Annual Technical Report on Trademark Information Activities in 2014 submitted by Norwegian Industrial Property Office

 

I. GENERAL OVERVIEW OF RECENT DEVELOPMENTS IN TRADEMARK INFORMATION ACTIVITIES CARRIED OUT BY THE OFFICE

 

Norwegian Industrial Property Office (NIPO) is a government authority organized under the Ministry of Trade, Industry and Fisheries.
Main office goals:

  • Handle applications on industrial rights with correct quality and within due time
  • Contribute to increase in IP awareness and knowledge in Norway

Main priorities:

  • Customer orientation, efficiency and competence.

Outline of main policies and plans aimed at development of trademark information activities and expected time frames for their realization

 

Strategic technical focus:

  • Established case handling efficiency project (2015->) to improve internal process and tools
  • Continue to improve, maintain and increase automation level and quality/efficiency the SANT Automation System for IP Case Management and registry handling
  • Upgrade infrastructure where further virtualization of servers and Oracle databases, Documentum, Microsoft servers and Citrix clients are central (2015)
  • Reuse of national registers: Integration to national registries for citizen birth number and company ID (Master Customer database).
  • Enhanced tech cooperation with WIPO to ensure 100% electronic exchange (2015 - 2017)
  • Implement electronic gazette publication (2017)
  • Improve online surveillance services, online search and create online payment for renewals (by 2016)
  • Create national archive (separate) live from production according to national standard (By 2017)
  • Create and host the national anti-piracy information site (by 2015)

New projects launched or resumed this year in the context of the policies and plans mentioned above, short description: aims, partners, tasks

2013:

  • Completed modernization of IP automation system to MS.Net 4.n platform (From 86 to 32 workflows for everything)
  • Norway joining the Madrid Goods and Services Manager. Norwegian language part of the Madrid Goods and Services Manager.

2014:

  • Norway joining the TMClass. Norwegian language part of TMClass (only Nice-terms)
  • Update of Acsepto to v. 10 for trademarks
  • Project for online payment solution for renewals started. Project aim to allow direct online payment or payment order generation of all renewals regardless of type of IP-application/right.   
    • This project is a continuation of the current on line search service and the newly created surveillance service, where customer can make a portfolio and be warned when renewal is due, and  other events, such as change in legal status, correspondence event and new records/events in application or IP-right.
  • Project for new archive (time capsule) for IP system started
  • New office overall project management system introduced
  • Automatic check of filed list of goods and services towards prevalidated list(s) (TMClass of OHIM, National Prevalidated list NORKLASS, WIPO) 
  • change e-filing procedure to allow direct filing fee online payment (end 2016)
  • Electronic sending of MECA notifications also where manually modified (remaining)

Main areas of trademark information activities and related information and communication technology (ICT) practices which were in the focus of attention last year

2013: All rights searchable in TMView
2014:

  • Participation in OHIM Convergence Programme for harmonisation
  • New solution for handling divisional and merger of applications/registrations
  • Board of appeals is now a separate public institute with dislocated office, see link below.
  • The modernization and porting of the IP case management system to MS.Net (4.n) completed, in the 10th year of full production for system. From 96 to 33 workflows for all IP-handling.
  • Agreements with contractor for time-capsule archive for IP case handling was signed
  • Scan production line replaced by Abbyy-recognition server and adaptations.
  • New e-mail integration to create documents directly in IP case management system created.

Statistics: changes in terms of application filings and registrations with respect to previous year; trends or areas experiencing rapid changes

                                                            2010            2011             2012             2013            2014          %2014
Filings

  • Direct National                           3563            3382             3425             3591            4026           +12%
  • Direct foreign applicant              2721            3052             2872             2957            2990           +1%    
  • Int.designations Madrid             7410             8715            8002              9155            8460          -7,6%
          Total new                         13 694           15 149        14 299           15 703          15 476          -1,5%
    ---------
  • Registered TMs                      10 855         12 118         12 804           13 207          14 516         +9,9%
  • Refused                                         98               135               77                181               174      
  • Shelved/withdrawn               1 822            1 837           2 011            2 211             2 014
          Total decisions                  12 775         14 090         14 892          15 599           16 704        +7,1%
    ---------

           Number of renewed rights        8 307           8 849          8 488             9 267            8 717         -6%
---------
Total number of rights in force                                                                                           208 000

2014-highlights

  • New record in annual national trademark filings for 2014, possibly due to increased media activity and NIPO PR towards specific fields of trade and industry.
  • Time from filing to registration decreased 
  • From 2011 increase in number of decisions with fixed number of staff.
  • customers satisfied with quality and timeliness.
  • 20% increase in usage of public search services.
  • SANT/Acsepto IP automation system availability measured to 99.5%

Other matters and useful links (URLs): annual report of the Office, news page, statistics, etc.

