UNIT -2

Evolution of International Protection of IPR

The Intellectual Property has both international and national dimensions; hence it can be said that
it has dual nature. For example, the Patents in a country is governed by its national laws as well
the international conventions related to such Patents in the designated country. For the future
development and growth of the economy, there is an urgent need for a powerful protection of the
Intellectual Property Rights worldwide and for the introduction of International Rules in the
Indian IPR Law. The introduction of International Rules in Indian IPR Law is very significant in
maintaining a balance between the national and international rules governing the various IPRs in
the country as well as worldwide. In this article, we will discuss the complete overview of
International Rules in Indian IPR Law.

What is Intellectual Property as per the International Rules in Indian IPR Law?

Intellectual Property as per the International Rules in Indian IPR Law refers to creations of
the mind of people related to literary and artistic works, inventions, literary, and symbols,
images, and names used in trade and commerce.

What are the various International Rules in Indian IPR Law?

The various International Rules in Indian IPR Law are as follows:

 The Paris Convention for the Protection of Industrial Properties

When there was no international convention concerning industrial property, it was very difficult
to obtain legal protection in different countries of the world for new creations or inventions due
to the diversification of laws in different countries. Moreover, the filing of Patent applications at
the same time in different countries to prevent a publication in any one country destroyed the
novelty of the invention or creation in other countries. These practical problems established a
sturdy objective to overcome such difficulties in the case of Intellectual Property Rights.

In the late 19th century, the expansion of international focused flow of technology and improved
international trade increased the necessity for coordination of laws related to industrial property
in both the Trademark and patent sectors. The administration of the Paris Convention is also
done by the World Intellectual Property Organization (WIPO). The Paris Convention came into
being to offer some international harmony in laws related to intellectual property. The Paris
Convention was adopted on 20 March, 1883, at Paris and was enforced on 7 July, 1884. The
Convention provided some primary and essential guidelines for the legal protection of
Intellectual Property such as utility models, Patents, industrial designs, service marks, and
trademarks, sources of information or signs of appeal, trade names, and certain provisions for
national treatment and harassment of unfair competition. These International Rules in Indian IPR
Law was introduced on 7 December, 1998.
Under the Paris Convention, in the principle of anti-discrimination, a member country is
authorized to grant the nationals of other countries the equal legal protection and advantages
associated with the inventions or creations as the member country grants to its own nationals.
The anti-discrimination policy of the Paris Convention is also an important principle of several
other Intellectual Property treaties and agreements.

The fundamental principles of the Paris Convention are as follows:

 National Treatment

The principle of National treatment can be defined concerning the legal protection of industrial
property as each member country of the Paris Convention is required to grant equal legal
protection for the inventions of nationals of the other member countries as it will grant protection
to its own nationals of the country. The provisions related to this principle are included in
Articles 2 and 3 of the Paris Convention. For Example, in case, an Indian national is filing an
application for Patent Registration in the US, the Indian national will have the same Patent
rights and standards of legal protection in the US as a US national.

 Framework of Priority

The other fundamental principle of the Paris Convention is the ‘framework of priority’. As per
the ruled laid down in the Paris Convention, an invention of the inventor can be protected in
various countries at the same time. This also means an allowance of access to the foreign
applicants of the National Patent Systems. An inventor of the invention is given the authority to
claim the date of filing of his/her first application of Patent in respective member countries as an
effective date of filing for further subsequent applications, concerning the same invention, in any
other Convention country. Furthermore, the applicant is required to file the applications within
12 month time period of the earlier application filed in a matter to claim the date of priority for
the invention.

 The Berne Convention for the Protection of Literary and Artistic Works

On the international level the first step with regard to Copyright protection was taken in the
middle of the nineteenth century.

There were primarily three basic principles of the Berne Convention which are as follows:

 Any work that is originated in one of the contracting states (works of the author, who is a
national of such state, or works that are published at first in such a state) should be given
same legal protection in every other contracting states as the latter contracting state will
grant the works that are of its own national. This was basically the principle of ‘National
Treatment.’
 The legal protection should not be conditional upon compliance with any kind of
formality. This was the principle of ‘Automatic’ protection.
  The legal protection should be independent of the existence of the protection of the
country where the origin of work happened. This was the principle of the ‘Independence’
of protection.

