International Intellectual Property Registration Systems
Intellectual property applicants can opt for various registration methods to protect their rights in countries outside Vietnamese territory, as follows:
1. National track
Applicants can choose to protect their rights individually in each country by directly registering with the industrial property or intellectual property offices of those countries. Applications may need to be translated into the specified language, typically the main language of the respective country. You will need to pay the national application fees and, especially for patents, you may need to authorize an individual or an intellectual property representative organization to ensure that your application meets the requirements of that country. Some countries also require you to use an intellectual property representative. If you are still assessing the commercial viability of a patent or searching for potential export markets or licensing partners, national route protection can be costly and complicated, especially when registering in multiple countries. In such cases, the services of international registration and application systems for patents, trademarks, and industrial designs managed by the World Intellectual Property Organization (WIPO) could offer a simpler and more cost-effective solution.
2. Regional track
Several countries have established regional arrangements allowing intellectual property protection across an entire region with a single application request. The Regional Intellectual Property Offices include:
The European Patent Organisation (EPO), providing patent protection across all 27 member countries of the European Patent Convention. For more information, please visit: www.european-patent-office.org
The Office for Harmonization in the Internal Market (OHIM), protecting Community Trademarks and Community Designs and granting the owner unified rights effective in all European Union member states through a single procedure. For more information, please visit: http://oami.eu.int.
The African Regional Intellectual Property Organization (ARIPO) for English-speaking African countries, covering patents, utility models, trademarks, and industrial designs. For more information, please visit: http://aripo.wipo.net.
The African Intellectual Property Organization (OAPI) for French and Portuguese-speaking African countries, protecting patents, utility models, geographical indications, trademarks, industrial designs, and integrated circuit layouts. For more information, please visit: http://oapi.wipo.net.
The Eurasian Patent Office (EAPO), offering patent protection in the Commonwealth of Independent States (CIS). For more information, please visit: aepo.org.
The Benelux Office for Intellectual Property (BOIP), providing protection for trademarks and designs in Belgium, the Netherlands, and Luxembourg. For more information, please visit: bmb-bbm.org and www.bbtm-bbdm.org.The Gulf Cooperation Council (GCC) Patent Office, offering patent protection in Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates. For more information, please visit: gulf.patent-office.org.sa/.
3. International track
The international registration and application systems managed by WIPO significantly simplify the procedures for registering intellectual property protection in multiple countries. Instead of filing numerous national applications in different languages, the international systems allow for a single application, in one language, with one set of fees. These systems not only support the entire application process but also significantly reduce the costs of international registration for trademarks and designs (for patents, the Patent Cooperation Treaty (PCT) system allows your business to evaluate the commercial value of patents before entering the national phase). The international protection systems managed by WIPO include three protection mechanisms for different types of industrial property rights.
The international application system, established under the Patent Cooperation Treaty (PCT), is a global system aimed at simplifying the filing of patent applications in multiple countries.
International trademark registration is supported by the Madrid System.
International filings for industrial designs are governed by the Hague Agreement.
3.1. PCT System
Would you like to protect your patent across multiple countries? If so, the benefits of filing an international application under the Patent Cooperation Treaty (PCT) are worth considering. By submitting a single international PCT application, you can simultaneously seek patent protection in all PCT member countries (123 countries as of January 2004).
A key advantage of the PCT system is the provision of an 18-month period (in some cases, 8 months) — allowing you a total of 30 months (or in some cases, 20 months) instead of the standard 12 months to utilize your priority right — to decide which countries you wish to seek protection in. During this period, applicants can assess the commercial viability of their product in various countries and determine which ones are critical or convenient for seeking protection. As a result, the payment of national filing fees and translation costs into relevant languages is deferred for the applicant over this 30-month period. The translation costs will be paid later, but only after 18 months (or in some cases, 8 months) compared to not registering under the PCT system and only in countries where the applicant remains interested. Otherwise, all these costs will be saved.
The PCT system is widely used by applicants to maintain all patent protection opportunities in different countries for as long a period as possible. Applicants can file in their home country, or if applicable, at the regional intellectual property office, or through the International Bureau of WIPO. National Patent Offices can provide you with detailed information on how to submit a PCT application.