NIPO homepage: http://www.patentstyret.no/en/

Annual Report NIPO:

NIPO public IP services

  • homepage with Norwegian and English interface: https://search.patentstyret.no/
  • Access to advanced IP search (cross-domain), general guides, e-filing redirector, statistics, access to international DBs
  • Surveillance services with alert functions, classification assistant and "name check" (App),
  • Pending development for direct payment (renewal) and customer interactivity.

Other related:

II. SERVICES AND ACTIVITIES RELATED TO TRADEMARK INFORMATION CARRIED OUT BY THE OFFICE

 

Information and support provided by the Office to applicants regarding filing on paper and/or e-filing (instructions, seminars, etc.) - URLs

Filing information at:   

Electronic filing: 

  • All types of IP applications, correspondence and requests , plus all correspondence received electronically through national portal http://www.altinn.no.
  • Request of commercial services by NIPO: IP search, -evaluation and -surveillance services

NIPO allows filing on paper format, or combination with memory stick or ROM.
PDF-forms is available online at http://www.patentstyret.no/en/For-Experts/Trademarks-Expert/Forms-in-PDF-format/ 

Availability of the application dossier in electronic form

The full dossier of open for public IP applications and IP granted rights, including designated Madrid Registrations, are available at

The dossier contains

  • all bibliographic data, legal and processing status,
  • all publications, and all incoming and outgoing correspondences. The dossier contains also links to info about appeals etc.
  • Individual documents – correspondence and certificates - may be downloaded.
  • A downloadable PDF-document with summary of bibliographic data, image(s), legal status etc, may be created on demand per application/right.

Surveillance service for changes in dossier (Change in status, change in selected values, and New documents) can be activated by any user

Matters concerning classifying
(i) Classification and reclassification activities; classification systems used, e.g., International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), International Classification of the Figurative Elements of Marks (Vienna Classification), other classification
(ii) Use of electronic classification systems and pre-defined terms of the classification applied

(i)

  • Nice classification 10 edition for goods and services with Norwegian language.
    • Code stored with version of NICE - reclassification not performed.
  • Vienna classification of figurative elements
  • Additional in-Office coding
    • Assisted text coding of mark denominations for search purpose
    • Automated image pattern recognition coding for ordering of hit list (avoid search filter) 

(ii)

NIPO offers customer access to list of pre-defined terms for list of goods and services NORKLASS. Customer use is not mandatory.
By 2015 NIPO will translate terms in TMClass and make a solution for automatic identification of pre-accepted terms where result is displayed for officer & customer.

The work includes translation of 60 000 terms to complete Dictionary by 2016. The system may in addition hold accepted variations, normal Dictionary look up and utilize stemming. Use of pre-accepted terms will speed processing until registration.

Matters concerning processing of different types of non-traditional marks (e.g., three-dimensional, motion, hologram, color mark, etc.)

NIPO accepts and register non-traditional marks, as

  • sound, smell, colour, three-dimensional, holograms and moving marks.

Non traditional marks should be represented with a 2-dimentional image representation which can be a mosaique of smaller images as long as the defining element is clearly visible, along with a description of the non traditional mark in a way it can be clearly distinctive.

  • The purpose of requirement to allow publication in 2D-format (internet and traditional documents).
  • NIPO has the power to request filing of object/model or multimedia representation to enhance the evaluation of distinctiveness.

Archive regulations in Norway is strict, and multimedia formats hence restricted to ISO standardized file formats: Only JPEG, PNG, and MPG-formats are valid. PDFs can not have active content. The multimedia format may be published in the dossier as incoming document (Journal record). 

Other activities

NA

III. SOURCES OF TRADEMARK INFORMATION PROVIDED BY THE OFFICE

Main types of publications in the field of trademark information, outline of the content and medium (on paper, on CDs, online - URLs)

Full dossier published within public online search service.

