20th August 2003

16th July 2003

• The definition of an ?invention? has been revised, and it is consequently no longer necessary for the claims to relate to a ?manner of manufacture? (which results in a vendible or tangible product);
• Various categories of inventions are excluded from patentability, such as plants or animals in whole or in part; seed varieties and species; and essential biological processes for the production or propagation of plants or animals.
• The term ?chemical process? has been extended to include biochemical, biotechnological and microbiological processes, all of which are therefore now patentable.
• The term of protection afforded to patents has been increased from 17 to 20 years from the filing date in respect of all patents granted after, and patents which have not yet expired on, the date of commencement of the amended Act.
• In respect of all applications filed before 20 May 2003, a request for substantive examination of a patent application must be filed within 48 months of the filing date of the application or within 12 months of the date of commencement of the amended Patents Act, whichever occurs later. For all applications filed on or after 20 May 2003, a request for examination must be filed within 48 months of the date of filing of the application.
• All patent applications will be published after 18 months from the earliest priority date (or the filing date, if no priority is claimed).
• An application must be put in order for acceptance within one year from the date of the first examination report. There is no provision to extend this time limit.
• The amended Act includes the Bolar provision, which permits the use of a patented invention for obtaining drug regulatory approval from public health authorities.
• India is now a signatory to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedures, and applicants must provide details of any such deposits made.
• A requirement for first filing of applications in India in respect of inventions of Indian origin has been reintroduced.

09th June 2003

14th May 2003

30th April 2003

• The 8th Edition of the Nice Classification is now applicable in St. Lucia.
• Applications can now be filed as multi-class applications.
• It is no longer possible to re-register UK Trade Marks in St. Lucia
• The renewal term is now 10 years, renewable for like periods. Any registered Trade Mark in St. Lucia will remain valid for its existing renewal term, and will then be renewable for a ten year period.
• Trade Marks can be struck off the register on the grounds of a continuous period of 3 years non-use.
• Convention Priority can now be claimed in St. Lucia.
• Collective Marks and Certification Marks can now be registered in St. Lucia.
• If an official action is raised against an application and no response is received thereto within 12 months of the date of the official action, the application will lapse.
• Prints must be submitted in no larger than a 3 inch x 3 inch format.

29th April 2003

03rd April 2003

• The 20 year term of a patent relating to a pharmaceutical, pesticide, or agrochemical will now be extensible by 5 years on request by the patentee, if a licence is required to use these substances. The request for an extension of the term should be filed within 6 months from the date of the granted licence or from the grant date of the patent, whichever occurs later. This provision applies both to patents that were granted before the introduction of the new law (12 March 2003), and those granted after that date
• It will be possible to restore a patent for which an annuity was not paid in the due time, or within the 6 month grace period thereafter. The restoration must be applied for within 3 years from the missed due date, but before the expiry date of the patent. This possibility will apply equally to patents which have lapsed before the date of introduction of the new law, provided that neither the three year restoration period nor the term of the patent have expired.
• In respect of non-PCT derived applications, a certified copy of the priority document will now need to be filed within 16 months from the earliest priority date.
• The term for filing a request for examination of a patent application will be extensible by 2 months. If examination is not duly requested, it will be possible to restore the application within 12 months, if a good reason for missing the due date is presented.
• The due date for responding to an official action will not be extensible for more than 10 months, although, if a good reason can be presented, further extensions may still be possible. However, the Patent Office will take a very strict standpoint on the granting of extensions over 10 months, even if good reasons are presented, and in practice the maximum extension of time attainable will therefore be 10 months.
• Before a final decision as to the patentability of an application is issued, a notification on the results of the substantive examination will be sent to the applicant, who will have the opportunity to respond within 6 months. This change to the law will therefore improve the rights of the patentee, since there will now be a final chance to amend the claims before the acceptance decision issues.

06th March 2003

27th February 2003

• Multi-class applications will be possible
• The distinction between parts A & B of the Register will be abolished
• The meaning of ?Trade Mark? has been broadened to allow for registration of 3 dimensional shapes, sounds, etc.
• Recognition of ?well-known trade marks? in accordance with Article 6 bis of the Paris Convention
• An unextendible Opposition term of 3 months from publication
• The term of a trade mark will be 10 years, renewable for like periods
• Registrations may be cancelled after 3 years? non-use, and the burden of proving use lies with the trade mark proprietor
• Collective Marks may be registered

17th February 2003

15th January 2003

• Classification - The Nice Classification, 8th edition, will apply. Multi-class applications are provided for. The repealed law did not provide for classification, so existing registrations are not classified, and we presume that these will be classified upon renewal, although the new law is silent on this.
• Convention Priority - Priority may now be claimed under the Paris Convention.
• Examination, Advertisement, Opposition - Provisions are retained for these. Examination for registrability has always been rigorous, and we suspect this will stay the same.
• Term & Renewals - registrations gained under the New Act will be renewable for successive ten-year terms, instead of 7 years then successive 14-year terms under the repealed Act. Existing registrations will complete their current terms, then be renewable for ten years.
• Use & Non-use - The new law provides for removal of a registration on the grounds of three years? non-use, up to one month before application to remove. There was no machinery for cancelling an unused trademark under the repealed law.
• Licensing - Under the new law, licences must be recorded in order to be enforceable against third parties, and those licences must provide for quality control.
• Remedies for Unregistered Marks - In terms of Article 6bis of the Paris Convention, marks that are well-known in Mauritius are recognised and may be enforced, even if unregistered.

• The conditions for patentability in Mauritius are absolute novelty (previously, only local novelty was required), inventiveness, and industrial applicability.
• An application must also satisfy the criterion of unity of invention, although lack of unity is not a ground for invalidation of a patent. Division of an application may be carried out at any time before grant of a patent.
• Amongst other subject matter, methods of treatment or diagnosis practiced on the human or animal body are specifically excluded from patentability in Mauritius. However, any product used in such a method is not so excluded.
• The right to a patent belongs to the inventor, unless the invention is made during the course of an employment contract, or has been assigned or transferred by succession. Where the applicant is not the inventor, a statement justifying the applicant?s right to the patent must be furnished to the Patent Office.
• Priority may be claimed under the Paris Convention. A certified copy of the priority document(s) may be requested by the Controller.
• Substantive examination, as such, is not contemplated under the new Bill, but the applicant is required to furnish any details of search and examination carried out on corresponding foreign applications, if so requested by the Controller, and these will be used as the basis of the examination procedure in Mauritius.
• The term of a patent under the new Act is 20 years from the filing date (previously, a patent expired after 14 years from the date of signature of the grant certificate, extensible by a further 14 year term upon request). Annual fees are now payable under the new Act, commencing on the first anniversary of the filing date.
• PCT national phase applications in Mauritius are now provided for by the new Act.

• Industrial designs are registrable in Mauritius if they are new (and an absolute novelty requirement is specified).
• Again, the right to an industrial design belongs to the creator, unless created during the course of employment, assigned or transferred by succession.
• Priority may be claimed under the Paris Convention, and a certified copy of the priority document(s) may be requested by the Controller.
• Two or more designs may be the subject of the same design application, if they relate to the same class of the International Classification or to the same set or composition of articles.
• The registration of an industrial design expires after 5 years from the filing date, although this term is extensible for three further consecutive periods of 5 years each upon payment of a renewal fee.

• The term of any patent which has not expired upon entry into force of the new Act will be deemed to be the unexpired period from the date of the patent, and any patent which has been extended under the repealed Act will continue to be in force for the remainder of the unexpired period. However, annual renewal fees will be due on such patents, as provided for under the new Act. We are currently investigating whether back annuities will therefore become payable, or whether only those annuities which fall due after the entry into force of the new Act are payable..

10th January 2003

13th November 2002

• Definition of trade mark expanded to "any visible sign"
• International Classification adopted - it is assumed that existing registrations will need to be reclassified upon renewal.
• Priority claims possible.
• Duration 10 years and renewable for like periods.
• Cancellation possible after 3 years? non-use.
• Collective marks registerable.
• Licensing possible only if proprietor exercises quality control.
• Registration of UK registrations is being phased out, and will no longer be possible after 31 May 2003. Trade Marks re-registered between now and 31 May 2003 will be valid for the unexpired portion of the period of protection afforded for the UK mark, and we are investigating what provisions exist to convert these marks (presumably upon renewal) so that they conform with the new act.
• Formal Trade Mark examination is now undertaken, and marks are published for opposition purposes.
• The transitional provisions, which seem to suggest that the term of all existing registrations has been reduced from 14 to 10 years, are currently being queried, as are the documentary requirements.