There was an urgent need to have a uniform system for the preservation of the Literary and
Artistic Works which led to the formation of the Berne Convention. The Berne Convention was
adopted on 9 September, 1886 and came into force on 4 December, 1887. The Berne Convention
was originally signed in 1886 at Berne in Switzerland. The Berne Convention was later on
revised in the years 1896 by the Paris Additional Act, 1908 by the Berlin Act, 1914 by the
Additional Protocol Berne, 1928 by the Rome Act, 1948 by the Brussels Act, 1967 by the
Stockholm Act, 1971 by the Paris Act, and 1979.

 The Universal Copyright Convention (UCC)

As an alternative to the Berne Convention, the Universal Copyright Convention was created in
Geneva in the year 1952. The Berne Convention suffered from two prime weaknesses which
were:

 There was a lack of universality in the Convention as the two superpowers were not the
member of the Convention. The superpowers were the United States and USSR.
 The Convention provided for very high-level legal protection which prevented certain
countries from joining the Union of the Convention.

Later on, UCC was amended according to the aims of operations of the United Nations (UN).
The amendment was made as such to include the US in the list of the countries of the member
nation of the Convention and also have a very less impact on the standards of other countries
who are already a member of the Convention.

 The Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT) is an international treaty administered by the World
Intellectual Property Organization (WIPO). The PCT System makes it possible to seek patent
protection for an invention simultaneously in a large number of countries by filing a single
“international” patent application instead of filing several separate national or regional patent
applications. The granting of patents remains under the national or regional legislation of the
national or regional patent offices. It is called the “national phase”.

In the national phase, each patent office is responsible for processing the application in
accordance with its national patent laws, and for deciding whether to grant patent protection. The
time required for that processing varies across patent offices.

The Procedure under the PCT

The procedure under the Patent Cooperation Treaty begins with a person filing an international
application. Then an international search is conducted by the International Authorities, which is
one of the major patent offices appointed by the PCT Assembly. The International Authorities
generates an international search report, which lists citations of published documents that may
affect whether or not the invention in the international application can be patented. In addition to
the search report, the International Authorities produces a written opinion on whether or not the
invention is patentable.

Once the applicant receives the ISA's international report and written opinion, the applicant can
either withdraw or proceed with the application. If the application is not withdrawn, the
application and the international search report are published by the International report. The
written opinion is simply for the benefit of the applicant and is not published.

Advantages to the Procedures Provided by the PCT

The procedures set forth by the Patent Cooperation Treaty provide various advantages to
inventors, patent offices, and the general public. Thanks to the international search report and
written opinion that accompany an international patent application, patent offices can reduce or
virtually eliminate the work involved in searching and examining patent application. Also,
because the international search report is published with the international application, it gives
third parties a better position to formulate an opinion about whether or not the invention can be
patented.

The applicant has up to 18 months more (than if he or she used a procedure outside the PCT) to
decide whether to seek patent protection in foreign countries and take the necessary steps to seek
foreign protection (such as appointing local patent agents, making translations, and paying
national fees). In addition, when an applicant uses the application set forth by the PCT, the
designated Office can't reject it on formal grounds during the national processing phase.

 World Intellectual Property Organization (WIPO)

The origin of the World Intellectual Property Organization goes back to the year 1883 and 1886.
In these years the Paris Convention for the protection of Industrial Property and the Berne
Convention for the protection of Literary and Artistic Works was concluded and provided for the
formation of the International Bureau. The two bureaus by the virtue of the WIPO Convention
were united and were replaced by the World Intellectual Property Organization.

The WIPO Convention, the main instrument of the World Intellectual Property Organization was
signed on 14 July, 1967, in Stockholm that entered into force in 1970, and was later on amended
in the year 1979. In the year 1974, the WIPO became one of the specialized agencies of the
United Nations (UN) system of organizations.

There were two main objectives of the WIPO. The objectives were:

 To promote the legal protection of Intellectual Property all over the world.
 To ensure administrative cooperation between the Intellectual Property Unions which are
established by the treaties that are administered by the WIPO.
In order to achieve the above-mentioned objectives, World Intellectual Property Organization, in
addition to performing the administrative tasks of the different Unions, also undertakes various
activities.

