Marco Aleman
World Intellectual Property Organization
WIPO’s new inventor assistance programme promises to help under-resourced inventors get quality legal advice. WIPO’s Marco Aleman, acting director, patent law division, explains

What was the aim behind the Inventor Assistance Program?

The Inventor Assistance Program (IAP) was created to help under-resourced inventors secure adequate technical and legal advice when preparing and filing patent applications.

In fact, local inventors in developing countries often decide to navigate the patent system alone and without the assistance of a professional who has the necessary knowledge on prosecuting patents. This choice increases the risk of failure in obtaining patents.

By facilitating access to the patent system, the IAP aims to improve the inventor’s situation, as well as improve the use of the patent system in a number of developing countries where this is still very limited.

What were the results of the pilot in Colombia, the Philippines and Morocco?

The pilot phase of the IAP in those countries lasted 18 months between April 2015 and October 2016. The launch of the IAP in these countries helped to promote pro bono work in the area of patents. The concept of pro bono is well known only in a very few jurisdictions, such as in the US. Many others are not familiar with it at all. During the pilot phase, 13 inventors benefitted from the services provided by pro bono patent attorneys who had registered the IAP Program. To date, almost 50 patent attorneys are part of the IAP. An online course on patent basics and pro bono work has been developed and has already been followed by 70 inventors.

The real work is only just starting and the opportunities that lie ahead are huge.

Which countries does WIPO plan to roll the service out to next? Where is the IAP most needed, in your opinion?

In the next two years we plan to extend the IAP to two other countries. Developing countries that wish to apply will need to provide the necessary information that will help the steering committee make an informed decision as to whether the country meets the requirements to roll-out the programme.

More specifically, this programme is most needed in developing countries where the innovation ecosystem is in place but where inventors do not go as far as protecting their inventions.

We can assess this, for example, by checking the number of patent applications filed by residents and the number of those that are rejected because of formalities reasons. In fact, a high number of inventors who undertake the exercise to get patent protection fail in doing so because of the lack of knowledge of the patent system. Statistics on the high number of rejections due to formality requirements not being met are particularly high in a certain number of countries.

Just to give a few numbers: between 2004 and 2015, residents in Morocco filed 978 patent applications themselves. Some 329 out of these 978 patent applications didn’t make it to the substantive examination, mainly because of formality requirements not being met. Similar figures are available for the Philippines: between 2003 and 2016, 1,424 out of the 2,221 patent applications filed by residents failed because of formality requirements not being met. Lastly, in Colombia, between 2003 and 2013, 526 out of 1,010 patent applications filed by residents did not meet formality requirements during the patent grant procedure and so did not make it to the substantive examination phase.

How could inventors in developing countries benefit from the IAP?

Inventors from countries where the IAP has been implemented can benefit from, on a free-of-charge basis, legal assistance provided by a patent attorney/agent who will assist them in the patent grant procedure before the patent office.

This kind of service will increase the possibility of seeing their patent application examined as to its substance, and their chance of getting a patent and developing a business with it.

To get into the programme, inventors first need to contact their national IP office. Each IP office has developed information on how and to whom a request should be submitted. A local screening board will then evaluate if the requirements are fulfilled, and, if so, the inventor will be put in direct contact with a local patent attorney/agent.

Will the service aid in raising patent quality?

The service will contribute to raising the quality of patent applications. In doing so, it will facilitate the work of the patent office, which will interact directly with a professional who is aware of the procedure, instead of an inventor who is not familiar with the administrative practices and rules in the field of patents.

Has WIPO considered similar schemes for trademarks and other areas of IP?

Similar schemes for trademarks and other areas of IP are not currently available in WIPO’s programmes.

Of course, nothing excludes the possibility that WIPO in the future might consider extending the successful experience of the IAP to other areas of Intellectual property.

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