The International Trademark Registration Process

History

The World Intellectual Property Organization - referred to in abbreviated form as "WIPO" in English, and "OMPI" in French and Spanish - was established by a convention signed at Stockholm on July 14, 1967, and entitled "Convention Establishing the World Intellectual Property Organization." The WIPO Convention entered into force in 1970.

The origins of what is now WIPO go back to 1883 when the Paris Convention for the Protection of Industrial Property was adopted and to 1886 when the Berne Convention for the Protection of Literary and Artistic Works was adopted. Both Conventions provided for the establishment of an "International Bureau" or secretariat. The two Bureaus were united in 1893 and functioned under various names until 1970 when they were replaced by the International Bureau of Intellectual Property (commonly designated as "the International Bureau") by virtue of the WIPO Convention.

WIPO became a specialized agency in the United Nations system of organizations in 1974.

Objectives

The objectives of WIPO are:

(i) to promote the protection of intellectual property throughout the world through cooperation among States and, where appropriate, in collaboration with any other international organization;

(ii) to ensure administrative cooperation among the intellectual property Unions, that is, the "Unions" created by the Paris and Berne Conventions and several subtreaties concluded by members of the Paris Union.

Intellectual property comprises two main branches: industrial property, chiefly in inventions, trademarks and , and copyright, chiefly in literary, musical, artistic, photographic and audiovisual works.

As to the promotion of the protection of intellectual property throughout the world, WIPO encourages the conclusion of new international treaties and the modernization of national legislations; it gives technical assistance to developing countries; it assembles and disseminates information; it maintains services for facilitating the obtaining of protection of inventions, marks and industrial designs for which protection in several countries is desired and promotes other administrative cooperation among member States.

As to the administrative cooperation among the Unions, WIPO centralizes the administration of the Unions in the International Bureau in Geneva, which is the secretariat of WIPO, and supervises such administration through its various organs. Centralization ensures economy for the member States and the private sector concerned with intellectual property.

On January 1, 1997, WIPO administered the following Unions or treaties (listed in the chronological order of their creation): in the field of industrial property, the Paris Union (for the protection of industrial property), the Madrid Agreement (for the repression of false or deceptive indications of source on goods), the Madrid Union (for the international registration of marks), the Hague Union (for the international deposit of industrial designs), the Nice Union (for the international classification of goods and services for the purposes of the registration of marks), the Lisbon Union (for the protection of appellations of origin and their international registration), the Locarno Union (for the establishment of an international classification for industrial designs), the PCT (Patent Cooperation Treaty) Union (for

cooperation in the filing, searching and examination of international applications for the protection of inventions where such protection is sought in several countries), the IPC (International Patent Classification) Union (for the establishment of worldwide uniformity of patent classification), the Vienna Union (for the establishment of an international classification of the figurative elements of marks), the Budapest Union (for the international recognition of the deposit of microorganisms for the purposes of patent procedure), the Nairobi Treaty (on the protection of the Olympic symbol), the TLT (Trademark Law Treaty) (for the simplification of formalities before trademark registries), and, in the field of copyright or neighboring rights, the Berne Union (for the protection of literary and artistic works), the WCT (WIPO Copyright Treaty) (for the protection of certain rights in certain works), the WPPT (WIPO Performances and Phonograms Treaty) (for the protection of the rights of performing artists in their live performances and in the aural fixations of their performances and the protection of the rights of producers of phonograms in their phonograms), the Rome Convention (for the protection of performers, producers of phonograms and broadcasting organizations; administered in cooperation with Unesco and the International Labour Office (ILO)), the Geneva Convention (for the protection of producers of phonograms against unauthorized duplication of their phonograms), and the Brussels Convention (relating to the distribution of programme-carrying signals transmitted by satellite).

As far as WIPO's status as a specialized agency of the United Nations is concerned, it is to be noted that, under Article 1 of its Agreement with the United Nations, WIPO is responsible for taking appropriate action in accordance with its basic instrument, and the treaties and agreements administered by it, inter alia, for promoting creative intellectual activity and for facilitating the transfer of technology related to industrial property to the developing countries in order to accelerate their economic, social and cultural development, subject to the competence of the United Nations and its organs, and of other agencies within the United Nations system of organizations.

