WIPO Activities
The World Intellectual Property Organisation (WIPO) describes itself as 'dedicated to promoting the use and protection of works of the human spirit'. WIPO is an agency of the United Nations. It administers 23 treaties and currently has 179 member states (see list).
NEW MANAGEMENT TEAM APPOINTED
On Tuesday September 3, 2003 a key decision-making body of WIPO approved the appointment of two new Deputy Directors General (DDG) and two new Assistant Directors General (ADG). Amongst them is Australian, Mr. Francis Gurry as DDG.
Mr. Gurry is currently ADG and Legal Counsel of WIPO, responsible for WIPO's activities in the area of patents (including patent policy questions and the administration of the Patent Cooperation Treaty (PCT), and the WIPO Arbitration and Mediation Center. Prior to joining WIPO in 1985, he practiced as an attorney in Melbourne and Sydney and taught law at the University of Melbourne.
Online Policy Forum
WIPO will host an online forum on Intellectual Property in the Information Society, from June 1-15, 2005. The forum, held here, will provide a unique opportunity for all to contribute to the emerging debate on the value of intellectual property in the information society.
The Forum is designed to encourage an open debate on a number of themes related to intellectual property and the information society in light of the goals of the World Summit on the Information Society (WSIS). The themes examine the relationship between the intellectual property system and the information society; including issues of freedom of information and creativity, development goals, cultural diversity and emerging opportunities and challenges for use of intellectual property in the digital environment.
Click here for information.
WIPO's main activities may be grouped as follows.
By area of law:
Patents
1. Further harmonisation of patent law
2. Reform of the Patent Cooperation Treaty
3. Special Union for the International Patent Classification
4. The WIPO Patent Agenda
Trademarks, Industrial Designs and Geographical Indications
1. Harmonisation of laws for the protection of marks
2. Protection for trade marks against abusive domain name registrations
3. Geographical indications
Copyright
1. Broadcasters' rights
2. Protection of databases
3. WIPO Copyright Treaty and Performances and Phonograms Treaty
By issue:
Domain Names
1. Second WIPO Internet Domain Name Process
IP and Genetic Resources, Traditional Knowledge and Folklore
1. Access to genetic resources
2. Protecting traditional knowledge
3. Protecting folklore
Patents
1. Further harmonisation of patent law
2. Patent Cooperation Treaty
3. Special Union for the International Patent Classification
4. The WIPO Patent Agenda
1. Further harmonisation of patent law
Substantive Patent Law Treaty
Following the successful adoption of the Patent Law Treaty (PLT) in June 2000, which harmonises many aspects of patent procedure, the Standing Committee on the Law of Patents (SCP) is currently considering a the adoption of a Substantive Patent Law Treaty (SPLT).
Members of the Standing Committee have agreed to focus on six basic legal principles governing patent protection: prior art, novelty, inventive step, utility, sufficiency of disclosure and claim interpretation. At the moment, these concepts are treated differently in different jurisdictions such that the same patent application in two different countries, though subject to the same procedural requirements, could have different results. Harmonising substantive patent law would reduce the duplication of search and examination work and lead to huge efficiency gains.
At its fourth session in November 2000, the Standing Committee on the Law of Patents resolved to investigate the patent law implications of disclosure of information on the Internet. The Standing Committee asked the International Bureau to conduct a questionnaire on current national and regional practices with respect to Internet-related issues.
The results of that questionnaire were presented at the fifth session of the Standing Committee in May 2001 (SCP/5/4). The Bureau's main finding was that most countries do not have specific rules dealing with disclosures on the Internet and their effect on prior art. Rather, they apply general prior art principles. This approach was also favoured with regard to harmonisation of rules at the international level. Most countries preferred to harmonise the general definition of prior art first, and leave Internet disclosures for consideration at a later date (possibly as part of the Practice Guidelines).
As a result, the Standing Committee has decided to first establish general principles concerning prior art in the SPLT, and consider Internet disclosures later (see fifth session report SCP/5/6).
The sixth session of the Standing Committee on the Law of Patents, held in Geneva from November 6-9, 2001, discussed how national and regional patent offices might provide immediate and long term relief for patent owners and applicants affected by force majeure circumstances. The United States raised this issue in light of the September 11 terrorist attacks (see SCP/6/7), which have unfairly prejudiced the ability of some United States patent owners to lodge applications in foreign countries. Although the PLT provides some relief, that treaty will not enter into force until it has been ratified by 10 countries. National and regional offices have been invited to submit information on how they deal with force majeure circumstances to the International Bureau.
The Eighth Session of the SCP took place in Geneva on 25-29 November 2002 and considered revised provisions of the draft SPLT. The draft covers a number of basic legal principles relating to the grant and validity of patents in different countries. It aims, in particular, at ensuring that applicants in all contracting parties are subject to the same substantive conditions for the grant of patents and the invalidation of granted patents and at contributing to the reduction of duplication of search and examination work in patent offices.
The SCP made further progress towards common understanding on several issues arising from differences that exist among patent systems. While agreement in principle was achieved on a number of draft provisions, discussions on provisions such as those relating to the grace period and the scope of patentable subject matter, were postponed. It was also decided to include proposals relating to the protection of public health, genetic resources, traditional knowledge and a number of other public policy issues, in the draft Treaty, on the understanding that substantive discussions of these provisions would be postponed.
The Ninth Session of the SCP took place in Geneva from 12-16 May, 2003. The SCP made progress in reviewing provisions of the draft Substantive Patent Law Treaty (SPLT). Drafts of the Treaty, its Regulations and its Guidelines presented at this session can be obtained here.
At the Session the SCP made further headway in establishing a common understanding on several issues arising from differences that exist among patent systems. Provisional agreement was reached on a number of provisions on the understanding that any delegation could re-open discussions on these matters at any time in the future. For example, progress was made in respect of the introduction of a grace period in the draft SPLT.
On a number of other subjects, however, important differences in patent systems remain and require further reflection. One such issue relates to the extent to which the SPLT should allow contracting parties to retain divergent laws and practices, bearing in mind that the objective of the draft treaty is to harmonize patent law and practice. Proposals relating to the protection of public health, genetic resources, traditional knowledge and a number of other public policy issues, which the SCP agreed to include in the draft Treaty at its December 2002 meeting, were not discussed. For a more detailed summary of the meeting click here.
The Tenth Session of the SCP was held in Geneva from 10 to 14 May, 2004. WIPO member states met to discuss future directions for international harmonization of substantive patent law and to review provisions of a draft SPLT. The SCP was attended by representatives from 71 member states, 7 intergovernmental organizations and 27 non-governmental organizations.