4th November 2002

• Patents may only be granted in respect of inventions which satisfy the criteria of novelty, inventive step and industrial applicability. Previously, patent applications were not examined on substantive grounds, but were merely advertised for opposition by any interested third party. Under the new Act, applications are examined on both formal and substantive grounds.
• The novelty requirement is absolute (worldwide), although disclosures within the 12 months immediately preceding the filing date/earliest priority date which result from acts committed by the applicant or his predecessor in title, or acts which constitute an abuse by a third party, are discounted.
• Methods of treatment, diagnosis or therapy are excluded from patentability.
• Patents are granted under the new Act for a term of 20 years from the filing date, and annuities are now due in respect of the second and each subsequent year from the filing date. A grace period of six months is provided for the late payment of annuities.
• The reregistration of granted UK and European (UK) patents is still possible under the new law, within three years from the date of grant of the base patent.
• The transitional provisions of the new law render it applicable to all granted patents and all pending applications. We are currently checking whether annuities will therefore become payable on patents which were granted under the old Act, and we will post further details when we have received clarification of this point.

24th September 2002

• Definition of Trade Mark expanded to UK 1994 Act definition.
• International Classification adopted - existing registrations to be reclassified upon renewal.
• Priority claims possible.
• Duration 10 years with 6 month grace period.
• Cancellation possible after 3 years? non-use.
• Collective marks registerable.
• Licensing possible only if proprietor exercises quality control.
• Agent in Anguilla needed.
• Re-registration of UK registrations still possible, but will be examined and may be refused if the mark is a geographical name, surname, flag or crest connected with Anguilla, or if it conflicts with a trade mark ?which is well known in Anguilla for identical goods and services of another enterprise?.

19th September 2002

• Requirement for local agent if an Applicant does not have his ordinary residence or place of business in Malta;
• Excess claims fee for each additional claim over 10;
• Exclusion from patentability of claims directed to methods of treatment by therapy or surgery and methods of diagnosis of a human or animal body;
• New patent term of 20 years from the filing date, subject to the payment of renewal fees, and no further extension of term provided for;
• Renewal fees due annually, commencing before expiration of the second year from the filing date, or within a six month period of grace thereafter;
• New documentary requirements for filing an application.

22nd August 2002

• the introduction of service marks
• definition of trade mark extended to include shapes, packaging and colour combinations
• collective marks and series marks registerable
• recognition of well known marks
• the introduction of multi-class applications
• alteration of renewal term to 10 years.

20th August 2002

• Patent number;
• Filing date and application number of patent;
• Title of invention;
• Name and address of patent proprietor;
• Certified copy of a document which grants permission to the patentee to use the product or process, issued by a competent Ukrainian authority (e.g. copy of registration certificate issued by Ministry of Health, etc.);
• Power of Attorney.

10th July 2002

05th July 2002

• Power of attorney simply signed

Photocopy of:
• Certificates of registration/renewal
• Certificate of recordal of any changes to the proprietor, or details when such changes were recorded

22nd April 2002

28th March 2002

28th March 2002

28th March 2002

10th January 2002

04th January 2002

• Proof of use will no longer be required on renewal. This applies to all renewal applications filed on or after 28 February 2002, including renewals which have passed their due date and are filed in the 6 month grace period.
• A mark becomes vulnerable to an action for cancellation if it has not been used for an uninterrupted period of 5 years prior to the action for cancellation, instead of 5 years from its registration date.

• The patent term will be extended to 20 years in respect of all registered patents, and application for extension of term beyond 10 years will no longer be required. This includes patents which have reached their ten year term but are still in the extension grace period at the time the revised law comes into force.
• PCT applications will be subject to a technical examination, from which they were previously excluded.

• There will no longer be a 12 month time limit for recording changes to the proprietor.
• Licence agreements and deeds of assignment between nationals of OAPI territories and non-nationals will no longer require the approval of the Competent National Authority.
• Introduction of protection for Layout-Designs of Integrated Circuits and Plant Varieties.>

03rd January 2002

31st December 2001

12th December 2001

• A reduction in the Opposition term from 6 to 3 months;
• Substantive examination will take place before, rather than after, the Opposition term. Additionally, the right to appeal against the Trade Mark Office?s rejection of a mark has been introduced;
• Applications claiming priority will no longer lapse if the priority documents are not filed within the relevant period (within 9 months of the filing date of the priority case) but will be treated as ordinary applications with no priority claim;
• A greater emphasis on the prohibition of marks filed in bad faith; Greater protection for well-known marks, including the right of the Trade Mark Office to refuse to renew any registration which is similar or identical to a well-known mark.

12th December 2001

27th September 2001

27th September 2001

18th September 2001

07th September 2001

• The new law introduces an independent trade mark registration system, and therefore it will no longer be necessary to base Belize applications on a registered U.K. national trade mark.
  (However, there is a transitional period which expires on 05 January 2002, during which time applications can be made in Belize for the re-registration of existing U.K. national registered trade marks. Such applications shall be afforded the filing date or priority date accorded to the application by the U.K. Patents Office. Our charges for applications filed under the transitional provisions will be set once we have received clarification from the Registrar as to the procedure and fees involved)
• Trade marks are registered for a term of 10 years from the date of filing in Belize, and can be renewed for further like periods of 10 years.
• International Classification of Goods and Services applies.
• Whilst it was envisaged that a ?multi-class? registration system was to be introduced in Belize, neither the Act, the Rules or the Fee Schedule reflect this. Therefore, until this point is clarified and the appropriate measures taken by the Belize authorities, it must be assumed that an application for a trade mark will cover only one class of goods or services.
• Trade Marks registered under the old law are automatically in force under the New Act.

31st August 2001

• registration of service marks
• registration of certification and collective marks
• filing of multiclass applications
• registration of "signs", including three-dimensional shapes, sounds, smells, colour, packaging
• protection of well-known marks originating in Paris Convention member countries
• claiming of the right of priority of registrations originating in Paris Convention member countries
• licensing and sub-licensing of marks
• simplification of the assignment process
• registration of transactions affecting registered marks, including security interests
• protection of registered marks for 10 years and renewals for further periods of 10 years
• extension of opposition period from 1 month to 2 months but extensions of time will not be available
• elimination of defensive marks
• elimination of the association requirement
• retroactive consolidation of the register (i.e. fusing of Parts A and B)
• expansion of infringement rights. A registration is infringed by use of same or similar marks on the same or similar goods or services
• criminalisation of counterfeiting
• apprehension and forfeiture of infringing goods imported into the country.

31st August 2001

22nd August 2001

• Patents will be granted for patents of invention and utility models. It is no longer possible to apply for revalidation of foreign granted patents.
• The term of a patent of invention is 20 years from the date of filing, and for a utility model, 10 years from the date of filing.
• Annuities are payable annually, in advance, in respect of all patents and patent applications commencing on the second anniversary of the filing date (i.e. for the third year). There is a period of grace of 6 months, with penalty.
• In respect of applications filed or registered under the old law, annuity payments will commence with the annuity due after 29 January 2001. The filing date of patents of revalidation is deemed to be the filing date of the corresponding foreign patent. Any annuities due between 29 January and 29 July 2001 will not be subject to the payment of a late fine, if paid before 29 July 2001. In respect of payments made, or due, after 29 July 2001, the period of grace of 6 months with late fine will apply.
• Patents for pharmaceutical products will be allowed, but grant has been postponed to 1 January 2003.
• Patents must be exploited within three years from grant or four years from the date of filing, which ever term expires later.
• A compulsory licence may be granted for reasons such as lack of exploitation, public interest, and anti-competitive practices.
• Notarial certification and consular legalisation will no longer be required for supporting documentation.

05th June 2001

20th April 2001

23rd March 2001

22nd March 2001

22nd February 2001

22nd February 2001

Korea (South) - Revision of Patent and Design Laws

The Korean Intellectual Property Office (KIPO) has announced that revised Intellectual Property laws will enter into effect on 1 July 2001. Various changes having an impact on the prosecution of patent and design applications are discussed below:

Patent Law: Priority rights: Priority can be amended or added up to 16 months from the priority date. It will not be necessary to submit a certified priority document for priority applications filed in certain designated States. Amendments: Voluntary amendment can now be applied for ?before transmittal of allowance of grant of a patent? or ?before transmittal of the first official action (preliminary rejection)?. Previously the term for amendment was 5 months from the application/priority date. The scope of permissible amendments has also been changed. Amendments are now permissible provided that new matter is not added to the specification or drawings (previously, provided that the ?gist was not changed?). The extent of amendment after a final official action or final rejection will be limited to narrowing the scope of claims, correcting typographical errors, or clarifying ambiguous descriptions.