WIPO has, since January 1, 1996, an Agreement with the World Trade Organization (WTO), which is not a member of the United Nations system of organizations. The Agreement provides for cooperation between the International Bureau of WIPO and the Secretariat of the WTO in respect of assistance to developing countries, in respect of the notification and collection of the intellectual property laws and regulations of WTO Members, and in respect of the notification of emblems of States and international organizations.

In planning and implementing its activities for developing countries, WIPO is guided by the relevant objectives of international cooperation for development, with particular reference to making full use of intellectual property for encouraging

domestic creative activity, for facilitating the acquisition of foreign technology and the use of literary and artistic works of foreign origin, and for organizing easier access to the scientific and technological information contained in millions of patent documents. All this should serve the cultural, economic and social development of developing countries.

Organs of WIPO

WIPO has three governing bodies, that is, organs established by the WIPO Convention, the members of which are States. They are the General Assembly (whose members are the States members of WIPO which are also members of the Paris and/or Berne Unions), the Conference (whose members are all the States members of WIPO), the Coordination Committee (whose members are elected among the members of WIPO and the Paris and Berne Unions, Switzerland being an ex officio member; on January 1, 1997, this Committee had 68 members).

The General Assembly and the Conference meet in ordinary session once every two years, whereas the Coordination Committee meets in ordinary session once a year.

The executive head of WIPO is the Director General. The Director General is elected by the General Assembly.

The secretariat of WIPO is called "the International Bureau."

Membership

The following 161 States were party to the Convention Establishing the World Intellectual Property Organization (WIPO) on February 20, 1997 (updated list available):

Albania, Algeria, Andorra, Angola, Argentina, Armenia, Australia, Austria, Azerbaijan, Bahamas, Bahrain, Bangladesh, Barbados, Belarus, Belgium, Benin, Bhutan, Bolivia, Bosnia and Herzegovina, Brazil, Brunei Darussalam, Bulgaria, Burkina Faso, Burundi, Cambodia, Cameroon, Canada, Central African Republic, Chad, Chile, China, Colombia, Congo, Costa Rica, Côte d'Ivoire, Croatia, Cuba, Cyprus, Czech Republic, Democratic People's Republic of Korea, Denmark, Ecuador, Egypt, Eritrea, El Salvador, Estonia, Fiji, Finland, France, Gabon, Gambia, Georgia, Germany, Ghana, Greece, Guatemala, Guinea, Guinea-Bissau, Guyana, Haiti, Holy

See, Honduras, Hungary, Iceland, India, Indonesia, Iraq, Ireland, Israel, Italy, Jamaica, Japan, Jordan, Kazakhstan, Kenya, Kyrgyzstan, Laos, Latvia, Lebanon, Lesotho, Liberia, Libya, Liechtenstein, Lithuania, Luxembourg, Madagascar, Malawi, Malaysia, Mali, Malta, Mauritania, Mauritius, Mexico, Monaco, Mongolia, Morocco, Mozambique, Namibia, Nepal, Netherlands, New Zealand, Nicaragua, Niger, Nigeria, Norway, Oman, Pakistan, Panama, Paraguay, Peru, Philippines, Poland, Portugal, Qatar, Republic of Korea, Republic of Moldova, Romania, Russian Federation, Rwanda, Saint Kitts and Nevis, Saint Lucia, Saint Vincent and the Grenadines, San Marino, Saudi Arabia, Senegal, Sierra Leone, Singapore, Slovakia, Slovenia, Somalia, South Africa, Spain, Sri Lanka, Sudan, Suriname, Swaziland, Sweden, Switzerland, Tajikistan, Thailand, The former Yugoslav Republic of Macedonia, Togo, Trinidad and Tobago, Tunisia, Turkey, Turkmenistan, Uganda, Ukraine, United Arab Emirates, United Kingdom, United Republic of Tanzania, United States of America, Uruguay, Uzbekistan, Venezuela, Viet Nam, Yemen, Yugoslavia, Zaire, Zambia, Zimbabwe.

The Convention, concluded in 1967, was amended in 1979.

