1. 1. If designated for a European patent, see EP as designated Office for the applicable time limits.
2. 2. If designated for a Eurasian patent, see EA as designated Office for the applicable time limits.
3. 3. In the absence of information from the Office concerned, the time limits shown are those which would normally apply under PCT Articles 22(1) and 39(1)(a).  If the Office decides to apply longer time limits, that information will be published in the PCT Newsletter.
4. 4. ARIPO acts as designated office for the following State which does not act in the capacity of designated office:  SZ.
5. 5. This time limit may be extended provided that the applicant pays an additional fee for late entry into the national phase.
6. 6. If designated for an ARIPO patent, see AP as designated office for the applicable time limits.
7. 7. May be extended upon written request of the applicant.
8. 8. Time limit applicable if applicant pays an additional fee for late entry into the national phase.
9. 9. Swiss Office acts as designated one for the following State which does not act in the capacity of designated office:  LI.
10. 10. EPO acts as designated office for the following States which do not act in the capacity of designated office :  BE, CY, FR, GR, IE, LT, LV, MC, MT, NL, SI, SM.
11. 11. This Office has notified the International Bureau of the non-applicability of the 30-month time limit under PCT Article 22(1), as modified with effect from 1 April 2002 – it does not yet apply the 30-month time limit for entering the national phase.
12. 12. OAPI acts as designated office for the following States which do not act in the capacity of designated office :  BF, BJ, CF, CG, CI, CM, GA, GN, GQ, GW, KM, ML, MR, NE, SN, TD, TG.
13. 13. The time limit may be extended by 30 days if the applicant pays an additional fee for late entry into the national phase.
14. 14. The time limit may be extended by up to 18 months provided the applicant pays the prescribed fee.
15. 15. Up to 12 months after the 30-month deadline (30 months from the priority date) the applicant can request reinstatement of rights provided that he/she pays the fee for reinstatement of rights and meets the other requirements outlined in subsection 154(3) of the Canadian Patent Rules for the reinstatement of rights.
16. 16. For international applications filed on or after July 1, 2020.

Filing for patent protection can be a complex and time-consuming process, but knowing where to start can alleviate some of the pressure for new applicants.

Initial Stages

One of the most crucial elements in the early stages of filing is grasping an understanding of the patent system itself, particularly in each country or region that you wish to obtain protection in.

As both individual countries and states, as well as regional patent systems, possess varying filing requirements and regulations, one of the most important first steps to consider are the jurisdictions in which protection would be sought for your invention. In order to do so, it may be necessary to consider the invention itself and the potential market(s) in which it could be placed.

In order to effectively evaluate and consider the IP legislation and regulations of any jurisdiction of interest, it is advisable to consult with a patent attorney or agent who is well-versed in the patent laws of that particular state. The greater understanding of the requirements of each country or region that you wish to obtain protection in, the better, as a more comprehensive and thought out application may prevent potentially time consuming and costly office actions later on.

Searches

A vital part of the initial stages of the patent protection process is the conducting of patentability and prior art searches. Such comprehensive searches should be undertaken prior to the drafting of a patent application to ensure that your invention is unique (novel) and does not infringe on existing patents. Moreover, you will be unsuccessful in obtaining a patent if your invention has already been publicly disclosed, however most jurisdictions have a grace period during which disclosure is disregarded. This period will vary from country to country.

The requirement of novelty is one of the most crucial criteria of patentability for a patent, thus a comprehensive search and comparison of inventions similar to yours can provide a more solid basis for a patent application and in turn, provide for a higher chance of successful outcome.

Such searches can be conducted through the IPO in which protection is sought, or via patent databases, publications, and other relevant resources. Moreover, the undertaking of a search can be a pivotal moment in the decisions an applicant takes in terms of filing and defining the scope of protection, as the results can indicate whether an applicant should be filing for a patent for an invention or utility model, for example.

Patent Application Drafting

Once you have considered the initial elements of your invention and have some understanding as to what may be required in the potential jurisdictions you wish to file for patent protection, the next vital step is the drafting of a patent application itself.

In order to have the best chances of success, patent applications should be detailed and well-written, and a solid understanding of what is required from each jurisdiction in which you wish to file is helpful. A patent application should typically include an abstract, a written description of the invention, drawings or diagrams (if applicable), and a list of the claims that define the scope of protection further given to your invention.

