PARIS CONVENTION FOR PROTECTION FOR THE

PROTECTION OF INDUSTRIAL PROPERTY, 1883

During the last century, before the existence of any international convention in the
field of industrial property, it was difficult to obtain protection for industrial property
rights in the various countries of the world because of the diversity of their laws.
Moreover, patent applications had to be made roughly at the same time in all
countries in order to avoid a publication in one country destroying the novelty of the
invention in the other countries.

These practical problems led to some international efforts towards smoothening the
patenting process across the nations. The second half of last century saw the
development in industrial sector with large flow of technology and trade across the
international borders. This brought in an urgent need for harmonization of industrial
property laws in both patent and trade mark field. When the Government of the
Empire of Austria-Hungary invited other countries to participate in an international
exhibition of inventions held in 1873 at Vienna, participation was hampered by the
fact that many foreign visitors were not willing to exhibit their inventions at that
exhibition in view of the inadequate legal protection offered to exhibited inventions.

This led to two developments: firstly, a special Austrian law secured temporary
protection to all foreigners participating in the exhibition for their inventions,
trademarks and industrial designs. Secondly, the Congress of Vienna for Patent
Reform was convened during the same year, 1873. It elaborated a number of
principles on which an effective and useful patent system should be based, and urged
governments to bring about an international understanding upon patent protection as
soon as possible.
A new Diplomatic Conference was convened in Paris in l883, which ended with final
approval and signature of the Paris Convention for the Protection of Industrial
Property. Its membership particularly increased after World War II.

Provisions:

1. Right to national treatment in each of the member countries.

2. Right of priority.
3. Rules establishing rights and obligations of natural persons and legal entities,
or rules requiring or permitting the member countries to enact legislation
following those rules.
4. Administrative framework which has been set up to implement the
Convention, and includes the final clauses of the Convention.

NATIONAL TREATMENT – PROTECTION OF FOREIGNERS AGAINST

DISCRIMINATION (ARTS. 2, 3):

National Treatment means that, as regards the protection of industrial property, each
country party to the Paris Convention must grant the same protection to nationals of
the other member countries as it grants to its own nationals.

The same national treatment must be granted to nationals of countries which are not
party to the Paris Convention if they are domiciled in a member country or if they
have a real and effective industrial or commercial establishment in such a country.
However, for the nationals of member countries no requirement as to domicile or
establishment in the country where protection is claimed shall be imposed upon as a
condition for benefiting from an industrial property right.

National Treatment of Legal Entities:

The national treatment rule applies first of all to the nationals of the member
countries. The term national includes both natural persons and legal entities. With
respect to legal entities, the status of being a national of a particular country may be
difficult to determine. Generally, no nationality as such is granted to legal entities by
the various national laws. There is of course no doubt that State-owned enterprises
of a member country or other entities created under the public law of such country
are to be considered as nationals of the member country concerned. Legal entities
created under the private law of a member country will usually be considered a
national of that country. If they have their actual headquarters in another member
country, they may also be considered a national of the headquarters country.

National Treatment and Principle of Reciprocity:

Requirement of reciprocity of protection is excluded under Paris Convention.

Suppose that a given member country X has a longer term of patent protection than
another member country Y. In such case country X will not have the right to provide
that nationals of country Y will enjoy a term of protection of the same length as the
term of protection is in the law of their own country. This principle applies not only
to codified law, but also to the practice of the courts (jurisprudence) and to the
practice of the Patent Office or other administrative governmental institutions, as it
is applied to the nationals of the country. The application of the national law to the
national of Y country does not, however, prevent him from invoking more beneficial
rights specially provided in the Paris Convention.

Exception to the National Treatment Rule - Art 2(3) - Additional compliance of

rules by Foreigners:

Article 2(3) states an exception to the national treatment rule. The national law
relating to judicial and administrative procedure, to jurisdiction and to requirements
of representation is expressly reserved. This means that certain requirements of a
mere procedural nature which impose special conditions on foreigners for purposes
of judicial and administrative procedure, may also validly be invoked against
foreigners who are nationals of member countries.

Eg: Requirement for foreigners to deposit a certain sum as security or bail for the
costs of litigation or the requirement that foreigners should either designate an
address for service or appoint an agent in the country in which protection is
requested.

Application of National Treatment Rule to citizens of Non-Member Countries

(Art. 3):

Article 3 provides for the application of the national treatment rule also to nationals
of The Paris Convention non-member countries, if they are domiciled or have an
industrial or commercial establishment in a member country.

What is domicile?

The place or country of residence, which is legally or officially recognized. The term
domiciled is not to be interpreted in the strict legal sense of the term. A mere
residence, more or less permanent as distinct from a legal domicile, is sufficient.
Legal entities are domiciled at the place of their actual headquarters.

No domicile, but industrial or commercial establishment in the Member country -

If there is no domicile, there may still be an industrial or commercial establishment

in the Member country which gives a person the right to national treatment. The
Paris Convention requires that there must be actual industrial or commercial activity.
A mere letter box or the renting of a small office with no real activity is not sufficient.

