29 August 2012

IP databases

I sometimes see requests for recommendations on IP software asking, "what is the best IP software available?"

There are no right and wrong answers to this and it depends on your unique circumstances.

Here are a number of considerations you may consider key. This is meant to be direct and concise. It's not meant to be rude - I am fairly stereotypically English!

Your budget

It goes without saying that this is critical. I doubt you have an unlimited budget so set it down. Be realistic, a database should be an important part of your operations and this is not a short term decision you are making. If you want an all singing and dancing database - and by this I do not just mean one which is aesthetically pleasing - you will have to pay for it. Databases are not created by a geeky teenager who couldn't sleep one night. They have taken a long time to develop and continually improve.

If you're a solo practitioner your database needs could be more minimal, but note that you can often pay a license fee per person so if you recruit someone (who needs database access) then you could have immediately doubled your database costs.

Your portfolio size

Know your portfolio size and understand your predicted growth. Some databases will be ideal for smaller portfolios, but check out performance if a portfolio reaches a certain size. Some databases charge as the number of records increase. You might think that's fair enough as if your records are growing then you are generating more work and income, but be wary of the additional overhead you could be creating. Take into account what is regarded as a "record". For example, it may also include name and address records. If you have, say, 100+ client and agent contacts around the world you are already on the way to eating into your basic allocation.

Document management features

Is this important to you? Are you looking to go paperless? If you are, take into account the business operations surrounding this. Is your post room going to be scanning in correspondence? Are you already doing enough work through e-filing and e-mail? Now is an ideal time to think around your business processes and even if you are not proposing to change them to be open to change. Try to think of how you will work before you test out such a feature of a database.

Or have you already gone paperless? Can the new database interact with your existing document management software or will the documents need to move across? Can a separate document management regime exist smoothly alongside the database? Think about avoiding duplication.

Other integration features

Are they important or can they be performed separately? Do you need integrated accounting? For dedicated IP boutiques this could be important, but for law firms with multiple practice areas they may want to use their firm wide accounting software. Are there ways the IP software can "talk" with your other accounting software which could be important for law firms or in-house teams for producing financial reports and avoiding duplication of input.

If you're in-house do you wish to manage licensees and royalties through the IP database? The communication and accessibility of your database with other internal departments, agents and/or clients could be important. Do they need access rights, input rights and/or the ability to upload documents?

Look at B2B concepts that have been developed or that are in development. These could significantly streamline your dealings with your local IPO or OHIM in the future.

Your own in-house capabilities

Determine if you will be hosting the database yourself or externally and evaluate what IT support you have in-house. Upgrades and patches or fixes may need to be installed so establish how much expertise is needed for them and how autonomous you can be or do you need the database supplier to be more hands-on.

Importantly, get someone from your team who is regularly handling docketing and record keeping on board this project from the start. They understand exactly what the current database does and what a new one needs to do. It will also empower them. Database evaluations and decisions are sometimes driven by the partners in a law firm. Generally speaking, I find this perplexing. Fair enough, perhaps they have the record keeping knowledge, but if you're finding yourself constantly logging in to your current database when you need to use it because your previous session has timed out then, with respect, you need to get other people on board to help make the right choice.

IP types

Some databases are more geared towards patents, others towards trade marks. Determine your percentage of work. For example, if you are 90% a patent practice and only 10% trade marks, you may evaluate that a basic trade mark system is OK as long as the patent part of the system is sophisticated.

Consider other IP types. If you file a particular large number of registered deign applications check out the robustness of this side of a system. The Netherlands, for example, is a niche for plant variety applications yet this might not be an IP type available on all databases. 

Big organisations with separate patent and trade mark departments may even explore having separate databases, but consider any synergies and cost sharing that could be lost with this approach.

Language capabilities

Ascertain the language capabilities you need and can be provided. If you have a corporate language you will likely want this to be the default language of the system. If a database is demonstrated to you in English but you will want it in French ask to see the French version and make sure it's up to scratch.

See if records can be kept in more than one language. For example, you're a German law firm and for trade mark records you may wish to maintain the specifications of goods in English for American clients but also in German for communication with the local Trade Marks Office.


How much customisation is possible and how much will it cost? Is this important to you? Consider that making a database more unique to your organisation means you may make it less compatible with improvements driven by its general users. It could also leave you alone in your dealings with the software company rather than being part of a collective push for improvements and amendments.

Migrating your current data

This is critical. Can your data be moved across effortlessly or is it going to require any form of manual input? Subject to you providing a suitable file, can the software company do the migration for you? What liability will the software company accept should any data be incorrectly migrated? Or, in other words, how much double-checking is needed from your side?

