EPO: Abandonment of Established and Efficient Safety Mechanisms for Users

European Patent Office has a certain affinity to gold

This week we received an official notification of the European Patent Office (EPO) along with the regular statement of our deposit account of 10 February 2014 with the headline “abolishment of the administration fee in case of insufficient cover of account” which at first seemed unusual to us.

Please find a copy of the official notification here.

The headline seems unusual because the EPO, which is sometimes jokingly referred to as the most expensive patent office in the world, is not normally known for a policy of reducing or abandoning any official fees. After a detailed examination of the official notification the above-mentioned “abolishment of the administration fee” turns out to be nothing else than an increase in official fees. This only comes into force when there are insufficient funds in the deposit account of a user.

Up to now, if there were insufficient funds in the deposit account on the day the debit order for a deposit of fees had been received by the EPO, the applicant could still deposit the missing amount within one month after the receipt of an official notification, in which the applicant was informed about the insufficient funds in his account. This had the consequence that the negative legal effects for the non-deposit have not occurred (see items 6.5, 6.6, and 6.7 of the Arrangements for deposit accounts (ADA)).

This was a safety net for users as they still had at least one opportunity to pay the missing amount and balance the overdraft although they did not have enough coverage of their deposit accounts.

The administration fee was moderate with 30% of the missing amount (according to EPO standards).

However, both this generosity and the safety net will be abolished on 1 April 2014. As the reader of the official communication will be informed in a short explanation in parentheses further down the text, there will be no possibility anymore to backdate the time of depositing the fees in the future.

important information

As a result, a loss of rights immediately occurs if there are insufficient funds in the account.

We cannot help feeling that by amending the user-friendly present regulation, the EPO intends to force the applicant into filing a request for a reestablishment of rights resulting in much higher administration fees of at least €580.00. The reply of the EPO to our general enquiry of 20 February 2014 concerning the purpose of these new provisions, however, seems to indicate this kind of motivation.

The EPO is obviously not being aware of or is at least accepting that a reestablishment of rights is a legal remedy which will typically not be available for the professional representatives before the EPO (meaning the law firms). Insufficient funds in the account at maturity of the administration fee are probably difficult to be argued in the context of the “all due care required by the circumstances” criteria, as the EPO believe that they have, at the same time, improved the possibility of an online account tracking (see notification of 10 February 2014 as well as reply of 20 February 2014).

In order to avoid the loss of rights after the new provisions will have come to effect we recommend the following measures:

  1.  Ensure that your deposit account has enough coverage to be prepared for all eventualities that may come up – this should be possible in a time of historic low interest rates. However, this strategy may become very expensive if inflation increases (or a soaring inflation).
  2. Set up a detailed liquidity plan for your deposit account, regular (e.g. daily) inspection of the account status, including comparison with the actual transactions – unfortunately, this includes more working hours which you will have to charge your client.
  3. Generally avoid participating in the automatic debiting procedure (AAD). In addition to your liquidity plan the point in time for transactions can be controlled considerably better through an individual order.

From our point of view the change of the regulations is very unfortunate as the possible ways to pay the administration fees have been very user-friendly in the past. Instructions for payment of fees are often received close to the deadlines. In this case, the representative could be sure that the fee was considered as paid if a request for participating in the ADA procedure has been submitted.

It seems that a service which has proved its worth will be abolished with the intention to generate additional earnings for the EPO (fee for reestablishment of rights).

Foto: © Martin Deutsch, [CC BY-NC-ND 2.0]

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Happy New Year 2014!

We wish a Happy and prosperous New Year to all our readers!


Foto: © matze_ott, [CC BY 2.0]

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OHIM: New Website Goes Online!

OHIM new websiteThis week, a visitor to the website of the Office for Harmonization in the Internal Market (OHIM) will find that both, the functionalities and the design of the website have undergone drastic changes. The OHIM published in a press release some background information on the changes.

The most important information in the press release (which is only available in English language) may be summarized as follows:

“OHIM ́s new website brings a new online look and feel to the Office. The site has been developed in collaboration with users, who have tested its functionalities and provided valuable feedback through the development process.

Over the past months, testing and development on the website have reached a peak. The site now includes several new functionalities which will make the filing process more user-friendly.