Membership in WIPO is open to any State which is a member of the Paris or Berne Unions and to any other State satisfying one of the following conditions:

(i) it is a member of the United Nations, any of the specialized agencies brought into relationship with the United Nations, or the International Atomic Energy Agency;

(ii) it is a party to the Statute of the International Court of Justice; or

(iii) it has been invited by the General Assembly of WIPO to become a party to the Convention. (States party to the Paris or Berne Conventions may become members of WIPO only if they are already bound by, or concurrently ratify or accede to, at least the administrative provisions of the Stockholm (1967) Act of the Paris Convention or of the Paris (1971) Act of the Berne Convention).

To become a member, a State must deposit an instrument of ratification or accession with the Director General of WIPO at Geneva.

The Cost of Obtaining a Patent in the US

By Gene Quinn on April 4, 2015

TWITTER

FACEBOOK

18

Print Article

One of the most frequent questions I get asked by inventors and businesses is about how much it will cost to obtain a patent. Estimating US patent costs is a difficult matter because so much depends on the technology involved, but answering “it depends” is not

particularly insightful or helpful. With that in mind, what follows are some general ballpark estimates, which should give at least some guidance when trying to budget for the filing of a patent application at the United States Patent and Trademark Office. It will also be helpful to reviewPatent Attorney Fees Explained and US Patent Office Fees.

First, it is essential to understand that the very nature of patenting an invention means that you have to have come up with something unique compared with the prior art.  There are challenges inherent in the description of what makes an invention unique, and the law is only getting more complicated.  Thanks to the United States Supreme Court, the United States Court of Appeals for the Federal Circuit and ever more regulations from the United States Patent and Trademark Office it has become more difficult over the years to create the type of written description and claim sets required.  You can still get a patent, and in fact obtaining a patent is getting easier in many respects than it was 5 to 10 years ago, but gone are the days that a worthwhile patent can be obtained for cheap.  With patent applications you will always get what you pay for.

It might be useful to start with a discussion of those types of things that will influence the anticipated cost of preparing and filing a patent application with the United States Patent and Trademark Office.  Obviously, among the most important considerations is the invention.  The type of invention and the degree of complexity is probably the single most important consideration that needs to be taken into account.

Inventors always want to believe what they have is relatively simple and can be easily described. This leads them to believe that the entire project should take only a few hours, which means the cost should be minimal.  The first clue that you are wishing for something that isn’t true should be that you are wishing!  In my experience many, if not most or even nearly all, inventors know deep down that the patent application process is a complex process.  If they have reviewed recent patents in the area of their invention they know that there is a lot of text, a number of drawings and the entire document is largely

incomprehensible by anyone not thoroughly marinated in the intricacies of patent law.

Do You Have a New Invention Idea? CLICK HERE to Submit your Invention. 100% Confidential. No Obligation.

Indeed, the majority of inventions for most independent inventors are typically somewhere in the range from relatively simple to minimally complex (see table below).  Having said that, if you are dealing with a sophisticated electronic device your invention is almost certainly at least moderately complex and more likely relatively complex (see table below). If your invention is software related the invention will be at least highly complex because over the last several years the courts are requiring enormous amounts of technical detail in the patent application in order to have any chance of getting, and maintaining, a software patent.

If you are going to ultimately receive a patent you are going to need to file a nonprovisional patent application. Without knowing a good deal about an invention it is very difficult, if not completely impossible, to give reliable estimates as to likely costs associated with filing a nonprovisional patent application. Nevertheless, below is some rough guidance regarding what you can expect to pay in attorneys fees through filing of a nonprovisional patent application.  Obviously, I do not speak for the patent bar as a whole, so these are based on my own experience and work with inventor clients and businesses.  The examples are intended to be illustrative of the level of complexity, not to suggest that they would be patentable. Please be aware that the government filing fees of $730 are the minimum for small entities, which is how most independent inventors and small business will be characterized. For micro entities the fees would be $400 at a minimum. It is also worth noting that filing fees can and do go higher depending upon the number of claims the application contains.  Professional drawings, which

really need to be thought of as required, will typically add at least another $300 too $500 for a complete set drawings. It is also worth noting that virtually no invention is “extremely simple.”Type of Invention Examples Attorneys Fees to Filing Patent Search with

Opinion

Extremely Simple electric switch; coat hanger; paper clip; diapers; earmuffs; ice cube tray

$5,000 to $7,000 $1,000 to $1,250

Relatively Simple board game; umbrella; retractable dog leash; belt clip for cell phone;toothbrush; flashlight

