Journal of Intellectual Property Rights

Vol 1 March 1996 PI> 67-75

International Conventions, Agreements &

Treaties for the Protection of Intellectual
Property

R K Gupta and N R Subbaram

Intellectual Property Management Division (CSIR), 14 Satsang Vihar Marg,
SPecial Instihltional Area, New Delhi 110067

Summary - This paper gives a broad view of the various international treaties and
conventions on intellectual property rights of the numerous conventions, treaties and
agreements. It also covers all the treaties, conventions and agreements administered
by WorId Intellectual Property Organisation (WIPO), one of the specialized agencies
of the United Nations. Important treaties which are not administered by WIPO are .
also discussed.

Conventions, Treaties and 151 countries, including India, were mem-

Agreements Administered by bers ofWIPO.
WIPO
Paris Convention for the Protection of
Convention establishing WIPO Industrial Property

This Convention was signed at Stockholm The Paris Convention for the protection of
on 14 July, 1967 and was amended in 1979. industrial property is an international treaty
The activities ofWIPO are inter-governmen- signed originally by 11 countries in Paris on
tal cooperation in the field of industrial prop- 20 March 1883 and revised at Brussels
erty and in copyrights and neighbouring (1900),Washington (1911), The Hague
rights mainly in literary, musical and artistic (1925), London (1934), lisbon (1958), Stock-
works in films, records etc. holm (1967) and amended in 1979. The Con-
vention is applicable to industrial property
WIPO has its Headquarters at 34, Chemin including not only inventions, trademarks,
des Colombettes Geneva and is headed by service marks and industrial designs but
the Director General. Till 1 January 1995, also utility models, trade names, indications
68 J. INTElLEC. PROP. RIGHTS, MARCH 199t:i

of source, appellations of origins and repres- Madrid Agreement concerning the

sion of unfair competition. International Registration of Marks
Till 1 January 1995, 129 countries were the This Agreement for the International Regis-
members of the Convention. India is not a tration of Trademarks was signed at Madrid
member of the Paris Convention. on 14 April 1891. It was revised at Brussels
on 14 December 1900, at Washington on
Madrid Agreement for the Repression of 2 June 1911, at the Hague on 6 November
False or Deceptive Indication of Source 1925, at London on 2 June 1934, at Nice on
of Goods 15June 1957, Stockholm on 14 July 1967 and
amended in 1979.
This Agreement was signed in Madrid on
14 April 1891 and was revised at Washing- This Agreement provides for the registra-
tion of trademarks, including service marks.
ton on 2 June 1911, at The Hague on 6
Registration effected under the Agreement
Nov ember 1925, at London on 2 June are called "International" as every registra-
1934, at Lisbon on 31 October 1958 and at tion has effect in several countries, poten-
Stockholm on 14 July, 1967. tially in all the member countries of the
This Agreement provides that all goods Madrid Union. As on 1 January 1995 it had
43 states as members. India is not a party to
bearing false or deceptive indication of
this agreement.
source by which one of the countries to
which the Agreement applies, or a place situ- Hague Agreement concerning the
ated therein, is directly or indirectly indi- International Deposit of Industrial
Designs
cated as being the country or place of origin,
shall be seized on importation, or that such This Agreement was signed on 6 November
importation shall be prohibited, or that other 1925 at Hague and came into force on 1 June
actions and sanctions shall be applied in con- 1928, revised in London on 2 June 1934, at
nection with such importation. It provides Hague on 28 November 1960, and at Stock-
holm on 14 July 1967, by the Protocol of
for the cases and the manner in which the
Geneva 1975 and amended in 1979.
seizure may be requested and effected.
The main advantage of this Agreement is
The Agreement prohibits the use, in connec- that by a single international deposit of an
tion with the sale or display or offering for sale industrial design it can be protected in many
of any goods of all indications in the nature of countries thereby cost is minimized and the
publicity capable of deceiving the pubic as to cost of deposit is also modest. As on 1 Janu-
the source of the goods. It is reserved to the ary 1995, it had 25 states as members. India
courts of each country to decide what appella- is not a party to this agreement.
tions other than regional appellations concern- Nice Agreement concerning the
ing the source of products, do not, on account International Classification of Goods &
of their generic character come wlder the Services for the Registration of Marks
stipulations of the Agreement As on 1]anuary (Nice Union)
1995 it had 31 states as members. India is not This Agreement was signed on 15June 1957
a party to this agreement at Nice and was brought into force on 8 April
 GUPTA & SUBBARAM: INT CONVENTIONS, AGREEMENTS & TREATIES 69

