Wehmar Marks

TMGT 7500
Intellectual Property
Intellectual property rights are rights to technological knowhow and artistic work or a
grant from a government to an individual or firm of the exclusive legal right to use a copyright,
patent, or trademark for a specified time. Copyrights are legal rights to artistic or written works.
Trademarks include the legal rights to a name or symbol that identifies a firm or its product.
Patents are governmental grants to inventors ensuring them the exclusive legal right to produce
and sell their inventions for a period of years. Intellectual property can be sold or licensed for use
to others through a licensing agreement.
A rapidly growing method of doing business abroad is transferring intellectual property
rights. Many reasons exist for an IPR owner to transfer its intellectual property. IPR transfers
need not involve capital investment abroad. A company with inadequate R&D capabilities will
have the opportunity to expand the companys geographic market without raising substantial
additional capital. A firm might grant licensing privileges to a foreign company or the IPR and its
physical components can be provided for the manufacture of a particular product. Licensing a
foreign company with adequate capital and other attractive assets is an opportunity for US firms.
In the case of a company possessing a utility but lacking the breadth of management capabilities,
resources, or skills to exploit all its applications simultaneously, the basic technology can be
licensed to other firms. Host governments often create favorable circumstances for the local
licensee.

Granting a license that permits the other party use of the relevant right includes the risk of
losing control of ones IPR and helping to establish a competitor. The licensor generally seeks to
restrict the licensees use of the transferred IPR, geographical, field of use, and output
restrictions. They may seek to impose various obligations on the exploitation of the licensed IPR.
The trick is to identify a royalty level that allows both licensor and licensee to optimize their
respective returns.
Rights in intellectual property are worthless if those rights cannot be protected by law or
if owners cannot prevent unauthorized use. Although a matter of national law, intellectual
property rights granted in one nation may not be legally recognized and enforceable in another.
Owners of intellectual property must take legal steps to protect those rights under the laws of a
foreign country. Many countries have laws that protect owners of intellectual property, but
copyrights, patents, and trademarks are widely pirated in China, Russia, Eastern Europe, and
developing countries (Schaffer, Agusti, Dhooge, & Earle, 2012).
Most importantly, licensed technology must be kept confidential. A licensee will try to
limit the time of the confidentiality agreement while licensor tries to preserve confidentiality
over the useful life of the trade secret. Negotiations are made concerning ownership and use
rights (if improvements in the licensed technology are made by the licensee), and parties will
haggle over termination issues (what may cause the license to terminate and rights after the
termination of license agreement).

Paris Convention
As a result of the Industrial Revolution, invention exhibitions were a relatively new type
of event in the 19th century. These exhibitions showcased advances in technology publicly.
Although the program of the planned Global Exposition had been published, translated into all
languages, and distributed to all the nations existing in 1871, the American inventors and
enterprises only wished to display their inventions in a country where the exhibits were protected
in accordance with American standards (Seckelmann, 2013). Threats by American firms to
boycott the Global Exposition of Vienna, set to be held in 1873, created an urgency to reach an
international agreement on the treatment of exhibits. Many foreign exhibitors refused to attend
similar events out of feared their ideas would be stolen and exploited in other countries. A
reluctance to show off great strides in technology was felt, as many exhibitors did not attend
these events for similar reasons. As a result, the Austrian government enacted regulation which
allowed displayed inventions to be protected throughout 1873, when the exposition commenced.
An international patent congress was also held, aimed at setting up an international and general
code for the protection of exhibits during global expositions (Seckelmann, 2013).
Constant fear of idea theft inspired the formation of the Paris Convention, a diplomatic
conference held in Paris in 1880 and signed into effect in 1883. The Paris Convention is an
international treaty, currently administered by the World Intellectual Property Organization
(WIPO), based in Geneva, Switzerland. The treaty, a milestone for international patent law, was
signed into effect on March 20, 1883. It paved the way for international patents and helped to
enforce them for the first time.
International Convention for the Protection of Industrial Property (Paris Convention) was
first international property treaty. Prepared in 1833 and revised many times, it is a principle of

