Monday, 24 July 2017

Patent Prosecution Highway: The Justice ‘Speedy’ League

This month Colombia joined the network of the Global Patent Prosecution Highway (GPPH). This network has 22 members from Europe, North America, Asia, Oceania, and now Latin America. From that side of the pond United States and Canada are members [full list of members can be found here].
Patent applicants who have obtained protection in Colombia may request that the same application be reviewed in any of the other members that are part of the GPPH. This global pilot was launched back in January 2014 allowing ‘patent applicants to request accelerated examination at any of the offices involved in the pilot if their claims have been found to be acceptable by any of the other offices involved in the pilot’.

Upon the advantages published by the Superintendencia de Industria y Comercio (SIC) are:

  • Offices involved in this type of agreement are recognized as their ‘peers’: this is so because they have a harmonious patent law (patentable subject matter, substantive and procedural law are similar).
  • Rely on quality systems that guarantee the Seriousness of its acts (ISO 9001).
  • For applicants there is a greater chance that the patent will be approved because it has already been approved under same procedures and techniques; and the procedure is run in less time and there would be less transaction costs.

Latin America is part of some PPH. For instance Mexico has a PPH with the European Patent Office (the only office in Latin America to have such agreement with the EPO), with Japan (JPO) and has another one with the USPTO. The National offices of Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru and Uruguay have also launched a PPH pilot program among themselves (these countries are members of PROSUR). Brazil has one with Chile, and another one with the USPTO. Peru and Spain do have a PPH in place.

While superman is not involved, the league still flies!

Source SIC.

Sunday, 23 July 2017

Global database: Chile is in!

The cooperation agreement between the World Intellectual Property Organization (WIPO) and the Chilean National Institute of Industrial Property (INAPI) makes Chile the first South America country to participate in the Global Brand Database. Mexico has also an agreement with WIPO and making Chile the second Latin America country to do so.

This ‘Global Brand Database’ as the name implies, is a database (with open access and free of charge) providing access to trademark data from 33 countries plus data from the European Registry and the international Registry kept by WIPO. As of today WIPO Global Brand Database has 30,082,405.

By joining this system Chile is incorporating data corresponding to approx. 500,000 applications. Its counterpart Mexico has over 1,200,000.

INAPI notes that it will update the data every month.

Saturday, 22 July 2017

PROSUR lanza nueva plataforma web con herramientas que facilitan la tramitación de marcas y patentes


A siete años de su creación, PROSUR puso a disposición de la comunidad, una renovada plataforma online (www.prosur.org) que entrega en forma gratuita herramientas digitales para buscar, analizar y gestionar de mejor forma los derechos de propiedad industrial y promover sus beneficios. 

La iniciativa surgió como un trabajo conjunto de 12 países, en el marco del sistema de cooperación de PROSUR, que incluye a: Argentina, Brasil, Chile, Colombia, Ecuador, Paraguay, Perú y Uruguay, Costa Rica, Nicaragua, Panamá y República Dominicana.
El nuevo sitio fue presentado en Panamá por Luis Jiménez S., presidente Pro Tempore de PROSUR, en el marco de la reciente reunión del comité directivo. La instancia que además de contar con la presencia de los máximos representantes de las oficinas de propiedad industrial de Latinoamérica, tuvo especial relevancia debido a la participación del Director General de la Organización Mundial de la Propiedad Intelectual-OMPI Francis Gurry y el ingreso oficial de las oficinas de Nicaragua, Panamá y República Dominicana.

La nueva plataforma de PROSUR está disponibles en los idiomas español, portugués e inglés y es adaptable a todos los soportes (computadores y móviles). Entre sus novedades, destacan:

- Comunidad POSUR: espacio de encuentro y conversación entre todos quienes se desempeñan habitualmente en torno a la propiedad industrial a nivel mundial, a través de la cual se puede acceder a la experiencia y el intercambio de información entre los miembros, estableciendo redes de colaboración e innovación.

- Clasificador de productos y de servicios de marcas: permite buscar términos y su respectiva clase(s) (de Niza), con la finalidad de conocer la correcta descripción de los productos y/o servicios asociados a una marca. La búsqueda se efectúa en un catálogo de términos que las oficinas del PROSUR han puesto a disposición de los usuarios.

- Buscador de dominio público: ofrece búsquedas en bases de datos de todas aquellas patentes cuya protección ha expirado; o se abandona en ese país; o en un país en que no se haya otorgado; o en el que no tenga efectos jurídicos y por tanto han pasado a formar parte del dominio público. 

- Mapa estadístico: contiene información de marcas, patentes e indicaciones geográficas, para identificar de forma rápida los mercados relevantes para la presentación de solicitudes. 

