IP offices of the 21st century
By Maximiliano Santa Cruz S., National Institute of Industrial Property (INAPI), Chile
Intellectual property (IP) offices need to move with the times.
In the past, patent and trademark offices played a rather passive role, acting as registries for users seeking exclusive rights to protect their IP assets. But in today’s dynamic, high-tech and highly competitive globalized world, IP offices must be prepared to actively promote learning, innovation and technology transfer in support of national economic, social and cultural development goals.
At the Chilean National Institute of Industrial Property (INAPI), the aspiration to be more than an office to register IP rights has become part of our DNA. Recognition that our responsibilities go far beyond the protection of distinctive signs and inventions is driving us to constantly redesign and upgrade existing services and procedures. It is also sharpening our focus on facilitating access to knowledge and technology, proposing solutions to specific challenges facing society and employing the best tools to foster economic and social development. This, too, is a fundamental part of our work.
Change at INAPI has been both dizzying and far-reaching. The Institute was only established in 2009, but in just seven years it has become an integral part of Chile’s national innovation system and as one of 21 International Searching and Preliminary Examining Authorities (see box) under WIPO’s Patent Cooperation Treaty (PCT) since 2014, INAPI is now also recognized as one of the world’s major patent offices.
The Patent Cooperation Treaty and the role of International Searching Authorities
WIPO’s Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention simultaneously in more than 150 countries by filing a single “international” patent application.
Virtually all PCT applications are subjected to a high-quality international search of relevant patent documents and other technical literature that might have an impact on the potential patentability of the invention. Searches are undertaken by one of more than 20 national and regional patent offices that act as PCT International Searching Authorities (ISAs). The results of the search are set out in a report which enables applicants to evaluate their chances of obtaining patents in the PCT contracting states, and assists the patent offices of those states in making their national and regional patenting decisions.
PCT applicants may also request one or more additional supplementary international searches to enlarge the linguistic and/or technical scope of the initial search. Supplementary searches can reduce the risk of new documents being discovered during the national or regional patent granting procedure (“the national phase”).
In addition to the international search and optional supplementary searches, PCT applicants may also request an international preliminary examination by an International Preliminary Examining Authority (IPEA) – all the offices which act as ISAs also act as IPEAs. This procedure enables the applicants to amend their PCT applications (for example, in response to the international search and supplementary searches) and obtain a second patentability analysis on the as-amended application. The resulting report provides applicants with a stronger basis on which to evaluate their chances of obtaining patents before national and regional patent offices, and is likewise of assistance to national and regional patent offices in the national phase.
Building a modern-day IP office
It was not an easy beginning. Chile went from running a small IP department in the Ministry of the Economy to establishing INAPI as a fully-fledged IP office with new premises and a staff of 180 employees and 105 external patent examiners – staff numbers almost doubled under the new structure.
One of the first tasks was to replace the obsolete IT platforms of the 1980s with IPAS (IP Office Administration System), a modern system developed by WIPO specifically for the management of IP rights. This enabled us to launch an online service platform in 2012. The platform now receives about 85 percent of all trademark and patent applications and allows for 100 percent online processing. Our ability to offer online services is essential for our users, not least because INAPI has just one office in the nation’s capital, Santiago, whereas the country spans some 4,000 kilometers. In future, people won’t even know where INAPI is located.
While establishing its structure, the Institute also had to plan how to perform its new duties. How was it going to inform public policy, take on international responsibilities and promote technology transfer? After careful reflection we set two key goals: to improve the Institute’s registration services, and to maintain an appropriate balance between the interests of rights owners and those of citizens in all our activities.
Armed with these convictions, INAPI has become a well-respected public institution that is widely recognized for its outstanding performance. In 2016 INAPI was a winner of the Annual Institutional Excellence Award, signaling the Chilean government’s recognition that it is one of the three best public services (out of 181 candidates) in the country. Our reputation as a quality service provider has enabled us to become a PCT International Searching and Preliminary Examining Authority.
INAPI is also well respected for its work in the field of trademarks. In 2016 the International Trademark Association (INTA) selected INAPI along with the IP offices of the UK and Singapore to host a pioneering one-day event to explore what “The IP Office of the 21st Century” looks like.