The draft SPLT covers a range of basic legal principles that govern the grant and validity of patents in different countries, such as the criteria for assessing whether an invention is novel and involves an inventive step, whether it is industrially applicable (or has utility) and whether it is sufficiently described in the patent application concerned, and how patent claims should be drafted and interpreted. It aims to simplify, streamline and achieve greater convergence among national and regional patent laws and practices.
The SCP considered whether discussions should at this stage be limited to a number of provisions dealing with the definition of prior art, grace period, novelty and inventive step (non-obviousness) or whether talks should cover the current draft SPLT as a whole and consider issues such as disclosure of the origin of genetic resources and traditional knowledge, public health and exceptions to patentability criteria.
A number of draft provisions, such as the one relating to the fact that information made available to the public in any form shall form part of the prior art, which is central to the patent examination process, were accepted on the understanding that any delegation could re-open discussion of them in the future. Discussions brought about greater mutual understanding and movement towards agreement on a number of issues, such as the introduction of a grace period, the prior art effect of international applications under the Patent Cooperation Treaty (PCT) that are filed before but published after the application under consideration, and the definition of novelty. On a number of other issues, however, there are still important differences of approach among delegations and further reflection is required.
Documents prepared for this session can be found here.
The eleventh session of the SCP was held in Geneva from 1-3 June, 2005. Past work of the SCP has focused mainly on the so-called draft SPLT, which covers a range of basic legal principles that govern the grant and validity of patents in different countries, such as the criteria for assessing whether an invention is novel and involves an inventive step, whether it is industrially applicable (or has utility) and whether it is sufficiently described in the patent application concerned, and how patent claims should be drafted and interpreted.
This meeting of the SCP was devoted solely to the consideration of options for the future work of the Committee. Talks focused on whether discussions should be limited to six issues pursued in parallel processes (prior art, grace period, novelty, inventive step, sufficiency of disclosure and genetic resources), or whether the draft SPLT should be discussed as a whole, with further issues, such as clauses on public interest flexibilities, transfer of technology and the disclosure, in patent applications, of the source of genetic resources.
While delegations recognized the importance of the work of the SCP and emphasized that the work on patent law harmonization should progress taking into account the interests of all parties, they did not reach agreement as to the modalities and scope of the future work of the Committee.
For more information, click here. For documents from the meeting, click here.
For the latest developments regarding WIPO's harmonisation of patent law, please visit the IPRIA International Developments WIPO webpage.
2. PCT
The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention simultaneously in each of the 123 Contracting States by filing one "international" patent application under the PCT with one patent office in one language. For more information on the PCT click here.
WIPO reports exceptional growth from North East Asia in record year for international patent filings
In a record year for international patent filings, 2005 saw over 134,000 applications of WIPO’s Patent Cooperation Treaty (PCT) filed, representing a 9.4% increase from 2004. In 2005, the five top users of the international patent system remained unchanged: United States of America, Japan, Germany, France and the United Kingdom. And, for the second year running, the most impressive rates of growth came from North East Asia – namely, Japan, the Republic of Korea and China, which between them accounted for 24.1% of all international applications. The Republic of Korea overtook the Netherlands as the 6 th biggest user of the PCT and China dislodged Canada, Italy and Australia to take 10 th position. According to WIPO, "The rate of growth from Japan, Republic of Korea and China continues to be exceptional, reflecting the rapidly expanding technological strength of those countries. Since 2000, the number of applications from Japan, Republic of Korea, and China, has risen by 162%, 200% and 212%, respectively.”
For further information, click here
Reform of PCT
In October 2000 the Patent Cooperation Treaty Assembly set up the Committee on Reform of the Patent Cooperation Treaty. In its first session in May 2001, the Committee considered various proposals for how to reform the PCT. In accordance with the Committee's recommendations, in October 2001 the Assembly established a Working Group to come up with more specific proposals for reform (including possible amendments to the provisions of the PCT).
Major reforms of the PCT will enter into force at the beginning of 2004. Key changes concern:
- Revised request and demand forms;
- Indications regarding parent application or grant, or continuation or continuation-in-part;
- Signature requirements;
- Possibility of power of attorney waivers by PCT Offices, PCT Authorities and/or the International Bureau;
- Changes regarding payment fees;
- Enhanced international search and preliminary examination system
- New time limit for filing the demand;
- Exclusion of elections of States no longer possible.
For a more detailed summary of these changes, see pages 1-7 of the November 2003 PCT Newsletter.
On February 12, 2004, the PCT-SAFE (Secure Applications Filed Electronically) system became available, allowing inventors seeking patent protection under the PCT to file their applications electronically with WIPO as the receiving office. The introduction of the new system will make the the PCT considerably more efficient and will reduce the cost of filing an application.
For more information about PCT-SAFE, click here.
At its 32nd Session in Geneva from September 22 - October 1, 2003 the Assembly made a number of amendments to the PCT Regulations following previously adopted major changes designed to streamline and rationalize the PCT system, and agreed on a future work program for PCT reform. Fee reductions for applicants from least developed countries were expanded and a new scale of fee reductions was adopted for international applications filed in electronic form. The National Board of Patents and Registration of Finland was appointed by the Assembly as an International Searching Authority and International Preliminary Examining Authority under the PCT, with likely effect from sometime in 2004. Finally, the Assembly took note of status reports on two major IT projects relating to the PCT: the IMPACT (Information Management for the Patent Cooperation Treaty) Project and the PCT-SAFE (Secure Applications Filed Electronically) Project. The report adopted by the Assembly at the session can be obtained here.
Most recently, on January 14, 2005, WIPO marked the filing of the one millionth patent application under the PCT. A record number of applications, just over 120,000 were filed in 2004 using the PCT. The USA continued to top the list of largest users, but the biggest rate of growth came from Japan, the Republic of Korea and China. For further information, click here.
For the latest developments regarding reform of the PCT, please visit the IPRIA International Developments WIPO webpage.
The Working Group on Reform of the Patent Cooperation Treaty (PCT)
The Working Group held its First Session in November 2001, and its Second Session from 29 April to 3 May 2002. The Third Session of the Working Group was held in Geneva on 18-22 November 2002. Working documents are available on the following agenda topics:
The Fourth Session of the Working Group was held in Geneva from May 19-23, 2003. For a summary of the meeting click here. Working documents are available on the following topics covered during the session:
A summary of the Fifth Session of the Working Group on Reform of the PCT, held in Geneva from November 17 to 21, 2003, is now available. The meeting covered a wide range of issues, including:
- simplified protest procedure in case of non-unity of invention (see document PCT/R/WG/5/1, annex ii);
- publication of translation furnished by the applicant (see document PCT/R/WG/5/1, annex iii);
- formalities checking under the pct (see document PCT/R/WG/5/4);
- restoration o the right of priority (see document PCT/R/WG/5/7);
- central electronic deposit system for sequence listings (see document PCT/R/WG/5/3);
- “missing part” requirements (see document PCT/R/WG/5/8);
- rectification of clear mistakes (see document PCT/R/WG/5/2);
- options for future development of international search and examination: making greater use of international reports (see documents PCT/R/WG/5/9 and 9 Corr.);
- proposals by Switzerland regarding the declaration of the source of genetic resources and traditional knowledge in patent applications (see document PCT/R/WG/5/11 Rev;
- aspects of copyright and other rights in non patent literature (document PCT/R/WG/5/5); and
- divisional applications under the pct (document PCT/R/EG/5/6).
