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									   Internationalizing Patents,
  Trademarks and Designs and
    Facilitating Resolution of
 Intellectual Property Disputes:
   What the World Intellectual
Property Organization (WIPO) Can
           Do for You




             AUTM Annual Meeting
                February 2005
             What we’re going to tell you
• Introduction to WIPO--history, perspective and activity
  areas, including the WIPO University Initiative (what WIPO
  is doing to help universities and R&D institutions in
  developing countries)
• Introduction to the Patent Cooperation Treaty (PCT)--the
  smart solution for seeking international patent protection
• Introduction to Madrid and Hague systems, for
  international registration of trademarks and industrial
  designs
• Introduction to the WIPO Arbitration and Mediation Center
   Introduction to
The World Intellectual
Property Organization
Basic Facts about WIPO

     WIPO’s Mission:

           To promote the protection of IP rights
            worldwide and extend the benefits
            of the international IP system to all
            member States

      Status: A United Nations Specialized Agency
      (int’l  intergovernmental organization)
      Member States: 181
      Staff: 940 from 94 countries
      Treaties Administered: 23
      Decisions by: General Assembly, Coordination
                              Committee, WIPO
      Conference
      Guiding Principles: Transparency,
      Accountability,
                           Milestones : 1883 to 2004

                                                                                     2002 Internet
                                                                                          Treaties
                                                                             1989
                                                                                    Madrid Protocol
                                                                      1970
                                                                             Patent Cooperation Treaty (PC
                                                              1970
                                                                     WIPO established

                                                     1967
                                                            WIPO Convention
                                            1960
                                                   BIRPI moves to Geneva
                                   1925
                                          Hague Agreement


                       1893
                           BIRPI
               1891
                   Madrid Agreement
       1886
              Berne Convention
1883
    Paris Convention
                      Strategic Goals



• Promotion of an IP culture
   – increase understanding of IP                        IP
   – encourage use of IP system
   – enhance respect for IP rights


• Enhanced Access to IP System
   – delivery of practical solutions that empower all stakeholders
     to develop, protect, enforce, manage and commercially
     exploit IPRs for development
                   Categories of WIPO’s Activities


Services                                                                          Norm-Setting
                                                                                  patents
to Industry                                                                       copyright and related rights
patents (PCT):                                                                    trademarks, designs and
trademarks (Madrid)                                                                  geographical indications
industrial designs (Hague)
geographical indications                                                          traditional knowledge,
  (Lisbon)                                                                           access to genetic
micro-organisms                                                                      resources, and folklore
(Budapest)
alternative dispute
resolution




                             Economic Development
                             AIM: To maximize strategic use of IP for development by:
                             - updating IP legislation
                             - upgrading IP infrastructure
                             - demystifying IP(through training and awareness building)
                             - promoting understanding of policy options offered by
                             IPRs
         Outreach


    Public Sector & Policy- Makers



                               Intellectua
Building                       l Property
awareness                      Offices



     General Public & Civil Society
Increasing activities with Universities and
        Research Institutions (1)

Stanford Conference in 2004
  “WIPO Comes to Silicon Valley – High Tech IP Issues in a
  Global Marketplace”
     --hosted by Stanford Law School, May 17 and 18, 2004
     --addressed international patent and trademark systems
       administered by WIPO, alternative dispute resolution
       services of WIPO, WIPO’s work relating to patent law
       harmonization, domain names, software and
       biotechnology patents, protection of genetic resources,
       and the link between public health and intellectual
       property
     --brought together major players from Silicon Valley’s high
       technology industries and venture capital community,
       patent and trademark practitioners, academics, and
       members of the public
Increasing activities with Universities and
        Research Institutions (2)


UCLA Conference, September 15-16, 2005
     --hosted by UCLA Law School
     --will deal with WIPO programs and initiatives and other
       international legal and business issues of interest to the
       entertainment and media industries
WIPO University
   Initiative
                    WIPO University Initiative

Objective: assist universities and R&D institutions in developing countries
  to:
   – build IP awareness in academic circles
   – create an IP culture
   – adopt IP policies
   – get access to technical information in patent documents
   – improve protection of research/inventions
   – Identify and valuate IP assets
   – boost R&D activities

• 40 participating universities thus far

•   For further information, see http://www.wipo.int/uipc/en/
                              Participating Universities
AFRICAN COUNTRIES                                         CERTAIN COUNTRIES IN CENTRAL EUROPE AND ASIA
Burkina Faso--Université de Ouagadougou
Cameroon--(pending)                                       Bulgaria--University of National and World Economy (Sofia)
Ethiopia--Addis Ababa University
Kenya--Moi University (Eldoret)
Mauritius--University of Mauritius (Reduit)               Estonia--Tallinn Technical University
Namibia--University of Namibia                                   --Tartu Institute of Technology
Niger--Université de Niamey                               Krygyztan--Razzakov Kyrgyz Technical University (Bishkek)
Nigeria--University of Lagos
Senegal--Université Cheikh Anta Diop de Dakar             Lithuania--Gediminas Technical University (Vilnius)
South Africa--Penisula Technikon (Cape Town)              Slovak Republic--Comenius University (Bratislava)
Uganda--Makerere University School of Graduate Studies    Ukraine--National Technical University of Ukraine "Kyiv Polytechnic
                                                               Institute" (Kiev)
Zambia--University of Zambia (Lusaka)