The changes of practice are described in the Manual of Trade Mark Practice, which, among others, implements the Common Communication on the Common Practice on the General Indications of the Nice Class Headings, published on 20 November 2013; that entered into force on the date of the go-live of the new website. (…)

The new user area replaces My Page and is a completely secure platform that lets the user monitor the lifecycle of a trade mark or design. It is possible to edit personal details, subscribe to our news feeds, set alerts for renewal or watch other CTMs, and much more. (…)

In addition, the new e-filing wizard will allow non-specialised users to file in five steps, using any of 23 EU languages. The application can be saved at any time during the process. (…)

The new e-filing will also introduce other fresh navigation features, including taxonomy, an intuitive, market-oriented way of classifying Goods and Services, based on the Nice Classification.

It also presents a complete revamp of its navigation system, aimed at specialist and non-specialist users.”

On December 3, 2013, the average loading time of the website from Germany was more than half a minute. Moreover, we found several error loading pages while trying to load subpages. We recommend testing the new website once the teething problems are fixed at the OHIM.

Update 1 (Dec. 6, 2013): When we tried to download an OHIM official communication using the secure customer area (formerly: myPage, the service was apparently renamed), we received an official communication addressed to a different law firm and in an unrelated case. With the second download the correct communication was provided.

Apparently, there are some more problems to be solved with the new OHIM website.

Update 2 (Dec. 6, 2013): We have been informed by another law firm in Munich that e-filing was not possible for at least some hours during the last week. Since a priority date had to be met, the trademark application was finally filed using the classical facsimile transmission.

For this form of filing a higher initial filing fee of 1.050 EUR applies for trademark applications claiming not more than 3 classes (Nice classification). We are now wondering if the “involuntary additional fees” will be reimbursed by the OHIM. The OHIM can hardly burden the applicant with additional fees, if the applicant chose this form of filing only because of an interruption of operation of the OHIM’s electronic infrastructure.

Update 3 (Dec. 10, 2013): Today, the new OHIM website was apparently down. E-filing of trademarks or designs at the OHIM was not possible. The following error page was displayed:

OHIM website down

We hope that the technical problems will be resolved by the OHIM in a timely manner, so that electronic filing of trademarks and designs will again be possible in Europe.

Update 4 (Dec. 18, 2013): According to an official announcement of the OHIM of today, all CTM applications that were filed between October 2, 2013 to October 18, 2013 will enjoy the same fee reduction as granted to any electronically filed application, irrespective from the filing method which was actually used. A screenshot of the announcement published on the OHIM webpage is depicted below:

OHIM accouncement new website

Update 5 (Dec. 18, 2013): Today, our paralegal filed several CTM applications with German as the language of the proceedings. She was quite surprized to find out that capital letters of some goods (in German language, nouns typically start with a capital letter) were automatically replaced by small letters in the request form and the filing confirmation. She was sure that in the input mask the correct spelling of the words had been used.

We called the telephone hotline of the OHIM and were told that other users experienced similar problems. Until the technical problems were resolved, a request for correction of the list of goods and services should be filed as a standard procedure for any electronically transmitted CTM applications written in German language.

It appears to be advisable for the time being to double check the request form and confirmation letter of the OHIM for any errors and immediately complain, if errors are found.

Update 6 (Dec. 28, 2013): It appears that the OHIM corrects the artifacts / errors in the list of goods and services on its own motion and a request for correction is generally not necessary. However, we think that it is rather scary that the official filing confirmation contains artifacts which are somehow (manually?) corrected by the office without a request of the applicant.

Update 7 (July 1, 2014): The technical problems with the OHIM website are apparently not yet fixed. When we tried today to respond to an official communication in our user area, we received the following error message:

error message OHIM

Since technical support was not available at the time, we turned to the classical communication channels (i.e. facsimile transmission) in order to meet the time limit for filing the response.

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Priority Documents: Formalities and Time Limits in Germany and Europe

priority documents of patents, trademarks and designs in Europe and GermanyMany applicants of patents, trademarks or designs in Europe or Germany have questions concerning the formalities and time limits for having the priority claim of a previously filed application confirmed.

The formalities and time limits for submitting either a priority document (certified copy of the prior application) or a simple copy of the prior application differ greatly depending on which patent or trademark office is used for filing the application and for which kind of application the priority is claimed.

The following tables summarize several typical scenarios wherein a priority document or a simple copy of the prior application must be filed within certain time limits, including the legal consequences if the applicant missed the time limits for providing the required documents.