Depending on the invention itself, applicants should also consider the type of patent protection or patent application offered in varying jurisdictions. For example, some countries offer the option of filing for either a utility model or patent, whilst others offer the opportunity for applicants to file a provisional application or a non-provisional one.

Consulting with a patent attorney can greatly simplify the process and potentially increase the chances of a successful patent application by assisting with the drafting of an application as well as reviewing for any discrepancies.

Filing

The filing of the patent application itself will involve the completion of all necessary forms, which are commonly found on the official Intellectual Property Office website or the relevant jurisdiction, as well as payment of the corresponding official fees and the submission of any obligatory accompanying documents, such as a Power of Attorney, for example. These requirements, as well as being complex, can require a patent attorney's expertise to achieve, for example the payment of certain fees, filing of documents, and in some countries, the mandatory requirement of foreign applicants to have a local patent attorney representative in the jurisdiction.

It is also helpful to consider the subsequent results of filing a patent application, even in the early steps of assessing how to file an application.

How do I start?

The IP-Coster platform can facilitate the beginning of your patent protection journey once you have drafted an application and are ready to begin the filing process, allowing you to obtain fee quotations for patent filing worldwide and providing professional advice from our wide range of international patent professionals. If you would like further assistance on the aforementioned crucial first steps, please contact us here.

Trademarks are essential assets in the protection of brand identity, as well as a brand's reputation in the market, but applying for trademark protection can be a tumultuous task. Among the multitude of considerations applicants face, various jurisdictions allow for the filing of trademark applications even before the mark in question has been used.

Those filing before the United States Patent and Trademark Office (USPTO), for example, are afforded the opportunity to file an intent-to-use trademark application if they so wish, but what sets it apart from a use-based application?

Intent-to-use Trademark Applications

An intent-to-use (ITU) trademark application before the USPTO can be a viable and useful filing option for applicants who have not yet utilized their mark in commerce, but have a good faith intention to do so in the future. The applicant must provide evidence of said intention to the USPTO, typically in the form of a declaration or statement of use.

Whilst a mark filed for via an ITU application will not be registered until the trademark has been demonstrated to have been used in commerce, such applications can be a great option for those who wish to secure the earliest possible application filing date, even before they have used the mark. In turn, this provides priority of the mark over potential competitor's later marks, comprising one advantageous element of ITU filings. This can be particularly useful for companies that are still in the developmental stages of business and have not yet begun to sell or advertise their goods or services, but intend to in the foreseeable future.

It is important for applicants to note that an ITU application does not provide immediate protection for a trademark, and that it is required for the mark to be used in commerce within a certain time frame depending on the circumstances surrounding the application.

Use in commerce as per the USPTO can constitute use of the mark with respect to goods and/or services, and can occur on an interstate, territorial, or foreign commerce basis. The demonstration of use can comprise the trademark being placed on the packaging of the good, for example, and requires the good to be sold or transported in commerce. In relation to services, use can comprise the sale or advertising of the same, and proof that the service is being rendered in commerce.

There are three periods during which an ITU trademark applicant can claim the mark to have been used in commerce, the first being any time between the filing date of the ITU and the date of approval by the examiner of the mark for publication. The second option is for the applicant to confirm the mark's use in commerce within the first six months following the date of issuance of the Notice of Allowance from the USPTO.

If neither of the first two options are viable, applicants may also file up to five requests for an extension of time to file a Statement of Use, constituting a maximum extension period of 3 years, alongside payment of the corresponding fee. If confirmation of use of the trademark is not provided within these time constraints, the ITU application may be abandoned, rendering the trademark vulnerable for use by others.

Use-Based Trademark Applications

A use-based trademark application, on the other hand, can be filed only once a trademark which is the subject of the application has been effectively used in commerce.

In order to be eligible for filing a use-based application, the trademark must have been used in connection with the sale or advertising of goods or services in commerce, as with the eventual registration of ITU applications. Evidence of said use is required to be provided to the USPTO, typically in the form of a specimen or sample of the goods or services with the trademark.

Once the application is approved, the trademark is registered with the USPTO, and the company has exclusive rights to use the mark in connection with the goods or services listed in the registration.

One advantage of filing for a use-based application is that it provides for a more expedited route of protection of the trademark in contrast with an ITU application.