1961. It was revised at Stockholm on 14 July Patent Cooperation Treaty (PCI)

1967, at Geneva in 1977 and amended in
1979. per is a Convention which came into force
in 1978. As on 1 January 1995, there were 77
This Agreement provides for the classifica- countries members to the Treaty. Like many
tion of goods and services for the registra- other Treaties, this Treaty is also open to the
tion of trademarks and service marks. India members of Paris Convention only.
is not a party to this agreement. As on 1
January 1995 it had 42 states as members. The per is not a Convention dealing with
India is not a party to this agreement. th~ substantive requirements of patent law
as each signatory determines the patentabil-
Lisbon Agreement for the Protection ity of the invention under its own domestic
of AppeUationil of Origin & their law. The per is concerned with procedural
International Registration (Lisbon requirements only so as to simplify the filing,
Union) searching for novelty and publishing of in-
ternational patent applications. By filing an
This Agreement was signed at Lisbon on 31 application for patent under per, multiple
October 1958, revised at Stockholm on 14 filing can be el~minated consequently avoid-
July 1967 and amended in 1979. This Agree- ing duplicate filing costs.
ment provides for the protection of Appella-
tions of origin, that is,lIgeographicai name of per does not contain any definition of pat-
the countries, region or locality II which serve entable subject matter. Therefore any inven-
to designate a product originating there- tion that is patentable under the laws of the
from , the quality and characteristics of member country may be made the subject
which are due exclusively or essentially to matter of an international patent application
the geographical enviornment, including under per. Further the per does not con-
natural and human factors. As on 1 January tain any requirement regarding the deposit
1995, it had 17 states as members. India is of microorganisms or the description of the
not a party to this agreement. characteristics of a deposited microorgan-
isms. The procedural steps under the per
are carried out in two stages, international
Locamo Agreement Establishing an
stage and national stage.
International Classificaton for
Industrial Designs (Locamo Union) The international stage begins when an ap-
plicant files the international patent applica-
This Agreement was signed on 8 October
tion with one of the receiving offices,
1968 and amended in 1979. It provides for a
generally th e national Patent Office of the
classification of goods in which industrial
country in which the applicant is resident or
designs are incorporated. This classifica-
national. An international search is then con-
tion, which comprises a list of classes and
ducted by an appropriate International
subclasses and an alphabetical list of goods,
Searching Authcrity (ISA) . Following the
will be used by contracting states for regis-
international search the application is sent to
tering national deposits.
the International Bureau, the WIPO in Ge-
As on 1 January 1995,23 states were party to neva which then publishes the application
this agreement as well as members. India is and provides copies to each of the desig-
not a party to this agreement. nated offices in the countries where protec-
70 J. INTELLEC. PROP. RIGHTS, MARCH 1996