1. German Patent and Trademark Office (GPTO)

application for: required documents: time limits: legal consequence for not filing the document:
patent¹ copy of prior application 16 months from priority date loss of the priority claim, request for reestablishment of rights possible
utility model copy of prior application 16 months from priority date loss of the priority claim, request for reestablishment of rights possible
trademark¹ copy of prior application 2 months from receipt of official communication loss of the priority claim, request for reestablishment of rights possible
design² copy of prior application 16 months from priority date loss of the priority claim, request for reestablishment of rights possible

¹ A certified copy of the priority document is not necessary if a priority is claimed in a  patent or trademark application – cf. BlPMZ 69, 2 and BPatGE 21, 169.

² A certified copy of the priority document is not necessary if a priority is claimed in a  design application – cf. Mitt. PräsDPA Bl. 88, 26 and Bl. 69, 2.

 2. European Patent Office (EPO)

application for: required documents: time limits: legal consequence for not filing the document:
European patent certified copy¹² of the prior application (priority document) 16 months from priority date invitation according to Rule 59 EPC; certified copy may still be filed with a 2 months time limit

¹ The filing of a priority document is generally necessary in accordance with Rule 53 (1) EPC. However, if such a document is already on file, because it has been supplied in the context of Rule 40 (3) EPC or of a request pursuant to Rule 56 EPC, no priority document must be filed.

² In accordance with Rule 53 (2) EPC and the Decision of the EPO president of August 9, 2012 (OJ 2012, 492), the EPO will include a priority document in the file without charging a fee, if the previous application is a European patent application, an international patent application filed with the EPO, a Chinese patent or utility model application filed on or after September 3, 2012, a Japanese patent or utility model application, a United States provisional or non-provisional patent application or a Korean patent or utility model application.

3. European Union Intellectual Property Office (EUIPO)

application for: required documents: time limits: legal consequence for not filing the document:
European Union trademark (EUTM) copy of prior application 3 months from filing the application loss of the priority claim, request for reestablishment of rights possible
registered European community design (RCD) certified copy¹ of the prior application (priority document) 3 months from filing the application examiner will send a letter to the applicant requesting the priority document within a time limit of two months

¹ The priority document may be filed in original or in the form of an accurate photocopy. To the extent that the original document contains a representation of the design in Color, the photocopy must also be in color (decision of the president, No. EX-03-05).

4. World Intellectual Property Office (WIPO)

application for: required documents: time limits: legal consequence for not filing the document:
patent certified copy of the prior application (priority document) 16 months from claiming priority no legal consequences in the international phase
international trademark registration (IR)  – (only data of basic registration) upon filing the request for registration  –
international industrial design registration – (only data of basic registration) 2 months from filing the request for registration  –

Update (March 28, 2016): This article now reflects the changes introduced by the Regulation (EU) No. 2015/2424 of the European Parliament and the Council.

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Revised German Patent Act: More Flexibility for Applicants

Revised German Patent Act entering into force on April 1, 2014A revised German Patent Act will enter into force on April 1, 2014. This has been announced by the German Patent and Trademark Office (GPTO) in a press release on October 24, 2013.

With the revised German Patent Act important features will be introduced which will have a significant impact on both, the prosecution of German patent applications as well as litigation proceedings in patent matters before the GPTO.

Key features of the revised German Patent Act

  • The time limit for filing German translations of the application documents for applications filed in English or French language will be extended from three months to twelve months starting from the priority date. A patent applications for which a German translation is not filed in time, will no longer be deemed to be not filed but rather deemed to be withdrawn. This has the legal consequence that the priority date of these applications may still be validly claimed in later applications.
  • The search report will be extended by a written opinion of the examiner on the patentability of the subject matter claimed.
  • The request for search may only be filed by the applicant. However, the filing of third party observations will still be possible in future.
  • Oral proceedings in the granting procedure will become mandatory, if a request for oral proceedings is filed by the applicant.
  • The opposition period for filing opposition against granted German patents will be extended to nine months starting from the decision to grant.
  • The opposition proceedings will be held in public.
  • The “extension patent” (Zusatzpatent) will be abolished in Germany.
  • Before a German patent can be granted, the designation of inventors must be filed by the applicant.
  • The search fee will increase by 50 EUR.