ARAB COUNTRIES                                            LATIN AMERICA AND THE CARIBBEAN
Jordan--Royal Scientific Society (Amman)
Morocco--Center for Technological Innovati Mohammadia     Argentina--Universidad Nacional del Litoral (Santa Fe)
     School of Engineers (Agdal Rabat)                    Barbados--University of the West Indies (Cave Hill)
Tunisia--Borj Cédria                                      Colombia--Universidad Nacional de Colombia (Bogotá, D.C.)
Yemen Republic of--University of Aden
                                                         El Salvador--Universidad Tecnológica de El Salvador (San
ASIA AND THE PACIFIC                                                                  Salvador)
India--Cochin University of Science and Technology                   --Universidad Don Bosco de El Salvador (San Salvador)
      --University of Pune
Malaysia--Universiti Sains Malaysia (Penang)
Mongolia--Mongolian University of Science and Technology Honduras--Universidad Nacional Autónoma de Honduras
      (Ulaanbaatar)                                                                 (Tegucigalpa)
Pakistan--Quaid-I-Azam University (Islamabad)                      --Universidad Tecnológica Centroamericana (UNITEC)
          --NED University (Karachi)                                                (Campus Tegucigalpa)
Philippines--University of the Philippines (Quezon City, México--Universidad Nacional Autónoma de México (Ciudad de
      Diliman)                                                 México)
                                                         Perú--Universidad Nacional Mayor de San Marcos
                                                         Trinidad and Tobago--University of the West Indies (St. Augustine)
                University
Intellectual Property Coordinator (UIPC)

           WIPO UNIVERSITY INITIATIVE
                           Support


NATIONAL IP OFFICE
      Assistance



                         UIPC
                   I P Awareness Building
             Access to Technological Information
                      I P Advice/Counsel

      Researchers        Teachers      Management
                         Students
              Recent relevant WIPO
              activities/publications


• WIPO National Workshop to Develop Intellectual
  Property Licensing and Negotiation Skills (India), Nov.
  2004
• WIPO Regional Workshop Management on IPR for
  Universities and R&D Institutions (Mali), Sept. 2004
• Guidelines on Developing IP Policy for Universities and
  R&D Organizations
For further documents and presentations, see
  http://www.wipo.int/uipc/en/documents/
                   WIPO Publications
• See publicaiton catalog and electronic bookshop on our website
  (www.wipo.int)




• Also in the Exhibit Hall we have a number of free publications,
  including:

    – New free brochure: “Successful Technology Licensing”
    – New free brochure: “Research Networks and Intellectual
                              Property”
    – New free brochure: “Guide to WIPO Arbitration”
Questions?
The Patent Cooperation Treaty
            (PCT)
1) What is the PCT?
2) Why use the PCT?
1) What is the PCT?
           The PCT, in brief (1)

• A mainly procedural international treaty facilitating
  certain steps in the process of obtaining patents
  internationally

• More specifically, establishes a procedure for the
  filing and processing of a single application for a
  patent which has legal effect in the countries which
  are Treaty members

• Simplifies the procedure for getting patent protection
  in many countries, making it more efficient and
  economical for:
       (1) users of the patent system (applicants and
           inventors); and
       (2) patent Offices
         The PCT, in brief (2)


• The decision on granting patents is made
  exclusively by national or regional Offices in the
  national phase

• Signed in June 1970, in Washington, D.C.,
  became operational in June 1978 with 18
  States

• As of 3 January 2005, now has 125 Contracting
  States
  =PCT                                              Contracting States
                                              (125 on 3 January 2005)




Albania                    Chad                                       Lesotho
                                                      Gabon                                                    Sweden
Algeria                                                               Liberia            Philippines
                           China                      Gambia                                                   Switzerland
Antigua and Barbuda                                                   Liechtenstein      Poland
                           Colombia                   Georgia                                                  Syrian Arab Republic
Armenia                                                               Lithuania          Portugal
                           Comoros (3 April 2005)     Germany                                                  Tajikistan
Australia                                                             Luxembourg         Republic of Korea
                           Congo                      Ghana                                                    The former Yugoslav
Austria                                                               Madagascar         Republic of Moldova
                           Costa Rica                 Greece                                                      Republic of Macedonia
Azerbaijan                                                            Malawi             Romania
                           Côte d'Ivoire              Grenada                                                  Togo
Barbados                                                              Mali               Russian Federation
                           Croatia                    Guinea                                                   Trinidad and Tobago
Belarus                                                               Mauritania         Saint Lucia
                           Cuba                       Guinea-Bissau                                            Tunisia
Belgium                                                               Mexico             Saint Vincent and
                           Cyprus                     Hungary                                                  Turkey
Belize                                                                Monaco                 the Grenadines
                           Czech Republic             Iceland                                                  Turkmenistan
Benin                                                                 Mongolia           San Marino
                           Democratic People's        India                                                    Uganda
Bosnia and Herzegovina                                                Morocco            Senegal
                             Republic of Korea        Indonesia                                                Ukraine
Botswana                                                              Mozambique         Seychelles
                           Denmark                    Ireland                                                  United Arab Emirates
Brazil                                                                Namibia            Sierra Leone
                           Dominica                   Israel                                                   United Kingdom
Bulgaria                                                              Netherlands        Singapore
                           Ecuador                    Italy                                                    United Republic of Tanzania
Burkina Faso                                                          New Zealand        Slovakia
                           Egypt                      Japan                                                    United States of America
Cameroon                                                              Nicaragua          Slovenia
                           Equatorial Guinea          Kazakhstan                                               Uzbekistan
Canada                                                                Niger              South Africa
                           Estonia                    Kenya                                                    Viet Nam
Central African Republic                                              Norway             Spain
                           Finland                    Kyrgyzstan                                               Yugoslavia
                                                                      Oman               Sri Lanka
                           France,                    Latvia                                                   Zambia
                                                                      Papua New Guinea   Sudan
                                                                                         Swaziland             Zimbabwe
          Growth in PCT member States over last 8 years