$7,000 to $8,500 $1,000 to $1,250

Minimally Complex power hand tool; lawn mower; camera

$8,500 to $10,000 $1,250 to $1,500

Moderately Complex

ride on lawn mower; simple RFID devices; basic solar concentrator, cell phone

$10,000 to $12,000 $1,500 to $1,750

Relatively Complex shock absorbing prosthetic device; $12,000 to $14,000 $1,750 to $2,000

Highly Complex MRI scanner; PCR; telecommunication networking systems; satellite technologies

$14,000 to $16,000 $2,000 to $2,500

Software Related Software, automated systems, business methods

$16,000 + $2,500 to $3,000

These are just ballpark figures, and attorneys fees through filing can certainly go well above $15,000 depending on complexity of invention and/or the need for and ability to acquire broad patent protection.

How much you will spend on a patent application also depends upon what it is that you want to do with the patent and whether there are realistic market opportunities. In the event there are realistic market opportunities you may spend more even on something that is simple to make sure that you have covered the invention enough to have a strong resulting patent. By way of example, you could probably find an attorney to write a patent for a business method or computer software for quite cheap, but a cheap computer related patent would not be nearly as strong as a patent application costing $20,000 or more. The devil is always in the details. Getting a stronger patent requires more claims and more attention to providing an adequate technical disclosure and describing as many alternatives, options, variations and different embodiements as possible. This, of course, requires greater attorney time, which in turn requires more time spent working with the patent examiner to get the patent issued.

For some companies all they have is intellectual property, it may be prudent to budget more per application because without an exceptionally strong foundation there will be no realistic possibility to obtain broad patent protection and without strong patent protection there is not likely to be funding available from investors.  Without funding you never get off the ground.  So in the biotechnology sector and in the software sector, where tangible assets are minimal, it is not at all surprising to hear of innovative start-up companies paying 1.5 or 2 times the ballpark figures listed above to get an application filed that is comprehensive enough to support an entire patent portfolio.

In order to keep costs down inventors and small businesses will frequently look for ways to cut corners.  Sometimes the first corner that is cut is foregoing a patent search.  This is always a bad idea and generally turns out to be a big mistake. In fact, I will only represent people who want to skip the patent search phase if they sign an agreement that sets out the dangers of choosing to forgo a patent search and that they have been specifically advised against proceeding without a patent search.  Furthermore, I recently interviewed Micky Minhas, who is Chief Patent Counsel for Microsoft, and he told me: “We do prior art searches on every one of our cases that we file and we still get unanticipated art.”  This should tell you something about the dangers that lurk.

A patent search is absolutely critical because it will give you an idea about whether it even makes sense to pursue a patent in the first place.  Patent searches do not come with guarantees.  The goal of a patent search is to reach the 80% level of confidence threshold.  To reach higher would take many thousands of dollars, and to reach near certainty would require millions of dollars, so the search that is undertaken is reasonable given the value of the invention.  It is also reasonable given that the prior art represented in patent applications filed for the first time within the last 18 months are simply not findable because they are required by law to be kept secret.  So a “no stone unturned” search is not possible and not economically wise. But a thorough search of what can be reasonably found leads to better decisions and always leads to a better written patent application that takes into account the prior art. Without knowing what is in the prior art there is simply no way to accentuate what is most likely unique in comparison to the prior art. In other words, without a search you are describing your invention in a vacuum.

While it makes sense for inventors to do their own search first, a professional searcher working with a patent attorney will always be able to find prior art patent and pending applications that you did not know about.  Searches done by a professional patent searchers and an attorney written opinion typically range from $1,000 to $3,000, depending upon: (1) the amount of written

analysis you want to receive; (2) the complexity of the invention; and (3) the amount of prior art discovered that needs to be considered. In short, paying for a competent patent search with a written analysis by a patent attorney is the best money that an inventor can spend in the entire process.  The search directs the entirety of the remainder of the patent project, or it could show there is no reasonable opportunity to obtain a suitably broad patent claim so the project should be abandoned, saving the inventor many, many thousands of dollars.

