Small changes make a big difference in official fees.

Almost one month into 2013, changes in the schedules of fees of domestic PTOs have started. Several Latin American PTO’s have already raised or lowered their official fees for trademark and patent procedures. These changes will impact differently on each country’s IP market, depending mostly on the state of its economy. As we have stated previously in this blog and our recently published book, the IP market is specially sensitive to fluctuations in national and regional economies. Specifically, trademark trends show sensitivity to changes in consumer’s buying power; and patents are specially affected by the strentgh of a country’s productive force.

Colombia.

Changes in Official fees from the Colombian PTO -The SIC- have been mostly favorable for promoting IP in this country, which is in accordance with the country’s pro-IP position.

These are some of the most important changes (Fees are showed in Colombian pesos COP and explained in US Dollars USD, at the exchange rate of the day this post is published):

• Trademark applications stayed the same, at COP$750.000 or aprox. USD$423. However, applications for collective or certification marks was raised in aprox. USD$140.
• Furthermore, given the implementation of the Multiclass trademark registration in Colombia, filing applications in each additional class was lowered from an average of COP$600.000 to a fixed rate of COP$375.000 per additional class. An USD$128 decrease, in average.
• Trademark renewals were increased from COP$410.000 to COP$820.000. An USD$231 change.
• Trademark oppositions, previously at COP$315.000 are now set at COP$325.000. USD$5 of difference.
• Patent applications are slightly down, from COP$590.000 to COP$500.000. An USD$45 change.
• Patent examination is slightly up, from COP$490.000 to COP$530.000. An USD$20 difference.

To review the complete schedule of fees of the SIC, click here (Available in Spanish only)

Argentina.

The Argentinian PTO -The INPI- has raised most of its official fees, but has made no efforts in simplifying their complex schedule of fees (Or the readability of their press releases for that matter). In fact, the INPI has published two separate schedules of fees. The first one will be valid from January 7th 2013 to the 1st of July, And the second will be valid from the 1st of July to the date when new fees are published. The only difference between these two schedules of fees is a notable raise in their prices.

These are some of the most important changes (Fees are showed in Argentinian pesos ARS and explained in US Dollars USD, at the exchange rate of the day this post is published):

• Trademark applications have gone from ARS$400 to ARS$500 in the first half of 2013. This means a raise in aprox. USD$20.
• Trademark renewals were also raised from ARS$480 to ARS$600. An USD$25 change.
• Trademark oppositions, previously at ARS$300 are now set at ARS$400. USD$20 of difference.
• Patent applications are up, from ARS$1000 to ARS$1500. An USD$100 change.
• Patent examination is up, from ARS$1000 to ARS$1200. An USD$40 difference.

To review the complete schedule of fees of the INPI, click here (Available in Spanish only)

Fortunately, the exchange rate of the Argentinian Peso makes these changes not that significant for foreign applicants.

We will continue to post on this blog as soon as new fees for each country are published, and we will update our clients on our schedule of fees for IP procedures in each country.

PTO to PTO Cooperation

Latin American PTOs have spent several years working on two major cooperation agreements, designed to not only speed up procedures but also to increase the reliability of information and to avoid duplicated procedures, especially in patent examinations. The two projects, known as PROSUR and CADOPAT cover almost the entire continent, and have been the central topic of several high profile meetings between the heads of the Latin American PTOs.

PROSUR – Regional Cooperation System on Industrial Property

Nine South American countries belong to this project; namely: Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru, Suriname and Uruguay. The system has been active since August 2011, and its main goal is to become a platform for sharing information from patent examinations between PTOs, therefore reducing the effort of examining the same patent application in several countries.

The project is aimed at easing procedures for creators, entrepreneurs and IP attorneys; and is being funded by the Inter-American Development Bank (IDB). Chile’s PTO, the INAPI, has assumed the presidency of the project. The success or failure of the project is still not clear, since the effects of the agreement will really be visible within the PTOs.

In the earlier stages of this project, possibilities for a regional trademark registry and deeper regional integration of procedures have been discussed. However, these proposals have not been very successful since a regional trademark registry without an integrated regional market would be of little use and could even be unadvisable, since the trademark registry would no longer reflect the reality of the marketplaces.

The project doesn’t look for legal harmonization, but it does create a common platform for systems integration. WIPO has agreed to act as a supervisor of the project, and the experience of the WIPO CASE and the e-PEC (From Brazil’s PTO) platforms is being used for the project.

CADOPAT – Support System for the Management of Patent Applications

This is a web portal created by the Mexican PTO, the Mexican Institute for Industrial Property. It basically shares the information from patent examinations with more than 9 countries from Central America, the Caribbean and Colombia. The Mexican PTO sends its information to Recipient Offices; this means that the information is shared in one direction only, unlike the PROSUR project. Indeed, the CADOPAT system is a unilateral project from the Mexican PTO. It also shares information on searches and other procedures but it is clear that this system has a lot of room for growth.