For summaries of the latest sessions of the PCT Working Group, please visit the IPRIA International Developments WIPO webpage.
The Assembly of the International PCT
A number of changes were approved by the Assembly of the International PCT Union during its Annual Session, held in Geneva from 23 September to 1 October 2002 as part of the meetings of the Assemblies of the Member States of WIPO (see documents). Some of the important changes include:
- Fee reduction for international applications filed in electronic form from
17 October 2002;
- An enhanced international search and preliminary examination system, an overhaul of the designation system, and availability of priority documents from digital libraries, from 1 January 2004; and
- Appointment of a new International Searching and Preliminary Examining Authority (expected to take place in the summer of 2004).
The Assembly took note of the recommendation of the PCT Committee for Technical Cooperation (PCT/CTC), which met earlier in the week, that the Meeting of International Authorities under the PCT (PCT/MIA) undertake a study on the inclusion, in the non-patent literature part of the PCT minimum documentation, of traditional knowledge-related periodicals and databases, as well as a study on the use of databases in certain technical fields.
The Assembly also agreed on a program for further work on reform of the PCT system. It agreed that two sessions of the Working Group on Reform of the PCT should be convened between the September 2002 and September 2003 sessions of the PCT Assembly to consider issues of three kinds. First, those proposals for reform which had already been submitted to the Committee or the Working Group, but had not yet been considered in detail, should be reviewed. Second, consideration should be given to options for revising the Treaty itself. Third, the Working Group should commence discussions on the development of a common quality framework for the international search and international preliminary examination procedures under the PCT.
For summaries of the latest sessions of the PCT Assembly, please visit the IPRIA International Developments WIPO webpage.
The Meeting of International Authorities under the PCT
The Seventh Session of the Meeting of International Authorities under the PCT was held in Geneva from 10-14 February, 2003. The Meeting included the following agenda items for discussion:
- Draft PCT international search and preliminary examination guidelines: containing the first draft of a set of combined guidelines for International Search and Preliminary Examination under the PCT that was submitted by the USPTO after consultation between that Office and the EPO and JPO;
- PCT minimum documentation: looking at the minimum documentation required by International Authorities to satisfy PCT art 15(4) in light of recent developments in traditional knowledge-related periodicals and databases and the use of database in certain technical fields to supplement paper based non-patent literature; and
- The format of written opinions and reports under PCT Chapters I and II.
The Eighth Session of the Meeting of International Authorities under the PCT took place in Washington DC from 5-9 May, 2003. The agenda included discussion on:
- PCT minimum documentation;
- Proposed revised PCT International Search and Preliminary Examination Guidelines (see Doc PCT/MIA/8/2) including comments by the USPTO, EPO, Rospatent and IP Australia (PCT/MIA/8/2 Add.1 and PCT/MIA/8/2 Add.2);
- Format of written opinions and reports (PCT/MIA/8/3, PCT/MIA/8/4); and
- A common framework for international search and preliminary examination, including an Initial Task Force Report prepared by the UK (PCT/MIA/8/5).
The Ninth Session of the Meeting of International Authorities under the PCT took place in Geneva from July 21 to 25, 2003. Key items on the Agenda were:
Proposed revised PCT International Search and Preliminary Examination Guidelines
The Meeting agreed on the text of the revised draft Guidelines. The Meeting also noted that it was desirable to work towards increased consistency in practice and agreed that areas of difference should be the subject of further review in the future, including in particular:
i) recording of search history; and
ii) unity of invention practice in relation to biotechnological inventions
The Meeting concluded that periodicals and databases mentioned in the lists prepared should be further studied in the light of their accessibility, facilities for electronic searching, and technical and geographical coverage. The Meeting requested the International Bureau to prepare revised ranked lists, taking into account the comments and further suggestions made during the session and making a comprehensive check of their conformity with the criteria agreed upon by the Meeting at its seventh session (see document PCT/MIA/7/5, paragraph 12). The International Bureau was invited to post the updated lists on the MIA electronic forum for comment by Authorities with a view to reaching agreement by way of correspondence as to the inclusion of appropriate traditional knowledge-related periodicals in the non-patent literature part of the PCT minimum documentation, and on a list of recommended traditional knowledge-related databases, by the end of 2003.
To view documents from this meeting, click here.
For summaries of the latest sessions of the PCT International Authorities, please visit the IPRIA International Developments WIPO webpage.
3.Special Union for the International Patent Classification
The International Patent Classification (IPC) is based on an international multilateral treaty administered by WIPO (the Strasbourg Agreement Concerning the International Patent Classification), which was concluded in 1971 and entered into force in 1975. The industrial property offices of more than 90 States, four regional offices and the International Bureau of WIPO under the Patent Cooperation Treaty (PCT) use the IPC.
In order to keep the IPC up-to-date, it is continuously revised and a new edition is published every five years. The current (seventh) edition entered into force on 1 January 2000. The current revision period runs from 1999 to 2004. Changes to the IPC are prepared by the APC Revision Working Group and are subsequently approved by the IPC Committee of Experts set under the Strasbourg Agreement (all States party to the Agreement are members of the Committee of Experts).
The current version of the IPC is available here.
IPC Revision Working Group
On 4-8 November 2002, the ad hoc IPC Reform Working Group met and resolved a number of issues, including:
- General principles of classification (elaboration of rules for multiple classification in the IPC) (IPC/R 4/99 Rev.11);
- Elaboration of principles of the creation, maintenance and functioning of the mast classification database (IPC/R 8/99 Rev.13);
- Improvement of IPC training by providing modern training techniques (eg computer-based and internet training tools), involving, in particular, enhanced support for developing countries in the use of the IPC (IPC/R 13/99);
- Determination of the most appropriate contents of the core level of the reformed IPC (IPC/R 14/00 Rev.9);
- Study of the feasibility of introducing a simplified set of rules in the IPC (in particular, a uniform precedence rule) (IPC/R 15/00 Rev.8);
- Study of ways and means for the establishment of a French version of the Advanced Level of the IPC (IPC/R 16/00 Rev.2 and IPC/R 16/00 Rev.3);
- Revision of the Guide to the IPC (IPC/R 17/01 Rev.6); and
- Elaboration of the IPC Systematic Maintenance Procedure (IPC/R 19/02).