tion is sought. The applicant then provides microorganisms for the purposes of
to each of the offices of the designated coun- patent procedure (Budapest Treaty)
tries the translation as is necessary and re-
Patent laws revolve around the central con-
quired national fees to com men ce the
cept of a written specification describing the
national stage.
invention to be protected. Sufficiency of dis-
The application is then subjected to the na- closure is the foundation of bargain between
tion al procedures in each of the designated an inventor and the patent granting author-
countries. In view of the non-patentability of ity and if it is lacking the defect cannot be
certain inventions such as plant and animal normally rectified by the incorporation of
varieties in several member countries of the required information at the stage when
per, International Searching Authority is the requirement is challenged.
not required to provide an international
In respect of inventions in the field of biotech-
search report if such inventions are the sub-
nology, the patent law has to cope up with the
ject matter of the international application.
fact that the insufficiency of the written de-
Since India is not a member of Paris Con- scription is inherent in these types of inven-
vention, it cannot take advantages from this tions and is not due to lack of drafting skill on
Treaty. the part of inventor orthegood faith on the part
of the applicant or the inventor.
Strasburg Agreement concerning the To meet the requirement of sufficiency of
International Patent Classification description in the law in the field of inven-
(IPC Union) tions relating to biotechnology, particularly
This Agreement provides for an Interna- involving the use of biological materials
tional Patent Classification. It was estab- such as strains, microorganisms etc. which
lished on 24 March 1971. As on 1 January are difficult to describe in words, the prac-
1995, it had 29 states as members. India is tice of required deposits of such biological
not a party to this agreement. materials in a depository institution has been
developed. The deposit makes supplement
Vienna Agreement Establishing an to the details given in the written patent
International Classification of the specification and also provide a source from
Figurative Elements of Marks (Vienna which samples of the biological material can
Agreement) be procured by the persons wishing to make
practical use of the invention by observing
This Agreement was signed on 12June 1973 the prescribed plocedure.
and amended in 1985. The country members
of this Agreement have formed a special Due to rapid development taking place in the
Union and adopted a common classification field of biotechnology interest in securing
for the figurative elements of marks. The patents for th e invention has gained impor-
classification has no effect in respect to the tance. Consequently many applicants wish-
extent of protection afforded to the mark. It ing to file applications for patents in this field
has 5 states as members. involving the use of biological materials face
many problems such as:
Budapest Treaty on the International a. lack of information about national law,
Recognition of the deposit of particularly regarding requirements
 GUP'fA & SUBBARAM: INT CONVENTIONS, AGREEMENTS & TREATIES 71

governing the use of biological materi- b. any sample furnished by IDA is the
als; sample which was deposited on that
date.
b. lack of uniformity of such national re-
quirements; As on l]anuary 1995, there were 34 country
members to the Treaty. The Treaty is admin-
c. fact that certain national laws require
istered by WIPO. Since India is not a mem-
a deposit to be made within that coun-
ber of the Paris Convention, it cannot
try, even in the case of applications become a party to the Treaty.
claiming priority based upon a first
filed application in another country
International Convention for the
where a deposit has already been
protection of new varieties of plants
made. (UPOV Convention)
To solve these difficulties, the Budapest
Seed and planting materials are critical in-
Treaty was brought into force in 1980. The
puts for agriculture. Continuous genetic up-
Treaty provides that member countries gradation of plant varieties and hybrids are
should recognise for their own patent proce- very essential to meet the growing needs. It
dures a deposit made in another country. is also necessary to provide adequate incen-
The backbone of the Treaty is provision of tive to the scientists/institutions and appro-
series of Interootional Depository Authori- priate protection for the result achieved
ties (IDA) . For qualifying as an IDA, a de- thereby. Due to the recognition of these
pository institution must be located in the .aspects and the growing needs of improved
seeds and planting materials, issues relating
territory of a member country and should
to plant breeders rights, plant variety protec-
have assurances that the institution com-
tion etc. are being raised more often now
plies with the requirements essential for it to than before.
permanently carry out its tasks under the
Treaty. As on 1 January 1995, a total of 26 An international organization "International
Depository institutions have acquired IDA Association of Plant Breeders for Plant Vari-
status. There are 7such recognised deposi- ety Protection (ASSINSEL) was established
tories in UK, 3 each in Republic of Korea and in 1938. The main objective of the Associa-
tion is to persuade the different govern-
Russian Federation, two in USA and one
ments to introduce legislations to protect the
each Australia, Belgium, Bulgaria, Czech
rights of plant breeders so as to provide
Republic, France, Germany, Hungary, Neth-
them reasonable returns for the investment
erlands, Spain and Slovakia. they have made in breeding new varieties.
The most important aspect of the Treaty is On 2 December 1961, an International Con-
the provision for recognition by all mem- vention for the protection of New Varieties
bers, the deposit in a single IDA The deposit of Plant (UPOy) was signed in Paris by
may be made in any IDA and once the de- some European Countries and the Conven-
posit is made two facts are recognised viz: tion was revised in 1972, 1978 and 1991. The
purpose of this Convention is to stimulate
a. the depos\t was made on the indicated plant breeding to increase agricultural pro-
date; duction by encouraging plant breeders and
72 J. INTELLEC. PROP. RIGHTS, MARCH 199ti