Current members of the CADOPAT system include Costa Rica, El Salvador, Guatemala, Honduras, Panama, Nicaragua, Dominican Republic, Cuba, Colombia.

WIPO CASE – The Centralized Access to Search and Examination system

The WIPO Centralized Access to Search and Examination (WIPO CASE) system is designed to facilitate the sharing of confidential search and examination information between IP offices, and to help enhance the quality and efficiency of search and examination and minimize unnecessary duplication of work. Using this platform, patent examiners from one group of participating offices can access the collection of patent search and examination reports shared by the office group. According to the Canadian PTO, the launch of the CASE is a significant advancement towards greater cooperation between IP offices in sharing the results of examination work. This will help reduce the time spent on processing duplicate applications filed in multiple offices. The duplication of work is a contributing factor to the growing patent backlog.

The platform is intended for use by groups of IP offices that mutually recognize their search and examination work. Patent documents and data shared though WIPO-CASE can either be hosted by WIPO or the digital libraries of national offices. Initially developed to support the work sharing efforts of the IP offices of Australia, Canada and the UK, WIPO-CASE is now being used or evaluated by other regional groupings of IP offices.

e-PEC – Electronic Platform for Collaborative Examination

Argentina and Brazil have created the e-PEC, which is a trilingual platform allowing the PTOs to exchange information on identical patent applications. The e-PEC aims at enabling patent examiners to perform collaborative examination of patent applications, without the need for physical proximity between the examiners. Thus, the system offers efficiency and quality technical examination which is made in all national institutes. However, to each country remains the ultimate decision on whether or not to grant the patent. Other countries that currently use the e-PEC platform include Chile, Ecuador, Colombia, Paraguay, Uruguay, Surinam and Peru.

Breaking News.

According to the INTA Bulletin, the Argentinian PTO –the INPI– has issued new instructions for examiners when they make objections based of the Nice Classification on Goods and Services. New instructions were delivered through an internal notice of the PTO and introduces a small but significant change in how these objections are managed.

The Nice Classification is an international classification of goods and services applied for the registration of trademarks and service marks. Basically, it creates categories for products and services for the PTOs to use when registering trademarks; therefore, when the trademark registration application is filed the applicant must specify in which categories or “classes” he wants to have it protected. An applicant can request his/her trademark to be registered in one or several classes.

During the registration process before the PTO, an examiner will verify that the application fulfills all requirements before grating the registration. Whenever the examiner finds that a requirement has not been met he will issue an objection.  The applicant will then have to file a response to that objection, which if sufficient to satisfy the examiner’s criterion, will allow for the trademark to be registered. When an objection is not properly answered, the registration will most likely be denied.

The INPI’s new instructions for examiners.

Until now, when the examiner issued an objection based on the Classification of Goods and Services and the response to that objection was not admitted, the PTO rejected the entire trademark application even in those cases where the objection applied only to specific goods or services.

From now on, according to INTA, the PTO has established the following rules:

1. If the examiner objects to the entire description of goods or services in a trademark application and the applicant’s response does not meet the examiner’s criterion, the application will be rejected.

2. If the examiner objects only to some goods or services in the application and the applicant’s response to the objection does not satisfy the examiner’s criterion, the prosecution of the application will continue but the objected-to goods or services will be excluded ex officio.

This instruction for objections based on the Nice Classification is currently the standard for most PTOs, and makes for a smarter way of handling objections to applications.

To learn more about the examination process conducted by PTOs click here.

To learn more about the Nice Classification click here.

Source: Wikimedia Commons

The Argentinian PTO, the National Institute for Intellectual Property –INPI–, has launched a database for patents in the Public Domain, that is, patents that can be freely used without payment of royalties or any kind of official fees.

According the PTO, the database includes more than 60.000 documents, including patents for the food, pharmaceutical and many other major industries. Such databases aim at easing technology transfer from big companies with strong R+D departments, to startups and entrepreneurs, who usually can’t afford the costs related to developing new technologies.

Inventions may enter the public domain because their inventor decided not to patent it, or because the protection of the patent has expired. This allows for anyone to use the invention and even profit from it.

The INPI has setup six offices in Argentina for this database –with four more offices to come–, these offices are located in:

-Tucumán

-Salta

-Paraná

-Córdoba

-Mar de Plata

-Mendoza

This database is a strong incentive for economic growth in the country, and is designed to work alongside the GenIA program for government-promoted startups. It is now up to the entrepreneurs to search the database and identify what inventions are commercially useful.

Similar databases have been created by the Colombian and Mexican PTO, and by the European Patent Office through the Espacenet platform. These databases can be checked at the following addresses:

Colombia Public-Domain Inventions Search

Mexico Public-Domain Inventions Search

Espacenet – European Patent Office

Main search engines in the market.

