UNIT 5
World Intellectual Property Organization (WIPO)
The World Intellectual Property Organization (WIPO) is a specialized
agency of the United Nations, established to promote the protection of
intellectual property (IP) rights worldwide. It provides a platform for global
cooperation and harmonization of IP laws and policies.
Salient Features of WIPO
1. Establishment:
o WIPO was established in 1967 through the WIPO
Convention, which came into force in 1970.
o It became a specialized UN agency in 1974.
2. Objective:
o To promote the protection of intellectual property globally
through cooperation among member states.
o To encourage the creative activity of individuals and
businesses.
3. Headquarters:
o Located in Geneva, Switzerland.
4. Membership:
o Open to any member state of the United Nations, the
International Atomic Energy Agency (IAEA), or any other
specialized UN agency.
o Currently, WIPO has 193 member states.
5. IP Protection Treaties:
o Administers over 26 international treaties related to
intellectual property, including the Patent Cooperation
Treaty (PCT) and the Madrid System for Trademarks.
6. Self-Funding:
o WIPO operates on a self-funding model, with most of its
revenue generated through fees collected for international IP
services, such as patent filing under the PCT and trademark
registration under the Madrid System.
Structure of WIPO
WIPO has a multi-tiered structure to handle global IP governance
effectively.
1. General Assembly:
o Comprises all member states of WIPO.
o The supreme decision-making body that oversees the
organization’s policies, budget, and overall direction.
2. Conference:
o A forum for discussing matters of general interest to the
member states, such as treaties and global IP trends.
3. Coordination Committee:
o A body tasked with coordinating WIPO’s activities and budget.
o Composed of member states elected from the General
Assembly.
4. Director General:
o The head of WIPO, elected by member states for a six-year
term.
o Responsible for executing policies, overseeing operations, and
representing WIPO internationally.
5. Secretariat (International Bureau):
o Provides administrative and technical support to member
states.
o Handles treaty administration, IP filing systems, and policy
research.
Functions of WIPO
1. Promotion of IP Protection:
o Encourages global recognition and protection of intellectual
property rights across borders.
o Facilitates treaties and agreements to harmonize IP laws
internationally.
2. Administration of IP Systems:
o Operates international filing systems like the PCT (Patent
Cooperation Treaty), Madrid System (for trademarks),
and Hague System (for designs).
3. Capacity Building:
o Provides technical assistance and training to developing and
least-developed countries (LDCs) to strengthen their IP
systems.
o Organizes seminars, workshops, and conferences for global IP
awareness.
4. Policy Development:
o Conducts research and provides policy recommendations on
pressing IP issues like digital rights, artificial intelligence, and
genetic resources.
5. Dispute Resolution:
o Operates the WIPO Arbitration and Mediation Center,
offering alternative dispute resolution mechanisms for IP-
related disputes.
6. Database and Knowledge Sharing:
o Provides access to IP databases like PATENTSCOPE and
global trademark databases for innovation and research.
o Disseminates information about IP laws, regulations, and best
practices.
Important Organs of WIPO
1. Assemblies of Member States:
o Responsible for approving WIPO’s budget, overseeing treaties,
and electing the Director General.
2. Standing Committees:
o Focus on specific areas such as copyright, trademarks,
patents, and genetic resources.
o Examples: Standing Committee on the Law of Patents (SCP)
and Standing Committee on Copyright and Related Rights
(SCCR).
3. WIPO Arbitration and Mediation Center:
o Resolves disputes related to domain names, trademarks, and
copyrights outside traditional court systems.
4. International Bureau:
o The administrative arm of WIPO, which carries out day-to-day
operations and supports member states.
5. Coordination Committee:
o Advises on budgetary and administrative matters.
6. Advisory Committees:
o Provide expert input on specific topics like enforcement of IP
rights and emerging global challenges in IP.
Membership of WIPO
Eligibility for Membership:
o Membership is open to:
States that are members of the United Nations.
Members of the International Atomic Energy Agency
(IAEA).
Members of any other specialized UN agency.
o Membership Process:
Countries must sign the WIPO Convention and formally
ratify or accede to it.
Rights of Members:
o Participate in General Assembly meetings and policy
discussions.
o Elect members to WIPO’s governing bodies.
o Access WIPO-administered services, such as filing patents or
trademarks internationally.
Conclusion
WIPO plays a pivotal role in promoting innovation, creativity, and
economic growth by ensuring effective intellectual property protection
globally. With its robust structure, comprehensive functions, and
commitment to equitable IP governance, WIPO facilitates cooperation
among nations and supports creators, innovators, and businesses
worldwide.
Paris Convention for the Protection of Industrial Property (1883)
The Paris Convention for the Protection of Industrial Property is
one of the oldest and most significant international treaties in the field of
intellectual property (IP). It was adopted in 1883 and has played a pivotal
role in shaping global IP laws and practices.
