Trademarks are an important protection for any business, but nowhere in Canada is this as vital as in Québec, where failure to have a registered trade-mark may lead to notices and fines for business owners. These are precipitated, but not imposed, by the Office de la langue française (translated to: Office of the French Language), or OQLF, a public organization mandated to uphold the quality of the French language, and to ensure it become the “normal and everyday language of work, instruction, communication, commerce and business” in the province of Québec.[1] Since the 2012 provincial election that saw a return to power for Québec’s leading sovereigntist party, the Parti Québecois, the OQLF has been implicated in a few high profile cases that have muddied the waters for businesses operating in Québec.

Most famously, in November 2012, major retailers such as Walmart, Gap and Best Buy, decided to take the organization to court after receiving notices and potential fines. Many major retailers have already made francization efforts: notably KFC to PFK (“Poulet frit Kentucky”) and Starbucks, who added “Cafe” before their brand name. The OQLF is looking for the other big retailers to follow suit, adding a French descriptive such as les magasins (“stores”) to their signs. Louise Marchand, former head of the OQLF, made the bold statement, “Displaying the name of the company in French is a show of respect for the law.”[2]

Senior decision-makers from governments, law enforcement, Customs and the private sector gather in Istanbul, Turkey, for the Seventh Global Congress on Combating Counterfeiting and Piracy, to seek innovative responses to the illicit trade in counterfeit and pirated goods.

Over 850 delegates from more than 100 countries are attending the three-day meeting from 24 to 26 April that is being chaired by the World Customs Organization (WCO) and hosted by Turkish Customs with the support of the Union of Chambers and Commodity Exchanges of Turkey.

United around a common goal to stop the trade in counterfeit and pirated products, the organizers and participants aim to share experiences and devise strategies to counteract this global phenomenon and the harm these goods can have on consumer health and safety, as well as intellectual property rights (IPR).

During a recent trip organized by AIPLA’s Special Committee on Intellectual Property Practice in Israel, I had the pleasure of meeting the enthusiastic and tireless Asa Kling, who is the Director of the Israel Patent Office and Commissioner of Patents, Trademarks & Designs.  Since stepping into the role in 2011, he has focused on ensuring that Israel’s patent office matches Israel’s status as one of the world’s foremost technological innovators.

In 2012, the Israel Patent Office examined nearly 7,000 (6,800) new applications and reduced the time to first examination to less than 3 years (32.5 months).  Leading American companies, such as Raytheon, Qualcomm, and Genentech, have signaled their faith in the importance of the Office by filing hundreds of patent applications in Israel within the last year.  Additionally, since June 2012, the Israel Patent Office has become one of only sixteen active offices to operate as an International Searching Authority (ISA)/ International Searching and Preliminary Examination Authority (IPEA) for international Patent Cooperation Treaty (PCT) applications.

After the trip, I had the honor of asking Commissioner Kling a few questions over the phone.  The transcript of our conversation is below, and is edited for length and clarity.

Northern Exposure focuses on Canada and Canadian intellectual property laws, cases and procedures. From time to time we will also publish a Canadian perspective on important issues relating to US and Global intellectual property. For more articles please visit Northern Exposure – Canadian IP.

After receiving Royal Assent on June 29, 2012, the provisions of Bill C-11 came into force on November 7, 2012. Titled the Copyright Modernization Act, it has garnered the nickname “Canada’s SOPA” by some media outlets , referring to the highly contentious Stop Online Piracy Act bill introduced in the US House of Representatives that led to both physical and digital protests. Yet despite such bold claims, the Canadian amendment to the copyright act is a largely innocuous  piece of legislation that falls in line with its stated objectives.

Before delving into the major points of the bill and of its critics, it is important to note that an amendment has been a long time coming. The last one was in 1997. To put it into perspective: that was the year IBM’s Deep Blue defeated Garry Kasparov, and a good five years before any viable form of digital music became available for consumers. This means that for the better part of fifteen years, Canadians have been acting beyond the limitations of 20^th century technological terminology. Instead, in the void of proper legislation, the Supreme Court of Canada has set the precedents, with five of the most recent rulings made in July 2012.

On February 19, 24 members of the 27 European Union signed a unified patent court agreement in Brussels, Belgium. Bulgaria is expected to sign once it completes internal administrative procedures, but because the single patent will only need to be in English, German or French, only the countries of Poland and Spain have so far refused to join in the effort.

What does this all mean?