Other jurisdictions operate different but similar systems to the US in relation to such applications, with neighboring Canada allowing for the filing of a trademark application on a "propose to use" basis, which potentially constitutes a less stringent requirement to meet than intent-to-use for applicants.

It's important to note that trademark laws and regulations vary by country and can be complex. If you are interested in filing a trademark application or learning more about intent-to-use applications, please contact us here at IP-Coster.

When it comes to protecting one's intellectual property, there are several international agreements which assist in the facilitation of IP protection across the globe. The obtainment of trademark protection in multiple jurisdictions, in particular, is greatly assisted by the Madrid Agreement Concerning the International Registration of Marks of 1891, as well as the Protocol Relating to the same Agreement of 1989.

Combined, they create what is known as the Madrid System for the International Registration of Marks, allowing for an often more efficient route of obtaining trademark protection in multiple jurisdictions simultaneously. As such, an "international" application can be filed designating any/all Madrid member states, and the subsequent registrations will be effective individually in each designated state as if it had been filed through the national route.

Any Member States of the Paris Convention for the Protection of Industrial Property may accede to and join the Madrid Agreement and/or Protocol, with states being able to adhere to either just one, or both, of the treaties.

Whilst both the Agreement and the Protocol are complementary of one another and are parallel in nature, they operate as separate, independent treaties and as such, possess several inherent differences. Applications can therefore differ in requirements, expected time limits, and fees, for example, depending on whether an application was filed under the Madrid Agreement, or the Madrid Protocol.

The Agreement itself, for instance, preceded the Protocol by over a hundred years, intending to set the foundations for a more efficient and simpler route of obtaining international trademark protection than having to file in multiple jurisdictions separately.

The Protocol, on the other hand, was created aiming to add a higher level of flexibility to the Madrid System, with the adjustments allowing for the System to be compatible with the national legislation of more countries and intergovernmental organizations who were previously unable to accede to the Agreement based on their domestic laws. Moreover, the Agreement only allowed for the accession of individual states, whilst the Protocol opened up the opportunity for accession in relation to intergovernmental organizations in addition to independent countries.

The two treaties also present multiple differences when it comes to the filing and maintenance of trademark rights. The Agreement, for example, required an international application to be filed based upon a home country registration. The Protocol, however, introduced the possibility for an international registration to be based on either a national, or "basic", trademark application, or upon a basic trademark registration with the trademark office of a Contracting Party to the Protocol.

The Agreement further required an international application to be filed in an office of origin in a country in which the applicant has “a real and effective industrial or commercial establishment.”, with applicants only able to file in their country of domicile if they had no such commercial establishment. Once introduced, however, the Protocol allowed for applicants to choose an office of origin based on either commercial establishment or domicile.

At the time of introduction, the Madrid Agreement obligated applications to solely be filed in the French language, however once the Protocol was introduced, applicants were also permitted to file applications in the English language under the Madrid System. In 2004, Spanish was introduced as an additional language to the System, thus meaning applicants may file international applications in any of the three operational languages of the Madrid System regardless of whether an application is filed under the Agreement or Protocol. Individual offices of origin, however, may enforce restrictions as to which of the three languages are permitted for use.

The procedure for the payment of fees also differs between the two treaties. The Agreement, for example, obliged applicants to pay a fixed fee for each designated Contracting Party, whilst the introduction of the Protocol meant that applicants could either pay via fixed fee, or Madrid Contracting States could opt for an individual fee system in which the state may charge the same fees for international applications as they would had the application been national in nature.

Concerning trademark refusal periods, the Agreement allows for a total of 12 months for such a period, whilst the later introduced Protocol brought in a period of 18 months for refusal which also has the possibility of being extended. However, if the country of origin and designated country are both parties to the Madrid Agreement and Protocol, according to article 9sexies of the Protocol, a 12 month period for the issuance of provisional refusal is applicable.

Finally, the trademark validity period under the Agreement comprised a total of 20 years, whereas the Protocol introduced a new period of 10 years. Despite the considerable shortening of the time period, this provided the opportunity for the elimination of unused or unmaintained trademarks from the International Register.

Despite varying in a multitude of ways, both the Madrid Agreement and the Madrid Protocol have proved to be an asset to the obtainment of trademark rights internationally. Covering 130 countries with 114 members, the Madrid Union encompasses just how useful global cooperation and centralized IP systems can be.