Training support

Ascertain what training is provided not just at the outset but ongoing too. And find out how this happens - do they come to you, you go to them (and if so where) or is it web based? How easy is it get hold of their helpdesk, particularly during your business hours? If you will have users in other parts of the world consider the accessibility for all users. You don't want your Chinese office twiddling their thumbs all morning because the system is down and they're waiting for 9.00am European time before they can speak to someone.

Networking opportunities

Does the software company organise seminars and networking events with other users? Understand how often these take place and how structured or informal they are. Check their relevance - all day seminars where 80% of the talk is regarding patents might give little value if you're only using the trade mark modules. Do users also meet independently and will benchmarking opportunities exist?

Reputation and references

Research a database's reputation. Talk to peers and get their input. Seek references particularly from users you know have similar case loads and operations to you.

Personal touch

See how intuitive a database is to use. The more sophisticated the database, the more complicated they can be to use, but this can be balanced by your own internal expertise. Get a feel for the software company you are dealing with. If they are hard sell and you don't like this then explore other options, but equally don't be fooled by niceness. Straight talking is useful but make sure they have listened to you and understood your needs. You wouldn't try to sell tight trousers to an elephant so don't stand for someone with this mindset.

In short, the best IP database out there will have the right service and features at the right price for your organisation. There are numerous IP databases our there, possibly more than you think. Computer savvy patent attorneys are also known to develop their own databases and license them out to clients (although they do not tend to actively advertise these). This blog has looked at regular IP database situations and has not even touched on developing your own database in-house or in having a preferred law firm or outsourcing company manage a database and docketing on your behalf. I hope it has been a useful discussion.

As usual, I welcome any comments or queries.

24 August 2012

Dependency on the UK becoming (more) less and less

The requirement to have a United Kingdom trade mark registration to secure local protection in a geographically diverse set of jurisdictions has long been a quirk of global trade mark filings. To be honest, my ability to retain such 'obscure' information meant I could remember all these countries but this list continues to get smaller.

The latest country to drop off the UK dependency list is Grenada which introduced a substantive trade mark law of its own on 1 August 2012. They follow Vanuatu, which was in a similar situation, in adopting a trade mark law without a colonial legacy.

I have previously blogged in relation to these (as well as a post on tax havens, as many of these UK dependent jurisdictions provide tax benefits).

This leaves just five countries where a UK registration is required: Gibraltar, Kiribati, St Helena, the Solomon Islands and Tuvalu. There is some conflicting information out there regarding Gibraltar and Kiribati; I write this piece based on my interpretations of the situation.

Gibraltar is important in the European context. The other countries are remote islands. Nevertheless, all have small populations of approximately:

Gibraltar: 30,000
Kiribati: 103,000
St Helena: 4,000
Solomon Islands: 523,000
Tuvalu: 10,000

In Gibraltar there is a Merchandise Marks Act which gives some protection to Cautionary Notice publications in the absence of a UK registration; or, for those, like me, unsure with a CTM's coverage, perhaps as a supplementary backup to a CTM.

Perhaps we can see legislative developments in Gibraltar, Kiribati, St Helena, the Solomon Islands and/or Tuvalu in the not-to-distant future. Jurisdictions in similar (but not identical) situations, the British Virgin Islands and Jersey, are actively looking to reform local IP laws and this is a positive sign for the others. Realistically, I cannot see much changing in Kiribati or Tuvalu soon. Gibraltar and, to a lesser extent, St Helena may seen some reforms as the UK remains responsible for their good governance. Australia has strong influence in the Solomon Islands.

In my experience, many brand owners were frustrated when they had to secure an unnecessary UK registration before being able to protect their trade mark in jurisdictions that could be miles away. We may recall that UK registrations were not issued as quickly in the past even in smooth cases. The UK now boasts an efficient Trade Marks Registry but movements away from UK dependency overseas should be a good thing.

13 August 2012

Official fees in Africa

Africa may represent a significant region where brand owners will look to secure registration of their trade marks in the coming years. As some begin to file trade marks more regularly they may come up with some surprisingly high official fees. I write this piece as, unfortunately, I have come across official fees being quoted that are difficult to believe. One example I can recall is an agent quoting an official fee of £300 when in reality it was under a third of this.

It would be easy to suggest that corruption is endemic in Africa. Some may think it is fair game for a local agent to make a quick buck out of (wealthy) western brand owners. I would disagree with this but it is important we look at this objectively - and corruption is far from an exclusively African problem.

