Berne Convention for the Protection of Literary and Artistic Works

The Berne Convention, adopted in 1886, deals with the protection of works and the rights
of their authors. It provides creators such as authors, musicians, poets, painters etc. with
the means to control how their works are used, by whom, and on what terms. It is based
on three basic principles and contains a series of provisions determining the minimum
protection to be granted, as well as special provisions available to developing countries
that want to make use of them.

Summary of the Berne Convention for the Protection of Literary and

Artistic Works (1886)
The Berne Convention deals with the protection of works and the rights of their authors.
It is based on three basic principles and contains a series of provisions determining
the minimum protection to be granted, as well as special provisions available
to developing countries that want to make use of them.
(1) The three basic principles are the following:
(a) Works originating in one of the Contracting States (that is, works the author of which
is a national of such a State or works first published in such a State) must be given the
same protection in each of the other Contracting States as the latter grants to the works
of its own nationals (principle of "national treatment") [1].
(b) Protection must not be conditional upon compliance with any formality (principle of
"automatic" protection) [2].
(c) Protection is independent of the existence of protection in the country of origin of the
work (principle of "independence" of protection). If, however, a Contracting State provides
for a longer term of protection than the minimum prescribed by the Convention and the
work ceases to be protected in the country of origin, protection may be denied once
protection in the country of origin ceases [3].
(2) The minimum standards of protection relate to the works and rights to be protected,
and to the duration of protection:
(a) As to works, protection must include "every production in the literary, scientific and
artistic domain, whatever the mode or form of its expression" (Article 2(1) of the
Convention).
(b) Subject to certain allowed reservations, limitations or exceptions, the following are
among the rights that must be recognized as exclusive rights of authorization:
the right to translate,
the right to make adaptations and arrangements of the work,
the right to perform in public dramatic, dramatico-musical and musical works,
the right to recite literary works in public,
the right to communicate to the public the performance of such works,
the right to broadcast (with the possibility that a Contracting State may provide for a mere
right to equitable remuneration instead of a right of authorization),
the right to make reproductions in any manner or form (with the possibility that a
Contracting State may permit, in certain special cases, reproduction without authorization,
provided that the reproduction does not conflict with the normal exploitation of the work
and does not unreasonably prejudice the legitimate interests of the author; and the
possibility that a Contracting State may provide, in the case of sound recordings of
musical works, for a right to equitable remuneration),
the right to use the work as a basis for an audiovisual work, and the right to reproduce,
distribute, perform in public or communicate to the public that audiovisual work [4].
The Convention also provides for "moral rights", that is, the right to claim authorship of
the work and the right to object to any mutilation, deformation or other modification of, or
other derogatory action in relation to, the work that would be prejudicial to the author's
honor or reputation.
(c) As to the duration of protection, the general rule is that protection must be granted
until the expiration of the 50th year after the author's death. There are, however,
exceptions to this general rule. In the case of anonymous or pseudonymous works, the
term of protection expires 50 years after the work has been lawfully made available to the
public, except if the pseudonym leaves no doubt as to the author's identity or if the author
discloses his or her identity during that period; in the latter case, the general rule applies.
In the case of audiovisual (cinematographic) works, the minimum term of protection is 50
years after the making available of the work to the public ("release") or failing such an
event from the creation of the work. In the case of works of applied art and photographic
works, the minimum term is 25 years from the creation of the work [5].
(3) The Berne Convention allows certain limitations and exceptions on economic rights,
that is, cases in which protected works may be used without the authorization of the owner
of the copyright, and without payment of compensation. These limitations are commonly
referred to as "free uses" of protected works, and are set forth in Articles 9(2)
(reproduction in certain special cases), 10 (quotations and use of works by way of
illustration for teaching purposes), 10bis (reproduction of newspaper or similar articles
and use of works for the purpose of reporting current events) and 11bis(3) (ephemeral
recordings for broadcasting purposes).
(4) The Appendix to the Paris Act of the Convention also permits developing countries to
implement non-voluntary licenses for translation and reproduction of works in certain
cases, in connection with educational activities. In these cases, the described use is
allowed without the authorization of the right holder, subject to the payment of
remuneration to be fixed by the law.
The Berne Union has an Assembly and an Executive Committee. Every country that is a
member of the Union and has adhered to at least the administrative and final provisions
of the Stockholm Act is a member of the Assembly. The members of the Executive
Committee are elected from among the members of the Union, except for Switzerland,
which is a member ex officio.
The establishment of the biennial program and budget of the WIPO Secretariat as far
as the Berne Union is concerned is the task of its Assembly.
The Berne Convention, concluded in 1886, was revised at Paris in 1896 and at Berlin in
1908, completed at Berne in 1914, revised at Rome in 1928, at Brussels in 1948, at
Stockholm in 1967 and at Paris in 1971, and was amended in 1979.
The Convention is open to all States. Instruments of ratification or accession must be
deposited with the Director General of WIPO [6].