- Acuerdo piloto sobre Procedimiento Acelerado de Patentes (PPH): hace más expedito el procedimiento de examen de patentabilidad de las oficinas, y reduce los costos asociados, evitando dobles esfuerzos en acciones administrativas, búsquedas y exámenes de patentes.

Este hito se traduce en un importante avance en materia de cooperación entre los países que integran PROSUR, a fin de potenciar el uso de la propiedad industrial, en todas sus dimensiones, como motor de desarrollo regional. En definitiva, se busca que los ciudadanos de los países participantes de PROSUR y de países que quieran relacionarse con la región, puedan beneficiarse de un mejor sistema regional.


Fuente: Constanza Zülch (Encargada comunicaciones INAPI)


Tuesday, 18 July 2017

Free Webinar: Protecting your Brand Abroad: Understanding the IP Landscape of Latin America


Webinar: Protecting your Brand Abroad: Understanding the IP Landscape of Latin America
Speaker: Patrica Covarrubia

Date: Thursday, July 20, 2017

Time: 15.00h (Brussels time)

Location: Online

Admission: Free (registration required here)

Language: English

Eligibility: Small and Medium-sized enterprises (Less than 250 employees) or SME intermediary associations from the European Union only

This webinar aims to give an overview to the European SMEs on how they can best protect their brand on Latin-American markets. The speaker will provide practical information on how to register, protect and enforce trade mark rights in Brazil, Colombia or Mexico, among other regions and how to effectively protect the logo of the company or the product.

SMEs will also be provided expert tips and watch-outs to bear in mind before, during and after entering the markets in those territories.

Moreover, any queries that the EU companies might have, shall be answered by the experts during the training session.

During the webinar you can expect:

- Detailed overview of trade mark registration, protection, and enforcement in Latin America 
- Overview of various possibilities of protecting the logo of the company or the brand
- How to benefit from the Madrid System
- Various case studies involving EU SMEs experiencing and overcoming issues with brand protection in Latin America.

About the Speaker: Ms. Patricia Covarrubia Patricia Covarrubia is a Venezuelan qualified lawyer, an academic, author, and commentator in Intellectual Property Law. She is Lecturer in Law at the University of Buckingham, UK. She has an LLM in European Law from Southampton, UK and a PhD from Brunel, UK. From 1993 to 1999 she worked as a lawyer in Venezuela. 

Dr. Covarrubia is manager and blogger in IP Tango (Intellectual Property weblog – Latin America). Her ongoing research interests and written publications include geographical indications and indications of origin, compulsory licenses in the pharmaceutical industry, genetic resources, trade marks, free trade agreements, and the protection of traditional knowledge. 

Latin America IPR SME Helpdesks is a European Union co-funded project that provides European SMEs with free, practical, business advice relating to IPR in Latin America. 

Source: Latin America IPR SME Helpdesk

Thursday, 13 July 2017

Brazil: refining procedures

On July 11, INPI Resolution 199/2017 brought to the public a new examination guidelines for the registration of industrial property license agreements and registration of integrated circuit topography, technology transfer (TT) and franchising.

The new guidelines are in line with the amendments implemented through Instrução Normativa No. 70/2017 (effective since July 1st). According to the guidelines the process of registration is simplified, and also, it warranties the legal autonomy to the parties' will.

Chapter I covers ‘agreements signed or registered by INPI’. Some of the eye catching are three since they were not regulated before:
INPI will register: a) ‘Know-how’ contracts which includes the acquisition of knowledge and techniques not covered by IPRs or the provision of technological information for the production of goods and services [before this new Norm INPI neither annotated agreements nor issued certificate of registration for the license of non-patented proprietary technological knowledge]; and b) The contract or invoice for the provision of technical and scientific services that stipulates the conditions for obtaining techniques, planning and programming methods, research, studies and projects for the execution or provision of specialized services.
Technology export contracts are exempted from registration.

Chapter II covers ‘the application for registration or registration of contract’. Chapter III covers ‘the parties to the contract’. Of relevance is: ‘The contract must identify the parties to the contract and their legal representatives, name or denomination and the complete addresses, including, city, federation and the country’. In relation to parties domiciled abroad, they ‘must constitute and maintain a duly qualified attorney domiciled in the country, with powers to represent it administratively and judicially, including to receive summonses.' Note that contracts (license/assignment) regulated by this chapter will be granted by way of title and to be submitted to INPI. Chapter IV, V and IV cover 'the  terms', the certificate' (specifications that the certificate should contain), and finally the 'general and transitional provisions' respectively.

Source INPI.

Wednesday, 12 July 2017

'Desperados' for Tequila?