Efficient patent protection in Europe is a cost-intensive procedure. Overall, the acquisition of patent protection in all 27 European Union (EU) member states, including the costs of litigation, costs around 36,000.00 EUR (approx. US $48,000) today to book. This compares to an average price of a U.S. patent of 1850.00 EUR (US $2,500).

In light of these high costs, efforts have been made over the last 30 years to make patents uniformly applicable. Although the agreement for a European patent was signed in 1975, it hasn’t been close to reality until recently.

WASHINGTON — The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) is seeking stakeholder input on matters relating to international harmonization of substantive patent law.  To assist in gathering this information, a public hearing will be held on March 21, 2013, beginning at 8:30 a.m. ET in the USPTO’s Madison Auditorium located at 600 Dulany Street, Alexandria, Virginia.

In 2011, leaders and representatives from the patent offices of Denmark, France, Germany, Japan, the United Kingdom, the United States, and the European Patent Office – known as the Tegernsee Group – launched a dialogue on the international harmonization of substantive patent law. At a meeting convened in October 2012, experts from the Tegernsee Group offices were tasked to collaboratively develop a joint questionnaire to aid in the acquisition and analysis of stakeholder views across jurisdictions on four issues of particular interest to harmonization of substantive patent law: grace period, publication of applications, treatment of conflicting applications, and prior user rights.  It is expected that each patent office will separately administer the joint questionnaire to its respective stakeholders. The USPTO questionnaire will be open to anyone interested in participating in the process.

Australia Day – the official national day of the land Down Under – is commemorated each year on 26 January.  This was the day, in 1788, on which the First Fleet arrived at Sydney Cove, and British sovereignty was proclaimed over the eastern seaboard of Australia.

Of course, attitudes to colonialism are somewhat more ambivalent these days than they once were, and Australia Day is not universally celebrated.  Each year there are groups of indigenous Australians, and their supporters, who mark the occasion with alternative “Invasion Day” protests.

But this article is less concerned with actual imperialism, and more with cultural imperialism –particularly the “invasion” of this country by that once all-American, but now global, fast-food chain known variously in its land of origin as McDonald’s, the Golden Arches and Mickey-D’s.  Here in Australia, however, McDonald’s most prevalent nickname is “Macca’s”.  A recent branding survey commissioned by McDonald’s Australia found that 55 per cent of Australians refer to the company by its local slang name.

The European Patent Office (EPO) welcomed the adoption by the European Parliament in Strasbourg of two draft regulations on the creation of the unitary patent, hailing it as a historic achievement. “The European Union is to be congratulated on this decision, which clears the way for the completion of the European patent system with a unitary patent and a Unified Patent Court, which we have been waiting for in Europe for 40 years,” said EPO President Benoît Battistelli. “The significant lowering of the cost of patenting inventions in Europe will strongly benefit European enterprises, especially research centres and SMEs. The vision of the founding fathers of the EPO to equip the European economy with a truly supranational patent system now can become a reality, strengthening Europe’s competitiveness.”

The European patent with unitary effect (unitary patent) in the 25 participating states is based on two regulations, one creating the instrument, and one on the applicable language regime for the new patent. The EPO has been entrusted by 25 EU member states to deliver and administer unitary patents. The third element of the package is the creation of a unified patent litigation system set up under an international convention establishing the Unified Patent Court (UPC), a specialised court with a first and an appeal instance with exclusive jurisdiction concerning infringement and validity questions related to unitary patents. The positive vote in the Parliament became possible after the EU member states endorsed the regulations in their Competitiveness Council meeting on Monday. The unitary patent now has to be formally adopted by the EU Council and the European Parliament, which is expected soon.

The decision whether to file a patent application is not just limited to whether an innovation has been achieved, but whether there is enough of an advance to make it worthwhile to undertake the cost of preparing and ultimately obtaining a patent.  For universities the question is an even more difficult one than you might think because universities are almost universally engaging in early stage, highly-speculative research.  Thus, the decision to file typically needs to come very early on in the process so that the inventor, typically an academic or researcher affiliated with the university, can publish findings and share information with the world.

Universities produce a lot of patentable inventions, but the patent laws around the world do not provide special treatment for those innovations that are based on foundational scientific research that may be years away from fruitful commercial application.  What this means in patent terms is that once a university files a patent application the clock starts ticking. If, for example, a university files an international patent application there will be 30 months from that filing within which to decide whether to pursue patent rights in the Member Countries that have signed on to the Patent Cooperation Treaty.  That same 30-month deadline applies even if the first filing is a U.S. provisional patent application or a U.S. nonprovisional patent application, both of which can provide support for a later filed international patent application.  For more information see PCT Basics: Obtaining Patent Rights Around the World and PCT Basics: Understanding the International Filing Process.

