Lysaght & Co

Intellectual Property Newsroom

(Developments within the last 6 months)

Saudi Arabia - Exclusive Marketing/Manufacturing Rights

We have recently learnt that a new mechanism for providing and protecting Exclusive Marketing and Manufacturing Rights in respect of certain pharmaceutical products has been implemented in Saudi Arabia. An initiative jointly formulated by the Ministry of Health, King Abdul Aziz City for Science and Technology (KACST), the authority which oversees the Saudi Patent Office, and the Ministry of Commerce and Industry, received the approval of His Majesty the King on 30 September 2009, but this has only just been reported to us.

The mechanism applies to pharmaceutical products for which patent applications had been submitted under the repealed Patent Law issued by Royal Decree No. 38/M of 1989 and were still pending at the time of coming into force of the Law of Patents, Layout Designs of Integrated Circuits, Plant Varieties and Industrial Designs issued by Royal Decree No. 27/M on 17 July 2004. The mechanism allows for the Saudi Food & Drug Authority (SFDA) to provide entities with the exclusive right to market and manufacture in the Kingdom those pharmaceutical products covered by the mechanism. The term of such exclusive marketing and manufacturing rights will expire upon expiry of the corresponding patent in the United States or the European Union, whichever occurs first.

Applications for products covered by the mechanism must meet the following criteria:

1. The application must have been pending at the time that the Law on Patents, Layout Design of Integrated Circuits, Plant Varieties and Industrial Designs came into effect on 6 September 2004.
2. The subject matter to which the product relates must be patentable under the Laws of the Kingdom of Saudi Arabia.
3. A patent must have been issued for the product in the country of origin and/or the United States or European Union.
4. The corresponding patent granted by the United States or European Union must still be in force and not lapsed or expired.

The application for the right of exclusive marketing and manufacturing should be submitted to the General Directorate of Industrial Property at King Abdul Aziz City for Science & Technology (KACST), supported by a certified copy of the corresponding patent granted by the EP or US Patent Office and copies of documents proving that the subject Saudi patent application was submitted under the repealed Patent Law issued by Royal Decree No. 38/M of 1989, was still pending at the time of coming into force of the Law of Patents, Layout Designs of Integrated Circuits, Plant Varieties and Industrial Designs issued by Royal Decree No. 27/M on 17 July 2004, but was then rejected due to lack of the novelty required by the new Saudi Patent Law.

The deadline for filing the application for the right of exclusive marketing and manufacturing is six months of the date of approval by His Majesty the King � thus, the deadline for such submissions is 30 March 2010, but we will require your instructions no later than 23 March 2010 should you wish for any such applications to be filed on your behalf.

After checking the application and making sure that the same meets all of the above conditions, the application will be transferred by the KACST to the Saudi Food & Drug Authority for processing.

We look forward to receiving any instructions from you in good time before the above deadline, should you wish to make use of the above provisions.

16th February 2010

Liberia - Accession to ARIPO

On 24 December 2009, the Republic of Liberia deposited an Instrument of Accession to ARIPO, and both the Harare and Banjul Protocols will therefore enter into force in respect of Liberia on 24 March 2010.

Liberia becomes the 17th member State of the Harare Protocol on patents, designs, and utility models, and the 9th member State of the Banjul Protocol on trade marks.

The Banjul Protocol permits the proprietor of a mark to designate a State which becomes a party to the Protocol subsequent to the filing or registration of the mark. However, there is no such provision for the later designation of States in relation to existing patents or patent applications.

28th January 2010

Rwanda - New Intellectual Property Law

Further to our previous article on this website regarding the new intellectual property law in Rwanda, we write by way of an update to advise that the new law (Law No. 31/2009 on the Protection of Intellectual Property dated 26 October 2009) was published on 14 December 2009 and is therefore apparently in force with effect from that date.

However, although the new law has in effect been implemented, the Registry has not yet begun to practice under the provisions thereof, nor have the official fees yet been promulgated. It is anticipated that the law will be brought fully into effect by mid-February 2010.

Further details will be posted on this website as soon as we have more information. In the meantime, if you have any questions on any of the above matters, please do not hesitate to contact us.

26th January 2010

St Vincent & the Grenadines - Patent renewal fees now payable

As you may be aware, the St Vincent and the Grenadines Patent Act 2004 came into force with effect from 4 August 2008, and the corresponding Regulations came into force on 8 July 2009.

Inter alia, the new law introduced the requirement to pay annuities annually in respect of the second and each subsequent year from the filing date of an application. A grace period of six months is provided in the law for the late payment of annuities, upon payment of a 10% surcharge. If the relevant fees are not paid, the patent or application is deemed to have lapsed.