If an applicant opts not to use the PCT international registration process, preparations for filing abroad must commence three to six months before the end of the priority period. The translation of the protection application must be prepared and submitted along with different applications for each country. Conversely, by using the PCT system:
An applicant only needs to file a single application within the year of priority (meaning within 12 months from the date of filing the national application);
The application will be effective in all PCT member countries;
The application can be identical in terms of language and form to the national application of the applicant;
The applicant has additional time to evaluate the commercial potential of the patent.
3.2. Madrid System
If you’re looking to protect your trademark in multiple countries but find the idea of filing separately in each country complex and costly, the Madrid System offers a streamlined solution. Governed by two international treaties—the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol—this system allows for international registration of trademarks under the stewardship of the International Bureau of WIPO. While some countries are members of both treaties, others may be members of just one. This system facilitates the maintenance of international registrations and the publication of the WIPO Gazette of International Marks.
An international application under the Madrid System can be filed by a natural person or a juridical person with a real and effective industrial or commercial establishment in, residence in, or citizenship of one of the countries party to the Madrid Agreement and/or the Protocol.
A trademark can be the subject of an international registration only if it has been registered (or, in the case of an application under the Protocol, has been filed) at the Trademark Office of a member country with which the applicant has the necessary connection — referred to as the Office of Origin.
Key advantages of using the Madrid System include the ability for trademark owners to protect their mark in several member countries of the Madrid System by filing a single application; in one language (English, French, or Spanish, although the Office of Origin may restrict the choice to one of these languages); and paying a single set of fees in one currency. Moreover, changes related to the international application and the renewal of registrations can be managed through a single procedural step that is effective in all designated member countries.
Trademarks can be protected in any country that is a party to the same treaty (Agreement or Protocol) whose national trademark office is the Office of Origin. Protection in additional countries can be achieved through designation in the international application, with the possibility of extending protection based on subsequent designations.
The designated national trademark office has the right to refuse trademark protection in its territory. The refusal may be based on the basis that a protection application filed directly with that Office may also be refused. Refusals are notified to the International Bureau and recorded in the International Register.
In principle, any refusal must be issued no later than 12 months from the date the relevant trademark office receives the designation notification. However, if a country is designated under the Protocol, the refusal period may be extended to 18 months. A country may also declare that refusal based on opposition may occur after the 18-month period, provided the relevant trademark office notifies the International Bureau of this possibility within 18 months.
Thus, at the end of the aforementioned period, Applicants for international protection can know whether the trademark is accepted for protection in the designated countries or whether protection is refused in a given country, or whether there is still a possibility of refusal based on objections in a certain country. An international registration is valid for 10 years and can be renewed multiple times for 10-year periods, provided that the prescribed fees are paid.
3.3. Hague Agreement
Traditionally, the protection of industrial designs is limited to the territory of the country in which protection is sought and a protection certificate is issued. If you seek protection in more than one country, you must file separate applications and must follow different procedures in each country.
The Hague Agreement Concerning the International Registration of Industrial Designs presents a global treaty managed by WIPO, offering a simplified solution for registering industrial designs in various countries. This agreement enables citizens, residents, or businesses established in a member country to obtain industrial design protection across numerous nations following these streamlined procedures:
A single “international” registration;
One language (English or French);
Payment of a single fee;
In one currency;
Application submission through a single office (either directly to the International Bureau of WIPO or, in certain cases, through the national office of the contracting state).
An industrial design that is the subject of an international registration is entitled to protection in the relevant member country, unless protection is refused, same as the protection that the law grants to industrial designs of that country, unless the national industrial design office refuses protection in prescribed cases. Therefore, internationally registered designs have the same rights as national designs in terms of scope of protection and enforcement. At the same time, internationally registered designs support the maintenance of protection: There is a single registration fee for renewal and a simple procedure to record any change, for example, in ownership or address.
References:
Patent Cooperation Treaty. WIPO. Available at wipo.int/pct/en. Information about the PCT, its implementing regulations, and guidance for applicants.
Madrid System for the International Registration of Marks. WIPO website at www.wipo.int/madrid/en. Includes basic information related to the Madrid System categorized under Overview.
Guide to the International Registration of Marks under the Madrid Agreement and Protocol. WIPO, 2002. Available at wipo.int/madrid/en/guide.
The Hague Agreement: Objectives, Key Features, Advantages. WIPO. Available at wipo.int/hague.en/pub_419. An overview of the objectives, characteristics, and advantages of using the Hague System for the International Registration of Industrial Designs.
VNUHCM Intellectual Property and Technology Transfer Center