The various activities of WIPO include the following:

 The Normative Activities, that involves the setting of the standards and norms for the
enforcement and protection of the Intellectual Property Rights (IPR) through the
conclusion of all the International Conventions and Treaties;
 The Program Activities, that involves legal technical assistance to the member states in
the area of Intellectual Property;
 The International Classification and Standardization Activities, that involves cooperation
between the Offices of Industrial Property concerning Trademarks, Patents and Industrial
Design Documentation; and
 The Registration Activities, that involves services associated with the international
applications for Patent for inventions and for the Registration of Designs and
International Marks.

Membership in WIPO

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 the following conditions: (i) it is a member of the United Nations,
any of the specialized agencies brought into relationship with the United Nations, or the
International Atomic Energy Agency; (ii) it is a party to the Statute of the International Court of
Justice; or (iii) it has been invited by the General Assembly of WIPO to become a party to the
Convention. There are no obligations arising from membership of WIPO concerning other
treaties administered by WIPO. Accession to WIPO is effected by means of the deposit with the
Director General of WIPO of an instrument of accession to the WIPO Convention.is open to any
State that is a member of any of the Unions and to any other State satisfying one of the following
conditions: (i) it is a member of the United Nations, any of the specialized agencies brought into
relationship with the United Nations, or the International Atomic Energy Agency; (ii) it is a party
to the Statute of the International Court of Justice; or (iii) it has been invited by the General
Assembly of WIPO to become a party to the Convention. There are no obligations arising from
membership of WIPO concerning other treaties administered by WIPO. Accession to WIPO is
effected by means of the deposit with the Director General of WIPO of an instrument of
accession to the WIPO Convention.

Organs of WIPO

The WIPO Convention establishes three main organs: the WIPO General Assembly, the WIPO
Conference and the WIPO Coordination Committee. The WIPO General Assembly is composed
of the Member States of WIPO which are also members of any of the Unions. Its main functions
are, inter alia, the appointment of the Director General upon nomination by the Coordination
Committee, review and approval of the reports of the Director General and the reports and
activities of the Coordination Committee, adoption of the biennial budget common to the
Unions, and adoption of the financial regulations of the Organization.
The WIPO Conference is composed of the States party to the WIPO Convention. It is, inter alia,
the competent body for adopting amendments to the Convention. The WIPO Coordination
Committee is composed of members elected from among the members of the Executive
Committee of the Paris Union and the Executive Committee of the Berne Union. Its main
functions are to give advice to the organs of the Unions, the General Assembly, the Conference,
and to the Director General, on all administrative and financial matters of interest to these
bodies. It also prepares the draft agenda of the General Assembly and the draft agenda of the
Conference. Where appropriate, the Coordination Committee nominates a candidate for the post
of Director General for appointment by the General Assembly.

The principal sources of income of WIPO's regular budget are the fees paid by the users of the
international registration and filing services, and the contributions paid by the governments of
Member States. Each State belongs to one of 14 classes, which determines the amount of its
contribution. Class I, with the highest contribution, involves the payment of 25 contribution
units, whereas Class Ster, with the lowest contribution, involves the payment of 1/32 of one
contribution unit. By virtue of the unitary contribution system adopted by Member States in
1993, the amount of each State's contribution is the same whether that State is a member only of
WIPO, or only of one or more Unions, or of both WIPO and one or more Unions.

The Secretariat of the Organization is called the International Bureau. The executive head of the
International Bureau is the Director General who is appointed by the WIPO General Assembly
and is assisted by two or more Deputy Directors General.

The Organization benefits from the privileges and immunities granted to international
organizations and their officials in the fulfillment of its objectives and exercise of its functions,
and have concluded a headquarters agreement with the Swiss Confederation to that effect.

 Trade-Related Aspects of Intellectual Property Rights (TRIPS)

The agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is a an

international agreement administered by the World Trade Organization (WTO) that sets down
minimum standards for many forms of Intellectual Property (IP) regulation as applied to
nationals of other WTO members. • It was negotiated at the end of the Uruguay Round of the
General Agreement on Tariffs and Trade (GATT) in 1994. TRIPS Agreement: • The TRIPS
Agreement introduced intellectual property law into the international trading system for the first
time and remains the most comprehensive international agreement on intellectual property to
date.