There has been significant confusion over the last few months regarding this requirement to pay annuities, as the Registrar did not issue any guidance as to which fees were due and when they were payable. However, the Registrar has finally announced that he will now accept annuity payments falling due on or after the date of implementation of the new Regulations (8 July 2009), for all patent applications and granted patents. The due dates of these annuities are calculated from the UK filing date for reregistration applications, and from the PCT filing date for PCT national phase applications, and the first fee payable is that which fell/falls due on the next anniversary of that effective filing date occurring after 8 July 2009. No other back fees are payable.

Notwithstanding the above, in view of the fact that the six month grace period has already expired or will shortly expire for any renewal fees falling due on or shortly after 8 July 2009, the Registrar has apparently indicated that no fees will be payable in respect of any renewals falling due in July, August, September or October 2009. Instead, the relevant 2010 fees will the first fees payable in those cases. We have requested a copy of an official notice from the Registry confirming this special dispensation, but it appears that the Registrar is currently out of the island and so no such written confirmation has therefore been forthcoming. We are extremely concerned that, in the absence of any evidence in writing that renewals falling due in July, August, September and October 2009 are not payable, any such patent cases may be vulnerable to attack in the future. We would therefore strongly recommend that we attempt to pay any fees falling within this four-month time frame, so that at least there is evidence on the official file that an attempt to pay the fees was made (even if the fees are refused by the Registrar).

Please check your records to ensure that all of your St. Vincent patent cases are accounted for. Please let us know if you would like us to attend to the payment of any such annuities on your behalf.

21st January 2010

Costa Rica - Deeds of Assignment in patent applications

We have recently learnt that a Circular Letter dated 3 December 2009 was issued by the Costa Rican Patent Office, in which it was stated that a legalised Power with Assignment document is now required with regard to all patent applications filed under the PCT Convention, those filed under the Paris Convention and those filed as national patent applications. However, on checking this requirement, our associate has now indicated that separate Powers (which have only to be notarised) and Assignments (which must be legalised to the level of the Costa Rican Consul) may be filed.

A member of staff at the Costa Rican Patent Office has unofficially informed our associate that it would not be necessary to file an assignment document whenever a Declaration under Rule 4.17 PCT (i.e. whereby Box No. VIII (ii) of the Form PCT/RO/101 is checked and the signature of the inventor/assignor appears in the document) has been filed. However, we would not recommend that we rely on this unofficial information at this time.

We have also received clarification that it is acceptable to file an existing assignment document (e.g. a US assignment), notarised and then legalized by the Costa Rican Consul.

The deadline for submitting the assignment documentation is two months from the filing date in Costa Rica.

Since the issuance of the Circular Letter DRPI-009-2009, the Patent Office has not established if an extension of time would be possible with regard to the filing of the assignment document in respect of PCT applications. Nevertheless, in the case of patent applications under the Paris Convention, the Patent Office has granted such extensions of time. In our associate's opinion, the same criteria would be followed for PCT patent applications.

To date, the Patent Office has not decided whether or not they are going to request assignment documents for all existing applications. We will let our clients know on a case-by-case basis if such documentation is required for any of their existing applications.

22nd December 2009

Guernsey - 'Patents Post Box Service' now available

The Bailiwick of Guernsey, which comprises the islands of Guernsey, Alderney and Sark and the neighbouring islets of Herm and Jethou, has in recent years been undergoing a series of legislative measures in order to transform the Bailiwick into a modern, TRIPs-compliant IP jurisdiction. In 2006, new trade mark, design, copyright and related rights' laws were introduced, and the primary legislation at that time also included authorisation for Guernsey's legislature to pass laws relating to patents and utility models. Finally, in January 2009, Guernsey passed this long-awaited legislation relating to the registration of patents and the protection of biotechnological inventions. However, to date, this 'Registered Patents and Biotechnology Inventions (Bailiwick of Guernsey) Ordinance, 2009' (the 'Patents Ordinance') has yet to be implemented.

It is expected that the Patents Ordinance will finally come into force during the first quarter of 2010, and this Ordinance will repeal the current law which dates back to 1922. Inter alia, the new Patents Ordinance will significantly broaden the number of jurisdictions from which a granted patent may be reregistered in Guernsey (e.g. to include the US, Canada, China and the Russian Federation). Under the present law, only granted UK or European (UK) patents may be reregistered there.

The new Ordinance will allow the registration of any inventions which are new, inventive and capable of industrial applicability, without exception. Thus, technology such as computer programs will not be excluded from patentability, and a US patent relating to such subject matter will therefore be registrable in Guernsey.

