Module 8 - Part 2 of 7

Paris Convention & Berne Convention

Explore the two foundational multilateral treaties for intellectual property protection - the Paris Convention for industrial property (1883) and the Berne Convention for literary and artistic works (1886), which form the backbone of the international IP system.

Duration: 75-90 minutes

7 Key Topics

10 Quiz Questions

Topic 1

Paris Convention (1883) Basics

The Paris Convention for the Protection of Industrial Property, adopted in 1883, is one of the oldest and most important international IP treaties. It established the foundation for international cooperation in the protection of patents, trademarks, industrial designs, and other forms of industrial property.

Historical Background

Before the Paris Convention, inventors and trademark owners faced significant challenges in protecting their rights internationally:

No recognition of foreign rights - each country treated foreigners as having no rights
Filing in one country could destroy novelty in others
Requirement of simultaneous filing was impractical
Forfeiture of rights if not worked locally

Key Concept: Paris Union

The Paris Convention created the "Paris Union" - a group of countries that agreed to provide mutual protection for industrial property. As of 2024, there are 180 contracting parties. India has been a member since 1998, having acceded on December 7, 1998.

Scope of the Paris Convention

The Convention applies to "industrial property" in its broadest sense, including:

Patents: For inventions of all kinds
Utility models: "Petty patents" for minor inventions
Industrial designs: Ornamental aspects of products
Trademarks: Including service marks
Trade names: Commercial designations
Geographical indications: Indications of source and appellations of origin
Unfair competition: Repression of unfair practices

Key Revisions

Brussels (1900)

First revision addressing administrative matters.

Washington (1911)

Introduced provisions on industrial designs and trade names.

The Hague (1925)

Significant updates on national treatment and priority rights.

London (1934)

Clarifications on patent requirements.

Lisbon (1958)

Major revisions on patents and trademarks.

Stockholm (1967)

Current version with administrative provisions; established WIPO.

Article 1(2) - Definition of Industrial Property

"Industrial property shall be understood in the broadest sense and shall apply not only to industry and commerce proper, but likewise to agricultural and extractive industries and to all manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle, minerals, mineral waters, beer, flowers, and flour."

Topic 2

Priority Right Under Paris (Article 4)

The right of priority is perhaps the most important practical benefit of the Paris Convention. It allows applicants to use their first filing date in one member country as the effective date for subsequent filings in other member countries.

Article 4A(1) - Right of Priority

"Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed."

Priority Periods

Patents and Utility Models

12 months from the first filing date.

Industrial Designs and Trademarks

6 months from the first filing date.

Effect of Priority

During the priority period:

Novelty preserved: Publications, use, or other filings during the priority period do not affect the later application
First-to-file basis: The priority date counts as the effective filing date for determining who filed first
Independence maintained: The subsequent application is treated independently; rejection of the first does not affect it
Partial priority: Claims can have different priority dates based on when their subject matter was first disclosed

Key Concept: Practical Application of Priority

Consider an Indian inventor who files a patent application in India on January 1, 2024. Under Article 4, they have until January 1, 2025 (12 months) to file in other Paris Convention countries (US, EU, Japan, etc.) and claim the Indian filing date as their priority date. Any publications or prior art that emerged between January 1, 2024 and their foreign filing date will not count against their application's novelty.

Requirements for Valid Priority Claim

First application must be "duly filed" in a Paris Convention country
Subsequent application must be filed within the priority period
Applications must relate to the same subject matter
Priority claim must be properly made (declaration, copy of first application)
Applicant must be the same or successor in title

Important Principle: No Substantive Examination of First Application

The first application need only be "duly filed" - it does not need to be granted, valid, or even examined. A provisional application, if permitted in that country, can serve as the basis for priority. This is crucial because it allows applicants to secure an early priority date while still developing their invention.

Multiple Priorities

Article 4F allows claiming multiple priorities in a single application, even from different countries. This is useful when:

Improvements are made after the first filing
Different aspects of an invention were filed separately
Combining features from multiple earlier applications

Topic 3

National Treatment Principle

National treatment under the Paris Convention ensures that foreign nationals receive the same protection as domestic nationals. This principle predates and was incorporated into TRIPS Article 3.

