What is IP and why do we protect it? Why is international IP important? Patents: Patent Cooperation Treaty (PCT). Trademarks: Madrid System. Final thoughts about IP and development.

1. June 21, 20181
Harnessing IPR for Sustainable Growth in Bangladesh
Jay Erstling
September 17, 2017
What is IP and why do we protect it?
Why is international IP important?
Patents
Patent Cooperation Treaty (PCT)
Trademarks
Madrid System
Final thoughts about IP and development

2. SM
© 2017 Patterson Thuente Pedersen, P.A., some rights reserved - www.ptslaw.com
DISCLAIMER: This presentation and any information contained herein is intended for informational purposes only and should not be construed as legal
advice. Seek competent legal counsel for advice on any legal matter.
Harnessing IPR for
Sustainable Growth in
Bangladesh
Jay Erstling
Prime Minister’s Office
17 September 2017

3. Road Map
What is IP and why do we protect it?
Why is international IP important?
Patents
Patent Cooperation Treaty (PCT)
Trademarks
Madrid System
Final thoughts about IP and development
June 21, 20183

4. What is Intellectual Property?
IP protects creations of the mind
Inventions (patents)
Industrial designs (design rights)
Literary and artistic works (copyright)
• Performers, producers of records, broadcasters (neighboring rights)
Names, symbols and images used in commerce (trademarks)
IP rights are exclusive rights and are like any other property right
They allow creators or owners of patents, copyrights or trademarks to
benefit from their creations or their investment in creation
They also provide a system so that others can enjoy the fruits of creation
June 21, 20184

5. Article 27 of the Universal Declaration of Human Rights
27. Right to Participate in Cultural Live
1. Everyone has the right freely to participate in the cultural life of the
community, to enjoy the arts and to share in scientific advancement and
its benefits.
2. Everyone has the right to the protection of the moral and material
interests resulting from any scientific, literary or artistic production of
which he is the author.
IP should help strike a balance between the interests of innovators and the
public interest
Objective: To provide an environment in which creativity, innovation and
invention can flourish for the benefit of all
June 21, 20185

6. Why Protect Intellectual Property?
IP rights serve to motivate and promote innovation and creativity. Equally
important, they promote the disclosure of new knowledge
Progress rests on the capacity to create and invent new and improved
technologies and cultural works
IP protection of inventions and creations is a great motivator
• It encourages the commitment of resources, both financial and
human
A well-balanced and well-functioning IP system can foster economic
development, spur the creation of new jobs and industries, and enhance
the quality of life
An effective IP system can promote foreign investment
June 21, 20186

7. How Does Intellectual Property Generate Wealth?
IPR is based on the notion of exclusive rights
The right to exclude others from making, using, selling, or importing
without the permission of the IP owner
Provides the owner of the IP right with the security to disclose the
invention/creation to potential customers, investors, licensing partners
without undue fear of being copied
Gives the owner of the IP right the opportunity to commercialize the
invention/creation through:
• Manufacturing, selling, licensing, assigning rights
Motivates others to create bigger, better inventions/creations
If the exclusive right is infringed, IPRs give the owner the opportunity to
take action against the infringer.
Without IPR, the inventor/creator has no right to prevent others from copying
June 21, 20187

8. Foundational Treaties
Paris Convention for the Protection of Industrial Property
Administered by WIPO
Bangladesh accession: 1990
Berne Convention for the Protection of Literary and Artistic Works
Administered by WIPO
Bangladesh accession 1999
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)
Administered by WTO
Bangladesh accession: 1995
Treaties providing for global protection systems:
Patent Cooperation Treaty (PCT)
Madrid Agreement (marks)
June 21, 20188

9. Patents
An exclusive, but limited, monopoly in exchange for public disclosure
A patent is not a right to do anything; rather, it provides the right to
exclude others from making, using, selling, offering for sale or importing
National in scope
Governed by national law and policy (guided by the international treaties
to which the country is party)
No extraterritorial effect
Patent policy should reflect national economic and social policy
If that policy includes promoting exports and encouraging foreign
investment…
• An international patent strategy needs to have a significant role
June 21, 20189

10. Why is International Patenting Important?
If the goal is to:
Market an invention abroad
Obtain foreign technology
Seek foreign investment in technology
License or assign an invention abroad
Compete with foreign technology abroad
… International patent protection is essential
10

11. Patent Situation in Bangladesh
Source: WIPO Statistics Database (2017)
Patent applications (2015)
Resident applications: 41 (rank 79th)
Non-resident applications: 299 (rank 47th)
Filings abroad: 71 (rank 86th)
Patent grants (2014)
Resident grants: 21 (rank 73rd)
Non-resident grants: 100 (rank 57th)
Major fields of technology
Biotechnology (37.97%)
Food chemistry (16.46%)
Organic fine chemistry (6.33%)
Other: pharmaceuticals, materials, metallurgy, environmental technology
June 21, 201811

