Brazil and the Madrid Protocol: What You Should Know

By Vivien Racy. Lawyer and Client Relationship Manager.

Answers to Brazil and Madrid Protocol

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?

¿Local representative?

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. 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. Thus avoiding a costly and time-consuming subsequent procedure of oppositions.

To know more about Trademark Searches in Brazil regarding the Madrid Protocol please contact us.

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 reply to it, including whichever argumentation, agreements and limitations the applicant may deem sufficient to overcome the objection.

Unfortunately, due to a recent amendment to WIPO regulations, any limitation or clarification to the applications must be made through WIPO, and not directly before the national Offices. As a result, the reply to the objection would require a higher expense, both in time and money.

In light of an amendment to the Mexican Trademarks Law, which came into effect last August 2018, coexistence agreements are now binding for the Examiners, as long as the trademarks are not identical. If the owners of the marks consider that there is no risk of confusion in case of coexistence, the IP Office is compelled to admit said coexistence.

Despite the fact that registering trademarks through the Madrid Protocol is indeed a simpler procedure, the implications and possible consequences of this must be taken in consideration, and the necessary preventive measures (availability searches, possible negative connotations of words or designs, negotiations, agreements, limitations in scopes of protection) should be undertaken.

Lastly, it must be mentioned that, despite the simpler application procedure, Madrid Protocol designations tend to be longer procedures, as there is an international and a national stage, whereas national applications just have the latter.

All in all, designations of international registrations through Madrid Protocol are really useful, and they do simplify the registration procedure for applicants that want to protect their brands worldwide, but the national consequences must be taken in consideration. The professional advice of an IP expert in the region is always recommended in order to avoid conflict and dilations.

Source: www.inpi.gov.br/

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 five largest Latin American economies: Brazil, Mexico, Argentina, Colombia and Chile.

Patents

From 2007 to 2018, patent filings in Brazil have increased 15% overall. However, the number of applications has fallen for five consecutive years, with the decline in non-resident applications being the main driver for the decrease.  From 2017 to 2018, there was a slight reduction from 28,667 to 27,551 (-3.9%) in patent filings, although there was a large increase (77.5%) in patent grants, rising from 6,250 in 2017 to 11,090 in 2018. Additionally, in 2018 the patent backlog was reduced by 7.4% with respect to 2017.

In 2018, applications from the U.S accounted for 30% of the total patent filings, followed by Brazil (20%), Germany (8%) and Japan (7%).

Overview of IP filings in Latin America over the Last Decade

Mexico has experienced a slight overall decrease (1%) in patent filings from 2007 to 2018, with 16,424 applications filed in 2018. Regarding patent grants, 8,921 applications were granted in 2018, 5% more than in 2017.

Applicants from the U.S. accounted for 44% of the total applications in 2018, followed by Mexico, Germany and Japan (7% each).

Patent filings in Argentina have also experienced a decrease over the last years, with 3,443 applications filed in 2017. Interestingly, during the 2016-2017 period, there was a 56% decrease in resident applications, whereas non-resident applications slightly increased (4%). Regarding patent grants, these have almost doubled in the period 2008-2017, with 2,302 patents granted in 2017. No data are yet available for 2018.

Overview of IP filings in Latin America over the Last Decade

Except for a marked decrease during 2009 and 2010, patent filings in Chile have been rather steady, with a slight 7% increase from 2017 (2,892) to 2018 (3,100).

30% of the applications in 2018 were from U.S. applicants, 13% from Chile, 9% from Switzerland and 8% from Germany.

Colombia also recorded a 7% increase in patent applications from 2017 (2,049) to 2018 (2,372), and a remarkable 16% growth for the period 2007-2017. In 2017, 32% of the filings were from U.S. applicants and 25% from Colombian applicants, followed by Switzerland, Germany and France in number of applications. No data are yet available for 2018.

Trademarks

Regarding trademark applications, both Brazil and Mexico have seen an overwhelming growth during 2007-2018: applications in Brazil have increased 96% since 2007, reaching 204,419 applications in 2018, whereas in Mexico this increase went up to 103%, with 156,156 applications filed last year.

