Global and Foreign Regulation of Intellectual Property
The roots of the World Intellectual Property Organization go back to 1883. The need for
international protection of intellectual property became evident when foreign exhibitors refused to
attend the International Exhibition of Inventions in Vienna in 1873 because they were afraid their
ideas would be stolen and exploited commercially in other countries. 1883 marked the birth of the
Paris Convention for the Protection of Industrial Property, the first major
international treaty designed to help the people of one country obtain protection in other countries
for their intellectual creations in the form of industrial property rights, known as inventions (patents),
trademarks and industrial designs. The Paris Convention entered into force in 1884 with 14
In 1886, copyright entered the international arena with the Berne Convention for the
Protection of Literary and Artistic Works. The aim of this Convention was to help nationals of its
member States obtain international protection of their right to control, and receive payment for, the
use of their creative works such as novels, short stories, poems, plays; songs, operas, musicals,
sonatas; and drawings, paintings, sculptures, architectural works.
Like the Paris Convention, the Berne Convention set up an International Bureau to carry out
administrative tasks. In 1893, these two small bureaux united to form an international organization
called the United International Bureaux for the Protection of Intellectual Property (best known by its
French acronym BIRPI). Based in Berne, Switzerland, with a staff of seven, this small organization
was the predecessor of the World Intellectual Property Organization of today. As the importance of
intellectual property grew, the structure and form of the Organization changed as well. In 1960,
BIRPI moved from Berne to Geneva to be closer to the United Nations and other international
organizations in that city. A decade later, following the entry into force of the Convention
Establishing the World Intellectual Property Organization, BIRPI became WIPO, undergoing
structural and administrative reforms and acquiring a secretariat answerable to the member States.
In 1974, WIPO became a specialized agency of the United Nations system of organizations, with a
mandate to administer intellectual property matters recognized by the member States of the UN.
WIPO expanded its role and further demonstrated the importance of intellectual property rights in
the management of globalized trade in 1996 by entering into a cooperation agreement with the
World Trade Organization (WTO). In 1898, BIRPI administered only four international treaties.
Today its successor, WIPO, administers 23 treaties (three of those jointly with other international
organizations) and carries out a rich and varied program of work, through its member States and
secretariat. (TRIPS) Agreement on Trade Related Aspects of Intellectual Property
Rights, Including Trade in Counterfeit Goods
The agreement recognises that widely varying standards in the protection and enforcement of
intellectual property rights and the lack of a multilateral framework of principles, rules and
disciplines dealing with international trade in counterfeit goods have been a growing source of
tension in international economic relations. Rules and disciplines were needed to cope with these
tensions. To that end, the agreement addresses the applicability of basic GATT principles and
those of relevant international intellectual property agreements; the provision of adequate
intellectual property rights; the provision of effective enforcement measures for those rights;
multilateral dispute settlement; and transitional arrangements.
Part I of the agreement sets out general provisions and basic principles, notably a national
treatment commitment under which the nationals of other parties must be given treatment no less
favourable than that accorded to a party’s own nationals with regard to the protection of intellectual
property. It also contains a mostfavourednation clause, a novelty in an international intellectual
property agreement, under which any advantage a party gives to the nationals of another country
must be extended immediately and unconditionally to the nationals of all other parties, even if such
treatment is more favourable than that which it gives to its own nationals.
Part III of the agreement sets out the obligations of member governments to provide procedures
and remedies under their domestic law to ensure that intellectual property rights can be effectively
enforced, by foreign right holders as well as by their own nationals. Procedures should permit
effective action against infringement of intellectual property rights but should be fair and equitable,
not unnecessarily complicated or costly, and should not entail unreasonable timelimits or
unwarranted delays. They should allow for judicial review of final administrative decisions. There is
no obligation to put in place a judicial system distinct from that for the enforcement of laws in
general, nor to give priority to the enforcement of intellectual property rights in the allocation of
resources or staff.