to provide the plant breeders the legal rights material in the production of ornamental
therefor. plants or cutflowers.
The Convention, accordingly', established Authorisation by the breeder shall not be
an International Union which has 27 states required either fo r the utilization of the vari-
as its members as on 1 January 1995. The ety as an initial source of variety for the
member countries are Argentina, Australia, purpose of creating other varieties or fo r the
Austria, Belgium, Cananda, Czech Republic , marketing of such varieties. Such authorisa-
Denmark, Finland, France, Germany, Hun- tion shall be required, however, when the
gary, Ireland, Israel, Italy, Japan, Nether- repeated use of the variety is necessary for
lands, Newzealand, Norway, Pola nd , the commercial production of another vari-
Slovakia, S. Africa, Spain, Sweden and Swit- ety. The free exercise of the exclusive right
zerlan d, United Kingdom, USA and Uru- accorded to the breeder may not be re-
guay. The national laws of these countries stricted other than for reasons of public in-
provide fo r the grant rights for plant breed- terest. The rights co nferred on the breeder
ers. The headquarter of the Union is at Ge- may not be less than 15 years from the date
neva and it is administered by WIPO. of issue of the title of protection. For vines,
Under the Convention, each member state forest trees, fruit trees and ornamental trees,
of th e Union may recognize the rights of the includ ing in each case, their root stocks, the
breeder by the grant either of a special title period of protection may not be less than 18
of protection or of a patent. In the case of a years from the s2id date.
member state of the Union whose national
law admits for protection under both these Berne Conventions on Copyright (BeC)
forms, may provide only one of them for one
and the same botanical genus or species. International Protection to literary and artis-
Further, each member state of the Union tic works is regulated by two conventions
may limit the application of this Convention namely Berne Convention (1886) and Uni-
within a genus or species to varieties with a versal Copyright Convention (1952). Nearby
particular manner of reproduciton or multi- 111 countries are the members of the Berne
plication or a certain end use. The Conven- Convention (BC) and 95 countries co nsti-
tion may be applied to all botanical genera or tute the Universal Copyright Convention
species. The right granted to the breeder (UCC) . Berne Convention is administered
under the Convention is that his prior au- through WIPO while the Universal Copy-
thorisation shall be required for: (a) the pro- right Convention through UNESCO.
duction for commercial marketing; (b)
offering for s.ale; and (c) marketing. of the The Convention provides for National Treat-
reproductive or vegetative propagating ma- ment i.e. a country must give the same treat-
terial as such of the variety. ment to the Nationals of other countries as
it gives to its own and provides for certain
Vegetative propagating material shall be minimum standards of protection.
deemed to include whole plants. The right of
the breeder shall extend to ornamental India is a member of both the Conventions
plants or parts thereof normally marketed and therefore works first published outside
fo r purposes other than propagation when India in any of the convention countries en-
they are used commercially as propagating joy protection in India.
 GUPTA & SUBBARAM: INT CONVENTIONS, AGREEMENTS & TREATIES 73