The Thirteenth Session of the IPC Revision Working Group was held in Geneva from June 13-17, 2005.
The Working Group continued its consideration of IPC revision proposals and discussed various projects aimed at the implementation of IPC reform results. Documents for this session can be viewed here.
The twelfth session for the IPC Revision Working Group was held in Geneva on November 29, 2004. The working group discussed various projects aimed at the implementation of IPC reform results. Documents for this session can be viewed here.
The IPC Revision Working Group's eleventh session was held in Geneva, from June 14-24, 2004. Items on the Agenda included:
- The updating of IPC training examples, a discussion that followed on from the Working Group's tenth session;
- The elaboration of classification definitions, in which the IPC scheme could be improved using material collected in definition projects; and
- Various IPC revision projects, relating mainly to the titles and classification of the projects.
The Working Group also discussed the preparation of the eighth edition of the IPC. This would involve updating the existing catchwords index and associated IPC symbols.
The final report and other documents for this session can be accessed here.
The IPC Revision Working Group's tenth session was held in Geneva, from November 24-December 5, 2003. This session followed on directly from the previous session, as the Working Group finetuned a number of issues arising from the Revision Program. A summary of this meeting is available here.
The previous meeting of the Working Group was held in Geneva from June 4 to 13, 2003, at which it was agreed to incorporate additional classifications schemes for traditional knowledge based inventions and business methods patents into an international system designed to facilitate search and retrieval of patent information in all fields of technology.
The Working Group responsible for the revision of the system agreed to create and incorporate into the IPC a new main category of information on traditional medicine based on the use of plants, comprising more than 200 subdivisions in its English version. Such information represents the most important part of documented traditional knowledge. This new enhancement provides classification-based access to classification-based traditional knowledge as prior art and thereby will facilitate information searches relating to traditional knowledge-based innovations.
The inclusion of this new category, in the English version of the IPC, is the result of two years of investigation by a Task Force comprising representatives of China, India, Japan, United States of America and the European Patent Office Organization (EPO). The French version of the new scheme was finalized and submitted for approval by the IPC Committee of Experts at its meeting in October 2003. The Working Group also agreed to establish a new provisional subclass of information relating to business methods patents, entitled known as "Data processing equipment or methods specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes".
The Working Group agreed that the creation of this subclass was necessary in view of the potential rapid growth in the number of patent documents relating to business methods. On the basis of a proposal submitted by the EPO, the Working Group approved a provisional scheme of the new subclass which is expected to be completed at the next meeting of the Working Group.
For summaries of the latest sessions of the IPC Working Group, please visit the IPRIA International Developments WIPO webpage.
IPC Committee of Experts
The Thirty-Fifth Session of the Committee of Experts was held from 25-29 October, 2004, and continued on from the previous meeting, including the consideration of amendments to the IPC, as proposed by the IPC Revision Working Group, and the implementation of the IPC reform.
A full report of this session is available here.
The Thirty-Fourth Session of the Committee of Experts was held from February 23 to 27, 2004 in Geneva. Items on the agenda included:
- Report of the tenth meeting of the Trilateral Working Group on Classification
- Consideration of amendments to the IPC emanating from revision projects
- Consideration of changes to the IPC concerned with the preparation of the new edition
- Treatment of hybrid systems in the IPC
- Guidelines for determining where to classify patent documents
- Implementation of the results of IPC reform
- IPC reform implementation plan
- Development of classification tools for traditional knowledge
- Publication of the eighth edition of the IPC and related materials
- CLAIMS Project Status report
A full report of this session is available here.
The Report from the 33rd Session of the Committee of Experts, held in Geneva from 2-10 October, 2003 is now available. It contains details of discussions, conclusions and decisions of the Session, which included the following topics:
- consideration of amendments to the IPC
- treatment of the hybrid systems in the IPC
- contents of the core level of the reformed IPC
- establishment of the special subcommittee for the revision of the advanced level of the reformed IPC
- revision of the guide to the IPC
- guidelines for determining where to classify patent documents
- concept of operations for the reformed IPC
- use of the reformed IPC
- implementation of the results of IPC reform
- IPC reform implementation plan
- CLAIMS project
To access a complete copy of the Report, click here. To access documents discussed at the Session, click here.
The IPC Committee of Experts met for its 32nd Session on 24-28 February, 2003. The Committee considered:
- Amendments to the IPC (IPC/CE/32/2);
- Working groups and working methods of the Committee of Experts (IPC/CE/32/3);
- Recommendations formulated by the ad hoc IPC Reform Working Group (IPC/CE/32/4).
- Recommendations formulated by the IPC Revision Working Group (IPC/CE/32/5).
- IPC reform implementation plan (IPC/CE/32/6).
- Concept of operations for the reformed IPC (IPC/CE/32/7).
- Development of classification tools for traditional knowledge (IPC/CE/32/8).
- Publication of the eighth edition of the IPC (IPC-2005) and related material (IPC/CE/32/9) and
- Elaboration of a concordance table between the IPC and the International Standard Industrial Classification of All Economic Activities (ISIC) (IPC/CE/32/10).
Annexes to these documents are available here.
For summaries of the latest sessions of the IPC Working Group, please visit the IPRIA International Developments WIPO webpage.
4. The WIPO Patent Agenda
The WIPO Patent Agenda is an initiative to promote discussion about the medium to long- term future of the international patent system. Given that most WIPO activities are limited to particular issues of concern, the Patent Agenda is intended to open up a wideranging debate about what priorities WIPO should pursue over the next few years.
At the 37th series of meetings of the WIPO Assemblies in Geneva from
23 September to 1 October 2002, the Assemblies considered a memorandum (Doc A/36/14) of the Director General which sought to identify salient issues relating to the future development of the international patent system (see Doc A/37/6). The Director General's initiative expressed the belief that the international patent system should become more user-friendly and accessible, and provide an appropriate balance between the rights of inventors and the general public, while at the same time taking into account the implications for the developing world. This initiative was intended to increase the effectiveness of existing activities being undertaken in relation to the Patent Law Treaty, the draft Substantive Patent Law Treaty, and the Patent Cooperation Treaty.
The Assemblies discussed the memorandum, with the WIPO General Assembly, the Paris Union Assembly and the PCT Assembly approving the proposals for further work. The Assemblies mandated the Secretariat to prepare a study on the possible implications of the proposals on developing countries.
Central recording of changes in patents and patent applications
The Standing Committee on the Law of Patents has indicated that it will in the future consider the feasibility and desirability of a central system for recording changes in patents and patent applications in member states. The aim would be to give central recording the same effect as recording in each individual member state, subject to refusal through notification.