Article 2(1) - National Treatment

"Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with."

Scope of National Treatment

Protection: Same substantive rights as nationals
Legal remedies: Same access to courts and enforcement mechanisms
Procedures: Same application and registration processes
Conditions: Subject to same requirements as nationals

Who Benefits from National Treatment?

Article 3 extends national treatment to:

Nationals of Paris Convention countries
Nationals of non-member countries who are domiciled in a member country
Nationals of non-member countries who have a real and effective industrial or commercial establishment in a member country

Key Concept: No Reciprocity Requirement

National treatment under the Paris Convention is not based on reciprocity. A country must provide the same protection to all Paris Union nationals regardless of whether their home country provides equivalent protection. This is a fundamental principle that ensures uniform treatment across the Union.

Exceptions to National Treatment

The Convention permits certain exceptions:

Domicile requirement: Countries may require foreigners to appoint a local agent or address for service
Judicial and administrative procedures: Certain procedural requirements may differ
Rights under the Convention: National treatment does not affect the minimum rights guaranteed by the Convention itself

Topic 4

Independence of Patents

The principle of independence of patents is a cornerstone of the Paris Convention system, ensuring that patents granted in different countries are treated as separate and independent rights.

Article 4bis - Independence of Patents

"(1) Patents applied for in the various countries of the Union by nationals of countries of the Union shall be independent of patents obtained for the same invention in other countries, whether members of the Union or not."

"(2) The foregoing provision is to be understood in an unrestricted sense, in particular, in the sense that patents applied for during the period of priority are independent, both as regards the grounds for nullity and forfeiture, and as regards their normal duration."

Implications of Independence

Grant independent: Refusal in one country does not prevent grant in others
Validity independent: Invalidation in one country does not affect patents in other countries
Duration independent: Each patent runs its own term from its own filing/grant date
Forfeiture independent: Lapse or abandonment in one country does not affect others
Scope independent: Claims may differ based on examination in each country

Key Concept: Practical Significance

The independence principle means that patent owners must maintain and enforce their patents separately in each country. A patent attorney in India cannot assume that because a patent was granted in the US or EPO, it will automatically be granted in India. Each patent office examines applications according to its own laws, and the scope of granted patents may differ significantly across jurisdictions.

Relationship to Priority Right

The independence principle works alongside the priority right:

Priority ensures a common effective date across countries
Independence ensures each patent stands on its own merits
Together, they allow coordinated international filing while maintaining national sovereignty over IP grants

Indian Context: Independence in Practice

Indian courts and the Patent Office consistently apply the independence principle. For example, in pharmaceutical patent examination, the Indian Patent Office may reject a patent that was granted in the US or Europe based on Section 3(d) (enhanced efficacy requirement) even if the same compound was patented elsewhere. Similarly, an Indian patent remains valid even if the corresponding US or European patent is invalidated.

Topic 5

Berne Convention (1886)

The Berne Convention for the Protection of Literary and Artistic Works, adopted in 1886, is the foundational international treaty for copyright protection. It established the principles that govern international copyright relations to this day.

Historical Background

Before Berne, authors faced significant challenges:

Works published in one country had no protection in others
Pirated editions were common and legal
Authors had to publish simultaneously in multiple countries to secure protection
Bilateral treaties were cumbersome and inconsistent

Berne Union

The Convention created the "Berne Union" - currently with 181 contracting parties. India acceded to the Berne Convention on April 1, 1928, making it one of the earliest non-Western members.

Subject Matter Protected

Literary Works

Books, pamphlets, lectures, addresses, sermons, and other writings; computer programs (per TRIPS).

Dramatic and Musical Works

Plays, musicals, choreographic works, musical compositions.

Artistic Works

Drawings, paintings, architecture, sculpture, engravings, lithographs, photographs.

Derivative Works

Translations, adaptations, arrangements, and other transformations.

Collections

Encyclopedias, anthologies, and databases (as intellectual creations).

Article 2(1) - Protected Works

"The expression 'literary and artistic works' shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science."