Salient Features
1. First Multilateral IP Treaty:
o The Paris Convention was the first international treaty aimed
at protecting industrial property rights across borders.
2. Broad Scope of Protection:
o Covers patents, trademarks, industrial designs, utility models,
trade names, service marks, geographical indications, and
suppression of unfair competition.
3. Principle of National Treatment:
o Member countries must treat foreign nationals the same way
they treat their own nationals concerning IP protection.
o Example: A French patent holder is entitled to the same
protection in India as an Indian patent holder.
4. Right of Priority:
o An applicant who files for IP protection in one member country
has a priority period to file the same application in other
member countries without losing the original filing date.
o Priority Periods:
Patents: 12 months
Trademarks and Industrial Designs: 6 months
5. Independence of Patents:
o A patent granted in one member country is independent of
patents for the same invention in other countries. Revocation
or invalidation in one country does not affect patents in other
countries.
6. Unfair Competition:
oProhibits acts of unfair competition, such as
misrepresentation, false advertising, and confusion about
goods or services.
7. Non-Mandatory Substantive Harmonization:
o The Paris Convention does not require countries to adopt
identical IP laws but establishes minimum standards of
protection.
Key Objects of the Paris Convention
1. Equal Treatment Across Member States:
o Establish the principle of National Treatment, which ensures
that citizens of one member state receive the same protection
for their industrial property rights in another member state as
the citizens of that state.
2. Right of Priority:
o Facilitate the international filing of patents, trademarks, and
designs through the Right of Priority. This allows applicants to
claim the filing date of their first application in one member
country when filing in other member states within a specific
time frame (12 months for patents, 6 months for trademarks
and designs).
3. Protection Against Unfair Competition:
o Promote fair trade practices and prevent actions such as
misrepresentation, misleading advertising, or exploitation of a
competitor’s goodwill.
4. Safeguard Well-Known Trademarks:
o Ensure the protection of well-known trademarks across
member countries, even if they are not registered in a
particular country.
5. Independence of Patents:
o Ensure that patents granted in one member country are
independent of patents in other member states. A patent
refusal or invalidation in one country does not affect its status
in other countries.
6. Minimum Standards for Industrial Property Protection:
o Set baseline standards for the protection of patents,
trademarks, industrial designs, trade names, utility models,
geographical indications, and unfair competition.
7. Flexibility for Domestic Legislation:
o Allow member states to adopt their own laws for industrial
property rights while adhering to the principles and
obligations outlined in the Paris Convention.
8. International Cooperation:
o Foster global collaboration and information-sharing in matters
of industrial property protection.
Structure
The Union of the Paris Convention currently has 179 member
countries (as of January 2025).
The treaty is administered by the World Intellectual Property
Organization (WIPO).
Revisions were made at various diplomatic conferences, such as in
Brussels (1900), Washington (1911), The Hague (1925), London
(1934), Lisbon (1958), and Stockholm (1967).
Key Provisions
1. Industrial Property Protection (Article 1):
The treaty applies to:
o Patents
o Utility models
o Industrial designs
o Trademarks
o Service marks
o Trade names
o Geographical indications
o Suppression of unfair competition.
2. National Treatment (Article 2 & 3):
Foreign nationals enjoy the same rights as nationals in IP protection.
3. Right of Priority (Article 4):
Enables applicants to claim priority based on the first filing date in
one member country when filing in other countries.
4. Independence of Patents (Article 4bis):
The grant of a patent in one country does not depend on its grant in
another.
5. Protection Against Unfair Competition (Article 10bis):
Prevents acts like:
o Imitation of trademarks or trade dress.
o Misleading the public about the quality or origin of goods.
Functions
1. Facilitating IP Protection Across Borders:
o Simplifies the process of obtaining IP protection in multiple
jurisdictions.
2. Encouraging Innovation and Trade:
o Provides confidence to inventors and businesses in protecting
their IP internationally.
3. Promoting Fair Competition:
o Prevents unfair practices that could harm businesses and
consumers.
4. Establishing Global Standards:
o Ensures uniformity in IP laws while respecting national
sovereignty.
Advantages of the Paris Convention
1. Ease of International Filings:
o The priority system prevents loss of rights for inventors when
filing in multiple countries.
2. Equal Treatment:
o Ensures foreign applicants are not discriminated against.
3. Encourages Global Innovation:
o Strengthens protection, motivating inventors and creators to
innovate.
Challenges and Criticisms
1. No Enforcement Mechanism:
o The Convention lacks a mechanism to enforce compliance by
member states.
2. Limited Harmonization:
o Substantive laws are not fully harmonized, leading to
variations in IP protection levels.
