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Primer - Intellectual Property Treaties
Primer - Intellectual Property Treaties
Philippines: 1965 3. The Convention lays down a few common rules that all
Contracting States must follow. The most important are:
The Paris Convention applies to industrial property in the
widest sense, including patents, trademarks, industrial a. Patents. Patents granted in different Contracting
designs, utility models (a kind of "small-scale patent" States for the same invention are independent of
provided for by the laws of some countries), service marks, each other: the granting of a patent in one
trade names (designations under which an industrial or Contracting State does not oblige other Contracting
commercial activity is carried out), geographical indications States to grant a patent; a patent cannot be refused,
(indications of source and appellations of origin) and the annulled or terminated in any Contracting State on
repression of unfair competition. the ground that it has been refused or annulled or
has terminated in any other Contracting State.
The substantive provisions of the Convention fall into three
main categories: national treatment, right of priority, The inventor has the right to be named as such in
common rules. the patent.
1. Under the provisions on national treatment, the The grant of a patent may not be refused, and a
Convention provides that, as regards the protection of patent may not be invalidated, on the ground that
industrial property, each Contracting State must grant the sale of the patented product, or of a product
the same protection to nationals of other Contracting obtained by means of the patented process, is
States that it grants to its own nationals. Nationals of subject to restrictions or limitations resulting from
non-Contracting States are also entitled to national the domestic law.
treatment under the Convention if they are domiciled or
have a real and effective industrial or commercial Each Contracting State that takes legislative
establishment in a Contracting State. measures providing for the grant of compulsory
licenses to prevent the abuses which might result
2. The Convention provides for the right of priority in the from the exclusive rights conferred by a patent may
case of patents (and utility models where they exist), do so only under certain conditions. A compulsory
marks and industrial designs. This right means that, on license (a license not granted by the owner of the
the basis of a regular first application filed in one of the patent but by a public authority of the State
Contracting States, the applicant may, within a certain concerned), based on failure to work or insufficient
period of time (12 months for patents and utility working of the patented invention, may only be
models; 6 months for industrial designs and marks), granted pursuant to a request filed after three years
apply for protection in any of the other Contracting from the grant of the patent or four years from the
States. These subsequent applications will be regarded filing date of the patent application, and it must be
as if they had been filed on the same day as the first refused if the patentee gives legitimate reasons to
application. In other words, they will have priority justify this inaction. Furthermore, forfeiture of a
(hence the expression "right of priority") over patent may not be provided for, except in cases
applications filed by others during the said period of where the grant of a compulsory license would not
time for the same invention, utility model, mark or have been sufficient to prevent the abuse. In the
industrial design. Moreover, these subsequent latter case, proceedings for forfeiture of a patent
applications, being based on the first application, will may be instituted, but only after the expiration of
not be affected by any event that takes place in the two years from the grant of the first compulsory
interval, such as the publication of an invention or the license.
sale of articles bearing a mark or incorporating an
industrial design. One of the great practical advantages b. Marks. The Paris Convention does not regulate the
of this provision is that applicants seeking protection in conditions for the filing and registration of marks
several countries are not required to present all of their which are determined in each Contracting State by
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domestic law. Consequently, no application for the c. Industrial Designs. Industrial designs must be
registration of a mark filed by a national of a protected in each Contracting State, and protection
Contracting State may be refused, nor may a may not be forfeited on the ground that articles
registration be invalidated, on the ground that filing, incorporating the design are not manufactured in
registration or renewal has not been effected in the that State.
country of origin. The registration of a mark
obtained in one Contracting State is independent of d. Trade Names. Protection must be granted to trade
its possible registration in any other country, names in each Contracting State without there
including the country of origin; consequently, the being an obligation to file or register the names.
lapse or annulment of the registration of a mark in
one Contracting State will not affect the validity of e. Indications of Source. Measures must be taken by
the registration in other Contracting States. each Contracting State against direct or indirect use
of a false indication of the source of goods or the
Where a mark has been duly registered in the identity of their producer, manufacturer or trader.
country of origin, it must, on request, be accepted
for filing and protected in its original form in the f. Unfair competition. Each Contracting State must
other Contracting States. Nevertheless, registration provide for effective protection against unfair
may be refused in well-defined cases, such as where competition.
the mark would infringe the acquired rights of third
parties; where it is devoid of distinctive character; The Paris Union, established by the Convention, has an
where it is contrary to morality or public order; or Assembly and an Executive Committee. Every State that is a
where it is of such a nature as to be liable to deceive member of the Union and has adhered to at least the
the public. administrative and final provisions of the Stockholm Act
(1967) is a member of the Assembly. The members of the
If, in any Contracting State, the use of a registered Executive Committee are elected from among the members
mark is compulsory, the registration cannot be of the Union, except for Switzerland, which is a member ex
canceled for non-use until after a reasonable officio. The establishment of the biennial program and
period, and then only if the owner cannot justify this budget of the WIPO Secretariat – as far as the Paris Union is
inaction. concerned – is the task of its Assembly.
Each Contracting State must refuse registration and The Paris Convention, concluded in 1883, was revised at
prohibit the use of marks that constitute a Brussels in 1900, at Washington in 1911, at The Hague in
reproduction, imitation or translation, liable to 1925, at London in 1934, at Lisbon in 1958 and at Stockholm
create confusion, of a mark used for identical and in 1967, and was amended in 1979.
similar goods and considered by the competent
authority of that State to be well known in that State The Convention is open to all States. Instruments of
and to already belong to a person entitled to the ratification or accession must be deposited with the Director
benefits of the Convention. General of WIPO.
1. The three basic principles are the following: ▪ the right to translate,
▪ the right to make adaptations and
a. Works originating in one of the Contracting States arrangements of the work,
(that is, works the author of which is a national of ▪ the right to perform in public dramatic,
such a State or works first published in such a State) dramatico-musical and musical works,
must be given the same protection in each of the ▪ the right to recite in public literary works,
other Contracting States as the latter grants to the ▪ the right to communicate to the public the
works of its own nationals (principle of "national performance of such works,
treatment"). ▪ the right to broadcast (with the possibility that
a Contracting State may provide for a mere right
b. Protection must not be conditional upon to equitable remuneration instead of a right of
compliance with any formality (principle of authorization),
"automatic" protection). ▪ the right to make reproductions in any manner
or form (with the possibility that a Contracting
c. Protection is independent of the existence of State may permit, in certain special cases,
protection in the country of origin of the work reproduction without authorization, provided
(principle of "independence" of protection). If, that the reproduction does not conflict with the
however, a Contracting State provides for a longer normal exploitation of the work and does not
term of protection than the minimum prescribed by unreasonably prejudice the legitimate interests
the Convention and the work ceases to be protected of the author; and the possibility that a
in the country of origin, protection may be denied Contracting State may provide, in the case of
once protection in the country of origin ceases. sound recordings of musical works, for a right to
equitable remuneration),
Note: Under the Agreement on Trade-Related Aspects ▪ the right to use the work as a basis for an
of Intellectual Property Rights (TRIPS Agreement), the audiovisual work, and the right to reproduce,
principles of national treatment, automatic protection distribute, perform in public or communicate to
and independence of protection also bind those World the public that audiovisual work.