Nairobi Treaty on the Protection of Some Important Conventions not

Olympic Symbol (Nairobi Treaty) administered by WIPO
Thirty-six states and India are the members
of the Treaty. European Patent Convention
The European P~tent Convention (EPC)
Other Treaties administered by WIPO
was drafted in 1963 and brought into force
• Convention for the Protection of Produc- on 7 October 1977. As on 1 January 1995,
ers of Phonograms and against unauthor- there were 17 European countries which
ised duplication of their Phonograms were members of the Convention.
(Geneva, 197-1) The EPC is administered by the European
Member states: 52 including India Patent Office situated one in Munich, Ger-
many and the other in Hague, The Nether-
• International Convention for the Protec- lands. The office at The Hague is
tion of Perform e r s, Producers of responsible for conducting search for ascer-
Phonograms and Broadcasting Organiza- taining the novelty of the invention disclosed
tions Rome Convention (1961) in an European patent application. The office
Member states: 47 at Munich carries out the examination of the
patent applications based on the search re-
• Convention relating to Distribution of port issued by the office at the Hague and
Programme carrying signals transmitted considers the patentability of the invention
by satellite (Brussels, 1974) under the Convention.
Member states : 19 The grant of a European patent does not
• Treaty on International Registration of result in the existence of a single unitary
Audiovisual Works (Geneva, 1989) patent covering the whole of the territories
of the designated countries, but rather leads
Member states : 12 to a bundle of national patents, each being
governed by the same provisions of as a
Treaties not yet in force national patent granted directly in the coun-
tries concerned.
• Treaty on Intellectual Property in respect
of Integrated Circuits (Washington, The advantage of filing an application under
1989) the Convention is to reduce the cost of obtain-
ing patent protection by avoiding duplication
Signatory states : 8 including India. of efforts in filing, searching to ascertain the
• Protocol relating to the Madrid Agree- novelty of the invention and the examination
ment concerning the International Regis- of the application, minimising thereby the
tration of Marks (1989) number of translations required. It also helps
in economising the use of professional time
Signatory states: 27 both on the part of the applicants, domestic
patent representatives and those located hI the
• Trademarks Law Treaty (Geneva, 1994)
countries where protection is desired. It re-
Signatory states: 29 quires the filing of only a single application
74 J. INTEUEC. PROP. RIGHTS, MARCH 1996

where the names of the countries where should be given such protection without for-
protection is required are designated. mality, without registration or deposit of cop-
There is only single examination in respect ies, provided all copies of the work bear the
of all the countries where protection is re- symbol @ accompanied by the name of the
quired and there is no requirement of filing owner of the copyright and the year of first
in the language of the countries concerned. publication. The convention will not apply to
The language may be English, German, or those works which are permanently in the
French. public domain in the state in which protec-
tion is sought.
Notwithstanding the provisions of the na-
tionallaws of the member states designated The African Intellectual Property
in a European patent, the patent issued un- Convention (OAP!)
der the Convention will have a duration of20
It has 14 African states as members.
years from the date of filing the application,
except for extension under the national laws The African Regional Industrial
on account of a state of war or other similar Property Organisation (ARIPO)
emergency conditions.
It has 14 states as members. The difference
Universal Copyright Convention (UCC) between these two African Intellectual Prop-
erty Organisations is that a single applica-
International Protection to literary and artis- tion in the case of OAPI should designate all
tic works is regulated by two conventions the member states whereas in the case of
namely Berne Convention (1886) and Uni- ARIPO, it is possible to designate only se-
versal Copyright Convention (1952) and re- lected countries.
vised at Paris in 1971. Ninety-five countries
are members of the Universal Copyright The Cartagena Agreement Legislation
Convention (DCC). UCC has been, mainly, on Industrial Property
formed by USA, USSR and Latin American
This Agreement has been formulated for
countries and is administered through
Latin American countries and is in force in
UNESCO. Bolivia, Colombia, Ecquador, Peru and
The Convention provides for National Treat- Venezuela from May, 1987. The objective of
ment i.e. a country must give the same treat- the agreement is to provide common treat-
ment to the nationals of other countries as it ment by the member states to foreign capi-
gives to its own.. UCC provides a minimum tal, trademarks, patents, licencing
term of protection Le. the life of author plus agreements and royalties.
25 years and 10 years for photographs and
for works of applied art. list of State Members to WIPO,
India is a member of both the Conventions Paris Convention and European
and therefore works first published outside Patent Convention
India in any of the convention countries en-
joy protection in India. Under the provision
World Intellectual Property
Organisation (WIPO)
of UCC published works, if first published
outside the territory of a member state and Albania, Algeria, Andorra, Angola, Argen-
not being the work of a national author tina, Armenia, Australia, Austria, Bahamas,
 GUPTA & SUBBARAM: INT CONVENTIONS. AGREEMENTS & TREATIES 75

Bangladesh, Belarus. Barbados, Belgium, larus, Belgium, Benin. Bolivia, Bosnia-Her-