Official fees will often be paid in local currencies which can have unpredictable exchange rates with the major world currencies particularly when inflation can easily get out of control. There is appreciation that African agents may use a liberal exchange rate to ensure they are never out-of-pocket. Furthermore, some of the 'additional official' fees may be making their way to the Trade Marks Offices to ensure 'smooth handling' of an application. This is speculation but many trade mark owners will have ethical policies in place that they should be wary of unknowingly supporting such methods which could be construed as tacit acceptance of such payments.

It should also be noted that the cost of living and doing business can be high in some African cities. For example, Luanda, the Angolan capital, is astonishingly expensive.

Some agents will include other expenses with the official fees. I can recall in the 1990s an African agent for a certain jurisdiction being based in another city to the Trade Marks Office. They sent a messenger on a 'mission' to despatch our application to the Trade Marks Office. This sounded almost exciting; please bear in mind I have been a messenger myself but trips across London to the UK Patent Office at Southampton Buildings did not produce quite the same adrenaline rush! In Africa, where postal services are often unreliable, sending a messenger to another city, even with overnight stops, would probably have been cheaper than flying.

I think we would consider these expenses justified although we should encourage African associates to be transparent about them. Here is a continent where paper applications are often still required and official fees are made by cheque or draft so a physical presence at the Trade Marks Office can be required to make filings. In Morocco, on-line applications are possible but we can anticipate it being some time before other African countries can offer such a facility although Nigeria should be applauded for its recent efforts.

To cut to the chase, I undertook some research to find out the official fees from official sources and I quote them in a table below so you can cross reference to any quotes you may receive. I have quoted for trade mark applications in one class. For some countries, such as Kenya, foreigners must pay fees in US dollars. In other countries, payment in the local currency is required so you can use a currency convertor such as XE to find out the rough amounts in your local currency or the currency quoted to you.

I was unable to find the data for all countries. I could not track down the official fees for Ghana, but I can quote the individual fees they request under the Madrid Protocol; normally individual fees are in the region of the national official fees. Quoting their own regulations, the fees for The Gambia were come to by consulting with the fees for Ghana, Kenya and the UK although none were directly followed. However, they state (correctly) that they are significantly cheaper than the UK fees.

Of course, the links I base my findings on could contain out of date information but I feel we can take most of them at face value.

I hope this is a useful resource. Conversely, this may leave you a little bewildered with filing in Africa but this is where, in particular, South African firms and firms from the British Islands (many African countries are Commonwealth members with UK derived legislation), and elsewhere (for example, Belgian firms often have good contacts in Belgium's former colonies) can help you if need be from "Cairo to Cape Town" - to use the vision below of Cecil Rhodes, a somewhat controversial figure in African history but probably the most well-known person to hail from my home town of Bishop's Stortford.


One designated country
Fee for “large company”
The Gambia
Overseas applicant
Madrid Protocol Individual Fee (first part)
Foreign applicant
For a body "other than a small entity"
Equivalent to 120 ZAR (currencies are pegged at par)





Equivalent to €609.80 (currencies are pegged)
Electronic filing fee of a French application which covers Réunion
E-filing fee of a CTM application which covers Réunion
Rwanda may change its currency as part of East African economic cooperation
St Helena
A UK registration is a prerequisite to obtaining local protection in St Helena. This would cost £170 in official fees (online filing) plus £20 in official fees to obtain the Certified Copy required to substantiate a St Helena application

South Africa

Based on a computer translation of the Arabic webpage which did not make perfect sense in English

For the mainland/Tanganyika Trade Marks Registry

If you have any corrections to the above or can advise the official fees for other African countries then please include a comment below. Citations would be appreciated.

7 August 2012

Hague happenings

The Hague System for the International Registration of Industrial Designs does not compete with its trademark counterpart under the Madrid System.

There are some fairly obvious reasons for this:

1. In the "hierarchy of intellectual property" designs do not sit as high up as patents or trademarks.
2. The country scope of the Hague System is not as comprehensive as the Madrid System.
3. The confusion with - and to a certain extent non-compatibility - of the Hague and Geneva Acts of the Hague System.

The value of designs is expanding, as I have previously blogged, and the number of registered designs is increasing.

The country scope of the Hague System is far from comparable to the Madrid System for trade marks.

Europe is widely covered by Hague - the EU being a member making a notable contribution here. Africa is a patchwork of members and non-members (as it is also with respect to Madrid) with OAPI membership noteworthy. However, the membership barely touches Asia or the Americas let alone Australia at all.

