We have specific sections covering French patents, European patents, unitary patents, and PCT applications.

However, as you know, these are not the only topics.

While the sources of law concerning patents were initially national, countries quickly realized that harmonizing their law (on industrial property) was necessary.

Here is a brief overview of the international conventions that have contributed to this harmonization.

Historical Introduction

As early as the mid-19th century, and with the growth of international trade, intellectual property became a major issue for states.

Thus, numerous international conventions were signed to address this issue, either bilaterally (i.e., between two states) or multilaterally (i.e., between 3, 4, 5,… 177 states).

It should be noted that these conventions did not always exclusively target intellectual property but could address broader topics such as international trade in general.

The increase in the number of international conventions has not always simplified national law.

Indeed, each convention added its own provisions to national law, provisions that did not necessarily always align in the same direction.

Therefore, the need arose to harmonize national laws through major international conventions involving the largest possible number of contracting states.

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

However, major conventions often do not lead to rapid compromises.

Indeed, divergent economic interests or even political frustrations hinder the adoption of common provisions at an extensive level.

Therefore, while multilateral international conventions are preferred by countries (when possible), the conclusion of bilateral conventions (such as « free trade agreements » or « economic partnership agreements » at the European level) remains relevant today.

Global Patent Conventions

By way of introduction, it should be noted that the terms « convention, » « treaty, » « agreement, » etc., should be interpreted as synonyms. There is no hierarchy among these terms. The use of one term over another is often merely a matter of « trend. »

The term « arrangement » refers to a provision of the Paris Convention that states that « countries may arrange » certain matters. But once again, this term remains a synonym!

The Paris Convention

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

This convention is administered by WIPO (World Intellectual Property Organization).

For the record, this convention is often referred to as the « Paris Union Convention (or PUC), » but this is a misnomer. Indeed, the « Union » refers to the members of the convention (e.g., « France is part of the Paris Convention Union »). But hey, it’s a minor detail 🙂

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

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

However, the « priority » often overshadows other major advancements. 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 commerce proper, but also to the domain of agricultural and extractive industries and to all manufactured or natural products »;
  • Territoriality of protection (Art. 1(1)): a patent has legal effect only within the country for which it has been granted. Outside this country, the rights do not necessarily exist;
  • Independence of titles (Art. 4bis): the loss of a title in a given country, whether voluntary or not, does not result in any loss in another country;
  • Equality between nationals and Union nationals (national treatment clause) (Art. 2(1)): the treatment of nationals must not be more favorable than the treatment of nationals (i.e., nationals of that country, as well as foreigners domiciled in that country, or foreigners having an effective and serious industrial or commercial establishment, as defined in Art. 3 of the Paris Convention) of Union countries. Note that the treatment of its own nationals may be less favorable, which is not prohibited;
  • Protection signs (Art. 5(D)): symbols such as « Patented, » « ©, » « ®, » « ™ » are not mandatory to exercise one’s rights;
  • Grace period for annuities (Art. 5bis): grace periods are at least 6 months (without justification) for the payment of annuities (possibly with a surcharge). Thus, forgetting an annuity does not immediately cause the patent to lapse;
  • Temporary protection for certain international exhibitions (Art. 11): I cite this article mainly to warn you. Indeed, to obtain this temporary protection, the exhibition must be official or officially recognized. In practice, there are very few such exhibitions, and it is difficult to determine whether a given exhibition falls into this category… so forget about it!
  • National office (Art. 12): Each country of the Union (of Paris) is obligated to have a national service for industrial property.
  • The inventor has the right to be mentioned in the patent (Art. 4ter): but they may also refuse… in short, it is their decision;
  • An unauthorized invention may be patented (Art. 4quater): thus, a patent cannot be refused or invalidated based on a prohibition of sale or manufacture (for example, the sale of abortion pills is prohibited in Ireland), or on the need for administrative authorization (for example, marketing authorization or MA for drugs);
  • Compulsory license (Art. 5): the Paris Convention allows states to create a compulsory license, but it strictly regulates it. A compulsory license allows the state to force the patent proprietor to grant (or grant to a third party) a license, for example, if the latter does not work the patent;
  • Infringing items included in means of transport (Art. 5ter): imagine you buy a car in France and go on vacation in Germany. For some reason, your car has wheels that infringe a German patent but no French patent. Are you infringing when crossing the border? To avoid such issues, the Paris Convention excludes any infringement if the vehicle only temporarily enters a member country of the Union (of Paris).

Patent Cooperation Treaty (PCT)

This treaty known as the PCT (for « Patent Cooperation Treaty » in English) was signed in 1970 in Washington.

It is administered by WIPO (World Intellectual Property Organization).

