Lysaght & Co

Intellectual Property Newsroom

(Developments within the last 6 months)

Haiti - Deadline for revalidating foreign granted patents extended

We have just learnt that the deadline for revalidating foreign granted patents in Haiti which, to date, has been one year from the grant date of the foreign patent, has been extended to three years from this grant date. This therefore gives applicants more time to revalidate their foreign patents in Haiti.

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

9th July 2010

Argentina - Patents - New restrictions on filing divisional applications

On 7 July 2010, the Argentine Patent Office (INPI) issued Regulation No. 147/2010, which restricts the ability of applicants to file divisional applications once the substantive examination procedure has started. This regulation allows applicants to file divisional applications only until notice of the substantive examination has been served. No divisional applications will be allowed thereafter, unless they are made in response to a request from the Argentine Patent Office. Once the substantive examination procedure has begun, if the examiner finds that the application includes more than one invention, the applicant will be requested to divide the application within 30 days; should the applicant fail to do so, the application will be deemed to have been abandoned. In all cases, the basic application must be alive and pending.

This new regulation modifies the prior practice of the Argentine Patent Office, which allowed applicants to file divisional applications at any time during the prosecution of the application up to the issuance of a final decision in the basic application. Whilst this Regulation raises concerns, as it may unlawfully restrict patent rights (thus providing grounds for potential challenge), please bear it in mind during the prosecution of your patent applications in Argentina.

8th July 2010

Georgia - Amendments to Patent Law, and new Law on Designs

We wish to report that the Patent Law of Georgia has been amended with effect from 24 June 2010. From the same date, a new Law on Designs also became effective. Points of particular significance are detailed below:

Amendments to the Patent Law of Georgia
Patents of Importation no longer permissible: Inter alia, the amendments to the patent law render it no longer possible to file an application for a patent of importation (i.e. one based on a foreign granted patent) in Georgia. Patents of importation granted before 24 June 2010 will, however, remain in force for the remainder of their term (provided, of course, that the necessary annuities are duly paid).

Examination of patent applications: The examination of patent applications involves the verification of the filing date, and an examination as to both form and substance. During the examination as to substance, the subject-matter which is indicated in the patent application and the state of art are both determined. After a request for novelty examination has been completed, the examiner is authorized to evaluate also the inventive step. If the examiner considers that the invention is obvious compared with the existing state of the art, the examiner must notify the heads of examination. The examiner's suggestion on the inventive step will be jointly discussed, on the basis of which a decision on grant of patent will be taken.

Post-grant actions: An interested party may, within the term of validity of a patent, request the re-examination thereof on the basis that the invention does not satisfy the patentability requirements. On the basis of such re-examination, the Patent Office will make a decision either to refuse the request for cancellation of the patent, or to cancel the patent completely or partially. At the request of the patent owner, it is permissible to make amendments to the specification and claims of the issued patent in order to correct technical errors.

The validity of a patent: In general, this term remains unchanged at 20 years from the filing date. However, the validity term of patents relating to medical preparations, for which permission from an authorized authority is necessary in order for the invention to enter the Georgian market, may be extended at the request of patent owner for an additional period which may not exceed 5 further years. The patent owner must present a statement requesting the additional term within a year from the date of receipt of consent from the authorized authority.

Utility Models: The patentability criterion that must be satisfied by utility models are: novelty, inventive step and industrial applicability. The validity term of a utility model is 10 years.

New Law on Designs
A new Law on Designs came into effect on 24 June 2010. Previously, regulations referring to designs were incorporated into the patent law. The new law refers to those designs for which applications are filed after 24 June 2010, whereas applications for designs filed before this date will continue to be treated under the previous regulations.

Design applications can now be filed directly with the Georgian Patent Office (GPO), or an International registration can be extended to Georgia according to the Hague Convention. Registration may be obtained in respect of novel and individual designs. Examination of design applications is carried out for local novelty. The GPO issues a decision on grant and publishes information regarding the design in the Official Bulletin. Third parties may file an opposition after the publication, before the Chamber of Appeal under the GPO. Accelerated registration of designs is possible upon payment of the relevant fees. Design registrations have a term of validity of 5 years from the filing date, extensible for four further 5-year terms upon payment of the relevant fees, up to a maximum of 25 years from the date of filing.