[1] Under the Agreement on Trade-Related Aspects of Intellectual Property Rights

(TRIPS Agreement), the principles of national treatment, automatic protection and
independence of protection also bind those World Trade Organization (WTO) Members
not party to the Berne Convention. In addition, the TRIPS Agreement imposes an
obligation of "most-favored-nation treatment", under which advantages accorded by a
WTO Member to the nationals of any other country must also be accorded to the nationals
of all WTO Members. It is to be noted that the possibility of delayed application of the
TRIPS Agreement does not apply to national treatment and most-favored obligations.
[2] Idem.
[3] Idem.
[4] Under the TRIPS Agreement, an exclusive right of rental must be recognized in
respect of computer programs and, under certain conditions, audiovisual works.
[5] Under the TRIPS Agreement, any term of protection that is calculated on a basis other
than the life of a natural person must be at least 50 years from the first authorized
publication of the work, or failing such an event 50 years from the making of the work.
However, this rule does not apply to photographic works, or to works of applied art.
[6] It is to be noted that WTO Members, even those not party to the Berne Convention,
must comply with the substantive law provisions of the Berne Convention, except that
WTO Members not party to the Convention are not bound by the moral rights provisions
of the Convention.
Paris Convention for the Protection of Industrial Property
The Paris Convention, adopted in 1883, applies to industrial property in the widest sense,
including patents, trademarks, industrial designs, utility models, service marks, trade
names, geographical indications and the repression of unfair competition. This
international agreement was the first major step taken to help creators ensure that their
intellectual works were protected in other countries.