Scientifically speaking, there is really very little time the point in time that work in a university laboratory is concrete enough to call “an invention” and capable of description in a patent application until the 30-month deadline to pursue rights in various countries around the world. What that means is that universities are constantly faced with a difficult decision. Do they undertake the expense of seeking patent protection in a variety of locations or do they forego the invention? This decision is particularly problematic for universities engaged in the life sciences where there is of necessity a very long time horizon from conception of the invention to even knowing whether there is a legitimate opportunity for commercialization.

Mexico’s Secretary of Economy Bruno Ferrari deposited his country’s instrument of accession to the Madrid Protocol for the International Registration of Marks with WIPO Director General Francis Gurry on November 19, 2012, bringing the total number of members of the international trademark system to 89.  The treaty will enter into force with respect to Mexico on February 19, 2013. The Madrid System for the International Registration of Marks (Madrid system) offers trademark owners a cost effective, user friendly and streamlined means of protecting and managing their trademark portfolio internationally.

Mr. Gurry welcomed Mexico’s accession, noting that “Mexico is the third country in the Latin American region to join the Madrid trademark filing system.  Its accession to the Madrid Protocol will assist enterprises in Mexico that are seeking to expand their markets overseas.  It will also assist WIPO in achieving its objective of transforming the Madrid System into a system with truly global reach.” He also congratulated Mexico’s Institute of Industrial Property (IMPI) and its Director General, Dr. Rodrigo Roque, for putting in place state-of-the-art practices that are supported by a modern information technology infrastructure and by competent human resources.  Mr. Gurry said that “Mexico’s legal and institutional framework will guarantee the successful implementation of the Madrid Protocol in Mexico,” noting that IMPI is among the top fifteen IP offices receiving the highest number of trademark applications worldwide.

Heads of the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), and the Japan Patent Office (JPO) – collectively known as the Trilateral Offices – met in Kyoto, Japan earlier this week to hold their annual Trilateral Conference, which marks their 30th anniversary this year. Since 1983, the Trilateral Offices have worked together to produce new databases and IT systems, evolving their cooperation by conducting various projects designed to solve common challenges.  Indeed, the Trilateral Offices have led the way on international patent cooperation and laid the groundwork for work sharing efforts globally.

Meanwhile, a coalition of the world’s five largest patent offices – the IP5 – earlier today announced the release of the IP5 Statistics Report 2011 Edition. The IP5 is comprised of the USPTO, the EPO, the JPO, the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO). These IP5 Offices together handle approximately 80% of the world’s patent applications.  The IP5 began meeting in 2007 and have since worked together to explore ways to further optimize their joint efforts to improve quality and efficiency of the examination process and to explore and optimize work sharing opportunities between the Offices.

All of the accomplishments of the IP5 and Trilateral Offices “lead to improving global patent systems today,” said Hiroyuki Fukano, Commissioner of JPO. “It is our current task to build an appropriate framework in which applicants are able to be granted patents smoothly in every corner of the world. In order to achieve building truly global patent systems in a global era, we would like to take the lead in developing such global patent systems.”

One year after its launch, WIPO Re:Search has doubled its membership and resulted in ten research collaborations or agreements. WIPO Re:Search is a consortium where public and private sector organizations share valuable intellectual property (IP) and expertise with the global health research community to promote development of new drugs, vaccines, and diagnostics to treat neglected tropical diseases, malaria, and tuberculosis It is administered by WIPO, in partnership with BIO Ventures for Global Health (BVGH), a non-governmental organization based in San Francisco, California.

Members of WIPO Re:Search are meeting in Geneva today to take stock of the year’s progress and explore strategies to expand on the initiative’s success. On the evening of October 29. 2012, representatives of WIPO Re:Search member institutions – Dr. Ellis Owusu-Dabo, Scientific Director of the Kumasi Centre for Collaborative Research in Tropical Medicine at the Kwame Nkrumah University (Ghana) and Dr. Dennis Liotta, Professor of Chemistry at Emory University (Atlanta, Georgia) – spoke about the value of WIPO Re:Search to scientists in developing and developed countries. Dr. Liotta pioneered the invention and development of important anti-retroviral therapies for HIV/AIDS.