The civil and administrative procedures and remedies spelled out in the text include provisions on
evidence of proof, injunctions, damages and other remedies which would include the right of
judicial authorities to order the disposal or destruction of infringing goods. Judicial authorities must
also have the authority to order prompt and effective provisional measures, in particular where any
delay is likely to cause irreparable harm to the right holder, or where evidence is likely to be
destroyed. Further provisions relate to measures to be taken at the border for the suspension by
customs authorities of release, into domestic circulation, of counterfeit and pirated goods. Finally,
parties should provide for criminal procedures and penalties at least in cases of wilful trademark
counterfeiting or copyright piracy on a commercial scale. Remedies should include imprisonment
and fines sufficient to act as a deterrent.
With respect to the implementation of the agreement, it envisages a oneyear transition period for
developed countries to bring their legislation and practices into conformity. Developing countries
and countries in the process of transformation from a centrallyplanned into a market economy
would have a fiveyear transition period, and leastdeveloped countries 11 years. Developing countries which do not at present provide product patent protection in an area of technology would
have up to 10 years to introduce such protection. However, in the case of pharmaceutical and
agricultural chemical products, they must accept the filing of patent applications from the beginning
of the transitional period. Though the patent need not be granted until the end of this period, the
novelty of the invention is preserved as of the date of filing the application. If authorization for the
marketing of the relevant pharmaceutical or agricultural chemical is obtained during the transitional
period, the developing country concerned must offer an exclusive marketing right for the product
for five years, or until a product patent is granted, whichever is shorter.
Subject to certain exceptions, the general rule is that the obligations in the agreement would apply
to existing intellectual property rights as well as to new ones.
Obtaining a Canadian patent does not protect your invention in another country. If you wish such
protection, you will have to apply for foreign patents. But no matter how you apply, you will have to
abide by the patent laws of that country. Bear in mind that these laws may differ from Canadian
In some countries, for example, you lose the right to a patent if your invention is disclosed before
the filing date. (Remember, in Canada and in the United States there is an exception. This is not
the case in most other countries.)
Many countries require that your patented invention be manufactured or otherwise worked in that
country within a certain period, usually three years. In some places you may have to allow some
other company or individual to manufacture your invention. (This is called granting a compulsory
Many countries, like Canada, belong to the Paris Convention for the Protection of
Industrial Property, a treaty that allows you to invoke what is called "convention priority." This
means that your filing date in one member country will be recognized by all the others provided you
file in those countries within a year of first filing. For example, if you filed in Canada on January 1,
2004, you could file up to one year later in most countries (January 1, 2005) and still be accorded
the same rights as if you had filed there in 2004.
Under the Paris Convention, you can file an application abroad, and then in Canada. The Patent
Office will recognize the earlier filing date as your convention date if you claim "convention priority"
within four months of the Canadian filing date. The Canadian filing date must be within 12 months
of the convention date. However, your application will be published 18 months after your
convention date, not your filing date in Canada.
Note that being granted a patent in one country may bar you from obtaining one in another if you
delay too long in filing for the second patent. That is, if your invention is patented and therefore
public in Sweden, it will not be considered "new" in Canada, and vice versa. You must file your
various applications all within one year in order to receive the benefits of "convention priority" in the
Under the current Act it is now possible to claim priority based on an earlier filed Canadian
application. Application for a foreign patent within Canada is made possible through a treaty called the Patent
Cooperation Treaty (PCT), administered by the World Intellectual Property Organization, in
Geneva. It provides a standardized international filing procedure, which is shared by our principal
trading partners, including the United States, Japan, and most of the European Community.
Under the PCT, you may file for a patent in as many as 123 member countries through a single
application filed in Canada. This procedure is simpler than filing separate applications and enables
you to defer costs. For example, instead of filing in the language of each country and paying, within
a year of first filing, all translation, filing and agent's fees, you can file in one language and have up
to 30 months to pay some of these fees. This gives you more time to raise capital, conduct market
When you file under the PCT, you will receive an international search report, which checks your
international application against other applications and patents, and an initial opinion on the
patentability of your invention. Local patent offices in the countries to which you apply reserve the
right to conduct their own examinations, but they often accept the international examination report.
This means you will receive a fairly reliable indication of whether it's worthwhile to seek multiple
patents in foreign countries before fees are due.
Your application for foreign patents filed under the PCT through the Patent Office must be in
English or French. You may also be required to provide for translation into the languages of the
designated countries if you choose to continue in those countries. Eight