Summary of the Paris Convention for the Protection of Industrial

Property (1883)
The Paris Convention applies to industrial property in the widest sense, including patents,
trademarks, industrial designs, utility models (a kind of "small-scale patent" provided for
by the laws of some countries), service marks, trade names (designations under which
an industrial or commercial activity is carried out), geographical indications (indications of
source and appellations of origin) and the repression of unfair competition.
The substantive provisions of the Convention fall into three main categories: national
treatment, right of priority, common rules.
(1) Under the provisions on national treatment, the Convention provides that, as regards
the protection of industrial property, each Contracting State must grant
the same protection to nationals of other Contracting States that it grants to its own
nationals. Nationals of non-Contracting States are also entitled to national treatment
under the Convention if they are domiciled or have a real and effective industrial or
commercial establishment in a Contracting State.
(2) The Convention provides for the right of priority in the case of patents (and utility
models where they exist), marks and industrial designs. This right means that, on the
basis of a regular first application filed in one of the Contracting States, the applicant may,
within a certain period of time (12 months for patents and utility models; 6 months for
industrial designs and marks), apply for protection in any of the other Contracting States.
These subsequent applications will be regarded as if they had been filed on the same day
as the first application. In other words, they will have priority (hence the expression "right
of priority") over applications filed by others during the said period of time for the same
invention, utility model, mark or industrial design. Moreover, these subsequent
applications, being based on the first application, will not be affected by any event that
takes place in the interval, such as the publication of an invention or the sale of articles
bearing a mark or incorporating an industrial design. One of the great practical
advantages of this provision is that applicants seeking protection in several countries are
not required to present all of their applications at the same time but have 6 or 12 months
to decide in which countries they wish to seek protection, and to organize with due care
the steps necessary for securing protection.
(3) The Convention lays down a few common rules that all Contracting States must follow.
The most important are:
(a) Patents. Patents granted in different Contracting States for the same invention
are independent of each other: the granting of a patent in one Contracting State does not
oblige other Contracting States to grant a patent; a patent cannot be refused, annulled or
terminated in any Contracting State on the ground that it has been refused or annulled or
has terminated in any other Contracting State.
The inventor has the right to be named as such in the patent.
The grant of a patent may not be refused, and a patent may not be invalidated, on the
ground that the sale of the patented product, or of a product obtained by means of the
patented process, is subject to restrictions or limitations resulting from the domestic law.
Each Contracting State that takes legislative measures providing for the grant of
compulsory licenses to prevent the abuses which might result from the exclusive rights
conferred by a patent may do so only under certain conditions. A compulsory license (a
license not granted by the owner of the patent but by a public authority of the State
concerned), based on failure to work or insufficient working of the patented invention, may
only be granted pursuant to a request filed after three years from the grant of the patent
or four years from the filing date of the patent application, and it must be refused if the
patentee gives legitimate reasons to justify this inaction. Furthermore, forfeiture of a
patent may not be provided for, except in cases where the grant of a compulsory license
would not have been sufficient to prevent the abuse. In the latter case, proceedings for
forfeiture of a patent may be instituted, but only after the expiration of two years from the
grant of the first compulsory license.
(b) Marks. The Paris Convention does not regulate the conditions for the filing and
registration of marks which are determined in each Contracting State by domestic law.
Consequently, no application for the registration of a mark filed by a national of a
Contracting State may be refused, nor may a registration be invalidated, on the ground
that filing, registration or renewal has not been effected in the country of origin. The
registration of a mark obtained in one Contracting State is independentof its possible
registration in any other country, including the country of origin; consequently, the lapse
or annulment of the registration of a mark in one Contracting State will not affect the
validity of the registration in other Contracting States.
Where a mark has been duly registered in the country of origin, it must, on request, be
accepted for filing and protected in its original form in the other Contracting States.
Nevertheless, registration may be refused in well-defined cases, such as where the mark
would infringe the acquired rights of third parties; where it is devoid of distinctive
character; where it is contrary to morality or public order; or where it is of such a nature
as to be liable to deceive the public.
If, in any Contracting State, the use of a registered mark is compulsory, the registration
cannot be canceled for non-use until after a reasonable period, and then only if the owner
cannot justify this inaction.
Each Contracting State must refuse registration and prohibit the use of marks that
constitute a reproduction, imitation or translation, liable to create confusion, of a mark
used for identical and similar goods and considered by the competent authority of that
State to be well known in that Stateand to already belong to a person entitled to the
benefits of the Convention.
Each Contracting State must likewise refuse registration and prohibit the use of marks
that consist of or contain, without authorization, armorial bearings, State emblems and
official signs and hallmarks of Contracting States, provided they have been
communicated through the International Bureau of WIPO. The same provisions apply to
armorial bearings, flags, other emblems, abbreviations and names of certain
intergovernmental organizations.
Collective marks must be granted protection.
(c) Industrial Designs. Industrial designs must be protected in each Contracting State,
and protection may not be forfeited on the ground that articles incorporating the design
are not manufactured in that State.
(d) Trade Names. Protection must be granted to trade names in each Contracting State
without there being an obligation to file or register the names.
(e) Indications of Source. Measures must be taken by each Contracting State against
direct or indirect use of a false indication of the source of goods or the identity of their
producer, manufacturer or trader.
(f) Unfair competition. Each Contracting State must provide for effective protection
against unfair competition.
The Paris Union, established by the Convention, has an Assembly and an Executive
Committee. Every State that is a member of the Union and has adhered to at least the
administrative and final provisions of the Stockholm Act (1967) is a member of the
Assembly. The members of the Executive Committee are elected from among the
members of the Union, except for Switzerland, which is a member ex officio. The
establishment of the biennial program and budget of the WIPO Secretariat as far as the
Paris Union is concerned is the task of its Assembly.
The Paris Convention, concluded in 1883, was revised at Brussels in 1900, at Washington
in 1911, at The Hague in 1925, at London in 1934, at Lisbon in 1958 and at Stockholm in
1967, and was amended in 1979.
The Convention is open to all States. Instruments of ratification or accession must be
deposited with the Director General of WIPO.
Rome Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organizations
The Rome Convention secures protection in performances for performers, in phonograms
for producers of phonograms and in broadcasts for broadcasting organizations. WIPO is
responsible for the administration of the convention jointly with the International Labour
Organization (ILO) and the United Nations Educational, Scientific and Cultural
Organization (UNESCO).