Trade Organization (WTO) Members not party to the
Berne Convention. In addition, the TRIPS Agreement Note: Under the TRIPS Agreement, an exclusive
imposes an obligation of "most-favored-nation right of rental must be recognized in respect of
treatment", under which advantages accorded by a computer programs and, under certain conditions,
WTO Member to the nationals of any other country audiovisual works.
must also be accorded to the nationals of all WTO
Members. It is to be noted that the possibility of delayed The Convention also provides for "moral rights",
application of the TRIPS Agreement does not apply to that is, the right to claim authorship of the work and
national treatment and most-favored obligations. the right to object to any mutilation, deformation or
other modification of, or other derogatory action in
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relation to, the work that would be prejudicial to the The Berne Union has an Assembly and an Executive
author's honor or reputation. Committee. Every country that is a member of the Union
and has adhered to at least the administrative and final
c. As to the duration of protection, the general rule is provisions of the Stockholm Act is a member of the
that protection must be granted until the expiration Assembly. The members of the Executive Committee are
of the 50th year after the author's death. There are, elected from among the members of the Union, except for
however, exceptions to this general rule. In the case Switzerland, which is a member ex officio.
of anonymous or pseudonymous works, the term of
protection expires 50 years after the work has been The establishment of the biennial program and budget of
lawfully made available to the public, except if the the WIPO Secretariat – as far as the Berne Union is
pseudonym leaves no doubt as to the author's concerned – is the task of its Assembly.
identity or if the author discloses his or her identity
during that period; in the latter case, the general The Berne Convention, concluded in 1886, was revised at
rule applies. In the case of audiovisual Paris in 1896 and at Berlin in 1908, completed at Berne in
(cinematographic) works, the minimum term of 1914, revised at Rome in 1928, at Brussels in 1948, at
protection is 50 years after the making available of Stockholm in 1967 and at Paris in 1971, and was amended
the work to the public ("release") or – failing such in 1979.
an event – from the creation of the work. In the case
of works of applied art and photographic works, the The Convention is open to all States. Instruments of
minimum term is 25 years from the creation of the ratification or accession must be deposited with the Director
work. General of WIPO.
Note: Under the TRIPS Agreement, any term of Note: It is to be noted that WTO Members, even those not
protection that is calculated on a basis other than party to the Berne Convention, must comply with the
the life of a natural person must be at least 50 years substantive law provisions of the Berne Convention, except
from the first authorized publication of the work, or that WTO Members not party to the Convention are not
– failing such an event – 50 years from the making bound by the moral rights provisions of the Convention.
of the work. However, this rule does not apply to
photographic works, or to works of applied art.
Philippines: 1984 As to duration, protection must last at least until the end of
a 20-year period computed from the end of the year in
The Rome Convention secures protection in performances which (a) the fixation was made, for phonograms and for
for performers, in phonograms for producers of performances incorporated therein; (b) the performance
phonograms and in broadcasts for broadcasting took place, for performances not incorporated in
organizations. phonograms; (c) the broadcast took place. However,
national laws increasingly provide for a 50-year term of
1. Performers (actors, singers, musicians, dancers and protection, at least for phonograms and performances.
those who perform literary or artistic works) are
protected against certain acts to which they have not WIPO is responsible, jointly with the International Labour
consented, such as the broadcasting and Organization (ILO) and the United Nations Educational,
communication to the public of a live performance; the Scientific and Cultural Organization (UNESCO), for the
fixation of the live performance; the reproduction of the administration of the Rome Convention. These three
fixation if the original fixation was made without the organizations constitute the Secretariat of the
performer's consent or if the reproduction was made for Intergovernmental Committee set up under the Convention
purposes different from those for which consent was consisting of the representatives of 12 Contracting States.
given.
The Convention does not provide for the institution of a
2. Producers of phonograms have the right to authorize or Union or budget. It establishes an Intergovernmental
prohibit the direct or indirect reproduction of their Committee composed of Contracting States that considers
phonograms. In the Rome Convention, “phonograms” questions concerning the Convention
means any exclusively aural fixation of sounds of a
performance or of other sounds. Where a phonogram Note: The TRIPS Agreement also contains provisions on the
published for commercial purposes gives rise to protection of related rights. These provisions are different,
secondary uses (such as broadcasting or communication in several respects, from those contained in the Rome
to the public in any form), a single equitable Convention and in the Geneva Convention for the
remuneration must be paid by the user to the Protection of Producers of Phonograms Against
performers, to the producers of the phonograms, or to Unauthorized Duplication of Their Phonograms (1971).
both. Contracting States are free, however, not to apply
this rule or to limit its application. This Convention is open to States party to the Berne
Convention for the Protection of Literary and Artistic Works
3. Broadcasting organizations have the right to authorize (1886) or to the Universal Copyright Convention.
or prohibit certain acts, namely the rebroadcasting of Instruments of ratification or accession must be deposited
their broadcasts; the fixation of their broadcasts; the with the Secretary-General of the United Nations. States
reproduction of such fixations; the communication to may make reservations with regard to the application of
the public of their television broadcasts if such certain provisions.
communication is made in places accessible to the
public against payment of an entrance fee.
BUDAPEST TREATY in China, Italy and the United States of America, two each in
Australia, India, Japan, Poland, the Russian Federation and
ON THE INTERNATIONAL RECOGNITION OF in Spain, and one each in Belgium, Bulgaria, Canada, Chile,
THE DEPOSIT OF MICROORGANISMS FOR THE the Czech Republic, Finland, France, Germany, Hungary,
PURPOSES OF PATENT PROCEDURE (1977) Latvia, Mexico, the Netherlands, Slovakia and Switzerland.
Philippines: 1981 The Treaty makes the patent system of the contracting State
more attractive because it is primarily advantageous to the
The main feature of the Treaty is that a contracting State depositor if he is an applicant for patents in several
which allows or requires the deposit of microorganisms for contracting States; the deposit of a microorganism under
the purposes of patent procedure must recognize, for such the procedures provided for in the Treaty will save him
purposes, the deposit of a microorganism with any money and increase his security. It will save him money
"international depositary authority", irrespective of because, instead of depositing the microorganism in each
whether such authority is on or outside the territory of the and every contracting State in which he files a patent
said State. application referring to that microorganism, he will deposit
it only once, with one depositary authority. The Treaty
Disclosure of the invention is a requirement for the grant of increases the security of the depositor because it establishes
patents. Normally, an invention is disclosed by means of a a uniform system of deposit, recognition and furnishing of
written description. Where an invention involves a samples of microorganisms.
microorganism or the use of a microorganism, disclosure is
not possible in writing but can only be effected by the The Treaty does not provide for the institution of a budget
deposit, with a specialized institution, of a sample of the but it does create a Union and an Assembly whose members
microorganism. In practice, the term "microorganism" is are the States which are party to the Treaty. The main task
interpreted in a broad sense, covering biological material of the Assembly is the amendment of the Regulations issued
the deposit of which is necessary for the purposes of under the Treaty. No State can be requested to pay
disclosure, in particular regarding inventions relating to the contributions to the International Bureau of WIPO on
food and pharmaceutical fields. account of its membership in the Budapest Union or to
establish an "international depositary authority".
It is in order to eliminate the need to deposit in each country
in which protection is sought, that the Treaty provides that The Budapest Treaty was concluded in 1977.
the deposit of a microorganism with any "international
depositary authority" suffices for the purposes of patent The Treaty is open to States party to the Paris Convention
procedure before the national patent offices of all of the for the Protection of Industrial Property (1883). Instruments
contracting States and before any regional patent office (if of ratification or accession must be deposited with the
such a regional office declares that it recognizes the effects Director General of WIPO.
of the Treaty). The European Patent Office (EPO), the
Eurasian Patent Organization (EAPO) and the African
Regional Intellectual Property Organization (ARIPO) have
made such declarations.
