Getting Ahead With The Paris Convention Treaty
Paris convention treaty was one of the first Intellectual Property treaties in the world. It was signed in Paris, France on 20th March 1883. This Convention applies to industrial property in the widest sense, including patents, trademarks, industrial designs, utility models, service marks, trade names, geographical indications, and the repression of unfair competition. As told that this convention being the first IP treaty, it was the first major step taken to help creators ensure that their intellectual works were protected in other countries as well. The Paris Convention, concluded in 1883, was revised at Brussels in 1900, at Washington in 1911, at The Hague in 1925, at London in 1934, at Lisbon in 1958, and Stockholm in 1967, and was amended in 1979. The convention has 177 member states making it one of the most widely adopted treaties.
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The substantive provision of the treaty falls under three main categories:
The Convention provides that the Contracting State must grant the same protection to nationals of other Contracting States that it grants to its nationals. This forms exceptional protection for Nationals of non-Contracting States. They are also entitled to national treatment under the Convention if they are domiciled or have a real and effective industrial or commercial establishment in a Contracting State.
Right to Priority
This forms the base for the protection of an invention in various other contracting states. As compared to PCT, this convention gives the right, based on a regular first application filed in one of the Contracting States, the applicant may, within a certain period (12 months for patents and utility models; 6 months for industrial designs and marks), apply for protection in any of the other Contracting States. This gives the notion of prioritizing the applicant over the application filed by others, hence giving an upper hand to the applicant. One of the advantages is that the applicant who wants to have protection in other countries can have 12 months for deciding the country in which they seek protection.
The convention puts some common rules in anticipation that the contracting states will be obliged to respect with
A. Patents - The first and the foremost was with Patents. Patents being granted by a contracting state must be independent of other contracting states. Any grant of the patent must not be dependent on other contracting states' decisions. Neither any refusal to grant the patent must depend upon other contracting states. The grant of a patent may not be refused, and a patent may not be invalidated, on the ground that the sale of the patented product, or a product obtained through the patented process, is subject to restrictions or limitations resulting from the domestic law.
Subsequently, this convention also gives the measure to the contracting party for providing compulsory license only under certain conditions. This must be granted only after a request has been filed three years from the grant of the patent or four years from the filing date of the patent application, and it must be refused if the patentee gives legitimate reasons to justify this inaction.
B. Marks - This convention makes it clear with regulating the mark being independent of other contracting states. Any mark filed by a national of a Contracting State will not be refused, or be invalidated, on the ground that filing, registration, or renewal has not been affected in the country of origin. It goes on similar lines with that of the patent that the refusal or annulment will not be dependent on the decision from other contracting states. This convention also stipulates that a mark is registered in its original form in one state can be registered in the same form in other contracting states but that may be refused as well.
The rights that are being given by the convention is much broader. And also the common rules which are bestowed upon the states do gives broader rights to the applicant irrespective of whatever the result was concerning refusal or annulment of application. As the Paris Convention application is to be filed within 12 months from the priority date, allowance of patent applications filed through the Convention route is faster than when national phase applications are filed through the PCT route. Also, the Convention route is usually adopted when the filing is to be done in fewer numbers countries (say 1-2). As mentioned above, claiming of priority date in a Convention Application is based on an application filed in the home country, which helps in a faster prosecution of the applications filed in other countries.
Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur). In case of any queries please contact/write back to us at firstname.lastname@example.org.