INTERNATIONAL COOPERATION ININTELLECTUALPROPERTY
4.13 Inventor's Certificates
Primarily in socialist countries inventions may be protected by inventor's cer
tificates instead of patents. The applicant is usually free to choose between a patent and an inventor's certificate; however, in some countries, citizcns of the country may only obtain an invention certificate: inventors working in State enterpriscs who have received
PATENTS 111 assistance from their employers with respect to the making of the invention can usually only obtain inventor's certificates and not patents.
The requirements that an invention has to fulfil in order to qualify for an inventor's certificate are generally the same as for an invention for which a patent for invention is available. The difference between the two lies in the fact that whereas in the case of a patent for invention the beneficiary is the patentee, in the case of an inventor's certificate there are two beneficiaries: one is the State, the other is the inventor. The State has an exclusive right of exploitation of the invention; the inventor has a right to a fixed remun
eration which dcpends on the savings achieved by putting the invention to use, or on the success of the industrial application of the invention.
(Ibid., para. 28)
4.14 The Paris Convention on the Protection of lndustrial Property
In addition to the provisions of the Paris Conve.ntion which deal generally with the protection of industrial property (see Chapter 3), a number of the provisions of the Convention deal specifically with patents. These include provisions dealing with the independcnce of patents, inventor's rights, importation and compulsory licenses, grace period for the payment of maintenance fees, patents in international traffic and in rela
tion to international exhibitions.
4.14.1 Jndependence of patents
Article 4bis provides that patents for invention granted in member countries to nationals or residents of member countries must be treated as independent of patents for invention obtained for the same invention in other countries, including non-member countries.
This principle is to be understood in its broadest sense. lt means that the grant of a patent for invention in one country for a given invention does not oblige any other member country to grant a patent for invention for the same invention. Furthermore, the principle means that a patent for invention cannot be refused, invalidated or otherwise terminated in any member country on the ground that a patent for invention for the same invention has been refused or invalidated, or that it is no longer maintained or has terminated, in any other country. In this respect, the fate of a particular patent for invention in any given country has no influence whatsoever on the fate of a patent for the same invention in any of the other countries.
The underlying reason and main argument in favor of the principle of independ
ence of patents for invention is that the national laws and administrative practices are usually qui te different from country to country. A decision not to grant or to invalida te a patent for invention in a particular country on the basis of its law will frequently not have any bearing on the different legal situation in the other countries. lt would not be justified to make the owner Jose the patent for inventiQn in other countries on the ground that it or he lost a patent in a given country as a consequence of not having paid an annual fee in that country or as a consequence of the· patent's invalidation in that country on a
I
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ground which does not exist in the laws of the other countries. Moreover, a system where patents are dependent on foreign patents would not be in conformity with the national treatment rule.
Article 4bis(5) requires that a patent granted on an application which claimed the priority of one or more foreign applications must be given the same duration which it would have according to the national law if no priority had been claimed. In other words, it is not permitted to dcduct the priority period from the term of a patent invoking the priority of a first application. For instance, a provision in a national law starting the term of the patent for invention from the (foreign) priority date, and not from the filing date of the application in the country, would be in violation of this rule.
(International Bureau of WIPO, WIPO and International Cooperation in Relation to Patents, PS/KlJ86/
1, paras. 58-61]
, 4.14.2 Right of inventor to be mentioned
Article 4ter states that the inventor must have the right to be mentioned as such in the patent for invention.
National laws have implemented this provision in several ways. Sorne give the inventor only the right for civil action against the applicant or owner in order to obtain the inclusion of bis name in the patent for invention. Others-and that tendency seems to be increasing--enforce the naming of the inventor during the procedure for the grant of a patent for invention on an ex officia basis. In some countries, for instance the United States of America, it is even required that the applicant for a patent be the inventor himself.
(Ibid., paras. 62-63]
4.14.3 Importation and maintenance of patents
Article SA of the Convention deals with the extent to which the importation of articles covered by patents constitutes the working of a patent.
The provision states that importation by the patentee, into the country where the patent bas been granted, of articles covered by the patent and manufactured in any of the countries of the Union will not entait forfeiture of the patent. This provision is quite narrowly worded, and hence only applies when several conditions are met. Conse
quently, the countries of the Union have considerable leeway to legislate with respect to importation of patented goods under any of the circumstances which are different to those foreseen in this provision.
This Article applies to patentees_ which are entitled to benefit from the Paris Convention and who, having a patent in one of the countries of the Paris Union, import to that country goods (covered by the patent) which were manufactured in another country of the Union. In such a case, the patent granted in the country of importation may not be forfeited as a sanction for such importation.
In this context, the term "patentee" would also cover the representative of the patentee, or any person who effects the importation in the name of such patentee.
PATENTS 113 With respect to the goods that are imported, it suffices that they be manufactured in a country of the Union. The fact that the goods, having been manufactured in a country of the Union, are thereafter circulated through other countries and eventually imported from a country which is not a member of the Union, would not prevent this Article from being applicable.
