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./.. The IP International framework

The IP International framework Seminar on the Role of IP for SMEs Damascus, November 17 and 18, 2008 Marco Marzano de Marinis, Program Officer Small and Medium-sized Enterprises Division World Intellectual Property Organization. ./.. The IP International framework.

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./.. The IP International framework

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  1. The IP International frameworkSeminar on the Role of IP for SMEs Damascus, November 17 and 18, 2008Marco Marzano de Marinis, Program OfficerSmall and Medium-sized Enterprises DivisionWorld Intellectual Property Organization

  2. ./.. The IP International framework The Madrid Patent System Cooperation System(PCT)

  3. Protecting technological innovation: Patents

  4. The functioning of the IP System INVENCIÓN An invention is a new or inventive solution to a technical problem PATENT A patent is an exclusive right granted by the State for an invention that is new, involves an inventive step and is capable of industrial application. It is, generally, valid for 20 years. In return for the exclusive right allowed by the National IP Office, the applicant has to disclose the content of the invention to the public. Invention Display the patent content Patent Exploitation Patent grant - Balance between Patent owner right and the public interest - Economic and Technological Development

  5. Protecting Inventions 1) Patent Protection Requirements: • Novelty, • Inventive step • industrial application • 2) Inventions that cannot be the object of a Patent : • Discoveries and scientific theories; • Aesthetic creations; • Schemes, rules and methods for performing mental acts; • Mere discoveries of substances as they naturally occur in the world; • Inventions that may affect public order,good morals or public health; • Diagnostic, therapeutic and surgical methods of treatment for humans or animals; • Plants and animals other than microorganisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes; and • Computer programs.

  6. PROTECTION IS NOT GRANTED IN THE FOLLOWING CASES: Discoveries and scientific theories d) Schemes, rules and methods for performing mental acts Artistic or literature creations Diagnostic, therapeutic and surgical methods of treatment for humans or animals Industrial application and Technical aspects are missed

  7. ./.. Protecting Inventions 3) Practical aspects: • Patent protection generally length for 20 years • Territorial Protection • Patent protection allows thirds to : • reproduce • distribute • sell • use the invention without having got the authorization by the owner • Where to protect your invention • National route • Regional route (OEB, OAPI,etc..) • International route (PCT)

  8. Few Strategies for Protecting Your Invention on an International Scale • National Route . • Regional Route • Internacional Route, PCT Patent National IP Office EPO Regional IP Office OAPI Nat. Office International Phase Nat. Office Nat. Office

  9. Patent Cooperation Treaty Patent Protection Strategies File Local Application • Once filed, the national application can be followed by one or few applications in foreign countries. The application has to be lodge within 12 month from the first deposal (priority clause, Paris Convention) - Many Administrative formalities depending on the number of countries in which you want to protect your invention - Increase of technical procedures, such as: state of art research - Payment of national patent registration costs (file and translation) within the 12 months allows by the Paris Convention 12 months 0 International application

  10. Few Strategies for Protecting Your Invention on an International Scale • National Route . • Regional Route • Internacional Route, PCT Patent National IP Office EPO Regional IP Office OAPI Nat. Office International Phase Nat. Office Nat. Office

  11. IP Offices • 4 300 € • 14% • Agents/Lawyers • 6 100 € • 20% • Renewal fees • 8 900 € • 28% • Translations • 11 800 € • 38% • Total • 31 100 €8.5 € Day • 100% Average costs: European Patent system, protection within 8 countries for 10 years

  12. Few Strategies for Protecting Your Invention on an International Scale • National Route . • Regional Route • Internacional Route, PCT Patent National IP Office EPO Regional IP Office OAPI Nat. Office International Phase Nat. Office Nat. Office

  13. Patent Cooperation Treaty Via I 20 30 National Phase International Publication (Month 0) 0 12 16 18 File Int . search 22 (optional) File demand for Int.. preliminary File Local PCT examination report & Application Application written 28 (optional) File demand for Int.. Opinion on the state of the art preliminary report on patentability Patent Cooperation Treaty 30 National Phase Via II CM Intro– 1

  14. Patent Cooperation Treaty PCTMembers More than 130 Members countries, www.wipo.int/pct

  15. Patent Cooperation Treaty PCT advantages • 1 Unique administrative procedure: file lodges by the national or resident (physical or legal entity) of one PCT members, -- application extendable to 133 countries -- 1 set of fees • 1 International search report + written opinion on the existing state of art • 1 International publication • 1 international preliminary examination + International preliminary examination report on patentability (optional) • Extension up to 30 months (instead of 12 months as foreseen by the Paris convention) for protecting the patent internationally • The filing of national: fees and patent application, are foreseen from month 30 and only if the owner considers appropriate proceeding in the international registration * in the PCT procedure WIPO does not allows any patent. It simply facilitate invention protection world wide through national IP Offices

  16. TM international protection of TM: The Madrid System

  17. Nat. Office International Phase Nat. Office Nat. Office Few Strategies for Protecting Your TM on an International Scale • National Route . • Regional Route • Internacional Route, Madrid system TM National IP Office Regional Office Regional IP Office

  18. Madrid System Madrid System • 1 system two treaties : -- Madrid Agreement (1891) -- Madrid Protocol (1989) • The main advantage of the Madrid system is of granting the registration of TMs in about 80 member countries • By using 1 unique procedure • 1 unique administrative file management • 1 language (EN, FR, ES) • More than 135.000 users; 412,000 international registration in force = 4,800,000 National TMs • Extremely useful for SMEs since costs are reduced of 10/20 times

  19. ./.. The Madrid System (data 2008: about 80 members)) Madrid System Arrangement 11Protocole 21 Arrangement and Protocole 45

  20. Madrid System ./.. Madrid System Madrid Agreement (1891)Madrid Protocol (1989) 77 51 27

  21. Madrid System The Madrid system and its functioning Main Aspects • 1 application, • 1 language (FR, EN, ES), • 1 set of fees, • Lodged by a natural or legal entity, having an: • business establishment • domicile • nationality • 1 unique system of management: • National Office, • Formal examination, • registration, • notification and publication, • Possible refusal by contracting parties

  22. Madrid System data 2003 ./.. Madrid system costs simulation

  23. Other Countries1303=6.0% Austria723=3.3% Sweden355=1.6% Spain914=4.2% Other DevelopingCountries197=0.9% Switzerland2 204=10.1% China413=1.9% Other Countries in transition1484=6.8% Madrid System data 2003 Germany4 999=22.9% France3 281=15.0% Denmark347=1.6% Czech Republic355=1.6% Turkey408=1.9% Italy1 806=8.3% Russian Federation355=1.6% Benelux2 104=9.6% United Kingdom599=2.7% Madrid System’s Main users

  24. N. Of Owners 10490021408455524518131126 TM grouped by owners 1-2 marks3-10 marks 11-100 marks101-500 marks > 500 marks Total 80.00%16.33%3.47%0.19%0.01%100.00%  Owners > 500 marks5% 101-500 marks 11% 1-2 marks32% Registrations more than (400,000)  11-100 marks27% 3-10 marks 25% Registration by owners’ categories

  25. Thanks! OMPI, PMEs website: www.wipo.int/sme marco.marzano@wipo.int

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