  • Publishing is immediate (at time when application is accepted).
  • The dossier is complete with bibliographic data, image/mark representations, legal status, classification, coding, all filing documents, all correspondences and links to possible other cases such as division child/mother, administrative overruling, oppositions, and appeals.
  • The content is updated in part daily (selected incidents and journal records (status, document), and in full weekly.

The official gazette is published on office web site as sectioned PDF (searchable) at
http://www.patentstyret.no/en/For-Experts/Trademarks-Expert/Official-Gazette-/ 

A full extract based on search service (public data/documents) is published via TMView. 

Official Gazettes: main types of announcements, frequency of publication, medium (on paper, on CDs, online, URL), etc.

The gazette is by law published in one sectioned document per domain (a patent gazette, a trademark gazette and a design gazette).
The trademark regulations specifies a minimum content per record and it differs from type to type of record.
The document is merged from RTF via MS Office to PDF v.7 format through automated process from template).
Publication performed weekly.

  • The document is published on our web site. Links are shared with a handful of fixed recipients (libraries) via e-mail, and link inserted in our e-mail newsletter.

Current sections that are published in Patent Gazette:

  • Other, notes, rare events
  • New filings, new designations
  • Registered and validated marks
  • Shelved, Expired, refused, OPI applications which is shelved
  • Opposition filing, administrative limitation and overruling filings, appeal filings
  • Changes in right (lapse, cancellation, reinstatements, etc) up on decision in force
  • Decisions in force by higher authority
  • Assignment, licenses,  change in attorney, when requested
  • Lapse of rights 

Outline of Gazette function in IP-automation system SANT:

  • The SANT-IP case management system contains function to order (automatically by event) or manually (by function select) a record in the gazette. The records is gathered, sorted and inserted in a very advanced MS office template, via a user controlled control function, to make sure everything is published and periodization is kept. Manual odd publication events is included at this stage.
  • When the actual gazette document is created, there is a record in each individual application/right/register.

NIPO has developed a sub set of statuses - a level under Legal Status, used through out processing of application or actions on rights. These corresponds to the publication of the gazette (where date is one week prior). Hence a professional user can recreate gazette by search on our search service advanced status coding.

An electronic version of the gazette is planned and prioritized for 2017. This will both make a user friendly interface with links to dossier, while the entry will act as a journal record of the archive (dossier). 

Information products (coverage, medium, etc.) available to examiners, including external documentation and databases

Main source or examiner validation of distinctiveness is NIPO own collections of rights, and archive of earlier case decisions.

  • We utilize Acsepto v.10 for trademark, which is a classification, coding, search and image browser system licensed by Sword SA, Paris.
  • It is integrated to the SANT IP automation system from where selected hits in Acsepto search is automatically imported in to internal search report.
  • Acsepto contains all national applications and registrations (all since 1985, all historic in force by 1985), all 6TER-marks, and by 2016 all INNs.
  • Acsepto includes an advanced image coding system for mark comparison and hit list ordering based on pattern and color recognitions, to be combined with text coding, phonetic, classification, and image coding search.

External sources (databases, dictionaries, etc) are also used during examination. 

Information products (coverage, medium, etc.) and services available to external users; conditions of access (e.g., free of charge, subscription, etc.)

Our free of charge online search database is an image of our production database and give public online access to:

  • Some historic registration not longer in force from past 1985.
  • All bibliographic data for applications and registrations from 1985, including historic registration in force in 1985.
  • All correspondence documents and certificates from 2010 up to date

The search service offers a user friendly interface (simple plus advanced) with access to other services like customer portfolio overview and surveillance.
By 2015 interactive service for renewal including payment is expected.

NIPO has developed an app where customers may search Norwegian trademarks, domain names and company name register in one single operation.

A sub set of data for each right is exported to TMView (entire volume) 

Legal status information (kind of information, coverage, medium, etc.)

Legal status information can be obtained by the public online search service. The legal status is updated & complete for all available application/rights.
Status is assigned at two depended levels, where

  • first level is legal status (pending, registered, terminated, lapsed) and
  • second level is either processing step (pending) or reason or actions (such as pending limitation procedure, pending complaint, etc).