PATENT COOPERATION TREATY (1970) the offices of Chile, Egypt and India to act as ISAs have been
signed; however, these offices have not yet commenced
Philippines: 2001 operations.
The Patent Cooperation Treaty (PCT) makes it possible to The international search report and written opinion are
seek patent protection for an invention simultaneously in communicated to the applicant who, after evaluating their
each of a large number of countries by filing an content, may decide to withdraw the application, in
"international" patent application. Such an application may particular where the content of the report and opinion
be filed by anyone who is a national or resident of a PCT suggests that the granting of patents is unlikely, or the
Contracting State. It may generally be filed with the national applicant may decide to amend the claims in the application.
patent office of the Contracting State of which the applicant
is a national or resident or, at the applicant's option, with If the international application is not withdrawn, it is
the International Bureau of WIPO in Geneva. published by the International Bureau, together with the
international search report. The written opinion is not
If the applicant is a national or resident of a Contracting published at that time.
State party to the European Patent Convention, the Harare
Protocol on Patents and Industrial Designs (Harare Before the expiration of 19 months from the priority date,
Protocol), the Bangui Agreement, or the Eurasian Patent the applicant has the option to request a Supplementary
Convention, the international application may also be filed International Searching Authority (SISA) (an ISA willing to
with the European Patent Office (EPO), the African Regional offer this service) to carry out an additional search of
Intellectual Property Organization (ARIPO), the African relevant documentation, specifically focusing on documents
Intellectual Property Organization (OAPI) or the Eurasian in the particular language in which that authority specializes.
Patent Office (EAPO), respectively. The goal of this additional search is to reduce the likelihood
of further documents coming to light in the national phase
The Treaty regulates in detail the formal requirements with that would make granting the patent unlikely.
which international applications must comply.
An applicant that decides to continue with the international
Filing a PCT application has the effect of automatically application with a view to obtaining national (or regional)
designating all Contracting States bound by the PCT on the patents can, in relation to most Contracting States, wait until
international filing date. The effect of the international the end of the thirtieth month from the priority date to
application is the same in each designated State as if a commence the national procedure before each designated
national patent application had been filed with the national office by furnishing a translation (where necessary) of the
patent office of that State. application into the official language of that office, paying to
it the necessary fees and acquiring the services of local
The international application is subjected to an international patent agents.
search. That search is carried out by one of the competent
International Searching Authorities (ISA) under the PCT and If the applicant wishes to make amendments to the
results in an international search report, that is, a listing of application – for example, in order to address documents
the citations of published documents that might affect the identified in the search report and conclusions made in the
patentability of the invention claimed in the international written opinion – and to have the potential patentability of
application. In addition, a preliminary and non-binding the "as-amended" application reviewed – an optional
written opinion on whether the invention appears to meet international preliminary examination may be requested.
patentability criteria in light of the search report results is The result of the preliminary examination is an international
also issued. preliminary report on patentability (IPRP Chapter II) which is
prepared by one of the competent International Preliminary
Note: The patent offices of Australia, Austria, Brazil, Canada, Examining Authorities (IPEA) under the PCT and which
China, Finland, Israel, Japan, the Republic of Korea, the contains a preliminary and non-binding opinion on the
Russian Federation, Spain, Sweden, the United States of patentability of the claimed invention. It provides the
America, the European Patent Office and the Nordic Patent applicant with an even stronger basis on which to evaluate
Institute act as International Searching Authorities under the chances of obtaining a patent and, if the report is
the PCT (status on January 1, 2013). Agreements enabling favorable, a stronger basis on which to continue with the
application before national and regional patent offices. If no
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international preliminary examination has been requested, ▪ is used by the world's major corporations, research
the International Bureau establishes an international institutions and universities in seeking international
preliminary report on patentability (IPRP Chapter I) on the patent protection.
basis of the written opinion of the ISA and communicates
this report to the designated offices. The PCT created a Union which has an Assembly. Every State
party to the PCT is a member of the Assembly. Among the
The procedure under the PCT has great advantages for most important tasks of the Assembly are the amendment
applicants, patent offices and the general public: of the Regulations issued under the Treaty, the adoption of
the biennial program and budget of the Union and the fixing
a. applicants have up to 18 months more than if they had of certain fees connected with the use of the PCT system.
not used the PCT to reflect on the desirability of seeking
protection in foreign countries, appoint local patent The Assembly of the PCT Union has established a special
agents in each foreign country, prepare the necessary measure to benefit (1) natural persons who are nationals of
translations and pay national fees; and reside in States with a per capita national income below
US$3,000, or who are nationals of and reside in one of the
b. applicants can rest assured that, if their international States listed in the Schedule of Fees under the PCT
application is in the form prescribed by the PCT, it Regulations, and (2) applicants, whether natural persons or
cannot be rejected on formal grounds by any designated not, who are nationals of and reside in States classified as
office during the national phase; LDCs by the United Nations. That benefit consists of a
reduction of 90 per cent of certain fees under the Treaty.
c. on the basis of the international search report and the
written opinion, applicants can evaluate with The PCT was concluded in 1970, amended in 1979 and
reasonable probability the chances of their invention modified in 1984 and in 2001.
being patented;
It is open to States party to the Paris Convention for the
d. applicants have the possibility, during the optional Protection of Industrial Property (1883). Instruments of
international preliminary examination, to amend the ratification or accession must be deposited with the Director
international application and thus put it in order before General of WIPO.
processing by the various patent offices;
▪ the Protocol relating to that Agreement, concluded in International applications can be filed in English, French or
1989, which aims to make the Madrid system more Spanish, irrespective of which treaty or treaties govern the
flexible and more compatible with the domestic application, unless the office of origin restricts that choice
legislation of certain countries or intergovernmental to one or two of these languages.
organizations that had not been able to accede to the
Agreement. The filing of an international application is subject to the
payment of a basic fee (which is reduced to 10 per cent of
States and organizations party to the Madrid system are the prescribed amount for international applications filed by
collectively referred to as Contracting Parties. applicants whose country of origin is an LDC, in accordance
with the list established by the United Nations), a
The system makes it possible to protect a mark in a large supplementary fee for each class of goods and/or services
number of countries by obtaining an international beyond the first three classes, and a complementary fee for
registration that has effect in each of the designated each Contracting Party designated. However, a Contracting
Contracting Parties. Party to the Protocol may declare that, when it is designated
under the Protocol, the complementary fee is replaced by
Who May Use the System? an individual fee, whose amount is determined by the
Contracting Party concerned but may not be higher than the
An application for international registration (international amount that would be payable for the registration of a mark,
application) may be filed only by a natural person or legal at the national level, with its office.
entity having a connection – through establishment,
domicile or nationality – with a Contracting Party to the International Registration
Agreement or the Protocol.
