Researching International Intellectual Property
Law
by
John C. Strzynski
This article was updated as a Product Evaluation for Professor Jon Cavicchi's IP Research Tools class, Spring 1997, by Peter Eissmann, April 24, 1997.
1. Treaty research is a three step process. The first step is to define the terms:
- Foreign Law: the study of foreign (i.e. not U.S.) legal institutions.
- Comparative Law: legal ideas or trends in one area are compared with those of another area.
- International Law: the system of law which governs the relations between States.
2. The second step is to determine whether you are looking for a treaty, an executive agreement, or implementing legislation:
- Treaties: go to the U.S. Senate.
- Self-executing treaties: by their terms they do not need any further action to be operative.
- Non self-executing treaties: require Congressional action to be operative.
- Note: U.S. Courts are not bound by non self-executing treaties; Courts may decide whether a treaty is self-executing.
- Executive Agreements: Congressional action is not necessarily involved, but some do require Congressional action to be operative (e.g. GATT).
- Implementing legislation: follows the ordinary route of any statute; located in vanilla statutory sources; use vanilla legislative tools.
3. The third step is to decide if you need the full text, a summary, or a bibliographic tool:
- Full text: harder to find in most libraries.
- Numerous treatises: summarize U.S. and foreign intellectual property law and indicate whether the country is a member.
- Bibliographic tools: indexes and abstracts which tell you the parties to agreements and lead you to the full text.
1. Intellectual property consists of two principle branches: (1) industrial property (patents and other rights in technological inventions, rights in trademarks, industrial rights, appellations of origin) and (2) copyrights and neighboring rights (in literary, musical and artistic works, in films and records, etc.). The term "intellectual property" is formally defined in the 1967 Stockholm Convention which established the World Intellectual Property Organization. Article 2 (viii) of the Convention provides that "intellectual Property" shall include the rights relating to:
- literary, artistic and scientific works;
- performances of performing artists, phonograms, and broadcasts;
- inventions in all fields of human endeavor;
- scientific discoveries;
- industrial designs;
- trademarks, service marks, and commercial names and designations;
- protection against unfair competition;
- and all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.
Protection of intellectual property is the subject of many international agreements. The need for comprehensive international agreements became apparent in the 19th century and resulted in the creation of the Paris and Berne Unions.The Paris Union was established by the Convention for the Protection of Industrial Property, signed in Paris on march 20, 1883. Originally signed by eleven countries; more than 100 countries are now parties to this convention. Its objectives were to secure legal protection for protection of industrial property and to encourage uniformity of law by superseding the system of bilateral treaties. Among the key principles adopted by this convention is the principle of "national treatment" which provides that member states shall accord to nationals of other member states the same advantages under their laws relating to the protection of industrial property as they accord their own nationals. The Paris Convention has been revised on seven occasions since its adoption and is now administered by the World Intellectual Property Organization (WIPO).
The Berne Union was established to confront the problem of international editorial and literary piracy in Europe and America in the 19th century. The Convention for the Protection of Literary and Artistic Works was signed at Berne on September 9, 1886. More than 80 countries are parties to this convention. One of the Convention's guiding principles is that member states must accord the same protection to the copyright of nationals of other member states as to their own. It also prescribes minimum standards of protection. For example, copyright protection generally continues throughout the author's life and for 50 years after. The Berne Convention has been revised seven times and is also administered by the World Intellectual Property Organization.
Since the creation of the Paris and Berne Unions in the 19th century, over thirty global treaty arrangements have entered into force, as well as a variety of regional treaty arrangements, governing different aspects of the intellectual property protection. The development of new technologies involving the semiconductor chip, computer software and biotechnology has led to the promulgation of such treaties as the Treaty on Intellectual Property in Respect of Integrated Circuits, signed at Washington on May 26, 1989, and the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, signed at Budapest on April 28, 1977.
Because of the increase in international trade in intellectual property over the past decade, it has become apparent that there is a compelling need for greater international cooperation. Protection of intellectual property rights is now the subject of much interest and debate on the world stage.
Several excellent works are available which enable a researcher to quickly locate the texts of treaties and the laws and regulations of individual countries pertaining to protection of copyright, patents, trademarks and other forms of intellectual property.