Design Law: Miscellaneous changes include: extension of the opposition period after publication of unexamined design application; adoption of a new novelty system; exclusion of functional designs from the scope of protection of design rights; and a prohibition against division of design applications for a set of articles.

16th February 2001

Colombia - Ratification of Hague Convention

Colombia has ratified the Hague Convention, which entered into force in Colombia on 30 January 2001. Consular legalisation of Powers of Attorney and other documents is no longer required, although notarisation and legalisation by Apostille will be necessary.

31st January 2001

Malta - New Trade Marks Law

The new Trade Marks Law of Malta, Act No. XVI of 2000 entitled ?An Act to Regulate Trade Marks? entered into force on 1 January 2001. Chief amongst its new provisions are the following:-

• The adoption of the International Classification system;
• Registration of service marks is permitted;
• The definition of a Trade Mark has been broadened to any sign capable of being represented graphically. This allow for registration of personal names, letters, numerals, and the shape of goods or their packaging. Whilst the Comptroller may refuse registration on absolute or relative grounds, the Trade Mark Office is expected to be more flexible in the examination of applications in future;
• It is possible to claim priority from an application filed in a member state of the Paris Convention or the WTO, provided that the application is filed within 6 months of the priority date. This differs from the old law, which only allowed a 4 month term;
• Trade Marks are valid for 10 years from the date of Registration, and renewable for like periods;
• Powers of Attorney are no longer required for filing applications.

19th January 2001

Netherlands Antilles - New Trade Marks Act (1995)

We have been advised that the new Netherlands Antilles Trade Marks Act (1995) will come into force on 01 January 2001.

The implementation of the new law should be noted by anyone with an existing Trade Mark Registration, as the new law requires all existing Registrations to be re-registered within 12 months. The new law will reduce the renewal term of all Registrations to 10 years, and we envisage that the renewal date of many existing Registrations will change. For example, if an existing Registration was renewed in 1996, its next renewal date under the old law would be in 2016. Once the Registration is re-confirmed, its next renewal date will be in 2006.

If you require us to re-register any existing trade mark, we are able to offer a special rate for a renewal filed simultaneously. In the example given above, this would avoid the need to file a renewal again in 2006, when the fees will be higher.

Other features of the new law include:-

• the introduction of service marks;
• The definition of a trade mark has been broadened to include shapes, sounds, smells, etc., as well as 3-dimensional marks;
• Rights will accrue to the first to register, not the first to use;
• The period after which a registration may be cancelled for non-use has increased from 3 to 5 years;
• Collective trade marks will be registerable.

18th December 2000

Paraguay - New Patent Law - 29 January 2001 Deadline for Revalidation of Foreign Granted Patents

A new Patent Act (No. 1630) was promulgated in Paraguay on 29 November 2000 and abrogates the previous patent law (No. 773 dated 3 September 1925).

The new Act shall become effective as from 29 January 2001 and modernises the legal protection of inventions in accordance with international commitments assumed by Paraguay, particularly those set by the Paris Convention for the Protection of Industrial Property and the TRIPs agreement.

For present purposes it is important to note that:

• The Act introduces absolute (world-wide) novelty as a criterion for patentability. Previously, local novelty was sufficient for patentability and it was accordingly possible to file applications for ?revalidation? of foreign granted patents.
• No provision is made in the new Act for a transitional period during which owners of foreign granted patents may apply for revalidation. Accordingly, unless application is made before 29 January 2001 it will no longer be possible to revalidate patents in Paraguay.

Argentina - Patents - Supreme Court rejects revalidation patent applications filed after 1 January 1995

On 24 October 2000 the Argentine Supreme Court handed down a decision that has changed the outlook for applicants for revalidation patents in Argentina. Before the decision the Federal Court of Appeals had consistently ruled that applications filed before 29 September 1995 had to be accepted and prosecuted by the Argentine Patent Office. However, the Supreme Court has now ruled that all revalidation patent applications filed after 1 January 1995 must be rejected, arguing that the entry into force of the TRIPs Agreement in Argentina abrogated the provisions regarding revalidation patents. In short, unless the Supreme Court reverses its decision, which is most unlikely, any revalidation patent application filed after 1 January 1995 will in all probability be rejected by the Patent Office, and this rejection would be confirmed by the Courts.

On the other hand the Supreme Court further ruled that patent applications must be governed by the law that was in force at the filing date. Therefore, as long as a revalidation patent application was filed before 1 January 1995 its prosecution should continue under the provisions of the old Patent Law No. 111 which is no longer in force.

10th November 2000

Argentina - Patents - Patent Office begins to grant pharmaceutical product patents

On 24 October 2000 the transitional period under Article 65 of the TRIPs Agreement, that allowed Argentina to postpone patent protection for pharmaceutical products, expired. Since that date the Patent Office has already granted close to 100 patents claiming pharmaceutical products. These are the first pharmaceutical product patents granted in Argentina since a prohibition on such patents began 130 years ago.

10th November 2000

Trinidad & Tobago - Transitional Patents (Amendment) Act to provide for re-registration of pending or granted UK patent applications

As you may be aware, a new Patents Act came into force in Trinidad & Tobago on 1 December 1997. The Patents Act introduced absolute novelty as a requirement for patentability. However, the Act came into force with little forewarning and no provision was made in the original wording of the Act for applicants or owners of pending or granted UK patent applications to file applications for re-registration of the applications as they been permitted to do under the previous Patents and Designs Act, 1900.

We are pleased to report that the Parliament of Trinidad & Tobago has now passed a Patents (Amendment) Act, 2000 which introduces a one-year transitional period during which patent applications may be lodged in Trinidad and Tobago corresponding to the following:

(1) UK patent applications still pending as at 12 October 2000. This class covers any of the following having filing dates or priority dates earlier than the date of entry into force of the Trinidad & Tobago Patents Act (1 December 1997):

• UK national patent applications
• European patent applications designating the UK
• PCT international applications designating the UK for a national or European patent

(2) UK patents granted as at 12 October 2000. Granted UK patents must have had filing dates earlier than the date of entry into force of the Trinidad & Tobago Patents Act (1 December 1997). They must have been granted after 1 December 1994 (this date derives from the three-year time limit calculated from grant which was previously permitted for re-registration applications). They must either be UK national patents or European patents granted in respect of the UK.

Each such application filed in Trinidad & Tobago will retain the filing date and, if applicable, priority date, of the corresponding UK patent or application. The one-year transitional period commenced on the date of entry into force of the Patents (Amendment) Act, i.e. 12 October 2000, and will accordingly expire on 12 October 2001.

2nd November 2000

Georgia (Former Republic of the USSR) - New Importation Patent Law

A new Importation Patent Law has been adopted by the Georgian Parliament and has entered into force. In terms of the law it is now possible to revalidate foreign granted patents in Georgia. Salient provisions of the law include the following:

Documentary requirements: Full name and complete postal address of the/each applicant and inventor; specification, claims, abstract and drawings; extract from the register of the foreign country confirming that the relevant foreign patent is in force; power of attorney; and assignment from inventors to applicant.

Time limit for revalidation of a patent: None.

Patent term: The term of an importation patent is the lesser of (i) 20 years from the date of issue in the original foreign country; and (ii) 10 years from the date of filing with Sakpatenti (the Georgian Patent Office).

Miscellaneous: (i) An importation patent may only be granted for an invention patented abroad, examination of which was conducted pursuant to all the criteria of patentability in that country. From this provision it appears that it will not be possible to revalidate patents granted in countries (such as South Africa) which conduct patent examinations only as to formalities. (ii) An importation patent gives the patent owner the exclusive right to use, produce or sell his product, but it does not give him the right to prohibit third parties from importing such product from abroad.

2nd November 2000

United Republic of Tanzania - Applications for registration of granted UK patents no longer accepted by Patent Office

The United Republic of Tanzania Patent Act came into force several years ago and introduced a world-wide novelty requirement, simultaneously repealing Patent Ordinance Cap. 217 which had provided for applications to register granted UK patents in Tanganyika. However, the Patent Office continued to accept such applications for registration despite repeal of the enabling law. We continued to file applications of this type for our clients, but persistently maintained that we had reservations about the validity of patents granted on such applications.

Recently, we have finally had a rejection of an application for registration of a UK patent before the Tanzanian Patent Office. The Registrar has indicated that any application for a patent in Tanzania must be made under the new legislation and not otherwise.

Please note that the United Republic of Tanzania Patents Act has not yet been ratified by Zanzibar and accordingly does not extend to the island. Therefore, it remains possible to file applications for registration of granted UK patents in Zanzibar.

04th October 2000

Jersey - Trade Marks Law (Jersey) 2000

The Trade Marks Law (Jersey) 2000 came into force in Jersey on 01 October 2000. The new law reflects many of the provisions of the United Kingdom Trade Marks Act 1994.