1st July 2010

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

Navigation Homepage History of Lysaght & Co. Services Countries Personnel News & Law Updates Scales of Fees Order Form Information Order Form Contact Information Client Login Sitemap	Lysaght & Co Intellectual Property Newsroom (Developments within the last 6 months) Haiti - Deadline for revalidating foreign granted patents extended We have just learnt that the deadline for revalidating foreign granted patents in Haiti which, to date, has been one year from the grant date of the foreign patent, has been extended to three years from this grant date. This therefore gives applicants more time to revalidate their foreign patents in Haiti. Should you require any further information in this regard, please do not hesitate to contact us. 9th July 2010 Argentina - Patents - New restrictions on filing divisional applications On 7 July 2010, the Argentine Patent Office (INPI) issued Regulation No. 147/2010, which restricts the ability of applicants to file divisional applications once the substantive examination procedure has started. This regulation allows applicants to file divisional applications only until notice of the substantive examination has been served. No divisional applications will be allowed thereafter, unless they are made in response to a request from the Argentine Patent Office. Once the substantive examination procedure has begun, if the examiner finds that the application includes more than one invention, the applicant will be requested to divide the application within 30 days; should the applicant fail to do so, the application will be deemed to have been abandoned. In all cases, the basic application must be alive and pending. This new regulation modifies the prior practice of the Argentine Patent Office, which allowed applicants to file divisional applications at any time during the prosecution of the application up to the issuance of a final decision in the basic application. Whilst this Regulation raises concerns, as it may unlawfully restrict patent rights (thus providing grounds for potential challenge), please bear it in mind during the prosecution of your patent applications in Argentina. 8th July 2010 Georgia - Amendments to Patent Law, and new Law on Designs We wish to report that the Patent Law of Georgia has been amended with effect from 24 June 2010. From the same date, a new Law on Designs also became effective. Points of particular significance are detailed below: Amendments to the Patent Law of Georgia Patents of Importation no longer permissible: Inter alia, the amendments to the patent law render it no longer possible to file an application for a patent of importation (i.e. one based on a foreign granted patent) in Georgia. Patents of importation granted before 24 June 2010 will, however, remain in force for the remainder of their term (provided, of course, that the necessary annuities are duly paid). Examination of patent applications: The examination of patent applications involves the verification of the filing date, and an examination as to both form and substance. During the examination as to substance, the subject-matter which is indicated in the patent application and the state of art are both determined. After a request for novelty examination has been completed, the examiner is authorized to evaluate also the inventive step. If the examiner considers that the invention is obvious compared with the existing state of the art, the examiner must notify the heads of examination. The examiner's suggestion on the inventive step will be jointly discussed, on the basis of which a decision on grant of patent will be taken. Post-grant actions: An interested party may, within the term of validity of a patent, request the re-examination thereof on the basis that the invention does not satisfy the patentability requirements. On the basis of such re-examination, the Patent Office will make a decision either to refuse the request for cancellation of the patent, or to cancel the patent completely or partially. At the request of the patent owner, it is permissible to make amendments to the specification and claims of the issued patent in order to correct technical errors. The validity of a patent: In general, this term remains unchanged at 20 years from the filing date. However, the validity term of patents relating to medical preparations, for which permission from an authorized authority is necessary in order for the invention to enter the Georgian market, may be extended at the request of patent owner for an additional period which may not exceed 5 further years. The patent owner must present a statement requesting the additional term within a year from the date of receipt of consent from the authorized authority. Utility Models: The patentability criterion that must be satisfied by utility models are: novelty, inventive step and industrial applicability. The validity term of a utility model is 10 years. New Law on Designs A new Law on Designs came into effect on 24 June 2010. Previously, regulations referring to designs were incorporated into the patent law. The new law refers to those designs for which applications are filed after 24 June 2010, whereas applications for designs filed before this date will continue to be treated under the previous regulations. Design applications can now be filed directly with the Georgian Patent Office (GPO), or an International registration can be extended to Georgia according to the Hague Convention. Registration may be obtained in respect of novel and individual designs. Examination of design applications is carried out for local novelty. The GPO issues a decision on grant and publishes information regarding the design in the Official Bulletin. Third parties may file an opposition after the publication, before the Chamber of Appeal under the GPO. Accelerated registration of designs is possible upon payment of the relevant fees. Design registrations have a term of validity of 5 years from the filing date, extensible for four further 5-year terms upon payment of the relevant fees, up to a maximum of 25 years from the date of filing. 1st July 2010 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

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