Today we begin our series of blog posts titled International Patent Law. Through this series, we pretend to explain some concepts related to the most common patent subject matters. At IP Consultores, we think it is possible to grasp the general aspects of Patent Law if we first understand the International Intellectual Property System.
Among the main multilateral agreements on Patent Law are: 1) the Paris Convention for the Protection of Industrial Property, 2) the Patent Cooperation Treaty, and 3) the Agreement on Trade-Related Aspects of Intellectual Property Rights of the World Trade Organization.
This post focuses on analyzing some concepts and norms settled in the Paris Convention because we think that is useful for understanding each legal figure that shapes International Patent Law.
The Paris Convention of 1883
The Paris Convention for the Protection of Industrial Property was signed in Paris, France, on 20 March 1883 and entered into force on 7 July 1884. The first signatory member states were: Belgium, Brazil, Spain, France, Guatemala, Italy, Netherlands, Portugal, El Salvador, Serbia, Switzerland, the United Kingdom, Tunisia, and Ecuador.
Even though some relevant antecedents of legal and policy discussions existed in the International Patent Congress in 1873 [1], the Paris Convention was the first international treaty recognizing Industrial Property Rights [2]. Patents, Industrial Designs, Utility Models, and Trademarks were central legal figures identified in this international agreement.
The Paris Convention sets forth an international law entity called the Union for the Protection of Industrial Property according to Article 1 (1). Furthermore, an Assembly of the Union and different administrative bodies, such as an International Bureau and the Assembly’s Executive Committee. It is essential to highlight that the World Intellectual Property Organization has legal ground in another international agreement.
The right of priority
When a patent prosecution procedure starts before an Intellectual Property Office, it is necessary to know if somebody has previously submitted another patent application on the same claims. In patent jargon, we talk about a right of priority when someone pretends to file other applications -in different countries of the Paris Convention- for the same claims of an invention.
Following article 4 A (1), “any person who has duly filed an application for a patent […] shall enjoy a right of priority” to file in the other countries of the Union. The period of priority established in the Paris Convention is twelve months for patents, starting “from the date of filing of the first application.”
Moreover, if someone pretends to take advantage of the right of priority, she must “make a declaration indicating the date of such filing and the country in which it was made.” Furthermore, the person who avails himself of the right of priority of any application must specify the docket number of the first application.
The Paris Convention states that the countries will not be able to require other formalities than a copy of the application previously filed for the declaration of priority. Following article 4 D (2), the authority that received a claim of a right of priority must mention it in the publication issued during the prosecution’s procedure of the patent or in the document granted.
According to Article 4 F, the Contracting States cannot refuse a right of priority or patent application due to the applicant’s multiple priorities. Furthermore, when someone claims elements not included in the first application, he may claim a right of priority under ordinary conditions.
By Article 4 bis (1), if someone has obtained a patent in some country belonging to the Paris Convention, this patent “shall be independent of patents obtained for the same invention in other countries.” The patents obtained through the benefit of priority shall have a duration equal in the countries of the Union.
Finally, the Paris Convention also recognizes a legal figure called Inventor’s certificate. Even though an Inventor’s certificate differs from a patent, both acknowledge the benefit of priority.
Rights of inventors
Each Inventor has a right to be mentioned as such in the patent following Article 4 ter of the Paris Convention.
Moreover, according to Article 5 quarter, the patentee shall have all the rights of a product imported into a country “where there exists a patent protecting a process of manufacture of the said product.”
By Article 5 bis, the patentees will have a period of grace to pay the fees of not less than six months. Furthermore, when canceling patents because of non-payment of costs, the countries can restore them according to Article 5 bis (2).
Compulsory licenses
Following Article 5 A (2), the countries of the Union can grant compulsory licenses “to prevent the abuses which might result from the exercise of the exclusive rights conferred by the patent.” Nonetheless, the countries can’t grant any compulsory license before “a period of four years from the date of filing of the patent application or three years from the date of the grant of the patent.” These compulsory licenses shall be non-exclusive and shall not be transferable.
Forfeiture of the patent
Following Article 5 A (3), when the grant of compulsory licenses does not prevent abuses of the patentee, it will be possible to make the forfeiture of the patent effective. Even though any proceeding of the forfeiture of the patent or revocation “may be instituted before the expiration of two years from the grant of the first compulsory license.”
Although the Paris Convention was the first multilateral agreement recognizing Industrial Property Rights, some regional systems exist in the International Intellectual Property System, such as the European Patent System or the African Regional Intellectual Property Organization. We cannot lose sight of the fact that they are also very relevant for International Patent Law because they have contributed to a more deep development of Intellectual Property Rights.
Finally, throughout this series of posts, we pretend to explain easily some of the most common concepts that shape International Patent Law. Our next post will be about the Patent Cooperation Treaty and the international procedure for prosecuting patents across the different Contracting States.
[1] RICKETSON, Sam, “The Trademark Provisions in the Paris Convention for the Protection of Industrial Property,” in CALBOLI, Irene and GINSBURG, Jane C. (eds.) The Cambridge Handbook of International and Comparative Trademark Law, Cambridge University Press, 2020, p. 4.
[2] The Paris Convention has had some revisions throughout its history: Brussels (1897, 1900), Washington (1911), The Hague (1925), London (1934), Lisbon (1958), and Stockholm (1967).
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