Despite numerous setbacks and delays - most recently a June 2017 decision by the German Constitutional Court that prevents Germany from adopting the Unitary Patent System, at least temporarily - optimists are confident that the new Unitary Patent System will come into effect in December 2017. Nearly all the members of the European Union have agreed to the Unitary Patent System. This system creates a Unitary Patent which is enforced in a new Unitary Patent Court. Consequently,

As you may know, at any time, you can check the status of any pending or registered trademark at the United State Patent and Trademark Office (USPTO) at the Trademark Status and Document Retrieval (TSDR) tab, http://tsdr.uspto.gov/. You can find the status of a mark, assignment information, owner information, the goods and/or services covered by the trademark, and more. Following up on a previous blog entry, the USPTO has worked to increase communication and understanding of

The Hague Agreement is an international registration system that allows the possibility of obtaining protection for up to 100 industrial designs in designated member countries and intergovernmental organizations (known as “Contracting Parties”) by filing a single international application in a single language with either the International Bureau of the World Intellectual Property Organization (WIPO) or through the office of applicant’s Contracting Party. The United States agr

Part of my position as an international paralegal is handling the recordation of ownership changes in various countries. This can be challenging when you have a client with a large, worldwide IP portfolio that frequently undergoes legal entity changes, such as conversion from a corporation to a limited liability company. It is even more challenging when there are several changes that were not previously recorded and you have to play catch up. Changes in ownership should be re

You’ve filed for patent protection in the U.S. and are now considering filing internationally. You decide that you only need protection in one or, perhaps, a few specific countries and therefore, rather than filing a Patent Cooperation Treaty (PCT) or European Patent Convention (EPC) application, you want to file direct “national” applications. There are quite a few things that we can do in advance to prepare for the national filings in order to avoid unnecessary delays and a

Some say long distance relationships just don’t last, but hey, what do they know? After being a part of Head, Johnson & Kachigian, P.C. for over 22 years now and after working directly with our clients and associates worldwide throughout these years, I would beg to differ with them. Head, Johnson & Kachigian, P.C. has many long distance, and long lasting, relationships with some of the greatest associates and clients around the world. So, what does HJK possess that makes thes

While one could argue that every day is a day to celebrate intellectual property, the official World Intellectual Property day is celebrated April 26th of every year. World IP Day was established in 2000 by the World Intellectual Property Organization to raise awareness of how patents, copyrights, trademarks, and designs have an impact on daily life. It is also a day observed in celebration of the contributions innovators make to enhance society around the world. To put it si

If you are like me, you have grown up in a family with many idiosyncrasies, traditions and shared knowledge. The implication of this is that there can be a specific way to do nearly everything. I can recall the countless times my grandfather and other relatives taught me the great lessons of the family: how to win at marbles, how to change a tire, how to marry a man with a good job (that lesson was always complex). Years later, I look back and realize what was taking place- a

When protecting intellectual property internationally, often an applicant of a U.S. trademark application or registration will want to protect their mark in several countries, but is unaware of the applicable laws that govern the intellectual property of that country. An option that has become quite viable and saves the applicant time and money would be to file for protection within the Madrid Protocol. The Madrid Protocol is system for registering international marks. In 189

The Patent Cooperation Treaty (PCT) is an international patent law treaty among 144 contracting states. The world’s major corporations, research institutions, and universities as well as medium-sized enterprises and individual inventors use the PCT when they seek international patent protection. The contracting states that are parties to the PCT constitute the International Patent Cooperation Union. For a list of contracting states, please see the web site for the World Intel

Have you recently received an email claiming that someone is trying to register a domain name incorporating your trademark in Asia? If so, it was probably a scam. While these or similar scams have been around in one form or another for years, in recent months, such emails have been sent to trademark owners with increasing frequency. The email typically purports to be from a domain name registrar, and states that the registrar has received a request to register a domain name c

The Madrid System for the international registration of trademarks was established in 1891 and functions under the Madrid Agreement and the Madrid Protocol. The Madrid Agreement and the Madrid Protocol are treaties for international trademark protection. The system is administered by the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland. The Madrid System offers a trademark owner the opportunity to protect their trademark in several countries by f

Authentication or legalization of documents is a necessary step in international patent and trademark filing. Most countries require a legalized power of attorney and/or assignment document for presentation to their respective intellectual property office in order to prove that signatures are genuine. This is done by obtaining either an apostille or authentication, depending on the country in which you are filing. In an effort to replace the cumbersome formalities of the

Thailand has recently become the 142nd contracting state of the Patent Cooperation Treaty (PCT). Any PCT application filed on or after the effective date of December 24, 2009 will automatically designate Thailand along with the other contracting states. Additionally, nationals and residents of Thailand will be able to file PCT applications as of the effective date. The current PCT member states are shown in blue on a map that can be obtained from the WIPO website at http://ww

Under Section 102(e) of Title 35 of the United States Code, a person is not entitled to a patent if their invention was described in a published application or patent granted on an application filed in the United States before the invention by the applicant. An international application may have the same effect as an application filed in the United States for purposes of Section 102(e), but only if the international application designates the United States and was published i

The five major intellectual property offices (IP 5) recently announced that they have laid out a blueprint for work sharing and collaboration. The five offices are the United States Patent and Trademark Office, the European Patent Office, the Korean Intellectual Property Office, the Japan Patent Office, and the State Intellectual Property Office of the People’s Republic of China. The five offices adopted the following vision statement for the work sharing initiative: “The eli

The PCT application may be filed in the USPTO as an RO although the IB of the WIPO administers the PCT. Have you got that? The Patent Cooperation Treaty has added a new lexicon to the already arcane language of patents. Here’s an explanation in English. The PCT (Patent Cooperation Treaty) is an international agreement to which the United States became a full party in 1987. A number of enhancements have been added to the PCT this year. The PCT provides for the filing of patent