RIGHT OF PRIORITY (Art. 4):

The right of priority means that, if you file a regular application for an industrial
property right in one of the member countries, on its basis you may apply for
protection in all the other member countries, within a specified period of time (six
or twelve months). These later applications will then be regarded as if they had been
filed on the same day as the earliest application. Hence, these later applications enjoy
a priority status with respect to all applications relating to the same invention filed
after the date of the first application. They also enjoy a priority status with respect
to all acts accomplished after that date (like patent publication) which would
normally be apt to destroy your rights or the patentability of the invention. The
provisions concerning the right of priority are contained in Article 4 of the
Convention.

Additional period of disposal granted:

The right of priority offers great practical advantages to you, as an applicant desiring
protection in several countries. You are not required to present all applications at
home and in foreign countries at the same time, since there are six to twelve months
at your disposal to decide in which countries to request protection. You can use that
period to organize the steps to be taken to secure protection in the various countries
of interest in the particular case.

Beneficiary of Right of Priority:

The beneficiary of the right of priority is any person entitled to benefit from the
national treatment rule who has duly filed an application for a patent for invention
or another industrial property right in one of the member countries.

Right of priority can be based only on the first application:

The right of priority can be based only on the first application for the same industrial
property right which must have been filed in a member country. It is therefore not
possible to follow a first application by a second, possibly improved application and
then to use that second application as a basis of priority. The reason for this rule is
obvious: one cannot permit an endless chain of successive claims of priority for the
same subject, as this could, in fact, considerably prolong the term of protection for
that subject.

Transfer of IP rights to Successor-in-title (Art. 4A):

Article 4A(1) of the Paris Convention states that the right of priority may also be
invoked by the successor in title of the first applicant. The right of priority may be
transferred to a successor in title without simultaneously transferring the first
application. This allows the transfer of the right of priority to different persons for
different countries.

PROVISIONS CONCERNING PATENTS

Independence of Patents - Fate of a particular patent for invention in any given

country has no influence whatsoever on the fate of a patent for the same invention
in any of the other countries.

Patents for invention granted in member countries to nationals or residents of

member countries must be treated as independent of patents for invention obtained
for the same invention in other countries, including non-member countries. The rule
concerning the independence of patents for invention is contained in Article 4bis.

This principle is to be understood in its broadest sense. It means that the grant of a
patent for invention in one country for a given invention does not oblige any other
member country to grant a patent for invention for the same invention. Furthermore,
the principle means that a patent for invention cannot be refused, invalidated or
otherwise terminated in any member country on the ground that a patent for
invention for the same invention has been refused or invalidated, or that it is no
longer maintained or has terminated, in any other country. In this respect, the fate of
a particular patent for invention in any given country has no influence whatsoever
on the fate of a patent for the same invention in any of the other countries.

The underlying reason and main argument in favour of this principle is that national
laws and administrative practices are usually quite different from country to country.
A decision not to grant or to invalidate a patent for invention in a particular country
on the basis of its law will frequently not have any bearing on the different legal
situation in the other countries. It would not be justified to make the owner lose the
patent for invention in other countries, on the ground that he or she lost a patent in a
given country as a consequence of not having paid an annual fee in that country, or
as a consequence of the patent’s invalidation in that country, on a ground which does
not exist in the laws of the other countries.

The Right of the Inventor to be Mentioned:

The inventor shall have the right to be mentioned as such in the patent (Art. 4ter) –

This provision concerning what is commonly called the " moral right " of the
inventor to be named as such in the patents granted for his invention in all countries
of the Union, was introduced into the Convention at the Revision Conference of
London in 1934.

The procedure for the exercise of this right of the inventor is to be regulated by the
member States in their national legislation. Since the inventor has only the right to
be mentioned in the patent, he can waive this right, unless national legislation
prescribes otherwise. The original proposals for the provision contained a clause
according to which any contract contrary to the provision would be null and void,
but this clause was not accepted. This question is therefore a matter for national
legislation.
Importation, Failure to Work and Compulsory Licenses:

Article 5A applies to patentees who are entitled to benefit from the Paris Convention
and who, having a patent in one of the countries of the Paris Union, import to this
country goods (covered by the patent) which were manufactured in another country
of the Union. In such a case, the patent granted in the country of importation may
not be forfeited as a sanction for such importation. In this context, the term patentee
would also cover the representative of the patentee, or any person who effects the
importation in the name of such patentee.

The term forfeiture in Article 5A(1) includes any measure which has the effect of
definitively terminating the patent. Therefore it would cover the concepts of
invalidation/annulment (legally ineffective), revoke, repeal, or fines, suspension of
rights, etc.

With respect to the working of patents and compulsory licenses, the essence of the
provisions contained in Article 5A is that each country may take legislative measures
providing for the grant of compulsory licenses. Compulsory licenses on the ground
of failure to work or insufficient working are the most common kind of coercive
measure against the patent owner to prevent abuses of the rights conferred by the
patent for invention. The main argument for enforcing working of the invention in a
particular country is the consideration that, in order to promote the industrialization
of the country, patents for invention should not be used merely to block the working
of the invention in the country or to monopolize importation of the patented article
by the patent owner. They should rather be used to introduce the use of the new
technology into the country. Whether the patent owner can really be expected to do
so, is first of all an economic consideration and then also a question of time. Article
5A therefore tries to strike a balance between these conflicting interests.
Compulsory licenses for failure to work or insufficient working of the invention may
not be requested before a certain period of time has elapsed. This time limit expires
either four years from the date of filing of the patent application or three years from
the date of the grant of the patent for invention. The applicable time is the one which,
in the individual case, expires last.

