Protocol to Amend the Paris Convention

Protocol to Amend the Paris Convention
Name	Protocol to Amend the Paris Convention
Date signed	1984–1989
Location signed	Paris
Parties	member states of the International Union for the Protection of Industrial Property
Condition effective	ratification by a specified number of member states of the Paris Convention

Protocol to Amend the Paris Convention

The Protocol to Amend the Paris Convention is an international agreement that revised the Paris Convention on industrial property. It was negotiated under the auspices of the World Intellectual Property Organization and involved member states such as France, United Kingdom, United States, Japan, and Germany. The Protocol sought to modernize provisions affecting patents, trademarks, industrial designs, and procedural rules for national treatment and priority rights.

Background and Purpose

The Protocol emerged from discussions among delegates from WIPO Conference of the Representatives of the Contracting Parties, representatives of the European Economic Community, the OECD, and national delegations including Canada, Australia, Italy, and Spain. It responded to technological changes exemplified by developments in semiconductor technology and the expansion of international trade overseen by the GATT and later the WTO. Prominent negotiators included officials from the United States Patent and Trademark Office, the European Patent Office, and the Japanese Patent Office.

Negotiation and Adoption

Negotiations took place in a series of WIPO meetings, with input from regional groups such as the OAPI and the OAPI member states. Delegations from Brazil, India, China, South Africa, and Mexico participated alongside developed-country representatives. Key forums included sessions held in Geneva and consultations with legal scholars from institutions like Harvard Law School, University of Cambridge, and University of Tokyo. The Protocol was adopted by consensus at a diplomatic conference attended by delegations from the United Nations system and non-governmental observers from industry associations such as the International Chamber of Commerce.

Key Amendments and Provisions

The Protocol amended multiple articles of the Paris Convention, addressing provisions related to priority rights, national treatment obligations, and the protection of industrial designs and trade names. It clarified procedures for filing and documentation with offices such as the European Union Intellectual Property Office and emphasized cooperation with bodies like the Patent Cooperation Treaty administration. The text included transitional measures affecting signatory states including Belgium, Netherlands, Sweden, and Norway and provisions for dispute avoidance drawing on precedents from the International Court of Justice and arbitral practice under the Permanent Court of Arbitration.

Ratification and Entry into Force

Ratification was undertaken by a mix of states including Argentina, Chile, Portugal, Greece, and Ireland, and by regional entities represented in WIPO. Entry into force required a threshold of ratifications, which was achieved after accessions by states such as Poland, Czech Republic, Hungary, and Slovakia following political changes in Eastern Europe in the late 20th century. The depositary functions were performed by WIPO, and instruments of accession were lodged in line with procedures familiar to parties to treaties like the Berne Convention for the Protection of Literary and Artistic Works.

Implementation and Impact

Implementation involved adjustments to national statutes in jurisdictions including United States, United Kingdom, France, Japan, Germany, and emerging economies such as Turkey and Indonesia. National offices—the United States Patent and Trademark Office, Japan Patent Office, and the China National Intellectual Property Administration—revised forms and practices to reflect protocol obligations. The Protocol influenced later instruments including negotiations in the TRIPS Agreement under the WTO and harmonization efforts led by the European Patent Convention and the Hague Agreement Concerning the International Registration of Industrial Designs.

Controversies and Legal Challenges

The Protocol provoked debate among stakeholders, including industry groups like the International Federation of Inventors' Associations and civil society organizations modeled on Electronic Frontier Foundation-type advocacy. Some parties contested aspects of interpretation before national courts in United States federal courts, the Cour de cassation, and administrative tribunals in Japan. Litigation referenced comparative jurisprudence from decisions of the European Court of Justice and constitutional courts in Germany and Italy, and raised questions relating to compatibility with other instruments such as the TRIPS Agreement and bilateral free trade agreements negotiated by states like Canada and Mexico.

Category:Intellectual property treaties