Biotechnological Inventions
The Standing Committee on the Law of Patents will investigate practical issues associated with the patenting of biotechnological inventions. However, according to WIPO's Revised Draft Program and Budget for 2002-2003 (WO/PBC/4/2), this issue is not yet ready for the Standing Committee's consideration and will first be investigated by consultants.
The International Bureau will continue to examine the feasibility of establishing a data bank for the deposit of DNA sequence listings referred to in patent applications. The Bureau is considering whether this system should be, centralised, or decentralised using a similar approach to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.
Other provisions of the Budapest Treaty are also being scrutinised by the International Bureau, including those relating to the storage, handling and transportation of biological material.
Industrial property aspects of space law
According to WIPO's Revised Draft Program and Budget for 2002-2003 (WO/PBC/4/2), the Standing Committee will investigate the desirability and feasibility of providing rules relating to the industrial property aspects of space law.
Commercialisation of industrial property developed by universities
WIPO's Revised Draft Program and Budget for 2002-2003 (WO/PBC/4/2) also includes a study (in conjunction with other sectors of WIPO) of the commercialisation of industrial property rights developed or held by universities and other research institutions.
For summaries of the latest regarding the WIPO Patent Agenda, please visit the IPRIA International Developments WIPO webpage.
Trade Marks, Industrial Designs and Geographical Indications
The Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) provides a forum to discuss issues, facilitate coordination and provide guidance concerning the progressive international development of the law of trademarks, industrial designs and geographical indications, including the harmonization of national laws and procedures. It was established by a decision of the Assemblies of the Member States of WIPO and the Unions administered by WIPO, taken at their thirty-second series of meetings, held in Geneva from March 25 to 27, 1998. The SCT submits its recommendations and policies to the WIPO General Assembly for approval.
Developments from the sessions of the SCT feature under the below headings:
1. Harmonisation of laws for the protection of marks
2. Protection for trade marks against abusive domain name registrations
3. Geographical indications
For the latest developments concerning Trade Marks, Industrial Designs and Geographical Indications, please visit the IPRIA International Developments WIPO webpage.
1. Harmonisation of laws for the protection of marks
Trademark Law Treaty
The Trademark Law Treaty (TLT) was concluded in 1994 with a view to streamlining and simplifying, on a worldwide basis, formal trademark procedures relating to national and regional trademark applications and the maintenance of trademarks. It currently has 31 member countries.
The fourteenth session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) took place from April 18-22, 2005.
Efforts to revise a key international treaty in the field of trademarks made significant headway, as the Committee agreed on a text to be proposed as a basis for negotiations at the Diplomatic Conference for the Adoption of the Revised Trademark Law Treaty (TLT), to be convened in March 2006.
In order to keep pace with developments in telecommunications and to create an institutional framework allowing the adaptation of certain administrative details regulated under the treaty, the revision of the TLT envisages the inclusion into the treaty of provisions on electronic filing of trademark applications and associated communications, the formalities concerning the representation of all types of marks, including visible signs (and certain forms of visible signs, such as hologram marks, colour marks, position marks or motion marks) as well as non-visible signs, provisions concerning the recording of trademark licenses, relief measures when certain time limits have been missed, and the establishment of an assembly of the contracting parties.
The SCT agreed on a "basic proposal" to be presented at the diplomatic conference, which will be held from March 3 to 31, 2006. The absence from the basic proposal of text between square brackets or alternative texts for certain provisions, indicates consensus among member states.
A preparatory meeting for the Diplomatic Conference for the Adoption of a Revised TLT was also held in Geneva, from April 25-26, 2005. This meeting adopted the provisional rules of procedure for the diplomatic conference.
For more information on these sessions, click here.
The thirteenth session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) took place in Geneva from October 25-29, 2004. Negotiations for the revision of a key international treaty in the field of trademarks gathered pace, as delegates attending the session made significant progress in fine-tuning legal texts to revise the existing Trademark Law Treaty (TLT), bringing it in line with the technological advances of the past decade. This follows on the heels of a decision by WIPO member states at their annual meetings in October 2004 to convene a Diplomatic Conference on the revision of the TLT in March 2006.
In order to keep pace with developments in telecommunication and to create an institutional framework allowing the adaptation of certain administrative details regulated under the treaty, the revision of the TLT envisages the inclusion into the treaty of provisions on electronic filing of trademark applications and associated communications, provisions concerning the recording of trademark licenses, relief measures when certain time limits have been missed, and the establishment of an assembly of the contracting parties.
The SCT reached consensus on a range of articles and rules including the marks to which the treaty applies, questions relating to communications, measures in case of failure to comply with time limits, duration and renewal of registration, questions relating requests for recordal, amendment or cancellation of a license.
The SCT also reviewed and discussed a provisional summary of responses from member states to a questionnaire on national trademark law and practice. This survey, which contains a large number of questions on national trademark law and practice was circulated to SCT members in August 2003. Countries and intergovernmental organizations that have responded to the questionnaire have until the beginning of 2005 to review and submit comments on their inputs. After this time the final version of the document, which will take into account all comments received, will be submitted to the SCT. This document could serve as a basis for future work of the SCT.
For more information, click here.
At the Twelfth Session of the SCT, from April 26-30, 2004 in Geneva, members endorsed the introduction to the TLT of a specific provision concerning communications with intellectual property offices under which contracting parties are free to choose their preferred means of communication, including electronic communication. This will transform the originally paper based approach of the TLT without imposing a specific mode of communication.
The draft revised treaty will maintain a provision which does not allow contracting parties to require the attestation, notarization, authentication, legalization or other certification of any signature in a communication, with very few exceptions, such as the surrender of registrations. The provisions on signature accommodate recent developments such as the increasing acceptance by offices of electronic signatures or other types of identification.
The SCT also made progress on a provision relating to measures required in case of failure to comply with time limits. There was a general understanding among delegations that future contracting parties to the revised TLT should provide at least one form of reinstatement of rights. These would be made available in situations in which rights were lost due to non-compliance with a time limit, in spite of due care on the part of the person who missed the time limit.
Moreover, the Committee discussed, for the first time, provisions aiming at the harmonization and simplification of requests for the recording of trademark licenses. In this respect, a number of delegations and representatives of observer organizations supported the inclusion of provisions on the recording of trademark licenses in the treaty, while other delegations expressed some concern on the issue.
Finally, the SCT had a first exchange of views on a new set of final and administrative clauses for the draft TLT. These clauses provide, among other things, for the creation of an assembly constituted by contracting parties. This assembly would have the power to change the regulations under the treaty, thereby allowing the administrative framework set up by the treaty to regularly adapt to changing circumstances and new developments in trademark registration procedures.
To view draft documents from this meeting, click here.