The time limit of three or four years is a minimum time limit. The patent owner must
be given a longer time limit, if there are legitimate reasons for inaction like legal,
economic or technical obstacles prevent working, or working more intensively, the
invention in the country. If that is proven, the request for a compulsory license must
be rejected, at least for a certain period. The time limit of three or four years is a
minimum also in the sense that national law can provide for a longer time limit.

Compulsory licenses may also be granted for reasons of the public interest, in cases
where there is no abuse by the patent owner of his rights. Such situations may be in
the fields of military security or public health. There are also cases where a
compulsory license is provided for to protect the public interest in unhampered
technological progress.

This is the case of the compulsory license in favour of the so-called dependent
patents. If a patented invention cannot be worked without using an earlier patent for
invention granted to another person, then the owner of the dependent patent, in
certain circumstances, may have the right to request a compulsory license for the use
of that invention.

If the owner of the dependent patent for invention obtains the compulsory license,
he may in turn be obliged to grant a license to the owner of the earlier patent for
invention. It should be noted, however, that Article 31 of the TRIPS Agreement
further provides a number of conditions with respect to the use of subject matter of
a patent without the authorization of the right-holder. This Article allows Members
to authorize third persons to exploit a patented invention, even against the will of the
patent owner, provided certain conditions are respected. The Agreement does not
prescribe nor limit the grounds on which such authorizations may be granted.

Grace Period for the Payment of Maintenance Fees:

Article 5bis provides for a grace period for the payment of maintenance fees for
industrial property rights and deals with the restoration of patents for invention in
case of non-payment of fees.

In most countries the maintenance of certain industrial property rights, mainly the
rights in patents for invention and trademarks, is subject to the periodic payment of
fees. For patents, the maintenance fees must generally be paid annually, and in that
case are also called annuities. Immediate loss of the patent for invention in the event
that one annuity is not paid at the due date would be too harsh a sanction. Therefore,
the Paris Convention provides for a period of grace, during which the payment can
still be made after the due date to maintain the patent. That period is six months, and
is established as a minimum period, leaving countries free to accept a longer period.

The delayed payment of the annuity may be subjected to the payment of a surcharge.
In that case, both the delayed fee and the surcharge must be paid within the grace
period. During the grace period, the patent for invention remains provisionally in
force. If the payment is not made during the grace period, the patent for invention
will lapse retroactively, that is, as of the original due date of the annuity.

Patents in International Traffic (Art. 5ter):

Art. 5ter deals with the transit of devices on ships, aircraft or land vehicles through
a member country in which such device is patented. Where ships, aircraft or land
vehicles of other member countries enter temporarily or accidentally a given
member country and have on board devices patented in that country, the owner of
the means of transportation is not required to obtain prior approval or a license from
the patent owner. Temporary or accidental entry of the patented device into the
country in such cases constitutes no infringement of the patent for invention.

Inventions Shown at International Exhibitions:

Art. 11 of the Convention contains the temporary protection rule in respect of goods
exhibited at international exhibitions.

A further common rule of a substantive nature is the provision concerning temporary

protection in respect of goods exhibited at international exhibitions, contained in
Article 11 of the Convention. The principle stated in Article 11 is that the member
countries are obliged to grant, in conformity with their domestic legislation,
temporary protection to patentable inventions, utility models, industrial designs and
trademarks in respect of goods exhibited at official or officially recognized
international exhibitions held in the territory of any member country. Temporary
protection may be provided by various means. One is to grant a special right of
priority, similar to that provided for in Article 4. This priority right would start from
the date of the opening of the exhibition or from the date of the introduction of the
object at the exhibition. It would be maintained for a certain period, say twelve
months, from that date, and would expire if the application for protection does not
follow the exhibition within that period. Another means which is found in a number
of national laws, in particular with respect to patents for invention, is that of
prescribing that, during a certain period of, say, twelve months before the filing or
priority date of a patent application, a display of the invention at an international
exhibition will not destroy the novelty of the invention. When choosing that solution,
it is important to protect the inventor or other owner of the invention during the same
period also against abusive acts of third parties. This means in particular that the
person exhibiting the invention must be protected against any copying or usurpation
of the invention for purposes of a patent application by a third party. The owner of
the invention must also be protected against disclosure, based on the exhibition, by
third parties. Article 11 applies only to official or officially recognized exhibitions.
The interpretation of that term is left to the member country where protection is
sought. An interpretation corresponding to the spirit of Article 11 is to consider an
exhibition as official, if it is organized by a State or other public authority, to consider
it as officially recognized, if it is not official but has at least been recognized as
official by a State or other public authority, and to consider it as international, if
goods from various countries are exhibited.