12. Avenues to International Patenting
Two routes to international filing
Direct national filing via the Paris Convention for the Protection of
Industrial Property
• Bangladesh “priority” application  foreign applications filed within
the following 12 months
International filing via the Patent Cooperation Treaty (PCT)
• Single international application with effect in 152 countries
• 233,000 PCT applications filed in 2016 by 50,838 applicants
• Asian region accounted for 47% of all PCT applications filed in 2016
June 21, 201812

13. Overview of the PCT System
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Source: WIPO

14. How the PCT Works
The PCT Timeline
June 21, 201814
(months)
0 12 16 18 22 28 30
Enter
national
phase
File local
application
File PCT
application
International
search report
& written
opinion
International
publication
(optional)
File
demand for
international
preliminary
examination
(optional)
International
preliminary
report on
patentability
Typically a national
patent application in
the home country of
the applicant

15. How the PCT Works
The PCT Timeline
June 21, 201815
(months)
0 12 16 18 22 28 30
Enter
national
phase
File local
application
File PCT
application
International
search report
& written
opinion
International
publication
(optional)
File
demand for
international
preliminary
examination
(optional)
International
preliminary
report on
patentability
Typically filed in same
national patent office—one
set of fees, one language,
one set of formality
requirements—and legal
effect in all PCT states

16. How the PCT Works
The PCT Timeline
June 21, 201816
(months)
0 12 16 18 22 28 30
Enter
national
phase
File local
application
File PCT
application
International
search report
& written
opinion
International
publication
(optional)
File
demand for
international
preliminary
examination
(optional)
International
preliminary
report on
patentability
Report on state of
the art (prior art
documents and their
Relevance) + initial
patentability opinion

17. How the PCT Works
The PCT Timeline
June 21, 201817
(months)
0 12 16 18 22 28 30
Enter
national
phase
File local
application
File PCT
application
International
search report
& written
opinion
International
publication
(optional)
File
demand for
international
preliminary
examination
(optional)
International
preliminary
report on
patentability
Disclosing to world
Content of application
In standardized way

18. How the PCT Works
The PCT Timeline
June 21, 201818
(months)
0 12 16 18 22 28 30
Enter
national
phase
File local
application
File PCT
application
International
search report
& written
opinion
International
publication
(optional)
File
demand for
international
preliminary
examination
(optional)
International
preliminary
report on
patentability
Request an additional
patentability analysis on basis
of amended application

19. How the PCT Works
The PCT Timeline
June 21, 201819
(months)
0 12 16 18 22 28 30
Enter
national
phase
File local
application
File PCT
application
International
search report
& written
opinion
International
publication
(optional)
File
demand for
international
preliminary
examination
(optional)
International
preliminary
report on
patentability
Additional patentability
analysis, designed to assist
in national phase decision-
making

20. How the PCT Works
The PCT Timeline
June 21, 201820
(months)
0 12 16 18 22 28 30
Enter
national
phase
File local
application
File PCT
application
International
search report
& written
opinion
International
publication
(optional)
File
demand for
international
preliminary
examination
(optional)
International
preliminary
report on
patentability
Express intention and take steps to
pursue to grant to various states

21. Important Points about the PCT
The PCT has no impact on substantive national law once a patent application
enters the national phase
Each country grants or refuses a patent on the basis of its national law
A PCT member country does not have to establish its own receiving office
It can use WIPO (the International Bureau) to receive and process
applications
• Sri Lanka, UAE, Kuwait, Nigeria, and others all take advantage of
this option
A PCT member country can rely heavily on the International Search Report
and Written Opinion to make sound patenting decisions
There is a 90% fee reduction for all applicants from LDCs
June 21, 201821

22. PCT Advantages/Disadvantages for Applicants
Advantages
Delays decision-making
• 30 months vs. 12 to decide where you want protection
Delays the need (and cost) of producing translations
Delays national fees and the cost of foreign attorneys
Serves as a “page holder” when you don’t know how valuable your
invention is going to be
Provides useful and helpful information about your application and its
likelihood of success
Disadvantages
Complex
Somewhat pricey, but ultimately saves money
June 21, 201822

23. PCT Advantages/Disadvantages for Bangladesh
Advantages
Joining the PCT makes the country a part of the world’s patent community
• Currently 152 member countries
• Gives the country a role in the development of IP policy
Encourages innovation by promoting the filing of patent applications
• Makes it easier for Bangladeshi applicants to file internationally
• Makes it easier for non-resident applicants to file in Bangladesh
Creates opportunities for training and assistance in patent office
administration
Helps to generate a culture of IP awareness
Fulfills an integral component of IP policy
June 21, 201823