Resident filing activity has driven this growth in Brazil, with an average of 82% in resident filings during the period 2007-2018. The second country in number of trademark applications in Brazil is the U.S., whose share in 2018 was 4%. Resident filings in Mexico represented an average of 68% during the period 2007-2018. The second country in number of trademark applications in Mexico is also the U.S., with 17,449 applications (11%) filed in 2018, followed by Germany (3%).

Overview of IP filings in Latin America over the Last Decade

There has been a significant increase in trademark registrations in Brazil during the last year, from 123,362 in 2017 to 191,813 in 2018 (55.5%). More importantly, the backlog was reduced from 358,776 by the end of 2017 to 191,535 by the end of 2018, which represents a decrease of 46.6%.

Trademark registrations have increased 150% in Mexico during the period 2007-2018, rising from 49,746 registrations in 2017 to 124,023 in 2018.

Overview of IP filings in Latin America over the Last Decade

With an overall 4% increase in trademark applications in Argentina from 2007 to 2017 and 74,722 filings in 2017, resident applications represented an average percentage of 76% during the period 2007-2017.

Except for a drop in 2009, trademark filings in Chile have been rather stable, with an overall increase of 18% during the period 2007-20018 and 47,407 filings last year. Resident applications in Chile represented an average of 69% during the period 2007-2018.

Colombia has experienced a significant overall increase (73%) in the number of trademark applications during 2007-2017, with 42,725 filings in 2017. Resident applications in Colombia showed an average of 57% during the period 2007-2017. There has also been a substantial increase (71%) in trademark registrations in Colombia during 2007-2017.

Sources:   http://www.wipo.int

                    http://www.inpi.gov.br

                    https://www.gob.mx

                    http://www.inpi.gob.ar

                    https://www.inapi.cl

                    http://www.sic.gov.co

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 disclose AI techniques and applications, they often also refer to an application field or industry. Twenty application fields were identified in the report, these include in order of magnitude: Telecommunications, Transportation, Life and Medical sciences, Human-Computer Interaction, Banking, Security, Agriculture and Networks (including social networks, smart cities and the Internet of Things).

Companies, in particular those from Japan, USA and China, dominated patenting activity:

Companies represent 26 out of the top 30 AI patent applicants, while only four are universities or public research organizations.

IBM has the largest portfolio of AI patent applications with 8.290 inventions, followed by Microsoft with 5.930, Toshiba (5.223), Samsung (5.102), NEC (4.406), Fujitsu (4.245), Hitachi (4.180), Panasonic (4.175), Canon (3.940), Alphabet (3.800), Siemens (3.550), Sony (3.500), Toyota (2.850) and NTT (2.730).

Geographical distribution of patent filings:

Most filings are made at the U.S. Patent and Trademark Office (USPTO) (150.000 patent applications) and Chinese patent office (137.000), followed by Japan (85.000), the European Patent Office (EPO) (54.000), Korea (37.000), Germany (26.000), Canada (13.000) and Australia (12.500).

Cooperation in AI research is limited, but so is conflict:

In many cases, organizations that cooperated in research are credited as co-assignees on patent applications. However, none of the top 20 applicants share ownership of more than 1% of its AI portfolio with other applicants.

Overall, the amount of litigation identified in the report is relatively low (less than 1% of patents being litigated), which may be due to the fact that products have now yet come to the market and infringement may be difficult to prove.

Source: www.wipo.int

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 the STLT, it is expected to raise the level of competitiveness of Peru, by offering greater legal security to investors.

SOURCE: https://andina.pe/agencia/

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 looking to construct and execute deals in the green technology space.

The WIPO GREEN network:

• helps facilitate commercial relationships and transactions by connecting green technology providers and seekers, and acting as a gateway to a range of relevant services;
• hosts a freely accessible online roster of green technology consultants and service providers, offering expertise in a wide range of areas including IP management, licensing and investment;
• acts as a gateway to useful IP services, such as WIPO’s Arbitration and Mediation Center.

Through the network, members can meet a wide range of stakeholders – including SMEs, multinational companies, intergovernmental organizations, investors and academics that provide a new opportunity for collaboration and partnership.

