Protecting your business abroad: Latin America, China and South-East Asia Landscape Eli Salis 28th February 2017
Today s Speaker Name: Eli Salis Firm: Disain IP Location: Alicante Email: esalis@disainip.eu Mr. Eli Salis is Partner attorney at Disain IP (Alicante, Spain) and focuses on Intellectual Property, in particular, with the protection, prosecution and enforcement regarding trademarks, patents, designs and copyrights. He has graduated from the National University of Litoral, Santa Fe (Argentina) and has a Master Degree on IP from the University of Alicante. He represents international and medium sized companies in proceedings before National Offices of Patents and Trademarks. He also has extensive experience in managing and coordinating the prosecution and enforcement of IP matters across the Europe and Latin America regions. Eli is author of several publications on IP matters and lectures at different Universities in Europe and Latin America. He also provides consulting services to the World Intellectual Property Organization (WIPO).
Agenda 1) Starting point: a real case 2) Internationalization process and IPR 3) Patents 4) Trademarks 5) Q&A 3
Starting point Spanish Company NOGOENER dealing with the installation of energysaving apparatus, energy price comparison service, repair of energy supply installations and information in relation to the distribution of energy. NOGOENER filed in April 30, 2016 a European Patent application for an energy-saving apparatus that can switch a plurality of templates containing procedures for controlling the connected devices. NOGOENER has a trademark registered in the EU for services in class 35, 37 and 39.
Internationalization process and IPR Identification of IP Assets (patents, trademarks, designs, trade secrets, software, etc.). Draw a mapping through an IP due diligence: IP assets already owned and the those needed to be protected. Identification of markets (Brazil, Argentina, Mexico, Colombia, China, Vietnam, Thailand and Singapore) How to get into such markets? On their own or with other local or foreign companies?.
IP strategy Offensive strategy: the main goal is to protect the owned IPR and to acquire external IPR (if necessary). Defensive strategy: the main objective is to eliminate or reduce risks.
Patents Patents rights are territorial. Filing a patent in many countries at the same time may imply enormous costs (fees, translation, etc.). It is not possible to obtain a patent protection with worldwide effect. Use of the PCT Grace period in several patent laws (LA countries, China, Vietnam, Indonesia).
PCT Argentina is not member of the PCT (Patent Cooperation Treaty). The other 7 countries are members of the PCT. 12 months 12 months (Paris Convention)
Patents: Differences with the European Legal System Practical case: Inventor A, who is based in Spain, presents a paper in China on January 8, 2016 and in Brazil on January 15, 2016. He then returns to Spain and is busy with other work. In May 2016, he remembers that he needs to file a patent application on the invention. Is it too late for him to seek patent protection?
Trademarks Trademark rights are territorial. Non-registration risks. Trade mark searches Use of the Madrid System. Since Argentina, Brazil and Thailand are not member of the Madrid System, it is not possible to designate those countries in a single International application for registrations of a trademark.
Madrid System Argentina, Brazil and Thailand are not members of the Madrid System. The other 5 countries are members of the Madrid System.
Strengths & Weaknesses of the IP System in Latin America, China and South-East Asia countries Law Perspective Enforcement Not all countries are member of the PCT and the Madrid System Backlog at certain Patent Offices
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