24. PCT Advantages/Disadvantages for Bangladesh
Disadvantages
Requires implementation
• Amending legislation to bring the treaty into force and to set up
policies and procedures
• The PCT provides 3-month and 18-month windows for
implementation
My increase the workload of the patent office
• Requires training of patent office staff
The advantages far outweigh the disadvantages
June 21, 201824

25. Trademarks
A sign capable of distinguishing the goods or services of one enterprise from
those of other enterprises.
Right to exclude others from using the sign or a confusingly similar sign
on similar products
Trademark term can be renewed indefinitely provided the trademark is
being used and additional fees are paid
Signs that can constitute trademarks:
• A word or a combination of words, letters, numerals, drawings,
symbols, three-dimensional features (such as the shape and
packaging of goods), non-visible signs (such as sounds or
fragrances), or color shades used as distinguishing features….
– Varies according to national law
June 21, 201825

26. Trademark Situation in Bangladesh (2015)
Source: WIPO Statistics Database (2017)
Trademark applications (2015)
Resident applications: 9,322 (rank 36th)
Non-resident applications: 3,487 (rank 52nd)
Applications abroad: 178 (rank 128th)
Trademark registrations (2015)
Resident registrations: 1,130 (rank 128th)
Non-resident registrations: 3,392 (53rd)
Registrations abroad: 63 (141st)
June 21, 201826

27. The Madrid Agreement (Protocol)
System for registering and managing trademark applications worldwide
Can obtain registrations in up to 115 countries
• 99 member offices are signatory to the Madrid Protocol
Single application; one set of fees
Centralized system allows for renewal, modification, extension of the
geographical scope, and transfer of trademark ownership
Wherever trademarked products are sold abroad, international trademark
registration is essential
June 21, 201827

28. How the Madrid System Works
June 21, 201828

29. Madrid System – Stage 1
Before filing an international application, an applicant must have registered
the trademark or filed a trademark application in the national trademark office
The registration or application is known as the “basic mark”
Applicant then submits an international application through the same national
office, which is labeled the “office of origin”
The international application designates the countries where the applicant
wishes to have the trademark protected
The office of origin certifies the application and forwards it to WIPO
June 21, 201829

30. Madrid System – Stage 2
WIPO conducts a formal examination (only) of the application
If the application is approved, it is registered in the International Register
and published in the WIPO Gazette of International Marks
WIPO sends the applicant a certificate of international registration and
notifies the countries where the applicant wishes to have the trademark
registered
June 21, 201830

31. Madrid System – Stage 3
The trademark offices of the countries where you want to protect your mark
will carry out substantive examination
Those offices are labeled “Offices of the Designated Contracting Party”
Purpose is to determine whether the trademark is registrable in
accordance with the trademark law of the countries concerned
• Countries need to make a decision within 12 or 18 months
(depending on each country’s national legislation)
The countries notify WIPO of their decisions, and WIPO notifies the
applicant
• If the decision in positive, the mark will have effect in that country
and the trademark office will issue a statement of grant of protection
June 21, 201831

32. Important Points about the Madrid System
If a trademark office refuses to protect a mark (either totally or partially), the
decision will not affect the decisions of other trademark offices
Applicants can appeal a decision of refusal before the trademark office
concerned in accordance with that country’s national law
An international registration of a mark is valid for 10 years
The registration can be renewed indefinitely directly with WIPO, with effect
in the designated countries concerned
June 21, 201832

33. Advantages/Disadvantages of the Madrid System
Similar to the PCT…
But an international trademark application must be filed with the
Bangladesh office
The Madrid system:
Promotes trademark filing
Represents one-stop shopping convenience for applicants
Generates filing fee revenue for member countries
June 21, 201833

34. Final Thoughts
Importance of a national IP rights policy
Indian example: National Intellectual Property Rights Policy 2016
• Sets forth the vision, as well as a roadmap for the future of IPR
Objectives of an IPR Policy
• To create public awareness of IP and its benefits
– To build a culture of IP protection from primary school on up
• To stimulate the generation of inventions and innovation
• To have strong and effective IP laws, which balance the interests of
rights owners with the public interest
• To generate value from IP through commercialization
• To modernize and strengthen the IP office
• To strengthen enforcement of IP rights
• To strengthen and expand training and research in IP
June 21, 201834

35. Final Thoughts
How should emerging nations think about IPR?
An integral part of the nation’s economic and social policy
• Needs to conform to and be designed to advance a nation’s
economic development goals
In general, nations that have welcomed IP and adopted strong, positive IP
policies have achieved economic progress
• Classic example: Korea
In the US, it’s been estimated that IP-intensive industries have generated
more than $137,680,000,000 annually in IP-related revenue
Perhaps that’s’ why the US is so keen on strong IPR
June 21, 201835

36. IP and GDP in Bangladesh
June 21, 201836

37. Thank You
Jay Erstling | +1 612-349-5771 | erstling@ptslaw.com
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