Innovation Europe > News > Innovation EU Vol2-1 > Protecting your international interests

The world is emerging from the worst economic crisis in decades. It is now widely recognised that a focus on innovation promises to facilitate recovery, enabling businesses to take advantage of emerging growth opportunities. Companies that continue to invest in innovation and brand development will be well placed to take advantage of these opportunities as economic recovery gathers pace.

Knowledge is increasingly at the centre of wealth creation and the intellectual property (IP) system is one of the indispensable mechanisms for translating knowledge into commercial assets. The intellectual property system provides a secure environment for investment in innovation and a legal framework for trading intellectual assets. Companies, particularly those seeking to operate in international markets, have much to gain from developing business strategies that are intellectual property and innovation focused.

The World Intellectual Property Organization (WIPO) works with its 184 member states to boost investment in knowledge creation through the development of a robust and sustainable international intellectual property system; one that strikes an appropriate balance between the needs and interests of innovators, investors and society. This fosters further innovation, and its diffusion, in a way that benefits society at large.

The World Intellectual Property Organization is at the service of businesses. The organisation offers a range of cost-effective services that facilitate the acquisition and management of intellectual property assets internationally. Attractive dispute-resolution alternatives to lengthy and costly litigation are also available through its Arbitration and Mediation Center.

The World Intellectual Property Organization also collaborates with national intellectual property authorities across the globe, through its capacity-building programmes, to promote more effective use of intellectual property so that all countries, particularly developing countries, are able to more fully participate in the benefits of innovation and the knowledge economy.

These enhanced programmes are designed to promote widespread awareness of the potential benefits of intellectual property, to ensure broader access to improved intellectual property services and greater respect for intellectual property rights. The aim is to encourage the strategic use of intellectual property to promote economic, social and cultural development.

As the international agency responsible for intellectual property, The World Intellectual Property Organization also facilitates discussions on the future evolution of the international intellectual property system. A core challenge is to ensure that a balanced intellectual property system stimulates innovation and creativity and contributes to market order.

Wipo’s services

In today’s highly integrated market economy, innovators and businesses, large and small, need to be able to secure and manage their intellectual property assets cost-effectively and easily. The World Intellectual Property Organization’s international filing and registration systems are a response to this need. These services – including the Patent Cooperation Treaty (PCT), the Madrid System for the International Registration of Marks, the Hague System for the International Registration of Industrial Designs and the Lisbon System for the International Registration of Appellations of Origin – are designed to simplify the process of applying for intellectual property titles in all countries in which protection is sought.

These “global protection systems” offer cost-effective and smart business solutions for international operators seeking broad-based intellectual property protection. It is a key priority for the World Intellectual Property Organization to ensure that these systems keep pace with the changing needs of the user community – be they right holders, their representatives, intellectual property offices or third parties.

The revenues generated by the uptake of these fee-based services by the private sector account for over 90% of WIPO’s budget.

The patent co-operation treaty

The most widely used of these systems is the PCT, which has a membership of 142 countries. A single international patent application under the PCT has legal effect in all countries bound by the Treaty. PCT applicants receive valuable information about the potential patentability of their inventions and have more time than under the traditional patent system to decide in which of the PCT countries to continue pursuing patent protection. The PCT system consolidates and streamlines patenting procedures, postponing the payment of sizeable costs and providing applicants with a sound basis for important decision-making. The system, first launched in 1978, is designed specifically to promote effective information sharing among patent offices, to avoid duplication of work and to facilitate access to valuable patent information.

Users of the PCT system increasingly take advantage of electronic filing software for the preparation and filing of PCT international applications. The World Intellectual Property Organization and other patent offices have continually sought to streamline, modernise and enhance PCT operations to generate efficiency gains and to better serve the business community.  As a consequence, some 80% of all PCT applications are now filed fully or partially in electronic format. 

The patentscope® search service

Patent information, the technical and legal information contained in patent documents, is a rich source of business information, which may be particularly useful for strategic business planning purposes. Over 1.6 million international applications filed under the PCT are fully searchable using the World Intellectual Property Organization’s PATENTSCOPE® Search Service. Most inventions are disclosed to the public for the first time when the patent (or, where the law so provides, when the patent application) is published. Thus, patents are a means of learning about current research and innovations often long before they appear in the market. Such information may, for example, help a company keep abreast of the latest technologies in a given field, or help in identifying business partners and avoiding infringement of intellectual property rights.

About two-thirds of the technical information revealed in patents is never published elsewhere and the entire set of patent documents worldwide includes some 40 million items. This makes patent information the single most comprehensive collection of classified technological data.

the World Intellectual Property Organization’s PATENTSCOPE® search service has been enhanced to include patent data collections of eight additional patent offices. This means that it is now possible to conduct high-quality, detailed and free-of-charge searches of the patent information of these offices, which include the African Regional Intellectual Property Organization (ARIPO), Cuba, Israel, Republic of Korea, Mexico, Singapore, South Africa and Vietnam. Further enhancements of this data search service are planned this year. The digitisation and dissemination of patent data is important in helping to improve access to business-relevant information and in increasing participation by developing and least developed countries in the benefits of the knowledge economy.