(Ibid., paras. 65-68]
4.14.4 Failure to work and compulsory licenses
Compulsory licenses on the ground of failure to work or insufficient working are expressly dealt with by Article 5A.
The main argument for enforcing working of the invention in a particu]ar country is the consideration that, in ordcr to promote the industrialization of the country, patents for invention should not be used merely to block the working of the invention in the country or to monopolize importation of the patented article by the patent owner. They should rather be used to introduce the use of the new technology into the country.
Whether the patent owner can really be expected to do so, is first of ail an economic consideration and then also a question of time. Working in all countries is generally not economical. Moreover, it is generally recognized that immediate working in ail countries is impossible. Article SA, therefore, tries to strike a balance between these conflicting interests.
Compulsory Iicenses for failure to work or insufficient working of the invention may not be requested before a certain period of time of non-working or insufficient working bas elapsed. This time limit expires either four years from the date of filing of the patent application or three years from the date of the grant of the patent for inven
tion. The applicable time is the one which, in the individual case, expires last.
The time limit of three or four years is a minimum time limit. The patent owner must be given a longer time limit, if he can give lcgitimate reasons for his inaction; in other words, if the patent owner can produce evidence that legal, economic or technical obstacles prevent working, or working more intensively, the invention in the country. If that is proven, the request for a compulsory license must be rejected, at least for the time bcing. The time limit of three or four years is a minimum time li mit also in that sense that national Iaw can provîde for a longer time limit.
The compulsory license for non-working or insufficient working must be a non
exclusive license and can only be transferred together with the part of the enterprise benefitting from the compulsory license. The patent owner must retain the right to grant other non-exclusive licenses and to work the invention himself. Moreover, as the compul
sory license bas been granted to a particular enterprise on the basis .of its known capacities, it is bound to that enterprise and cannot be transferred separately from that enterprise. These limitations are intended to prevent rJ compulsory licensee from obtain
ing a stronger position on the market than is warranted by the purpose of the compulsory license, namely, to ensure sufficient working of the invention in the country.
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AU these special provisions for compulsory licenses in Article 5A(4) are only applicable to compulsory Iicenses for non-working or insufficient working. They are not applicable to the other types of compulsory licenses which the national law is free to provide for. The national laws are not prevented by the Paris Convention from providing for such compulsory licenses, and they are not subject to the restrictions providcd for in Article SA. This means, in particular, that compulsory licenses in the public interest can be granted without waiting for the expiration of the time limits providcd for compulsory Iicenses that relate to failure to work or insufficient working.
(Ibid., paras. 71-76, 79)
4.14.5 Grace period for the payment of maintenance f ees
Article 5bis providcs for a grace period for the paymcnt of maintenance fecs for industrial property rights and deals with the restoration of patents for invention in case of non-payment of fees.
In most countries the maintenance of certain industrial propcrty rights, mainly the rights in patents for invention and trademarks, is subjcct to the periodic payment of fces.
For patents, the maintenance fees must generally be paid annually, and in that case are also called annuities. Immediate Joss of the patent for invention in the event that one annuity is not paid at the due date would be too harsh a sanction. Therefore, the Paris Convention provides for a period of grace, during which the payment can still be made after the due date with the effect that the patent will be maintained. That period is six months, and is established as a minimum period so that countrics are free to accord a longer period.
The delayed payment of the annuity may be subjcctcd to the payment of a sur
charge. In that case, both the dclayed fee and the surcharge must be paid within the grace period. During the grace period, the patent for invention remains provisionally in force.
If the payment is not made during the grace period, the patent for invention will lapse retroactively, that is, as of the original due date of the annuity.
[Ibid .• paras. 80-82}
4.14.6 Patents in international traffic
Another common rule of substantive importance, containing a limitation of the rights of the patent owner under special circumstances, is contained in Article Ster. lt deals with the transit of devices on ships, aircraft or land vchicles through a member country in which such device is patented.
The effect of this provision is essentially the following. Where ships, aircraft or land vehicles of other member countries enter temporarily or accidcntally a given member country and have on board devices patented in that country, the owncr of the means of transportation is not required to obtain prior approval or a license from the patent owner. Temporary or accidentai entry of the patented device into the country in such cases constitutes no infringcment of the patent for invention.
PATENTS 115 The device on board the ship, aircraft or vehicle must be in the body, in the machinery, tackle, gear or other accessories of the conveyance, and must be used exclu
sively for operational needs.
The provision covers only the use of patented devices. lt does not allow the making of patented devices on board a means of transportation, nor the sale to the public of patented products or of products obtained under a patented process.