Under the old law, trade mark protection could only be obtained by re-registration in Jersey of a trade mark registered at the United Kingdom Registry. Under the revised law, in addition to this protection, trade mark rights in Jersey will be acquired automatically by virtue of a Community Trade Mark (CTM) Registration or International Registration obtained under the provisions of the Madrid Protocol which extends to the UK, without the requirement for entry in the local Registry of such rights.

We take the view that this situation is not ideal. Either Jersey should have amended its law to allow for local Registrations to be based upon CTM and International Registrations, as well as national Registrations in the UK, or the law should have been amended so that national UK Registrations are valid automatically as well. The new law discriminates against owners of national UK Registrations, who may not require a CTM themselves, as they will have to continue to pay fees in order to obtain registration of their trade marks locally. On the other hand a company that owns a CTM could use their Registration to prevent Jersey companies from using the name, even if the CTM owner has no use of the mark, and no intention to trade, in Jersey.

At present, Jersey registered companies are also put at a considerable disadvantage by the new law as they are not entitled to own CTMs. Jersey companies will continue to have to register their trade marks in the UK in order to obtain local protection, even though they may have no intention of using their trade marks outside of Jersey. Although it was originally anticipated that one of the ramifications of this new law would be that Jersey based companies could own CTMs, the European Commission has yet to reach a conclusion on the matter. We are pressing the Jersey authorities to resolve the issue with the Commission as soon as possible, but have been advised that the implementation of the new law is not dependent upon the Commission's findings.

01st October 2000

Equatorial Guinea joins OAPI

With effect from 23 November 2000, it will be possible to obtain protection for patents, trade marks and designs in Equatorial Guinea, by means of an OAPI registration. Equatorial Guinea, which up until now has had no legislation for the protection of intellectual property rights, deposited its instrument of adhesion to the Bangui Accord on 23 September 2000 and its membership of OAPI becomes effective two months thereafter. This means that from 23 November 2000, all applications filed at OAPI will automatically cover Equatorial Guinea, in addition to the 15 existing OAPI member states.

It will also be possible to extend to Equatorial Guinea any current OAPI trade mark, patent and design registrations filed prior to 23 November 2000, by means of an application for extension of rights. The deadline for filing applications for extension is 23 May 2002.

29th September 2000

Hong Kong - New Trade Marks Ordinance
A new Trade Marks Ordinance was published in June, and is expected to come into force in Hong Kong in early 2001. The provisions of the new law are largely similar to those introduced in the United Kingdom by the Trade Marks Act 1994, and include the following provisions:-

• A new definition of a trade mark, to include shapes, sounds, smells, etc.
• Abolition of Parts A and B of the Register.
• Multi-class applications.
• Recognition of "well-known" Trade Marks entitled to protection under Article 6 bis of the Paris Convention.
• A renewal term of 10 years.
• Revocation (cancellation) of Registrations possible after a period of 3 years' non-use.

The New Ordinance differs from UK Law on this point, where the term is 5 years. As yet, the new fees and regulations have yet to be published. We are monitoring the situation closely and will update our website when further information becomes available.

15th September 2000

GCC - Patent Regulations and Implementing Bylaws amended

On 15 August 2000 an amended set of GCC Patent Regulations and Implementing Bylaws entered into force. Some important changes were introduced including the following :-

• Absolute (world-wide) novelty is required - No longer possible to revalidate foreign granted patents.
• Duration of Patents is now 20 years from date of filing.
• Annual renewal fees are now payable on pending applications (not just on granted patents).
• Duplication of patent applications in GCC and in any member state(s) of GCC now permissible.
• Priority may now be claimed within 12 months from "any previous filing of an application with a national or regional office".
• Working within 3 years of date of grant (instead of 2 years) is now required.

Should you require any further advice on the implications of the amendments to the Regulations, please do not hesitate to let us know. Please see our contact page for contact details.

21st August 2000

Jamaica - Draft Patent Legislation

A draft Patent Bill is in circulation in Jamaica but it has not yet been released to the general public. It is not clear when the Bill is expected to be enacted. Under the Bill the novelty requirements for patent applications will become more stringent insofar as inventions will need to satisfy a requirement of absolute (i.e. world-wide) novelty, with certain limited exceptions.

It is expected that transitional provisions, if any are included in the Bill, will relate only to applications already filed at the time the new Act comes into force.

Accordingly, we recommend that any contemplated applications for revalidation of foreign granted patents (or "communications from abroad" in respect of their subject matter) be put in hand as soon as possible.

We shall be happy to answer any questions which you may have on the documentary requirements for either of the two types of applications. Please see our contact page for contact details.

21st August 2000

Dominican Republic - New IP Law

A new Industrial Property Law dated 8 May 2000 was published and entered into force in the Dominican Republic on 10 May 2000.

This new law has made changes to the requirements for filing Patents and Trade Marks, including the following :-

Patents:- Absolute novelty of an invention is now required - it is no longer possible to put applications for revalidation of foreign granted patents on file in the Dominican Republic. There are no transitional provisions relating to applications for revalidation, i.e. there is no provision for a transitional period during which proprietors of foreign granted patents may apply for revalidation of their patents.

Trade Marks:- The International Classification of Goods and protection of services has been introduced. A multi-class registration system is now provided for; however, this has not been implemented so, for the time being, separate applications will have to be filed in each class. The term of registration has been amended to 10 years.

Document required: Power of Attorney legalised by a Dominican Republic Consul.
Costs: £510.00 for the 1st class
£150.00 additional classes
Costs exclude costs of local translation and local legalisation of documents.

We expect to receive a copy of the new IP law shortly and would be pleased to answer any questions which you may have regarding its provisions. Please see our contact page for contact details.

21st August 2000

15th August 2000

Lebanon - New Law on Patents and Semiconductor Products

On 25 July 2000 the Lebanese Parliament enacted a new Patent Law which will enter into force within weeks. The new law overhauls Lebanon's decades old law on intellectual property protection and brings the law into compliance with TRIPs. Absolute novelty of the invention before the filing or priority date is required of an application. Software, pharmaceutical compositions and micro-organisms are all patentable. Specifications may be in English or French. The term of patents under the new law will be 20 years as from the date of filing, and all patents which are in force on the date of implementation of the new law will benefit from the 20 year duration.

The law also provides for the issue of certificates of registration of semiconductor topographies, having a term of 10 years from the filing date.

We will be pleased to advise clients of the filing requirements under the new Act.

31st July 2000

Malaysia - 1 September 2000 deadline to re-file United Kingdom design applications

Until 1 September 2000 it will be possible, under the recent Malaysia Industrial Designs Act, to re-file United Kingdom design applications which were pending on 1 September 1999 and retain the same priority date. The priority date of the UK application will thus become the priority date of the Malaysian application.

After the above deadline it will not be possible to benefit from the same priority date as that claimed in the corresponding UK application. Nevertheless, the UK application will not in itself bar registration in Malaysia as the test of novelty is confined to disclosure within Malaysia.

We will be happy to advise clients regarding the documentary requirements for registration.

28th July 2000

Singapore - New Registered Designs Bill

A new Registered Designs Bill is expected to be passed towards the end of this year. The Bill provides for a designs system similar to that currently in operation in the United Kingdom and Hong Kong. A registered design in the UK will no longer extend automatically to Singapore. However, UK designs which are registered when the law comes into effect will be deemed to be registered in Singapore, but only for their current 5 year term. To extend protection beyond that period, an extension application will have to be filed in Singapore before the UK due date for renewal. A UK design may be extended in this way up to the full 25-year term enjoyed by the design in the UK.

For new applications to be filed in Singapore under the Bill, once it has been passed, the following provisions are made:

• priority may be claimed within 6 months from a first application in a Convention or WTO country;
• the date of registration will be the date of filing (or priority date if applicable);
• the initial period of registration is 5 years from the date of filing (or priority date if applicable), extensible by two additional periods of 5 years up to a maximum of 15 years.

Further developments will be reported.

28th July 2000

Honduras - New Patent Law

A new IP law entered into force on 28 February 2000 in Honduras. Major changes to the Patent Law include:

• all patents - including pharmaceutical patents - now have a non-extensible 20 year term calculated from the application date (pharmaceutical patents previously had a term of 17 years);
• computer programs per se are not patentable; and
• genetic and biological material created by technical means are patentable.

28th July 2000

Turks & Caicos Islands - Registration of Service Marks

We have just been advised by the Registry in the Turks & Caicos Islands that it is now possible to register Service Marks in that jurisdiction.

Although we have no further details to report in this regard at present, we have asked them to provide us with full details and shall make a further posting as soon as we are able.

... more as it develops ...

