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Archive for February, 2011

How can I register my trademark internationally?

There are three types of international trademark applications, Community Trade Mark, Madrid System, and direct filing in individual countries.

A Community Trade Mark (CTM) application is a single application that covers the European Union (EU).  The EU has 27 member states which includes Austria, Benelux, Belgium, The Netherlands, Luxembourg, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, the Slovak Republic, Slovenia, Spain, Sweden, and United Kingdom.  The CTM gives the proprietor uniform trademark rights in all of the member states or those selected member countries based on the needs of your company.  A CTM application is filed with the Office of Harmonization in the Internal Market (OHIM).

The Madrid System was established by the Madrid Agreement in 1891 and the Madrid Protocol of 1989.  The Madrid System allows you to file a single application, in one language, using one currency, to seek protection in more than 80 member countries or designating certain member countries based on the needs of your company.  The member states and organizations belonging to the Madrid Agreement and the Madrid Protocol are listed at the following link:  http://madridprotocol.info/memberstates.html A Madrid System application is filed with World Intellectual Property Organization (WIPO).

You can also file trademark applications directly in certain countries.  This is an option to consider when it proves more cost effective than a CTM or Madrid application or you wish to register your trademark in a country that is not a member of the EU or the Madrid System, such as Canada, Mexico, New Zealand, Israel, India, or United Arab Emirates (UAE).

The cost for these international trademark applications vary, depending on the type of coverage you are seeking.  To obtain more information on the different types of international trademark registrations, we recommend speaking to your Trademark Attorney.  If you do not have a Trademark Attorney, we are located just outside of Downtown Los Angeles in the City of Pasadena, California.

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Posted in International Trademark Pitfalls, Trademark Pitfalls, Trademark Registration Errors, Uncategorized | No Comments »

Which countries are members of the PCT?

The Patent Cooperation Treaty (PCT) allows anyone who is a national or resident of a PCT contracting State to seek patent protection for an invention simultaneously in each of a large number of countries.  The PCT currently has 145 member countries, three of which are pending entry into force**.  Those members countries are:

PCT Members

Of those countries, Argentina, Holy See, and Iran are pending entry into force.

Though these countries are members of the PCT, the patent itself is not issued until a National Phase application is considered in each of the desired countries.

 

*as of the date of this post

** The Treaty shall enter into force three months after eight States of the member country have deposited their instructions of ratification or accession, provided that at least four of those States fulfill the requires of Article 63 of the PCT.

Posted in International Patent Pitfalls, IP Pitfalls, Patent Pitfalls, Uncategorized | No Comments »

Preserving Your International Patent Rights Via the PCT

If you want to obtain a patent in a country other than the United States there are several paths you can take to achieve this goal. They are as follows:

  1. You can file directly in the country of choice
  2. You can file a PCT application and then later designate your countries of choice so long as that country is a PCT member
  3. You can file a utility patent application in the U.S. and within 12 months from filing do either items 1 and/or 2

Each of these options has pros and cons which need to be carefully considered. The most important consideration is timing. Failing to take whatever steps are needed within the time frames required to preserve your international filing rights causes these rights to be irretrievably lost. If a patent application is already pending in a PCT member country (of which the US is one), you must file the PCT application within one year from the filing date of the priority application. The PCT is often favored as an avenue for preserving international filing rights because it enables applications to wait up to 30 months from the initial priority date dates before a decision must be made about what countries to seek patent protection in.  The timeline below illustrates how the PCT process works.

The advantages of the PCT are that it:

1. Enables the applicant to delay the expense of filing international patent applications

2. Provides an examination process that enables the applicant to assess the likely patentability of the idea before further examination costs are incurred.

3. Provides the applicant with a way to amend and modify the application to put it in good form for examination before any examination occurs

4. Most countries of interest are PCT members so by filing a PCT application you preserve rights in numerous countries for at least 30 months and longer if you then go through the examination process in that country.

There are many nuances that go into an international filing decision and if you are considering how to protect your invention internationally you should get in touch with a qualified patent attorney.

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How can I get my copyright registration quickly?

Special handling is available to copyright applicant’s who require their application to be processed in an expeditious manner.  When selected, the registration can be received in as early as five (5) business days. The service is expensive (currently $760.00 per claim) and there must be a legitimate need for the expedited service.  There are only three circumstances under which the U.S. Copyright will grant special handling of an application:

1) Pending or prospective litigation

2) Customs matters

3) Contract or publishing deadlines that necessitate the expedited issuance of a certificate

In some jurisdictions a Copyright Registration is required before you can initiate suit in Federal Court. California only requires that the Copyright application be pending to initiate suit but this is not the case in all jurisdictions.

For further information on special handling go to the website for the U.S. Copyright Office www.copyright.gov or contact your Copyright Lawyer.  We are located just outside of Downtown Los Angeles in the City of Pasadena.

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