1996          1997         1998      1999           2000        2001          2002            2003
Turkey        Yugoslavia   Cyprus    United Arab    Algeria     Colombia      Saint Vincent   Papua New
Israel        Ghana        Croatia    Emirates      Antigua     Ecuador          and the      Guinea
Cuba          Zimbabwe     Grenada   South Africa     and       Equatorial       Grenadine    Syrian Arab
Saint Lucia   Sierra       India     Costa Rica       Barbuda   Guinea           s            Republic
Bosnia and      Leone                Dominica       Mozambiqu   Philippines   Seychelles      Egypt
  Herzegovi   Indonesia              United           e         Oman                          Botswana
  na          Gambia                  Republic of   Belize      Zambia
              Guinea-                 Tanzania                  Tunisia
                Bissau               Morocco
                           The PCT System
                     --typical use, in more detail


                                                                                  Enter
                                                                                 national
                                                                                  phase
                                           International
   (months)                                 publication
      0                  12             16       18        22              28          3
                                                                                       0
  File local          File PCT     International        (optional)       (optional)
  application        application   search report           File        International
                                     & written         demand for       preliminary
                                      opinion         International      report on
                                                         preliminary   patentability
                                                        examination
   Typically a
 national patent
application in the
home country of
  the applicant
                               The PCT System



                                                                                   Enter
                                                                                  national
                                                                                   phase
                                            International
(months)                                     publication
   0                  12                 16       18        22              28          3
                                                                                        0
File local      File PCT            International        (optional)       (optional)
application    application          search report           File        International
                                      & written         demand for       preliminary
                                       opinion         International      report on
                                                          preliminary   patentability
               Typically filed in                        examination
                same national
                patent office--
               one set of fees,
                one language,
                  one set of
                   formaility
               requirements--
               and legal effect
              in all PCT States
                            The PCT System



                                                                              Enter
                                                                             national
                                                                              phase
                                       International
(months)                                publication
   0              12                16       18        22              28          3
                                                                                   0
File local     File PCT      International          (optional)       (optional)
application   application    search report             File        International
                               & written           demand for       preliminary
                                opinion           International      report on
                                                     preliminary   patentability
                                                    examination



                              Report on state
                              of the art (prior
                              art documents
                                  and their
                               relevance) +
                                    initial
                               patentability
                                   opinion
                            The PCT System

                                        Disclosing to
                                       world content of
                                        application in
                                        standardized
                                             way
                                                                                Enter
                                                                               national
                                       International                            phase
(months)                                publication
   0              12              16          18          22             28          3
                                                                                     0
File local     File PCT      International            (optional)       (optional)
application   application    search report               File        International
                               & written             demand for       preliminary
                                opinion             International      report on
                                                       preliminary   patentability
                                                      examination
                            The PCT System



                                                                            Enter
                                                                           national
                                                                            phase
                                     International
(months)                              publication
   0              12              16       18        22              28          3
                                                                                 0
File local     File PCT      International       (optional)        (optional)
application   application    search report          File         International
                               & written        demand for        preliminary
                                opinion        International       report on
                                                  preliminary    patentability
                                                 examination



                                                 Request an
                                                  additional
                                                 patentability
                                                 analysis on
                                                    basis of
                                                   amended
                                                  application
                            The PCT System



                                                                                 Enter
                                                                                national
                                                                                 phase
                                     International
(months)                              publication
   0              12              16       18        22                  28         3
                                                                                    0
File local     File PCT      International        (optional)         (optional)
application   application    search report           File          International
                               & written         demand for         preliminary
                                opinion         International        report on
                                                   preliminary     patentability
                                                  examination



                                                                    The additional
                                                                     patentability
                                                                 analysis, designed to
                                                                   assist in national
                                                                   phase decision-
                                                                        making
                            The PCT System
                                                                               Express
                                                                            intention and
                                                                            take steps to
                                                                           pursue to grant
                                                                          in various states


                                                                            Enter
                                                                           national
                                                                            phase
                                     International
(months)                              publication
   0              12              16       18        22              28          3
                                                                                 0
File local     File PCT        Receive            (optional)       (optional)
application   application    international           File           Receive
                             search report       demand for      international
                               & written        international     preliminary
                                opinion            preliminary     report on
                                                  examination    patentability
(2) Why use the PCT?
  Why use the Patent Cooperation Treaty?
Because, as the cornerstone of the international patent
system, it provides a worldwide system for simplified
filing of patent applications, which--

   1. brings the world within reach
   2. postpones the major costs associated with
   internationalizing a patent application
   3. provides a strong basis for patenting decisions
   4. is used by the world’s major corporations,
   universities and research institutions when they seek
   international patent protection
   5. allows you to apply securely and easily online, and
   to save money by doing so
        1. Brings the world within reach




How?
PCT application = Legal effect of a regular national patent
                   application in all PCT States (currently 125
2. Postpones the major costs associated with
    internationalizing a patent application


      ?
          What are those large initial
                    costs?

1) Translations of the patent applications (which are
   highly technical documents) into various national
   languages
2) Official fees for payment to national/regional
   patent offices (for example, filing fees, claims
   fees, etc.)
3) Fees for the services of local patent
   agents/attorneys in the designated states
When are these costs incurred?
                            Traditional patent system
                                        vs.
                                   PCT system

                                              File
              (months)                    applications
                                            abroad
                 0           12
Traditional
                                                                                                           Fees for:
                                           Fees for:
               File local                                                                                  --translations
                                           --translations
              application                                                                                  --Office fees
                                           --Office fees
                                                                                                           --local agents
                                           --local agents
                                                                                                   Enter
                                                                                                  national
                                                            International                          phase
              (months)
                                                             publication
PCT              0                12              16            18          22             28          3
                                                                                                       0
              File local     File PCT      International                 (optional)      (optional)
              applicatio    application   search report &                   File       International
              n                           written opinion               demand for      preliminary
                                                                       International     report on
                                                                       preliminary     patentability
                                                                       examination
                  PCT Costs--in perspective (1)
How do the PCT fees fit into the overall costs of patenting?