Most applicants will welcome the amendments introduced by the revised German Patent Act. In particular, the rules for filing the German translations for applications filed in either English or French language will provide more flexibility for the applicants. With the extension of the opposition period the patent practice in Germany will be brought into line with the practice before the European Patent Office. The “extension patent” was hardly ever used by any applicants and will not be missed in future.

The amendments in the revised German Patent Act have been suggested by the GTPO. After approval in the Bundestag (lower house of the German parliament) on June 27, 2013, the Act had passed the Bundesrat (upper house of the German parliament) at second reading on July 5, 2013.

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Amended Rules for European Divisional Applications: Consequences and Strategic Considerations for Practitioners

Amended Rules for Filing European Divisional ApplicationsAccording to an announcement of the EPO, new rules for filing European divisional applications will enter into force on April 1, 2014.

The new rules will have the consequence that for all European patent applications pending on April 1, 2014, European divisional applications may (again) be filed even if the time limits of 24 months according to present Rule 36 (1) a) or b) EPC have lapsed.

Typically, the official communication pursuant to Rule 71 (3) EPC sets a 4-months limit for the applicant to fulfill the formal requirements for grant of a European patent, i.e. to approve the documents intended for grant, to file translations of the claims into the other two official languages, and to pay the official grant and publication fees.

Since the EPO needs at least several weeks to issue a European patent, once the formal requirements are fulfilled, an applicant for a European patent receiving the Rule 71 (3) EPC communication in December 2013 or later can now be quite sure that his patent application will still be pending at the time when the new rules enter into force. This provides him with the opportunity to file new European divisional applications even if the time limits of present Rule 36 (1) a) or b) EPC have already lapsed.

Applicants of European patent applications, for which the time limits of present Rule 36 (1) a) or b) EPC have lapsed, who received a Rule 71 (3) EPC communication before December 1, 2013 and are interested in filing European divisional applications may consider taking suitable measures for keeping the basic applications pending at least until April 1, 2014. Such measure may include for example (a) the filing of a request for amending the claims, the description or the figures or (b) not responding to the Rule 71 (3) EPC communication in time and later filing a request for further processing under Art. 121 EPC.

Moreover, any patent practitioners who have recently carried out freedom-to-operate (FTO) analyses in the European market are advised to review their analyses in view of any pending European patent applications. Pending European patent applications with an early filing date and for which the time limits of present Rule 36 (1) a) or b) EPC have lapsed could now become relevant again in view of the new options for the applicants to file European divisional applications.

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Rule 36 EPC: New Time Limits for Filing Divisional Applications at the European Patent Office

New rule 36 EPC, time limits for filing division applicationsThe European Patent Office (EPO) has finally bowed to the pressure of many applicants for a European patent and will introduce new rules governing the filing of divisional applications. As has been announced by the EPO on October 18, 2013, the controversial Rule 36 EPC will be amended with the effect of April 1, 2014.

According to the EPO’s announcement, which is only available in English language, the Administrative Council decided on its meeting in October 2013 to amend the Rules 36, 38 and 135 of the EPC implementing regulations. Starting from April 1, 2014, it will again be possible to file divisional patent applications as long as the earlier (i.e. parent) patent application is pending. The 24-months time limit for the filing of divisional applications will de facto be repealed.

In addition to the normal filing fees, a further fee will be charged as part of the basic fees for filing any divisional applications of the second and any subsequent generation. In other words, the filing of a divisional application in respect to any pending divisional application will result in an additional fee. This amount of the divisional fee will grow progressively with the number of generations of divisional applications up to the maximum fee amount, which will be announced later in 2014.

Many applicants will welcome the new rules, which make possible again the filing of divisional applications for European patent applications within a much longer time frame, i.e. as long as the earlier application is still pending, thereby providing more flexibility for the applicants.  Since in several EPC contracting states the rules for filing divisional applications are similar to the new rules of the EPC, e.g. in Germany and other countries, the change of Rule 36 EPC will contribute to a harmonization and simplification of European patent law. For law firm as well as for patent departments, it will be much easier to note time limits.

The monitoring of the time limits of Rule 36 EPC has been considered especially difficult and error-prone, because for any divisional application the receipt of the first official communication of the Examining Division of the respective (first) earlier patent application has to be noted. Moreover, there have been discussions about the question, which communications qualify as the first communication of the Examining Division. These difficulties and the confusion should be overcome with the entry into force of the changes in 2014.