Benin, Bhutan , Bolivia, Bosnia-Herze- zegovina, Brazil, Bulgaria, Burkina Faso.
govina, Brazil, Brunei, Bulgaria, Burkina Burundi, Cameroon, Canada, Central Afri-
Faso, Burundi, Cameroon, Canada, Central can Republic, Chad, Chile. China, Congo,
African Republic, Chad, Chile, China, Co- Cote d'Ivoire. Croatia, Cuba, Cyprus, Czech
lombia, Congo, Costa Rica, Cote d'Ivoire,
Republic, Democratic People's Republic of
Croatia, Cuba, Cyprus, Czech Republic,
Democratic People's Republic of Korea, Korea. Denmark. Dominican Republic,
Denmark, Ecuador, Egypt, EI Salvador, Es- Egypt, El Salvador, Estonia, Finland,
tonia, Fiji, Finland, France, Gabon, Gambia, France, Gabon, Gambia, Georgia, Germany,
Georgia, Germany, Ghana, Greece, Ghana, Greece. Guinea, Guinea-Bissau,
Guatamala, Guinea, Guinea-Bissau, Haiti, Haiti, Holy See, Honduras, Hungary. Ice-
Holy See, Honduras, Hungary, Iceland, In- land, Indonesia. Iran, Iraq, Ireland, Israel,
dia, Indonesia, kaq, Ireland, Israel, Italy, ja- Italy, japan, jordan, Kazakhstan, Kenya,
maica, japan, jordan, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lebanon, Lesotho, Libe-
Kyrgyzstan, Laos, Latvia, Lebanon, Lesotho,
ria, Libya, Liechtenstein, Lithuania, Luxem-
Liberia, Libya. Liechtenstein, Lithuania,
Luxembourg, Madagascar, Malawi, Malay- bourg, Madagascar, Malawi, Malaysia, Mali,
sia, Mali, Malta, Mauritania, Mauritius, Malta, Mauritania, Mauritius, Mexico, Mon-
Mexico, Monaco, Mongolia. Morocco. Na- aco, Mongolia. Morocco, Netherlands. New
mibia. Netherlands, New Zealand , Nicara- Zealand. Niger. Nigeria. Norway, Paraguay,
gua . Niger, Nigeria. Norway, Pakistan, Peru. Philippines. Poland. Portugal. Repub-
Panama, Paraguay, Peru, Philippines, Po- lic of Korea, Republic of Moldova. Romania,
land . Portugal. Qatar. Republic of Korea, Re- Russia. Rwanda, San Kitts and Nevis, St.
public of Moldova, Ro m ania, Russia, Marino. Senegal. Singapore, Slovakia.
Rwanda, St Lucia, San Marino, Saudi Arabia,
Slovenia, South Africa. Spain. Sri Lanka. Su-
Senegal, Sierra Leone, Singapore, Slovakia,
dan, Surinam, Swaziland. Sweden. Switzer-
Slovenia, Somalia, South Africa, Spain, Sri
Lanka, Sudan, Surinam, Swaziland. Sweden, land, Syria. Tajikistan , Macedonia. Togo.
Switzerland, Tajikistan, Thailand, Mace- Trinidad and Tobago, Tunisia. T urk ey,
donia. Togo, Trinidad and Tobago, Tunisia, Uganda. Ukraine, United Kingdom. United
Turkey, Uganda, Ukraine, United Arab Republic of Tanzania. United States of Amer-
Emirates, United Kingdom, United Republic ica. Uruguay. Uzbekistan. Vietnam, Yugo-
of Tanzania, United States of America, Uru- slavia, Zaire. Zambia, Zimbabwe.
g uay, Uzbekistan, Venez uela. Vietnam,
Yeme n, Yugoslavia, Zaire. Zambia. Zim- European Patent Convention
babwe. Austria. Belgium. Denmark. France. Ger-
Paris Convention for the Protection of many, Greece. Ireland. Italy. Liechtenstein.
IndusnnruProperty Luxembourg, Monaco, Netherlands. Portu-
Algeria, Argentina, Armenia. Australia. Aus- gal. Spain. Sweien , Switzerland. United
tria. Bahamas. Bangladesh. Barbados. Be- Kingdom.