July 2004 calculation of estimated percentage which the PCT filing fees
represent in the overall budget of a PCT applicant seeking patents in
several countries (using “IP Global Estimator®”* software):

     hypothetical PCT application filing was:
        – filed in the USPTO as receiving Office by a US large-entity
          applicant
        – contained 46 pages and 12 claims (3 independent)
        – international search and preliminary examination to be carried
          out by the EPO
        – entry into national/regional stage in the US, Canada, Australia,
          Mexico, Japan, and the EPO (and in the EPO designating
          France, Germany, Italy, Netherlands, Sweden, and the UK)
*“IP Global Estimator software ®”(www.globalip.com) is a useful tool for calculating overal patent-
related expenses, including fees and annuities, translations, photocopying and other misc. costs, as
well as minimum attorney fees that are based on standard country-by-country charges for the basic
prosecution of a straightforward application
               PCT Costs--in perspective (2)


According to IP Global Estimator, the total cost of application (from filing
until expiration of all national phase patents at 20 years from the filing
date) would be USD$201,322

Thus, the PCT filing fees, including the international search by the EPO,
(total: USD$3,354) represented 1.7% of what the PCT applicant could
expect to pay throughout the full life of this patent family!

If the payment of annual maintenance fees is eliminated from the above
calculation, the total amount that the applicant would expect to pay to see
his/her patents granted is reduced to USD$85,183. PCT filing fees would
then represent 3.9% of this amount
3. Provides a strong basis for patenting decisions
Together with the time gained (as
previously explained) and the
postponement of the significant costs, it is
the
      information about the potential
       patentability of the invention
that is received during the PCT process
which is the most valuable for the PCT
applicant
What does this potential patentability
      information consist of?
      In Chapter I of the Treaty (before the international
             publication), it is the content of the
               International Search Report (ISR)
                              and the
   Written Opinion of the International Searching Authority




In Chapter II of the Treaty (after international publication), it is
                       the content of the
International Preliminary Report on Patentability (Chapter II)
                        (IPRP (Ch. II))
Example: content of the International Search Report (ISR)




      Symbols indicating
        which aspect of
                                Documents relevant to        The claim numbers
          patentability
                                 whether or not your        in your application to
     the document cited is
                                  invention may be          which the document is
    relevant to (for example,
                                     patentable                    relevant
    novelty, inventive step,
              etc.)
Example: content of the written opinion of the ISA




           Reasoning
                                                     Patentability
         supporting the
                                                     assessment
          assessment
                                                      of claims
Example: content of the international preliminary report on patentability (Ch. II)




           Reasoning                                                 Patentability
         supporting the                                              assessment
          assessment                                              of claims (usually,
                                                                     as amended)
What does the applicant do with the information
      from the ISR, ISO and IPRP Ch. II?
 He/she uses it as a basis for their patenting decisions--
 decisions about:
        1) whether to enter the national phase
        2) where to enter the national phase
 Example--
          Based on the information received during both
 Chapters I and II, the Procter & Gamble company found
 that it:
    --abandoned 20% of PCT filings at national phase (did
      not enter national phase at all anywhere);
    --when it did enter national phase, it did so in only 70%
      of the States it had originally designated
 4. Is used by the world’s major corporations,
      universities and research institutions
when they seek international patent protection
                  Who uses the PCT?


The largest users of the PCT in 2003 (by number of
applications filed):

1. Philips Electronics (NL)   11. Procter & Gamble (US)
2. Siemens (DE)               12. Thomson Licensing (FR)
3. Matsushita Electric        13. Honeywell (US)
      Industrial (JP)         14. Kimberly-Clark (US)
4. Bosch (DE)                 15. Mitsubishi (JP)
5. Sony (JP)                  16. Motorola (US)
6. Nokia (FI)                 17. Fujitsu (JP)
7. 3M (US)                    18. University of California (US)
8. Infineon (DE)              19. Japan Science and Technology
9. BASF (DE)                        Corp. (JP)
10. Intel (US)                20. Unilever (GB)
             Among PCT applicants, you will also
             find: (a few names you might know)

IBM (US)            Nestle (CH)          Shell (NL)                Daimler Benz (DE)
Hitachi (JP)        Novartis (CH)        Elf (FR)                  Toyota (JP)
British Telecom (GB)Colgate Palmolive (US)                         Volvo (SE)
MCI (US)            L’Oreal (FR)         Salomon (FR)              Ford (US)
Sony (JP)           Rhone Poulenc (FR)                             Nissan (JP)
AT&T (US)           Hoechst (US y DE)    CNRS (FR)                 Renault (FR)
Microsoft (US)      Glaxo (GB)                                     Honda (JP)
                    Leica (CH)           MIT (US)                  Kawasaki (JP)
Boeing (US)                              University of Texas (US)
McDonnell Douglas (US)                   CalTech (US)
                                         Johns Hopkins(US)
                                         University of Michigan (US)
                                         Columbia University (US)
                                         Wisconsin Alumni Research
                                            Foundation (US)
                                         University of Florida (US)
                                         Hebrew University of Jerusalem (IL)
                                         Stanford University (US)
                        Growth in PCT Filings

140000


120000


100000


 80000


 60000


 40000


 20000


     0
         78


              80


                   82


                        84


                             86


                                  88


                                       90


                                            92


                                                 94


                                                      96


                                                           98


                                                                2000


                                                                       2002


                                                                              2004
          International applications received by
                 country of origin in 2003

40,000

35,000

30,000

25,000

20,000

15,000

10,000

 5,000

    0
                                                 CH&LI
                   DE




                                                                                                 BE
                        GB




                                       KR




                                                         CA


                                                                   AU


                                                                             CN


                                                                                       DK




                                                                                                                RU
                             FR

                                  NL




                                                                        FI




                                                                                                      AT
         US




                                            SE




                                                                                            ES




                                                                                                           IN
                                                              IT




                                                                                  IL
              JP
5. apply securely and easily online, and
        save money for doing so!
PCT Electronic filing overview
            1. Prepare application
            body: in XML using the
            PCT-SAFE* Editor or in
            PDF     2. Prepare Request using
                    free, WIPO-produced PCT-
                    SAFE software
                                 010101
                                    0
                                 101010   3. Electronically
                                          sign: WIPO
                                    1
                                 010101
                         Signatur 0
                            e             Customer digital
                                          certificate or
                                          other

