPO as Director General since October 1, 2008. He was reappointed
in May 2014 for a second six-year term, which runs through September 2020.

Under his leadership, WIPO is addressing major challenges. These include managing the
stress on the international patent and copyright systems produced by rapid technological
change, by globalization and increased demand; reducing the knowledge gap between
developed and developing countries; and ensuring that the intellectual property (IP) system
serves its fundamental purpose of encouraging creativity and innovation in all countries.

To equip WIPO to meet these evolving challenges, Francis Gurry has led a
comprehensive program of organizational change, realigning WIPO’s programs, resources
and structures with re-defined strategic goals.

THE ROLE OF WIPO

The World Intellectual Property Organization (WIPO) is an international organization


dedicated to promoting creativity and innovation by ensuring that the rights of creators and
owners of intellectual property are protected worldwide, and that inventors and authors are
thus recognized and rewarded for their ingenuity. As a specialized agency of the United
Nations, WIPO exists as a forum for its Member States to create and harmonize rules and
practices to protect intellectual property rights. Most industrialized nations have protection

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systems that are centuries old. Many new and developing countries, however, are now
building up their patent, trademark and copyright laws and systems. With the rapid
globalization of trade during the last decade, WIPO plays a key role in helping these new
systems to evolve through treaty negotiation, legal and technical assistance, and training in
various forms, including in the area of enforcement of intellectual property rights. The field
of copyright and related rights has expanded dramatically as technological developments
have brought new ways of disseminating creations worldwide through such forms of
communication as satellite broadcasting, compact discs, DVDs and the Internet. WIPO is
closely involved in the on-going international debate to shape new standards for copyright
protection in cyberspace. WIPO administers the following international treaties on copyright
and related rights:

 Berne Convention for the Protection of Literary and Artistic Works


 Brussels Convention Relating to the Distribution of Program-Carrying Signals
Transmitted by Satellite
 Geneva Convention for the Protection of Producers of Phonograms against
Unauthorized Duplication of Their Phonograms
 Rome Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organizations
 WIPO Copyright Treaty (WCT)
 WIPO Performances and Phonograms Treaty (WPPT)

Further Information

Further information about all aspects of copyright and related rights is available on the WIPO
website and in a range of WIPO publications. Many of these publications may be downloaded
free of charge.

www.wipo.int For the WIPO website.

www.wipo.int/treaties For full texts of all of the treaties regulating

intellectual property protection.

About IP

What is copyright?

Copyright is a legal term used to describe the rights that creators have over their literary and
artistic works. Works covered by copyright range from books, music, paintings, sculpture and
films, to computer programs, databases, advertisements, maps and technical drawings.

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What is a patent?

A patent is an exclusive right granted for an invention, which is a product or a process that
provides, in general, a new way of doing something, or offers a new technical solution to a
problem. To get a patent, technical information about the invention must be disclosed to the
public in a patent application.

What is a trademark?

A trademark is a sign capable of distinguishing the goods or services of one enterprise from
those of other enterprises. Trademarks are protected by intellectual property rights.

What is an industrial design?

An industrial design constitutes the ornamental or aesthetic aspect of an article. A design may
consist of three-dimensional features, such as the shape or surface of an article, or of two-
dimensional features, such as patterns, lines or color.

What is a geographical indication?

A geographical indication is a sign used on goods that have a specific geographical origin and
possess qualities, a reputation or characteristics that are essentially attributable to that place
of origin.

Most commonly, a geographical indication includes the name of the place of origin of the
goods. For example, agricultural products typically have qualities that derive from their place
of production and are influenced by specific local factors, such as climate and soil.

The TRIPS Agreement

The WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS),


negotiated in the 1986–94 Uruguay Round, introduced intellectual property rules into the
multilateral trading system for the first time. It’s one of the three main areas of work in the
WTO, alongside trade in goods and services. The TRIPS Council’s job is to monitor how
countries are applying the TRIPS Agreement and to discuss issues that arise from that.

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The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most
comprehensive multilateral agreement on intellectual property.

The areas of intellectual property that it covers are: copyright and related rights (i.e. the rights
of performers, producers of sound recordings and broadcasting
organizations); trademarks including service marks; geographical indications including
appellations of origin; designs; patents including the protection of new varieties of plants;
the layout-designs of integrated circuits; and undisclosed information including trade secrets
and test data.

The three main features of the Agreement are:

 Standards. In respect of each of the main areas of intellectual property covered by


the TRIPS Agreement, the Agreement sets out the minimum standards of protection to
be provided by each Member. Each of the main elements of protection is defined,
namely the subject-matter to be protected, the rights to be conferred and permissible
exceptions to those rights, and the minimum duration of protection. The Agreement
sets these standards by requiring, first, that the substantive obligations of the main
conventions of the WIPO, the Paris Convention for the Protection of Industrial
Property (Paris Convention) and the Berne Convention for the Protection of Literary
and Artistic Works (Berne Convention) in their most recent versions, must be
complied with. With the exception of the provisions of the Berne Convention on
moral rights, all the main substantive provisions of these conventions are incorporated
by reference and thus become obligations under the TRIPS Agreement between
TRIPS Member countries. The relevant provisions are to be found in Articles 2.1 and
9.1 of the TRIPS Agreement, which relate, respectively, to the Paris Convention and
to the Berne Convention. Secondly, the TRIPS Agreement adds a substantial number
of additional obligations on matters where the pre-existing conventions are silent or
were seen as being inadequate. The TRIPS Agreement is thus sometimes referred to
as a Berne and Paris-plus agreement.

 Enforcement. The second main set of provisions deals with domestic procedures and
remedies for the enforcement of intellectual property rights. The Agreement lays
down certain general principles applicable to all IPR enforcement procedures. In
addition, it contains provisions on civil and administrative procedures and remedies,

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provisional measures, special requirements related to border measures and criminal
procedures, which specify, in a certain amount of detail, the procedures and remedies
that must be available so that right holders can effectively enforce their rights.

 Dispute settlement. The Agreement makes disputes between WTO Members about
the respect of the TRIPS obligations subject to the WTO's dispute settlement
procedures.

In addition the Agreement provides for certain basic principles, such as national and most-
favoured-nation treatment, and some general rules to ensure that procedural difficulties in
acquiring or maintaining IPRs do not nullify the substantive benefits that should flow from
the Agreement. The obligations under the Agreement will apply equally to all Member
countries, but developing countries will have a longer period to phase them in. Special
transition arrangements operate in the situation where a developing country does not
presently provide product patent protection in the area of pharmaceuticals.

The TRIPS Agreement is a minimum standards agreement, which allows Members to provide
more extensive protection of intellectual property if they so wish. Members are left free to
determine the appropriate method of implementing the provisions of the Agreement within
their own legal system and practice.

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