Five years of the Cooperation Fund

Five years after its inception, the Cooperation Fund has helped to transform the IP landscape in the European Union, providing state-of-the-art IT tools and services in national and regional EU IP offices

With a couple of clicks, a trademark application is filed in Sofia; while in Riga a representative arranges a change of address online at the Latvian Patent Office. A student in Greece looks up French design examples for a university project; while in Lisbon, a small business owner learns about intellectual property in her own language.

All over Europe and beyond, Cooperation Fund tools and e-services are being used by thousands of people every day, inside and outside the IP community. National and regional IP office experts, IP representatives, small and medium-sized enterprises (SMEs), customs authorities and police, researchers, journalists, students and the general public use them to file, check, browse, research, survey, learn and work.

Early days

When it began, the Cooperation Fund was something entirely new. The impetus came from an extraordinary joint session of the Office for Harmonisation in the Internal Market’s (OHIM) Administrative Board and Budget Committee, which met on September 18 and 19 2008. Members agreed to establish a €50 million programme for “projects closely related to harmonisation and the protection, promotion and/or enforcement of trade marks and designs”, made available to EU national and regional IP offices.

Fast forward to 2009 and the fund’s management board was in place. Headed by the former director general of the Directorate General of the Internal Market and Services in the European Commission, John (now Lord) Mogg, and with Jef Vandekerckhove from Phillips and Mireia Curell from Curell Suñol as board members, its role was to advise the OHIM president on what projects to choose for the fund, how to allocate spending and what rules should govern its management.

Projects were grouped under four headings:

  • improved levels of harmonisation;
  • software packages to support EU IP offices in providing easier access to trademark and design protection;
  • information services, including communication and training initiatives to improve understanding of Community trademark and registered Community design systems; and
  • improved enforcement for trademark and design rights.

However, the Cooperation Fund was more than the sum of its parts, in that it represented a new way of working. It brought together EU IP offices, user associations and OHIM staff in working groups which met on a regular basis to track the development of each project. Working groups benefited from the input of EU IP experts, representatives from the European Patent Office (EPO) and the World Intellectual Property Organisation (WIPO) and, crucially, the user perspective.

The fund hit the ground running in 2010 and by November 2012 over 300 people across the European Union were working to launch 10 projects – including databases that would incorporate searchable national and regional IP office data (eg, Designview, Similarity and Quality Standards) and tools (eg, the Common Examiner Support Tool and the User Satisfaction Survey tool).

In Finland, national office experts even took the lead on the complex e-filing project, implementing it into their own systems on a trial basis and providing valuable feedback for their colleagues to incorporate into future roll-outs.

The November 2012 launch – known by fund staff as the ‘big bang’ – proved to be a collaborative triumph. Free, online, continually updated tools were launched through a common portal – www.tmdn.org – thanks to the efforts of national and regional IP offices in the European Union, user associations, OHIM staff and international partners.

TMview: expanding globally

Since the start of the Cooperation Fund, TMview has grown both inside and outside the European Union. All EU IP offices now share their data within the tool and TMview includes trademark data from non-EU offices, making it truly global. It now has more than 26 million trademarks from 40 IP offices around the world (including national offices and regional and international organisations), and is available in 31 languages. Outside the European Union, TMview has data from Canada, Morocco, Tunisia, Mexico, the United States, South Korea, the Philippines, Iceland, Norway, Russia, Serbia, Macedonia, Turkey and the World Intellectual Property Office. In the coming months three more offices are expected to join the tool, making it the world’s biggest free trademark search database.

Software package

However, that was just the start. Once the first launch had taken place, fund staff and working group members began to concentrate on the roll-out of the complex software package project.

The software package is the biggest single undertaking within the fund’s structure, representing some €20 million of its overall budget. It revolves around providing trademark e-filing, design e-filing, e-services (including e-cancellations and e-renewals) and a sophisticated back-office system for national and regional IP offices across the European Union. Offices can implement the entire package or pick and choose some of its individual components.

For example, the Spanish IP office has already integrated design e-filing, with e-services and the back office to follow later this year. The two Greek offices, GGE Greece (trademarks) and OBI Greece (designs), have both implemented the back office and the corresponding e-filing package. GGE Greece has already implemented the e-services package, with OBI Greece due to complete implementation later this year. The Benelux Office for Intellectual Property has recently gone live with the back office for designs, while Hungary has implemented trademark e-filing.

By the end of the fund’s life, 17 offices are expected to have implemented e-filing for trademarks, 16 to have implemented e-filing for designs and 17 to have implemented the e-services package; while the back office will have been taken up by 12 offices in total.

Each strand of the software package must be built in to the existing systems of participating offices. This involves not only core IT development work, but also training for office staff and examiners, relentless testing of systems and various linguistic issues (as each implementation of the projects within the software package must be in the language – and often languages – of the national office for which it is destined). Given the fundamental impact of the software package elements on EU IP offices, cooperation between offices is proving key to successful implementation.