The WIPO GREEN Network has grown to reach over 6,000 members and subscribers across 170 countries in 2017. The expansion of our Network continues. Latin American partners include:

• Brazilian Forum of Innovation and Technology Transfer Managers (FORTEC), Brazil
• Brazilian Institute of Industrial Property (INPI), Brazil
• SOLBEN, Mexico

Only Brazilian and Mexican partners have been involved from the beginning of the project, which leaves a large field of expansion in Latin American in the near future. It also denotes the need of increasing the efforts to achieve conscience developing, sharing and implementing green technologies in this vast area of the planet.

Source: http://www.wipo.int/

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 establishment of an international search report and written opinion under PCT Chapter I, which, although remaining the opinion of the chosen International Searching Authority, is based on contributions from the participating offices.

3. In the pilot project, the examiner from the IP5 office acting as competent International Searching Authority under Rule 35 PCT for a given international application (“the main examiner”) will conduct the search and examination as for any other international application and establish a provisional international search report and written opinion. These provisional work products will then be transmitted to peer examiners from the other participating IP5 offices in their capacity as International Searching Authorities. Peer examiners will provide the main examiner with their contributions, taking into consideration the provisional international search report and written opinion. The final international search report and written opinion will be established by the main examiner after consideration of the contributions from the peer examiners. Further details regarding the implementation of the CS&E concept within the framework of this pilot project are provided below.

II. Framework

4. Under the pilot project, with a view to assessing the users’ interest in a CS&E product, international applications processed under the collaborative scheme will be selected by applicants (“applicant-driven approach”), whereas under the two previous pilot projects the applications were selected by the offices.

5. Applicants wishing to participate in the pilot project must submit a request for participation in the pilot by using a standard participation form and file it together with the international application with the receiving Office of one of the IP5 offices or the International Bureau of the World Intellectual Property Organization (WIPO). The participation form is available in all official languages of the IP5 offices on the WIPO website at www.wipo.int/pct/en/filing/cse.html. A copy of this form is annexed to the present notice.

6. For international applications filed in English, requests for participation in the pilot may be filed as from 1 July 2018. Each applicant will only be able to select a limited number of international applications.

7. Until 31 December 2018, only international applications filed in English will be accepted into the pilot. Thereafter, the competent International Searching Authority under Rule 35 PCT (also referred to as “the main International Searching Authority”) may also accept international applications filed in a language other than English. Where a main International Searching Authority decides to accept international applications filed in a language other than English it will inform applicants accordingly by way of a communication published on its website. Such communication will specify the additional languages which will be accepted for the purposes of the pilot and the date as of which requests for participation in the pilot may be filed in such languages, and provide explanations regarding their acceptance and processing.

8. The receiving Office will transmit the participation form to the International Bureau and the main International Searching Authority as part of the record copy and search copy respectively. Upon receipt of the search copy, the main International Searching Authority will assess whether the requirements set out in part III below are met and will notify the applicant and the International Bureau whether or not it accepts the request for participation in the pilot. It will do so using Form PCT/ISA/224 (Communication in Cases for Which No Other Form Is Applicable).

9. The main International Searching Authority will perform the search and examination in the same way as for international applications not processed under this pilot. It will establish a provisional international search report (Form PCT/ISA/210) (or, where appropriate, declaration of non-establishment of international search report (Form PCT/ISA/203)) and written opinion (Form PCT/ISA/237), and, where applicable, a record of the search strategy. The form and content of the record of search strategy will be based on the practice of the International Searching Authority concerned.

10. The main International Searching Authority will transmit these provisional work products to the peer International Searching Authorities, where peer examiners will prepare a contribution to the final search product, taking into consideration the provisional work products prepared by the main International Searching Authority. They will also perform additional searching to the extent deemed necessary.

11. With respect to the handling of non-unity cases by the peer International Searching Authorities, the principle of the first invention will be followed. This means that, whilst each main International Searching Authority will follow its own standard non-unity procedure, the provisional work products submitted to the peer International Searching Authorities are based only on the invention first mentioned in the claims. Peer examiners will focus their searches on what they determine to be the first invention, regardless of whether, according to their view, the provisional work products are directed to one or more inventions.

12. Each peer International Searching Authority will transmit its contribution to the main International Searching Authority using the standard peer contribution form. Depending on its practice, it will either record its contribution on the form itself or use the form as a cover sheet for standard forms PCT/ISA/210 and PCT/ISA/237. Peer contribution forms and any peer contributions attached to them will be made available as separate documents in PatentScope.