The introduction of an additional fee for the filing of divisional applications will be in line with the current practice of the EPO to take influence on the decisions of European patent applicants by demanding high fees for certain requests (see claims fees, page fees, annuity fees etc.). An objective reason for introducing yet another fee specifically for the filing of division applications – which comes on top of the “normal fees” for filing a European patent application – is at least not evident.

Update 1: A summary of the amendments, which have been discussed on the meeting of the Administrative Council of October 16, 2013, has been forwarded by the European Patent Institute (epi) to its members and can be downloaded as a pdf-file.

Update 2: The decision of the Administrative Council of October 16, 2013 has been made available to the public by a press release of October 24, 2013.

The legal consequences for the practitioners and strategic considerations are discussed in another article.

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WIPO MM1 Form: Any Use for this Form?

MM1 form used by trademark applicants from AlgeriaWhat is the WIPO MM1 form recommended by WIPO for  filing international trademark applications under the Madrid Agreement? The information sheet of the WIPO website states the the WIPO MM1 form must be used for international trademark registrations which are governed exclusively by the Madrid Agreement. However, many applicants ask themselves under which circumstances the Madrid Agreement still applies? Are there any cases at all, where the MM1 form has to be used?

According to the Madrid System, requests for international registration of trademarks may be filed under the Madrid Agreement, or the Madrid Protocol or both, the Madrid Agreement and the Madrid Protocol. The applicable procedural regime depends on the memberships of the country of origin where the basic application was filed and the memberships of the designated countries.

A table summarizing the different scenarios and the admissible WIPO forms may be found here.

According to the information sheets, the WIPO MM1 form should be used for international applications, where

  1. the office of origin is the office of a contracting state which is bound by the Madrid Agreement only or
  2. the office of origin is the office of a contracting state which is bound by both, the Madrid Agreement and the Madrid Protocol, and where all designated contracting states are party to the Agreement but not to the Protocol.

While the two applicable cases appear quite clear from the wording, there are in fact only very rare situations where either option 1 or 2 is ever fulfilled, the reason being that only one single country has signed the Madrid Agreement but not signed the Madrid Protocol, which is Algeria (AL).

Moreover, since the filing of an international trademark registration has generally the purpose of obtaining a bundle of trademark registrations covering several jurisdictions, option 2 will almost never apply. Nobody will ever want to apply for an international registration with Algeria (AL) as the sole and only designated state. Simply filing a national trademark in Algeria would be much easier.

This leaves us with option 1: the WIPO MM1 form must be used for an international trademark registration which is based on a basic trademark deposited in Algeria. However, since Algeria has not signed the Madrid Protocol, several economically important countries which are only member of the Madrid Protocol, e.g. European Union and the United States, cannot be covered with such an international trademark registration. The additional filing of national trademark applications will be necessary in this case, reducing the motivation for any applicant to have the basic application filed in Algeria.

We do not have any information about the total number of international trademarks with an Algerian basic trademark, but we believe that the percentage of the total number of international registrations is extremely small.

Therefore, we believe that the WIPO MM1 form might be useful to applicants having a registered Algerian trademark and an economic interest in expanding their trademark protection to specific foreign countries which are also members of the Marid Agreement.

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International Trademark Registration

international trademark registrationThe Madrid System of international trademark registration is a multinational system for simplifying the administrative procedures of extending trademark protection from one originating country to a number of foreign countries. Its legal basis is the Madrid Agreement Concerning the International Registration of Marks (Madrid Agreement) and the Protocol Relating to the Madrid Agreement (Madrid Protocol).

The two treaties, the Madrid Agreement and the Madrid Protocol, make up a system of centralized filing of applications and notification, which help the applicant to obtain a bundle of trademark registrations in separate jurisdictions all over the world.

1. Which countries are covered by the Madrid System?

The Madrid System currently comprises 91 countries which have signed the Madrid Protocol and 56 countries which have signed the Madrid Agreement. Since almost all countries of the Madrid Agreement have also signed the Protocol, the total number of the member states of the Madrid System is 92.

An up-to-date list of the member states of the Madrid System is published on the website of WIPO. This list also includes information about whether or not the contracting states have signed the Madrid Protocol, the Madrid Agreement or both treaties.