                                      4. Transmit (on-
                                      line or on CD-R)

      5. Receive a
      receipt (for on-
      line filings)

      *PCT-SAFE=“Secure Applications Filed
      Electronically”
                     PCT E-filing fee reductions

            100 Swiss francs: paper filings
                                request printout created with PCT-
             SAFE
                                diskette prepared with PCT- SAFE
            200 Swiss francs: electronic filings
                                text of application not in character
                                                coded format) (for
             example, PDF)
            300 Swiss francs: electronic filings
                                text of application in character coded
                                                format (for example,
             XML)

28.11.03
Questions?
The Madrid System for the
International Registration
     of Trademarks:

   Main Features and
      Advantages
                What are trademarks?


• Distinctive signs which identify certain goods or services
  as those produced or provided by a specific person or
  enterprise


• Their origin dates back to ancient times, when craftsmen
  reproduced their signatures, or "marks" on their artistic or
  utilitarian products
              What does a trademark do?

• provides protection to the owner of the mark by ensuring the
  exclusive right to use it to identify goods or services, or to authorize
  another to use it in return for payment
• protection can be enforced by courts, which in most systems have
  the authority to block trademark infringement
• periods of protection vary, but a trademark can be renewed
  indefinitely beyond the time limit on payment of additional fees
• the trademark system in general helps consumers identify and
  purchase a product or service because its nature and quality,
  indicated and ensured by its unique trademark, meets their needs
      The Madrid System: Introduction (1)
• WIPO administers a system of international registration of marks
• This system is governed by two treaties:
    – the Madrid Agreement Concerning the International
      Registration of Marks (1891), and
    – the Madrid Protocol (1989)
• the Madrid system offers a trademark owner the possibility to have
  his trademark protected in several countries by simply filing one
  application directly with his own national or regional trademark
  office
• At present, more than 75 countries are party to one or both of the
  agreements (including US as of November 2003)
      The Madrid System: Introduction (2)

• an international mark so registered is equivalent to an application
  or a registration of the same mark effected directly in each of the
  countries designated by the applicant
• the protection of the mark is the same as if it had been registered
  by that Office unless the trademark office of a designated country
  refuses protection within a specified period
• the Madrid system greatly simplifies the subsequent management
  of the mark, since it is possible to record subsequent changes or to
  renew the registration through a single, centralized procedural step
                Basic Features of the Madrid
                      System
• To be entitled to file a Madrid application, an applicant must in general
  satisfy one, at least, of the following conditions:
   – be a national of a Contracting Party, or
   – have a domicile in the territory of a Contracting Party, or
   – have a real and effective industrial or commercial establishment in
      the territory of a Contracting Party

• Office of Origin--before a mark can be the subject of an international
  application, it must already have been registered, or registration
  applied for, for the same goods or services with the trademark
  registration office of the country in respect of which the
  nationality/domicile requirement is met
           The International Application for
                  Mark Registration

• An international application is subject to the payment of
  three types of fees (in Swiss francs), namely:

   – a basic fee (CHF 653 Swiss francs for b&w mark)

   – for each designated Contracting Party, either a standard
     designation fee (CHF 73) or an individual designation fee
     (amount fixed by the country concerned), and

   – a supplementary fee for each class of goods and
     services beyond the third (CHF 73)
                 Paperless processing

• WIPO processes all international applications, subsequent
  designations and all actions related thereto in a
  “paperless” environment
• Paper documents are scanned and indexed immediately
  upon receipt by WIPO. Subsequent processing of the
  documents is based on their facsimile images
• Communications and publication also electronic
    Procedure through the Madrid System (1)
• via national office

• language--may be filed in English or French

• formal examination--the IB checks that all the filing requirements are met
  and that the goods and services are correctly classified. If so, the mark is
  recorded in the International Register, published in the WIPO Gazette of
  International Marks, and notified to the Offices of the designated
  countries

• The International Bureau does not examine whether the mark as such
  qualifies for protection, or whether an identical or similar mark has
  already been registered; that is a matter for the Offices of the designated
  countries
   Procedure through the Madrid System (2)
• refusal (or not) by designated Contracting Parties
   – the office of a designated country has the right to refuse protection
     of a mark in the territory of that country. Refusal may be made on
     any of the grounds on which an application for registration filed
     direct with that Office might be refused. Refusal is notified to the
     International Bureau and recorded in the International Register
• At the end of the applicable time limit therefore, the holder
  of an international registration is in a position to know
  whether his mark has been accepted for protection in
  each of the designated countries, or whether protection
  has been refused in one country or whether there is still a
  possibility of refusal on the basis of an opposition in a
  particular country
            Subsequent Designations

• Additional countries can be designated at any time,
  provided they are party to the Protocol at the time of the
  designation. Such subsequent designations are useful
  where new countries accede to the Protocol or simply
  where the holder’s interest in a country develops after
  the international registration has been made
   Effects of the International Registration (1)
• From the date of the international registration, the protection of the
  mark in each of the designated countries is the same as if the mark
  had been the subject of an application filed direct with the Office of
  that country. If no refusal is notified within the prescribed time limit,
  the protection of the mark in each designated country is the same
  as if the mark had been registered by the Office of that country.
• Effective date of an international registration: bears the date on
  which the international application was filed with the Office of origin,
  provided that it reaches the International Bureau within two months
  and that no essential elements (such as a reproduction of the mark,
  or the list of goods and services) are missing
  Effects of the International Registration (2)
• National (designated) Offices determine:
   – substantive conditions of protection
   – applicable procedure if refusal
   – scope of protection
                  Duration of Protection
• An international registration lasts for ten years