Copyright and Neighboring Rights Laws and Treaties. (Geneva: World Intellectual Property Organization, 1987-). A multi-volume looseleaf service containing the texts of national laws and treaties in the field of copyright. It is updated monthly. Future installments may be combined with a subscription to the monthly periodical "Copyright."Copyright Laws and Treaties of the World. United Nations Educational, Scientific and Cultural Organization (Washington, D.C.: BNA, 1956-). A looseleaf compilation of laws and regulations of more than 100 countries and major multilateral treaties relating to copyright protection.
Industrial Property Laws and Treaties. (Geneva: World Intellectual Property Organization, 1976-). A multi-volume looseleaf service containing the texts of treaties and national legislation of individual countries relating to the protection of patents, trademarks, and other forms of intellectual property. It is updated monthly. Future installments nay be combined with a subscription to the monthly periodical "Industrial Property."
International Treaties on Intellectual Property. Marshall Leafer (Washington, D.C. : BNA, 1990). A single volume monograph containing texts and introductory comments on the major treaties on copyrights, patents, trademarks and industrial property.
World Patent Laws and Practice. John Sinnott (Albany: Matthew Bender, 1974-). A looseleaf compilation of the texts of multilateral treaties and national legislation relating to patent protection.
To determine which countries are parties to the multilateral treaties governing intellectual property, the researcher can consult three key sources. The January issues of "Copyright" and "Industrial Property," monthly periodicals published by the World Intellectual Property Organization, contain status information regarding the treaties administered by WIPO as well as information on other regional arrangements."Copyright Bulletin," a quarterly publication by UNESCO publishes an annual review of states party to the treaties on intellectual property adopted under the auspices of UNESCO in its first issue for each year. In addition to the status information, it contains notes regarding the declarations and reservations of the parties.
Texts of some of the major treaties on intellectual property protection may be obtained by accessing the international law libraries on LEXIS and WESTLAW. The file on LEXIS is called Basic Documents of International Economic Law (BDIEL); on WESTLAW, it is called International Economic Law Documents (IEL). These files are the result of a Project of the American Society of International Law and contain commentaries written by experts in the field in addition to the texts of the treaties.
Digest of Commercial Laws of the World: Patents and Trademarks. National Association of Credit Management (Dobbs Ferry, N.Y. : Oceana, 1975). Contains summaries of the laws on patents and trademarks on more than 80 countries.Patents Throughout the World. 4th Edition. Alan Jacobs (New York: Trade Activities, 1989-). A looseleaf service containing summaries of patent laws of over 70 countries.
Trademarks Throughout the World. 4th Edition. Alan Jacobs (New York: Trade Activities, 1987-). A looseleaf service containing summaries of trademark laws of over 100 countries.
Copyright (Geneva: WIPO, Monthly).
Copyright Bulletin (Paris: UNESCO, Quarterly).
European Intellectual Property Review (London: ESC Publishing, Monthly)
IIC: International Review of Industrial Property and Copyright Law (Munich: Max Planck Institute for Foreign, and International Patent, Copyright and Competition Law, Quarterly).
Industrial Property (Geneva: WIPO, Monthly)
Intellectual Property in Asia and the Pacific (Geneva: WIPO, Quarterly)
Intellectual Property Journal (Agincourt, Ontario: Carswell, 3 issues per year)
Journal of the Copyright Society of the USA (New York: The Society, Bimonthly)
World Intellectual Property Report (London: BNA International, Monthly). An excellent current awareness service. Reports on developments in international organizations as well as legislative and judicial developments in various countries. Contains comment and analysis on selected topics and periodically reproduces selected texts of treaties, national laws and regulations.
Berne Convention for the Protection of Literary and Artistic Works, 1886 - 1986. Sam Ricketson. (Kluwer Law and Taxation, 1987).
Boorstyn on Copyright, Second Edition. Neil Boorstyn, Edited by Dvora Parker. (New York: Clark Boardman Callaghan, 1994-). Looseleaf.
Copyright Problems of Satellite and Cable Television in Europe. Marie H. Pichler (London: Graham and Trotman, 1987).
International Copyright Law and Practice. Melville B. Nimmer and Paul E. Geller, editors. (New York: Matthew Bender, 1988-). Looseleaf.
Nimmer on Copyright. David Nimmer. (New York: Matthew Bender, 1978-). Looseleaf.