3. Exclusion of Copyright:
o The Convention focuses on industrial property and does not
include copyright protection (addressed by the Berne
Convention).
Notable Cases Referencing the Paris Convention
1. Samsung Electronics Co. Ltd. v. Kapil Wadhwa & Others:
o The Delhi High Court upheld trademark protection under the
Paris Convention, emphasizing the principle of national
treatment.
2. Milmet Oftho Industries & Ors. v. Allergan Inc. (2004):
o The Supreme Court of India recognized trademark rights for
international companies based on prior use, citing principles
aligned with the Paris Convention.
3. DuPont v. Imperial Chemical Industries:
o Addressed the issue of unfair competition, reinforcing the
prohibition of deceptive practices under Article 10bis.
Conclusion
The Paris Convention remains a cornerstone of international IP law,
enabling seamless protection for creators and innovators worldwide.
Despite its limitations, its principles of national treatment, priority rights,
and fair competition have set the foundation for subsequent treaties and
agreements, making it a critical instrument in the global IP framework.
Madrid Convention for the Protection of Industrial Property
(1891)
The Madrid Convention for the Protection of Industrial Property is
one of the key international treaties focusing on the registration and
management of trademarks across multiple jurisdictions. This system
allows businesses and individuals to efficiently protect their trademarks in
multiple countries with a single application.
Salient Features
1. Simplified Trademark Registration:
o Facilitates a centralized filing system for international
trademark registration through a single application.
2. Madrid Agreement (1891) and Madrid Protocol (1989):
o The system operates under two treaties:
Madrid Agreement (1891): Older system with limited
members.
Madrid Protocol (1989): A more flexible and
modernized system, allowing broader participation.
3. International Registration:
o Applicants can register their trademarks in multiple member
countries by submitting a single application to the World
Intellectual Property Organization (WIPO).
4. Central Administration by WIPO:
o WIPO administers the Madrid System, maintaining an
international register of trademarks and simplifying renewals
and changes.
5. Cost-Effective:
o Reduces costs by avoiding the need for separate national
applications in each jurisdiction.
6. Flexibility in Territorial Expansion:
o Trademark owners can expand protection to additional
member countries after the initial registration.
7. Uniform Protection:
o Ensures consistent trademark protection across member
countries.
Structure of the Madrid System
1. Applicant:
o An individual or legal entity from a member country can file
for registration.
2. National or Regional IP Office:
o Applications are filed through the applicant’s home country IP
office (referred to as the "Office of Origin").
3. WIPO:
o WIPO processes the application and registers the mark in the
International Register.
4. Designated Member Countries:
o The trademark is examined according to the national laws of
the countries where protection is sought.
5. Renewal:
o International registrations are valid for 10 years and can be
renewed indefinitely.
Functions
1. Streamlined Trademark Filing:
o Facilitates international registration through a single, unified
process.
2. Protection Across Jurisdictions:
o Extends trademark protection to multiple member countries.
3. Monitoring and Maintenance:
o Simplifies administrative tasks like renewals, transfers, or
modifications to the trademark.
4. Encouraging Trade and Innovation:
o Provides businesses with a cost-effective means to protect
their brands globally, fostering international trade.
Advantages of the Madrid System
1. Single Application:
o No need for separate filings in each country, reducing
paperwork and duplication of effort.
2. Cost Savings:
o Avoids multiple translation, legal, and agent fees.
3. Simplified Management:
o One centralized registration for renewals and updates, such as
changes in ownership or address.
4. Global Reach:
o Protects trademarks in over 130 member countries (as of
January 2025), covering most major markets.
Challenges and Limitations
1. Dependency on Home Registration:
o The international application is dependent on the validity of
the home country's trademark registration for the first five
years.
2. National Examination Standards:
o Each country applies its own laws and criteria, leading to
potential rejections or delays.
3. Limited Scope for Non-Members:
o Only available to applicants from member countries.
4. Translation Issues:
o While the system simplifies registration, translation errors in
documentation can cause issues.
Membership
As of January 2025, the Madrid System has 130+ member
countries, including major economies like the US, EU, China, India,
and Japan.
Membership is open to:
o States that are parties to the Paris Convention for the
Protection of Industrial Property.
o Intergovernmental organizations like the European Union
(EU).
Case Laws
1. Nestlé S.A. v. Goya Foods Inc.:
o This case highlighted the importance of uniform trademark
protection under the Madrid System, as Nestlé successfully
defended its trademark rights internationally.
2. Apple Inc. v. Mi Pad:
o Apple used its trademark registered under the Madrid System
to oppose Xiaomi's registration of "Mi Pad" in the EU,
showcasing how international registration helps prevent
potential infringement.
Conclusion
The Madrid System is a cornerstone in the international trademark
framework, offering an efficient and cost-effective method for businesses
to secure global protection for their brands. By fostering uniformity and
simplifying administration, it plays a vital role in supporting international
trade and innovation while ensuring trademark owners can protect their
rights in the increasingly globalized economy.