Other sources

NA

IV. ICT SUPPORT TO SERVICES AND ACTIVITIES RELATED TO TRADEMARK INFORMATION CARRIED OUT BY THE OFFICE

 

Specific software tools supporting business procedures within the Office: general description, characteristics, advantages, possible improvements

About the SANT IP automation system

  •  Tailored software based on IP handling framework Ptolemy, delivered and maintained by Sword SA, Paris. Full production in 2004, later modernized and functionally changed under a planned regime.
  •  Integrated to EMC Documentum 7.1 for full electronic document management (paper less system) and workflows, security and soon archive/time capsule,
  •  Ptolemy core runs on MS.Net4.n framework based on virtualized Microsoft servers (2008), with virtualized Oracle 11g databases.
  •  All clients based on Windows 8, via virtual clients on Citrix. All officers has dual screen setup.
  •  All officer have home office access to anything except print and scan.
  •  Interfaces to Microsoft Office, Adobe Reader, Adobe Acrobat, Alternatiff, with optional usage of other specialized client software.

Highlights of interfaces limited to trademark area): 

  •  E-filing interface to national portal, AND interface for electronic correspondence towards all citizens/national companies,
  •  Automated Madrid import with auto event trigger (workflow, publish etc)
  •  Automatic invoicing integration with Agresso (ERP),
  •  Daily copy of DB for search services,
  •  e-mail integration, integration to Abbyy (scan/imaging),
  •  Closely integrated to Acsepto TM and DS coding and search
  •  Multi image cropping internal cropping and image enhancement tool

Highlights of functional perspective:

  • All tasks on application and rights within same application. Cross domain nature where functions is shared between design, trademark and patent:  Administrative officers can work cross domain, e.g. the formal workflow is identical, all admin changes performed through same function, by same group of officers. Legal officers can work on complaints, oppositions, etc, cross domain.
  • A separate dossier function with logic linking between relevant cases, also by other domains: One window for all info needed to process anything.
  • Multi windowing (Main + search + dossier + special functions/dialogues).
  • The workflow system pushes tasks to individual case officer inboxes or group inboxes, based on rules or by forced selection.
  • High degree of automation via batch preparation

Other key parameters: 

  • 85% of flings and correspondence currently performed electronic. Covers both the dossier, registers and publications, invoicing and annuities/renewals, as well as all related case types, such as oppositions, assignments, divisions etc.
  • TMs and DSs in average higher e-fling rate than patent, possibly due to size limitation in national portal
  • NIPO and the SANT system handles appeals for company name registrar authority. 

Hardware used to supporting business processes of the Office

Database HW: HP Itanium, HP-U 11.31, Oracle 10.2.0.5
Virtual MS Servers 2008 on VMWare
Full virtualization of all servers to be completed in 2015.

Internal databases: coverage, updates, interlinks with external sources

Production database (SANTDB):

  • SANTDB: Full bibliographic data/history since 1985, with complete records from all historic registration in force at database creation in 1985.
  • EMC Documentum DB: Full electronic dossier (all images/records) since 2004. All records/documents/journal for all granted patents since 2004.
  • Contempus historical Archive: All published patents and published OPI (front page) as result of historic scanning, all With automated OCR index, separated sections in TIFF and PDF format.

Acsepto v10 - classification, coding and search database: Oracle 

  • Licensed SW from Sword SA, Paris. An online integrated copy with additional text and image coding for search and examination, with same content as, and link to, production database.
  • Contains in addition all published 6TER marks. Planned extension to INNs.

Online search service database:

  • Daily (partly) and in full weekly updated database - full copy of production database, where all correspondence documents and publications are available when created since 2010 (via secure link to Document management system EMC Documentum)
  • Structured according to WIPO ST.36 with additional schemas since search service has cross domain nature.

Export to TMView for full content.

Defined structured Export to commercial search databases

Integration towards cross domain search on company names and domain names (.no) via App developed by NIPO

Establishment and maintenance of electronic search file: file building, updating, storage, documents from other offices included in the search file

  • Acsepto v10 National search DB with all national publications references included in search file; several search files per application possible: contains result of search and the selected hits. *
  • Results from other sources stored in dossier of the SANT Automation system.

Administrative management electronic systems (register, legal status, statistics, and administrative support)

Application handling and rights management is all performed within "single dossier" in SANT-application, from birth to death.
A copy of all public data that are published on the public search service is updated frequently to a separate online dossier.