At the Eleventh Session of the SCT from November 10 to 14, 2003 members focused on revision of the TLT. They approved a proposal on communications which envisages that "any Contracting Party may choose the means of transmittal of communications. This means that the trademark office of any Contracting Party may choose whether to accept filings on paper only, by electronic means only, or both on paper and by electronic means. They also agreed to reduce and simplify requirements regarding the language of communications.
Member States approved, in large part, a provision on measures in case of failure to comply with time limits, which, among other things, requires Contracting Parties to provide at least one of three possible types of relief: time extensions, continued processing or reinstatement of rights. Parties could not agree, however, on whether or not to include the provisions contained in the Joint Recommendation on Trademark Licences adopted by the WIPO and Paris Assemblies in September 2000 regarding Trademark Licences. They decided to continue discussion on this matter at the SCT's next session.
The Ninth Session of the Standing Committee took place in Geneva on 11-15 November 2002. The discussions on trade marks focused on the need to revise the Trademark Law Treaty ('TLT'). In view of technological developments, new areas for consideration in revising the TLT include the possibility to introduce electronic filing of trade mark applications and associated communications, incorporation of the Joint Recommendation on Trade Mark Licenses and relief and reinstatement of rights in case of missing certain time limits.
Members also agreed to survey existing national practices with a view to promoting the convergence of international trade mark law practices and to fostering a common approach to the examination of trade mark applications. It was proposed that a questionnaire be circulated to member states to collect national information and to identify issues for the further development of international trade mark law and the convergence of national trade mark practices.
The agenda featured a number of other provisions for further harmonization including:
At the Tenth Session of the Standing Committee, which took place in Geneva from April 28 to May 2, 2003, the Secretariat distributed the Draft Revised Trademark Law Treaty. The document contains a revised version of draft Articles 8, 13bis and 13ter and related rules of the draft revised Trademark Law Treaty (TLT) which is presented separately, pursuant to a decision of the SCT at its ninth session. The document also contains explanatory notes related to these articles. The SCT was invited to consider and comment on the proposals as contained in the Annex to the document, and decided that the International Bureau should revise Articles 8, 13bis, 13ter and related rules according to comments and would submit for the next meeting a new document containing the full text of the TLT, including provisions of trademark licenses and the establishment of an Assembly.
The SCT also considered the current proposal on electronic communications which envisages that "any Contracting Party may choose the means of transmittal of communications". This means that the Trademark Office of any Contracting Party may choose whether to accept filings on paper only, or both on paper and by electronic means. Discussions emphasised the need to provide developing countries, least developed countries and countries in transition with technical and financial assistance to facilitate the implementation of electronic communication in those countries.
The SCT has decided that priority should be given to the revision of the TLT at the eleventh session and agreed to circulate a questionnaire to member States to gather information on national practices. The date of the next session will be announced by the Secretariat in due course.
For summaries of the latest developments regarding the TLT, please visit the IPRIA International Developments WIPO webpage.
2. Protection for Trade Marks against Abusive Domain Name Registrations
Updates on this topic can be found under the issue heading 'Domain Names' (below).
3. Geographical Indications
At its Ninth Session in Geneva from 11-15 November 2002, the Standing Committee considered the definition of geographical indications. The Committee considered the application of the TRIPS definition at the national and regional level by different systems of protection, including practical differences between various systems; and the practical differences between the systems of protection of geographical indications such as appellations of origin, and the system of protection under collective and certification marks.
The Standing Committee also considered geographical indications and the territoriality principle. The Committee noted that geographical indications being territorial in nature, the "territoriality principle" generally associated with the protection of intellectual property rights is quite naturally referred to in the field of geographical indications as well. However, it also stated that the situation varies in that both the country of origin and the country of protection are concerned with the determination of geographical indications for purposes of protection. The report considered the obligations of parties to various conventions, including the Paris, Madrid, Lisbon and TRIPS Agreements. It noted in particular that the obligation for WTO Members to "provide the legal means for interested parties" to prevent (a) the use of misleading indications of geographical origin and (b) the use of geographical indications which constitutes acts of unfair competition, meant that satisfaction of this enforcement obligation can involve reference to the existence of the geographical indications under the laws of the country of origin. The Committee also considered the application of exceptions to the protection of geographical indications, namely generic designations and 'grandfathering'.
The SCT decided to request the International Bureau to prepare a study setting out the issues generally considered with regard to the protection of GIs, taking into account the elements contained in the definition of the TRIPS Agreement, art 22.1. The purpose of the study would be to provide members with a general overview of issues considered by different systems of protection and would constitute a basis of discussion as well as promote a better understanding of the definition in a more concrete way, especially of assistance for those members in the process of establishing their own systems.
For summaries of the latest sessions of the SCT regarding Geographical Indications, please visit the IPRIA International Developments WIPO webpage.
4. Nice Union (International Classification of Goods and Services for the purposes of the Registration of Marks)
Preparatory Working Group
The Preparatory Working Group held its Twenty-Third Session in Geneva from March 31 - April 4, 2003. The Working Group continued to consider proposals for changes to the eighth edition of the Nice Classification (see documents CLIM/GTP/23/2 to 5 available here). The Working Group approved a number of changes to the Nice Classification, but rejected others including the proposal presented by the US relating to the classification of goods "made of precious metal" and "not made of precious metal". All proposals and the responses can be found in the annex to the report.
For summaries of the latest sessions of the SCT regarding the Nice Union, please visit the IPRIA International Developments WIPO webpage.
5. The Madrid System of International Registration of Marks
The Madrid system offers users a simple and cost-effective way to apply for protection of their trade marks in any or all of the 74 states which are party to the agreement by making a single international deposit in one language, with one set of fees in one currency. The system is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks, which dates from 1891, and the Protocol Relating to the Madrid Agreement, which was adopted in 1989, entered into force on December 1, 1995 and introduced some new features into the system to address difficulties that had impeded adherence by certain countries. Any State which is a party to the Paris Convention for the Protection of Industrial Property may become a party to the Agreement or the Protocol or both.
For more information and analysis regarding usage of the Madrid System, click here.
Use of the international trademark registration system reached a record level in 2004, with the receipt of 29,459 international trademark applications representing a 23.5% increase on figures for 2003. For the twelfth consecutive year, Germany topped the list of biggest users, followed by France, Italy, Benelux and Switzerland. Within only 12 months of signing up to the Madrid Protocol, the US filed enough international applications to rank 6 in the world. Statistics for 2004 also show a marked increase in the number of international trademark applications.
For a recent analysis of facts and figures regarding usage of the system, click here.