national treatment guaranteeing foreign trademark and patent applicants the same treatment and
priority as local applicants (Schaffer, Agusti, Dhooge, & Earle, 2012). Although it emerged in
only eleven countries at inception, the Paris Conventions influence spread quickly throughout
the world (Schaffer, Agusti, Dhooge, & Earle, 2012). The Paris Convention helped people in one
country obtain protection in other countries for their new ideas and creations, such as inventions,
trademarks and industrial designs.
The most important article of the convention deals with mutual acknowledgement of
industrial property rights (Article 2) (World Intellectual Property Organization). Another
important point concerns priority right. In order to facilitate the application procedure, inventors
are granted a certain period during which one can decide whether to apply for a patent for the
same invention in any of the other member states. During this period, valid patents cannot be
awarded to any other applicant (Article 4 section 1) (World Intellectual Property Organization).
The issue of harmonizing patent legislation, relating to the treatment of exhibits at global
exhibitions, was settled in Article 11 of the Convention (Seckelmann, 2013). When an inventor
in a contracting State files, and successfully receives, a patent for their invention, they will be
given priority over other inventors when perusing international patents. This is a six to twelve
month period (dependent on the nature of the patent) in which the inventor must prepare patent
applications for submission to other countries. Once patent applications are submitted to other
countries within this limited time period, the filing date is handled as the original filing date of
the initial patent the inventor received in his home country. This is significant in international
patent law, giving an inventor ample time to prepare patents for submission in other countries,
while simultaneously gaining an edge over other inventors in foreign countries. After the limited

time period expires, the original filing date is no longer granted, though the inventor may still file
for international patents (Berne Convention, 2014).
During interwar years, the international patent system further developed. The convention
of The Hague in 1925, for instance, was concerned with harmonizing the time span of patent
protection (15 years) (Seckelmann, 2013).

The Paris Convention Treaty Provisions

The Paris Convention Treaty makes clear all contracting States included in the patent law
treaty grant the same protection for industrial property to other nations as it does its own
population. Moreover, a person from a non-contracting State should be granted protection under
the treatys provisions if that person has a real and effective industrial presence within a
contracting State. The Convention also gives priority to those applying for trademarks and
industrial designs within their own country and later decide to apply for protection within other
countries. If an application is filed in a contracting State, the applicant has a period of twelve
months for a patent and model, and six months for an industrial design or mark to apply for
protection within another country (World Intellectual Property Organization). If a person files the
application in another country before this term expires, they will be granted priority over other
applications before it, as long as the original filing date is before the competing
applications. This provision also applies to changes which may take place during this interval,
such as a publication of the invention. This gives ample time to prepare and organize for added
protection in other countries, without the need to present all applications at once.
Several additional guidelines for patent law were also agreed upon for patents in the Paris
Convention. The treaty States that all patents granted in a contracting state are independent of

each other, and does not guarantee the same patent will be approved in another contracted State.
Likewise, a patent cannot be refused on the grounds that it has been disapproved in another
contracting State. A patent may not be refused or invalidated if the sale of the patented product
falls into restrictions or limitations enforced by domestic laws of a contracted State. Also, a
compulsory license can only be granted after three to four years of failure to work a patented
invention. Industrial designs must also be protected by all contracting States. Contracting States
are prohibited from withdrawing protection for a design because the parts used to create it are not
manufactured in that State. A right of priority is conferred to a trademark holder if the foreign
registrations are made within six months after the original registrations, but trademark is usually
based on the law of the country where registration was sought. The Paris Convention also covers
guidelines pertaining to trademark law which all contracting states must follow. Guidelines for
trademarks, however, follow a much more loose set of rules, as the registration process of a
trademark in a contracting State is governed through domestic laws.

Berne Convention
In the wake of the Paris Convention, the Berne Convention was established. An
international copyright agreement adopted by international conference in Bern in 1886, the
Berne Convention has been subsequently modified several times (Berlin, 1908; Rome, 1928;
Brussels, 1948; Stockholm, 1967; Paris, 1971) (Berne Convention, 2014). Based on a national
treatment scheme, the Berne Convention requires all signatory nations to enact minimum
substantive laws and afford foreigners the same treatment as its own citizens. The core of the
Berne Convention is the provision that each contracting country provide automatic protection for
works first published in other countries of the Berne union and for unpublished works whose

authors are citizens or residents in such other countries. Each country of the union must
guarantee to authors who are nationals of other member countries the same rights it grants to its
own nationals. A union country may restrict protection to the extent such protection is limited in
the country which the author is a national. In a compromise between developing and developed
countries, the Stockholm Protocol and Paris revision liberalized the rights of translation (Berne
Convention, 2014). Like the Paris Convention, the Berne Convention has been difficult to
effectively enforce. Such problems drove negotiations on the TRIPS agreement.

TRIPS Agreement
The enforcement problem was one of the principal forces that drove negotiations on the
TRIPS Agreement. The Paris Convention scheme was problematic, failing to require a standard
patent protection and lacking an enforcement mechanism. Although the treaty calls for dispute
settlement by the International Court of Justice, the courts jurisdiction went unrecognized, and
rulings either not agreed on or simply ignored. The TRIPS Agreement was created as a resolve to
these defects in the Paris Convention. The TRIPS Agreement of April 15, 1994, which came into
force on January 1, 1995, obliged member states to comply with the most important articles of
the Paris Convention(Articles 112 and 19). It also stated stronger minimum requirements for
patent protection systems (20 years from the filing date) (Seckelmann, 2013). Effective in most
nations by January 1, 2000, TRIPS requires signatories to enact minimum substantive protection
standards and create an enforcement mechanism. TRIPS has caused developing countries to
adopt intellectual property laws similar to those of Europe and North America and has created a
system to enforce them (Schaffer, Agusti, Dhooge, & Earle, 2012). TRIPS set comprehensive
standards for the protection of IPRs in all member countries of the WTO, requiring every