• It may be renewed for further periods of ten years, by
  paying the requisite fees to the International Bureau

• For the first five years, the international registration is
  dependent on the application or registration with the Office
  of origin. After the end of the five-year period, the
  international registration becomes independent of the basic
  application or basic registration
                Use of the Madrid System (1)
• over 135,000 users

• 412,000 international trademarks in force (= 4.8 million national
  registrations)

• lower costs (10 to 20 times less)


• in 2003, WIPO received and examined 23,872 applications and
  recorded and published 21,851 registrations.
    – Since applicants designate on average 12 countries in an international
      registration under the Madrid System, these international trademark
      registrations represent approximately 262,000 national trademark
      applications
            Use of the Madrid System (2)
• The largest number of international applications filed in
  2003 came from users in Germany (22.9%), France (15%),
  Switzerland (10.1%) and the Benelux (9.6%)
• The top twenty users of the Madrid System in 2003 were:
   – Henkel, Sanofi, Unilever, Janssen Pharmaceutica,
     L’Oréal, Nestlé, Bayer, Novartis, Siemens, ITM,
     Boehringer, Biofarma, Philips Electronics, BASF,
     Novartis, Merck, Syngenta, Fiat, Kodak and Bongrain
            Advantages of the Madrid System
• Administrative efficiency
   – Portfolio management

• Flexibility
   –   Ability to relinquish designations
   –   Third party problems can be circumvented
   –   Ability to add subsequent designations
   –   Different coverage in different designations
   –   Lower costs
   –   Internal admin costs of paying bills hugely reduced
   –   One currency (CHF) gives stability of costs and eases
       administration

• Centralized post-grant administration
   –   Change of name
   –   Change of address
   –   Recordal of assignment
   –   Change of representative
   –   Change to specification of goods
   –   Renewals – one date even for subsequent designations
 Further Information about the Madrid System

WIPO’s website (www.wipo.int) includes:
  • the full text of the the Madrid Agreement and the Madrid
    Protocol, Common Regulations and the Administrative
    Instructions
  • the full text of the Guide to the International Registration
    of Marks
  • a list of the Contracting Parties
  • the forms issued by the International Bureau, in MS
    Word and Adobe PDF versions
  • the current fees (and a fee calculator)
  • online databases of registered marks
Questions?
  The Hague Agreement
      Concerning the
International Registration
  of Industrial Designs:

   Main Features and
      Advantages
         What are industrial designs? (1)


• Industrial design: the ornamental or aesthetic aspect of
  an article. The design may consist of three-dimensional
  features, such as the shape or surface of an article, or of
  two-dimensional features, such as patterns, lines or color.
         What are industrial designs? (2)


• To be protected under most national laws, an industrial
  design must appeal to the eye. This means that an
  industrial design is primarily of an aesthetic nature, and
  does not protect any technical features of the article
• IDs are applied to a wide variety of products of industry
  and handicraft: from technical and medical instruments to
  watches, jewelry, and other luxury items; from housewares
  and electrical appliances to vehicles and architectural
  structures; from textile designs to leisure goods
• Some examples follow:
Furnishing
Packages and Containers
Measuring Instruments
Household Goods
Fluid Distribution or Heating Equipment
Means of Transport
                Garments and Textiles




DM/059830 - 9




retour / back
                Decorative items




DM/059830 - 9




retour / back
Electronic Goods
     The Hague System: Introduction (1)



The Hague Agreement creates
• a procedural, international registration system, which
  offers the possibility of
   – obtaining protection for industrial designs
   – in 40 (to date) States and/or
     intergovernmental organizations
   – by means of a single international application filed
     with WIPO
        Basic features of the Hague System

• Only Contracting Parties bound by the Hague Agreement
  may be designated. (Protection in non-Hague countries may
  be obtained only by way of national or regional applications
  filed individually with the Office of each country in question)
• A design may be deposited and protected for the first time at
  the international level through the Hague Agreement--unlike
  the Madrid system, a prior national deposit is not required
• An international application may be filed in either English or
  French
• To be entitled to file such an application, an applicant must in
  general satisfy one, at least, of the following conditions:
   – be a national of a Contracting Party, or
   – have a domicile in the territory of a Contracting Party, or
   – have a real and effective industrial or commercial
      establishment in the territory of a Contracting Party.
             The International Application for
                   Design Registration

• A single international application may comprise several different designs
  (“multiple deposit”), up to a maximum of 100

• The international application must contain, inter alia, a reproduction of
  the designs together with the designation of countries where protection
  is sought

• An international application is subject to the payment of three types of
  fees (in Swiss francs), namely:
   – a basic fee (CHF 397 for first design);
   – a publication fee (per page, differing if color/b&w) and
   – for each designated Contracting Party, either a standard fee or an
     individual fee (CHF 42 for first design)
                       Publication

• An application complying with the prescribed formal
  requirements is registered by the International Bureau
  and such registration is published in the International
  Designs Bulletin. This Bulletin is published electronically,
  on WIPO’s Internet site

• Publication of registrations in this Bulletin takes the place
  of national publication
       Effects of the International Registration
• International registration has the effect of a grant of protection
  in that Contracting Party, under the law of that Contracting
  Party, unless a refusal is notified by a given designated
  Contracting Party within the prescribed time limit
• The Hague system is an agreement only as to international
  procedure. It does not:

   –determine the conditions for protecting a design;
   –determine the type of examination to be carried out by an
   Office;
   –determine the scope of protection

• All these issues (and any substantive aspect of the
  protection) are governed by the domestic legislation of each
  designated Contracting Party
              Duration of Protection/Renewals
• International registrations are valid for an initial period of five years