At the Thirty-Fifth Session of the Assembly of the Madrid Union in Geneva from September 22 to October 1, 2003 Member States decided to adopt Spanish as the third working language of the Madrid Protocol. Inclusion of Spanish would be a clear and strong incentive for Spanish-speaking countries to join the Madrid Protocol and promises to facilitate their accession process and will pave the way for the Madrid system to become a truly global registration mechanism. Member states also agreed on a series of measures designed to ensure that the Madrid Protocol, one of the two international treaties governing international trademark protection, and the European Community trademark system are fully compatible with each other. In view of these changes, the European Community (EC) delegate said that it was likely that the EC would submit its instrument of accession to the Madrid Protocol within one year. The Assembly's report for the Thirty-Fifth Session can be obtained here.
On November 2, 2003 the Madrid Protocol entered into force for the United States of America, which acceded the Protocol on 2 August, 2003. As the USA maintains trade links with so many other countries throughout the world, it is expected that this event will initiate a new period of growth for the Madrid System Concerning the International Registration of Marks (Madrid system).
As of April 1, 2004, Spanish became a working language of the international trademark system. Users of the international trademark system can now file applications in Spanish, in addition to English and French, thereby removing language as a barrier for more hispanophone countries to join the Madrid Protocol. For more information, click here.
On June 29, 2004 in Geneva, the Director General of WIPO, Dr. Kamil Idris, welcomed the accession of the European Community (EC) to the Madrid Protocol. Under the Madrid Protocol, certain intergovernmental organizations with a regional trademark registration office are able to accede to the treaty. This is the first time that the EC has signed up to a WIPO-administered treaty and is also the first accession by an intergovernmental organization, as a bloc, to a WIPO treaty. The EC is the 77th member of the Madrid system.
From October 1, 2004, the date on which EC membership to the Madrid Protocol takes effect, trademark owners from member countries of the Madrid Protocol have been able to designate the EC in their application for international trademark registration. If protection is not refused by the EC’s trademark office, the Office for Harmonization in the Internal Market (Trademarks and Designs) (OHIM), protection of the trademark will be effective in all 25 EC member states as if it had been applied for or registered directly with OHIM. Trademark owners will also be able to use a trademark application filed or registered at OHIM as the basis for an international application under the Madrid Protocol.
The accession of the EC to the Madrid Protocol is the third major development in the international trademark system in the past year. The first was the accession of the United States of America to the Madrid Protocol in November 2003 and the second relates to the addition, in April 2004, of Spanish as the third working language of the Madrid system.
For more information regarding this development, click here.
For more recent developments regarding the Madrid System, please visit the IPRIA International Developments WIPO webpage.
Copyright
1. Broadcasters' Rights
The Standing Committee on Copyright and Related Rights (SCCR) is working to update international norms governing the rights of broadcasting organisations. This is seen as particularly important given the growth in communications made via the Internet, cable and satellite television.
At the Committee's Ninth Session in Geneva on 23-27 June 2003, 77 member states and other stakeholders made progress in identifying the scope of multilateral treaty, which would, if adopted, update international regulations in the area of broadcasters’ rights, bringing them in line with the realities of the information age. Key issue on which the Committee made progress were:
- identifying beneficiaries - Many delegations thought that traditional broadcasting and cable-originated programs would benefit from protection in a new treaty, but that webcasting deserved further analysis. The possibility of protecting real-time streaming where broadcasting occurs simultaneously over the air and on the Internet by broadcasting organizations was also discussed.
- rights to be granted - economic rights proposed center on those already outlined in the Rome Convention, and the additional protection granted under the WIPO Internet treaties (WIPO Copyright Treaty (WCT) and the WIPO Phonograms and Performances Treaty (WPPT)), as well as some new rights. A majority of delegations considered that a number of issues required further discussion, namely the right of fixation, the right of reproduction of fixations, the right of distribution of fixations, the right of re-broadcasting, the right of simultaneous retransmission, the right of making available of fixed broadcasts, the right of deferred broadcasting the right of communication to the public. It was agreed that these issues would be re-visited at the next meeting of the SCCR in November 2003.
Proposals and communications on the Protection of the Rights of Broadcasting Organisations were made by Kenya (SCCR/9/3 Rev.); the USA (SCCR/9/4 Rev.); Egypt (SCCR/9/8 Rev.) and Canada (SCCR/9/10). The Secretariat also presented a Comparison of Proposals of WIPO Member States and the European Community and Its Member States on the issue (SCCR/9/5) and a Survey on Implementation Provisions of the WCT and WPPT (SCCR/9/6).
A communication by Japan on Issues Concerning 'Webcaster' in New WIPO Broadcasting Organisations Treaty (SCCR/9/9) urged caution on
webcasters' rights and pointed out that updating the scope and level of protection of broadcasting organizations? rights was an urgent matter. It noted, however, that the protection of webcasting activities was a newly emerging issue which merited more thorough consideration. Many developing countries endorsed this position, recognizing that the Internet has evolved into an important channel for distributing content that is protected by copyright or related rights through various free or subscription-based
services.
The Committee's Report (SCCR/9/11) from the Ninth Session is also available.
At the Tenth Session of the SCCR, held in Geneva from November 3-5, 2003, delegates made progress in talks to update international standards on the protection of broadcasting organisations, bringing them in line with the realities of the information age. They agreed that a consolidated text of treaty proposals prepared on the basis of proposals for member states would be discussed at the SCCR's June 2004 meeting. The text would be prepared by the Chairman of the SCCR, Mr Jikka Liedes, in cooperation with the WIPO Secretariat. Delegates also agreed that the Committee would assess any progress made at that time and on that basis it would decide whether to recommend to the WIPO General Assembly that a diplomatic conference be organised to conclude a treaty.
The Committee also took note of a number of studies prepared by the WIPO Secretariat including one on current developments in the field of digital rights management and the WIPO Guide on Surveying the Economic Contribution of the Copyright-Based Industries.
In the Eleventh Session of the SCCR, held in Geneva from June 7-9, 2004, WIPO member states made significant progress towards updating international intellectual property standards for broadcasting in the information age. The SCCR recommended that the WIPO General Assembly, the Organization’s top decision-making body, consider convening a diplomatic conference on the protection of broadcasting organizations. A diplomatic conference is the final step in developing a new international treaty. Endorsement of the SCCR recommendation by the General Assembly at its September 2004 session would be a significant step forward in this process.
Updating the IP rights of broadcasters, currently provided by the 1961 Rome Convention on the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, began in earnest in 1997. A growing signal piracy problem in many parts of the world, including piracy of digitized pre-broadcast signals, has made this need more acute.
Differences remain on issues such as the scope of a new treaty and its beneficiaries, namely whether only traditional broadcasters should be protected or whether protection should also extend to cablecasters and webcasters, entities that transmit directly over the Internet. Different views were also expressed on the scope of rights to be granted. Some delegations supported limiting protection to rights necessary to fight signal piracy, to avoid overlap with content-based rights held by authors, performers or producers. Views also differed on the question of the term of protection of any new rights.
Documents from this meeting can be accessed here.
