Ensuring Digital Signature Legality for Assignment of Intellectual Property in European Union

How to eSign a document: digital signature legality for Assignment of intellectual property in European Union

welcome to the canadian intellectual property office cpos educational video series called iep protection abroad leveraging ip in new markets part four apply for ip rights abroad in this video you'll learn more about the ways to apply for intellectual property or ip rights abroad in the previous video learn about ip in your target countries you'll learn that ip rights are territorial this means that you'll have to apply for ip rights in the territories where you think you'll need protection you also learn that ip laws and procedures vary between jurisdictions or territories once you know where you want to seek hyper protection it's a good idea to start thinking about how to apply there are a few different ways to apply for ib protection abroad canada has joined international treaties to make it easier to apply for ip rides in many countries using a single system but the process for formal ip protection can be complicated help from ib professionals such as local ip agents in your target countries should be strongly considered the information in this video is an introduction meant to prepare you for when you work with your iep professional in general there are two methods for applying for ip abroad method one is to apply directly with the ip office of your target country this is often how canadian companies apply for ip rights in canada and the us for example many companies start their patent filings in the u.s and either directly or shortly after use that u.s application as a basis for a canadian application if the company thinks they need to apply for ip rights in many other countries it may be beneficial to use an international application system which is the second method many people don't know that canada has signed international agreements or treaties for ip these agreements make it easier to apply for ip rights abroad a lot of work has been done to standardize the application systems to make it possible for inventors and creators to submit and pay for international applications through a single online portal as we will shortly explain using the international systems can save you money and give you some valuable time before you have to pay fees if you're applying for i p protection in a handful of countries the total application fees may be lower and easier to pay than when you file multiple countries directly for patents the international system also has the benefit of giving you up to one and a half years of extra time before you have to pay for your application in the countries where you're seeking protection this can be very valuable for inventors while they're seeking partners and funds to commercialize their invention it may be helpful to think about applying for ip rights abroad as a two-step procedure the first step is when you apply the second step is when your application is processed where you are seeking ip writes so first you decide on which method to use for the application and then no matter which method you chose each country's ip office will examine and grant ip writes regardless of how you applied if you know you only have a few territories or countries where you want to seek ip rights you can seek i p protection directly with the ip office for that jurisdiction after learning about ip in your target country you now know which ip office you need to file your application with it can be a good idea to take note of the kind of fees you will need to pay for example application fees transmission fees examination fees translation fees and so on a description of how to apply the forms to use and the various fees are all available on the website of their respective ip office to find the website of the ip office of your target country visit .wipo.int directory slash en and click on the directory of ip offices link to find the web address for the ip office of your target country a link is also available in the description of this video let's look at what the country profile for canada looks like at the very top of the page there are links to the ip office this is where you'd click to learn more about how to apply for ip writes directly with this ip office some of this was discussed in the previous video learn about ip in your target countries now let's focus on the information relevant to how to apply for ip rights a good start is to verify which international treaties a country is a contracting party to this information is available at the wipo treaties link most countries are members of the paris convention for the protection of industrial property if you first filed for ib protection in canada you can then apply for protection for this ip in other contracting states but it's important that certain time limits are respected the opportunity to seek protection abroad has a time limit for patents the time limit is 12 months if for example you filed for a canadian patent on january 1st 2020 you could file for patent protection for that invention in contracting states until december 31st 2020. for industrial designs the time limit is shorter it's six months if you're considering protecting your ip in many countries it could be beneficial to use an international application system let's look at the treaties and systems used for applying for ip rights in many countries using a single application i'll introduce the systems here and then go over the process for each system in more detail you can file an international trademark application under the madrid protocol for patents the international patent application uses the patent cooperation treaty international industrial design registrations can be done using the hague system there are a few important things to know about copyright copyright is automatically established when a work is created canada and more than 170 other countries have signed the burn convention which deals with the protection of works and the rights of their authors there are no international copyright registration systems or requirements for formal registration but a voluntary registration system of works can make it easier to prove your ownership if a dispute arises most countries have a system in place to allow for the formal registration of copyrights these ip systems can be beneficial if you're seeking protection in many countries the cost savings depend on a range of factors which is why we recommend seeking guidance from an ip professional now we'll walk through the steps of an international application for each of these systems businesses and innovators can apply for trademark protection in over 120 countries by filing a single international application in one language with wipo using the madrid system a single overall payment is made in one currency the swiss franc making the application process relatively simple and possibly saving you money when you obtain and maintain protection for trademarks in many countries here is a map of the 122 countries that are currently member of the madrid union these members represent more than 80 percent of world trade there are two requirements to be able to use the madrid system first you can use the madrid system if you are canadian citizen or a resident of canada or if you have industrial or commercial establishment in canada second since an international registration in the madrid system is based on an existing registration you'll need to have filed a