member to abide by the Paris Convention and apply national treatment requirements. TRIPS
required many emerging nations to enact a new statutory scheme and adequate domestic
enforcement mechanism. It imposed positive obligations on WTO signatories to adopt new laws.
The TRIPS agreement opted not for a uniform patent law, but for a guarantee of
minimum requirements. However, those requirements were interpreted according to the needs of
the industrialized countries. By extending the TRIPS negotiations from an anti-piracy policy to a
more integrative settlement, Western standards were taken as a measure for minimum
requirements. The overall principles of the TRIPS agreement, the most-favored nation treatment
could be limited with regards to intellectual property rights safeguarded by the Rome
Convention. This regulation distinguishes the TRIPS Agreement from the Paris Convention. The
Paris Convention merely set out moral obligation to set up patent legislation in accordance with
its principles. The TRIPS Agreement departed from this principle, setting a basic reciprocity.
This principal derives from the revised Berne Convention, but is a fallback to the period of
mercantilism (Seckelmann, 2013). The TRIPS agreement declared many elements of
industrialized society patent law minimum requirements. This poses problems for less developed
countries. The central problem is safeguarding these requirements and maintaining a strong
reciprocity principal.

Trade Secret Law

Trade secret law in the United States is the newest and least developed of the four types
of intellectual property: patents, copyrights, trademarks, and trade secrets. Trade secret law is the
sole type of intellectual property governed primarily by state law. While confidential business
information is old, trade secret law is a more recent phenomenon. In an attempt to codify
common laws of trade secrets and promote uniformity, the Uniform Trade Secrets Act (UTSA)
was drafted by the Commissioners on Uniform State Law. Following its adoption in 1979, the
UTSA gained widespread acceptance. Trade secret law, compared to that of other types of IP, has
been slow to take root. Despite the UTSA, trade secret law is still not uniform. States whose
legislatures adopted also modified it, courts in different states interpreted it differently, and some
courts continue to rely on common law even after the enactment of the UTSA (Almeling, 2012).
The influence of trade secrets is rapidly expanding. Before computers, trade secret information
was usually stored in physical form. Now, the threat posed by hackers is on the rise. Another
trend that increases the risk of trade secret misappropriation is cloud computing. Cloud
computing is not new (Hotmail, launched in 1996), but sensitive and confidential data is being
stored in the cloud by governments and businesses at an increasing rate (Almeling, 2012).

The geographic scope of protection has expanded through a comprehensive set of treaties
and statutes. Foreigners should not be permitted to profit through the sale of mere ideas.
Government protection of intellectual property depends on its economic interests. Nations
developing intellectual property favor strong protection. The digital and telecommunications

revolution made intellectual property a significant source of product value. The Paris Convention
became the solution to a growing problem of idea theft on a global scale. It helped spread new
ideas, while enforcing patent law across several countries. The Paris Convention had its roots in
the diverse structure of the patent protection of more developed states versus less developed ones
which wanted to take part in developing international commerce in the course of the industrial
revolution (Seckelmann, 2013).
The Paris Convention was the first successful international intellectual property treaty to
emerge. It demonstrated patents, which were a part of local laws for hundreds of years, needed
an international standard so protection could be granted on a global scale. It also proved an
essential part of intellectual property law, allowing innovative thinkers and creators to spread
new ideas and inspire others, without the threat of having their work stolen and exploited in other
countries. It also benefited inventors by allowing their work access into foreign markets. This is a
testament to the importance of protecting exclusive rights to ones own work and the growth of
new ideas through inspiration.

References
Almeling, D. S. (2012). Seven reasons why trade secrets are increasingly important. Berkley Technology
Law Journal, 27(2), 1091-1118.
Berne Convention. (2014). Encyclopedia Britannica. Retrieved March 2015
Schaffer, R., Agusti, F., Dhooge, L., & Earle, B. (2012). International Business Law and Its Environment
(8 ed.). South-Western.
Seckelmann, M. (2013). From the Paris Convention (1883) to the TRIPS Agreement (1994): the history of
the international patent agreements as a history of propertisation? Journal Der Juristischen
Zeitgeschichte, 14(1), 38-60. doi:10.1515/jjzg-b.2013.14.1.38
World Intellectual Property Organization. (n.d.). WIPO-Administered Treaties. Retrieved March 2015,
from WIPO International: http://www.wipo.int/treaties/en/text.jsp?file_id=288514