The madrid system

The importance and value of brands in creating business value and promoting commercial success is widely recognised. Strong brands command customer loyalty and premium prices, and contribute to healthy profit margins and growth. Successful brands underpinned by trademark protection are a key to a firm’s sustained financial viability and a signal to consumers of its ability to deliver on a promise.

The Madrid System for the International Registration of Marks offers trademark owners the possibility of protecting a trademark in the territories of 84 contracting parties to the system, by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs). Applicants wishing to use the Madrid system must apply for trademark protection in a relevant national or regional trademark office before seeking international protection.

An international registration under the Madrid system produces the same effects as an application for registration of the mark in each of the contracting parties designated by the applicant. If protection is not refused by the trademark office of a designated contracting party, the status of the mark is the same as if it had been registered by that office. Thereafter, the international registration can be maintained and renewed through a single procedure. In this way, the system provides a cost-effective and efficient way for trademark holders to secure and maintain protection for their marks in multiple countries.

Data concerning international trademark registrations is accessible online using the World Intellectual Property Organization’s ROMARIN database and is free of charge. The ROMARIN database contains a detailed history of all international marks and is updated on a daily basis.

The hague system

To help companies develop abroad, maximise return on innovations, sharpen their competitive edge and to help prevent counterfeiting, the World Intellectual Property Organization offers the Hague system for the international registration of industrial designs. The Hague system is an accessible, easy and economical mechanism that simplifies the design registration process. With a single request, an applicant can register up to 100 industrial designs, in over 75 countries, including the 27 European member states and the 16 member countries of the African Intellectual Property Organization.

The system allows applicants to manage their design portfolio in real time and make changes to or renew registrations easily, thanks to a range of online tools for electronic registration, for automatic fee calculation, for the Hague system database, for the monthly industrial designs bulletin.

The lisbon system

The Lisbon system facilitates the international protection of appellations of origin, that is geographical indications protected in their country of origin because they have come to designate a product with geographically determined qualities or characteristics. At the end of 2009, a total of 891 appellations of origin had been registered since Lisbon system operations began in 1966 – of which 817 are still in force. The World Intellectual Property Organization is currently working with its member states to explore possible improvements to the system.

 

World Intellectual Property Organization arbitration and mediation center

As the leading resource in alternative dispute resolution for intellectual property matters, the World Intellectual Property Organization’s Arbitration and Mediation Center (Center) offers specialised procedures for the resolution of international commercial disputes between private parties. The Center’s procedures are an efficient and inexpensive alternative to court proceedings, especially for disputes potentially involving different jurisdictions. The Center maintains an extensive list of specialised mediators, arbitrators and experts (neutrals) from all over the world who are available to conduct procedures according to the World Intellectual Property Organization Rules. These procedures may take place in any country, in any language and under any law, allowing a great deal of flexibility for the parties.

The Center also works with intellectual property owners and users and their representative organisations in establishing alternative dispute resolution procedures specifically adapted to the particular features of recurrent disputes arising in their specific areas of activity. Streamlined and standardised procedures as well as efficient case administration infrastructure can facilitate productive use of the intellectual property rights involved.

The Center is also the leading dispute resolution service provider for challenges filed by trademark owners in relation to abusive registration and use of Internet domain names, known as cybersquatting. This procedure is conducted online and results in enforceable decisions usually within two months. Since the launch of the World Intellectual Property Organization-initiated Uniform Domain Name Dispute Resolution Policy (UDRP), from December 1999 through December 2009, 17,000 UDRP-based cases have been filed with the Center, covering 31,000 separate domain names. 

The Center is actively engaged with the Internet Corporation for Assigned Names and Numbers (ICANN) in bringing to its attention circumstances relevant to the proper functioning of UDRP procedures. It monitors developments with a view to the protection of intellectual property in the Domain Name System and undertakes policy work in this regard. An important policy focus of the Center concerns ICANN’s intention to introduce new generic Top Level Domains (gTLDs), which calls for the introduction of effective dispute resolution mechanisms in relation to the selection and operation of such domains.

The World Intellectual Property Organization is committed to promoting innovation and creativity. Innovation, which lies at the heart of economic growth, is the essence of value creation in today’s complex commercial environment and intellectual property plays an integral role in its commercialisation. A focus on innovation and proactive intellectual property asset management are essential for all companies seeking to take advantage of all the new opportunities arising from economic recovery.

For more information, visit: Website: www.wipo.org