Once the International Bureau receives an international
A mark may be the subject of an international application application, it carries out an examination for compliance
only if it has already been registered with the trademark with the requirements of the Agreement, the Protocol and
office of the Contracting Party with which the applicant has their Common Regulations. This examination is restricted to
the necessary connections (referred to as the office of formalities, including the classification and
origin). However, where all the designations are effected comprehensibility of the list of goods and/or services. If
under the Protocol (see below), the international there are no irregularities in the application, the
application may be based simply on an application for International Bureau records the mark in the International
registration filed with the office of origin. An international Register, publishes the international registration in the
WIPO Gazette of International Marks (hereinafter referred
to as "the Gazette"), and notifies it to each designated
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Contracting Party. Any matter of substance, such as whether An international registration is effective for 10 years. It may
the mark qualifies for protection or whether it is in conflict be renewed for further periods of 10 years on payment of
with a mark registered previously in a particular Contracting the prescribed fees.
Party, is determined by that Contracting Party's trademark
office under the applicable domestic legislation. The Gazette Protection may be limited with regard to some or all of the
is available in electronic form (e-Gazette) on the Madrid goods or services or may be renounced with regard to some
system website. only of the designated Contracting Parties. An international
registration may be transferred in relation to all or some of
Statement of Grant of Protection or Refusal of Protection the designated Contracting Parties and all or some of the
goods or services indicated.
The office of each designated Contracting Party shall issue a
statement of grant of protection under Rule 18ter of the Advantages of the Madrid System
Common Regulations.
The Madrid system offers several advantages for trademark
However, when designated Contracting Parties examine the owners. Instead of filing a separate national application in
international registration for compliance with their each country of interest, in several different languages, in
domestic legislation, and if some substantive provisions are accordance with different national or regional procedural
not complied with, they have the right to refuse protection rules and regulations and paying several different (and often
in their territory. Any such refusal, including an indication of higher) fees, an international registration may be obtained
the grounds on which it is based, must be communicated to by simply filing one application with the International
the International Bureau, normally within 12 months from Bureau (through the office of the home country), in one
the date of notification. However, a Contracting Party to the language (English, French or Spanish) and paying one set of
Protocol may declare that, when it is designated under the fees.
Protocol, this time limit is extended to 18 months. That
Contracting Party may also declare that a refusal based on Similar advantages exist for maintaining and renewing a
an opposition may be communicated to the International registration. Likewise, if the international registration is
Bureau even after the 18-month time limit. assigned to a third party, or is otherwise changed, such as a
change in name and/or address, this may be recorded with
The refusal is communicated to the holder of the effect for all designated Contracting Parties by means of a
registration or the holder's representative before the single procedural step.
International Bureau, recorded in the International Register
and published in the Gazette. The procedure subsequent to To facilitate the work of the users of the Madrid system, the
a refusal (such as an appeal or a review) is carried out International Bureau publishes a Guide to the International
directly by the competent administration and/or court of Registration of Marks under the Madrid Agreement and the
the Contracting Party concerned and the holder, without the Madrid Protocol.
involvement of the International Bureau. The final decision
concerning the refusal must, however, be communicated to The Madrid Agreement and Protocol are open to any State
the International Bureau, which records and publishes it. party to the Paris Convention for the Protection of Industrial
Property (1883). The two treaties are parallel and
Effects of an International Registration independent, and States may adhere to either or both of
them. In addition, an intergovernmental organization that
The effects of an international registration in each maintains its own office for the registration of marks may
designated Contracting Party are, from the date of the become party to the Protocol. Instruments of ratification or
international registration, the same as if the mark had been accession must be deposited with the Director General of
deposited directly with the office of that Contracting Party. WIPO.
If no refusal is issued within the applicable time limit, or if a
refusal originally notified by a Contracting Party is
subsequently withdrawn, the protection of the mark is, from
the date of the international registration, the same as if it
had been registered by the office of that Contracting Party.
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CONVENTION ESTABLISHING THE inventions and for the registration of marks and
industrial designs.
WORLD INTELLECTUAL PROPERTY
ORGANIZATION (1967) Membership in WIPO is open to any State that is a member
of any of the Unions and to any other State satisfying one of
Philippines: 1980 the following conditions:
The WIPO Convention, the constituent instrument of the a. it is a member of the United Nations, any of the
World Intellectual Property Organization (WIPO), was specialized agencies brought into relationship with the
signed at Stockholm on July 14, 1967, entered into force in United Nations, or the International Atomic Energy
1970 and was amended in 1979. WIPO is an Agency;
intergovernmental organization that became in 1974 one of
the specialized agencies of the United Nations system of b. it is a party to the Statute of the International Court of
organizations. Justice; or
The origins of WIPO go back to 1883 and 1886 when the c. it has been invited by the General Assembly of WIPO to
Paris Convention for the Protection of Industrial Property become a party to the Convention. There are no
and the Berne Convention for the Protection of Literary and obligations arising from membership of WIPO
Artistic Works, respectively, were concluded. Both concerning other treaties administered by WIPO.
Conventions provided for the establishment of an Accession to WIPO is effected by means of the deposit
"International Bureau". The two bureaus were united in with the Director General of WIPO of an instrument of
1893 and, in 1970, were replaced by the World Intellectual accession to the WIPO Convention.
Property Organization, by virtue of the WIPO Convention.
The WIPO Convention establishes three main organs: the
WIPO's two main objectives are WIPO General Assembly, the WIPO Conference and the
WIPO Coordination Committee. The WIPO General
a. to promote the protection of intellectual property Assembly is composed of the Member States of WIPO which
worldwide; and are also members of any of the Unions. Its main functions
are, inter alia, the appointment of the Director General upon
b. to ensure administrative cooperation among the nomination by the Coordination Committee, review and
intellectual property Unions established by the treaties approval of the reports of the Director General and the
that WIPO administers. reports and activities of the Coordination Committee,
adoption of the biennial budget common to the Unions, and
In order to attain these objectives, WIPO, in addition to adoption of the financial regulations of the Organization.
performing the administrative tasks of the Unions,
undertakes a number of activities, including: The WIPO Conference is composed of the States party to the
WIPO Convention. It is, inter alia, the competent body for
a. normative activities, involving the setting of norms and adopting amendments to the Convention. The WIPO
standards for the protection and enforcement of Coordination Committee is composed of members elected
intellectual property rights through the conclusion of from among the members of the Executive Committee of
international treaties; the Paris Union and the Executive Committee of the Berne
Union. Its main functions are to give advice to the organs of
b. program activities, involving legal and technical the Unions, the General Assembly, the Conference, and to
assistance to States in the field of intellectual property; the Director General, on all administrative and financial
matters of interest to these bodies. It also prepares the draft
c. international classification and standardization agenda of the General Assembly and the draft agenda of the
activities, involving cooperation among industrial Conference. Where appropriate, the Coordination
property offices concerning patent, trademark and Committee nominates a candidate for the post of Director
industrial design documentation; and General for appointment by the General Assembly.
d. registration and filing activities, involving services The principal sources of income of WIPO's regular budget
related to international applications for patents for are the fees paid by the users of the international
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WIPO COPYRIGHT TREATY (1996) wireless means, including "the making available to the
public of works in a way that the members of the public may
The WIPO Copyright Treaty (WCT) is a special agreement access the work from a place and at a time individually
under the Berne Convention that deals with the protection chosen by them". The quoted expression covers, in
of works and the rights of their authors in the digital particular, on-demand, interactive communication through
environment. Any Contracting Party (even if it is not bound the Internet.
by the Berne Convention) must comply with the substantive
provisions of the 1971 (Paris) Act of the Berne Convention As to limitations and exceptions, Article 10 of the WCT
for the Protection of Literary and Artistic Works (1886). incorporates the so-called "three-step" test to determine
Furthermore, the WCT mentions two subject matters to be limitations and exceptions, as provided for in Article 9(2) of
protected by copyright: the Berne Convention, extending its application to all rights.