Another thing inventors can do to reduce costs is to first start by filing a provisional patent application.  A provisional patent application needs to disclose the invention completely as would a nonprovisional patent application, but the exact formalities are greatly reduced making it easier to prepare, meaning it costs less.  We can attach documents to support the originally drafted provisional patent application, and we focus on getting as much as possible into the document.  In my experience most inventors who pursue the provisional do so because they have made an interesting advance and want to protect what they can now while they continue to refine and work on the invention.  Done in that way a provisional patent application makes all the sense in the world because it gives you protection with respect to what you have presently and lets you continue to work to improve the invention over 12 months before you need to file a nonprovisional patent application.

The cost for attorney time alone for a provisional patent application is typically at least $2,000. The filing fee is $130 for a small entity and drawings typically cost $100 to $125 per page, so a high quality provisional patent application for a mechanical or electrical device can typically be prepared and filed for

$2,500 to $3,000.  As with nonprovisional patent applications, the technology involved and the complexity of the invention do greatly affect the quoted price for a provisional patent application. For example, for computer related inventions and software the cost to prepare and file a provisional patent application is typically $6,000 plus the filing fee and drawing costs.  The increased cost for a high quality provisional patent application that deals with software is due to the reality that so much more information is required in these applications. You really need to describe the complete architecture of the system and drill down to the algorithms, routines and sub-routines. See A Guide to Patenting Software, Building Better Software Patents and Patenting Business Methods and Software in the U.S. Of course, these are just ballpark estimates.

The one thing that we have not yet discussed in detail, which does play a role in any quote you will receive for either a provisional patent application or a nonprovisional patent application, is how many patents and published applications are found that closely relate to your invention.  When there are a lot of patents and published applications found that is said to represent a “crowded field of invention.”  As such, it will be necessary to make fine line distinctions.  The more prior art innovations that need to be considered the more the work, and hence the higher the cost.

To review, perhaps a couple examples might be helpful. These estimates are hypothetical and assume a high quality application is filed with the intent of obtaining meaningful, strong patent protection.

Example 1: Computer implemented method for facilitating certain functionality via the Internet

Patent search with attorney opinion = $2,500 to $3,000 Provisional patent application prepared and filed = $6,000 Filing fee to the USPTO for provisional patent application = $130 (small

entity) Nonprovisional patent application based off provisional filing = $10,000 to

$12,000

Filing fee to the USPTO for nonprovisional patent application = $800 to $1,250 (small entity)

Professional illustrations for nonprovisional patent application = $500 TOTAL COST through filing nonprovisional patent application = $19,930.00

to $22,880 (if provisional patent application is skipped the cost would be $130 less)

Example 2: Consumer electronics product Patent search with attorney opinion = $1,750 Provisional patent application prepared and filed = $2,500 Filing fee to the USPTO = $130 (small entity) Nonprovisional patent application based off provisional filing = $8,500 Filing fee to the USPTO for nonprovisional patent application = $800 (small

entity) Professional illustrations for nonprovisional patent application = $400 TOTAL COST through filing nonprovisional patent application = $14,080 (if

provisional patent application is skipped the cost would be $130 less)

Example 3: Mechanical tool Patent search with attorney opinion = $1,250 Provisional patent application prepared and filed = $2,000 Filing fee to the USPTO = $130 (small entity) Nonprovisional patent application based off provisional filing = $7,500 Filing fee to the USPTO for nonprovisional patent application = $800 (small

entity) Professional illustrations for nonprovisional patent application = $400 TOTAL COST through filing nonprovisional patent application = $12,080 (if

provisional patent application is skipped the cost would be $130 less)

The costs can add up quickly no doubt, and there will be post-filing costs once the Patent Examiner starts to examine the application filed, but those will be the subject of a future article. Still, you should budget at least another $5,000 to $7,500 for prosecution and issue fees to the Patent Office.

Given the high costs associated with obtaining a patent some inventors either need to give up on the project, do it themselves or seek deep-discount providers, many of whom are not patent attorneys or patent agents.  You need to always remember that you get what you pay for, which is true in every aspect of life, so be careful with deep-discount providers.  Before going with such a deep-discount provider be sure and read Patent Pricing: You Get What You Pay For.

For those who need to pursue protection on their own I have developed a self help system –The Invent + Patent System™ – for preparing and filing a provisional patent application. I have used this system with my own clients to collect information from them to help facilitate the application process. I have used this process to teach law students how to draft patent applications, and thousands of inventors have used this system to prepare and file their own provisional patent applications. While it is always better to hire a professional if you can afford it, I feel comfortable saying that my system is better than anything else out there.