B&R Patents & Trademarks in Latin America

Source: WIPO

On May 7th 2012, the World Intellectual Property Organization -WIPO- has announced the launch of 3 new web-based communication services, designed to improve the management of  international trademark registrations.

The first of these products is the Madrid Real-time Status (MRS):  a tool that provides the status in real time of trademark documents being processed by WIPO.

The second product is the Madrid Electronic Alert (MEA):  a free “watch service” designed to inform anyone interested in monitoring the status of certain international trademark registrations.

And finally, and most notable, is the Madrid Portfolio Manager (MPM):  a web service that allows holders of international registrations and their representatives to access their international trademark portfolios.

Other online services offered include the E-Renewal and E-Payment of fees and a Simulator of the Process for an International Application (Among others)

All of these services make international applications much more user-friendly and help IP Firms to maintain their customers better informed on the status of their applications.

These new web-services are announced shortly after Colombia’s and Mexico’s approval of the Madrid Protocol.

Source: WIPO’s Madrid-related Online Services

Source: Wikimedia Commons

The Office of the United States Trade Representative has released it’s 2012 Special 301 Report.

This document is an annual review of the state of intellectual property rights, protection and enforcement in trading partners around the world. This report is a valuable guide to understand current issues in IP Law and to highlight positive and negative trends on emerging markets.

The report creates a list of priority issues on IP. This year’s  report has mentioned Capacity Building Efforts, focusing on the lack of prosecution and conviction on the ground of IP infringements. The ever growing trends in Trademark Counterfeiting and Copyright Piracy, warning that the markets of pirated and counterfeit goods will soon surpass the sales volume of the licit vendors, and commenting on new ways for transportation and selling of counterfeit products such as the separate shipping of labels and packaging in order to evade enforcement efforts. Piracy over the internet, demanding stronger actions to strengthen legal regimes and enhance enforcement in order to respond to the increased availability of broadband internet connections and the piracy in new mobile devices. The violation of trade secrets and forced technology transfer, expressing the dangers of trade-distortive policies designed to promote ‘indigenous innovation’ through the lack of enforcement of IP rights and the creating of market barriers based on IP disclosures laws. Finally, the report also highlights the government use of software, trademarks and DNS, implementation of WTO TRIPS agreements, WIPO treaties and issues on IP and health policy.

However, this report is notorious for it’s Country Reports, in which US trading partners are sorted into the “Priority Watch List” and the “Watch List”, depending on their progress on IP issues and the vulnerability for US’s IP rights owners in their markets.

As to Latin American countries, Argentina, Chile and Venezuela were listed on the Priority Watch List, alongside Ukraine, Thailand, China and India. Concerns on these countries include inefficiency in Argentina’s judicial system, lack of protection against unfair commercial use and growing copyright piracy on the internet; Chile’s inefficient system for addressing patent issues for pharmaceutical products, unfair commercial use, and to fulfill it’s commitments  under the US-Chile FTA; and Venezuela’s withdrawal from the Andean Community in 2006, and widespread piracy and counterfeiting.

On the watch list, Bolivia, Brazil, Colombia, Costa Rica, Dominican Republic, Ecuador, Guatemala, Mexico and Peru are said to have progressed in protecting IP Rights, but issues on enforcement and internet piracy remain largely neglected.

Read the Full Report here.

Source: Wikimedia Commons

Just days after Colombia’s approval to the Madrid Protocol, on April 25, 2012, the Mexican Senate has also approved the treaty.

The approval, good as it is for the mexican intellectual property market, is hardly surprising, since there is a clear trend in the region in giving increasing importance to intellectual property.  According to José Graca Aranha, from the WIPO, latinamerican governments have previously neglected the issue due to a lack of awareness of the Madrid system and are becoming increasingly conscious about it’s importance for their international competitiveness. Besides, the primary trading  partner for most latinamerican countries, the US, has started demanding their accession to the system -such was the case for Colombia- and is surely advocating for it’s long-time partners, such as Mexico, to update their legislation on the issue.

Mexico’s PTO (IMPI) has celebrated the approval, highlighting the advantages in time and fees for mexican trademark owners, and reminding other benefits of the Madrid system, such as the quick and centralized procedure for trademark registration in over 84 countries and the flexible nature of the treaty.

Even so, the Madrid Protocol’s procedures will not be available for a while, since for the treaty to be in force, the ratified text has to be submitted to the WIPO’s registry of contracting parties in Geneva, and the accesion will be effective three months later. It is said that the Mexican PTO expects to take approximately two years more to enforce the Protocol.