A number of economically important countries have not joined the Madrid System. As of October 14, 2013, the following important countries do not participate in the system (in alphabetical order):

  • Argentina
  • Brazil
  • Canada
  • Indonesia
  • Malaysia
  • Papua New Guinea
  • South Africa
  • Taiwan
  • Thailand

2. How to apply for an international trademark registration?

A request for international trademark registration can be filed typically within a time period of 6 months from the filing of a domestic trademark application (basic application).

The request for an international trademark registration can be filed at the national trademark office which is competent for the applicant. The forms MM1, MM2 and MM3 of the WIPO must be used for filing the request.

Which form is to be used will depend on both, the country of the basic application (country of origin) and the designated countries. The following table summarizes the different scenarios and the admissible WIPO form (MM1, MM2 or MM3):

No. Country of origin Designated countries Treaty / procedural regime WIPO form
1 Madrid Agreement only Madrid Agreement or (Madrid Agreement and Madrid Protocol) Madrid Agreement MM1
2 Madrid Protocol only Madrid Protocol or (Madrid Agreement and Madrid Protocol) Madrid Protocol MM2
3 Madrid Protocol and Madrid Agreement Madrid Agreement only Madrid Agreement MM1
4 Madrid Protocol or (Madrid Agreement and Madrid Protocol) Madrid Protocol MM2
5 (at least one country Madrid Agreement only and at least one country Madrid Protocol only) or (Madrid Agreement and Madrid Protocol) Madrid Protocol and Madrid Protkol MM3

For most applicants in Europe, either form MM2 or MM3 will be relevant. The form MM1 is only used in exceptional cases.

The forms may be downloaded free of charge from the WIPO website:

It is important to use the admissible form and language, because otherwise the request for international registration may be refused by the WIPO.

3. Which languages can be used for the international trademark registration?

The language of the proceedings will depend on the applicable procedural regime (Madrid Agreement, Madrid Protocol or both) as well as the preference of the applicant.

Madrid Agreement Applications must be filed in French or English, whereas Madrid Protocol applications may be filed in French, English or Spanish. The filing trademark office may have further restrictions as to the language to be used for the request. Otherwise, the applicant is free to choose the language of the proceedings.

4. Is the appointment of a representative necessary?

For most designated countries, it is generally not necessary to appoint a representative before the national trademark offices. However, if a provisional refusal is issued or if the applicant needs to communicate directly with the national trademark office for other reasons, the normal representation rules apply.

5. What are the costs for filing an international trademark registration?

The costs for filing an international trademark registration will depend on the following factors:

  1. filing date
  2. office of origin
  3. filing office
  4. type of trademark (word mark or figurative mark, colors or b/w)
  5. number of classes to be covered
  6. designated countries

The costs will fall within one of the following categories:

  1. international fees
  2. transmittal fees
  3. additional costs (if applicable).

5.1 International fees

The following international fees will have to be paid in Swiss Franc (CHF) to the OHIM:

  1. basic fee
  2. complementary fees
  3. supplementary fees, including the supplementary fee linked with the irregularity in accordance with Rule 12 (1)
  4. individual fees
  5. supplementary fees of individual fees

If the applicant has a real and effective industrial or commercial establishment, or a domicile, in country qualifying as a least developed country (LDC), the basic fee can be reduced. Currently, the following member countries of the Madrid System qualify as LDCs:

  • Bhutan
  • Lesotho
  • Liberia
  • Mozambique
  • Sierra Leone
  • Sudan
  • Zambia

The International Fee Calculator of the WIPO can be used for calculating the applicable international fees.

5.2 Transmittal fees

A transmittal fee will have to be paid at the filing office for forwarding the request for international trademark registration to the WIPO. This wee is typically due when the request for international registration is filed.

The amount of the transmittal fee depends on the national trademark office used nad will be in the range of from 0 to 300 EUR.

5.3 Additional costs

Additional costs for filing an international trademark registration can be expected for obtaining and filing the (certified) copy of the priority document and, if applicable, costs of assuming representation and other attorney fees.

6. What are the advantages and disadvantages?

The advantage of filing an international registration under the Madrid System includes the potential cost savings over filing individual national trademark application.

The request for registration can be filed at one trademark office and the administrative steps subsequent to registration are also processed in a centralized procedural system with an effect across all designated countries. The centralized system will also save time for the applicant.

A disadvantage of the Madrid System is that the applicant may lose protection of the international registration, if the home application is not registered or cancelled during the first five years after filing the application.

