Based on its many-year experience in the international patent market, Patentniy Poverenniy LLC has a unique opportunity to offer its clients an individual strategy of international patenting, technology transfer, registration of trademarks abroad, invalidation of patents, support in patent infringement litigation anywhere in the world, registration and protection of all types of intellectual property at national and regional patent offices and administrative authorities.
Our goal is to take a comprehensive approach to our clients’ needs. It is worth mentioning that representation abroad is influenced by such factors as applicant’s legal form, choice of an intellectual property object, compatibility of national, regional and international legislation, professionalism of foreign patent attorneys as well as cost, e.g. the absence of “billing” may have a significant impact on the cost of services.
We use a wide range of international legal instruments to achieve a positive result with a special focus on confidentiality.
Our main types of services:
- Rendering services on patenting inventions, utility models, commercial prototypes abroad under the PCT procedure and the national procedure, as well as on obtaining patents for inventions, utility models and commercial prototypes abroad under the national procedure.
- Registering trademarks in foreign countries (under the Madrid International Trademark Registration System and/or under the national registration procedure through the national patent attorneys of foreign countries).
Obtaining patents abroad
There are two ways to obtain a patent abroad, and namely – under the International Patent Cooperation Treaty and under the Paris Convention for the Protection of Industrial Property. Under the Paris Convention for the Protection of Industrial Property, a foreign patent application may be filed within 12 months from the date of filing a priority Russian patent application to a national patent office, for instance, in Japan, or, for instance, to a regional patent office. The time limit for consideration of an invention application at a national or regional patent office may not exceed three years.
Under the International Patent Cooperation Treaty (hereinafter – the PCT), it is possible to obtain protection for inventions where such protection is necessary in any or all of the PCT Contracting States. The Treaty implies a single international patent application to be filed through the receiving office of Russia, the Federal Institute of Industrial Property, to the International Bureau of the World Intellectual Property Organization instead of filing several separate national and/or regional applications.
The PCT does not exclude the need to consider an international application at the national phase at national or regional offices (such as https://www.epo.org/, https://www.eapo.org/ru/, https://www.aripo.org/, http://www.oapi.int/index.php/fr/), but simplifies such consideration in a number of important respects owing to the international phase procedures under the PCT as well as international bilateral arrangements under the PPH (Patent Prosecution Highway) procedure.
Am international application is examined during five stages. The first three stages are automatic and the remaining two ones are optional. The first three stages include filing an international application by the applicant and its consideration by the receiving office of Russia (FIIP) where the international phase implies making an international search report and written message by one of the “International Searching Authorities” – FIIP or the European Patent Office – and publishing the international application together with the international search report by the International Bureau of WIPO (hereinafter – WIPO).
At the fourth stage, a supplementary international search report is compiled by one or more International Searching Authorities, except the one that performed the primary international search.
The fifth stage involves the distribution of the published international application, the international search report, if applicable, the supplementary international search report(s), and the international preliminary report on patentability (PCT Chapter I) by WIPO to national (or regional) offices where the applicant wishes to obtain a patent based on its international application (the so-called “designated offices”). Distribution is made at the request of the designated office to WIPO.
The international application consideration term at the international phase is up to 31 months and it depends on the national legislation of a particular country. This is followed by a transition to the national phase in a specific country or regional patent office. The national application consideration term is up to 3 years.
Registration of Trademarks Abroad – Madrid System
The Madrid Agreement System and the Protocol thereto covers the largest number of countries for the international registration of a trademark (125 countries as of September 28, 2021). By filing one application to Rospatent, you can obtain legal protection for your trademark in any of the 125 member states of the Madrid Agreement and the Protocol thereto.
An application for the international registration of a trademark is filed to Rospatent where experts check application correctness and then send it to the International Bureau of the World Intellectual Property Organization (WIPO). 6 months after the application is filed, WIPO enters the international registration of the trademark in the international register of trademarks and issues a certificate of international trademark registration. Once the application has been numbered, WIPO will forward it to all intellectual property offices of the countries designated by the applicant when the application was filed. The application is examined by the respective offices in accordance with the national legislation of each country.
The applicant receives notices of the grant of legal protection to the trademark from the intellectual property offices of the countries applied for registration. These notices confirm trademark registration in a particular country. If the applicant receives provisional refusals from national offices, they may be challenged.
The validity period of international trademark registration is 10 years, the number of extensions for the next 10 years is unlimited.
A trademark registered under the Madrid Agreement System and the Protocol thereto can be assigned and the right to use it under a license may be transferred. By registering a trademark under the Madrid Agreement and the Protocol thereto, if necessary, you can expand the validity area of your trademark. To expand the validity area of the trademark registered under the Madrid System, you do not need to file a new application – you only have to file an application for the territorial expansion of the international trademark registration and indicate the countries needed.
When an international application for a trademark is filed based on a Russian application filed within 6 months from the date of filing the basic application, you will receive the right of conventional priority, that is, the priority date will be the date of filing the Russian application.
The main benefits of the international registration of trademarks in accordance with the
Madrid System are as follows:
a simplified procedure of filing an application for trademark registration. only one international application is filed and one fee is payable.
the cost of international registration is significantly reduced in comparison with the cost of national registrations, the need for patent attorneys’ services in each of the foreign countries disappears;
the international registration consideration term in each country indicated by the applicant is reduced to 1 or 1.5 years;
it becomes possible to indicate additional countries where the holder of international registration may further apply for protection (territorial expansion), if such a need arises;
The Madrid System allows for the centralized management of the international registration received from the moment when a trademark entry is made in the International Register. Thus, with one application, you can make changes to international registration, make an entry on license agreement conclusion, transfer international registration rights in whole or in part, or extend its validity period. In this case, a transfer of rights, registration of licenses and changes to international registration are possible in relation to both all and individual countries.
Thus, the Madrid System is a useful and beneficial tool through which trademark owners can simultaneously apply for protection of their trademarks in many countries.
The employees of Patentniy Poverenniy LLC will be happy to advise you in more detail on all issues concerned with intellectual property protection and registration abroad, develop an individual strategy for your needs and represent your interests abroad.