International Desk
Our alliance with the leading firms in each country is our guarantee of success.
Despite following an expansion policy in Spain with more than 12 offices, 98 years of experience and a significant international presence, ISERN did not want to continue with this strategy abroad.
Our experience and what we have seen over the years is that Industrial Property is a very specialised branch and it is much more satisfying with regards to clients and the success of cases is to work with the best local Industrial Property agents for each case and speciality rather than being “tied” to one representative of the trademark itself by way of “franchise” in a territory.
This option has enabled us to increase our reach, obtain more knowledge, always work with the best and have more options for our clients when defending their industrial property rights.
Furthermore, the large number of cases handled by ISERN abroad enables us to work with the best agents and lawyers in each country with business costs and preferential treatment.
In this regard, we are completely transparent, always giving information from the correspondent or office handling a case in a certain country and we can adapt to the client’s preferences regarding a specific territory.
ISERN has created internal “desks” specialised in geographic fields that are more or less extensive and/or specific and form part of the international trademark and patent department structure. These Desks are:
- International Desk
- Latam Desk
- Asia Desk
- Japan Desk
As such, the heads of the Asia and Japan Desk are two paralegals, nationals of China and Japan and specialised in IP, who are perfectly familiar with the idiosyncrasies of their country. They can also communicate perfectly (both written and spoken) in their respective national languages with the correspondents if necessary.
The INTERNATIONAL DESK is made up of agents, lawyers and engineers who are specialised in consultancy and strategy for the internationalisation of industrial property portfolios in accordance with the specific company’s strategy.
The members of the INTERNATIONAL DESK, in addition to having in-depth knowledge of the international systems, international agreements and territorial details and requirements regarding the protection of industrial property it affords, they also attend numerous international conferences and conventions in order to be abreast of the latest developments regarding international agreements and treaties that affect industrial and intellectual property rights.
Similarly, they know the best profesional profiles with whom to address specific topics in each country in order to offer and always have the best professionals available for our clients according to the requirements of each case or speciality.
LANGUAGES: In addition to Castilian Spanish and Catalan, ISERN can communicate perfectly in English, French, German, Chinese and Japanese with absolute fluency from its own offices.
Internationalisation of Intellectual Property rights at ISERN
The professionals and experts in internationalistion of Industrial Property rights at ISERN will always ensure that the protection of your rights beyond the Spanish borders is optimal for your interests and entail the lowest possible costs.
To fulfil this, we will always inform you of the possible alternatives, the pros and cons of each one, costs as well as our legal opinion and how we would act according to our judgment and the circumstances of each case.
In general, industrial property registrations are territorial, which means that the registration of a patent, trademark or industrial design in the Spanish Patent and Trademark Office (SPTO) only grants its holder an exclusive right to its use in Spain. As a result, the exportation to other States of goods that have a protected category cannot be guaranteed if the goods are not also registered by the same holder.
That said, there is the possibility of protection in a larger territorial scope through supranational registrations, international WIPO registrations, the use of international patent treaties and agreements, etc.
However, at ISERN we are aware that protection of Industrial Property rights at an international level is costly and must be planned over a period of time. This means that, before making a decision, it will be essential to carry out an assessment of the following aspects:
- What are our potential and future markets?
- In which markets would we be willing to bring legal action in order to protect our position?
- What resources do we have?
- What is the strategic position of our competitors?
Depending on the results of this analysis, there are different protection strategies available if we wish to internationalise our trademarks, patents or designs and that the INTERNATIONAL DESK will adapt and prepare according to your needs, company expansion strategies and interests.
If you want to internationalise your brands abroad, we have different options
1.- Directly
Country by country, filing the corresponding applications in each one of the countries in which the trademark is to be registered, obtaining different national registrations that are independent of each other.
2.- European Union Trademark
This proceeding is regulated by the EU Trademark Regulation, which establishes the possibility of obtaining protection in the 28 member States of the European Union (EU) through a single application. The EUIPO is a member of the Madrid Protocol. Accordingly, it is possible to extend an international trademark registration to this jurisdiction through the Madrid System. The duration of this registration is 10 year and may be renewed indefinitely.
