Paris Convention for the Protection of Industrial Property

CLE presented on November 20, 2013 by Leonid Kisselev and Makiko Coffland, Cascadia Intellectual Property

Summary prepared by Kristin Alma Whinfrey, WSBA IPS Student Liaison, 2013-14

 

The Paris Convention for the Protection of Industrial Property is an international treaty with 175 contracting parties that covers applications for patents, utility models, industrial designs, and trademarks.  Applicants filing under the Convention are granted national treatment amongst member states and given an international right of priority that permits an applicant to use the date of his or her first filing on subsequent international applications, subject to time restrictions, and limits the references that may be used to examine the international applications to the first date of filing.

The duration of the right of priority under the Convention varies by the type of industrial property: for patents and utility models, it is twelve months following the first filing date, while trademarks and industrial designs get six months of priority protection.  During this time, the applicant should consider the country or countries where it intends to seek protection of each type of industrial property.  Under the Convention, an applicant must later file an application to each country, either directly with countries in which it seeks protection, or by filing under certain other treaties or protocols that grant regional or international protection, such as the Patent Cooperation Treaty (PCT), the Madrid Protocol and the Community Trade Mark (CTM).

The PCT, which has 148 signatories, permits a patent application up to 30 months (including the 12-month Convention timeframe) to start national application processes.  Another advantage to filing under the PCT is uniformity: the application is filed at one office, in one language, and subject to one search. Applicants must be nationals or residents of contracting parties and may file the PCT application in his or her home state or at the World Intellectual Property Organization (WIPO).

Under the Madrid Protocol, an international trademark registry with 91 members (including the EU but not Canada), an applicant may file an application if it possesses a mark that has already been registered in a member state and does business in that member state.  The applicant must file with the office in the home member state and designate countries in which it seeks protection, before this office forwards the application to the WIPO for international registration.  The advantages to filing under the Protocol include a single application, decreased fee, one renewal, and designated countries need not examine applications for international registration in great detail.  However, a designated country may refuse or limit the trademark protections in the country and successful applicants are not granted greater rights than the original application if those rights are not available in member states.

The CTM is a uniform trademark registration system in the European Union, which grants a regional right that is enforceable in all 28 individual EU member states.  CTM applications are examined independently of previous searches and provide a generally quick and inexpensive registration system.  However, an objection from a member state to the application may defeat the entire application.

 

The preceding summary discusses certain key points discussed during the CLE presentation, all of which are outlined in greater detail in the accompanying written materials.  This summary is a publication of the WSBA International Practice Section, and is posted with the approval of the speakers and the WSBA International Practice Section executive committee.  It is designed to inform members of the WSBA International Practice Section of recent legal developments, and may not be used to claim CLE credit.  This summary is not intended, nor should it be used, as a substitute for specific legal advice as legal counsel may only be given in response to inquiries regarding particular situations. If you have specific questions about this topic, please feel free to contact Mr. Kisselev or Ms. Coffland at leonid@cascadiaip.com, makiko@cascadiaip.com or (206) 381-3900.

 

For the original announcement of this CLE, please visit HERE.