Summary of the Rome Convention for the Protection of Performers,

Producers of Phonograms and Broadcasting Organisations (1961)

The Rome Convention secures protection in performances for performers, in phonograms

for producers of phonograms and in broadcasts for broadcasting organizations.
(1) Performers (actors, singers, musicians, dancers and those who perform literary or
artistic works) are protected against certain acts to which they have not consented, such
as the broadcasting and communication to the public of a live performance; the fixation
of the live performance; the reproduction of the fixation if the original fixation was made
without the performer's consent or if the reproduction was made for purposes different
from those for which consent was given.
(2) Producers of phonograms have the right to authorize or prohibit the direct or indirect
reproduction of their phonograms. In the Rome Convention, phonograms means any
exclusively aural fixation of sounds of a performance or of other sounds. Where a
phonogram published for commercial purposes gives rise to secondary uses (such as
broadcasting or communication to the public in any form), a single equitable remuneration
must be paid by the user to the performers, to the producers of the phonograms, or to
both. Contracting States are free, however, not to apply this rule or to limit its application.
(3) Broadcasting organizations have the right to authorize or prohibit certain acts, namely
the rebroadcasting of their broadcasts; the fixation of their broadcasts; the reproduction
of such fixations; the communication to the public of their television broadcasts if such
communication is made in places accessible to the public against payment of an entrance
fee.
The Rome Convention allows for limitations and exceptions to the above-mentioned
rights in national laws as regards private use, use of short excerpts in connection with
reporting current events, ephemeral fixation by a broadcasting organization by means of
its own facilities and for its own broadcasts, use solely for the purpose of teaching or
scientific research and in any other cases where national law provides exceptions to
copyright in literary and artistic works. Furthermore, once a performer has consented to
the incorporation of a performance in a visual or audiovisual fixation, the provisions on
performers' rights have no further application.
As to duration, protection must last at least until the end of a 20-year period computed
from the end of the year in which (a) the fixation was made, for phonograms and for
performances incorporated therein; (b) the performance took place, for performances not
incorporated in phonograms; (c) the broadcast took place. However, national laws
increasingly provide for a 50-year term of protection, at least for phonograms and
performances.
WIPO is responsible, jointly with the International Labour Organization (ILO) and the
United Nations Educational, Scientific and Cultural Organization (UNESCO), for the
administration of the Rome Convention. These three organizations constitute the
Secretariat of the Intergovernmental Committee set up under the Convention consisting
of the representatives of 12 Contracting States.
The Convention does not provide for the institution of a Union or budget. It establishes an
Intergovernmental Committee composed of Contracting States that considers questions
concerning the Convention [1].
This Convention is open to States party to the Berne Convention for the Protection of
Literary and Artistic Works (1886) or to the Universal Copyright Convention. Instruments
of ratification or accession must be deposited with the Secretary-General of the United
Nations. States may make reservations with regard to the application of certain
provisions.

