Announcing IIPSG – A New Nonprofit Working to Standardize IP Offices Worldwide
Nehal Madhani | January 24, 2022
Nehal Madhani is the founder and CEO of Alt Legal, whose software makes it easy for law firms to create and manage IP filings. Before starting Alt Legal, Nehal practiced as an attorney at Kirkland & Ellis, LLP. He is a self-taught Python/Django programmer, and he served as a CodeX fellow at Stanford Law School. Nehal has a J.D. from the University of Pennsylvania Law School, a Certificate in Business and Public Policy from the Wharton School of Business, and a B.A. from Northwestern University.
In my role as CEO at Alt Legal, a company that provides automated trademark docketing software, I have a unique vantage point on the global trademark prosecution process. I’ve seen that now, more than ever, trademark brands have been expanding their portfolios internationally, resulting in a surge in global IP filings. However, I’ve found that smaller holders of intellectual property (IP) generally have very limited insight into the global prosecution process. Applicants often do not understand an IP office’s prosecution process nor are they able to easily access the status of their IP rights at any time. A key reason for this is the lack of standardization among international IP offices.
IP offices exist to serve as an authoritative source for IP rights in a particular jurisdiction. In doing so, their core functions are to receive, review, and record IP rights. Today, there are nearly 200 distinct IP offices globally and millions of multinational brands. Despite the vast numbers and global nature of IP prosecution, IP offices have not adopted meaningful or consistent digitization standards. Even simple ideas like electronic filings or public access lack meaningful definitions, let alone standards.
To resolve these discrepancies and improve standards among IP offices globally, I launched International Intellectual Property Standards Group (IIPSG), a nonprofit that seeks to bring together IP offices, IP owners, and other stakeholders to create and implement standards for the access and availability of global IP office laws and data.
Why IP Office Standardization Matters
Because IP is one of the truly global practice areas, there would be significant benefit from the standardization of IP office resources and data. At minimum, even standardized definitions around electronic filings would help brand owners and practitioners better anticipate costs and processes related to filings and ensure they understand the specific requirements of the jurisdiction. Further, universally available electronic filings, content, and databases would improve access to justice for those without the same resources as multinational companies and law firms by making global IP filings accessible.
The core social contract of IP is that ideas, identities, authorship and ownership are published so that the rights conferred are known to all, but more importantly so that all of society benefits. IIPSG proposes nearly the same value proposition for IP offices: standardize IP office resources and data and publish and make freely-available IP records, laws, and educational content so that everyone globally benefits.
By setting minimum and common standards and offering global IP offices a shared platform and resources to drive the further digitalization of IP offices and their data, IIPSG aims to minimize the burdens on applicants, IP holders, and IP professionals and improve the ability of unrepresented IP applicants to navigate the application process.
Draft Standards
IIPSG has developed a set of draft standards to set forth its purpose and goals and is working with IP offices for their input on these standards. We are also welcoming comments and feedback from other stakeholders on these standards.
- Availability of IP Legislation and Regulation: All IP legislation and regulations should be publicly available on an updated and governmentally-operated basis.
- Availability of Digital Resources: Applicants and rights holders should be able to fully comprehend the IP application process, timeline and due dates for office correspondence, and the renewal and use requirements applicable to each jurisdiction.
- Electronic Filing Capabilities: Applicants should be able to submit all filings electronically via web form, and IP offices should support e-signatures to the extent they are permissible in the jurisdiction.
- Availability of IP Records: Published applications and registrations should be available and searchable for non-bulk individual consumption for all stakeholders without fee or registration.
- UI & UX Standards for Ease of Use: Human interface guidelines, standardized terminology, and accessibility standards will assure that all stakeholders have helpful and transparent access to IP data and procedures.
- Programmatic Access to IP Data and Filing Services: Approved stakeholders should be permitted to programmatically retrieve IP office data and submit filings via an application programming interface.
- Uptime for IP Office Websites: IP offices should strive to have 99.9% uptime annually and restrict downtime to non-business days.
- Availability of IP Office Metrics and Statistics: Stakeholders should be able to see average time to prosecution and registration information updated on a regular basis as well as information relating to potential downtime for IP office resources.
Challenges Facing Standardization
IP offices face a number of challenges to implementing significant technical improvement. These challenges include budgetary constraints, reconciliation of past records, and lack of agreement on best practices for external resources, including:
- The availability of educational content, including laws and regulation
- Electronic filing options
- Publicly searchable IP records
- Open API access
Moreover, there also appears to be minimal coordination among IP offices to pool resources to cut costs associated with digitizing existing records or implementing electronic filings. Attempts to unify digitalization of IP offices have been limited to, among other initiatives, WIPO Standard ST.66 and ST.60, which together attempt to normalize filing, processing, publication, and exchange of trademark information as well as bibliographic content in trademark gazettes and certificates.
IIPSG seeks to go beyond WIPO’s efforts and will define standards for filing and data access, facilitate collaboration among IP offices to share information and resources relating to digitalization and best practices, and reduce costs for IP offices associated with digitalization through shared resources in the future.
How IIPSG Will Help Service Providers
At this time, fewer than half of all global IP offices that IIPSG has studied have opened up their trademark registries to third party service providers. If more countries offered application programming interfaces (APIs) or bulk downloaded feeds, third parties would have more opportunity to create innovative offerings for searching and docketing based on the wealth of available public IP data. IIPSG aims to support service providers, providing them with a common interoperability layer upon which to build software to aid in the prosecution, monitoring, and maintenance of IP rights.
Moving Forward
In the coming months, IIPSG will work with its membership to refine and update the draft standards. IIPSG plans to release the final standards by the end of Q1 2022. Next, IIPSG will work to encourage global IP offices to adopt IISPG standards. As part of this process, IIPSG will help create connections among professionals working with IP offices and will provide content and programming focused on successful adoption of IIPSG’s standards. IIPSG aims to drive widespread adoption and implementation of these standards by 2027.
We are actively seeking members, including IP offices, law firms, IP owners, and others that want to be involved in helping drive consistency and digitalization among IP offices and their data. If you are interested in getting involved, visit the IIPSG website and fill out the form at the bottom of the page.