Trade-Related Aspects of Intellectual Property Rights (TRIPS) covers most forms of intellectual
property including copyright, patents, geographical indications, trademarks, industrial designs,
trade secrets, and exclusionary rights over new plant varieties. This Agreement, inter-alia,
contains an Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) which
came into force from 1st January 1995. It lays down minimum standards for protection and
enforcement of intellectual property rights in member countries which are required to promote
effective and adequate protection of intellectual property rights with a view to reducing
distortions and impediments to international trade.

The obligations under the TRIPS Agreement relate to provision of minimum standard of
protection within the member countries legal systems and practices.

The Agreement provides for norms and standards in respect of following areas of
intellectual property:
• Patents

• Trade Marks

• Copyrights

• Geographical Indications

• Industrial Designs

The three main features of the TRIPS agreement were:

 Standard

The TRIPS agreement sets out certain minimum standards of legal protection which should be
provided by each member.

 Enforcement

Certain general principles were laid down by the TRIPS agreement to all the IPR enforcement
procedures. Remedies associated with enforcement were also introduced.

 Dispute Settlement

In the TRIPS agreement the disputes between the WTO members were made subject to the
procedures of dispute settlement of the WTO.

The TRIPS agreement was enforced on 1 January 1995; the countries were given a certain time
period to implement the provisions of the TRIPS agreement in their respective countries. The
developed countries were given a time period of 12 months to implement the provisions in their
country. Under certain conditions the transition economies and developing countries were given
a time period of five years to implement the provisions of the TRIPS agreement. As of in the
year 2006, the least developed countries or LDC’s were given around 11 years to comply with
the provisions of the TRIPS agreement.

In addition the Agreement provides for certain basic principles, such as national and most-
favored-nation treatment, and some general rules to ensure that procedural difficulties in
acquiring or maintaining IPRs do not nullify the substantive benefits that should flow from the
Agreement. The obligations under the Agreement will apply equally to all Member countries, but
developing countries will have a longer period to phase them in. Special transition arrangements
operate in the situation where a developing country does not presently provide product patent
protection in the area of pharmaceuticals.
The TRIPS Agreement is a minimum standards agreement, which allows Members to provide
more extensive protection of intellectual property if they so wish. Members are left free to
determine the appropriate method of implementing the provisions of the Agreement within their
own legal system and practice.
What is the need for International Rules in Indian IPR Law?

The need for International Rules in Indian IPR Law is due to the following reasons:

 Encouragement for new Innovation

The legal protection given to the new innovations or creations led to encouragement in the
commitment of the people to create some additional resources for creating or developing some
new creations or innovation.

 Economic growth

There is a strong shoot in the economic growth of a country when proper legal protection and
promotion of Intellectual Property is done in a country. The economic growth and development
of a country increases the job opportunity and creates new industries as well, and hence, it helps
in enhancing the enjoyment and quality of life.

 Safeguarding the rights of the creators

Intellectual Property Rights are required in a country to safeguard the interest of the creators and
all other producers in their intellectual goods, commodity, and services by granting the creators
and other producers with a certain time-bounded rights to have a control on the usage of the
goods, commodities and services made by them.

 Ensuring Ease in Doing Business

The IPR law promotes creativity and innovation. It also guarantees ease of doing business.

 Facilitates the Transfer of Technology

The IPR Law of a country enables or eases the transfer of technology in the form of joint
ventures, foreign direct investment, and licensing.

Conclusion

The primary purpose of the International Rules in Indian IPR Laws was not only to provide a
certain minimum standard for the legal protection of Intellectual Property Rights, but also to
provide a standard for the purpose. The International Rules in Indian IPR Law provide a
minimum standard for the enforcement of Intellectual Property Rights that allows holders of the
Intellectual Property Right to protect their authentic interests through administrative proceedings
or civil courts. The member nations of all International Rules in Indian IPR Law are required to
provide certain safeguards regarding the enforcement procedures. The member nations should
provide “fair and equitable” enforcement procedures of the IPR.

The enforcement procedures should not be unnecessarily costly or complex or prevent

unreasonable delays or unreasonable deadlines. A person applying for legal protection of his/her
Intellectual Property should have a wide knowledge about the different International Rules in the
Indian IPR Law. The process of registering any Intellectual Property is complex and time-
consuming.