The Agreed Statement accompanying the WCT provides that
a. computer programs, whatever the mode or form of such limitations and exceptions, as established in national
their expression; and law in compliance with the Berne Convention, may be
extended to the digital environment. Contracting States may
b. compilations of data or other material ("databases"), in devise new exceptions and limitations appropriate to the
any form, which, by reason of the selection or digital environment. The extension of existing or the
arrangement of their contents, constitute intellectual creation of new limitations and exceptions is allowed if the
creations. (Where a database does not constitute such conditions of the "three-step" test are met.
a creation, it is outside the scope of this Treaty.)
As to duration, the term of protection must be at least 50
As to the rights granted to authors, apart from the rights years for any kind of work.
recognized by the Berne Convention, the Treaty also grants:
The enjoyment and exercise of the rights provided for in the
a. the right of distribution; Treaty cannot be subject to any formality.
b. the right of rental; and
c. a broader right of communication to the public. The Treaty obliges Contracting Parties to provide legal
remedies against the circumvention of technological
The right of distribution is the right to authorize the making measures (e.g., encryption) used by authors in connection
available to the public of the original and copies of a work with the exercise of their rights, and against the removal or
through sale or other transfer of ownership. altering of information, such as certain data that identify
works or their authors, necessary for the management (e.g.,
The right of rental is the right to authorize commercial licensing, collecting and distribution of royalties) of their
rental to the public of the original and copies of three kinds rights ("rights management information").
of works:
The Treaty obliges each Contracting Party to adopt, in
a. computer programs (except where the computer accordance with its legal system, the measures necessary to
program itself is not the essential object of the rental); ensure the application of the Treaty. In particular, each
Contracting Party must ensure that enforcement
b. cinematographic works (but only in cases where procedures are available under its law so as to permit
commercial rental has led to widespread copying of effective action against any act of infringement of rights
such works, materially impairing the exclusive right of covered by the Treaty. Such action must include expeditious
reproduction); and remedies to prevent infringement as well as remedies that
constitute a deterrent to further infringement.
c. works embodied in phonograms as determined in the
national law of Contracting Parties (except for countries The Treaty establishes an Assembly of the Contracting
which, since April 15, 1994, have had a system in force Parties whose main task is to address matters concerning
for equitable remuneration of such rental). the maintenance and development of the Treaty. It entrusts
to the Secretariat of WIPO the administrative tasks
The right of communication to the public is the right to concerning the Treaty.
authorize any communication to the public, by wire or
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to the Treaty – deny this right. In the case and to the extent The Treaty was concluded in 1996 and entered into force in
of a reservation by a Contracting Party, the other 2002.
Contracting Parties are permitted to deny, vis-à-vis the
reserving Contracting Party, national treatment The Treaty is open to States members of WIPO and to the
("reciprocity"). European Community. The Assembly constituted by the
Treaty may decide to admit other intergovernmental
As to limitations and exceptions, Article 16 of the WPPT organizations to become party to the Treaty. Instruments of
incorporates the so-called "three-step" test to determine ratification or accession must be deposited with the Director
limitations and exceptions, as provided for in Article 9(2) of General of WIPO.
the Berne Convention, extending its application to all rights.
The accompanying Agreed Statement provides that such
limitations and exceptions, as established in national law in
compliance with the Berne Convention, may be extended to
the digital environment. Contracting States may devise new
exceptions and limitations appropriate to the digital
environment. The extension of existing or the creation of
new limitations and exceptions is allowed if the conditions
of the "three-step" test are met.
AGREEMENT ON TRADE-RELATED ASPECTS OF 2. Enforcement. The second main set of provisions deals
with domestic procedures and remedies for the
INTELLECTUAL PROPERTY RIGHTS (TRIPS) enforcement of intellectual property rights. The
Agreement lays down certain general principles
Philippines: 1994
applicable to all IPR enforcement procedures. In
addition, it contains provisions on civil and
The TRIPS Agreement, which came into effect on 1 January
administrative procedures and remedies, provisional
1995, is to date the most comprehensive multilateral
measures, special requirements related to border
agreement on intellectual property.
measures and criminal procedures, which specify, in a
certain amount of detail, the procedures and remedies
The areas of intellectual property that it covers are:
that must be available so that right holders can
copyright and related rights (i.e. the rights of performers,
effectively enforce their rights.
producers of sound recordings and broadcasting
organizations); trademarks including service marks;
3. Dispute settlement. The Agreement makes disputes
geographical indications including appellations of origin;
between WTO Members about the respect of the TRIPS
industrial designs; patents including the protection of new
obligations subject to the WTO's dispute settlement
varieties of plants; the layout-designs of integrated circuits;
procedures.
and undisclosed information including trade secrets and test
data.
In addition the Agreement provides for certain basic
principles, such as national and most-favoured-nation
The three main features of the Agreement are:
treatment, and some general rules to ensure that
procedural difficulties in acquiring or maintaining IPRs do
1. Standards. In respect of each of the main areas of
not nullify the substantive benefits that should flow from
intellectual property covered by the TRIPS Agreement,
the Agreement. The obligations under the Agreement will
the Agreement sets out the minimum standards of
apply equally to all Member countries, but developing
protection to be provided by each Member. Each of the
countries will have a longer period to phase them in. Special
main elements of protection is defined, namely the
transition arrangements operate in the situation where a
subject-matter to be protected, the rights to be
developing country does not presently provide product
conferred and permissible exceptions to those rights,
patent protection in the area of pharmaceuticals.
and the minimum duration of protection. The
Agreement sets these standards by requiring, first, that
The TRIPS Agreement is a minimum standards agreement,
the substantive obligations of the main conventions of
which allows Members to provide more extensive
the WIPO, the Paris Convention for the Protection of
protection of intellectual property if they so wish. Members
Industrial Property (Paris Convention) and the Berne
are left free to determine the appropriate method of
Convention for the Protection of Literary and Artistic
implementing the provisions of the Agreement within their
Works (Berne Convention) in their most recent versions,
own legal system and practice.
must be complied with. With the exception of the
provisions of the Berne Convention on moral rights, all
CERTAIN GENERAL PROVISIONS
the main substantive provisions of these conventions
are incorporated by reference and thus become
As in the main pre-existing intellectual property
obligations under the TRIPS Agreement between TRIPS
conventions, the basic obligation on each Member country
Member countries. The relevant provisions are to be
is to accord the treatment in regard to the protection of
found in Articles 2.1 and 9.1 of the TRIPS Agreement,
intellectual property provided for under the Agreement to
which relate, respectively, to the Paris Convention and
the persons of other Members. Article 1.3 defines who these
to the Berne Convention. Secondly, the TRIPS
persons are. These persons are referred to as “nationals”
Agreement adds a substantial number of additional
but include persons, natural or legal, who have a close
obligations on matters where the pre-existing
attachment to other Members without necessarily being
conventions are silent or were seen as being
nationals. The criteria for determining which persons must
inadequate. The TRIPS Agreement is thus sometimes
thus benefit from the treatment provided for under the
referred to as a Berne and Paris-plus agreement.