For some years, the Mexican producers of tequila have manifested disagreement with the use of the word ‘tequila’ in ‘Desperados’ one of the brands of the company Heineken Enterprise. ‘Tequila’ is an alcoholic beverage native from Mexico, specifically, from the region comprising part of the states of Jalisco, Nayarit, Tamaulipas, Michoacán and Guanajuato. It is obtained by distillation and rectification from the agave tequilana blue variety or tequila agave. References to its production date back to 1943, but the efforts to secure legal recognition started in the 1970s after some countries began to produce spirits to whom they called ‘tequila.’ As a result, in 1974 the appellation of origin Tequila was declared.

For its quality and particular flavour, the tequila has earned international recognition as a symbol of the Mexican cultural identity. Since 1993, the Mexican Tequila Regulatory Council (Consejo Regulador del Tequila – CRT) has been the organisation dedicated to safeguard the appellation of origin, and to verify and certify as to whether or not a product complies with the Mexican Official Standard of Tequila (NOM-006-SCFI-2012).

The question in dispute is that the beer ‘Desperados’ does not contain tequila but ‘flavours’ of which 75% is tequila, and yet it uses the word tequila in its trademark. It is noteworthy that such word is highlighted in the trademark because of the high-contrast made by its red letters over the beer’s yellow colour.

Two weeks ago, CNN in Spanish reported the disapproval of the tequila industry with this situation. According to the news agency, the CRT considers that the use of ‘tequila’ in the trademark misleads consumers as the beer Desperados neither has tequila nor is a CRT’s certified product. Consequently, the CRT affirms that ‘tequila’ should no longer be used in the trademark, or that tequila must be one of the ingredients of Desperados. In the same news is informed that a representative of Heineken stated that the flavouring utilised for the production of the beer contains genuine tequila, which is purchased from a member of the CRT.

Apart from the appellation of origin achieved in 1974, in June this year, under the registration number 5225126 the United States Patent and Trademark Office - USPTO granted the Certification Mark ‘Tequila.’ This was the result of a joint action of the tequila industry and the Mexican Government. It would be expected, thus, that the concession of this trademark is presented as another argument against the use that Heineken has been making of the word tequila. Nonetheless, it is important to highlight that Heineken has also achieved recognition of the brand Desperados by the USPTO.

In this state of affairs, no end to this dispute is in sight. However, there is no doubt that whatever its outcome may be; this case is of relevance for trademark law.

Post written by Florelia Vallejo Trujillo
Assistant Professor, Universidad del Tolima, Colombia
PhD Candidate University of Nottingham, UK

Tuesday, 11 July 2017

Peru: Electronic Publication System for IP Applications is at your service

On 28 June this year, by means of the Supreme Decree No. 071-2017-PCM, the Peruvian Government approved the implementation of the Electronic Gazette of the National Institute for the Defence of Competition and Protection of Intellectual Property (INDECOPI). According with the Decree’s Complementary Transitional Provision, in this Gazette will be published: ‘(t)he trademark applications and the other industrial property elements included within the scope of the Decision 486, Common Industrial Property Regime governing Bolivia, Colombia, Ecuador and Peru, which are at the stage of issuance of the order of publication (…)’ <own translation>. This means that, from now on, all the applications for the different kinds of industrial property covered by the Andean Decision 486 will be published in the Electronic Gazette of the INDECOPI. In addition to trademarks, Decision 486 regulates patents, utility models, layout-designs of integrated circuits, industrial designs, trade names, labels or business signs, geographical designations (appellations of origin and indications of source), and trade secrets.
 
The extract of the publication includes:
a.    The application number and, if it be the case, the date of submission of the application;
b.    Name and country of the applicant; and,
c.    Complete date of any priority claimed, or a mention if a right of pre-emption has been exercised.

Depending on the type of the intangible good requested for IP protection, among others, the publication may also include the name and description of the patent, the description and/or representation of the trademark, the indication of the class and the products or services covered by the sign, and the geographical area covered by the geographical indication.

The implementation of this system represents a substantial step forward in the administration of IPRs in Peru due to its great potential for time and cost reductions. On the one hand, electronic publications can undoubtedly be done more efficiently than paper publications. Moreover, the legal terms for the IP administrative actions and procedures could be reduced, as this system operates on a daily publication basis and the legal terms start counting since the business day following the publication, thus, this would speed up the process. Consequently, as the time for the publication is reduced the time for granting an IP is reduced as well. On the other hand, before this, IP applications were published in the Official Journal el Peruano, which unlike the Electronic Gazette of the INDECOPI, is not specialised and is not free. However, unpublished applications with publishing orders issued before the Supreme Decree entered into force, can be published in either the Official Journal or the Electronic Gazette.