Patent Cooperation Treaty (PCT)
The Patent Cooperation Treaty (PCT) is an international treaty that
simplifies the process of seeking patent protection for an invention in
multiple countries. It provides a unified procedure for filing patent
applications, streamlining and reducing the cost of protecting inventions
globally.
The PCT was adopted in 1970, came into force in 1978, and is
administered by the World Intellectual Property Organization
(WIPO).
Objectives of the PCT
1. Simplify the Patent Filing Process:
o To provide inventors with a unified application system for
seeking patent protection in multiple countries.
2. Reduce Costs:
o To eliminate the need for multiple applications and associated
expenses like translations and filing fees for each individual
country.
3. Facilitate Decision-Making:
o To provide applicants and national patent offices with a
comprehensive international search and examination system
to assess the patentability of an invention.
4. Promote International Cooperation:
o To strengthen global patent systems through shared resources
and collaboration among member states.
5. Enhance the Quality of Patents:
o By providing international search reports and preliminary
examination reports, applicants can improve the quality of
their patent applications before entering national phases.
Structure of the PCT
1. International Bureau (IB):
o Administered by WIPO, the International Bureau is responsible
for maintaining records, publishing applications, and
coordinating with national/regional patent offices.
2. Receiving Office (RO):
o The first point of contact for applicants. It processes and
forwards international applications to WIPO and relevant
authorities.
3. International Searching Authorities (ISAs):
o Conduct searches to identify prior art and determine the
novelty and inventive step of an invention. Examples include
the European Patent Office (EPO) and the USPTO.
4. International Preliminary Examining Authorities (IPEAs):
o Carry out optional preliminary examinations to provide an
opinion on whether the invention meets patentability
requirements.
5. National/Regional Patent Offices:
o Handle the final grant or rejection of patents in the designated
countries during the national phase.
Functions of the PCT
1. Unified Patent Filing:
o Allows inventors to file a single international patent
application for protection in multiple member countries.
2. International Search Report (ISR):
o Provides an overview of prior art related to the invention,
helping applicants evaluate the patentability of their
invention.
3. Publication of Applications:
o WIPO publishes the international patent applications, making
them publicly available 18 months after the earliest filing
date.
4. International Preliminary Examination (Optional):
o Offers a detailed assessment of the invention's compliance
with patentability criteria, including novelty, inventive step,
and industrial applicability.
5. Facilitation of National Phase Entry:
o Provides a streamlined process for entering the national
patent systems of designated countries after the international
phase.
Advantages of the PCT Over the National Patent System
1. Cost-Effectiveness:
o A single international application reduces the need for filing
separate applications in each country, saving translation,
attorney, and filing fees.
2. Simplified Procedure:
o The PCT provides a unified platform, allowing applicants to
delay national filings for up to 30 months, giving them time to
evaluate the commercial potential of their invention.
3. Comprehensive Examination:
o The international search and preliminary examination provide
insights into the patentability of the invention, reducing the
risk of rejection in the national phase.
4. Flexibility in Decision-Making:
o Applicants have more time to decide in which countries they
wish to pursue patent protection.
5. Transparency:
o Early publication of patent applications ensures that
applicants can gauge the potential impact of prior art on their
invention.
6. Facilitates Global Innovation:
o Encourages international cooperation and access to
technological advancements by simplifying the patent
process.
7. Enhanced Quality of Patents:
o The optional international preliminary examination allows
applicants to refine their applications before entering the
national phase.
Limitations of the PCT
1. No Guarantee of Patent Grant:
o The PCT system only facilitates the process; the final grant of
a patent is determined by individual national patent offices.
2. High Costs at the National Phase:
o Although initial costs are reduced, translation and national
filing fees at the national phase can still be substantial.
3. Limited Scope:
o Only member states of the PCT are covered, meaning
protection in non-member countries requires separate
applications.
Case Study Example
Amazon's One-Click Patent:
o Amazon filed a PCT application for its "One-Click" ordering
system, allowing it to seek patent protection in multiple
countries through a single application. The PCT system
provided Amazon with time to assess the commercial value of
its invention before entering national phases.
Membership of the PCT
The PCT currently has 157 member countries (as of January
2025), including major economies such as the United States,
European Union countries, India, China, and Japan.
Membership is open to countries that are members of the Paris
Convention for the Protection of Industrial Property.
Conclusion
The PCT has revolutionized the process of obtaining international patent
protection. By providing a streamlined, cost-effective, and comprehensive
system, it has made it easier for inventors and businesses to protect their
innovations globally. While it does not guarantee the grant of patents, it
serves as an indispensable tool for navigating the complexities of the
international patent landscape.