Our IT sections performs technical support (first line).
A dedicated system management team of Production department handles all interventions and contact with suppliers/contractors.

  • SANT/Ptolemy and Acsepto/SDU maintenance, development, upgrades and integrations by Sword SA, Paris
  • Document management system EMC Documentum by Ciber AS, Oslo
  • Template creation and management system PubMan, managed by Perspectives Consulting, France.
  • Satellite systems: ERP system Agresso with bank transaction logic from Babelbank by Visual Banking.
  • Oracle reports and  BI available

Other matters

NA

V. PROMOTION ACTIVITIES AIMED TO SUPPORT USERS IN ACCESS AND EFFICIENT USE OF TRADEMARK INFORMATION

 

Office's library (if deals with trademark information): equipment, collection management, network of libraries in the country, cooperation with foreign libraries

  • NIPO office located in capitol Oslo has a public library function, a visitor center with trained librarians.
  • Our national collections are available for visitors, as well as the internet clients for supported use of international search.
  • The library service will provide professional searches upon coverage of office cost, and we supply direct contact with examiners for novice inventors.
  • Link to our public site is provided to the national network of libraries, along with links to searches in gazette, patenting information and guides

Publications related to different business procedures and trademark information sources available to users, for example, books, brochures, Internet publications, etc.

  • Dedicated information targeting IP novices on web site 
  • Dedicated information targeting IP professionals in separate section on NIPO web site www.patentstyret.no/en.
  • Approximately 50% of content translated to English.

Cooperation with universities, technology and innovation support centers, etc.

2013: Creation of IPIN (http://www.ipin.no), center for research and teaching of IP, together with Norwegian University of Science and Technology, NTNU, and the Centre for Intellectual Property (CIP) in Gothenburg, SE. Aim to include IP awareness and knowledge in general for students and to give support for projects and studies. NIPO has role as lecturer.

As a result of increased political IP awareness, NIPO created and are hosting a national anti-piracy site in cooperation with the authority network of public bodies. www.velgekte.no (only in Norwegian)

Education and training: training courses, e-learning modules (URLs), seminars, exhibitions, etc.

NIPO training sessions are directed towards both professionals and novices within IP. 2014 saw a substantial increase in customer training, lectures and participation in external conferences, seminars and exhibitions during 2014. The data does not separate between the activity fields PT, DS, TM (and others) of the office.
In general:

  • NIPO hosted in total 30 training courses, with in total 920 participants (10% increase), whereas
  • 15 free "breakfast" Meetings 
  • 9 Theme courses 
  • 5 IP introduction courses 
  • World IP Day training and Conference
  • Two courses was streamed live to NTNU-university, and over NIPO YouTube Channel.
  • NIPO organized 88 external lectures for educational institutions, entrepreneurs, professionals and partners. Audience = 2400.
  • NIPO was active contributor/participant in various exhibitions and trade shows.

Other activities

The most important information channel for customers is our web site http://www.patentstyret.no .
In 2014 we registered 260 000 visitors. Customer polls shows high satisfaction with information and training courses.
The innovation network of public offices team and cross link their information to innovators

VI. INTERNATIONAL COOPERATION ACTIVITIES IN THE FIELD OF TRADEMARK INFORMATION

 

International exchange of trademark information in machine-readable form (e.g., Official Gazettes)

  • Export of bibliographic data, legal status, mark/denomination to TMView of OHIM: Pending work for same extract to WIPO.
  • Gazette only available in downloadable weekly PDF document on NIPO web site.
  • Extract of data to commercial operators (by agreement).

Participation in international or regional activities and projects related to trademark information

  • NIPO contributed within the national delegations in EFTA meetings, together with our ministry, with special appendices regarding the protection of intellectual property.
  • Participation in EFTA/EEA-meetings for Special Committee on Intellectual Property and Working Group on Intellectual Property.
  • We participate within the Nordic council (Nordic governmental cooperation organization)

Assistance to developing countries

  • WIPO-NIPO Training Course on Trademarks, one week course, September 2014, 16 participants from 15 developing countries.

Other activities

NA

VII. OTHER RELATED MATTERS

In 2014 the fist part of the programme for manager training was completed. The goal is to improve the office general performance. The IP-consil was funded in 2014: 7 by competence and interest selected persons shall give general advice to NIPO and the IP-field development in Norway.