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:

  • form MM1
  • form MM2
  • form MM3

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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Employee’s Inventions: Check-List for Preparing the Initial Meeting with the Patent Attorney

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

Unfortunately, not too many inventors and start-up entrepreneurs recognize that patent attorneys are (a) expensive and (b) substantially reliant on the information they receive.

Since, generally, only a few patent attorneys are exceptionally talented at drawing information out of inventors, the results a patent attorney will get from the meeting with the intentors 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 with a patent attorney:

1. Identity of the Inventor(s)

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

  • Who is or who are the inventor(s), 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 patent application or a utility model application, the identity of the applicant (i.e. name and address of the business/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 to file a request or amend the claims.

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

The following questions should be addressed before the meeting with the attorney is scheduled:

  • 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 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 to 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 meeting 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) which describe 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 meeting 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 invention 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 meeting with the attorney.

  • 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 the Meeting with the Patent Attorney

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

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Search Tools for Patents and Trademarks

The following search tools are provided by national and international patent and trademark offices and can be used free of charge for searching of patents, designs and trademarks:

1. Search Tools for Patentssearch tools provided by patent offices

The following search tools can be used for prior art searches (invalidity searches) and – with limitations – for freedom to operate searches (FTO searches):

  • DEPATISnet (database of the German Patent and Trademark Office)
  • Esp@cenet (database of the European Patent Office)
  • DPMAregister (patent register of the German Patent and Trademark Office)
  • PAIR (patent register of the US Patent and Trademark Office)
  • EPOLINE Register (patent register of the European Patent Office)
  • PATENTSCOPE (patent register of the World Intellectual Property Organization)

2. Search Tools for Trademarks

The following search tools may be used for trademark identity searches:

  • DPMAregister (trademark register of the German Patent and Trademark Office)
  • TESS (trademark register of the US Patent and Trademark Office)
  • TMview (trademarks of all trademark offices participating at national, international and EU level)
  • eSearch plus (trademark and design register of the European Union Intellectual Property Office)
  • ROMARIN (international registrations of trademarks of the World Intellectual Property Organization)
  • Global Brand Database (brand-related searches across multiple collections provided by the WIPO)

Recommendations for the classification of goods and services of trademark applications can be found using the following search tools:

  • TMclass (classification database of the Office for Harmonization in the Internal Market)

3. Search Tools for Designs

The following search tools can be used for design searches:

  • DPMAregister (design register of the German Patent and Trademark Office)
  • DesignView (centralized access point to registered designs information held by any of the participating national offices in the EU)
  • eSearch plus (design and design register of the European Union Intellectual Property Office)
  • Hague Express (international registrations of industrial designs of the World Intellectual Property Organization)

Update (April 8, 2016): All links were updated in order to reflect the recent changes at the European Union Intellectual Property Office (EUIPO).

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