[1] The TRIPS Agreement also contains provisions on the protection of related rights.
These provisions are different, in several respects, from those contained in the Rome
Convention and in the Geneva Convention for the Protection of Producers of Phonograms
Against Unauthorized Duplication of Their Phonograms (1971).
Convention establishing the World Intellectual Property Organization
The WIPO Convention, the constituent instrument of the World Intellectual Property
Organization (WIPO), was signed at Stockholm on July 14, 1967, entered into force
in 1970 and was amended in 1979. WIPO is an intergovernmental organization which
in 1974 became one of the specialized agencies of the United Nations system. The
origins of WIPO go back to 1883 and 1886 when the Paris Convention for the Protection
of Industrial Property and the Berne Convention for the Protection of Literary and Artistic
Works provided for the establishment of an "International Bureau". The two bureaus were
united in 1893 and, in 1970, were replaced by the World Intellectual Property
Organization, by virtue of the WIPO Convention.

Summary of the Convention Establishing the World Intellectual

Property Organization (WIPO Convention) (1967)
The WIPO Convention, the constituent instrument of the World Intellectual Property
Organization (WIPO), was signed at Stockholm on July 14, 1967, entered into force in
1970 and was amended in 1979. WIPO is an intergovernmental organization that became
in 1974 one of the specialized agencies of the United Nations system of organizations.
The origins of WIPO go back to 1883 and 1886 when the Paris Convention for the
Protection of Industrial Property and the Berne Convention for the Protection of Literary
and Artistic Works, respectively, were concluded. Both Conventions provided for the
establishment of an "International Bureau". The two bureaus were united in 1893 and, in
1970, were replaced by the World Intellectual Property Organization, by virtue of the
WIPO Convention.
WIPO's two main objectives are (i) to promote the protection of intellectual property
worldwide; and (ii) to ensure administrative cooperation among the intellectual property
Unions established by the treaties that WIPO administers.
In order to attain these objectives, WIPO, in addition to performing the administrative
tasks of the Unions, undertakes a number of activities, including: (i) normative activities,
involving the setting of norms and standards for the protection and enforcement of
intellectual property rights through the conclusion of international treaties; (ii) program
activities, involving legal and technical assistance to States in the field of intellectual
property; (iii) international classification and standardization activities, involving
cooperation among industrial property offices concerning patent, trademark and industrial
design documentation; and (iv) registration and filing activities, involving services related
to international applications for patents for inventions and for the registration of marks
and industrial designs.
Membership in WIPO is open to any State that is a member of any of the Unions and to
any other State satisfying one of the following conditions: (i) it is a member of the United
Nations, any of the specialized agencies brought into relationship with the United Nations,
or the International Atomic Energy Agency; (ii) it is a party to the Statute of the
International Court of Justice; or (iii) it has been invited by the General Assembly of WIPO
to become a party to the Convention. There are no obligations arising from membership
of WIPO concerning other treaties administered by WIPO. Accession to WIPO is effected
by means of the deposit with the Director General of WIPO of an instrument of accession
to the WIPO Convention.
The WIPO Convention establishes three main organs: the WIPO General Assembly, the
WIPO Conference and the WIPO Coordination Committee. The WIPO General Assembly
is composed of the Member States of WIPO which are also members of any of the Unions.
Its main functions are, inter alia, the appointment of the Director General upon nomination
by the Coordination Committee, review and approval of the reports of the Director General
and the reports and activities of the Coordination Committee, adoption of the biennial
budget common to the Unions, and adoption of the financial regulations of the
Organization.
The WIPO Conference is composed of the States party to the WIPO Convention. It
is, inter alia, the competent body for adopting amendments to the Convention. The WIPO
Coordination Committee is composed of members elected from among the members of
the Executive Committee of the Paris Union and the Executive Committee of the Berne
Union. Its main functions are to give advice to the organs of the Unions, the General
Assembly, the Conference, and to the Director General, on all administrative and financial
matters of interest to these bodies. It also prepares the draft agenda of the General
Assembly and the draft agenda of the Conference. Where appropriate, the Coordination
Committee nominates a candidate for the post of Director General for appointment by the
General Assembly.
The principal sources of income of WIPO's regular budget are the fees paid by the users
of the international registration and filing services, and the contributions paid by the
governments of Member States. Each State belongs to one of 14 classes, which
determines the amount of its contribution. Class I, with the highest contribution, involves
the payment of 25 contribution units, whereas Class Ster, with the lowest contribution,
involves the payment of 1/32 of one contribution unit. By virtue of the unitary contribution
system adopted by Member States in 1993, the amount of each State's contribution is the
same whether that State is a member only of WIPO, or only of one or more Unions, or of