While enhancing our registration and protection functions (the most private aspect of IP) has been a priority, we have also been focusing on disseminating knowledge and technology transfer. This public-interest dimension of the social contract that underpins the IP system often falls from view. To reinforce this aspect of our work, we have created a series of tools and training programs to promote use of the IP system and enable more people to enjoy the benefits of the system. These include:
- INAPI Proyecta: a public platform for the dissemination of IP information and knowledge transfer featuring tools geared to learning about, using and transferring IP. Services include online courses, access to enhanced and fully searchable databases and diagnostic tools. The platform has a community of over 2,000 registered users.
- INAPI Conecta: a free public forum where creators and national institutions can pitch their IP-protected innovations to entities that are interested in using or exploiting them commercially.
- INAPI Analiza: offers access to dynamic and fully downloadable national statistics covering the past 25 years on patents, utility models, trademarks and industrial designs.
- Buscador de Patentes de Dominio Público: a platform listing patents that have expired or lapsed, meaning that there are no IP restrictions on the exploitation of the technologies to which they relate.
But there is still more work to be done.
Breaking new ground
Today, IP offices no longer deal only with traditional actors: patent or trademark agents, companies and inventors. In today’s high-tech world, they must forge ties with new players. Instead of serving the few, they must reach out to civil society, universities, small and medium-sized enterprises, patients, farmers and artisans. The role of the IP office of the 21st century is not simply to administer IP laws and regulations and to periodically provide guidelines, but to take full advantage of the IP system’s built-in flexibilities and adapt them to the specific needs of the national economy. A modern IP office must also be equipped to operate in an interconnected and complex international framework, and open to cooperate with its counterparts in other countries.
INAPI has gradually and systematically increased the quality of its services, and by simplifying and streamlining procedures has significantly reduced the time it takes to process the applications it receives. Given the importance of IP as a driver of national economic, social and cultural development, INAPI has also been leading an inclusive process to develop Chile’s national intellectual property strategy, inviting inputs from a broad range of stakeholders including the public. This extensive process resulted in 60 recommendations covering all aspects of INAPI’s operations, from institutional reforms to IP enforcement to public health and access to medicines.
Developing a culture of IP in Chile
Although Chile has a good system of IP enforcement in place, like many other national IP offices, INAPI does not have an explicit mandate to deal with IP enforcement. However, recognizing the benefits of improving coordination among national law enforcement authorities, and INAPI’s responsibilities in developing a culture of IP in Chile, it was decided that IP enforcement should have a special mention in the strategy. In this context, INAPI, in collaboration with WIPO and other international partners will provide training on IP issues to all national enforcement authorities, including civil and criminal courts, the prosecutor’s office, the customs agency, tax authorities, the competition agency and the police. INAPI will also set up and coordinate a public task force with industry participation to support national efforts to reinforce respect for IP rights. National enforcement authorities are also being encouraged to develop a unified information system that is available to the public. This will support policy development and greater transparency. INAPI is also exploring the feasibility of incorporating arbitration and mediation into its portfolio of services.
The national IP strategy has put IP at the center of Chile’s national innovation policy, and will serve as an invaluable roadmap for the country to develop a genuine and deep-rooted culture of IP.
INAPI is also continuing to lobby the National Congress for the adoption of a new IP law that is better suited to the present-day realities of the information and knowledge society.
Once IP offices improve their operating efficiency and service provision, their next big challenge is to develop the capacity to promote innovation, the dissemination of knowledge and technology transfer. This latter aspect relates primarily to promoting access to IP-related databases, managing IP information, ensuring that IP policy balances the often competing interests of creators and the general public, and promoting broader use of the public domain. This can be achieved by making use of the flexibilities that exist within national and international IP law and by creating linkages with legislation on competition, public health, the environment and education. Today, IP offices must be open, transparent, local, flexible, proactive and creative. They can no longer be satisfied with providing adequate service, but must focus on offering outstanding service that is efficient, effective and high quality.
At INAPI, we aspire to be more than just an office that adapts to the knowledge society, meets user needs and provides quality service. Our aim is drive change, and to demonstrate the pivotal importance of IP to the country’s economic, social and cultural development, always putting the needs of citizens at the heart of our efforts. This is the role of an IP office in the 21st century.
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