17th July 2000

OAPI - Extension of IP rights to Mali, Guinea and Guinea Bissau

On 22 June 2000, the President of the Administrative Council passed a special resolution to extend the deadline for filing extensions of OAPI rights to Mali, Guinea and Guinea Bissau for a further two months from the original deadline of 4 June 2000. Accordingly, it will still be possible to file OAPI extension applications up to 4 August 2000.

17th July 2000

Thailand - Amendment to Trademark Act 1991

The Trademark Act (Issue No. 2) 2000 entered into force on 30 June 2000. The most important aspects of the amendment are as follows:-

• The amendment of the objection to trade marks consisting of juristic (company) names. Under the existing law, an application to register LYSAGHT filed in the name of Lysaght & Co. Limited would attract such an objection, unless represented in a special or particular manner. Under the amended law, only an application to register the company name in full (not represented in a special or particular manner) would attract such an objection.
• Combinations of colours represented in a special or particular manner will be registerable, as will 3-dimensional shapes if deemed distinctive.
• Publication fees are abolished, but applications will be published automatically for opposition purposes after acceptance.
• Priority can now be claimed by applicants from all WTO member countries.
• Previously, cancellation petitions against Registrations on the basis that the petitioner has a better title to the trade mark, i.e. against Registrations obtained in bad faith, had to be filed through the Thai Courts within 5 years of the grant of the Registration concerned. Such actions may now be filed before the Trade Mark Board at the Registry, and there is no 5 year statute of limitations. However, cancellation proceedings before the Board are only available to petitioners with registered trade marks in Thailand.
• The Trade Mark Board of the Registry must now include individuals from the private sector with a specialist knowledge of intellectual property. It is hoped that this will lead to more sensible decisions in the future.

Whilst we take the view that Thailand is in need of a completely new Trade Marks Act, these amendments to the law should nevertheless be welcomed as a step in the right direction.

Please do not hesitate to contact us if you require any further information.

05th July 2000

Brunei Darussalam - Introduction of new Trade Mark and Patent Laws

With effect from 1st June 2000, a new Trade Marks Law came into effect in Brunei, affording protection for the following :

• Multi-class applications
• Service classes

Furthermore, under the new Law, the renewal term will change from 7 & 14 years, to 10 & 10 years.

Also, a new Patents Law is due to come into force in Brunei with effect from 1st September 2000. This new Patents Law will serve to stop people re-registering UK granted patents in Brunei, and will be in most other respects similar to the Singapore Patents Law.

Further details will be posted as and when they occur but, obviously, should you require more information at this stage, please contact us.

9th June 2000

Brunei Darussalam - Trade Mark Order 1999

The New Trade Mark Law of Brunei Darussalam, The Trade Mark Order 1999, will come into force on 1 June 2000.

Major changes to be brought about by the new law include recognition of the TRIPS provisions, the acceptance of applications to cover service classes, and multi-class applications. The terms of the Order are very similar to the Trade Marks Act 1994 in the United Kingdom.

However, the Rules are not yet available, so it remains to be seen when applications will be prosecuted under the terms of the new law. Further information will be posted on this website when available.

16th May 2000

Mozambique - ARIPO and PCT membership

Mozambique has become a member state of ARIPO and with effect from 8 May 2000 may be designated in any ARIPO patent application, including PCT applications entering the ARIPO regional phase (notwithstanding that Mozambique was not a member of ARIPO when the relevant PCT international application was filed).

Furthermore, on 18 February 2000 Mozambique deposited its instrument of accession to the PCT and will become bound by the PCT on 18 May 2000. Consequently, in any PCT international application filed on or after 18 May 2000, Mozambique may be designated and because it will be bound by Chapter II of the PCT, may also be elected.

12th April 2000

Bahrain - Changes to Pending Applications

As of 20 February 2000, the Industrial Property Office no longer accepts amendments on pending Trade Mark and Service Mark applications. This decision does not apply to pending Patent and Design applications, which can still be amended at any time.

24th March 2000

Macao - New Industrial Property Law following upon handing over of Macao to the People's Republic of China

A "one-country, two-systems" arrangement has been implemented in Macao with effect from 20 December 1999, the date on which Portugal handed Macao over to China. The two-systems arrangement has been guaranteed for a period of 50 years. As regards industrial property matters, a new Decree-Law was promulgated on 13 December 1999. The Law reproduces much of the Portuguese Industrial Property Code, but also contains various new provisions required to adapt the law to the new system of government and to modernise it. The new law will take effect upon publication in the Official Bulletin of a decision by the Governor regarding applicable fees for the various acts provided for.

The following are some of the more important aspects of the Decree-Law:

• Rights granted under the previous Portuguese Industrial Property Code will remain valid in Macao but will be subject to the new legal system and the authority of the local government rather than the Industrial Property Office in Lisbon (all Portuguese administrative bodies situated outside Macao have ceased to have any competence in the territory).
• Portuguese may continue to be used as a working language.
• The Paris Convention and TRIPs are recognised as applying in Macao and have greatly influenced the text of the Law.
• Priority rights and remedies for unfair competition are provided for and regulated.
• Judicial appeal of almost all administrative decisions involving the ownership of industrial property rights is provided for.
• The following industrial property rights are regulated: patents, utility patents, Supplementary Protection Certificates for drugs and phytopharmaceutical products, extension of foreign patents, semiconductor topographies, designs, trade marks, names and emblems of establishment, appellations and awards.
• New terms: trade marks (7 years from grant date, renewable indefinitely); names and emblems of establishment (10 years from grant date, renewable indefinitely).

3rd March 2000

Dominica - New Patents Act in force - Registration of UK and EP(UK) patents to be phased out.

A new Patents Act (Act No. 8 of 1999) has recently entered into force in Dominica. The wording of the Act follows modern trends in patent legislation. In terms of the new Act absolute novelty (with certain standard exceptions) will be required of applications. It will be possible to claim priority from national, regional or international patent applications filed in any State party to the Paris Convention or member of the World Trade Organisation. As Dominica is bound by the Patent Co-operation Treaty the Act includes provisions concerning national phase patent applications.

A 12-month transitional period effective from the date of entry into force of the Act is available during which owners of UK or EP(UK) granted patents (or persons who have filed applications for such patents) may file an application for the grant of a patent for the same invention under the provisions of the new Act. The application will be accorded the filing date or priority date accorded to the UK or EP(UK) application or grant.

Please contact our offices if you require further information. We are currently investigating the various documentary requirements for new applications under the Act and will be pleased to answer any questions which you may have in this regard.

17th February 2000

Gulf Co-Operation Council (GCC) - Termination of provisions for filing patents of importation

In terms of Article 15 of the GCC Patent Law it has been possible to file applications for patents of importation based upon corresponding foreign granted patents, notwithstanding that their subject matter has been disclosed to the public. This Article is analogous to Article 27 of the Saudi Arabian Patent Law, under which the Saudi Patent Office has granted many patents of importation.

However, an amendment of the GCC Patent Law to delete Article 15 is currently under consideration and is expected to be implemented during the course of this year. Absolute novelty (with limited exceptions) will thereafter be required of applications. Clients with granted patents wishing to secure corresponding protection in the GCC Member States (Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates) should therefore make arrangements for lodging applications at the GCC Patent Office as soon as possible, as it is unlikely that much notice will be given before the amendment is effected.

16th February 2000

Tonga - Implementation of the Industrial Property Act 1994

The (new) Industrial Property Act 1994 came into force on 1st February 2000. The new law provides for:

Trade Marks

• Multi (international) class applications, covering goods and/or services
• Convention Priority claims
• A local examination procedure
• Opposition procedure
• 10 year term, renewable for like periods

To maintain the validity of trade marks already protected in Tonga under the now repealed (old) law - United Kingdom Trade Mark Registration Act 1939 - they must be "re-registered" within 12 months of the coming into force of the new Act, and they will retain the same filing date/priority date as under the 1939 Act. The deadline for re-registering existing trade mark rights is therefore 1st February 2001.

We are currently in the process of contacting our many clients with existing trade mark rights in Tonga, providing them with a list of the marks and full details for each case.

Patents and Designs

Patents and Designs are now able to be protected in Tonga, and we are analysing the new law at present and will publish news on this site in due course.

Please contact us if you require more details about the new law in Tonga and our charges for conducting work there.

11th February 2000

Jersey - Amendment of Trade Marks Law

A number of amendments have been made to the Jersey Trade Marks Law, the most significant of which is to provide for protection in Jersey of UK rights acquired through the registration of a Community Trade Mark or International Registration.

Although it was originally anticipated that the new law would be in force in Jersey by the end of March 2000, recent correspondence with the Registry has indicated that the date of coming into force of the new law will be nearer the end of the year 2000.