The Guernsey Intellectual Property Office (IPO) has just announced that, until such time as the new Patents Ordinance comes into force, it will be possible for applicants to utilize a newly-launched 'Patents Post Box Service'. This is described by the IPO as providing 'exciting new service opportunities for IP holders who have an interest in patent and biotechnological invention and potential registration in the Bailiwick of Guernsey', by enabling applicants to apply directly to the Registrar of Intellectual Property for an advanced filing of a patent application as if the Ordinance were already in force. Once the relevant forms and fees have been submitted along with evidence of the grant of a patent elsewhere, the Registrar will carry out a pre-application examination. The Registrar will then be able comment on the prospect of the invention being accepted for registration in the Bailiwick once the relevant law is enabled, so giving the applicant the opportunity to obtain an initial (non-binding) opinion on the likelihood of registration in the Bailiwick of an application for a patent. This will seemingly permit the rapid handling of the application for registration once the Ordinance is given effect, and the application will be given a filing date on the date of the commencement of the Ordinance.

Should you require any further information in this regard, please do not hesitate to contact us.

4th December 2009

Oman - Term of PCT National Phase Applications

Further to our recent website article regarding the above matter, we are pleased to confirm that the Omani Patent Office has now clarified that the term of PCT national phase cases will be 20 years from the international filing date, and not the national filing date as they had previously stated. This therefore reflects the calculation method used in other PCT States.

16th November 2009

Oman - Annuity Payments on PCT National Phase Applications

We have recently ascertained that the Omani Patent Office has begun to review patent applications, after a long period of inactivity. Following this news, we have learnt that the Patent Office has issued a decision dated 21 October 2009, in which it is stated that yearly renewal fees must now be paid in respect of all patent applications. Previously, annuities were only payable after the grant of a patent.

The Patent Office's official decision requires that annuities must now be paid on the first and each subsequent anniversary of the PCT filing date, in respect of all PCT national phase applications, and all accumulated back fees that are therefore now payable to date should be attended to before 1 April 2010. However, we have also been advised that the official fees for patent matters in Oman will shortly be increased. We therefore recommend that we attend to the payment of all due fees in respect of your patent cases before the end of 2009.

The Patent Office has also decided that the term of PCT national phase cases will be 20 years from the national filing date. As you will appreciate, this calculation method differs from other PCT States, in which the term is invariably calculated as 20 years from the international filing date. We are therefore querying this matter with our associates, and will post further news on our website when we have learnt more.

12th November 2009

Cayman Islands - Increase in Official Fees

We have just been advised by the Cayman Islands Registry that the official fees for intellectual property matters will increase quite significantly from 1 January 2010. The filing fee for a patent application, for instance, will increase from US$182.93 to US$243.91.

In view of the above, we would recommend that you send us any new instructions for filing or renewing your intellectual property applications, or recording any changes to the proprietors' details as soon as possible, so as to benefit from the current fee scale.

We look forward to being of further assistance to you in this or any other jurisdiction.

12th November 2009

Burundi - New Intellectual Property Legislation

We wish to report that a new Industrial Property Law has recently been enacted in Burundi, following its signature by the President of Burundi and publication on 28 July 2009. However, the implementing legislation which is required in order for the new law to be promulgated remains outstanding. The Industrial Property Director of Burundi has therefore decided to continue to apply the former IP legal framework until such time as the implementing regulations have been finalized and put in place. Nevertheless, as the new law repeals all previous IP laws, we are of the opinion that the new law became fully effective upon its signature by the President on 28 July 2009. Furthermore we believe that, even though the Industrial Property Director is continuing to accept patent and trade mark applications under the terms of the old law, the provisions of the new law nevertheless apply thereto.

Under the previous IP law, there was no provision for the renewal of trade marks. Whilst the new law introduces a renewable 10 year term, it is presently unclear as to whether trade marks registered under the old law will also need to be renewed. The new law also introduces a requirement for absolute novelty in respect of patent applications. Therefore, whilst it is likely that applications for patents of importation (i.e. those based on foreign granted patents) will still be accepted by the Director of Industrial Property until such time as the implementing regulations have been promulgated, any such applications filed since 28 July 2009 are of doubtful validity.

We also understand that a new law will shortly be implemented in Rwanda, which will come into force upon its publication and which will broadly correspond with the provisions of the new Burundi law. Similarly therefore, patents of importation will soon no longer be provided for in Rwanda, and we therefore recommend that any revalidation patent applications that you wish to file there are instructed as soon as possible to ensure that no rights are jeopardised.

All further developments will be reported promptly.

10th November 2009

Iran - Patents of Importation no longer acceptable

As reported on our website in April 2009, a new law on Intellectual Property came into force in Iran earlier this year. Whilst the new law included a provision requiring absolute novelty of inventions, the Iranian Intellectual Property Office (IIPO) continued to accept applications for patents of importation based on foreign granted patents. However, the IIPO has now decided that they will not accept any further such applications for patents of importation, and has advised that existing applications for patents of importation will be converted into applications for independent patents and granted as such.