both WIPO and one or more Unions.
The Secretariat of the Organization is called the International Bureau. The executive head
of the International Bureau is the Director General who is appointed by the WIPO General
Assembly and is assisted by two or more Deputy Directors General.
The headquarters of the Organization are in Geneva, Switzerland. The Organization has
Liaison Offices in Brazil (Rio de Janeiro), Japan (Tokyo), Singapore (Singapore) and the
United States of America (at the United Nations in New York).
The Organization benefits from the privileges and immunities granted to international
organizations and their officials in the fulfillment of its objectives and exercise of its
functions, and has concluded a headquarters agreement with the Swiss Confederation to
that effect.
Budapest Treaty on the International Recognition of the Deposit of Microorganisms for
the Purposes of Patent Procedure
Adopted in 1977, the Budapest Treaty concerns a specific topic in the
international patent process: microorganisms.
All states party to the Treaty are obliged to recognize microorganisms deposited as a part
of the patent procedure, irrespective of where the depository authority is located.
In practice this means that the requirement to submit microorganisms to each and every
national authority in which patent protection is sought no longer exists.
Summary of the Budapest Treaty on the International Recognition of the Deposit of
Microorganisms for the Purposes of Patent Procedure (1977)
The main feature of the Treaty is that a contracting State which allows or requires the
deposit of microorganisms for the purposes of patent procedure must recognize, for such
purposes, the deposit of a microorganism with any "international depositary authority",
irrespective of whether such authority is on or outside the territory of the said State.
Disclosure of the invention is a requirement for the grant of patents. Normally, an invention
is disclosed by means of a written description. Where an invention involves a
microorganism or the use of a microorganism, disclosure is not possible in writing but can
only be effected by the deposit, with a specialized institution, of a sample of the
microorganism. In practice, the term "microorganism" is interpreted in a broad sense,
covering biological material the deposit of which is necessary for the purposes of
disclosure, in particular regarding inventions relating to the food and pharmaceutical
fields.
It is in order to eliminate the need to deposit in each country in which protection is sought,
that the Treaty provides that the deposit of a microorganism with any "international
depositary authority" suffices for the purposes of patent procedure before the national
patent offices of all of the contracting States and before any regional patent office (if such
a regional office declares that it recognizes the effects of the Treaty). The European
Patent Office (EPO), the Eurasian Patent Organization (EAPO) and the African Regional
Intellectual Property Organization (ARIPO) have made such declarations.
What the Treaty calls an "international depositary authority" is a scientific institution -
typically a "culture collection" - which is capable of storing microorganisms. Such an
institution acquires the status of "international depositary authority" through the furnishing
by the contracting State in the territory of which it is located of assurances to the Director
General of WIPO to the effect that the said institution complies and will continue to comply
with certain requirements of the Treaty.
On January 16, 2017 there were 46 such authorities: seven in the United Kingdom, four
in the Republic of Korea, three in China, Italy and the United States of America, two each
in Australia, India, Japan, Poland, the Russian Federation and in Spain, and one each in
Belgium, Bulgaria, Canada, Chile, the Czech Republic, Finland, France, Germany,
Hungary, Latvia, Mexico, the Netherlands, Slovakia and Switzerland.
The Treaty makes the patent system of the contracting State more attractive because it
is primarily advantageous to the depositor if he is an applicant for patents in several
contracting States; the deposit of a microorganism under the procedures provided for in
the Treaty will save him money and increase his security. It will save him money because,
instead of depositing the microorganism in each and every contracting State in which he
files a patent application referring to that microorganism, he will deposit it only once, with
one depositary authority. The Treaty increases the security of the depositor because it
establishes a uniform system of deposit, recognition and furnishing of samples of
microorganisms.
The Treaty does not provide for the institution of a budget but it does create a Union and
an Assembly whose members are the States which are party to the Treaty. The main task
of the Assembly is the amendment of the Regulations issued under the Treaty. No State
can be requested to pay contributions to the International Bureau of WIPO on account of
its membership in the Budapest Union or to establish an "international depositary
authority".
The Budapest Treaty was concluded in 1977.
The Treaty is open to States party to the Paris Convention for the Protection of Industrial
Property (1883). Instruments of ratification or accession must be deposited with the
Director General of WIPO.
Patent Cooperation Treaty (PCT)
The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an
invention simultaneously in each of a large number of countries by filing an "international"
patent application. Such an application may be filed by anyone who is a national or
resident of a PCT Contracting State. It may generally be filed with the national patent
office of the Contracting State of which the applicant is a national or resident or, at the
applicant's option, with the International Bureau of WIPO in Geneva.