trademark application or obtained a trademark registration in canada in short here's how the application process works stage one if you don't have a trademark start by filing your basic application with cipo as for any trademark application prepare by making sure your trademark isn't used by someone else already and follow the guidelines on our website consider hiring a registered trademark agent to help you once your basic application or basic registration if you already have a registered trademark is ready use the madrid e-filing system to file your protocol application using sipo as the office of origin then select the countries or jurisdictions where you're seeking to register your trademark and pay the filing fee sipo will review your application to certified at the international and basic applications correspond and then forward the international application to wipo's international bureau unless there are irregularities to clarify you or your representative will also receive an email informing you that the application is certified the date for the international date of registration is usually the date sipo has received the certified international application in stage one if more than two months have passed between this date and the date the international bureau receives the application in stage two the international registration date will be the date wipo receives the certified application from sipo stage 2 the international bureau will conduct a formal examination and if the application meets the applicable requirements the international bureau will register the trademark in the international register and notify the ip offices in all the territories where you are seeking protection for the trademark at stage 3 each contracting party will examine the trademark ing to their respective legislation they will make their decision within 12 or 18 months in ance with their legislation for each decision wipo will update the international register and notify the applicant if an ip office refuses to protect the trademark it will not affect the decisions of other ip offices to estimate the applicable fees before the application for international registration is filed you may either complete an international application in the madrid e-filing system without filing it with siebel for a certification or use wipo's online fee calculator to determine the amount that will be due for your potential application the link to the fee calculator is included in the description of this video a protocol registration is valid for 10 years from the date of international registration sipo is responsible for notifying the international bureau of any change in the scope of protection in the basic application or registration within five years of the date of the international registration for example sipo will notify the international bureau if the goods or services are deleted from the basic application or registration if the application or registration becomes inactive or if a proceeding or opposition results in a change of scope of the protection in canada there may also be a change of ownership in ordinary circumstances a request to record the transfer of ownership is presented directly to the international bureau using the required form you can also add more countries to an existing international registration by filing a subsequent designation with wipo and paying the applicable fee now let's look at the patent cooperation treaty or pct the pct is an international treaty administered by wipo you may use the pct to reserve your right to file your patent in more than 150 contracting states as of june 2020 of course just like with trademark and other ip rights the granting of patent rights remains the responsibility of each national patent office there are a couple of requirements if you want to use the pct system first the system is available to nationals or residents of the pct contracting member states if there are several applicants named in the international application only one of them needs to comply with this requirement second you can file your international application either directly without any additional application anywhere or within 12 months from filing an initial application with cpo or another member state office initially you may have filed a patent application with siebel or as many others do a provisional application with the united states patent and trademark office if you've done so there are time limits to follow in order to respect the novelty requirement for patent protection regardless of whether you file an initial application or a pct application directly the first application will contain the priority date an official priority date is important if for example someone claims they invented something before you step 1 filing the international application you can file an international application directly with the international bureau if one or more inventors are canadian or canadian residents you can also file your application with sibo as the receiving office a link to see both pct kit is available in the description in it you'll find more information about addresses and e-filing options for your application regardless of how you file your application must be prepared ing to certain formal requirements in the wipo pct applicants guide international phase this way you won't have to adapt to various national or regional formality requirements later on the application is filed in one language and you pay one set of fees you have up to 12 months after the priority date on your initial application to file your international patent application this marks the start of the international phase of the application the receiving office will process the application and give you an international filing date and application number after fees are paid and pct formality requirements are met next an international search to determine the patentability of your dementia will begin this is carried out by something called the international searching authority sipo is the international searching authority for international applications filed with sipo you can also elect sipo as the international searching authority for applications filed with lipo if two or more canadians or canadian residents are the inventors the international searching authority carries out an extensive search and shares the detailed analysis of the potential patentability of your invention in an international search report and written opinion the written opinion is communicated to you and the pct member states where you are seeking patent protection unless you're filing a demand for an additional patentability analysis which we'll look at shortly after you receive the findings of the international search report you are entitled to a one-time amendment of the claims that must be filed with the international bureau depending on the results you may ask for a supplementary search modify your application or withdraw it entirely unless you withdraw your application it will be published 18 months after the very first application was received you can ask for a supplementary international search which is an international search for patentability done by another international searching authority since patents have to be novel it's important to carefully search and find inventions or prior art that have already been made and may prevent you from getting patent protection requesting any supplementary international searches during this early phase of the patent prosecution expands both