Topic 6

Automatic Protection Principle

One of the most important principles of the Berne Convention is that copyright protection arises automatically upon creation of a work - no registration, deposit, or formalities are required.

Article 5(2) - No Formalities

"The enjoyment and the exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work."

Implications of Automatic Protection

No registration required: Copyright exists from the moment of creation
No copyright notice needed: The (c) symbol is not required (though advisable)
No deposit requirement: No need to submit copies to government
No publication required: Unpublished works are equally protected
Immediate protection: Rights attach automatically upon fixation

Key Concept: Fixation Requirement

While Berne prohibits formalities, Article 2(2) allows countries to require that works be "fixed in some material form" to receive protection. India requires fixation - a work must be expressed in a tangible medium. This means an improvised speech or dance performance is not protected unless recorded. The fixation requirement is not considered a "formality" under Berne.

National Treatment Under Berne

Article 5(1) provides for national treatment:

Article 5(1) - National Treatment

"Authors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention."

Country of Origin

The country of origin is determined as follows:

Published works: The country where first published
Simultaneous publication: Country with shortest term of protection
Unpublished works: The author's country of nationality
Cinematographic works: Country where maker has headquarters or habitual residence
Architecture: Country where built

Indian Position on Registration

In India, copyright registration is voluntary but advisable. Under Section 48 of the Copyright Act, 1957, the Register of Copyrights serves as prima facie evidence of the particulars entered therein. While not required for protection, registration provides significant evidentiary advantages in litigation and helps establish ownership and creation dates.

Topic 7

Minimum Rights Under Berne

The Berne Convention establishes minimum rights that all member countries must provide. These rights form the baseline of copyright protection internationally.

Economic Rights

Right of Reproduction (Article 9)

Exclusive right to authorize reproduction of works "in any manner or form."

Right of Translation (Article 8)

Exclusive right to authorize translations throughout the term of protection.

Right of Adaptation (Article 12)

Exclusive right to authorize adaptations, arrangements, and other alterations.

Right of Public Performance (Article 11)

For dramatic and musical works, right to authorize public performance and communication.

Right of Recitation (Article 11ter)

For literary works, right to authorize public recitation and communication.

Right of Broadcasting (Article 11bis)

Right to authorize broadcasting by wireless means, rebroadcasting, and public communication of broadcasts.

Cinematographic Rights (Article 14)

Right to authorize cinematographic adaptation and distribution of works.

Moral Rights (Article 6bis)

Article 6bis - Moral Rights

"(1) Independently of the author's economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation."

Moral rights under Berne include:

Right of attribution (paternity): Right to be identified as author
Right of integrity: Right to object to derogatory treatment of the work
Perpetuity: Must be maintained at least until expiration of economic rights
Independence: Cannot be waived with transfer of economic rights

Key Concept: TRIPS and Moral Rights

Notably, TRIPS Article 9.1 incorporates Berne Convention Articles 1-21 EXCEPT Article 6bis on moral rights. This means WTO members are not obligated to provide moral rights under TRIPS, though they must do so under Berne if they are members. The US, which historically resisted moral rights, benefits from this exclusion in WTO dispute settlement.

Minimum Term of Protection

Article 7 sets minimum protection periods:

General rule: Author's life plus 50 years
Cinematographic works: 50 years from making available or creation
Anonymous/pseudonymous: 50 years from making available
Photographic works: Minimum 25 years from making
Applied art: Minimum 25 years from making

Permitted Exceptions

Berne allows certain exceptions and limitations:

Quotations (Article 10): For criticism, review, and educational purposes
Teaching (Article 10(2)): Illustrations for teaching
News reporting (Article 10bis): Reproduction of articles and broadcasts on current events
Three-step test (Article 9(2)): Countries may permit reproduction in "certain special cases" that do not conflict with normal exploitation and do not unreasonably prejudice legitimate interests

Indian Implementation: Copyright Act, 1957

India's Copyright Act, 1957 exceeds Berne minimums in several respects: life plus 60 years for most works (Section 22); extensive moral rights including right against false attribution (Section 57); and comprehensive fair dealing provisions (Section 52). The 2012 amendments further strengthened authors' rights, particularly for underlying works in cinematograph films and sound recordings.

