Certified Copies

I admit that this might not be the most interesting or high brow of topics. However, it might help provide some useful information.

I've had the need to order some Certified Copies recently to support a priority claim in one instance, and to substantiate applications based on United Kingdom registrations. I was wondering how quickly other jurisdictions were able to issue these documents (and how expensive they are).

A Certified Copy ordered through OHIM on 27 November took a month to be received. To be fair, the document was sealed by OHIM on 18 December and it got caught in the Christmas mail backlog although I believe "three-to-four weeks" would be typical for OHIM to issue Certified Copies. Such documents cost €30 each in Official fees.

Certified Copies ordered through the UK IPO on 23 December were issued in early January. UK Certified Copies cost £20 each in Official fees for trade marks (£22 each for designs). I believe "one-to-two weeks" would be the typical time period for the UK IPO to issue Certified Copies. In my case, the original documents went astray in the post - a service which doesn't have 100% reliability and, from time-to-time, may need factoring in - and, therefore, it ended up being more than two weeks when my replacements arrived.

In Switzerland, Certified Copies can be ordered by e-mail at no charge and are issued in about a week. However, I believe the length of time for WIPO to issue a Certified Copy (Extract) is a lot longer. In fairness, I should mention that I have not ordered such a document from WIPO for some time (obviously they cannot be used as priority documents) but WIPO suffers from some delays in their other Madrid Protocol operations. The costs involved in obtaining a Certified Extract from WIPO are variable as the link shows.

It's been a longer time since I've ordered a US Certified Copy direct from the USPTO. Usefully, they now have an on-line ordering service. A Certified Copy to serve as a priority document would cost $15 in Official fees making them cheaper than both OHIM and the UK IPO.

If readers would like to share knowledge of their jurisdictions timelines and costs for obtaining Certified Copies then perhaps this would be of use to other readers. Particularly if they have a priority claim to substantiate and are wondering when their client is likely to be able to provide this document to them.

The good news is that many countries no longer require Certified Copies to support priority claims. They will typically say that it is at an Examiner's discretion to request a priority document though.

One of the benefits of the International system is that priority claims can be made without substantiation (i.e. needing to provide a Certified Copy or other proof).

Other Offices will take the view that if they can check the on-line Register of the priority claim country then they'll do this pro-actively to verify the priority claim. OHIM's new on-line filing tool is designed so this 'link' can be made by the applicant in the application.

OHIM also provide for the self-downloading of CTM Certified Copies from the on-line record of a specific case. A third party, such as a foreign Trade Marks Office, can then verify the authenticity of the document through OHIM's website by entering an 'Identification code'. I have learned recently that the Trade Marks Office in Saudi Arabia, a country where formalities are known to be complicated, accepts these documents from OHIM to support priority claims.

Needless to say, bureaucracy is still rife in some countries and original physical documents will be required. When they require legalisation this creates another headache. OHIM provide a useful service where they will undertake the legalisation up to the European Commission Representation (for this purpose this is the equivalent of a Ministry of Foreign Affairs). Nevertheless, if such a document (i.e. originating from OHIM) requires consular legalisation then this will need to be done in Spain. If you're not in Spain then you will likely want to get an agent in Madrid to assist. Dealing with foreign Consulates is not always an easy task even when you're based in the same country, let alone when you're not.

When making priority claims or applications requiring Certified Copies, it is sensible to be prepared for the hassle and costs that can be involved.

UPDATE: In Jordan, it takes 2-3 days for a Certified Copy to be issued.

Holiday season

August is Europe's traditional holiday season and is reflected with blogs where news to blog about dries up somewhat. Aside from some short jaunts to Germany, Switzerland, Yorkshire and God's own county of Hertfordshire, I have not been on a proper holiday (sun, sea and sangria-style).

I appreciate this is a bit of a 'filler' but I decided to check if any of our IP Offices around the world made a planned shut down. It would appear not.

Unsurprisingly, employees at the USPTO are only granted leave for Federal holidays, which for 2014 will look like this. This has been this way since the mid-late 1980s.

In the UK, where we complain about our lack of public holidays compared to our European cousins, the UK IPO is closed on one day less than the USPTO. Of course, staff will receive more annual leave than their American counterparts and our public sector is known for being generous with this.

In Geneva, home of WIPO, their public holidays are more extensive including many typical European and Christian holidays as well as the Muslim festival of Eid al-Adha and a purely local Geneva holiday.

There is an established Public Holiday Law in Japan which the Japan Patent Office follows. I was also interested to learn of Japan's 'Happy Monday System' whereby some holidays have been moved to a Monday to create a longer weekend. We have something similar in the UK, albeit without such a cool name, whereas in continental Europe if a holiday falls on a weekend it's tough, it won't be rolled over to the following Monday.

