Managing Global Intellectual Property

world ip day 2016Observed annually, April 26 is World Intellectual Property day. The event was established by the World Intellectual Property Organization (WIPO) in 2000 to “raise awareness of how patent, copyright, trademarks and designs impact on daily life.”

To recognize World IP Day and the important role intellectual property (IP) plays in global innovation and creativity, Park IP Translations looks at some of the key challenges of working within the global IP industry. In this special guest interview of European Patent Lawyer, Esther San Martin Alarcia, Head of Patent Prosecution Area at global IP firm, PONS Patentes y Marcas, Park IP shares valuable insights into some of the challenges of working across international borders and managing global IP. Based in Madrid, Spain, Esther has worked in intellectual property for more than ten years.

“Globalization is happening right now, it is an important issue for any IP attorney and law firm working with clients who want their patents filed and protected internationally,” said Esther San Martin Alarcia, European Patent Lawyer and Head of the Patent Prosecution Area at PONS Patentes y Marcas.

Both small and large corporations see the importance of international protection, they are just not aware of the legal complexity in other countries. For IP lawyers, it is important to have a global view of IP protection in different countries. If clients have concerns on IP rights, they turn to their IP law firm as their expert in providing accurate advice. Sometimes, the procedures in different countries are not always clear, and many times ambiguous, this can be challenging. Clients lean on their counsel to use the attorney’s experience and relevant information to make the right decision in securing the correct protection.

For patent filing, there can be disparity across countries, with different countries having varying regulations. For some countries, the regulations are confusing and can change on a regular basis. Local regulations can be open to interpretation. Granting patent rights at a local and global level is not an exact science.

In WIPO’s World Intellectual Property Indicators 2015 report, global IP activity continues to grow in most countries, with around 2.68 million patent applications filed in 2014. China has driven the growth in overall IP activity with patent applications increased by 12.5% and trademark applications risen by 18.2%. Demands for patent filing in more than one country is growing and IP attorneys have to navigate their way through the various IP systems to make the best decisions on behalf of their clients.

“As an example Brazil is an emerging country for patent filing and they have a huge delay in granting patents, sometimes seven to eight years. Clients don’t know how to deal with this. Quite often, IP and patent decisions are taken at the last minute so you need to know the filing dates and deadlines and whether an extension is available,” said Esther.

“Some countries’ IP rights systems are not always clear and applicants don’t know how to enforce rights in that country. In South America or even USA, you can ask 3-4 questions from different attorneys and you can get differing responses for the same question! As you become more experienced with the various countries, you do learn how to get extension on deadlines and better understand the procedures and regulations of the local patent offices. There is so much information on patents and varying interpretations in different countries, it can sometimes be a challenge. In the ideal world, a harmonization of all the different laws would make it simpler to get patents granted. The Patent Law Treaty goes someway in bringing together the different systems but doesn’t cover all the countries where there is high demand for patent protection,” noted Esther.

So how do IP lawyers, like Esther, ensure they have the latest information to make sure they make the right decisions for their clients?

“What is key is to have a network. Networking and continual communication. You can’t work without a network of colleagues and contacts in other countries who you can trust and rely on for current information. My company, PONS Patentes y Marcas, is a large, well-known IP organization and we have to make sure we have the latest knowledge in all areas to ensure we provide our clients with the best advice,” continues Esther. “Receiving regular bulletins and newsletter from trusted institutions, like WIPO, is always important for our work. I receive WIPO’s regular newsletter which is invaluable, from significant change in patent law, down to the smallest detail. Even minor changes are important, such as a change of telephone number for a local patent office. Networking and keeping updated with the latest information is so important for me in providing the best advice to my clients.”

The Patent Law Treaty (PLT) was adopted in 2000, the Patent Law Treaty (PLT) aims to harmonize and streamline formal procedures with respect to national and regional patent applications, making procedures more user friendly. The PLT is open to State members of WIPO and/or States party to the Paris Convention from the Protection of Industrial Property (1883).

Interview by Louise Law, Welocalize Global Communications Manager,


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