Transcript E WIPO/IP/JU/RYD/04/10 ORIGINAL: English DATE: October 2004 KINGDOM OF SAUDI ARABIA WORLD INTELLECTUAL PROPERTY ORGANIZATION WIPO NATIONAL WORKSHOP FOR JUDGES organized by the World Intellectual Property Organization (WIPO) in cooperation.

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WIPO/IP/JU/RYD/04/10
ORIGINAL: English
DATE: October 2004
KINGDOM OF SAUDI ARABIA
WORLD INTELLECTUAL
PROPERTY ORGANIZATION
WIPO NATIONAL WORKSHOP FOR JUDGES
organized by
the World Intellectual Property Organization (WIPO)
in cooperation with
the 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
Industrial Property
1. Introduction: notion of industrial
property
2. International legal framework
3. 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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Industrial Property
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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Industrial Property
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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Industrial Property
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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Industrial Property
(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
INDUSTRIAL PROPERTY RIGHTS: three partly
overlapping areas
1. Technical creations (patents, utility models, layoutdesigns 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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Industrial Property
2. International legal framework
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Industrial Property
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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Industrial Property
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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Industrial Property
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 layoutdesigns (known as “topographies”)
(vi) Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement) (1994)
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Industrial Property
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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Industrial Property
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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Industrial Property
3. Main “substantive” treaties in the
field of industrial property
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Industrial Property
THE PARIS CONVENTION
1. Objectives
a) To articulate national systems with different
standards of protection in the fields of patents
and trademarks
b) 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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Industrial Property
THE PARIS CONVENTION (cont.)
2. Principles
a) National treatment
b) 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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Industrial Property
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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Industrial Property
THE TRIPS AGREEMENT
1. Objectives
a) To reduce distortions and impediments to
trade
b) To protect private property rights
2. Principles
a) National treatment (of persons)
b) Most-favoured-nation treatment
c) Other GATT principles: national treatment
of goods, transparency, elimination of
quantitative restrictions
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Industrial Property
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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Industrial Property
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) exceptions
d) exception to the principle of independence of
rights
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Industrial Property
The TRIPS Agreement (cont.)
4. Substantive standards (some examples) (cont.):
(iii) Industrial designs
a) criteria for protection
b) special protection for textiles; term of
protection
(iv) Patents
a) prohibition against discrimination
b) 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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Industrial Property
The TRIPS Agreement (cont.)
4. Substantive standards (some examples)
(iii) Patents (cont.):
d) exceptions to rights conferred
e) compulsory licenses
f) term of protection
g) reversal of the burden of proof
(iv) Layout-designs (topographies) of integrated circuits
a) departure from the IPIC Treaty: innocent
infringement (Art. 37) and compulsory licenses
(v) Undisclosed information
a) scope of protection – trade secrets
b) protection of test data: a sui generis regime
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Industrial Property
Thank you!
If you have any questions as regards this
presentation, please do not hesitate to contact
[email protected]
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