INTERNATIONAL INTELLECTUAL PROPERTY CONVENTIONS
By Michael Trenholm and John Holcomb
Knobbe Martens Olson & Bear LLP
As published in the Riverside Lawyer, September 2006

            As the world economy has become increasingly intertwined and interdependent over the past few decades, the international community has adopted various Intellectual Property law conventions to facilitate IP owners’ acquisition of corresponding IP rights in multiple foreign countries.  Much recent discussion, especially in the US, has focused on the need for, and the desirability of, harmonizing disparate national laws relating to patents, copyrights, and trademarks.  If full harmonization of existing national IP laws is the objective, then the current system falls far short.

            To provide some background, the term “intellectual property” (or “IP”) refers generally to rights granted or acknowledged by a government that provide some sort of limited monopoly power to the holder of those rights.  Patents, copyrights, and trademarks are common types of IP.  Patents protect new and useful inventions, or improvements to old inventions, such as the better mousetrap.  A design patent, or an industrial design, is one particular type of patent that protects the unique ornamental appearance of an object.  Trademarks generally protect words, slogans, and logos that designate the origin of a product or service.  Copyrights protect artistic or creative expression that is fixed in some medium, such as written manuscripts, artwork, music recordings, and architectural drawings.  The international conventions that relate to each of these different types of intellectual property rights are briefly described below.

            With respect to patent and trademark rights, most of the world’s significant industrialized countries have signed onto the Paris Convention for the Protection of Industrial Property.  The Paris Convention originated in the late 1800s, and it has been modified numerous times in the past century.  The Paris Convention essentially allows a person who has filed a patent or trademark application in one member country to file a corresponding application in another member country and establish an effective filing date for the corresponding application equivalent to the date of the original application.

            IP owners seeking the benefits of the Paris Convention must adhere to certain time deadlines.  Specifically, to claim the benefit under the Paris Convention for a utility patent, the IP owner must file its corresponding application within one year of the original filing date; for design patents and trademarks, the IP owner must file its corresponding application within six months of the original application.

            The benefits conferred by the Paris Convention relate to the substantive national patent or trademark laws of different member countries.  For example, many industrialized countries, including Japan and the countries of the European Union, require an IP owner to file its patent application before it publicly discloses its invention anywhere in the world.  Without the Paris Convention, patent applicants would have to file all of their patent applications throughout the world before they commercialized their inventions, which, of course, would be cost prohibitive.  The Paris Convention alleviates this problem by allowing IP owners to file their applications in only one convention country, and then complete their filings in other countries up to six months or a year later.

            Thus, while the Paris Convention facilitates the filing of patents and trademarks in multiple countries, it is largely a procedural tool because it does not address each member country’s substantive laws relating to patents and trademarks.  Hence, IP owners must comply with the various formal and substantive legal requirements in each of the countries in which they seek IP protection.

            An example of the disparity in substantive patent and trademark law is evidenced by the way different countries determine who among competing applicants is entitled to a particular patent or trademark.  In most European countries and in Japan, the first entity to file the patent or trademark application is entitled to the resulting intellectual property right.  However, in the United States, the person entitled to a patent or trademark is more often the entity that can establish that it either first invented the subject matter of the patent or first used the trademark in public.  Another example of the difference between the substantive laws of different countries relates to the type of subject matter that can be patented.  In the United States, one can obtain a patent on a unique method of treating medical patients; however, in many European countries, methods of medical treatment are not patentable.

            The discrepancy between the substantive laws of different countries has led to many calls for treaties that would harmonize those laws.  Such harmonization has occurred on a regional basis in some places of the world.  For example, the European Patent Office will examine patents that have force and effect throughout the European Union.  Similarly, the Patent Cooperation Treaty (or “PCT”) allows for the examination of patent applications before those applications are examined by the national patent offices.  However, while the PCT effectively functions as a clearinghouse for international applications, it does not replace existing national patent offices.

            International copyright law provides one example of the greater harmonization of substantive IP laws.  Copyrights are covered by the Berne Convention.  Signatories have agreed that the basic substantive copyright laws set forth in the Berne Convention will be the law in those countries.  Accordingly, a person who has obtained a copyright in one Berne Convention country possesses automatic copyright protection in all Berne Convention countries.  The Berne Convention eliminates many of the various formal requirements with which IP owners were required to comply in the past.  These formal requirements included the mandatory display of copyright notices and the need to file a copyright application before enforceable rights attached to the copyrighted work.  Some countries, including the United States, still require IP owners to comply with some of these requirements in order to enjoy protections that are above and beyond the Berne Convention’s basic remedies.

            Most commentators believe that, as the world economy becomes increasingly complex, efforts to harmonize IP laws will increase.  Increased harmonization will enhance IP owners’ ability to obtain corresponding rights in foreign countries in an efficient manner.  However, sovereign nations do have different national interests, which will continue to be reflected in differences in their substantive intellectual property laws.  Accordingly, complete harmonization will require significant negotiations and will likely not occur soon.