• Renewable for 5 years, in respect of each designated Contracting Party,
  up to the expiry of the total term of protection allowed by those
  Contracting Parties’ respective laws

• Renewal requests and corresponding payments made to WIPO

• Renewals may be made for all or some of the registered designs and for
  all or some of the designated Contracting Parties
      Examination by the Office: Possibility of
                      Refusal
• Upon publication of the Bulletin, each Office must identify the
  international registrations in which it is designated in order to proceed
  to the substantive examination provided for by its own legislation

• Following such examination, each Office has the right to refuse
  protection, in its territory, to an international design, if it does not fulfil
  the substantive conditions of protection provided for by its national
  legislation
      Changes in the International Register

• Changes recorded in the International Register have effect
  in all or only some of the designated Contracting Parties,
  by means of a single request presented to the International
  Bureau
               Use of the Hague System
• 2,474 registered deposits in 2003, containing 13,152
  designs
• mainly used by Germany (28%), Switzerland (23%), France
  (23%) and Benelux (13%)
• 142,220 registrations in history of Hague System, involving
  1,912,115 designs
          Advantages of the Hague System

• Simplification of procedures
   – at the international application (filing) stage
   – for the management of international registrations,
  (for example, minimizing formalities, relief from having to
  make separate national applications, consolidation of
  language used, etc.)

• Considerable cost savings
   – at the international application stage
   – for the management of international registrations
  Further Information about the Hague System

WIPO’s website (www.wipo.int) includes:
  • the full text of the 1999 Act, the 1960 Act, the 1934 Act,
    the Common Regulations and the Administrative
    Instructions;
  • the full text of the Guide to the International Registration
    of Designs under the Hague Agreement;
  • a list of the Contracting Parties, together with an
    indication of the respective dates on which they
    became bound by the 1999 Act, the 1960 Act and/or the
    1934 Act;
  • the forms issued by the International Bureau, in MS
    Word and Adobe PDF versions;
  • the current fees (including individual designation fees);
Questions?
The Services and Experience of the
 WIPO Arbitration and Mediation
              Center

                     Erik Wilbers
                    Acting Director
          Arbitration and Mediation Center
  World Intellectual Property Organization (WIPO)
                Geneva, Switzerland
Why Intellectual Property Alternative Dispute
                 Resolution?


• Efficiency

• Expertise

• Confidentiality

• Neutrality

• Enforceability
             Why IP ADR - Efficiency



• Party control / autonomy
   process
   selection of neutrals

• Single procedure

• Final
              Why IP ADR - Expertise



• Party selection of neutrals

• Possibility to tailor appointment to the legal, technical and
  other requirements of the dispute
           Why IP ADR - Confidentiality



• Existence

• Disclosures

• Result
              Why IP ADR - Neutrality



• International disputes: avoid “home court advantage”
  through choice of:

   arbitrator / mediator
   language
   law
   venue
             Why IP ADR - Enforceability



• Arbitration: New York Convention
   with limited exceptions, “automatic” enforcement of
     arbitral awards
   more than 130 signatories

• Mediation: Settlement enforceable under contract law
     WIPO Arbitration and Mediation Center


• Established in 1995 as part of the International
  Bureau of the World Intellectual Property Organization
  (WIPO)
• Purpose: to promote the resolution of intellectual
  property disputes through arbitration, mediation, and
  other ADR procedures
• Relevant developments: increased
  internationalization of creation and use of IP; and
  increasingly specialized nature of IP
   WIPO Arbitration and Mediation Services



• Model clauses and submission agreements

• (Expedited) arbitration and mediation rules

• Case administration

• Database of neutrals

• IP ADR information and events
WIPO Arbitration and Mediation Options


                 WIPO CONTRACT
                    CLAUSE /
                   SUBMISSION




                   MEDIATION




    SETTLEMENT            ARBITRATION            EXPEDITED
                                                ARBITRATION




                                        AWARD
             WIPO Expedited Arbitration


• When is it appropriate?
• Statement of Claim filed with Request for Arbitration and
  Statement of Defense with Answer to the Request
• Sole arbitrator
• Fixed arbitrator’s fees for disputes up to
  USD 10 million
• Shorter hearings
• Time limits shortened
WIPO ARBITRATION              WIPO EXPEDITED
   Request for Arbitration     ARBITRATION
                              Request for Arbitration and
                                 Statement of Claim
   Answer to Request for
   Arbitration (30 days)       Answer to Request for
                              Arbitration and Statement
                                of Defense (20 days)
      Appointment of
       Arbitrator(s)

                              Appointment of Arbitrator
     Statement of Claim
          (30 days)

                                      Hearing
    Statement of Defense          (maximum 3 days)


 Further Written Statements
  and Witness Statements        Closure of Proceedings



          Hearings
                                Final Award (1 month)


   Closure of Proceedings



   Final Award (3 months)
WIPO Arbitration and Mediation Experience
                   (1)



• All WIPO clauses separately or in combination
• Contractual and non-contractual
• From court litigation to WIPO submission
• In English, French, German language
• Place of arbitration UK, France, Germany,
  Ireland, Netherlands, Switzerland, US
• Parties from 14 countries
• Including academic and research institutions
WIPO Arbitration and Mediation Experience
                   (2)



• Subject matter includes:
   – patent licenses
   – software licenses
   – trademark co-existence agreements
   – pharmaceutical distribution agreements
   – R&D contracts
   – patent infringement
               Dispute Clause Pointers (1)

• Use model clauses and modify only as necessary
    – do not divide per type of right or type of dispute
• Combine options, including mediation
    – like court cases, many arbitrations get settled
• If arbitration, make it fit (e.g. expedited)
• ‘Institutional’ or ‘ad hoc’?
    – hard to agree on procedure once dispute arisen
    – do you know suitable neutrals
    – which administering institution (do not combine)
              Dispute Clause Pointers (2)