Given the above, the change of the publication system, from the Official Journal el Peruano to the Electronic Gazette of the INDECOPI, will certainly be of benefits to users of IP in Peru.

Post written by Florelia Vallejo Trujillo
Assistant Professor Universidad del Tolima, Colombia
PhD Candidate University of Nottingham, UK

Monday, 3 July 2017

The Pendency of Brazilian Patent Application and What You Can Do About It

Image result for brazilBrazil is notorious for the long pendency of patent application. Currently, the average amount of time for a typical Brazilian patent to be issued with two office actions is more than 12 to 14 years. Therefore, the majority of Letters Patent are automatically issued with the minimum 10-year term of protection counted from grant as provided for in Section 40. As Brazil takes long-term steps to reduce the pendency of its patent applications in the short-term applicants can, in some cases, seek expedited grant.

The primary reason for the long pendency is a sustained increase in patent filings in Brazil over the years, which the federal government did not follow with investments in human resources.

Aiming at a reduction of said pendency to levels similar to other large economies, the National Institute of Industrial Property has reacted with rapid-results initiatives like:

  • a streamlined review of formal aspects during the admissibility examination of BR Phase Entries and not PCT applications within the period January 1, 2013 - December 31, 2016, as provided for in Normative Instruction #02/2017 of June 6, 2017;
  • the e-filing system already in use for some years, which has extended to all services with the Brazilian PTO;
  • the shelving of applications with unpaid maintenance fees before the examiner takes the file for examination; and
  • more examiners working in a home office and new examiners trained “on-the-job."

This author does not expect the new processes to have an immediate impact on pendency. While the new rules take effect, certain applications can jump to the front of the line and begin examination in the short run instead of languishing for what can be 8 -10 years to start the examination process in the ordinary course. Applicants are eligible for an expedited examination for any of the conditions set henceforth and provided that examination has not begun.

1. Expedited Examination for Infringed Claims
In cases where claims are being infringed, the applicant can file a petition for expedited examination. The petition must include evidence of infringement that takes place in Brazil, and a notarized copy of the cease-and-desist letter served to the infringer. The results of the Board of Examiner’s review of the evidence and allegations by the applicant are published in the IP Electronic Bulletin.
2. Expedited Examination for Patents Needed for Financing
Expedited treatment can be obtained in cases where obtaining a patent is a condition to receiving financial resources from an official credit institution;
3. Senior Status or Illness
Expedited status can be obtained if the Applicant is a natural person over 60 years of age or if the applicant suffers from certain diseases or has certain mental illnesses.
4. Green Technology
Image result for green technologyInitially a Pilot Program in 2012 and granting patents with substantive examination within 2,5 years in average, the program became permanent on November 5, 2016 (see early post here) . Patent applications directed to environmentally beneficial technologies are afforded expedited examination. The definition of Green Technology is relatively broad and includes technologies related to Energy Generation; Energy Storage; Energy Efficiency; Energy Infrastructure; Transportation; Water & Wastewater; Air & Environment; Materials; Manufacturing/Industrial Agriculture; and Recycling & Waste Management, Transportation, Alternative Energy, and Agriculture. Rules have been promulgated defining "Green Technology" in more detail.
5. Oil and Gas - PPH-BrPTO-USPTO pilot program
Oil and Gas related inventions claiming the US or BR priority qualify for expedited examination under a pilot program when the applications relate to oil prospecting, refining, transportation and other related oil and gas techniques. (IPC B01, B63, C09K8, C10, E02, E21, F15, F16, F17, G01). This pilot program is valid until January 11, 2018, and is limited to the first 150 patent applications.
6. IT and Telecommunications and other akin technologies - PPH BrPTO-JPO pilot program.
Inventions relating to IT, telecommunications, semiconductors, computer and audiovisual technologies, certain electric machines, and other akin technologies claiming the earliest priority to JP or BR may qualify for expedited examination. The pilot program is limited to 200 patent applications and valid till April 1, 2019.

Except for pharmaceutical products and processes - which seemingly have been left out for raising too much controversy between the BrPTO and ANVISA (Brazil National Health Surveillance Agency) - the aforesaid initiatives are cutting down the patent pendency. For applicants in certain fields of technology defined by the claims, there is now a window of opportunity to expedite applications.

Post written by
Claudio Szabas, Director
Dennemeyer & Associates Propriedade Intelectual Ltda.
Av. Nilo Peçanha 50/1516, 20020-906 Rio de Janeiro RJ Brazil
Mobile: +55 21 98171 7076
Phone: +55 21 2215 9550
Fax: +55 21 2210 1042
E-mail: cszabas@dennemeyer-law.com
Website: www.dennemeyer-law.com