The structure and organization of Industrial Property systems worldwide compel applicants wishing to protect their innovations through an industrial property figure in another country different from the one of its residence, to select an assessor-prosecutor domiciled in the country of interest for applicant.
In such cases, it is compulsory to count with at least one Industrial Property specialized firm having the necessary knowledge and expertise to support applicant in each country wherein protection is sought.
The selection of a firm representing an applicant is really transcendent, since it will be responsible of every action taken, which will be fundamental for the obtainment of the registration. Particularly, what must be avoided is to select an associate who limits its actuation only to the prosecution, therefore excluding the assessment of the case.
Our firm’s particular experience, revealed that a suitable selection of an associate renders immediately to the easiness or difficulty with which the prosecution of the desired protection will be carried out, as well as to the success or failure of such prosecution, and the costs related thereto.
Suggested here are some considerations to be taken when selecting a foreign associate:
- Previous working experiences with a specific firm.
- Direct recommendations suggested by associates and/or clients.
- The prestige of the firm.
- The personal knowledge of one or more collaborators of the firm.
- The schedule of fees of the firm.
- Regular publications sent by the firm (bulletins, brochures, etc).
- The acknowledges made to the firm by specialized publications
- Mutual cooperation.
From the above-listed considerations, with exception of having a working experience with a specific firm, we consider that the one giving a better result when selecting a new associate is the personal knowledge of one or more collaborators of the firm. Personal contact, in a general manner, is carried out by the participation in Congress meetings and Conventions, which allow the professionals in this area to have a personal approach and to interchange impressions, which permits to acquire a perspective of the different collaborators of the firms.
Additionally, we consider that a personal approach increases the responsibility sense between both parts, looking for higher cooperation and better communication.
As an alternative to the above, in case of lacking personal knowledge of any collaborator of a firm, recommendations from associates with whom a previous work experience has been held, who may assure the obtainment of a good service could be obtained, although not at a low cost.
Other options, which may be used as aid parameters, do not assure at all that the service assessment-dealing of an industrial property matter will be suitable. In fact, "trying" an associate without having prior knowledge or recommendation may represent a high risk for both the client’s interests and the own prestige of our firms.
Therefore, our suggestion is to realize that the importance in the selection of a foreign associate is equivalent to obtaining or losing an industrial property protection right, and that when a third party is being represented, it is of double importance, inasmuch as the client’s innovations and money, as well as our professional image is being involved.
With the above in mind, we would advise to select those firms that do not limit their actuations to the prosecutions of the cases only, but to select those firms being truly experts and assessors in industrial property matters in their country of origin.
Moreover, it is recommendable to prefer those firms which clearly expose their charges, which timely inform of any evolution of the application in turn, which express suggestions to reach the protection goal, but at the same time, which await receiving instructions before proceeding with any action on the case in prosecution, and most of all, those firms which admit their responsibility on any error, since finally, everybody makes mistakes at least once.
The performance of the evaluation suggested in the last paragraph is neither an easy nor a fast task, in as much as to know the working manner of an associate it takes time, commonly what the prosecution of a specific case takes.
Finally, it is highly recommended to dedicate efforts to this task, because to have an associate with the capacity to act as we would do before the corresponding authorities in a case, will give us the tranquility of knowing that the cases entrusted to foreign colleagues, will be attended the best they can be, and that they will be defended until reaching the desired objective, an industrial property right.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.