Summary of the Patent Cooperation Treaty (PCT) (1970)

The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an
invention simultaneously in each of a large number of countries by filing an "international"
patent application. Such an application may be filed by anyone who is a national or
resident of a PCT Contracting State. It may generally be filed with the national patent
office of the Contracting State of which the applicant is a national or resident or, at the
applicant's option, with the International Bureau of WIPO in Geneva.
If the applicant is a national or resident of a Contracting State party to the European
Patent Convention, the Harare Protocol on Patents and Industrial Designs (Harare
Protocol), the Bangui Agreement, or the Eurasian Patent Convention, the international
application may also be filed with the European Patent Office (EPO), the African Regional
Intellectual Property Organization (ARIPO), the African Intellectual Property Organization
(OAPI) or the Eurasian Patent Office (EAPO), respectively.
The Treaty regulates in detail the formal requirements with which international
applications must comply.
Filing a PCT application has the effect of automatically designating all Contracting States
bound by the PCT on the international filing date. The effect of the international application
is the same in each designated State as if a national patent application had been filed
with the national patent office of that State.
The international application is subjected to an international search. That search is carried
out by one of the competent International Searching Authorities (ISA) under the
PCT [1] and results in an international search report, that is, a listing of the citations of
published documents that might affect the patentability of the invention claimed in the
international application. In addition, a preliminary and non-binding written opinion on
whether the invention appears to meet patentability criteria in light of the search report
results is also issued.
The international search report and written opinion are communicated to the applicant
who, after evaluating their content, may decide to withdraw the application, in particular
where the content of the report and opinion suggests that the granting of patents is
unlikely, or the applicant may decide to amend the claims in the application.
If the international application is not withdrawn, it is published by the International Bureau,
together with the international search report. The written opinion is not published at that
time.
Before the expiration of 19 months from the priority date, the applicant has the option to
request a Supplementary International Searching Authority (SISA) (an ISA willing to offer
this service) to carry out an additional search of relevant documentation, specifically
focusing on documents in the particular language in which that authority specializes. The
goal of this additional search is to reduce the likelihood of further documents coming to
light in the national phase that would make granting the patent unlikely.
An applicant that decides to continue with the international application with a view to
obtaining national (or regional) patents can, in relation to most Contracting States, wait
until the end of the thirtieth month from the priority date to commence the national
procedure before each designated office by furnishing a translation (where necessary) of
the application into the official language of that office, paying to it the necessary fees and
acquiring the services of local patent agents.
If the applicant wishes to make amendments to the application for example, in order to
address documents identified in the search report and conclusions made in the written
opinion and to have the potential patentability of the "as-amended" application reviewed
an optional international preliminary examination may be requested. The result of the
preliminary examination is an international preliminary report on patentability (IPRP
Chapter II) which is prepared by one of the competent International Preliminary
Examining Authorities (IPEA) under the PCT [2] and which contains a preliminary and
non-binding opinion on the patentability of the claimed invention. It provides the applicant
with an even stronger basis on which to evaluate the chances of obtaining a patent and,
if the report is favorable, a stronger basis on which to continue with the application before
national and regional patent offices. If no international preliminary examination has been
