1. The IP International framework Seminar on the Role of IP for SMEs Damascus, November 17 and 18, Marco Marzano de Marinis, Program Officer Small and Medium-sized Enterprises Division World Intellectual Property Organization

2. ./.. The IP International framework
The Madrid Patent System Cooperation System(PCT)

3. Protecting technological innovation: Patents

4. The functioning of the IP System
PATENT
A patent is an exclusive right granted by the State for an invention that is new, involves an inventive step and is capable of industrial application. It is, generally, valid for 20 years. In return for the exclusive right allowed by the National IP Office, the applicant has to disclose the content of the invention to the public.
INVENCIÓN
An invention is a new or inventive solution to a technical problem
Invention
Display the patent content
Patent Exploitation
Patent grant
- Balance between Patent owner right and the public interest
- Economic and Technological Development

5. Protecting Inventions
1) Patent Protection Requirements:
Novelty,
Inventive step
industrial application
2) Inventions that cannot be the object of a Patent :
Discoveries and scientific theories;
Aesthetic creations;
Schemes, rules and methods for performing mental acts;
Mere discoveries of substances as they naturally occur in the world;
Inventions that may affect public order,good morals or public health;
Diagnostic, therapeutic and surgical methods of treatment for humans or animals;
Plants and animals other than microorganisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes; and
Computer programs.

6. PROTECTION IS NOT GRANTED IN THE FOLLOWING CASES:
Discoveries and scientific theories
d) Schemes, rules and methods for performing mental acts
Artistic or literature creations
Diagnostic, therapeutic and surgical methods of treatment for humans or animals
Industrial application and Technical
aspects are missed

7. ./.. Protecting Inventions
3) Practical aspects:
Patent protection generally length for 20 years
Territorial Protection
Patent protection allows thirds to :
reproduce
distribute
sell
use the invention without having got the authorization by the owner
Where to protect your invention
National route
Regional route (OEB, OAPI,etc..)
International route (PCT)

8. Few Strategies for Protecting Your Invention on an International Scale
National Route .
Regional Route
Internacional Route, PCT
Patent
National IP Office
EPO
Regional IP Office
OAPI
Nat. Office
International
Phase
Nat. Office
Nat. Office

9. Patent Protection Strategies
Patent Cooperation Treaty
File Local Application
12 months
International application
Once filed, the national application can be followed by one or few applications in foreign countries. The application has to be lodge within 12 month from the first deposal (priority clause, Paris Convention)
- Many Administrative formalities depending on the number of countries in which you want to protect your invention
- Increase of technical procedures, such as: state of art research
- Payment of national patent registration costs (file and translation) within the 12 months allows by the Paris Convention

10. Few Strategies for Protecting Your Invention on an International Scale
National Route .
Regional Route
Internacional Route, PCT
Patent
National IP Office
EPO
Regional IP Office
OAPI
Nat. Office
International
Phase
Nat. Office
Nat. Office

11. Average costs: European Patent system, protection within 8 countries for 10 years
100%
€ € Day
Total
38% €
Translations
28%
8 900 €
Renewal fees
20%
6 100 €
Agents/Lawyers
14%
4 300 €
IP Offices

12. Few Strategies for Protecting Your Invention on an International Scale
National Route .
Regional Route
Internacional Route, PCT
Patent
National IP Office
EPO
Regional IP Office
OAPI
Nat. Office
International
Phase
Nat. Office
Nat. Office

13. Patent Cooperation TreatyCM
Intro– 1
(Month 0)
File
PCT
Application
National
Phase 12 30
Int
. search
report &
written
Opinion
on the state
of the art 16 18
International
Publication
Via I
Via II
File Local 20
Patent Cooperation Treaty 28
(optional) File demand for Int..
preliminary report on
patentability 22
(optional) File demand for Int.. preliminary
examination
Patent Cooperation Treaty

14. PCT Members www.wipo.int/pct Patent Cooperation Treaty
More than 130 Members countries,

15. PCT advantages Patent Cooperation Treaty
1 Unique administrative procedure: file lodges by the national or resident (physical or legal entity) of one PCT members,
-- application extendable to 133 countries
-- 1 set of fees
1 International search report + written opinion on the existing state of art
1 International publication
1 international preliminary examination + International preliminary examination report on patentability (optional)
Extension up to 30 months (instead of 12 months as foreseen by the Paris convention) for protecting the patent internationally
The filing of national: fees and patent application, are foreseen from month 30 and only if the owner considers appropriate proceeding in the international registration
* in the PCT procedure WIPO does not allows any patent. It simply facilitate invention protection world wide through national IP Offices

16. TM international protection of TM:
The Madrid System

17. Few Strategies for Protecting Your TM on an International Scale
National Route .
Regional Route
Internacional Route, Madrid system TM
National IP Office
Regional
Office
Regional IP Office
Nat. Office
International
Phase

18. Madrid System 1 system two treaties : -- Madrid Agreement (1891)
-- Madrid Protocol (1989)
The main advantage of the Madrid system is of granting the registration of TMs in about 80 member countries
By using 1 unique procedure
1 unique administrative file management
1 language (EN, FR, ES)
More than users; 412,000 international registration in force = 4,800,000 National TMs
Extremely useful for SMEs since costs are reduced of 10/20 times

19. ./.. The Madrid System (data 2008: about 80 members)) Madrid System
Arrangement 11 Protocole 21 Arrangement and Protocole 45
Madrid System

20. ./.. Madrid System Madrid Agreement (1891) Madrid Protocol (1989)77 51 27

21. The Madrid system and its functioning
Main Aspects
1 application,
1 language (FR, EN, ES),
1 set of fees,
Lodged by a natural or legal entity, having an:
business establishment
domicile
nationality
1 unique system of management:
National Office,
Formal examination,
registration,
notification and publication,
Possible refusal by contracting parties

22. ./.. Madrid system costs simulation
Madrid System data 2003

23. Madrid System’s Main users
Madrid System data 2003
France 3 281=15.0%
Germany 4 999=22.9%
Other Countries in transition 1484=6.8%
Other Developing Countries 197=0.9%
Czech Republic 355=1.6%
Italy 1 806=8.3%
United Kingdom 599=2.7%
Benelux 2 104=9.6%
Denmark 347=1.6%
Other Countries 1303=6.0%
Sweden 355=1.6%
Austria 723=3.3%
Switzerland 2 204=10.1%
Spain 914=4.2%
Turkey 408=1.9%
China 413=1.9%
Russian Federation 355=1.6%

24. Registration by owners’ categories
TM grouped by owners marks 3-10 marks
marks marks
> 500 marks
Total
80.00% 16.33% 3.47% 0.19% 0.01% %
N. Of Owners
Owners 
1-2 marks 32%
marks 27%
3-10 marks
25%
marks
11%
> 500 marks 5%
Registrations more than (400,000) 

25. OMPI, PMEs website: www.wipo.int/sme
Thanks!
OMPI, PMEs website: