International conventions on patents

We have specific sections concerning French patents, European patents, unitary patents or PCT applications.

Nevertheless, you know, there are not only these themes.

While the sources of patent rights were initially national, countries soon realized that harmonization of their (industrial property) rights was necessary.

Here is a brief overview of the international conventions that participated in this harmonization.

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Chapter 1. Historical Introduction

From the middle of the nineteenth century, and with the growth of international trade, intellectual property has become a major issue for States.

Thus, many international conventions have been signed to deal with this issue, either bilaterally (that is, between two states) or multilaterally (ie, between 3, 4, 5, ... 177 States).

It should be noted that these conventions have not always focused exclusively on intellectual property, but may address broader issues such as international trade in general.

The increase in the number of international conventions has not always been a source of simplification for national law.

In fact, each convention added to its national positive law its own provisions, provisions which did not necessarily always have the same meaning.

It has therefore become necessary to harmonize national laws by major international conventions. with the largest number of States contractors.

Thus regional conventions (Europe, Africa, etc.) have emerged, and even conventions with a global focus.

Nevertheless, large conventions do not often lead to quick compromises.

Indeed, diverging economic interests or even political frustrations hinder the adoption of common provisions at a broad level.

Therefore, we will see that even if the international multilateral conventions are favored by the countries (where these are possible), the conclusion of bilateral conventions ("free trade agreement" or economic partnership agreement "at the European level) remain still relevant today.

Chapter 2. International Conventions with Worldwide Patent Purposes

As an introductory point, it should be emphasized that the terms "convention", "treaty", "agreement", etc. should be interpreted as synonyms. There is no hierarchy between these terms. The use of one in place of another is often only a question of "fashion" ...

The term "arrangement" refers to a provision of the Paris Convention which states that "countries may arrange" on certain subjects. But again, this term remains a synonym!

Section 2.1. The Paris Convention

The Paris convention was signed in 1883 in Paris and now has 177 Member States. To be a member of the Paris Convention, it is necessary to belong to the UN or one of its specialized agencies (WHO, UNESCO, UNICEF, etc.).

This agreement is managed by theWIPO (World Intellectual Property Organization).

For the record, this convention is often called the Paris Union Convention (or UPC), but it is an abuse of language. Indeed, the "Union" refers to the members of the convention (eg "France is part of the Union of the Paris Convention"). But it's a detail 🙂

This convention addresses substantive issues (patentability requirements, etc.).

The main advance of this convention is the establishment of a right of priority. This right of priority allows a national of a country of the Union (of Paris) to be protected (for 12 months after filing a patent in a country of the Union) in all the countries of the Union as if he had filed a patent. This protection is granted provided that the deposit in the country concerned is actually made within the 12-month period.

However, "priority" often masks other major advances. It is important to note that this convention standardizes and clarifies the following points:

  • Definition of industrial property (art.1 (3)): industrial property "applies not only to industry and trade proper, but also to the field of agricultural and mining industries and all manufactured or natural products";
  • Territoriality of protection (Article 1 (1)): a patent has legal effects only within the country for which it has been granted. Outside this country, rights do not necessarily exist;
  • Independence of titles (article 4bis): the loss of a title in a given country, whether voluntarily or not, does not cause any loss in another country;
  • Equality between nationals and Union nationals (national treatment clause) (Article 2 (1)): the treatment of nationals must not be more favorable than the treatment of nationals (ie nationals of that country, but also foreigners domiciled in that country, or foreigners with a real and effective industrial or commercial establishment as defined in Article 3 of the CUP) of the countries of the Union. Attention, the treatment of its own nationals may be more unfavorable, it is not prohibited;
  • Signs of protection (Article 5 (D)): Acronyms such as "Patented", "©", "®", "™" are not mandatory in order to exercise their rights;
  • Grace period for annuities (Article 5bis): grace periods are at least 6 months (without proof) for the payment of annuities (possibly with surcharge). Thus, forgetting an annuity does not immediately "drop" the patent;
  • Temporary protection for certain international exhibitions (Article 11): I quote this article to especially warn you. In order to obtain this temporary protection, the exhibition must be official or officially recognized. In practice, there is very little and especially, it is difficult to know if a given exposure falls into this category ... so forget!
  • National Office (Article 12): Each country of the Union (Paris) has an obligation to have a national service for industrial property.
  • The inventor has the right to be mentioned in the patent (Article 4ter): but he can also refuse ... in short he decides;
  • An unauthorized invention may be patented (Article 4quater): thus, a patent can not be refused or invalidated on the basis of a prohibition of sale or manufacture (for example, the sale of abortion pills is prohibited in Ireland), or a necessary administrative authorization (for example, marketing authorization or marketing authorization for medicines);
  • Compulsory license (Article 5): the Paris Convention allows states to create a compulsory license, but with strong supervision. A compulsory license allows the State to force the patentee to grant it (or to grant a third party) a license, for example, if the latter does not exploit it;
  • Counterfeits included in means of transport (article 5ter): imagine that you are buying a car in France and that you are going on holiday in Germany. For a given reason, your car has wheels violating a German patent but no French patent. Are you in breach when crossing the border? To avoid this kind of problem, the Paris Convention excludes any offense if the car only enters temporarily a member country of the Union (of Paris).