requested, the International Bureau establishes an international preliminary report on
patentability (IPRP Chapter I) on the basis of the written opinion of the ISA and
communicates this report to the designated offices.
The procedure under the PCT has great advantages for applicants, patent offices and the
general public:
(i) applicants have up to 18 months more than if they had not used the PCT to reflect on
the desirability of seeking protection in foreign countries, appoint local patent agents in
each foreign country, prepare the necessary translations and pay national fees;
(ii) applicants can rest assured that, if their international application is in the form
prescribed by the PCT, it cannot be rejected on formal grounds by any designated office
during the national phase;
(iii) on the basis of the international search report and the written opinion, applicants can
evaluate with reasonable probability the chances of their invention being patented;
(iv) applicants have the possibility, during the optional international preliminary
examination, to amend the international application and thus put it in order before
processing by the various patent offices;
(v) the search and examination work of patent offices can be considerably reduced or
eliminated thanks to the international search report, the written opinion and, where
applicable, the international preliminary report on patentability which are communicated
to designated offices together with the international application;
(vi) since each international application is published with an international search report,
third parties are in a better position to formulate a well-founded opinion about the potential
patentability of the claimed invention; and
(vii) for applicants, international publication puts the world on notice of their applications,
which can be an effective means of advertising and looking for potential licensees.
Ultimately, the PCT:
brings the world within reach;
postpones the major costs associated with international patent protection;
provides a strong basis for patenting decisions; and
is used by the world's major corporations, research institutions and universities in seeking
international patent protection.
The PCT created a Union which has an Assembly. Every State party to the PCT is a
member of the Assembly. Among the most important tasks of the Assembly are the
amendment of the Regulations issued under the Treaty, the adoption of the biennial
program and budget of the Union and the fixing of certain fees connected with the use of
the PCT system.
The Assembly of the PCT Union has established a special measure to benefit (1) natural
persons who are nationals of and reside in States with a per capita national income below
US$3,000, or who are nationals of and reside in one of the States listed in the Schedule
of Fees under the PCT Regulations, and (2) applicants, whether natural persons or not,
who are nationals of and reside in States classified as LDCs by the United Nations. That
benefit consists of a reduction of 90 per cent of certain fees under the Treaty.
Details concerning the PCT can be obtained by consulting the PCT website, the PCT
Applicant's Guide, published by WIPO in English and French (Chinese, German and
Japanese editions, not published by WIPO, also exist) and the PCT Newsletter, published
by WIPO in English.
The PCT was concluded in 1970, amended in 1979 and modified in 1984 and in 2001.
It is open to States party to the Paris Convention for the Protection of Industrial Property
(1883). Instruments of ratification or accession must be deposited with the Director
General of WIPO.

[1] The patent offices of Australia, Austria, Brazil, Canada, China, Finland, Israel, Japan,
the Republic of Korea, the Russian Federation, Spain, Sweden, the United States of
America, the European Patent Office and the Nordic Patent Institute act as International
Searching Authorities under the PCT (status on January 1, 2013). Agreements enabling
the offices of Chile, Egypt and India to act as ISAs have been signed; however, these
offices have not yet commenced operations.
[2] The patent offices of Australia, Austria, Brazil, Canada, China, Finland, Israel, Japan,
the Republic of Korea, the Russian Federation, Spain, Sweden, the United States of
America, the European Patent Office and the Nordic Patent Institute act as International
Preliminary Examining Authorities under the PCT (status on January 1, 2013).
Agreements enabling the offices of Chile, Egypt and India to act as IPEAs have been
signed; however, these offices have not yet commenced operations.