IJbid., paras. 83-86)
4.15 The Patent Cooperation Treaty (PCT)
The Patent Cooperation Treaty is a multilateral treaty that was established at Washington, in 1970, in ordcr to simplify and make more economical the work connected with the obtaining of protection for inventions. It is a special agreement under the Paris Convention.
ln the situation which existed when the PCT was established, a patent applicant filcd a separate patent application for each country where he desired protection, even when, in each of them, protection was dcsired for the same invention. These patent applications had to be dealt with separately by the Patent Offices of each country where they were filed. ln many cases-even in the industrialized countries-the patent applica
tion was only examined from the viewpoint of compliance with formalities since the Patent Offices had not been established with full facilities and the staff necessary to carry out search and substantive examination. In other countries, the search and examination were repeated scparately in each country.
With the PCT, it has become possible to file a single international application which has the same effect as filing separate applications with the Patent Office of each of the countries party to the PCT that are designated in the application. The application is usually filed with the applicanfs national Office which, for PCT purposes, is called the receiving Office. The receiving Office checks the application for compliance with formalities.
Before this application is considered by the Offices of the countries designated in the i,!.pplication ("•the designated Offices"), it is subjected to an "international search"
which is carried out by an International Searching Authority which has all the facilities of documentation and technically qualified staff which enable it to carry out a high quality search of the relevant prior art. The results of this search are set out in an international search report which is made available both to the applicant and, ultimately, to the dcsignated Offices.
Since another objective of the PCT is to facilitate the acquisition of technical information relating to patent applications, the international application is published by WIPO 18 months after the priority date of the application. ln other words, publication is effected early.
· ln addition to the international search, an "international preliminary examination"
-that is a substantive examination which is preliminary since it is not binding on the national Offices-is provided for under the PCT. As in the case of international search,
116 BACKGROUND READING MATERIAL ON INTELLECTUAL PROPERTY
the international preliminary examination is carried out by a highly qualified Office which has been specially appointed as a PCT International Preliminary Examining Authority. The results again are summarized in a report.
The stage of international P.reliminary examination is optional for the applicant and for the Contracting States. In other words, white the PCT obliges every applicant who files an international application to have the application searched, it does not oblige him to undergo international preliminary examination in respect of it. As far as the PCT Contracting States are concerned, it is also optional in the sense that those States can choose not to participate in those provisions of the treaty providing for international preliminary examination. Most have, however, accepted the said provisions.
Once the international application has been searched and published, it is sent to the Offices of the countries where protection was desired (the dcsignated Offices), together with the international search report. If international preliminary examination bas been carried out, those Offices also reccive the international preliminary examina
tion report. Those Offices then proceed either to grant or to refuse a patent in respect of the application.
The PCT assists the applicant in several ways. First of all, questions as to for
malities are generally resolved in a single application filed with an Office which is conve
nient to him since usually this is his own national Office. The international search report enables the applicant to have a clear picture whcther it is likcly that he will be able to obtain a patent and, therefore, whether it is worthwhile continuing with his application in the various countries which he has named in it. The international preliminary examina- . tion report gives the applicant an even better picture. Also, since amendmcnts may be
required during the preliminary examination, the scope of the protection which is sought better reflects the invention made by the applicant.
For the Patent Offices, the international search report, -which cites all of the relev
ant documents necessary for the substantive examination of the application and the decision whether or not to grant a patent, is a very valuable aid. An international preliminary examination report puts the Office in an even better position to carry out its work since, as we have noted, it is likely that the invention for which protection should be given will probably be narrowed down to its proper scope, and the international prelimi
nary examination report will contain an opinion bcaring on the patentability of the invention claimed in the application.
The PCT has great potential usefulness for the developing countries. We have already noticed that some of the industrialized countries have not put together the , resources to carry out search and examination of national applications. The developing countries more so are often in the position that other demands on their resources have higher priority. Moreover, they frequently do not have access to sufficient documenta
tion to enable an adequate search to be carried out.
Thus, the international search report is ideally suited to meeting a need which is felt even more in the developing countries than in the industrialized countries. The PCT
PATENTS 117 also bas provision for what is called an international-type search which is carried out by the International Searching Authorities on national applications. By national applica
tions, is meant applications which have not been filed via the PCT.
The developing countries which join the PCT thus have the possibility of providing in their laws that national applications which do not reach them via the PCT be accom
panied by an international-type search report. The developing countries could also include a similar requirement for an international-type preliminary examination report although there is no specific provision for international-type preliminary examination reports in the PCT.
These two possibilities greatly enhance the capability of the developing countries which join the PCT to have more efficient patent systems. Even if the search or examina
tion reports were not to be used for examination purposes by their Patent Offices, their industries would have a much improved basis on which to judge the patent rights of their foreign competitors.
Moreover, one should not overlook the fact that the PCT also off ers to the indus
tries in the developing countries a very advantageous system for seeking protection abroad for their own inventions.
Finally, it should be mentioned that since the PCT system is, in principle, self
supporting thanks to the fees paid by applicants, accession to the PCT does not entait financial obligations for the acceding State.
(Ibid., paras. 114-115, 117-131]