Some worries concerning the Protocol include the incentive for foreign companies to increase their IP applications in Mexico, overwhelming the Mexican PTO  and increasing the times for all procedures, and the increase of litigiation on IP grounds against Mexican companies.

However, there are clear benefits, such as the possibility for big companies to protect their IP in record time and with lower costs, and for small companies it’s easier to compete in international markets due to the reduction of costs and the decrease of labor burden to get IP protection.

As explained by David Rangel Medina, Mexico was a party to the Madrid Agreement, the parallel system to the Madrid Protocol,  but withdrew its ratification in 1943 due to the alleged unbalance between the benefits for mexican and foreign companies, since very few mexican companies registered their IP back then. This unbalance may be repeated, due to the high concentration of mexican exports on the US market, and the neglect of the broader international market, to which the Madrid Protocol aims.

For a lengthier explanation on how the Madrid protocol works and it’s approval process in Colombia, click here.

With the objective of fortify technical cooperation between the institutions, facilitate the obtaining of protection for inventions and reduce formalities and unnecessary procedures. The Mexican PTO has singed agreements, with different countries PTOs, like United States, Dominican Republic and Brazil:

• February 29, 2012. the IMPI has singed a cooperation agreement with the Brazilian Instituto Nacional da Propiedad Industrial (INPI) the “objective of the partnership is to strengthen technical cooperation between the two institutions, including activities such as exchange of experts, organization of training courses and events in industrial property, especially for small and medium enterprises. Another important focus is the use of Geographical Indication.”
• March 07, 2012 A Memorandum of Understanding (MoU), to improve international cooperation between the two nations on issues involving copyright, patents, trademarks and designs, has been signed between the Dominican Republic Intellectual Property Office (ONAPI) and the Mexican Institute of Industrial Property (IMPI). The agreement was by the General Director of the Mexican IMPI.
• March 06, 2012. the Pilot Program for the Patent Prosecution Highway (PPH), between IMPI and the United States Patent and Trademark Office (USPTO) has been extended. “This Pilot Program which became operational on March 12, 2011, provided an expiration date on February 29, 2012.Though, and derived that the use of the PPH has been proved as a successful and functional tool for the users of the industrial property system in Mexico, and that the use of it has contributed to the positioning of IMPI as a modern Institution in line with international trends in IP”

The WIPO: International Patent Filings Set New Record in 2011

The past days (March, 5, 2012) was published by the World Intellectual Property Organization (WIPO) its annual audit of Patent Cooperation Treaty (PCT) filings from the last year. The principal date gave with this publication it is related with the growth of the volume of applications filed in the last year, that represents an increase of 10.7% over 2010 and the most important growth rate since 2005. “International patent filings under the WIPO-administered Patent Cooperation Treaty (PCT) set a new record in 2011 with 181,900 applications – a growth of 10.7“

The fastest growth in PCT applications are from China (+33.4%), Japan (+21%), Canada (+8.3%), the Republic of Korea (+8%) and the US (+8%). The United States remained the top PCT filer with 48,596 applications, but also there are a significant increases in applications originating from Japan and China (Japan and China filed 38,888 and 16,406 applications in 2011, respectively)

In Latin America the leader is Brazil with a 17.2% growth, but also have an important growth, countries like Mexico and Chile. In the next Graphic, we can see the international applications in latin American countries.

INTERNATIONAL APPLICATIONS BY LATIN AMERICAN COUNTRIES
Source: B&R Latina::Trademarks & Patents, elaborated with WIPO information

The Patent Cooperation Treaty (PCT), it is an international system for seeking patents on a global scale. This system was adopted through the subscription of a treaty done at Washington on June 19 of 1970 . Actually 144 countries belong to the union according to the WIPO publication of the World Intellectual Property Indicators . Between these States, we can found different Latin-American countries: like Colombia, Chile, Brazil, Cuba, Dominican Republic, Peru, Ecuador, Mexico, and Nicaragua.

The studied of the statistics available in the Wipos website can us say that since 2005, the sum of the number of PCT applications filed by this developing countries and transition economies has been increasing annually.

Reforms of Regulations under the Industrial Property law of June 10, 2011.

There are two important changes:

1. When filing word marks, it is only possible to include words in the roman alphabet. *,+,&,#,@,/ will not be accepted as part of word marks.

2. When claiming a priority of a foreign trademark application, certified copy of the priority application will be no longer required. It is sufficient to declare application number, date and country of the priority claimed.