It will come as little shock to many that OHIM closes for the longest period of time - 18 days, with seven of these coming at Christmas and New Year. Being in Alicante on Spain's Costa Blanca, the weather isn't too bad either. For jobs at OHIM go here!

I hope readers of this blog enjoyed their holiday season. I hope I have more substantial things to blog about in the coming months.

Caribbean IP Part 19: Puerto Rico

ISO 3166 country code: PR.

Puerto Rico is an unincorporated territory of the United States. As such it cannot accede to international agreements being a non-sovereign nation.

The Department of State administers trade marks, commercial names and US deposits. The latter refers to the deposit of a US Federal Registration with the local Office, similar to the UK registration extension provision in a few Commonwealth countries.

Filings for these rights can be made on-line. It is also possible to make on-line trade mark searches although they state that the database is not yet complete and therefore you should corroborate any findings with the physical Trade Marks Register. It is also necessary to search trade marks, commercial names and US deposits through separate databases.

If you have clicked on the links, you will see that they are in Spanish only. Spanish is the language of an estimated 95% of the population, although English also has official status.

I understand that Puerto Rico does not have design legislation of its own and would be covered automatically by a US design patent granted federally by the USPTO.

Puerto Ricans, despite being US citizens, did not have the right to vote in the Federal election of 6 November 2012. However, on the same day, they voted with regard to their territory's status. They voted in favour of statehood, although like in the US, the island is very divided politcally. If statehood happens then it would see it covered by US Federal registrations (including Madrid Protocol designations) and relegate its Trade Marks Office to the same level as the State trade mark systems of Alabama, Alaska, etc. Statehood would have to be accepted by both the US House and Senate - and it's anticipated it could have a rough journey - so do not expect to need to treat Puerto Rico as a separate trade mark jurisdiction for some time yet.

Specifications and useful tools

When I started out in the world of trade marks the crafting of specifications was sometimes a time-consuming task. There were two books. One contained the goods/services in class order. The other listed the goods/services in alphabetical order. It was, or still is, also printed in Chinese, Croatian, Czech, Danish, Dutch, German, Italian, Japanese, Lithuanian, Macedonian, Norwegian, Polish, Portuguese, Russian, Slovene, Spanish and Swedish. For some of these languages, it must still be an invaluable resource.

For some of us, we now have the benefit of on-line tools to help us devise specifications of goods and/or services.

In Europe we have the EuroClass Classification Assistance tool developed through OHIM. As a digression and being a teenager in the 1990s, the term EuroClass can only make me think of Eurotrash, a surreal and sarcastic TV show. Perhaps I am not the only Briton for whom this comes to mind?

There are six national Trade Marks Offices that are harmonised with OHIM. Italy, Spain and Sweden make up three. The other three are the English-speaking countries of the EU: Ireland, Malta and the United Kingdom. An acceptable (approved) specification at OHIM is going to be similarly automatically accepted by, for example, the Italian Ufficio Italiana Brevetti e Marchi or the UK Intellectual Property Office. Likewise, using an acceptable term to file nationally in the UK would also be an acceptable term for filing nationally in Ireland.

For the other countries it is possible to get accepted terms for each of the national Trade Marks Offices within the EU (another 19 Offices) plus the accepted terms from Switzerland and the United States are also included in the tool. The latter is taken from the "U.S. Acceptable Identification of Goods and Services Manual (ID Manual)".

Also, available through EuroClass are WIPO's acceptable items. As WIPO is the gatekeeper of the Nice Classification this is helpful.

WIPO do have their own tool available too. It is named the Goods & Services Manager, not quite as cheesy as the EuroClass name.

A recent announcement from Geneva informs us that this will now be available in 10 languages: English, French and Spanish, the official languages of WIPO, plus Arabic, Dutch, German, Hebrew, Italian, Portuguese and Russian.

I must admit that my navigation skills only provide the Goods & Services Manager in the three official languages of WIPO. I can, at least, locate the Russian version but have had no joy in finding the Arabic, Dutch, German, Hebrew, Italian or Portuguese versions.

Dutch, German, Italian and Portuguese specification items can be found through EuroClass. That leaves only Arabic and Hebrew as additional resources.

However, these tools are primarily for the benefit of local practitioners filing a Madrid Protocol application as opposed to a foreign applicant filing in an Arabic-speaking country or in Israel. Effectively, using acceptable WIPO terms (in English, French or Spanish) is going to avoid those awkward to deal with irregularity notices from WIPO.

This does not mean a wonderfully worded specification that WIPO loves is going to be accepted locally in the designated countries of a Madrid Protocol application. The Israeli Office does not like class headings and is particularly strict when it comes to pharmaceutical trade marks. You can obtain broader protection (e.g. for house marks) with the filing of an Affidavit and for pharmaceuticals you can defer limiting a specification to a specific product for five years. However, expect an Office Action if filing broadly; I'd recommend considering filing nationally over Madrid in this event.