Section 2.2. Patent Cooperation Treaty (PCT)

This treaty says PCT (for "Patent Cooperation Treaty" in English) was signed in 1970 in Washington.

It is managed by theWIPO (World Intellectual Property Organization).

This treaty has 152 Member States. To be a member, it is necessary to be a member of the Paris Convention. It must be said that this treaty is a huge success: as many members after less than 50 years of existence is rare enough to be stressed. In 2017, 243,500 PCT patent applications were filed (which is impressive).

This treaty deals only with questions of form (filing procedures, examination procedures, etc.).

This treaty proposes a single deposit of a patent application to WIPO. A bibliographic search will then be carried out by a large national or regional office (eg EPO, USPTO, KIPO) on behalf of WIPO.

Strictly speaking, there is no "international patent", because after a period of 30 months (there are exceptions), the applicant will have to request the entry phase in the countries he has chosen . The national examination will then begin in each country and the fate of the national applications (rejection or issue of a title) may differ from one country to another.

The PCT procedure therefore allows the applicant to "gain" time to reflect and evaluate potential markets, and for the member countries to pool the search for anteriority, which saves time and money. 'money. It should be noted, however, that some Offices still carry out a complementary search when they enter the national phase if they have not carried out the international search themselves.

Section 2.3. Strasbourg Agreement

TheStrasbourg arrangement managed by WIPO was signed in 1971.

It has 62 Member States, but in reality is being applied by a larger number of countries. This quirk is explained by the fact that initially each member had to pay a tax (quite important) to participate "actively" in this arrangement (ie to vote). This tax has disappeared today.

Indeed, the purpose of this arrangement is to implement a international classification (or CIB) for patents. An international classification allows offices to classify the patent applications they receive into a uniform hierarchical system, thus facilitating future international research.

Of course, not being part of this arrangement does not preclude the use of the international classification. Nevertheless, no request for modification of this classification is possible for a non-member State (ie there is no voting right).

Today, this classification comprises 70,000 domains. In particular, it includes:

  • 8 sections (capital letter A to H);
  • subsections (without symbols);
  • classes (add 2 digits to the previous section);
  • subclasses (we add an uppercase letter to the previous class);
  • major groups (numbers are added to the previous subclass);
  • subgroups (we add numbers to the previous group).

By way of illustration, domain G10L 21/003 relates to applications or patents relating to the modification of the quality of the voice.

This treaty deals only with questions of form and not of substance (procedural treaty).

Section 2.4. Treaty of Budapest

The Treaty of Budapest managed by WIPO was signed in 1977.

It has 80 members and deals exclusively with procedures.

This treaty starts from the observation that the description (written text) and the drawings attached to the application are not always sufficient to describe in a precise way the invention, in particular in the field of microorganisms. Thus, a deposit of a living microorganism may be necessary to have a sufficient description of the invention.

However, it is rather tedious, even complex, to provide the office of each country, for which an application for protection is requested, a sample of the living microorganism. This can cause problems with transportation, storage, etc. especially if this microorganism is dangerous for humans or the environment.

This treaty thus proposes to make only one deposit in an "International Depositary Authority" (ADI) of collection of cultures (ie an organism authorized to preserve this sample, for example thePastor Institute). Today there are 47 ADIs for all Member States.

Basically, it's kind of a PCT of microorganisms 🙂

Section 2.5. TRIPS Agreement

TheTRIPS agreement or agreement on "Aspects of Intellectual Property Rights Affecting Trade" was signed in 1994.

This agreement managed by theWTO (and not by WIPO like all previous treaties) is binding on all its members (ie 164 Members, ie States, inter-governmental organizations and separate customs territories). A country can not join the agreement if it is not a member of the WTO, and vice versa. 

2.5.1. The content of the TRIPS Agreement

This agreement is the first global agreement on all intellectual property.

he takes up the Paris Convention (including it by reference). Which, by the way, allows a better application of it.

As far as WIPO is concerned, the International Court of Justice (ICJ) has jurisdiction in disputes between two States. However, in the event that a dispute is brought before it, it has no means of compelling a country in violation (eg, non-compliant national legislation) to return to the ranks. For the WTO, coercion mechanisms already exist and have proved their worth: the complaining country can, after validation of the WTO tribunal, apply the commercial sanction they want (eg taxation of certain products, etc.) . This sanction, chosen with intelligence, quickly returns the country in violation in the rank.

So you understand why it is very interesting to include by reference the Paris Convention in this Agreement.

In addition, this agreement addresses some very interesting new issues that were missing at CUP:

  • Minimum period of protection (art.33): the minimum term of protection for patents is 20 years;
  • Definition of rights exclusive rights granted by patents (Article 28);
  • Definition of areas excluded from patentability (Article 27): for example, diagnostic, therapeutic and surgical methods, plants, animals other than micro-organisms, etc. ;
  • Definition of exceptions (Articles 30 and 31)
  • Re-clarification on compulsory licenses (Article 31).