Agreement are those laid down for this purpose in the main
pre-existing intellectual property conventions of WIPO,
applied of course with respect to all WTO Members whether
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or not they are party to those conventions. These Members to adopt measures for public health and other
conventions are the Paris Convention, the Berne public interest reasons and to prevent the abuse of
Convention, International Convention for the Protection of intellectual property rights, provided that such measures
Performers, Producers of Phonograms and Broadcasting are consistent with the provisions of the TRIPS Agreement.
Organizations (Rome Convention), and the Treaty on
Intellectual Property in Respect of Integrated Circuits (IPIC SUBSTANTIVE STANDARDS OF PROTECTION
Treaty).
Copyright
Articles 3, 4 and 5 include the fundamental rules on national
and most-favoured-nation treatment of foreign nationals, During the Uruguay Round negotiations, it was recognized
which are common to all categories of intellectual property that the Berne Convention already, for the most part,
covered by the Agreement. These obligations cover not only provided adequate basic standards of copyright protection.
the substantive standards of protection but also matters Thus it was agreed that the point of departure should be the
affecting the availability, acquisition, scope, maintenance existing level of protection under the latest Act, the Paris Act
and enforcement of intellectual property rights as well as of 1971, of that Convention. The point of departure is
those matters affecting the use of intellectual property expressed in Article 9.1 under which Members are obliged
rights specifically addressed in the Agreement. While the to comply with the substantive provisions of the Paris Act of
national treatment clause forbids discrimination between a 1971 of the Berne Convention, i.e. Articles 1 through 21 of
Member's own nationals and the nationals of other the Berne Convention (1971) and the Appendix thereto.
Members, the most-favoured-nation treatment clause However, Members do not have rights or obligations under
forbids discrimination between the nationals of other the TRIPS Agreement in respect of the rights conferred
Members. In respect of the national treatment obligation, under Article 6bis of that Convention, i.e. the moral rights
the exceptions allowed under the pre-existing intellectual (the right to claim authorship and to object to any
property conventions of WIPO are also allowed under TRIPS. derogatory action in relation to a work, which would be
Where these exceptions allow material reciprocity, a prejudicial to the author's honour or reputation), or of the
consequential exception to MFN treatment is also permitted rights derived therefrom. The provisions of the Berne
(e.g. comparison of terms for copyright protection in excess Convention referred to deal with questions such as subject-
of the minimum term required by the TRIPS Agreement as matter to be protected, minimum term of protection, and
provided under Article 7(8) of the Berne Convention as rights to be conferred and permissible limitations to those
incorporated into the TRIPS Agreement). Certain other rights. The Appendix allows developing countries, under
limited exceptions to the MFN obligation are also provided certain conditions, to make some limitations to the right of
for. translation and the right of reproduction.
The general goals of the TRIPS Agreement are contained in In addition to requiring compliance with the basic standards
the Preamble of the Agreement, which reproduces the basic of the Berne Convention, the TRIPS Agreement clarifies and
Uruguay Round negotiating objectives established in the adds certain specific points.
TRIPS area by the 1986 Punta del Este Declaration and the
1988/89 Mid-Term Review. These objectives include the Article 9.2 confirms that copyright protection shall extend to
reduction of distortions and impediments to international expressions and not to ideas, procedures, methods of
trade, promotion of effective and adequate protection of operation or mathematical concepts as such.
intellectual property rights, and ensuring that measures and
procedures to enforce intellectual property rights do not Article 10.1 provides that computer programs, whether in
themselves become barriers to legitimate trade. These source or object code, shall be protected as literary works
objectives should be read in conjunction with Article 7, under the Berne Convention (1971). This provision confirms
entitled “Objectives”, according to which the protection and that computer programs must be protected under copyright
enforcement of intellectual property rights should and that those provisions of the Berne Convention that
contribute to the promotion of technological innovation and apply to literary works shall be applied also to them. It
to the transfer and dissemination of technology, to the confirms further, that the form in which a program is,
mutual advantage of producers and users of technological whether in source or object code, does not affect the
knowledge and in a manner conducive to social and protection. The obligation to protect computer programs as
economic welfare, and to a balance of rights and obligations. literary works means e.g. that only those limitations that are
Article 8, entitled “Principles”, recognizes the rights of applicable to literary works may be applied to computer
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programs. It also confirms that the general term of the right holder. This is a horizontal provision that applies to
protection of 50 years applies to computer programs. all limitations and exceptions permitted under the
Possible shorter terms applicable to photographic works provisions of the Berne Convention and the Appendix
and works of applied art may not be applied. thereto as incorporated into the TRIPS Agreement. The
application of these limitations is permitted also under the
Article 10.2 clarifies that databases and other compilations TRIPS Agreement, but the provision makes it clear that they
of data or other material shall be protected as such under must be applied in a manner that does not prejudice the
copyright even where the databases include data that as legitimate interests of the right holder.
such are not protected under copyright. Databases are
eligible for copyright protection provided that they by Related rights
reason of the selection or arrangement of their contents
constitute intellectual creations. The provision also confirms The provisions on protection of performers, producers of
that databases have to be protected regardless of which phonograms and broadcasting organizations are included in
form they are in, whether machine readable or other form. Article 14. According to Article 14.1, performers shall have
Furthermore, the provision clarifies that such protection the possibility of preventing the unauthorized fixation of
shall not extend to the data or material itself, and that it their performance on a phonogram (e.g. the recording of a
shall be without prejudice to any copyright subsisting in the live musical performance). The fixation right covers only
data or material itself. aural, not audiovisual fixations. Performers must also be in
position to prevent the reproduction of such fixations. They
Article 11 provides that authors shall have in respect of at shall also have the possibility of preventing the
least computer programs and, in certain circumstances, of unauthorized broadcasting by wireless means and the
cinematographic works the right to authorize or to prohibit communication to the public of their live performance.
the commercial rental to the public of originals or copies of
their copyright works. With respect to cinematographic In accordance with Article 14.2, Members have to grant
works, the exclusive rental right is subject to the so-called producers of phonograms an exclusive reproduction right.
impairment test: a Member is excepted from the obligation In addition to this, they have to grant, in accordance with
unless such rental has led to widespread copying of such Article 14.4, an exclusive rental right at least to producers of
works which is materially impairing the exclusive right of phonograms. The provisions on rental rights apply also to
reproduction conferred in that Member on authors and any other right holders in phonograms as determined in
their successors in title. In respect of computer programs, national law. This right has the same scope as the rental
the obligation does not apply to rentals where the program right in respect of computer programs. Therefore it is not
itself is not the essential object of the rental. subject to the impairment test as in respect of
cinematographic works. However, it is limited by a so-called
According to the general rule contained in Article 7(1) of the grand-fathering clause, according to which a Member,
Berne Convention as incorporated into the TRIPS which on 15 April 1994, i.e. the date of the signature of the
Agreement, the term of protection shall be the life of the Marrakesh Agreement, had in force a system of equitable
author and 50 years after his death. Paragraphs 2 through 4 remuneration of right holders in respect of the rental of
of that Article specifically allow shorter terms in certain phonograms, may maintain such system provided that the
cases. These provisions are supplemented by Article 12 of commercial rental of phonograms is not giving rise to the
the TRIPS Agreement, which provides that whenever the material impairment of the exclusive rights of reproduction
term of protection of a work, other than a photographic of right holders.
