WIPO

Brazil and the Madrid Protocol: What You Should Know

By Vivien Racy. Lawyer and Client Relationship Manager.

As soon as Brazil announced its intentions of joining the Madrid Protocol many questions arise.  What would be the implication for Trademarks applicants and representatives?

One question and maybe the most important at this moment and which it is not yet definitely solved, concerns the obligation of a local representative, meaning a local registered lawyer, for the application. Despite the contradiction between the regulation of the Protocol to which Brazil is joining and the Brazilian Intellectual Property Law, this one added to the lobby of the Brazilian Bar Association and Intellectual Property Professionals, the matter is still to be decided.

Facing this impasse, it becomes vital to expedite and precise the Trademarks search before the application. Currently, the search through the system of the World Intellectual Property Organization (WIPO) is not accurate with respect to the Brazilian database and an effective and detailed search can only be carried out by qualified professionals in Brazil with complete access to the national database and information.

Once an exact search has been conducted it will be possible to guarantee the success of a new Trademark registration avoiding a costly and time-consuming subsequent procedure of …

International Registrations and Provisional Refusals

By Mariano Tabanera, Senior Trademark Lawyer

Through the Madrid Protocol any national from a signatory country can file a trademark application through the World IP Office designating one or various other signatory countries, obtaining the registration of their mark in several countries with just one application. This saves time and money for the applicant.

In Latin America, Brazil, Colombia, Cuba and Mexico are signatories of the Madrid Protocol. Brazil will start implementing the Protocol in October 2019, and it will be possible to designate this country through WIPO.

However, this poses some risks. Most times, the application is filed designating several countries without the recommended prior registrability and availability search reports, increasing the risks of provisional refusals from the national trademark offices.

When an applicant designates a country, a formal study of the mark is conducted, and sent to each of the national trademark offices designated, who also study the application. The national examination studies the intrinsic registrability of a mark, as well as the prior marks, in search for any absolute or relative grounds for rejection.

In case any are found, a provisional refusal is issued and served to the applicant through WIPO, and given a term to …

Overview of IP filings in Latin America over the Last Decade

By Marta Garcia

In December 2018, the World Intellectual Property Organization (WIPO) published its annual World Intellectual Property Indicators 2018 report, which shows IP statistics worldwide. Patent filings around the world reached 3.17 million, representing a 5.8% growth on 2016 figures, trademark filings totalled 12.39 million, up 26.8% on 2016, and industrial design filing activity exceeded 1.24 million. China recorded the highest application volume for each of these IP rights.

Regarding patent filings in the Latin American and the Caribbean region, WIPO´s study report a slight decrease (-0.1%) on the average annual growth from 2007 to 2017, with 57,600 patents filed in 2017.

On the other hand, trademark filings in the region showed a 3.3% increase on the average annual growth over the same period, reaching 715,900 applications in 2017. This average percentage annual growth was similar to that for North America (3.9%) and higher to the one in Europe (0.2%).

Industrial design filings during the 2007-2017 period in the Latin American and the Caribbean region also shows a slight average annual increase (0.6%), with 15,500 filings in 2017.

Below are IP data for the period 2007-2018 according to the statistics published by the corresponding PTOs of the top …

WIPO Technology Trends 2019: Artificial Intelligence

By José Santacroce, Head of Patent Department

The World Intellectual Property Organization (WIPO) published recently its first report in a new flagship series: WIPO Technology Trends, this first edition features Artificial Intelligence (AI) as the theme.

The main insights and trends in AI techniques and application fields, and patenting activity are summarized below.

AI-related inventions are booming, shifting from theory to commercial application:

Since AI emerged in the 1950s, innovators and researchers have filed nearly 340.000 patent applications and published over 1.6 million scientific publications.

Notably, AI-related patenting is growing rapidly: over half of the identified inventions have been published since 2013.

Some areas of AI are growing more quickly than others:

Machine learning is the dominant AI technique disclosed in patents and is included in more than one-third of all identified inventions (134.777 patent documents).

The machine learning techniques revolutionizing AI are deep learning and neural networks, and these are the fastest growing AI techniques in terms of patent filings.

Among AI functional applications, computer vision, which includes image recognition, is the most popular, followed by AI for robotics and control methods.

Many AI patents include inventions that can be applied in different industries:

AI-related patents not only …

Peru Joins Singapore Treaty

By Maria Sol Porro

In the framework of the 58th series of meetings of the Assembly of the Member States of the World Intellectual Property Organization (WIPO) held in Geneva (Switzerland), Peru adhered to the Singapore Treaty on the Law of Trademarks (STLT), through its Trademark Office (Indecopi).

The aforementioned treaty, adopted in 2006 and in force since 2009, which has 47 member countries currently, aims to harmonize and simplify the procedures for registering and managing brands of products and services, such as renewals, renaming holders, address changes, among others, because it does not require legalizations or certifications in the documents that must be submitted when initiating a procedure and are under its protection.

According to Indecopi, Peru’s entry into this treaty will favor the access of national entrepreneurs to trademark registrations and the maintenance or management of their rights over them, not only in Peru but in all countries that are part of the Treaty.

Likewise, the dispositions of this treaty will be applied to both traditional and non-traditional brands that are submitted in Peru (three-dimensional, sound, movement, among others), considering that Peruvian regulations allow all of them to be resgistered.

Finally, Indecopi indicated that with the adhesion to …

WIPO countries go GREEN

by Adrian Gonzalez

WIPO GREEN was launched on November 28, 2013 to provide an online marketplace connecting a wide variety of groups seeking shared innovation and environmentally friendly technologies to address climate change. WIPO GREEN is governed by the Advisory Board and the Secretariat under the rules laid out in the WIPO GREEN Charter.

The WIPO GREEN database and network matches owners of new technologies with individuals or companies seeking to commercialize, license or otherwise distribute a green technology. Its objective is to accelerate innovation and diffusion of green technologies and contribute to the efforts of developing countries in addressing climate change.

The WIPO GREEN database offers a broad listing of green technology products, services and intellectual property (IP) assets, and also allows individuals and companies to list green technology needs.

The database:

• offers green technology providers greater visibility for their products, services and IP assets (including inventions, patents, technologies and know-how) for sale or license, helping to attract partners and finance;
• advertises technological needs – including specific technologies and IP assets, funding, training and professional services;
• provides a listing of innovative green technologies, IP assets and experts that makes it a useful resource for investors, entrepreneurs and licensing managers

IP5 pilot project on collaborative search and examination under the PCT

By José Santacroce, Head of Patent Department

On the EPO online Official Journal dated May 2018, the IP5 pilot project on collaborative search and examination under the PCT was announced.

All relevant details about said pilot project, which will start on 1 July 2018, are indicated below:

I. Concept

1. Following the first two pilot projects on collaborative search and examination (CS&E) under the PCT, which were conducted by the European Patent Office (EPO), the Korean Intellectual Property Office (KIPO) and the United States Patent and Trademark Office (USPTO) in 2010 and 2011-2012 respectively, the EPO, the Japan Patent Office (JPO), KIPO, the State Intellectual Property Office of the People’s Republic of China (SIPO) and the USPTO (the IP5 offices) are set to operationally launch a third CS&E pilot project. The aim of this pilot project will be to further develop and test the CS&E concept amongst the IP5 offices and, in particular, to assess user interest in CS&E products and the expected efficiency gains for the offices.

2. The concept of CS&E under the PCT refers to the collaboration of examiners from different international authorities in different regions and with different working languages on one international application for the …