Under the old law, trade mark protection could only be obtained by re-registration in Jersey of a trade mark registered at the United Kingdom Registry. Under the revised law, in addition to this protection, trade mark rights in Jersey will be acquired automatically by virtue of a Community Trade Mark registration or International registration which extends to the UK, without the requirement for entry in the local Registry of such rights.

Although it was originally anticipated that one of the ramifications of this new law would be that Jersey based companies could own CTMs, correspondence with OHIM in Alicante has indicated that this will depend upon the recommendations of the European Commission, which has yet to reach a conclusion on the matter.

We are continuing to monitor this situation, and shall post further developments on our web-site, as and when they occur.

3rd February 2000

Brunei Darussalam - New Trade Marks Law

Brunei Darussalam will shortly be introducing a new Trade Marks Law. Although passed on 30th August 1999, the regulations have not yet been finalised, but we have been assured it will be enacted as a piece of legislation very soon.

Major changes to be brought about by the new law include recognition of the TRIPS provisions, the acceptance of applications to cover service classes, and multi-class applications.

Further developments will be reported.

14th January 2000

Singapore - Amendments to the Patents Law

With effect from 20th December 1999, Singapore amended its Patent Law to allow for slightly longer deadlines for various actions.

We will be happy to advise clients with Patents in Singapore of these new deadlines should they wish to contact us.

14th January 2000

Latvia - Madrid Protocol

The Madrid Protocol entered into force in the Republic of Latvia on 5th January 2000.

6th January 2000

Sierra Leone - Accession to the Madrid Agreement and Madrid Protocol

On 28th September 1999, Sierra Leone acceded to the Madrid Protocol concerning the International Registration of Trade Marks, and therefore the Protocol entered into force with respect to Sierra Leone on 28th December 1999. Sierra Leone had previously adopted the Madrid Agreement.

At present the Sierra Leone Trade Marks Act allows only for the registration of goods in accordance with the pre-1938 U.K. Classification system (Schedule III). However, the enabling legislation is being intensively worked on to bring in changes to include the adoption of the International Classification for both goods and services and it is hoped that this will come into force during the early part of 2000. All our clients will be informed as soon as there is anything further to report.

6th January 2000

Netherlands Antilles - New Trade Marks Law

As anticipated, the introduction of the new law, due to come into force on 1st January 2000, has been further delayed. The Newsroom will be updated as soon as we have definitive information regarding the introduction of the new law, although this is not expected for some time.

2nd December 1999

Uruguay - Revalidation of foreign granted patents not possible after 18 January 2000

A new Patent, Utility Model and Industrial Design Act will be implemented in Uruguay on 18 January 2000 (see entry dated 16 November 1999 below). As from 18 January 2000, it will no longer be possible to file applications for revalidation of foreign granted patents, and absolute novelty will be required of new applications. Clients with foreign granted patents who wish to extend their patent protection to Uruguay must therefore ensure that applications for revalidation are put on file in Uruguay before 18 January 2000.

An application for revalidation must be based on the first granted patent of a family and must be filed within three years of the date of grant of the first granted patent. In order to obtain a filing date a Spanish translation of the specification of the first granted patent is required. A legalised, certified copy of the first granted patent is also required to complete the documentation for the application, but this can follow within three months of the filing date.

We have experience in the filing of applications for revalidation in Uruguay, and should be pleased to assist clients wishing to file such applications. However, we are prepared to give an undertaking that applications will be put on file before the above deadline only if we receive instructions in this regard before 15 December 1999.

30th November 1999

Jordan - Amendments to the current Trade Mark & Patent Laws

Amendments to the Trade Mark and Patent Law have been published in the Official Gazette of Jordan No. 4389 dated 1st November, 1999 and are effective as of 1st December, 1999.

The main changes introduced by the new Laws are:-

Trade Marks

• Service marks in Classes 35 to 42 of the International Classification can now be registered.
• Duration of Registration is 10 years from the registration date, renewable for 10-year periods. (Trade Marks registered or renewed before the effective date shall be renewed for 10 years when their current term expires).
• Protection is now recognised for well-known Trade Marks.
• Trade Marks become vulnerable to cancellation if there has been no use for a period of 3 years.

Patents

• The Patent term has been extended from 16 years to 20 years.
• Annuities wil be payable annually from the 2nd.
• Pharmaceutical products are now registrable.

26th November 1999

Yemen - New IP Regulations

The Ministry of Supply and Trade in Yemen issued decree No. 263 dated 1st October 1999, amending the structure of the classes.

Classes 1, 2, 3, 4, 5, 8, 9, 16, 21, 28, 29, 30, 31 and 32 have been divided into subclasses, the other classes remain unchanged.

The process of dividing the subclasses has resulted in a 50% increase in the filing fees.

19th November 1999

Morocco - Morocco joins the PCT

Morocco became bound by the PCT from 8 October 1999 and can therefore now be designated in PCT international patent applications.

19th November 1999

Tanzania - Tanzania joins the PCT

The United Republic of Tanzania became bound by the PCT from 14 September 1999. This would appear to suggest that patent protection in both Tanganyika and Zanzibar can now be sought by way of a PCT application designating Tanzania, and this is the view held by WIPO. However, clients should be aware that uncertainty exists as to whether Zanzibar is bound by the United Republic of Tanzania Patents Act of 1987. If Zanzibar is not bound by this legislation then no mechanisms exist for entering the PCT national phase in Zanzibar. Clients would be advised not to place reliance exclusively on the possibility of a PCT national phase application for Zanzibar. Where possible an application for re-registration of a granted UK/EP patent in terms of the existing law should be made, until clarity is reached.

Tanzania became bound by the Harare Protocol of ARIPO on 3 August 1999. This means that PCT applications having international filing dates on or after 14 September 1999 may designate Tanzania for an ARIPO patent as well as a national patent. Once again, however, there is uncertainty as to whether an ARIPO patent can be valid and enforceable in Zanzibar in the absence of laws providing for substantive patent applications. Re-registration of a granted UK/EP patent is advisable where possible.

19th November 1999

United States of America - Trademark Law Treaty Implementation Act of 1998 (TLTIA)

The TLTIA came into effect in the U.S. on 30th October 1999. This introduces a number of changes in the regulations governing trade marks. Chief amongst these is the abolition of the requirement for applicants to sign the application form, which will now be accepted from an attorney or agent on filing, although it transpires that applicants will still have to sign the form later to complete filing formalities.

17th November 1999

Uruguay - New Patent, Utility Model and Industrial Design Act.

A new Patent, Utility Model and Industrial Design Act has been promulgated and will be implemented on 18 January 2000. The implementing regulations have not yet been issued but will become available before that date.

The term of patents under the new Act will be 20 years as from the date of application. Provisions relating to patentable and non-patentable subject matter, novelty, etc. recognise Uruguay's commitments under TRIPS and are for the most part in accordance with world-wide trends. Pharmaceutical compositions and chemical products, which have not been patentable under the current law, will be patentable. However, as is the case for current "black box" applications, allowance of applications for inventions filed in these fields under the new law will be delayed until 1 November 2001. Methods of treatment will not be patentable under the new Act.

There are very few changes to the law of utility models and industrial designs. A change has been made to the duration of these forms of protection. Utility models and designs will now be granted for a period of 10 years, instead of five as before, and may be extended for a further five year term.

16th November 1999

Portugal - Powers of Attorney

Please note that powers of attorney are no longer required to file Trade Marks, Patents, Industrial Models or Renewals in Portugal.

16th November 1999

Equatorial Guinea to join OAPI

The application of Equatorial Guinea to join OAPI was accepted by the OAPI Administrative Council at its recent meeting in Niger. Equatorial Guinea will be the 17th territory to join the union.

Equatorial Guinea's membership of OAPI will take effect two months from the date of formal deposit of its instrument of adhesion, which is due to take place shortly.

Equatorial Guinea has no independent intellectual property legislation of its own, but from the effective date of OAPI membership, all applications filed at OAPI will cover Equatorial Guinea, and it will also be possible to apply for the extension of existing OAPI registrations to Equatorial Guinea, within a time limit of 18 months from the effective membership date.

12th November 1999

Thailand - Proposed Amendment to Trademark Act 1991

A draft amendment to the existing trade mark law of Thailand has passed the first reading of the House of Representatives. The main changes addressed by the draft include:-

1. The question of juristic name registration. Presently, the Registrar can refuse registration of trade marks consisting of the name of a juristic person (in other words, a legal entity) such as a name of a company, unless it is presented in a stylised form. The proposed amendment will clarify that only the full name of a company will have to be presented in a stylised form to be registerable as a trade mark.
2. Combinations of colours, shapes or forms of an object will be registerable, provided that they are considered distinctive.
3. The requirement to pay publication fees will be abolished. Applications approved for registration will automatically be published in the Trademark Gazette for opposition purposes.