the linguistic and technical scope of the search you can for example have the supplementary research carried out where you're likely to enter the national phase later on it's better to detect prior art during the international phase of your application since you still haven't paid the fees and put in the required work for translations that will be required for the final examination done by the national offices during the national phase if you're not sure about your chances of getting patent protection you should consider filing a demand this is what we call chapter 2 of the pct the demand means that an international preliminary examining authority or ipea will do an additional patentability analysis you may amend any part of the specification these amendments will be transmitted directly to the ipea for analysis a final report called the international preliminary report on patentability will be communicated to you and the states where you're seeking patent protection the international preliminary report on protectability gives you the opportunity to evaluate the chances of obtaining patents in the elected offices before you enter the national phase finally your application reaches the national phase by the end of the 30th month from your initial application date you will need to identify in which countries you wish to seek a patent in these countries you will enter the national phase and pay the applicable fees this is when the countries you've designated in the international application will begin their substantive examination in ance with their domestic laws for industrial designs you can use the hague system to protect your design in more than 90 countries at the same time including canada similar to the other international application systems we just discussed applicants can apply for industrial design protection in multiple countries through one application and pay fees in one currency through a single transaction with wipo the hague system also means that owners of registered designs have access to a streamlined mechanism for both maintaining and managing industrial design rights in multiple jurisdictions through wipo the required fees for your application must be paid in swiss franc the fees will vary depending on the geographical coverage selected and the number of designs a schedule of fees and a fee calculator are available on wipo's website the application process starts with the filing of an international application through the international bureau of wipo an international application can be filed in english french or spanish either on paper or through wipo's e-hag system an international application may include up to 100 different designs belonging to the same class of the international classification for industrial designs the locarno classification in your application you'll elect the designation of the contracting parties where you're seeking protection after your application is filed the international bureau will verify that it meets the formal requirements prescribed by the hague agreement if the formality requirements aren't met the international bureau will invite you to correct any irregularities within three months if the formality requirements are met a filing date generally the date on which the international bureau received the application will be issued the international bureau will send you a certificate of international registration and your design will be recorded in the international register and published in the international designs bulletin publication in the international designs bulletin acts as a notification to each designated country at that time offices of countries for which domestic law provides for a substantive examination of a design may now begin their substantive examination the outcome of the examination whether it's a refusal or a grant is communicated back to wipo a notification of refusal is recorded on the international register published in wifo's global design database and communicated to you by the international bureau it's accompanied by an examination report which will outline the objections to registration this isn't a final refusal you can submit a response directly to the ip office similarly a grant of protection is sent to wipo which will in turn inform the applicant from that point on the hague application is known as a hague registration and the date of registration of the design is the date of the statement of grant of protection the statement of grant of protection along with a copy of the hague registration will be made available for consultation in wipo's global design database while we're talking about how to apply for ip rights abroad we should mention the three ways to protect your ip in the european union or the eu first you can file directly with each national office if you're seeking protection in only a few countries it may be best to apply directly with each of the national offices you can also apply in the eu for eu-wide applications european countries are member states of the two regional offices that handle ip rights in the eu the european union intellectual property office or eu ipo accepts online applications for eu trademarks and registered community designs you can file european patent applications with the european patent office or epo lastly you can designate all or some eu countries using an international application system like madrid the pct or the higgs system as we discussed before one important thing to note is that most european countries have an absolute novelty requirement meaning a patent application must be filed before any public disclosure of the invention there is usually no grace period even if your initial application was made in canada where it is permitted to have disclosure of the invention up to 12 months before filing a patent application your european application claims priority and the canadian application must have been filed before any public disclosure of the invention we recommend hiring a patent or trademark agent for your applications abroad these agents have expert knowledge and experience that you can use during the preparation and prosecution of your applications since ip rates are legal understanding what's protected can be really important that's why an iep professional can be of great help often these experts have experience in searching and drafting ip documents seek the help of a professional this could be an ib professional someone with extensive experience offering their advice as a service it could also be an ip agent who has passed qualifying exams and is entitled to act on your behalf with zebo finally you could choose an ip lawyer who is a qualified lawyer with specialization in ip law and related legal matters links to search engines for registered patent and trademark agents and other ib professionals are indicated on the screen and are also available in the description of this video this concludes the video on how to apply for ip rights abroad applying for ip rights abroad can be a complex process we recommend using the help of a professional and being well prepared for the process on the screen and in the description are some more links to information that may help you prepare if you suspect or know your ip rights are being infringed we recommend you seek professional help to determine the next step but before you seek help watch the next video to learn more about what infringement is and how you as an ip rights holder can enforce your ip rights if someone is using your ip without your consent you