work or a work of applied art, is calculated on a basis other
than the life of a natural person, such term shall be no less Broadcasting organizations shall have, in accordance with
than 50 years from the end of the calendar year of Article 14.3, the right to prohibit the unauthorized fixation,
authorized publication, or, failing such authorized the reproduction of fixations, and the rebroadcasting by
publication within 50 years from the making of the work, 50 wireless means of broadcasts, as well as the communication
years from the end of the calendar year of making. to the public of their television broadcasts. However, it is not
necessary to grant such rights to broadcasting organizations,
Article 13 requires Members to confine limitations or if owners of copyright in the subject-matter of broadcasts
exceptions to exclusive rights to certain special cases which are provided with the possibility of preventing these acts,
do not conflict with a normal exploitation of the work and subject to the provisions of the Berne Convention.
do not unreasonably prejudice the legitimate interests of
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The term of protection is at least 50 years for performers The TRIPS Agreement contains certain provisions on well-
and producers of phonograms, and 20 years for known marks, which supplement the protection required by
broadcasting organizations (Article 14.5). Article 6bis of the Paris Convention, as incorporated by
reference into the TRIPS Agreement, which obliges
Article 14.6 provides that any Member may, in relation to Members to refuse or to cancel the registration, and to
the protection of performers, producers of phonograms and prohibit the use of a mark conflicting with a mark which is
broadcasting organizations, provide for conditions, well known. First, the provisions of that Article must be
limitations, exceptions and reservations to the extent applied also to services. Second, it is required that
permitted by the Rome Convention. knowledge in the relevant sector of the public acquired not
only as a result of the use of the mark but also by other
Trademarks means, including as a result of its promotion, be taken into
account. Furthermore, the protection of registered well-
The basic rule contained in Article 15 is that any sign, or any known marks must extend to goods or services which are
combination of signs, capable of distinguishing the goods not similar to those in respect of which the trademark has
and services of one undertaking from those of other been registered, provided that its use would indicate a
undertakings, must be eligible for registration as a connection between those goods or services and the owner
trademark, provided that it is visually perceptible. Such of the registered trademark, and the interests of the owner
signs, in particular words including personal names, letters, are likely to be damaged by such use (Articles 16.2 and 3).
numerals, figurative elements and combinations of colours
as well as any combination of such signs, must be eligible for Members may provide limited exceptions to the rights
registration as trademarks. conferred by a trademark, such as fair use of descriptive
terms, provided that such exceptions take account of the
Where signs are not inherently capable of distinguishing the legitimate interests of the owner of the trademark and of
relevant goods or services, Member countries are allowed third parties (Article 17).
to require, as an additional condition for eligibility for
registration as a trademark, that distinctiveness has been Initial registration, and each renewal of registration, of a
acquired through use. Members are free to determine trademark shall be for a term of no less than seven years.
whether to allow the registration of signs that are not The registration of a trademark shall be renewable
visually perceptible (e.g. sound or smell marks). indefinitely (Article 18).
Members may make registrability depend on use. However, Cancellation of a mark on the grounds of non-use cannot
actual use of a trademark shall not be permitted as a take place before three years of uninterrupted non-use has
condition for filing an application for registration, and at elapsed unless valid reasons based on the existence of
least three years must have passed after that filing date obstacles to such use are shown by the trademark owner.
before failure to realize an intent to use is allowed as the Circumstances arising independently of the will of the
ground for refusing the application (Article 14.3). owner of the trademark, such as import restrictions or other
government restrictions, shall be recognized as valid
The Agreement requires service marks to be protected in reasons of non-use. Use of a trademark by another person,
the same way as marks distinguishing goods (see e.g. when subject to the control of its owner, must be recognized
Articles 15.1, 16.2 and 62.3). as use of the trademark for the purpose of maintaining the
registration (Article 19).
The owner of a registered trademark must be granted the
exclusive right to prevent all third parties not having the It is further required that use of the trademark in the course
owner's consent from using in the course of trade identical of trade shall not be unjustifiably encumbered by special
or similar signs for goods or services which are identical or requirements, such as use with another trademark, use in a
similar to those in respect of which the trademark is special form, or use in a manner detrimental to its capability
registered where such use would result in a likelihood of to distinguish the goods or services (Article 20).
confusion. In case of the use of an identical sign for identical
goods or services, a likelihood of confusion must be Geographical indications
presumed (Article 16.1).
Geographical indications are defined, for the purposes of
the Agreement, as indications which identify a good as
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originating in the territory of a Member, or a region or 3). The TRIPS Council shall keep under review the application
locality in that territory, where a given quality, reputation or of the provisions on the protection of geographical
other characteristic of the good is essentially attributable to indications (paragraph 2).
its geographical origin (Article 22.1). Thus, this definition
specifies that the quality, reputation or other characteristics Industrial designs
of a good can each be a sufficient basis for eligibility as a
geographical indication, where they are essentially Article 25.1 of the TRIPS Agreement obliges Members to
attributable to the geographical origin of the good. provide for the protection of independently created
industrial designs that are new or original. Members may
In respect of all geographical indications, interested parties provide that designs are not new or original if they do not
must have legal means to prevent use of indications which significantly differ from known designs or combinations of
mislead the public as to the geographical origin of the good, known design features. Members may provide that such
and use which constitutes an act of unfair competition protection shall not extend to designs dictated essentially by
within the meaning of Article 10bis of the Paris Convention technical or functional considerations.
(Article 22.2).
Article 25.2 contains a special provision aimed at taking into
The registration of a trademark which uses a geographical account the short life cycle and sheer number of new
indication in a way that misleads the public as to the true designs in the textile sector: requirements for securing
place of origin must be refused or invalidated ex officio if the protection of such designs, in particular in regard to any
legislation so permits or at the request of an interested party cost, examination or publication, must not unreasonably
(Article 22.3). impair the opportunity to seek and obtain such protection.
Members are free to meet this obligation through industrial
Article 23 provides that interested parties must have the design law or through copyright law.
legal means to prevent the use of a geographical indication
identifying wines for wines not originating in the place Article 26.1 requires Members to grant the owner of a
indicated by the geographical indication. This applies even protected industrial design the right to prevent third parties
where the public is not being misled, there is no unfair not having the owner's consent from making, selling or
competition and the true origin of the good is indicated or importing articles bearing or embodying a design which is a
the geographical indication is accompanied be expressions copy, or substantially a copy, of the protected design, when
such as “kind”, “type”, “style”, “imitation” or the like. Similar such acts are undertaken for commercial purposes.
protection must be given to geographical indications
identifying spirits when used on spirits. Protection against Article 26.2 allows Members to provide limited exceptions
registration of a trademark must be provided accordingly. to the protection of industrial designs, provided that such
exceptions do not unreasonably conflict with the normal
Article 24 contains a number of exceptions to the protection exploitation of protected industrial designs and do not
of geographical indications. These exceptions are of unreasonably prejudice the legitimate interests of the
particular relevance in respect of the additional protection owner of the protected design, taking account of the
for geographical indications for wines and spirits. For legitimate interests of third parties.
example, Members are not obliged to bring a geographical
indication under protection, where it has become a generic The duration of protection available shall amount to at least
term for describing the product in question (paragraph 6). 10 years (Article 26.3). The wording “amount to” allows the
Measures to implement these provisions shall not prejudice term to be divided into, for example, two periods of five
prior trademark rights that have been acquired in good faith years.