Hague membership sits at 60 members. However, this is a bit misleading as 15 are a party to the Hague Act only and 45 are a party to the Geneva Act. For those of you with more exposure to trade marks, you can align this with the Madrid Agreement and the Madrid Protocol. Similar to how the Madrid Agreement is being phased out (with just Algeria being a member of the Madrid Agreement but not the Madrid Protocol), it seems the aim of WIPO to replace the Hague Act with the Geneva Act; a previous Act, the London Act is already "frozen".

It is complicated a bit further in that some of the members of the Hague Act only are member states of the European Union or of OAPI; with the EU and OAPI being members of the Geneva Act. Applicants from these countries can take advantage of both the Hague Act and the Geneva Act (using different entitlements).

Expansion of the Hague System is arguably less of a priority for IPR owners. Designs are often protected in a home jurisdiction only, as WIPO's statistics for 2010 seem to evidence. 77% of direct applications for Registered Community Designs were by EU applicants in a total of 76,865 filings. In the same period the EU was designated in an International Hague Application on only 3,512 occasions.

When the UK Government examined the EU's plan to accede to the Hague System it came out in support but against a simultaneous application to join it at a national level. It was asserted that the majority of IPR holders that sought design registration outside of the UK would need it in the EU anyway.

The figure for Hague designations of Switzerland is similar to that of the EU. Conversely, this figure is higher than the number of applications filed directly to the Swiss Federal Institute of Intellectual Property. This does suggest more regular use of the Hague System by Swiss applicants to protect in their home country and the EU.

New joiners tend to join the Geneva Act. Of the 15 Hague Act only countries, only four (Belize, North Korea, Morocco and Suriname) do not also have effective Geneva Act membership through being a part of the EU or OAPI.

Of these, Belize, as a Common Law country, should amend local legislation to reflect their membership but I cannot see anything in their Industrial Designs Act - Cap. 254 regarding this and would therefore have doubts concerning the enforceability of an International Registration in Belize.

North Korea faces stringent UN sanctions and most banks in the West will refuse to transfer funds there. Use of the Hague System circumnavigates this somewhat (as official fees are transmitted to WIPO) but potential applicants should be cautious and I would consider avoiding designating North Korea, even if it is possible to do so.

For Geneva Act qualifying only applicants, Suriname at the top of South America also cannot be included. The same applies for Morocco for the time being at least, but according to my sources at WIPO this country is moving towards Geneva Act accession.

The Republic of Korea - for the avoidance of doubt, that's South Korea - is expected to provide notable Asian presence with its expected accession to the Hague System. Over 57,000 design applications were filed in South Korea in 2010 which makes it a considerably large design filings country. Internal politics - an election is scheduled for later this year - have slowed the accession proceedings for the time being.

China and Japan have also been mooted as future members but this could be over enthusiasm from WIPO officials. During 2010, a humongous 421,273 design applications were filed in China (and it's not often I get to use the word 'humongous' in an IP blog!).

The United States have also been suggested as future members; I'm certainly aware that they have an upcoming election but more in the dark about any possible Hague membership application.

Of the current members, do be careful in designating Ghana for the same reason as Belize above. I cannot see amendments to Ghana's local law to allow for the enforceability of Hague International Designs. Incidentally, this is the same situation with respect to the Madrid Protocol and Ghana.

The situation in Namibia is ambiguous. Constitutionally Namibia should recognise the international treaties it has become a party to, but it has yet to implement specific legislation catering for Hague designs. With its history tied to neighbouring South Africa, it has a mixed Civil Law and Common Law system.

The other member countries are Civil law countries, which take into account international obligations. This includes Rwanda, which has a legal system derived from Belgian Civil law, although is now a part of the Commonwealth of Nations.

The Hague System languishes behind the Madrid System but it provides a very cost effective way to obtain design protection across Europe (beyond the EU). The addition of manufacturing powerhouses such as China and South Korea can only see its stature grow as a major commercial player could add momentum to a membership increase.

WIPO's own 2012 report on the Hague System, containing statistics and pretty graphs, was issued in May.

2 August 2012

Colombia - Individual fees under the Madrid Protocol

WIPO have clarified the Individual fees that Colombia wishes to be paid with respect to the Madrid Protocol designations when it becomes possible to designate Colombia in a Madrid Protocol application from 29 August 2012.

Quite strangely, should you wish to file in more than 24 classes then it will be cheaper to file in all 45 classes than it would be to file for 25 to 44 classes. Clearly, this could be a false economy as the more classes there are the higher chances of Provisional Refusals, oppositions, non-use cancellations, etc. but I cannot comprehend the logic behind Colombia's chosen fee structure.

If there has been typographical errors - although the same are quoted on the general Individual fees page - then presumably WIPO will pick up on this shortly.