Test Your Knowledge

Part 2 Quiz: Paris Convention & Berne Convention

Answer the following 10 questions to test your understanding of these foundational treaties.

Question 1 of 10

When was the Paris Convention for the Protection of Industrial Property first adopted?

A) 1867
B) 1883
C) 1886
D) 1891

Explanation:

The Paris Convention was adopted in 1883, making it one of the oldest intellectual property treaties. The Berne Convention for copyright followed in 1886. The current version is the Stockholm Act of 1967.

Question 2 of 10

What is the priority period for patent applications under the Paris Convention?

A) 12 months
B) 6 months
C) 18 months
D) 24 months

Explanation:

Under Article 4C of the Paris Convention, the priority period for patents and utility models is 12 months from the first filing date. For industrial designs and trademarks, the priority period is 6 months.

Question 3 of 10

According to the principle of independence of patents under Article 4bis, what happens if a patent is invalidated in one country?

A) All corresponding patents must be invalidated
B) The priority claim is lost for all countries
C) Patents in other countries remain unaffected
D) The patent term is reduced in other countries

Explanation:

The independence principle means that patents granted in different countries are completely independent of each other. Invalidation, forfeiture, or limitation of a patent in one country has no effect on the validity or scope of corresponding patents in other countries.

Question 4 of 10

When did India accede to the Paris Convention?

A) 1947
B) 1970
C) 1995
D) 1998

Explanation:

India acceded to the Paris Convention on December 7, 1998. This was relatively late compared to many other countries, and was part of India's broader engagement with international IP systems in the post-TRIPS era.

Question 5 of 10

What does the "automatic protection" principle under the Berne Convention mean?

A) Works are protected worldwide without any conditions
B) Copyright exists without registration or formalities
C) Protection is automatically extended to 100 years
D) All works are automatically translated

Explanation:

Article 5(2) of the Berne Convention provides that the enjoyment and exercise of copyright shall not be subject to any formality. This means no registration, deposit, notice, or other procedural requirements can be imposed as conditions for copyright protection.

Question 6 of 10

What is the minimum term of copyright protection under the Berne Convention for most works?

A) Author's life plus 50 years
B) Author's life plus 60 years
C) Author's life plus 70 years
D) 50 years from publication

Explanation:

Article 7(1) of the Berne Convention sets the minimum term at the life of the author plus 50 years. Countries may provide longer terms - India provides life plus 60 years, while the EU and US provide life plus 70 years.

Question 7 of 10

Which article of the Berne Convention deals with moral rights?

A) Article 5
B) Article 6
C) Article 6bis
D) Article 7

Explanation:

Article 6bis of the Berne Convention establishes moral rights - the right of attribution (paternity) and the right of integrity. Notably, TRIPS does not incorporate Article 6bis, meaning moral rights are not part of WTO obligations.

Question 8 of 10

Under the Paris Convention, which of the following is NOT covered by "industrial property"?

A) Patents
B) Trademarks
C) Trade names
D) Literary works

Explanation:

Literary works are protected under the Berne Convention for copyright, not the Paris Convention. The Paris Convention covers patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source, appellations of origin, and unfair competition.

Question 9 of 10

The "three-step test" for copyright exceptions originates from which article of the Berne Convention?

A) Article 8
B) Article 9(2)
C) Article 10
D) Article 11

Explanation:

Article 9(2) contains the original "three-step test" for copyright exceptions: (1) certain special cases, (2) that do not conflict with normal exploitation of the work, and (3) do not unreasonably prejudice the legitimate interests of the author. This test was later incorporated into TRIPS Article 13.

Question 10 of 10

When did India become a member of the Berne Convention?

A) 1928
B) 1947
C) 1957
D) 1995

Explanation:

India acceded to the Berne Convention on April 1, 1928, making it one of the earliest non-Western members. This was during British colonial rule. The Indian Copyright Act, 1914 was amended to implement Berne obligations, later replaced by the Copyright Act, 1957.