The US, as many will realise, is also very strict with specifications and will not accept the more blanket coverage provided by some WIPO terms. Asian countries can present problems too. China requires specific items if you want them protected and don't rely on a class heading; note recent guidelines in the EU too. South Korea can also be stringent with what is acceptable.

These tools are useful and welcomed and they can go a long way to helping us avoid unnecessary Office Actions and irregularity notices but there are limitations.

The 10th Edition of the Nice Classification came into force on 1 January 2012. As WIPO look to review this every year going forward do be careful with searches, filings, renewals and watching. Not all countries will proceed with reclassifications whether this be ex-officio, at applicant's request or as a mandatory or optional part of a renewal.

For searches it could be important to ensure you search the 'old' Class in addition to the current class. For example, "vending machines" have moved to Class 7 from Class 9. The addition of Classes 43-45 for services created a general awareness of this but for goods we need to keep in mind as often it is not relevant yet sometimes it can be. The reverse is true for watching as if you are a vending machines company then you will need to ensure your marks are watched in the current Class 7.

When it comes to filings, be alert not to just copy-and-paste a specification from a registration accepted last year. Consideration can also be given to making re-filings in the correct class particularly for countries that examine on relative grounds and who have not reclassified. For a chain of beauty and hairdressing salons, you may find your old Class 42 registration not being cited against similar recent applications in Class 44. This may not be the best example but if you find yourselves fighting a number of oppositions then it might be more cost-effective to file afresh in Class 44 to form a bar to registration for third parties that the Trade Marks Office can defend on your behalf.

After all this it does beg the question, is classifying really getting easier?

Location, location, location

As my background is almost exclusively in the field of trade marks, I have been following the extensive discussions on The IPKat regarding the EU's planned Unified Patent Court wearing my geographer's hat. It seems European harmonisation has been put on the back burner for a bit as old rivalries are restored and the British, French and Germans slog it out to see who will host this Court.

The choice it seems is between London, Paris or Munich which can only lead me back to a year I can't remember, 1979.

If only this Court was due to hear copyright cases then M's lyrics, "London, Paris, Munich, everybody talk about pop muzik" could have been prophetic.

The US is also having a location debate as the USPTO is looking to establish satellite offices around the country.

Detroit is due to have the first of these offices and is slated to open its doors in the later half of next year. I read an article on this that expressed surprise at this choice as Detroit's reputation is poor by American standards and it was felt this could hinder staff retention. With an election next year, it was also suggested that swing states may prove popular choices for the other satellite offices for the current government.

I'll provide alternative views not to be controversial but because our experience in the UK is different.

The Conservative Party government of the 1980s took the decision to relocate many Government departments away from London. South Wales benefited from this with its three biggest cities receiving new organisations. Companies House, the company registration office went to the Welsh capital, Cardiff. Swansea received the Driver and Vehicle Licensing Agency. Newport received the Patent Office, since rebranded as the Intellectual Property Office. A smaller office is still maintained in London, but the headquarters in Newport opened in 1991.

Newport - in this sense comparable to Detroit - would not be high up on a list of the UK's most liveable cities. This article is about a parody of the song Empire State of Mind that went viral here, but demonstrates underlying feelings towards the city.

Conversely, Newport as a location has helped staff retention as there is little in the way of IP practices in the local area or other civil service roles on its doorstep. Whilst there is no reason Patent or Trade Mark Examiners could not be coaxed into private practice or an in-house IP department, this is less true of the administration staff that form the efficient backbone of an organisation. And Examiners have not moved with the fluidity they did when based in London. As they settle in the Newport area, perhaps with families, their ability and desire to move reduces. It's also important not to overlook work-life balance and this is a strong selling point for both the UK IPO and the USPTO no matter where they are located.

Newport, like most of South Wales, is also Labour Party heartland and the relocation of the Patent Office did little to change this. From 1987 to date, both Members of Parliament elected by the people of Newport have been Labour Party candidates with their support, in the main, strengthening over this time. Newport has a population of around 120,000 so if the direct and indirect employment opportunities the Office's relocation created had little impact on local political beliefs, what change would this make to the political landscapes of far larger American cities?

Decentralisation of a country's IPO has not been limited to the UK. Ireland and Slovakia now have their main Offices out in the provinces, in Kilkenny and Banská Bystrica respectively. Germany, whilst maintaining bases in Munich and Berlin, handles some operations through an office in Jena, which was a part of the former GDR.

We will have to wait and see if the USPTO picks politically expedient locations, economic hubs or takes its satellite offices to unexpected locations in the country. As for the Unified Patent Court, Paris is rumoured to be the favourite.