At the Twelfth Session of the SCCR, which took place from November 17 to 19, 2004, member states advanced towards development of a treaty to update intellectual property standards for broadcasters in the digital age. Delegates made substantial progress in narrowing differences on key issues contained in a Revised Consolidated Text of treaty proposals, and member states called for accelerated progress towards conclusion of the Treaty.
Updating the IP rights of broadcasters, currently provided by the 1961 Rome Convention on the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, began at WIPO in 1997. A growing signal piracy problem in many parts of the world, including piracy of digitized pre-broadcast signals, has made this need more acute.
In a move applauded by consumer and user groups, the SCCR agreed to place on the agenda of the next session an item proposed by Chile concerning exceptions and limitations to rights for the purposes of education, libraries and disabled persons.
To access documents related to this session, click here.
For summaries of the latest sessions of the SCCR regarding Broadcasters' Rights, please visit the IPRIA International Developments WIPO webpage.
2. Protection of Databases
The Standing Committee on Copyright and Related Rights is also endeavouring to harmonise rules about database protection. High on the Standing Committee's agenda is the issue of 'non-original' databases. Non-original databases are collections of data such as phone directories, which are not original enough to warrant copyright protection. Arguably, however, these databases should be protected because their compilation requires the investment of considerable time and money. This issue received some attention at the Fifth Session of the Standing Committee in May 2001, but discussion was largely deferred.
At its Seventh Session from May 13 to 17, 2002, the Standing Committee considered five studies of the economic and social impact of database protection on developing countries. These studies were prepared by experts from the University of California, American University in Cairo, Copenhagen Business School, National Association of Software and Service Companies India, and Beijing University.
At the Standing Committee's Ninth Session from June 23 to 27, 2003 Kenya presented a proposal regarding Protection of Non-Original Databases (SCCR/9/2). However, the Committee decided, in view of the limited developments that had taken place on the subject, to next take the matter up only at its meeting in the first half of 2004.
For summaries of the latest sessions of the SCCR regarding protection of databases, please visit the IPRIA International Developments WIPO webpage.
3. WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty
These treaties were adopted at the Diplomatic Conference in 1996 and endeavour to make copyright law compatible with the digital era. The WIPO Copyright Treaty entered into force on March 6, 2002 and has been ratified by 39 member states (see Signing and Ratification Status). The WIPO Performances and Phonograms Treaty entered into force on May 20, 2002 and has been ratified by 39 member states (see Signing and Ratification Status). WIPO continues to promote adherence to these two treaties.
At the First (1st Extraordinary) Session of the WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty Assemblies in Geneva from 23 September to 1 October 2002, the Secretariat presented a document (WCT/A/1/1, WPPT/A/1/1) containing information and proposals on procedural questions and the future work relative to the inaugural sessions of the Assemblies. Future work will be divided into two main areas: (i) promoting further ratifications and accessions to the Treaties; and (ii) working towards effective implementation of the Treaties.
Audiovisual Performances
One gap in the WIPO Performances and Phonograms Treaty concerns the rights of performers in respect of their audiovisual performances. WIPO is working towards a new treaty to supplement the Performances and Phonograms Treaty in this respect. A Diplomatic Conference on this issue was held in December 2000, and provisional agreement was reached on 19 out of 20 provisions concerning national treatment, moral rights and economic rights for performers. However, no agreement could be reached on the right of transfer, or how performers' rights are acquired by producers. Consequently, a new instrument was not adopted. This issue is still part of WIPO's Revised Draft Program and Budget for 2002-2003 (WO/PBC/4/2), however it was not mentioned at the most recent meeting of the Standing Committee on Copyright and Related Rights.
For summaries of the latest sessions of the SCCR regarding audiovisual performances, please visit the IPRIA International Developments WIPO webpage.
Domain Names
WIPO's progress in curbing cybersquatting
In 2004, WIPO continued its efforts to combat the abusive registration of trademarks as domain names. It received 1,179 cases, a 6.6% increase, over the number received in the previous year. The UDRP’s popularity stems from its cost-effectiveness, the predictability of the process and swift enforcement of the results. Frequent users of the UDRP include the entertainment industry, pharmaceutical companies, IT firms and a significant number of small-to-medium-sized businesses who favor the UDRP over traditional litigation considering it to be a far quicker and cheaper way of protecting their trademark rights against cybersquatting.
Many UDRP decisions involve high-value brands that fall prey to cybersquatters; cases handled by the WIPO Center have involved most of the 100 largest international brands by value. Many well-known individuals, including Madonna, Julia Roberts, Eminem, Pamela Anderson, JK Rowling, Michael Crichton and Ronaldinho have also used the Center’s services.
Second WIPO Internet Domain Name Process
In July 2000, WIPO commenced its Second Internet Domain Name Process. This followed the success of the First Internet Domain Name Process, which focused on the problems caused by conflicts between domain names and trade marks (or 'cyber squatting') and resulted in the implementation of an arbitration system for resolving domain name disputes and a system of best practices for domain name registrars to avoid disputes arising.
The Second Domain Name Process addresses a number of issues that were identified in the First WIPO Process, but that were considered outside its scope. This issues concerns the bad faith, abusive, misleading or unfair use of:
- personal names
- International Nonproprietary Names (INNs) for Pharmaceutical Substances
- names of international intergovernmental organisations
- geographical indications, indications of source or geographical terms
- tradenames
The Second Domain Name Process held several rounds of consultations, resulting in the publication of a final report in September 2001. WIPO member states decided to subject the report to scrutiny by two special sessions of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT). The First Special Session was held in December 2001, while the Second Special Session of the SCT was held in May 2002. The SCT has continued discussion on a number of issues relating to the Second Process in its further sessions up to the present.
The Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications
The Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications met in Geneva from 21-24 May 2002 and reviewed whether currently existing procedures to protect trademarks against abusive domain name registrations should be expanded in the future to cover other types of identifiers, such as names of intergovernmental organisations, geographical indications, country names and trade names. The session focused largely on which of these identifiers warranted protection and how much protection should be instituted. The Standing Committee reached the following conclusions:
- International non-proprietary names of pharmaceutical substances (INNs): many delegates favoured protection of INNs against their registration as domain names to protect the integrity of the INN system. It was agreed that WIPO should, in cooperation with the World Health Organisation, continue to monitor the situation and, if necessary, bring to the attention of WIPO member states any material change in the situation;
- Trade Names: discussions won whether to modify the Uniform Dispute Resolution Policy (UDRP) to accommodate trade names were inconclusive. One group of countries wished to treat trade names in the same manner as trademarks. Other countries felt that there was no internationally accepted legal basis on which to underpin the extension of the UDRP to trade names. It was decided that WIPO member states should continue to monitor the situation.
- Personal Names
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