The amendment will also grant new powers of searching premises and seizing evidence to the competent authorities, which are expected to assist in the fight against counterfeiting.

It is hoped that the amendment will become law by the year 2000. Watch this space for news of further developments.

9th November 1999

Introducing a new member of the Lysaght team

We are very pleased to welcome on board Rory Moore, who joined us on 1st November 1999, and will enable us to enhance and develop the quality and range of services we can offer our patent clients.

Rory recently qualified as a patent attorney in South Africa, and holds a B.Sc. with majors in Chemistry and Applied Chemistry, a B.Sc. (Hons.) degree in Chemistry, and an LLB degree. He trained as a patent attorney at the South African law firm of Adams & Adams, and in 1998 he joined the South African firm of Hahn & Hahn Inc. as an associate. As well as overseeing the prosecution of our patent applications, Rory's reponsibilities at Lysaght & Co. will include the management and development of our patent information systems.

5th November 1999

Uruguay - Patentability of Pharmaceutical Preparations and Chemical Products

Many of our patent clients will be aware that pharmaceutical preparations and compositions are not patentable in Uruguay. Patents filed in Uruguay containing such claims are currently filed as "Black Box" applications under the provisions of TRIPS, and are not being published or examined.

The Patent Law of Uruguay will change in this respect on 1st November 2001 and thereafter, such matter will be patentable. It should be noted however that methods of treatment will not be patentable under the new Law.

29th October 1999

Laos - Assignments of Trade Mark Registrations

The Laotian Trade Mark Office has announced a new requirement for recording Assignments of Trade Mark Registrations. If the Registration concerned has been registered for 5 years or longer, it is necessary to submit a notarised Affidavit of Use or Non-Use, in addition to the notarised power of attorney and Deed of Assignment.

If the trade mark in question has been in use in Laos, evidence of use must be submitted, and this can take the form of a certificate from a Laotian importer or distributor. If the trade mark has not been used, a justifiable circumstance explaining the reason for non-use must be stated on the Affidavit. Such circumstances may include the inability to find an importer or distributor in Laos.

It should be stressed that this requirement only applies in the case of Registrations over 5 years old, and only applies in the case of Assignments.

27th October 1999

DPR of Korea (North) - New Law on Trade Marks

North Korea has adopted a new trade marks law which makes it compulsory for trade marks to be registered, if a trade mark is going to be used.

It is vital that anyone selling in, exporting from, and importing to North Korea registers all trade marks they intend to use in the country. Lysaght & Co. has established reliable contacts in North Korea, and we would be pleased to assist anyone wishing to register trade marks there.

16th September 1999

Netherlands Antilles - New Trade Marks Law

We have just heard that the introduction of the new Trade Marks Law has been delayed until 1st January 2000, when it will "definitely" come into force. However, given that this is the fifth time the introduction has been delayed, we are not optimistic. All further news and developments will be made available as and when it is received.

16th September 1999

Venezuela - Legalisation of Documents

As of 16th March 1999, documents requiring legalisation for filing purposes require legalisation by Apostille, rather than Consular legalisation.

23rd July 1999

Mozambique - New Intellectual Property Law

The new Intellectual Property Law was introduced on 4th July 1999, and the first filings of trade marks were accepted at the Registry on 5th July 1999. A "single-class" system has been adopted, and applications are being accepted with the required notarised power of attorney to follow within three months of the filing date. Convention priority dates can be claimed as can colours. The duration of a trade mark registration is 10 years from the filing date in Mozambique. Mozambique had previously joined the Madrid Agreement and the Madrid Protocol with effect from 7th October 1998.

We welcome applications and enquiries for Mozambique from our clients.

16th July 1999

Malaysia - New Designs Law

We have been advised that a new Designs Law is to come into effect in Malaysia on 1st September 1999.

Designs already registered in the UK before 1st September 1999 will continue to be in force but are subject to the payment of extension fees in Malaysia. However, designs registered in the UK based on applications filed on or after 1st September 1999 will no longer extend to Malaysia.

More detailed information is available on request.

16th July 1999

Netherlands Antilles - New Trade Marks Act

The introduction of the new Trade Mark Act has been further delayed, although we have been informed unofficially that it is due to come into force on 1st October 1999.

The most important feature of the new law to proprietors of existing trade marks in the Netherlands Antilles is that existing Registrations will have to be re-registered within a year of the implementation of the new law. At the moment the official fees, and the procedure for re-registration have yet to be finalised, but as soon as the fees are known we will be advising all our clients with registrations in the Netherlands Antilles accordingly.

However, given that the new law was originally due to come into force on 1st January 1998, and has now been delayed 4 times, we will not be taking any further action until something official is known, as a further delay can be expected. In the meantime, clients with Netherlands Antilles registrations should consider which trade marks in their portfolio are suitable candidates for re-registration.

12th July 1999

Laos - Powers of Attorney

The Laotian Trade Mark Office has recently decreed that general powers of attorney will no longer be accepted for filing applications. All applications must now be accompanied by a notarised power of attorney clearly stating the applicant's name and address, as well as the trade mark and classes to be covered by the application.

24th May 1999

Spain - Protection for certain goods/services.

The Spanish Trade Mark Office has recently altered its practice to accept certain goods and services which could not be protected before. The most significant of these is the protection of retail services in stores which may now be accepted for registration in class 35.

Additionally, specifications which include the terms fittings, accessories and spare parts may now be accepted as long as they relate to other products claimed in the same class. The terms cannot be accepted as a goods specification on its own.

A specification reading franchise services will not be accepted as the term is too imprecise. However, franchise services relating to other services will be accepted.

16th April 1999

Our Charges - Update with effect from 1st April 1999

With effect from 1st April 1999, our charges for filing Trade Marks, Patents & Designs will be revised.

We have already despatched copies of our new scales of fees to all our regular clients, and would be happy to give you a copy if you require one.

Please feel free to fill in one of our forms requesting scales of fees in the event that you have not already received same and would like to do so.

29th March 1999

OAPI - Extension of Patent, Trade Mark & Design Rights to Guinea Bissau

Guinea Bissau joined OAPI with effect from 8th July 1998, and all applications filed at OAPI after that date cover Guinea Bissau.

OAPI also introduced a provision for extending existing OAPI patent, trade mark and design registrations to new territories which join the union, upon payment of an extension fee. We have been awaiting the issue of regulations and forms for processing such applications, and these have now been published.

The regulations provide not only for the extension of existing OAPI registrations to new territories which join the union, but also for the extension of existing rights in those territories which previously had their own registration system, to OAPI. The regulations also apply to Mali and Guinea which joined OAPI on 30th September 1984 and 13th January 1990 respectively.

The deadline for filing applications for extension is 18 months from the date a new territory joins OAPI, but in the case of Mali, Guinea and Guinea Bissau, a term of 18 months from 4th December 1998 has been granted - i.e. applications must be filed before 4th June 2000.

We will be pleased to provide information regarding cost and documents required for filing on request.

16th March 1999

MADAGASCAR - Increase in Official Fees

With effect from 2nd April 1999, the Official Fees for filing Trade Marks, Patents and Designs in Madagascar are set to increase by 200-500%. This is mainly in order to compensate for the devaluation of the Malagasy Franc since OMAPI came into operation in 1994.

19th February 1999

SINGAPORE - New Trade Marks Act 1998

Singapore has amended its Trade Marks Law with effect from the 15th January 1999. The new law is based on the UK Trade Marks Act 1994 and incorporates amendments to ensure compliance with obligations under TRIPS and the Paris Convention.

The main provisions of the new Act are as follows :-

• Trade Marks are defined as visually perceptible signs capable of graphical representation. Signs include shape, colour and aspects of packaging. 3D and shape marks registrable.
• Retails services are registrable.
• Although multi class applications were promised, in effect the system remains virtually unchanged as separate numbers and certificates will be issued for each class.
• Part A & B divisions abolished and registrability criteria lowered.
• Prohibition of false geographical indications for wines and spirits.
• Protection of well-known marks.
• Association and conditions of registration abolished.
• Registered Users are abolished and licenses and sublicenses are effective without recordal at the Registry.
• Special enforcement rights given to exclusive licensees.
• Collective marks introduced.
• Infringement test widened.
• Relief for groundless threats of infringement.
• Border enforcement measures by custom officers.
• Implementation of obligations under the Paris Convention and TRIPS Agreement.
• Registration of securities introduced.

If any further information is required, please do not hesitate to contact us.