Additionally, it is impossible to overstate the crucial role played by users in the development and refinement of the software package suite of services. Users were integrated into the development of the services from the outset, with user conferences organised at OHIM and national offices asking users to test the software systems before they went live and to suggest improvements and refinements.

One office which integrated users into the testing system right from the start was the Irish Patents Office, based in Kilkenny in Southeast Ireland, which implemented trademark e-filing in April 2014. Today, 84% of filings take place electronically. “Users have certainly seen the benefits of the e-filing applications,” says Dermot Doyle, head of trademarks. “They have the pre-validation aspects of trademark e-filing, which integrates with TMclass, and they know that their goods and services specifications are already validated, and that the office won’t be coming back to them with queries.”

Overall, Doyle underlines, the Irish Patents Office has been an “extremely enthusiastic participant” in the Cooperation Fund. “We felt this was a wonderful opportunity to get things done and to create common systems for users across Europe. We chose our projects carefully – there has to be a business rationale behind the things we do, as we are a very small office and we have limited resources. Our key drivers were quality customer services and the ability to automate our processes – this is payback for users and payback for the office.”

Designview: going beyond the European Union

On September 14 2015 Designview experienced its own big bang. The Canadian Intellectual Property Office (CIPO), China’s State Intellectual Property Office (SIPO) and the US Patent and Trademark Office (USPTO) made their industrial design data available within the tool. With CIPO, SIPO and the USPTO on board, 35 offices are now participating in Designview. With the addition of more than 150,000 designs from CIPO, 3.3 million designs from SIPO and almost 725,000 designs from USPTO, Designview now provides information and access to nearly 9 million industrial designs in total. The tool is available in 30 languages, with the addition of Chinese (simplified). Since Designview was introduced in November 2012, the tool has served around 1.2 million searches from 137 different countries.

The software package’s benefits have been felt in larger IP offices as well. At the UK Intellectual Property Office (UKIPO), one of the biggest and busiest EU IP offices, cooperation with the fund has brought concrete results for UK users. “The IPO electronic filing system for trademarks – TM10 – was developed in collaboration with OHIM and radically changed the way we worked and significantly improved the processing of trademark applications for the benefit of examiners and users,” says Steve Rowan, divisional director of trademarks and designs at the UKIPO. In many ways, TM10 was the forerunner of detailed technical level cooperation between OHIM and IP offices, and many of the lessons learned from that project have informed the Cooperation Fund during its lifetime.

A working group of users tests e-filing prior to launch

Designs and other specialisations

The next step is designs. “Delivering for our customers is paramount,” Rowan underlines. “We’ve known for a long time that UK designers wanted better search facilities and easier filing to facilitate applying to register their IP and we are well underway with the Designs Modernisation Project to improve existing services and introduce new ones, such as e-filing.”

This has also involved collaboration with the Cooperation Fund, using a further element of the software package project within the fund – the designs e-filing strand – to produce the Designs Electronic Processing System in the context of the Apply for a Design project, “which will be used by our designs staff to process and manage applications and to implement DesignView to get that all-important searchable database”, Rowan explains.

He is quick to highlight the shared nature of the work that has been done and the positive impact it will have on users: “This has been a truly collaborative effort, bringing together and sharing skills and expertise and exploring methods to create a new digital service that will bring huge benefits to users of the designs registration system.”

Comment

The Cooperation Fund shows Europe at its best. From the outset, this bottom-up initiative has been a clear manifestation of a true spirit of solidarity and cooperation. It has managed to avoid traps of red tape and inefficiency, and it has brought a wide array of tangible results for the benefit of users. The ensuing harmonisation of tools and practices has made a convincing case for the establishment of an appropriate legal and institutional framework. The European Union’s new trade mark legislation lays down a rock-solid legal basis for maintaining and further developing the common tools, as well as for launching new cooperation projects, with even greater user involvement and with important new tasks and responsibilities for the Administrative Board.

Mihaly Ficsor, chairman of the OHIM Administrative Board

In August 2015 the fund hit a major milestone, with e-services in Malta becoming the 350th implementation of Cooperation Fund results in an EU IP office. No two implementations are alike and each one requires considerable effort on the part of the implementing office, OHIM teams and the network of deployed project managers and deployed developers spread across the European trademark and design network.

The Estonian Patent Office is on course to implement much of the suite of Cooperation Fund tools and services by the end of the fund’s life. The impact of the projects has been dramatic in a relatively small office, according to Janika Kruus, head of the second international trademark examination division in Tallinn. “The quality project has helped us to gain enhanced clarity and consistency in our services,” she says. “It helps to achieve a common user experience in the EU and provides transparent and easily accessible information about services and the performance of services offered by our office.”