Background Reading Material on Intellectual Property. (Geneva: WIPO, 1988) Excellent introduction to the system of international protection of intellectual property. Reviews the role of WIPO, the administration of intellectual property protection and new developments.GATT or WIPO: New Ways in the Protection of Intellectual Property: Symposium at Ringberg Castle, July 13-16, 1988. Karl-Friedrich Beier and Gerhard Schricker (Cambridge: VCH, 1989).
Guide to International Legal Research. The George Washington Journal of International Law and Economics. (Butterworth Legal Publishers, 1989).
Intellectual Property Rights in Biotechnology Worldwide. Stephen A. Bent. (Stockton Press, 1987).
Intellectual Property World Desk Reference. Thomas M. S. Hemnes, General Editor. (Boston: Kluwer Law International, 1992). Looseleaf.
International Intellectual Property, The European Community and Eastern Europe. Michael A. Epstein, et al. (Prentice Hall Law & Business, 1992).
European Patents Handbook. (New York: Matthew Bender, 1978) Looseleaf.International Patent Litigation: A Country-by-Country Analysis. Michael Miller. (Washington, D.C. , BNA, 1983-). Looseleaf.
Manual for the Handling of Applications for Patents, Designs and Trademarks Throughout the World. (Utrecht, The Netherlands: Manual Industrial Property BV, 1927-). Looseleaf.
Patent Information and Documentation in Western Europe: An Inventory of Services Available to the Public. 3rd Edition (Munich: K.G. Saur, 1988).
World Trademark Law and Practice. 2nd Edition. Ethan Horwitz. (New York: Matthew Bender, 1985-). Looseleaf.Trademark Protection and Practice. Jerome Gilson and Jeffrey M. Samuels. (New York: Matthew Bender, 1996). Looseleaf.
Worldwide Trade Secrets Law. Terrence F, MacLaren, Editor. (New York: Clark Boardman Callaghan, 1993). Looseleaf.
The World Intellectual Property Organization is a specialized agency of the United Nations. More than 120 nations are members. WIPO is responsible for promoting the protection of intellectual property; administers various international treaties; operates services for the registration of trademarks an appellations of origin, the deposit of industrial designs; and serves as a forum for international discussion.WIPO publishes a wide range of literature. Its publications catalog list 12 categories:
1. General Information About WIPO and Its Activities (informational brochures)
2. Periodicals
- Industrial Property
- PCT Gazette: Gazette of International Patent Applications
- International Designs Bulletin
3. Texts of Treaties and Conventions
4. Records of Diplomatic Conferences contains the original texts of the most important documents issued for each conference) e.g. Records of the Diplomatic Conference for the Conclusion of a Treaty on the International Recording of Scientific Discoveries.
5. International Classifications (e.g. International Patent Classification)
6. Texts of Laws and Treaties, Collections
- Copyright and Neighboring Rights Laws and Treaties
- Industrial Property Laws and Treaties
7. Commentaries, Guides and Studies (e.g. Guide to the Application of the Paris Convention for the Protection of Industrial Property)
8. Glossaries
- Industrial Property Glossary
- WIPO Glossary of Terms of the Law of Copyright and Neighboring Rights
9. Model laws (e.g. Model Law Concerning the Protection of Performers, Producers of Phonograms and Broadcasting Organizations)
10. Papers of Courses and Seminars for Developing Countries and Other Symposia (e.g. WIPO Worldwide Forum on the Piracy of Broadcasts and of the Printed Word)
11. Statistics
12. Directories, Surveys, Awards
A Catalogue of Publications may be obtained from: World Intellectual Property Organization, Sales and Distribution Section, CH-1211 Geneva 20, Switzerland. Telephone: (41) (22) 730-9111.
The United Nations Educational, Scientific and Cultural Organization is another specialized agency of the UN which plays an important role in the protection of intellectual property. It administers the Universal Copyright Convention which was adopted at Geneva in 1952. UNESCO's Intergovernmental Copyright Committee works with WIPO and other organizations regarding the effect of new technologies on copyright and issues concerning developing countries.UNESCO's main publications are the Copyright Bulletin and Copyright Laws and Treaties of the World. Also available are: international conventions and recommendations; records of diplomatic conferences; model laws; and model contracts (e.g. Licensing of Motion-Picture Rights).
UNESCO publications in the field of copyright are listed in the issues of the Copyright bulletin. A publications catalog may be obtained from: UNESCO Press, Sales Division, 7 Place de Fontenoy, 75700 Paris , France.
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