Paris Convention

The Paris Convention is an international convention for promoting trade among the member countries, devised to facilitate protection of industrial property simultaneously in the member countries without any loss in the priority date. All the member countries provide national treatment to all the applications from the other member countries for protection of industrial property rights. The convention was first signed in 1883. Since then the Convention has been revised several times; in 1900 at Brussels, in 1911 at Washington, in 1925 at the Hague, in 1934 at London, in 1958 at Lisbon and in 1967 at Stockholm. The last amendment took place in 1979. India became a member of the Paris Convention on December 7, 1998. (Readers may note the use of the phrase 'Industrial Property' and not intellectual property)

The Paris Convention applies to the protection of industrial property and includes:

·         Patents for 12 months;

·         Utility models - not available in India;

·         Industrial designs for 6 months;

·         Trademarks, service marks and trade names for 6 months;

·         Indication of source or appellations of origin (this is same as the geographical indications adopted in TRIPS).

The principal features of the Paris Convention have been listed below:

·         National treatment

·         Right of priority

·         Independence of patents

·         Parallel importation

·         Protection against false indications and unfair competition

Meaning of national treatment under the Paris convention

This is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applicants from member countries, in a given member country, and not to differentiate between the nationals of your country and nationals of other countries for the purpose of grant and protection of industrial property in your country. Suppose that a national of country X applies for the grant of a patent in India. According to the Paris Convention, the Indian Patent Office shall apply the same norms and rules to the applicant from X, as applicable to an Indian applicant, for granting a patent. Similarly, the applicant from X shall have the same protection after grant and identical legal remedies against any infringement shall be available to the applicant. Provided, the conditions and formalities imposed upon Indians in country X are the same as those imposed upon its own nationals. No requirement as to domicile or establishment in the country where protection is claimed, may be imposed upon member countries.

Right of priority and its Significance

Industrial property right is granted for a fixed period of time by a country. The date from which the right is deemed to start is usually the date of filing the complete specification. To obtain rights in other member countries, the application must be filed on the same day if it is desired to have the rights from the same day. However, there are practical difficulties in synchronizing the activities. For facilitating Simultaneous protection in member countries, the Convention provides that within 12 months of national filing, if patent applications are filed in member countries, the patents, if granted in member countries, will be effective from the date of national filing. This right is known as the right of priority.

In case the applicant, after a second look at the patent application, finds that the patent contains more than one invention or on his/her own accord wishes to divide the application, he/she can claim the initial date of priority for subsequent patent applications. The applicant may also, on his/her own initiative, divide a patent application and preserve the date of each divisional application as the date of the initial application - the benefit of the right of priority. Each country of the Union shall have the right to determine the conditions under which such division shall be authorized.

Priority may not be refused on the ground that certain elements of the invention for which priority is claimed do not appear among the claims formulated in the application in the country of origin, provided that the application documents as a whole specifically disclose such elements.

Grant of a patent in one country and its affect on grant or refusal in another country

The patents applied for in the various countries of the Union shall be independent of each other with regard to nullity and forfeiture and their normal duration. This means that granting a patent in one country of the Union does not force other countries to grant the patent for the same invention. Also, the refusal of the patent in one country does not mean that it will be terminated in all the countries.

Importation in relation to working of a patent under the Convention

Importation is considered as working of a patent, provided the patented product is manufactured in a member country and is imported in other member country, which has also granted a patent on the same invention to the same applicant. Imagine that a product X has been patented in two member countries A and B. The product X is then manufactured in country A and imported into country B. This product X shall enjoy the same patent protection in country B even though it has been manufactured in country A. This would also be considered as if the patent has been worked in country B.

Provision for compulsory license in the Paris Convention

Each member country shall have the right to provide for the grant of compulsory licenses to prevent the abuses resulting from the exclusive rights conferred by the patent. Compulsory licenses for failure to work or insufficient working of the invention may not be requested before the period of time of non-working or insufficient working has elapsed. This time limit is four years from the date of filing of the patent application or three years from the date of the grant. Such licenses will be non- exclusive and non-transferable.

Relationship between the Paris Convention and the TRIPS Agreement

TRIPS Agreement is an offshoot of a series of negotiations going on around the world since the inception of the Paris Convention in the year 1883. It has been made mandatory for the member countries of the TRIPS Agreement to comply with the Article 1 to 12 and Article 19 of the Paris Convention.

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