Another useful tool for the Estonian Patent Office has been the Common User Satisfaction Survey, which provides a simple set of questions and methodology, and allows IP offices to launch their user surveys. “Surveys have been conducted twice in our office, but already we have had concrete useful experiences,” Kruus says. “Survey results have pointed out the strengths and weaknesses of our services and have mainly been positive. There was a question raised by patent attorneys about the quality of our consultation; the office could respond to that question easily thanks to the results of the Common User Satisfaction Survey, which indicated that most respondents were satisfied with the quality of our consultations.”

Ups and downs

Not every project has succeeded, though, with Search Image being a case in point. The original idea was to develop a tool aimed at defining a key element in each image to allow for easy searching for both trademarks and designs. However, the project was eventually deemed unlikely to deliver cost-effective results and was shelved by the management board in 2013.

However, other Cooperation Fund projects are now part of the IP landscape. Designview, which has over 4 million designs, was extended to include the UKIPO’s design data in August 2015, making over 160,000 UK designs available through the tool. The next goal for the team is to integrate the German Patent and Trademark Office into Designview at the earliest possible opportunity.

The recent integration of the back office system in the Polish Patent Office was a major milestone for fund teams and Polish colleagues alike, and one which is bringing concrete benefits to Polish users. Since 2012, the e-filing system has been available to users in Finland thanks to the efforts of the Finnish office, the earliest adopter of the e-filing tool.

A quick survey makes it apparent that the fund’s effects are being felt across the European Union. “We’ve reached the point now where we have rolled out an optimum level of services to our users,” says Doyle of the Irish Patents Office. “In that respect, the fund is a huge success – we can give improved levels of predictability and certainty to our users.”

Table 1: Projects in brief

Project

Function

Search and classification tools

TMview

Now the world’s biggest free, searchable trademark database, with over 26 million trademarks, is updated daily and contains data from 40 countries.

TMclass

A free online tool to search, translate or classify goods and services when applying for trademarks. Contains the Harmonised Database – a list of terms that have been pre-approved and pre-validated by all EU national and regional IP offices.

Designview

Over 4 million fully searchable designs, from inside and outside the European Union. Currently 32 IP offices have made data available to the tool

IP services and quality

Software package: trademark e-filing

Online trademark filing.

Software package: designs e-filing

Online design filing

Software package: e-services

Online cancellation, renewals, changes of name and address.

Back office

The functioning base layer for a national office, enabling externally visible services, such as e-filing and e-services.

Common Gateway

The main portal for the tools, services and projects of the European Trademark and Design Network, available at www.tmdn.org.

Seniority

Harmonised, accessible seniority information across the European Union.

Forecasting

A best practice forecasting model which provides a harmonised planning, budgeting and forecasting environment for EU national and regional IP offices.

Quality

Transparent and harmonised information about services and quality standards provided by participating IP offices.

Similarity

Collated assessments from participating IP offices on the similarity between goods and services.

Common Examiner Support Tool

A harmonised search of several databases (including emblems and heraldic devices held by WIPO, geographical indications at EU and national level, international non-proprietary names for active pharmaceutical ingredients from the World Health Organisation and specialised office information) to support examiners.

Common User Satisfaction Survey

Supports a basic set of questions and methodology allowing participating IP offices to launch their own IP surveys.

Contact Centre Database

Provides a common IT system, which call centre staff at participating offices can use to create and handle their support cases, search for up-to-date information and collaborate.

IP enforcement and awareness

Anti-counterfeiting Intelligence Support Tool

An EU-wide database which gathers statistics on detentions – at borders and within the internal market – of articles that are suspected of infringing IP rights.

Enforcement Database

An IT database which bridges enforcement and business by helping enforcement authorities to recognise counterfeit goods – free, secure and easy to use.

e-Learning for SMEs

Online training for SMEs on the importance of IP rights.

Looking ahead

Throughout its life, the Cooperation Fund has been constantly on the move. Deployed project managers have been placed by OHIM in EU national and regional IP offices to assist with the implementation process, meeting regularly in Alicante to review progress. Teams of deployed developers have bolstered local teams on the ground. OHIM’s roll-out teams have been embedded in national and regional offices for weeks at a time, and over 100 onsite workshops were held in EU national and regional IP offices during 2014 alone.

With 350 implementations of the tools and e-services already in place (an average of 13 per national and regional EU IP office), the impact on both offices and users at national and EU level has been significant. The Portuguese IP office has implemented 14 tools and e-services so far – well above average – and is on course for one more implementation before the fund ends its active life. Even Malta’s IP office – the smallest in the European Union – has implemented 19, including the full software package suite.

The Cooperation Fund has never been a top-down enterprise. The end products of the fund have been developed by those who will use them most – EU national and regional IP offices and users. Rowan stresses the shared working that gave the projects life as one of the key factors of the fund’s success: “The UKIPO has a long and productive history of collaborative working with OHIM and the Cooperation Fund initiatives clearly demonstrate what can be achieved by working together and sharing the exceptional skill sets that exist at OHIM and national offices.” 

Ruth McDonald is part of the communication service at OHIM

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