2.5.2. For the little story…

It is quite interesting to question the reasons that led to the adoption of this agreement in the WTO and not in WIPO. Here is a little historical reminder ...

In the 1980s, strong negotiations were initiated within WIPO by communist and developing countries to relax certain aspects of international IP protection (especially on compulsory licensing). The United States, Europe, Australia, etc. refused these relaxations by constituting a blocking minority.

If these last countries avoided the worst (for them), no more negotiations within the PMOI were possible in the short term, the communist countries and the developing countries likely to condition these new negotiations to a preliminary negotiation. on compulsory licenses. It was therefore necessary to find a new "playing field": the GATT (or "General Agreement on Tariffs and Trade" in English, now called WTO).

Although WTO rules require unanimity, not a majority, as in the case of the PMOI, the training power of the developed countries was then considerable given the economic market they represented: if developed countries agreement, other countries had to follow in order to avoid heavy trade sanctions.

Thus developed countries turned to the GATT and called for the opening of negotiations on intellectual property in the broad sense. Other countries, reluctant, initially refused, pointing out that not all aspects of intellectual property are trade-related (which is still the objective of the GATT). They then made a counterproposal: "Yes for a negotiation on counterfeiting and piracy". This counterproposal was much more in line with the GATT objective.

Nevertheless, the developed countries refused to reduce the negotiating mandate to its limit. To win the support of the most reluctant, they then promised that the opening of a "negotiation on intellectual property in the broad sense" would be accompanied by an interesting counterpart: an opening of their domestic markets to developing countries .

To date, the TRIPS agreement has been concluded and is effective ... However, the opening of markets is far from being a reality: the frustration of developing countries is palpable around this agreement and new negotiations on at the PI seem to be, still for a certain time, compromised !!

Section 2.6. Patent Law Treaty

This treaty says PLT (for "Patent Law Treaty" in English) signed in 2000 has 40 members. It is a mirror of the Trademark Law Treaty (TLT) signed in 1994.

It focuses exclusively on the procedure.

Indeed, he fixes a list ofmaximum requirements Member States may require foreign applicants. Indeed, some States have fun (not necessarily voluntarily) to ask very compelling things to depositors, such as an inventors signature certified by a local notary ... 

Chapter 3. International Conventions with Regional Patent Purposes

Here are (non-exhaustively) some regional international conventions in chronological order.

I will not dwell long on it, but it seems essential to quote them.

Section 3.1. Libreville Agreement

Yes, yes, it is the first of the regional conventions and it concerns the African continent.

TheLibreville Agreement was signed was signed in 1962 in Libreville and includes 17 member countries, which are African countries, mainly French-speaking (the Maghreb countries are not part of it, nor the former Belgian colonies). It deals with substance but also procedure.

This agreement gives birth to the OAPI (African Organization of Industrial Property). OAPI is an inter-governmental body issuing unique patents for the entire territory of its Member States. Indeed, none of its members has a national office or even a national patent mechanism.

In order to have legal homogeneity, this agreement also provides in its annexes true laws. Thus each country shares exactly the same patent law (for example).

Finally, as no inter-governmental jurisdiction is created by this agreement, national judges of countries are competent to judge the validity of patents issued by OAPI and counterfeiting.

Section 3.2. The European Patent Convention (EPC)

This so-called CBE convention (or also called the "Munich Convention") was signed in 1973 at ... Munich.

Attention, this is not a community convention (or union)! Indeed, 38 countries have signed this convention (including some of the Union, but not all).

This convention deals with substantive issues but also with procedures. This convention establishes a European review and grant mechanism. If a European patent is granted, it gives no rights: for example, you can not prohibit an import into France of a counterfeit product if you have only a European patent (I guess you make eyes all round!).

I reassure you, I did not say it was useless: you can "validate" this European patent in all member countries to obtain a national part of the European patent (France, Germany, ...). These validations will then give you exclusive rights in the different countries.

The validation consists of a simple payment of taxes (and a possible translation according to the countries) but there is no examination.

Section 3.3. Lusaka Agreement

This agreement signed in 1976 created the ARIPO (or "African Regional Intellectual Property Organization"). This agreement brings together 19 countries in sub-Saharan Africa, a predominantly English-speaking country (but the largest absentee is South Africa).

This agreement was supplemented by the Harare Protocol (17 members). As for OAPI, a regional patent has been created but it coexists with the national patents of each of the Member States.

Section 3.4. Eurasian Patent Convention

This convention was signed in 1994 and includes 8 states.

In reality, this convention was created following the dissolution of the USSR. In fact, the countries of the former USSR were accustomed to a mechanism of author's certificate or centralized patent in Moscow and did not have own Offices or patent law.

Thus, this convention aims to pool efforts between some countries of the former USSR for the construction of a new patent system (within the EAPO).

This convention deals with substance and procedure.

Section 3.5. Patent Regulations of the Cooperation Council for the Arab States of the Gulf (or GCC)

This regulation was signed in 1999 by six petro-monarchies of the Persian Gulf.

In order to harmonize the economic and financial system of the Member States, a regional patent is proposed for its 6 Member States.

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