Another disadvantage is that some national trademark offices require more narrow descriptions of the goods and services in trademarks than the office of the home trademark or the office of other designated countries. An adaptation of the list of goods and services to the national provisions is therefore still necessary in some cases.

An international registration can only designate countries which are members of the Madrid System. For all other countries, the filing of national trademark applications is necessary.

7. Summary

The Madrid System is a useful tool for obtaining trademark protection in a significant number of foreign countries.

A careful assessment of the economic needs of the applicant and the costs involved for filing an international trademark registration vis-à-vis the costs for filing individual national trademark applications should be made in each case.

Foto: © fotomek – Fotolia.com

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Inventor Interview: Check-List for Preparing the Initial Interview with the Patent Attorney

inventor interviewMany times, inventors and start-up entrepreneurs realize they need professional help in order to protect their inventions. This is a good realization to have, as early as possible.

Unfortunately, not too many inventors recognize that patent attorneys are (a) expensive and (b) substantially reliant on the information provided them.

Since, basically, only a few patent attorneys are exceptionally talented at drawing information out of inventors, the results a patent attorney gets from the  inventor interview will highly dependent on the efforts, the interviewee puts into communicating with the patent attorney.

The following checklist may be helpful as a guide for inventors to prepare for the initial consultation (inventor interview) with a patent attorney:

1. Identity of the Inventors

The following questions should be clarified in the inventor interview in the context of inventorship:

  • Who is or are the inventors, i.e. who has participated in the implementation of the invention? Please note the full name and place of residence of every inventor. Additionally, it is also advisable to note the phone numbers or email addresses of the inventors. The patent attorney will need this information if any questions arise during the drafting of the application documents.
  • Will the inventors be unavailable for certain periods of time?
  • Who of the inventors have been in an employment relationship at the time of the realization of the invention or before? In this context, it is necessary to clarify whether or not there are obligations to transfer the invention to a company or the employer. This might for example be the case if the invention is not a free invention.

2. Identity of the Applicant

Before filing an application for a patent or a utility model, the identity of the applicant (i.e. name and address of the business or residency) must be known. Only the applicant and his representative will be formally entitled to act in the procedure before the patent office, including for example file a request or amendthe claims.

A natural person or a group of natural persons may be designated as the applicant(s). Alternatively, a legal person may be designated as the applicant. For example, the applicant may be a limited liability company (LLC) or a corporation.

The following questions should be addressed before the inventor interview is carried out:

  • If the applicant is not identical to the inventor: how was the invention transferred to and assigned to the applicant? For example, an employee’s invention may have been claimed by an employer or a company, or the invention was transferred by way of a contract signed after the invention was made.
  • What is the legal form of the applicant? Are there documents available which may document the legal form, e.g. register excerpts? What is the legal address of the company?
  • Is the applicant entitled to any state funding? For instance, in Germany a state funding may be requested in the form of “Verfahrenskostenhilfe” if the applicant is poor, or in the form of a “KMU-Patentaktion”, if the applicant is a small business. Similarly, in the U.S. the applicant may apply for a small entity status or a micro entity status. Are there any documents available, which may prove the eligibility of the applicant to the state funding?

3. Features of the Invention

The technical features and experimental data provided in the inventor interview will be crucial information for the patent attorney for drafting a high quality patent application.

  • Which are the technical features the inventors consider to be essential vis-à-vis the known state of the art? What is the inventive concept?
  • Is the invention predominantly an innovative product (or device) or predominantly an innovative process (or use)?
  • Which advantages or effects are achieved by the invention? Are there any disadvantages of the prior art products or processes, which have been overcome for the first time?
  • Has the invention been implemented? Is a working prototype available? If possible, the prototype should be taken to the inventor interview with the patent attorney. If a prototype is not available: what is the status of the development of a prototype?
  • Are there are documents (technical drawings, descriptions, experimental protocols) describing the invention?
  • Are further experiments being carried out or has the development of the inventive product been finished?

4. Disclosure of Inventors

An invention can only be protected by a patent or utility model application, if the subject matter defined in the claims is both novel and includes an inventive step in view of the prior art.