• If Arbitration, choices to be included in the clause:
   – Law governing substance of the dispute
   – Place of arbitration
       • determines applicable ‘arbitral law’
       • relevant for enforcement
       • meetings and hearings may be held elsewhere
   – Number of arbitrators: one or three
   – Language of procedure
• In all procedures, paramount importance of confidentiality
  (covered by extensive WIPO rules)
                                                              WIPO List of Neutrals

     ORGANISATION MONDIALE                                  WORLD INTELLECTUAL
 DE LA PROPRIÉTÉ INTELLECTUELLE

Centre d’arbitrage et de médiation de l’OMPI
                                                           PROPERTY ORGANIZATION

                                                       WIPO Arbitration and Mediation Center
                                                                                               • Database of over 1,000
                     LIST OF MEDIATORS AND ARBITRATORS                                           neutrals from 70
                                  BIOGRAPHICAL DATA
                                                                                                 countries
David W. PLANT, Esq.                                                                           • New neutrals being
215 Little Lake Sunapee Road
New London, NH 03257
United States of America
                                                                                                 added in function of party
                                                                                                 needs
                                                                                               • Broad range of ADR, IP,
Telephone:     (1-603) 526 2653/2655             Facsimile:   (1-603) 526 2654

Date of Birth: April 22, 1931
                                                 E-mail:      DPlantADR@aol.com
                                                                                                 and technical
Nationality: USA
                                                                                                 backgrounds
             EDUCATIONAL AND PROFESSIONAL QUALIFICATIONS

Registered to practice before United States Patent & Trademark Office, 1982;
Licensed to practice in United States Supreme Court, 1968;
Licensed to practice law, N.Y. State Bar, 1957;
LLB, Cornell University, 1957;
BME, Cornell University, 1953.
    WIPO Conference on Dispute Resolution in
      International Science and Technology
                  Collaboration


• Geneva, April 25-26, 2005
• Perspectives from all involved actors on:
   – Trends in Research Collaboration
   – Means of Structuring Collaboration
   – Areas of Potential Disputes (research, exploitation)
   – Dispute Resolution Options, Needs, Experience
   – Dispute Resolution Policies and Pledges
• Visits to PCT and CERN
• http://arbiter.wipo.int/events
    WIPO Internet Domain Name Dispute
          Resolution: the UDRP


• Abusive registration of domain names in violation
  of third party trademark rights
• WIPO-initiated: Uniform Domain Name Dispute
  Resolution Policy (UDRP)
• Globally effective through registration clauses
  .com, .net, .org, .biz, .info; + certain nat. ones
• ‘Administrative’: without prejudice to court
• Transfer directly enforceable by registrar (no
  monetary remedies)
• Cheap and fast online procedure
    WIPO Internet Domain Name Dispute
          Resolution: Conditions


• Conditions for obtaining transfer:
   – Complainant must have trademark rights
   – Domain name must be identical or confusingly
     similar to domain name
   – Registrant has no rights or legitimate interests
     in domain name
   – Registration and use must be in bad faith
• Examples of bad faith purposes: selling to TM
  owner; attracting commercial web visits using
  TM’s reputation
Online Index of WIPO Domain Name Decisions
      WIPO Internet Domain Name Dispute
             Resolution: Results

• Received cases (Dec. 1, 2004): 6,792
   – 12,452 domain names (49 ‘multilingual’ cases)
   – famous marks, SMEs, individuals
   – parties from 120 countries
• Resolved cases: 6,334 (96.1%)
   – WIPO panel decisions: 5,077
   – transfer rate: 82%
   – party settlement: 1,257 cases
• Two months average per case
• 250,000 Center web hits per month
     WIPO Internet Domain Name Dispute
                 Resolution:
        University Claimant Examples

•   universityofnebraska.com
•   oxford-university.com/org
•   oxford-online.com
•   notre-dame.com
•   universityofwyoming.com
•   swin.com.au
•   albertau.com
•   uni-stuttgart.com
•   imperialcollege.com
          New International Domains
            (after .com, .net, .org)


• Unsponsored (.biz, .info, .name) and sponsored
  (.coop, .pro, .museum, .aero)
• Overviews for each on WIPO Center site
• Dispute policy types: UDRP, Start-Up policies,
  Eligibility policies
• Start-Up: over 15,000 WIPO cases (WIPO
  Center reports on .biz, .info)
• ‘ICANN’ intention to introduce further domains in
  2005 (including .post, .travel)
              WIPO Center Information


• General WIPO Center site (including Model Clauses):
  arbiter.wipo.int
• WIPO UDRP Model Complaint:
  arbiter.wipo.int/domains/filing/udrp/complaint.doc
• Email queries: arbiter.mail@wipo.int
• Possibility of subscribing to Center mailing lists
Summary
             Summary/What we told you
• Introduction to WIPO--history, perspective and activity
  areas, including the WIPO University Initiative

• Introduction to the Patent Cooperation Treaty (PCT)--the
  smart solution for seeking international patent protection
• Introduction to Madrid and Hague systems, for
  international registration of trademarks and industrial
  designs
• Introduction to the WIPO Arbitration and Mediation Center
We hope that you now know more about


    What the World Intellectual Property Organization
                (WIPO) Can Do for You


in particular, in the fields of


   Internationalizing Patents, Trademarks and Designs
                              and
Facilitating Resolution of Intellectual Property Disputes
Questions?
               Contact details

Erik Wilbers
Acting Director
WIPO Arbitration and Mediation Center
Phone: 41 22 338 9743
Fax: 41 22 338 8960
Email: erik.wilbers@wipo.int

Matthew Bryan
Director
Patent Cooperation Treaty Legal Division
Phone: 41 22 338 9601
Fax: 41 22 910 0030
Email: matthew.bryan@wipo.int

								
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