This treaty has 152 member states. To become a member, it is necessary to also be a member of the Paris Convention. It must be said that this treaty is a tremendous success: having so many members after less than 50 years of existence is sufficiently rare to be noted. In 2017, 243,500 patent applications were filed via the PCT route (which is impressive).

This treaty addresses only formalities (filing procedures, examination procedures, etc.).

This treaty provides for a single filing of a patent application with WIPO. A prior art search will then be conducted by a major national or regional office (e.g., the EPO, USPTO, or KIPO) on behalf of WIPO.

Strictly speaking, there is no « international patent, » as after a period of 30 months (with some exceptions), the applicant must request entry into the national phase in the countries they have selected. National examination will then begin in each country, and the outcome of the national applications (rejection or grant of a patent) may differ from one country to another.

The PCT procedure thus allows the applicant to « gain » time to reflect and evaluate potential markets, while for member states, it enables the pooling of prior art searches, resulting in time and cost savings. However, it should be noted that some offices may still conduct a supplementary search upon entry into the national phase if they did not perform the international search themselves.

Strasbourg Agreement

The Strasbourg Agreement administered by WIPO was signed in 1971.

It has 62 member states but is actually applied by a larger number of countries. This peculiarity is explained by the fact that initially, each member had to pay a (rather substantial) official fee to participate « actively » in this agreement (i.e., to vote). This official fee no longer exists today.

Indeed, this agreement aims to implement an International Classification (or IPC) for patents. An international classification allows offices to classify the patent applications they receive in a uniform hierarchical system, thereby facilitating future searches at the international level.

Of course, not being a party to this agreement does not prohibit the use of the international classification. However, no request for modification of this classification is possible for a non-member state (i.e., there is no voting right).

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

  • 8 sections (uppercase letter from A to H);
  • subsections (no symbol);
  • classes (2 digits added to the previous section);
  • subclasses (an uppercase letter added to the previous class);
  • main groups (digits added to the previous subclass);
  • subgroups (digits added to the previous group).

For example, the field G10L 21/003 pertains to patent applications or patents related to voice quality modification.

This treaty addresses only formalities and not substantive issues (procedural treaty).

Budapest Treaty

The Budapest Treaty administered by WIPO was signed in 1977.

It has 80 members and deals exclusively with procedures.

This treaty is based on the observation that the description (written text) and drawings attached to the application are not always sufficient to precisely describe the invention, particularly in the field of microorganisms. Thus, the deposit of a living microorganism may be necessary to ensure sufficient disclosure of the invention.

However, providing a sample of the living microorganism to the office of each country for which protection is sought can be quite cumbersome or even complex. This may pose problems related to transport, storage, etc., especially if the microorganism is hazardous to humans or the environment.

This treaty thus proposes to make only a single deposit with an « International Depositary Authority » (IDA) for culture collections (i.e., an entity authorized to preserve this sample, such as the Institut Pasteur). Today, there are 47 IDAs for all member states.

In short, it is a kind of PCT for microorganisms 🙂

TRIPS Agreement

The TRIPS Agreement or Agreement on « Trade-Related Aspects of Intellectual Property Rights » was signed in 1994.

This agreement, administered by the WTO (and not by WIPO as with all previous treaties), is binding on all its members (164 Members, i.e., states, intergovernmental organizations, and separate customs territories). A country cannot accede to the agreement if it is not a member of the WTO, and vice versa.

The content of the TRIPS Agreement

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

It incorporates the Paris Convention by reference. This, incidentally, allows for better enforcement of the Convention.

Indeed, regarding WIPO, the International Court of Justice (ICJ) has jurisdiction in disputes between two states. However, in the event of a dispute brought before it, the ICJ has no means to compel a non-compliant country (e.g., national legislation that is not in conformity) to comply. For the WTO, coercive mechanisms already exist and have proven effective: the complaining country may, after validation by the WTO tribunal, apply the trade sanctions it deems appropriate (e.g., taxation of certain products, etc.). Such sanctions, when intelligently chosen, quickly bring the non-compliant country into line.

This explains why it is highly advantageous to incorporate the Paris Convention by reference into this Agreement.

Furthermore, this agreement addresses new and highly relevant points that were missing from the Paris Convention:

  • Minimum term of protection (Art. 33): the minimum term of protection for patents is 20 years;
  • Definition of exclusive rights granted by patents (Art. 28);
  • Definition of excluded subject matter (Art. 27): for example, diagnostic, therapeutic, and surgical methods, plants, animals other than microorganisms, etc.;
  • Definition of exceptions (Art. 30 and 31);
  • Clarification on compulsory licenses (Art. 31).