One of the hottest topics in IP nowadays is the potential trademark infringement when trademarks are used as keywords in search engines. The issue arises when search engines such as Google, Bing or Yahoo! offer the possibility of ‘buying’ trademarks as keywords for showing sponsored results next to their search results.

The keywords work as triggers when you enter a search term, their primary function is to trigger the appearance of the desired search results, but they are also used to trigger the appearance of ads, relevant to the search you have made. For example, when you Google the search term “Sport Shoes”, you not only get the usual search results, but you also get sponsored links to the pages of advertisers that have bought the keywords “Sport” and “Shoes”.

This issue raises many important –even worrying- questions for IP attorneys, advertisers and search engines themselves, and the Latin American market will be no stranger to it. There’s already a case in Argentina which will be discussed further down, and European and American judicial decisions have taken the debate to new levels of complexity.

Is it trademark infringement?

One first question, is the very existence of trademark infringement when trademarks are used as keywords. Trademarks are meant to identify products and services in the market, both to protect the consumer and to incentive market growth by protecting the trademarks as a corporate asset; such use of trademarks is tied to use in commerce, it protects the trademark from being used to identify similar products or services. Trademark protection does not protect the trademark from being used as data, for example, when the trademark is referred in a newspaper, or when a student uses it to provide an example in a research paper.

Therefore, is it use in commerce when the trademark works as a trigger in a search engine? The trademark’s text or design is not shown in the ad, and there’s usually no suggestion of confusion as to the producer of the product or provider of the service. The trademark’s “invisible use” is internal to the search engine. One could say that the trademark is used just as data, and not in direct commercial use.

On the other hand, the trademark’s reputation is built through heavy investment in advertising and as a secondary effect of having high quality products and services. When an advertiser uses a trademark to trigger his ads, he’s undoubtedly benefited by the trademark’s reputation, in which he did not invest any resources. This could be seen as unjust to the trademark owner and as use in commerce.

Who’s liable for the potential trademark infringement?

Assuming the existence of trademark infringement (which most courts have), the question arises as to who should be held liable: the search engine? Or the advertiser?

As to the search engine, it provides the platform for the alleged infringement, for example, through Google AdWords. It also suggests keywords to the advertiser, which may include registered trademarks. However, the search engine is not the one who chooses the keywords, but works following automated processes that process any kind of information without knowing the meaning of its content, or whether the data is a registered trademark or not.

The advertiser is the one choosing the trademark for its use as a keyword. He usually knows when the data he’s entering is registered as a trademark. He’s also the main beneficiary of the ads and of the trademark’s reputation and he’s often a direct competitor to the trademark owner. Nevertheless, the trademark is never shown in the advertiser’s ads, and many times he chooses the keywords that are suggested to him by the search engine.

Is there confusion of the consumer?

Courts have been sharply divided on this issue. On one side, there are those who consider that the consumer is confused by the showing of the advertiser’s ads when he performs a search in the search engine. It’s been said that this is confusion at its most basic and that the consumer may be misleaded as to the origin of the products or services, or as to suggesting sponsorship or economic linkage between the producer and the advertiser.

On the contrary, some courts have considered that the average internet user is an informed one and can easily tell apart search results from sponsored links. Additionally, the courts have argued that the invisible use of the trademark is another reason why a normally informed and reasonably attentive internet user will never be confused.

What’s the current trend in this issue?

There seems to be a progressive trend towards absolving search engines from trademark infringement, and condemning advertisers on grounds of unfair competition only when confusion of the consumer is evident. The most important and recent cases are the Louis Vuitton et al. case before the European Court of Justice and the Rosetta Stone case before the Court of Appeals for the Fourth Circuit of the US. This issue is far from clear and courts are still finding search engines and advertisers guilty of trademark infringement.

What about Latin America?

There’s only one known case where this issue was discussed in Latin America: Organizacion Veraz v. Open Discovery (May 28, 2009 – Federal Court of Appeals, Civil and Commercial Matters), in Argentina.

The Argentinean court seems to not have taken into account the evolution of this topic in European and American jurisprudence, and it reminds of the earlier European decisions on this matter. The search engine’s responsibility was not discussed and the advertiser was condemned on grounds of trademark infringement and unfair competition; and the court considered that the trademark owner had the possibility of demanding the cease of the infringement.

The Latin American emerging market has many internationally known trademarks, and the region is becoming increasingly connected to the internet. Many countries in the region hold high rankings in population v. internet users’ indexes, with Brazil as the 5^th country with more internet users, Mexico as the 12^th, Colombia as the 25^th, Argentina as the 29^th, Peru as the 34^th, Venezuela as the 35^th and Chile as the 40^th. Trademark issues on the internet will acquire importance as these countries’ economies grow and the companies realize the necessity of protecting their IP in the region.

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.