We have asked our Iranian associate for a copy of the official notice as issued by the Iranian Patent Office in this regard, but apparently no such notice exists. This development is simply due to a very recent change in practice by the Iranian Patent Office following the introduction of the new law.

We have been advised that this situation may change again in the future, and indeed our associate is currently in negotiations with the Iranian Intellectual Property Office in this matter. We will therefore monitor the situation closely, and all further developments will be reported promptly on this website.

7th October 2009

Liberia - New Industrial Property Law

We have recently learnt that a new Industrial Property Law has been enacted in Liberia. The law was apparently published on 30 April 2003, but only became available on the WIPO website on 18 March 2009. However, it is apparent that this law is not yet in force, as the date of its entry into force and the date of repeal of the previous law were left blank in the publication and furthermore, no official notice has been issued regarding the implementation of the new law, regulations or prescribed fees.

Notwithstanding the apparent absence of promulgation of the 2003 law, it appears that certain aspects thereof are in fact being observed in practice, as we have recently received some certificates of registration for trade mark cases which indicate a reduced term of 10 years (the previous law granted a term of protection of 15 years for trade marks).

We are in discussion with our Liberian associate regarding this situation, and we will post further details on our website as soon as any news is forthcoming. In the meantime, however, we summarise below some provisions of particular significance in the new law, which provides specifically for the registration of patents, trade marks and designs, for your information:

Patents

The new law formally recognises the Paris Convention, of which Liberia has been a member since 27 August 1994.
The new law also formally provides for PCT applications (Liberia acceded to the PCT on 27 August 1994) and ARIPO applications designating Liberia. However, to date, Liberia has not become a member of ARIPO.
The definition of an invention has been amended and the law now has specific exclusions from patentability, including (a) Discoveries, scientific theories and mathematical methods; (b) Schemes, rules or methods for doing business, performing purely mental acts or playing games; and c) Methods for the treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practiced on the human or animal body - this latter exclusion does not apply to products for use in any of these methods.
A requirement for absolute novelty has been introduced (the previous law required only local novelty).
Divisional patent applications may now be filed.
The new law provides for substantive examination, but this is at the discretion of the Director General.
Amendments and/or corrections of patent applications are specifically provided for.
The term of patent registration remains at 20 years. Annuities are officially payable on all patent registrations and applications; previously they were levied, in practice, only in respect of PCT cases. The transitional provisions provide that patents granted under the old law will remain in force subject to the payment of annual maintenance fees.
Revocation of a patent by any interested person is now possible.

Designs

The new law specifically provides for industrial designs � previously it was not possible to obtain design protection in Liberia.
Absolute novelty is required, and Convention priority may be claimed.
The term of protection is 5 years, extendible for two further terms of 5 years.
As for patents, ARIPO design applications are provided for, but Liberia's non-membership of ARIPO means that this provision currently has no effect.

Trade Marks

Trade marks and service marks continue to be recognised under the new law, but provision is now also made for collective marks and trade names.
The new law formally recognises the Paris Convention, of which Liberia has been a member since 27 August 1994, and the International (Nice) Convention..
As discussed above, ARIPO trade mark registrations are provided for, but in practice will not be possible until such time as Liberia becomes a member of ARIPO.
The new law implicitly recognises the Madrid (international) registration system for trade marks, as it provides that international treaties to which Liberia is a party apply to matters dealt with by this Act and, in case of conflict with provisions of this Act, shall prevail over the latter. Whilst Liberia has been a party to the Madrid Agreement since 1995, and Madrid trade marks have been registrable in Liberia to date, the enforceability of such registrations was doubtful under the previous law.
Accepted applications will be published under the new law, and oppositions may be filed by any interested person.
The term of registration of a mark is 10 years, and this term is renewable for further consecutive periods of 10 years. Under the previous law, the term of a trade mark registration was 15 years. It is not yet clear as to whether the term of trade marks registered under the previous law will be shortened - the transitional provisions of the new Act state that subsisting registrations "shall remain in force but shall � be deemed to have been registered under [the new] Act." We will let you know once this matter has been clarified.
The rights conferred by a trade mark registration do not extend under the new law to acts in respect of articles which have been put on the market in Liberia by the registered owner or with his consent.
A trade mark registration may be invalidated on various grounds, e.g. if the mark does not satisfy the requirements for registrability or if the mark has not been used for three or more years.

As mentioned above, it appears that the 2003 Act is not fully in force, and we are therefore continuing to make enquiries regarding its promulgation. Further information will be posted on our website as soon we have any news.

This information is correct to the best of our knowledge, but only represents an overview of the new Act. Please let us know if you require any more detailed information.

1st October 2009