  • Has the invention been submitted by the inventor as a manuscript for publication (dissertation thesis or scientific publication)? When is the expected publication date? The submitted manuscript should be bought to the inventor interview with the patent attorney.
  • Has the invention been disclosed in the context of lectures or presentations? Are there any lectures or presentations planned, which will disclose the invention? If so, will the auditory be sworn to secrecy. An obligation to confidentiality may for example result from a non-disclosure agreement (NDA) or an employment contract.
  • Has the invention been publicly disclosed or did any third party have access to the invention or the prototype?
  • Are there any prior patent applications, designating the same inventors as the inventors of the present invention? If publications documents are available, they should be brought to the inventor interview with the patent attorney.

5. Prior Art used for the Invention

The inventors should present to the patent attorney the internal or publicly available prior art documents known before realizing the invention. This ex prior facte knowledge can help the patent attorney to answer the question, whether or not the invention was based on an inventive step. The invention includes an inventive step if it was non-obvious in view of the known prior art at the time of completing the invention.

  • Does the invention have any connections to existing products or processes of the applicant? If so, what modifications have led to the successful realization of the invention? When have the existing products or the processes been published and have they been protected by patents or utility models?
  • What alternative sources of information of the applicant are available (websites, presentations)?
  • Has the invention been stimulated by publications of third parties? Which publications have been considered before completing the invention?

6. Prior Art Searches

It is strongly recommended to carry out at least a cursory prior art search before the patent application is drafted by the patent attorney. The knowledge of the most relevant prior art ensures that the invention can be reduced to its essential features, which will form the basis of the claims to be filed.

  • Have the most relevant prior art documents been identified by a novelty search? A first overview of the most important documents can be obtained using search tools of various patent offices. Which databases have been used, by whom and to which extent? Which search strategy was applied?
  • Should a supplementary research be carried out by the patent attorney before the patent application is drafted? A supplementary search will often be useful when the invention is in a technical field, which the applicant has just entered and wherein the prior art is not yet fully known to the applicant or the inventors.

7. Commercialization and Market Analysis

Generally, a patent or utility model application will secure a monopoly to the applicant, which should cover the specific product or process to be marketed. The claims of the patent application should be drafted in a way to make sure that the protection of the specific product or process is maximized.

Typically, patent application will only be filed in countries wherein the the product or process will be marketed.

  • What are the characteristics of the final product or process to be marketed? In which countries will the product or process be offered for sale? Which customers will be addressed?
  • Will the invention be marketed by the applicant or will a patent be licensed out by the applicant?
  • Who are the main competitors in the market? What are the competitors’ products? Is there a high likeliness that any competitors will copy the protected product / the protected process?

Ultimately, the decision as to which features are to be protected and in which countries protection is sought will depend on the economic needs of the applicant. However, a patent attorney may provide in the inventor interview information on the expected costs in the process of obtaining the patent as well as advice on the general enforceability of claims in the respective countries. This information should be taken into account in the process of decision making.

8. Special Case: Inventions in Biotechnology

If the invention resides in the fields of biotechnology, for example relates to genetic engineering, microbiology, protein or enzyme technology, the following further questions should be addressed in the inventor interview.

  • Did the inventors use constructs or organisms which are not publicly accessible in the invention? If so, have the constructs or organisms been deposited in a microorganism bank or will the constucts or organisms be deposited in future?
  • Does the invention include new gene sequences? Has a BLAST analysis been carried out? Are the gene sequences available in electronic form? Note the genebank database accession numbers.
  • Which gene sequences are state of the art or may be found in nature?
  • What are the most relevant domains of the gene or of the polypeptide sequence? For instance, the regions encoding the antigen binding site of an antibody encoding gene sequence or the regulatory regions of a DNA sequence may be relevant.

9. Special Case: Inventions in Chemistry

If the nvention resides in the fields of chemistry, for example relates to a chemical substance, a medical agent or a chemical process, the following further questions should be addressed in the inventor interview.

  • Is the method of synthesis of the compounds generally known?
  • Can the formulas of the inventive compounds be reduced to a lead structure or a chemical substance class, with all or a significant number of its members providing the technical effects of the invention? Which are the substituents or residues usable with the lead structure or chemical substance class?
  • Which substances have been synthesized in particular by the inventors?

10. Summary: Checklist for Inventor Interview

In view of the above mentioned questions the most important facts concerning the invention should be noted before the inventor interview is carried out. A copy of the note can be handed over to the patent attorney during the interview or afterwards.

Most likely, the patent attorney will have further questions concerning specific aspects of the invention while drafting the patent application. Ideally, the contact information of all inventors and the company are given to the patent attorney in the inventor interview.

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