Intellectual Property Rights are strictly territorial in nature. So, if a creator wishes to register their intellectual property across the world, they would have to register in every country individually. There is no worldwide protection for intellectual property.
To facilitate the worldwide registration of intellectual property, the World Intellectual Property Organisation (WIPO) has introduced various international treaties and registration systems. It is in furtherance of WIPO’s role in the promotion of intellectual property rights across the world. It should be noted that WIPO itself does not register the respective intellectual property in all countries; WIPO serves as the administrator and publishes information. The final decision of granting registration lies with the respective national IP offices. Under these systems, the owner of the respective intellectual property has to file only one international application instead of filing multiple applications for different national IP offices. This reduces the hassle of the trademark owner as now the application can be filed only in one language and by payment of fees at once in a single type of currency. Renewal and modification of registrations can also be done in a similar fashion i.e. with a single procedure in WIPO.
The international protection of Intellectual Property is carried out through the following systems:
- The Madrid System- This system was formulated for trademark owners to obtain protection in several countries. The countries which are a signatory to the Madrid Protocol follow the Madrid System to simplify the registration process internationally.
To access the benefits of the system, the trademark owner has to apply to WIPO’s office in Geneva, through their own national office, where they also have to mention the countries they want to register their trademarks in. These countries should be a ‘contracting party’ to the Madrid System. After receiving the application and conducting a formal examination, WIPO registers the mark in the International Register and forwards the application to the required Contracting Parties. There, the national trademark offices of those countries will examine it according to their own domestic laws and criteria. The decision to grant protection in a particular national system lies with them solely. The applicant should mandatorily be registered in their home country.
- The Hague System- This system deals with the international protection of industrial designs. A single application for international registration can have multiple designs under the Hague System. Unlike the Madrid System, a national design registration is also necessary for filing an international application. Applicants may directly apply to the International Bureau of WIPO. The process of application is similar to the Madrid System, wherein after receiving the application, it is published by the International Bureau and entered in the International Register. Then the application is passed on to the concerned national authorities, who then can either grant or reject the registration.
- The Lisbon System- This system protects and facilitates the international registration of appellations of origin work. In simpler terms, this system allows the recognition of geographical indications (GI) internationally. For this, the holders of the right to use such geographical indications have to file an international application through the competent office of the country of origin of the GI (for instance, GI Registry in India).
The process is similar to the other systems, with the main exception of not mentioning the countries where the protection is wanted. WIPO advances application to all Contracting Parties of the Lisbon Agreement after it registers the appellation of origin or the GI tag in their International Register. It is necessary to obtain recognition in the country of origin before filing an international application. The competent authority of the country of origin has to ensure the consistency of the international application with that of the geographical indication as protected in its territory. This would ensure that the product originates in the specified area and there is a clear connection between the quality and unique characteristics of the area of production. The international protection of the GI would not need renewal until the country of origin maintains its registration.
- Patent Cooperation Treaty- In 1970, the Patent Cooperation Treaty was adopted to simplify the application process of patents in multiple countries. It also enables the scientific community across the world to easily access the information contained in patent applications. As there is no provision for a ‘worldwide patent,’ the PCT only removes the complexities around patent application procedure when the inventor wishes to go for multi-jurisdiction registration.
Any applicant interested in using the procedure under PCT should firstly file a patent application with the ‘receiving office’, which is usually in their own home country’s IP office, or can either be any other national IP Office or the International Bureau situated in Geneva. The application is then forwarded to one of the ‘International Searching Authorities’, which would carry out international searches for prior art. These authorities conduct thorough research on the scope of patentability of the invention and produce a detailed search report. Consequently, the International Bureau handles the ‘international publication’ of the patent application on PATENTSCOPE. This is followed by optional stages in the filing process such as Supplementary international search and the international preliminary examination, which are carried out by the Searching Authorities to further deepen the search for existing patents. Additionally, the preliminary examination is the only window for the applicant to make any amendments to the submitted application. The various search reports then give a clear picture to the applicant, with the help of which they have to decide which countries should they proceed with the patent filings. The applicant has to then move forward with national procedures of patent filings in the said countries on their own. By making use of PCT, the applicant can reduce the costs related to prior art searches in multiple jurisdictions and conveniently procure the information and documentation needed at once.
Name of Author:
Soundarya Rathor, 5th year, B.A.LL.B. (Hons.), Christ (Deemed to be University), Bangalore