The role of the Paris Convention of 1883 in the protection of industrial property
The Paris Convention, which was adopted in 1883, deals with the issues of industrial property in the broadest sense of the word, including patents, trademarks, industrial designs, utility models, service marks, company names, geographical indications and commercial designations. This international treaty was the first step within the framework of the efforts aimed at assisting the authors to ensure the protection of their intellectual works in other countries. The member countries of the Convention form the Union for the protection of industrial property. There are 177 member states of the Convention.
The Convention was ratified by the USSR in 1968 with the proviso that the Article on the procedure for the resolution of the disputes on the interpretation and application of the Convention (the resolution of the disputes in the International Court of Justice) should not be applied to the USSR, and with the following statement: “the provisions of the Convention stipulating the extension of its effect by the Contracting Parties on the territory, for whose international relations they are responsible, are obsolete and contradict the Declaration of the UN General Assembly on the grant of independence to colonial peoples and countries.”
Let us consider the specifics of the subject matters of the protection.
According to the Convention, as it has been mentioned, the subject matters of the protection of industrial property shall be patents for inventions, utility models, industrial designs, trademarks, service marks, company names and indications of origin or names of the place of origin, as well as the suppression of unfair competition.
Industrial property is understood in the broadest sense and it covers not only industry and trade in the proper sense of the word, but also the fields of the agricultural industry and the mining industry and all products of industrial or natural origin.
The rights to the subject matters of industrial property, as well as the rights to the subject matters of the copyright and related rights, have exclusively a territorial character. With respect to the subject matters of industrial property, this means that these subjects are protected only on the territory of the state, in which the protection documents (the use of the subject matter of industrial property, which is unpatented in a particular country, is possible without restrictions and without a payment of remuneration) are obtained. The protection documents are usually patents, registration certificates, etc. The patent certifies the authorship to an invention, the exclusive right to an invention and other the subject matters of industrial property. The person using the invention, etc. without the patent holder’s consent shall be responsible for the violation of the patent.
In addition, the national legislation of different states imposes different requirements for the recognition of the technical solution as an invention and the grant of a patent (somewhere only novelty is required, somewhere utility, non-obviousness, etc. are also required).
Such properties of the subject matters of the protection of industrial property raise a problem of their protection abroad, what the Paris Convention is devoted to. This document is aimed at establishing common rules, while implementing foreign patenting.
The Convention did not create an international patent. It facilitated the process of patenting, which continues to remain national. The Convention establishes a national regime for the citizens of the Union countries with respect to the protection of industrial property (i.e., the own citizens and the foreigners shall become equal in the patent rights on the territory of this state). In addition, the Convention shall be applied not only to the citizens of the Union countries, but also to the persons, whose enterprises are located on the territory of the member countries of the Union.
The Convention establishes the rule of priority under the Paris Convention, which is as follows:
Any person, who has duly filed an application for a patent for an invention, a utility model, an industrial design or a trademark in one of the member countries of the Union shall enjoy the right of priority to file the application in other countries within 12 months for patents for inventions and utility models and within 6 months for industrial designs and trademarks. Each filing an application that has the effect of properly executed national filing an application in accordance with the national legislation of each country of the Union shall be recognized as a basis for the emergence of the right of priority. Properly executed national filing an application shall be understood as any filing that is sufficient to establish the date of filing the application in the correspondent country. Due to this, subsequent filing an application in one of the other member countries of the Union before the expiration of the indicated period cannot be recognized void, in particular, on the basis of another filing the application, the publication of the invention or its use, etc. Any person wishing to take advantage of priority on the basis of the previous application shall be obliged to file a declaration with the indication of the date of filing and the country, where it has been filed.
In the word-combination “priority under the Paris Convention,” the word-combination “under the Paris Convention” means a special case of establishing priority on the basis of Article 4 of the Paris Convention for the protection of industrial property of 1883. The term “priority” means in the general sense “primacy,” “the pre-emption right,” and in this case, it is the date, on which the novelty and the inventive step of the invention or other features of protectability of other subject matter of industrial property (a utility model, an industrial design, a trademark) is determined.
Priority under the Paris Convention is the most important rule (the norm of the substantive law), which is established by the Paris Convention. It consists in the following. The person, who is filing an application for a patent for an invention/utility model/industrial design or for the registration of a trademark shall be entitled to require the novelty, the inventive step or other features of protectability of the claimed subject matter to be determined on the date of the previous application filed by that person (or its successor) in another member country of the Paris Convention. At the same time, the period of the benefit for priority, i.e. the period of priority under the Paris Convention may not exceed 12 months for inventions and utility models and 6 months for industrial designs and trademarks.
The Convention establishes that the patents, the applications for which have been filed in different countries of the Convention by the citizens of its member countries are independent on the patents for the same invention obtained in other countries, which are the members or not the members of the Convention. This extremely important rule means:
the cancellation or termination of the effect of the patent for an invention in one country of the Convention shall not have any legal effect on the patents for the same invention obtained in other countries of the Convention;
the deadlines of the effect of the patents for the same invention obtained in different countries of the Convention shall not depend on each other;
the deadlines of the effect of the patents for the inventions in the countries of the Convention shall not depend on whether the rules on priority under the Paris Convention have been used while obtaining them.
The introduction of the rule of priority under the Paris Convention is explained by the fact that the principle that the patent shall be obtained by the person, who has first filed an application is usually applied with respect to the subject matters of industrial property. The Convention changes this rule with respect to those subject matters for which the patent has already been obtained in another member state of the Union.
In addition, the Convention also includes the rule of priority of exhibition, the purpose of which is to stimulate the demonstration of the inventions at exhibitions.
The rule of priority under the Paris Convention also implies that the member countries of the Union shall provide the temporary protection under their domestic legislation to the inventions, the utility models, the industrial designs as well as the trademarks for the products exhibited at the official or officially recognized international exhibitions organized on the territory of one of these countries. And if the right of priority is subsequently claimed, the effect of the exclusive right shall be calculated from the date of the placement of the relevant product at the exhibition. That is, in the case of exhibiting any new product, new industrial design or other subject matter at an international exhibition, the inventor enjoys the right of priority to obtain the protection document in other states, while filing an application for a patent. To prove the identity of the exhibited subject matter and the date of its placement at the exhibition, it is necessary to submit the confirming documents, while filing an application.
The provisions of the Paris Convention were reflected in the norms of Part 4 of the Civil Code of the Russian Federation, and it also served as a starting point for deepening the international cooperation in the field of the protection of industrial property.