A bit of history…

It is quite interesting to explore the reasons behind the adoption of this agreement within the WTO rather than WIPO. Here is a brief historical overview…

In the 1980s, intense negotiations were initiated within WIPO by communist countries and developing nations to relax certain aspects of international intellectual property protection (particularly regarding compulsory licenses). The United States, Europe, Australia, and others rejected these relaxations, forming a blocking minority.

While these countries avoided the worst (for them), no further negotiations within WIPO were possible in the short term, as communist and developing countries were likely to condition any new negotiations on prior discussions regarding compulsory licenses. A new « playing field » was therefore needed: the GATT (or « General Agreement on Tariffs and Trade » in English, now known as the WTO).

Although WTO rules require unanimity, rather than a majority as in WIPO, the influence of developed countries was considerable given the economic market they represented: if developed countries reached an agreement, other countries had to follow to avoid severe trade sanctions.

Thus, developed countries turned to the GATT and requested the opening of negotiations on intellectual property in the broad sense. Other countries, reluctant at first, initially refused, arguing that not all aspects of intellectual property relate to trade (which is, after all, the objective of the GATT). They then made a counterproposal: « Yes to negotiations on counterfeiting and piracy. » This counterproposal was much more in line with the GATT’s objectives.

Nevertheless, developed countries refused to limit the negotiation mandate to such a narrow scope. To secure the support of the most reluctant parties, they promised that the opening of « negotiations on intellectual property in the broad sense » would be accompanied by an attractive counterpart: opening their domestic markets to developing countries.

To date, the TRIPS Agreement has been concluded and is in effect… However, the opening of markets is far from being a reality: the frustration of developing countries regarding this agreement is palpable, and new negotiations on intellectual property appear to be compromised for some time to come!

Patent Law Treaty

This PLT treaty (for « Patent Law Treaty » in English), signed in 2000, has 40 members. It is a sort of counterpart to the TLT (for « Trademark Law Treaty ») for trademarks, signed in 1994.

It exclusively addresses procedural matters.

Indeed, it establishes a list of maximum requirements that member states may demand from foreign filers. Some states, not necessarily intentionally, impose highly burdensome requirements on filers, such as a signature from inventors certified by a local notary… 

Regional international conventions in the field of patents

Below is a non-exhaustive list of regional international conventions, presented in chronological order.

I will not dwell on them at length, but it seems essential to mention them.

Libreville Agreement

Yes, indeed, this is the first regional convention, and it pertains to the African continent.

The Libreville Agreement was signed in 1962 in Libreville and includes 17 member countries, all African and primarily French-speaking (Maghreb countries are not part of it, nor are former Belgian colonies). It addresses both substantive and procedural matters.

This agreement gave rise to the OAPI (African Intellectual Property Organization). OAPI is an intergovernmental body that grants unitary patents covering the entire territory of its member states. None of its members has a national office or even a national patent system.

To ensure legal uniformity, this agreement also includes annexes that serve as actual laws. Thus, each country shares the exact same patent law (for example).

Finally, since no intergovernmental court was established by this agreement, national courts of member states have jurisdiction over the validity of patents issued by OAPI and infringement matters.

European Patent Convention (EPC)

This convention, known as the EPC (or « Munich Convention »), was signed in 1973 in… Munich.

Beware, this is not a European Union convention! Indeed, 38 countries have signed this convention (including some EU members, but not all).

This convention addresses both substantive and procedural matters. It establishes a system for the examination and grant of European patents. If a European patent is granted, it does not confer any rights: for example, you cannot prohibit the importation into France of an infringing product if you only hold a European patent (I can see your eyes widening!).

Rest assured, I did not say it was useless 🙂 : you can « validate » this European patent in all member states to obtain a national part of the European patent (France, Germany, etc.). These validations will then grant you exclusive rights in the respective countries.

Validation consists of simply paying official fees (and possibly providing a translation, depending on the country), but there is no examination.

Lusaka Agreement

This agreement, signed in 1976, established ARIPO (African Regional Intellectual Property Organization). It brings together 19 countries from sub-Saharan Africa, primarily English-speaking (though South Africa is notably absent).

This agreement was supplemented by the Harare Protocol (which includes 17 members). As with OAPI, a regional patent was created, but it coexists with the national patents of each member state.

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. The countries of the former USSR were accustomed to a centralized system of author’s certificates or patents in Moscow and did not have their own patent offices or patent laws.

Thus, this convention aims to pool efforts among certain former USSR countries to build a new patent system (within the EAPO).

This convention addresses both substantive and procedural matters.

Patent Regulation of the Cooperation Council for the Arab States of the Gulf (GCC)

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

To harmonize the economic and financial systems of its member states, a regional patent is offered for its six member countries.