3.- Internacional Trademark
In order to apply for a Trademark through this proceeding, a trademark must already be registered at a national or community level. Through this proceeding, which is regulated by the Madrid Agreement and its Protocol (Madrid System), protection can be obtained in a number of countries by filing a single application before the World Intellectual Property Organization (WIPO). The registration has the same effects as if the application had been present in each of the designated countries. Each country will examine the application as if it were a national trademark and will apply their National Law to grant it or not. As such, an international application may be partially granted in terms of territory and application. The duration of this registration is 10 year and may be renewed indefinitely.
4.- OAPI Trademark
The OAPI is the main organisation that ensures the protection of intellectual property rights in the majority of French-speaking African countries, and it is made up of: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Côte d'Ivoire, Gabon, Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea-Bissau, Senegal and Togo. Thanks to the OAPI, all the processes for protecting distinctive signs in all member countries are centralised, facilitating the process and reducing costs. The OAPI is a member of the Madrid Protocol. Accordingly, it is possible to extend an international trademark registration to this jurisdiction through the Madrid System. Trademarks registered through the OAPI will be valid for ten (10) years as of the application date, and may be renewed indefinitely for additional 10 year periods.
To internationalise your patents, you can choose between different options depending on your strategy
- The geographic location of where you want protection.
- The language in which the processing is to take place.
- The cost that you are able to undertake and the possibility of benefiting from annual aid given by the SPTO that will partially subsidise the cost.
- The time period in which you wish to obtain the patent.
1.- PCT Route
This system initiates the simultaneous processing (not a granting process), through a single application, in 148 countries. This option has the great advantage of also broadening the internationalisation period of the patent, thus enabling the applicants to make a final decision on whether or not to file your patent in the selected member countries of the PCT. Indeed, the PCT enables you to "buy time", since your decision to enter into the national phase can be delayed by up to 30 months as of the international filing or priority date. In fact, the acronym PCT stands for Patent Cooperation Treaty but at ISERN it is colloquially renamed as "Para Comprar Tiempo" or "To Buy Time" in English. In addition, it enables a patent application to remain secret for a minimum of 18 months, which can be useful when assessing its viability and preventing unnecessary costs. In any case, it is very important to make it clear that the PCT is not a patent granting proceeding but rather it is a system through which the processing before granting different national or territorial patents is unified. Moreover, this proceeding allows you to "buy time", since your decision about entering the national phase can be delayed by up to 30 months as of the international filing or priority date, when applicable, and keep your invention secret for a minimum of 18 months, which can be useful when assessing its viability and preventing unnecessary costs.
2.- European Route
This route enables a patent to be granted that can be valid in up to 38 countries within Europe. It is not a single "European or community patent". It is a patent granting proceeding that the member states of the European Patent Convention (member which are often not European countries) give it validity and reliability to then transfer said granting to their territory and independently validate it as if it were a national patent. There is the option of a EuroPCT, that is, an international PCT application that enters into "regional" or territorial phase in Europe.
3.- PPH Route
In order to boost internationalisation, the Spanish Patent and Trademark Office (SPTO) has signed a series of agreements internationally known as Patent Prosecution Highway (PPH), which will enable an applicant of the SPTO to request a fast-track processing in another office that participates in the PPH programme, as long as the requirements are met.
The protection of Industrial Designs abroad
1.- DIRECT national registrations
Country by country, filing the corresponding applications in each one of the countries in which the industrial design is to be registered. In these cases, it is of the utmost importance to claim the priority of the first registration in Spain so as not to lose novelty or unique character and so that said registrations are not voidable by third parties.
2.- International Design
Through this proceeding, which is regulated by the Hague Agreement, protection can be obtained in many countries by filing a single application through the World Intellectual Property Organisation (WIPO). This registration grants the same effects as if the application had been filed in each of the countries designated by the Agreement. Each country examines the application according to their criteria and legislation and may indistinctly grant or deny protection. The duration of this registration is 5 years and is renewable up to a maximum number of years that is different for each member State of the Agreement.
3.- European Union Design
It enables protection to be obtained through a single application, which may be filed if the applicant chooses before the EUIPO, in 28 member States of the European Union (EU). The duration of this registration is 5 years and is renewable up to a maximum of 25 years.