13. The main International Searching Authority will consider the contributions received from the peer International Searching Authorities and prepare the final international search report (Form PCT/ISA/210) (or, where appropriate, declaration of non-establishment of international search report (Form PCT/ISA/203)) and written opinion (Form PCT/ISA/237) in the light of these contributions. It will strive to establish these final work products within the time limit under Rule 42.1 PCT. However, compliance with this time limit cannot be guaranteed due to the collaborative nature of the pilot project which inherently results in additional administrative burdens. The final work products will be transmitted to the applicant and the International Bureau.

14. Final CS&E work products will be identified either by an indication in box V of Form PCT/ISA/237, or at the top of a supplemental sheet referenced in said box, as the result of collaboration under the pilot which does not necessarily reflect the opinions of all IP5 offices. Only final CS&E work products may serve as a basis for requesting participation in a Patent Prosecution Highway (PPH) pilot programme.

15. The offices will exchange documents and information with each other via an ePCT-based platform ensuring a secure and confidential data transmission. This platform will be provided and maintained by the International Bureau.

16. In this pilot project, the level of the international search fee charged by each IP5 office remains unchanged. Applicants participating in the pilot will therefore only pay the standard fee for a PCT Chapter I search at the competent International Searching Authority. However, if following this pilot the CS&E product is implemented as a regular product under the PCT, applicants will have to pay a specific CS&E fee. The maximum prospective amount of the CS&E fee is the aggregate amount of the search fees of the participating International Searching Authorities plus an administrative fee to cover the costs of collaboration.

17. Towards the end of the pilot project, applicants who have participated in it will be asked to complete a questionnaire about their interest in a regular CS&E product under the PCT. Their replies will be taken into account by the IP5 offices in their assessment of the pilot project.

III. Requirements for participation

18. The requirements for applicants’ participation in the pilot project are of two kinds: requirements to be met by applicants and limitations set by offices.

A. Requirements to be met by applicants

19. The following requirements must be met by applicants wishing to participate in the pilot project:

(a) The request for participation in the pilot must be submitted using the standard participation form and filed together with the international application.

(b) The participation form and the international application must be filed with the receiving Office of one of the IP5 offices or with the International Bureau as receiving Office.

(c) Where the participation form and the international application are filed with the EPO, they must be filed in electronic form using one of the following filing tools: the EPO Online Filing software (PCT update 1 April 2018 (build 3.51.257)), PCT-SAFE client version 3.51.081.257 (1 April 2018) or ePCT.

(d) Until languages other than English are accepted into the pilot as provided for under paragraph 7, the participation form and the international application must be filed in English.

B. Limitations set by the offices

20. The following limitations related to organizational aspects of the pilot must be complied with for the main International Searching Authority to accept a request for participation in the pilot:

(a) The applicant must not already have had ten international applications accepted in the pilot by the same main International Searching Authority, ten being the maximum number of applications permitted into the pilot per applicant at a same main International Searching Authority.

(b) Each main International Searching Authority aims to accept 100 international applications into the pilot, spread over the course of two years. The main International Searching Authority will accept applications based on achieving this aim.

(c) The main International Searching Authority must not already have accepted into the pilot the maximum number of applications that it considers appropriate in the technical field of the application for which the participation is requested. This requirement aims at ensuring the diversity of the technical fields of the applications processed under this pilot.

(d) The main International Searching Authority must not have considered that there is a specific reason (e.g. defect in the application, no sequence listing in text format complying with WIPO Standard ST.25 is available) impeding the processing of the application according to the timeline for the collaborative process.

IV. Duration

21. The pilot project is divided in two phases, a preparatory phase and an operational phase. The preparatory phase, which started on 2 June 2016, was dedicated to the administrative and practical preparations required to ensure a smooth functioning of the pilot. The operational phase will start on 1 July 2018 and will run until 1 June 2021. It will be dedicated to the processing of applications under the collaborative scheme, monitoring them for evaluation purposes and assessing the outcome of the pilot. It will also cover the assessment of the effect of the collaboration in the subsequent national/regional phases.

Source: www.epo.org