WIPO: PCT, Madrid, Hague, Lisbon
The World Intellectual Property Organization (WIPO) provides effective solutions for any business and entrepreneur interested in venturing abroad. There are several systems developed for international protection of inventions, trademarks, designs and appellations of origins. Still, protections is not granted globally all at once: each system still requires some interaction with national IP Offices, either within standard proceedings, or in case of objections.
| PCT (the Patent Cooperation Treaty) is the international patent system available in 157 countries |
Madrid System (the Madrid Agreement Concerning the International Registration of Marks) is the international trademark system available in 130 countries |
Hague System (the Hague Act) is the international design system available in 96 countries |
Lisbon System (Lisbon Agreement for the Protection of Appellations of Origin and their International Registration) is the international system of appellations of origin and geographical indications available in 71 countries |
A PCT application can enter national phase within 30 or 31 months from the priority date, which provides its owner with additional time to decide which jurisdictions they want protection to extend to. Usually, local assistance is required on this stage for filing formal documents, paying official fees, preparing and submitting a translation of the application to the national office.
For every international application, the established PCT procedure involves carrying out an international search by an International Searching Authorities (ISA) and providing a written opinion on patentability of the invention. Still, the final decision on whether to grant protection or not will be made by the national or regional office.
A Madrid System for trademark registration requires the applicant to indicate their countries of interest at filing, although a subsequent designation can be made at a later date. The international trademark application is filed on the basis of a national trademark application or registration, and is dependent on it for the first 5 years after registration.
Substantive examination of the marks is carried out by the national offices, and a provisional refusal issued in a given country often requires appointment of a local representative in order to contest it.
In a similar way, substantive examination of Hague design applications is conducted by national offices. In order to file a new design application under the Hague System one is not required to have an existing basic application or registration.
On the other hand, anyone wishing to obtain international protection for an Appellation of Origin (AO) or Geographical Indication (GI) under the international Lisbon System needs to have similar rights in the country of origin. Once the AO or GI is protected domestically, the owner may extend its protection to other countries through an international application, although the designated countries will still examine it and may refuse protection, for example, in case of existence of an earlier trademark or generic character of the name.
If an international application, be it for an invention, trademark, design or AO/GI, faces objections by a national office, these objections usually are not irrevocable and can be overcome with professional help.
For general information on the costs, please contact us at quotes@patentica.com or info@patentica.com, and we will be happy to provide a precise calculation for your particular situation, including any unorthodox matters. If it concerns potential oppositions, litigation or other such cases that are usually based on an hourly rate, please send us a brief description of the circumstances. We will analyze the case and prepare a detailed professional estimation of associated costs.