(paragraph 5). Under certain circumstances, continued use
of a geographical indication for wines or spirits may be Patents
allowed on a scale and nature as before (paragraph 4).
Members availing themselves of the use of these exceptions The TRIPS Agreement requires Member countries to make
must be willing to enter into negotiations about their patents available for any inventions, whether products or
continued application to individual geographical indications processes, in all fields of technology without discrimination,
(paragraph 1). The exceptions cannot be used to diminish subject to the normal tests of novelty, inventiveness and
the protection of geographical indications that existed prior industrial applicability. It is also required that patents be
to the entry into force of the TRIPS Agreement (paragraph available and patent rights enjoyable without discrimination
23 of 24
as to the place of invention and whether products are inventor at the filing date or, where priority is claimed, at
imported or locally produced (Article 27.1). the priority date of the application (Article 29.1).
There are three permissible exceptions to the basic rule on If the subject-matter of a patent is a process for obtaining a
patentability. One is for inventions contrary to ordre public product, the judicial authorities shall have the authority to
or morality; this explicitly includes inventions dangerous to order the defendant to prove that the process to obtain an
human, animal or plant life or health or seriously prejudicial identical product is different from the patented process,
to the environment. The use of this exception is subject to where certain conditions indicating a likelihood that the
the condition that the commercial exploitation of the protected process was used are met (Article 34).
invention must also be prevented and this prevention must
be necessary for the protection of ordre public or morality Compulsory licensing and government use without the
(Article 27.2). authorization of the right holder are allowed, but are made
subject to conditions aimed at protecting the legitimate
The second exception is that Members may exclude from interests of the right holder. The conditions are mainly
patentability diagnostic, therapeutic and surgical methods contained in Article 31. These include the obligation, as a
for the treatment of humans or animals (Article 27.3(a)). general rule, to grant such licences only if an unsuccessful
attempt has been made to acquire a voluntary licence on
The third is that Members may exclude plants and animals reasonable terms and conditions within a reasonable period
other than micro-organisms and essentially biological of time; the requirement to pay adequate remuneration in
processes for the production of plants or animals other than the circumstances of each case, taking into account the
non-biological and microbiological processes. However, any economic value of the licence; and a requirement that
country excluding plant varieties from patent protection decisions be subject to judicial or other independent review
must provide an effective sui generis system of protection. by a distinct higher authority. Certain of these conditions are
Moreover, the whole provision is subject to review four relaxed where compulsory licences are employed to remedy
years after entry into force of the Agreement (Article practices that have been established as anticompetitive by
27.3(b)). a legal process. These conditions should be read together
with the related provisions of Article 27.1, which require
The exclusive rights that must be conferred by a product that patent rights shall be enjoyable without discrimination
patent are the ones of making, using, offering for sale, as to the field of technology, and whether products are
selling, and importing for these purposes. Process patent imported or locally produced.
protection must give rights not only over use of the process
but also over products obtained directly by the process. Layout-designs of integrated circuits
Patent owners shall also have the right to assign, or transfer
by succession, the patent and to conclude licensing Article 35 of the TRIPS Agreement requires Member
contracts (Article 28). countries to protect the layout-designs of integrated circuits
in accordance with the provisions of the IPIC Treaty (the
Members may provide limited exceptions to the exclusive Treaty on Intellectual Property in Respect of Integrated
rights conferred by a patent, provided that such exceptions Circuits), negotiated under the auspices of WIPO in 1989.
do not unreasonably conflict with a normal exploitation of These provisions deal with, inter alia, the definitions of
the patent and do not unreasonably prejudice the legitimate “integrated circuit” and “layout-design (topography)”,
interests of the patent owner, taking account of the requirements for protection, exclusive rights, and
legitimate interests of third parties (Article 30). limitations, as well as exploitation, registration and
disclosure. An “integrated circuit” means a product, in its
The term of protection available shall not end before the final form or an intermediate form, in which the elements,
expiration of a period of 20 years counted from the filing at least one of which is an active element, and some or all of
date (Article 33). the interconnections are integrally formed in and/or on a
piece of material and which is intended to perform an
Members shall require that an applicant for a patent shall electronic function. A “layout-design (topography)” is
disclose the invention in a manner sufficiently clear and defined as the three-dimensional disposition, however
complete for the invention to be carried out by a person expressed, of the elements, at least one of which is an active
skilled in the art and may require the applicant to indicate element, and of some or all of the interconnections of an
the best mode for carrying out the invention known to the integrated circuit, or such a three-dimensional disposition
24 of 24
prepared for an integrated circuit intended for manufacture. commercial use. In addition, Members must protect such
The obligation to protect layout-designs applies to such data against disclosure, except where necessary to protect
layout-designs that are original in the sense that they are the the public, or unless steps are taken to ensure that the data
result of their creators' own intellectual effort and are not are protected against unfair commercial use.
commonplace among creators of layout-designs and
manufacturers of integrated circuits at the time of their Control of anti-competitive practices in contractual
creation. The exclusive rights include the right of licences
reproduction and the right of importation, sale and other
distribution for commercial purposes. Certain limitations to Article 40 of the TRIPS Agreement recognizes that some
these rights are provided for. licensing practices or conditions pertaining to intellectual
property rights which restrain competition may have
In addition to requiring Member countries to protect the adverse effects on trade and may impede the transfer and
layout-designs of integrated circuits in accordance with the dissemination of technology (paragraph 1). Member
provisions of the IPIC Treaty, the TRIPS Agreement clarifies countries may adopt, consistently with the other provisions
and/or builds on four points. These points relate to the term of the Agreement, appropriate measures to prevent or
of protection (ten years instead of eight, Article 38), the control practices in the licensing of intellectual property
applicability of the protection to articles containing rights which are abusive and anti-competitive (paragraph 2).
infringing integrated circuits (last sub clause of Article 36) The Agreement provides for a mechanism whereby a
and the treatment of innocent infringers (Article 37.1). The country seeking to take action against such practices
conditions in Article 31 of the TRIPS Agreement apply involving the companies of another Member country can
mutatis mutandis to compulsory or non-voluntary licensing enter into consultations with that other Member and
of a layout-design or to its use by or for the government exchange publicly available non-confidential information of
without the authorization of the right holder, instead of the relevance to the matter in question and of other
provisions of the IPIC Treaty on compulsory licensing (Article information available to that Member, subject to domestic
37.2). law and to the conclusion of mutually satisfactory
agreements concerning the safeguarding of its
Protection of undisclosed information confidentiality by the requesting Member (paragraph 3).
Similarly, a country whose companies are subject to such
The TRIPS Agreement requires undisclosed information -- action in another Member can enter into consultations with
trade secrets or know-how -- to benefit from protection. that Member (paragraph 4).
According to Article 39.2, the protection must apply to
information that is secret, that has commercial value
because it is secret and that has been subject to reasonable
steps to keep it secret. The Agreement does not require
undisclosed information to be treated as a form of property,
but it does require that a person lawfully in control of such
information must have the possibility of preventing it from
being disclosed to, acquired by, or used by others without
his or her consent in a manner contrary to honest
commercial practices. “Manner contrary to honest
commercial practices” includes breach of contract, breach
of confidence and inducement to breach, as well as the
acquisition of undisclosed information by third parties who
knew, or were grossly negligent in failing to know, that such
practices were involved in the acquisition.