Most intellectual property (IP) practitioners come into contact with the World Intellectual Property Organisation (WIPO) via the patent, trade mark and design registration procedures which it administers under the Patent Co-operation Treaty and the Madrid and Hague Systems. Here the news this year has been good for WIPO, with the post crash recovery in international patent filings seen in 2010 ramping up yet further in 2011 and the level of trade mark registrations, via the Madrid system, returning to the levels last seen in 2008.

Harmonisation matters

However, a no less important aspect of WIPO’s work than administering these international registration procedures, albeit one where matters have been quiet as of late, is its role in promoting the international harmonisation of intellectual property laws.  Here WIPO has recently had little, at least in terms of substantive law, by way of successes to show since 1996, when the Copyright Treaty and the Phonograms and Performances Treaty updated the laws of copyright and related rights.  One symptom of this logjam has been the increasing importance in Bilateral Trade Agreements of chapters dedicated to intellectual property.  The USA has for long used such agreements to impose its approach to intellectual property protection on third countries, and the EU has now followed its lead.  This practice can have unfortunate results for the coherence of international intellectual property norms.

Anti-counterfeiting

Another symptom has been the multilateral negotiation, between a “coalition of the willing,” of the Anti-Counterfeiting Trade Agreement (ACTA), outside the framework of either WIPO, or the World Trade Organisation (WTO) as guardian of the Agreement on Trade Related Aspects of Intellectual Property (TRIPS).   The problems that ACTA is now running into, such as the animosity towards it in the European Parliament, are in large part a result of the mistrust in which it is held given its less than transparent origins – a criticism that cannot be levelled at the working practices of WIPO. 

Audiovisual performances

Things, however, are now moving WIPO’s way,  as it is now set to secure a further success in the area of copyright and related rights, namely as to audiovisual performances, where a diplomatic conference is planned this year and which has real prospect of securing a new treaty.  This would wrap up an unfinished aspect of the 1996 Phonograms and Performances Treaty, which addressed the rights of performers in their performances when fixed in sound recordings (ie “phonograms”)  but failed to address the wider issue of the rights of performers in recordings of their audiovisual performances, namely in film. Such a treaty, should it come to pass, will require little or no change in European laws, which already, as a result of the Rental, Lending and Related Rights Directive of 1992 (now replaced by a codifying Directive of 2006) mandate EU Member States to protect such creations, but it will increase protection in the USA and the rest of the world.  Most can agree, notwithstanding the current doubts as to the value of yet greater intellectual property protection in many areas, the fairness of ending the unequal treatment of different types of performer. 

US movement

Audiovisual performances are not the only area of harmonisation where WIPO is making progress.  One of the major changes to US patent law wrought by the American Invents Act of 2011 has been to move the USA to a “first to file” system like the rest of the world, in place of its longstanding “first to invent” system, although for cosmetic reasons it is called in the USA a “first inventor to file system”, which in fact accurately describes what we have in the rest of the world.  For many years the USA resisted such change, seeking to link it with a call for other countries to introduce a “grace period” along the lines that US law has for long provided, and under which an inventor’s own publication of the invention during the year before filing its patent application would not count as prior art as against that inventor’s own patent application.  The USA is now moving to a “first to file” system without any such linkage, which has had the effect that there is now a sense that negotiations within WIPO to harmonise various other aspects of substantive patent law, which have been becalmed for many years, are set to  move forward again.  

The future

Such developments augur well for the future of intellectual property. If WIPO, as the expert international body with the fullest and most balanced understanding of intellectual property, with its transparent working procedures, can move back to the centre stage of intellectual property norm setting, that can only be good for the international coherence of the intellectual property system.

Trevor Cook is a partner at London-based law firm Bird & Bird