3rd February 1999

NETHERLANDS ANTILLES - New Trade Marks Act

A new Trade Marks Act was expected to come into force on 1st January 1999, but its implementation has been postponed. The target date for the introduction of the new law has now been set for 1st July 1999.

Contrary to previous information made available to us, under the terms of the new law all existing registrations will have to be re-registered, and trade mark proprietors will be given one year in which to do this. The new law reduces the renewal term from 20 years to 10, although it is understood that the opportunity will be given to apply for renewal simultaneously with re-registration at a reduced fee, which will allow the existing expiry date to be maintained.

For instance, a trade mark registered in 1998 currently carries a renewal date of 2018. Under the new law the renewal date will be 2008, but if renewal is applied for at the time of re-registration, the renewal date of 2018 will be maintained.

Other provisions of the new law will include :-

• Rights in trade marks will accrue to the first to register, rather than the first to use.
• A broadened definition of trade marks to include signs, tokens, shapes, colours and sounds.
• Registration of Collective Marks.
• A term of 5 years after which registrations may be cancelled for non-use

Details of the re-registration procedure, and the fees involved, have yet to be published, but further information will be given as soon as this is known.

20th January 1999

MOZAMBIQUE - Introduction of a New I.P. Law

An Industrial Property Office has been established, and the new Law is likely to be published and introduced during the first half of 1999.

The Registrar is accepting "provisional" applications on file and whilst these have no legal effect at present, in all likelihood they will be allotted a filing date corresponding to the first working day of the Trade Marks Office.

At present there are no official fees being requested for the filing of provisional trade mark applications, and these will only be called for once the allocation of official filing dates and numbers has commenced. At that stage applicants will have the option of either paying the fee for an application to continue, or alternatively if the application is no longer of interest, then it can be withdrawn.

We welcome instructions from all our clients to file provisional trade mark applications in Mozambique.

20th January 1999

OAPI - Revision of the Bangui Accord

The Bangui Accord has been under review to ensure compliance with obligations of the OAPI member states under GATT TRIPS. The revised law was formally approved by OAPI's Administrative Council in December 1998, and the document now awaits signature by the ministers of the member states. Thereafter, the law requires ratification by the national assemblies of at least 10 of the member states in order to come into force, and it is hoped that this process will have been completed by 1 January 2000.

Lysaght & Co. has been closely involved with the revision of the law, and we are pleased that a number of problems we have encountered over the years have been resolved by the revised law. Inter alia the revised law :-

• eliminates the requirement to prove use on renewal of a trade mark, and working for extension of term for a patent;
• introduces the right to apply for extension of existing OAPI rights to new states that join OAPI, and to extend existing rights in new states to existing OAPI registrations;
• eliminates the 12 month deadline for recordal of changes of ownership;
• eliminates the requirement to obtain approval from the Competent National Authority in respect of licences granted by a foreigner to a national of one of the OAPI member states.

20th January 1999

GULF COOPERATION COUNCIL - GCC

A regional patent filing system for the countries of the middle east came into operation on 3rd October 1998. It is now possible to file a single application to cover the 6 present member states :-

Saudi Arabia, Kuwait, Bahrain, Qatar, Oman and United Arab Emirates

As well as offering a centralised registration procedure, the GCC enables patent proprietors to obtain protection by means of registration in Oman and Qatar which previously had no registration systems of their own.

20th January 1999

TONGA - New Industrial Property Law

A new Industrial Property Law is expected to come into force during 1999, with a commencement date now likely to be 1st July 1999. It had been widely publicised that the new law would be effective from 1st January 1999, but it has been delayed due to local budgetary constraints.

To maintain their validity, existing registrations (which are all based on U.K. granted trade marks) must be re-registered under the new law within a period of 12 months from the law coming into force.

The introduction of a substantive registration system will provide for :-

• Multi (international) class applications, covering goods and/or services
• Convention Priority claims
• A local examination procedure
• Opposition procedure
• 10 year term, renewable for like periods

20th January 1999

Guinea Bissau joins OAPI

Guinea Bissau became a signatory of the Bangui Accord on 8th May 1998, and with effect from 8th July 1998 all patent, trade mark and design applications filed at OAPI cover Guinea Bissau in addition to the existing 14 member states.

Provision has also been made for the extension of existing OAPI patents, trade marks and designs to Guinea Bissau by payment of an extension fee.

In the past, the only way of obtaining protection for a newly joined territory was to file a fresh application at OAPI. This caused complications and considerable expense, particularly in the case of trade marks, where an earlier OAPI registration already existed. We have been making representations to OAPI ever since Mali and Guinea became members, that provisions to extend existing OAPI rights to a newly joined territory should be made.

It would appear that our pleas have finally been heeded, and in respect of trade marks for which an OAPI registration already exists, it will not be necessary to file a fresh application to obtain protection in Guinea Bissau.

If you are interested in extending any OAPI registrations to Guinea Bissau, please let us know, and we will supply you with further details.

1st July 1998

Japan - Abolition of Powers of Attorney

Japanese patent law was amended on 1st April 1998. Powers of attorney are no longer required for filing patents, design or trade mark applications, although they are still needed for filing PCT cases.

11th June 1998

Bosnia &AMP Herzegovina - Trade Marks

The Bosnian Trade Mark Office announced on 28th May 1998 that the deadline for effectingrevalidation applications of former Yugoslavian trade marks has been extended from 30th May1998 to 31st December 1998. All Yugoslavian trade marks that were registered prior to 1stMarch 1992 can be revalidated in Bosnia & Herzegovina. Documents required are: 1) SpecialPower of Attorney, simply signed, and 2) Photocopy of Yugoslavian Certificate ofRegistration (and Certificate of Renewal where appropriate).

29th May 1998

Kenya - Trade Marks

On 26th May 1998, WIPO received the deposit by the Government of the Republic ofKenya of its instrument of accession to the Madrid Agreement and Madrid ProtocolConcerning the International Registration of Trade Marks. The Madrid Agreement and theMadrid Protocol will enter into force with respect to the Republic of Kenya, on 26th June1998.
However, news of the local implementing regulations is still awaited, and until such time asthese are issued and published, extension of International Trade Mark registrations to Kenyawill not be possible.

29th May 1998

Syria - Patents and Trade Marks

New Regulations (No. 2) concerning the filing and registration of Patents and Trade Markswere issued by the Ministry of Supply and Domestic Trade on 26th March 1998. However,their implementation was suspended a few days after their issuance, and therefore thedocumentation required for filing a patent or a trade mark remains as it was before 26th March1998. The modified new regulations are expected to be re-issued within the next few months.

29th May 1998

Cyprus - New Patent Law

This is to advise that Cyprus has now become a Member of PCT and has enacted a new Patent Law both with effect from 1st April 1998.

The new Cyprus Patent Law will provide for the registration of patents which satisfy the criteria of patentability viz novelty, inventiveness and industrial applicability. The new law sets up for the first time an independent system where ore registering elsewhere.

9th April 1998

OAPI (African Union) - Patents, Trade Marks and Designs

The Bangui Accord is under review, and amongst the proposed amendments is the abolition of the proof of use requirements on renewal. It is hoped the revised law will become effective in May 1999

7th April 1998

Hong Kong - Re-registration of EP(UK) or UK Patents

The New Patents Ordinance came into force on 27th June 1997.

For all EP(UK) and UK patents already granted but where no application for registration has been made in Hong Kong prior to 27th June 1997, a Request for Registration and Grant must be filed in Hong Kong within 5 years from the grant date of the EP(UK) or UK patents, or at the latest by 26th June 1998 (Friday), whichever is the earlier.

7th April 1998

Cayman Islands - Trade Marks

Amendments to the Trade Marks Law to enable a registration to be obtained in the Cayman Islands on the basis of a European Community Trade Mark (CTM) registration, have been passed by the Legislative Assembly in early March 1998. However, the amendments do not take effect until they are published in the Gazette, so for the time being Cayman Islands trade marks can only be based on granted U.K. marks.

7th April 1998

Trinidad & Tobago - Patents

With the coming into force of the New Patent Act on 1st December 1997, it is no longer possible to re-register United Kingdom granted patents. Protection is now obtained through the national or PCT route.

7th April 1998

Bophuthatswana, Transkei and Venda - Patents, Trade Marks & Designs


On 1 January 1998 a new South African Law came into force regarding the above territories where in the past independent protection for patents, trade marks and designs could only be obtained by separate registration.
Under the new Law, South African patent, trade mark and design registrations now automatically extend to these territories unless there exists a separate registered and maintained right in one or all of the territories.
The practical implication of this is that it is now no longer necessary to maintain such separately registered rights in any or all of those territories if a corresponding South African right exists.

7th April 1998

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