Lysaght & Co.
Intellectual Property Newsroom
Archived Information
Please note that the developments listed on this page may not be the most up-to-date. For a list of developments in Intellectual Property within the last 6 months, please go to the following page :-
Turks & Caicos - Trade Marks Ordinance 2007
The Turks & Caicos Islands have introduced a new Trade Marks Ordinance, which took effect on 8 October 2007.
The new law abolishes the previous two-tier system of local registrations and re-registration of UK marks. The provisions of the law would appear to be broadly based upon the UK Trade Marks Act 1994, although the owners of national registrations in the UK, as well as owners of CTMs, would appear to be given special treatment under the law. We need to clarify a number of issues with the authorities in Turks & Caicos, but further information will be posted on this website as and when it is received.
7th December 2007
Gambia - Industrial Property Act (1989)
Whilst having recently become aware the that the Industrial Property Act (1989) came in to force in Gambia on 02 April 2007, we have been informed by our local associate that until such time as the implementing Rules and Regulations have been published, provisions contained in the new Act are not able to be followed.
With regard to the filing of trade marks, the new Act introduces the use of the International Classification system and also service marks. However, for the time being the Registrar is only able to accept applications using the old classification system (pre-1938 U.K. Classification - Schedule III). Once the Rules and Regulations have been published in Gambia, the new Act will take full effect, and any applications filed since 02 April 2007 will be re-classified by the Registry to comply with the International Classification system.
It is hoped that publication of the implementing Rules and Regulations may happen fairly soon, but this cannot be guaranteed. Gambia's track record in this area is not good, so we would anticipate a delay of 6-12 months or possibly even longer.
Further information will be posted on this website as and when it becomes available.
5th December 2007
Madagascar - Extension of Term of Patent Protection
As you may be aware, patents are currently granted in Madagascar for a term of 15 years from the filing date (or international filing date for PCT national phase applications), subject to the payment of annuities. Until now, an extension of term for a further 5 years has been available, but only if the national interest so demands and the invention is worked in a serious and satisfactory manner.
The Director General of the Madagascan Patent Office has now advised us, in a recent meeting held with Caroline van Dijk of Lysaght & Co. in Madagascar, that he would be prepared to accept all applications for extension, irrespective of whether or not the patent has been sufficiently worked.
An application for extension of the term of a patent must be filed within the two months preceding the date of expiry of the patent. Please mark your records to this effect, and let us have your further instructions should you wish for us to apply for an extension of the term of any of your cases. Whilst we will endeavour to send reminders at the appropriate times, the responsibility for ensuring that we receive instructions to extend the term of any case remains with the applicant or proprietor of the patent.
3rd December 2007
Gambia - Industrial Property Act (1989)
We have recently become aware that the Industrial Property Act (1989) came in to force in Gambia on 02 April 2007.
This new Act repeals the following I.P. Acts:
The Registration of United Kingdom Patents Act 1925
The United Kingdom Designs (Protection) Act 1936
The Trade Marks Act 1916
The necessary implementing Rules and Regulations have yet to be prepared and published, so while the new law is officially in force, in practice the absence of implementing regulations means that the law is not yet in full force and effect.. All our clients will be contacted by e-mail as soon as we have definite news regarding the implementation of the new law, and a notice will also be published on this web site at that time.
29th November 2007
Montenegro, Serbia and Kosovo - Registration of Intellectual Property Rights
As you may be aware, the former State Union of Serbia and Montenegro (YU) ceased to exist on 3 June 2006 and accordingly, Montenegro became an independent sovereign state on that date. We set out below the developments which have occurred since this dissolution of the former State Union, as well as developments in the related jurisdiction of Kosovo.
MONTENEGRO
Some time ago, the Government of Montenegro adopted a Decree which provided for the establishment of a national Intellectual Property (IP) Office. The Decree came into force on 19 May 2007, and stipulated that the IP Office would start operating within the following 60 days. Nevertheless, the Office is still yet to become functional, and indeed this development is not expected until at least December 2007.
According to the Regulations of the Government of Montenegro, which will be published in the Official Gazette number 61/2007, there will be no need for separate revalidation of national Serbia-Montenegro and/or Serbian Intellectual Property Rights in Montenegro. All national IP rights registered in the Union of Serbia and Montenegro (and in the Republic of Serbia as from 3 June 2006) will be automatically valid in Montenegro if these were registered before the cut-off date, which will be the date of the official inauguration of the Montenegrin Intellectual Property Office. No special revalidation procedure will be required, and the owners of the national Intellectual Property Rights will only be required to maintain their rights in Montenegro once these become due for renewal. Any application for renewal of national Intellectual Property rights filed in Serbia prior to the inauguration of the Montenegrin Intellectual Property Office will be accepted in Montenegro.
However, in respect of any national rights filed in the Union of Serbia and Montenegro (and in the Republic of Serbia as from 3 June 2006) which are not yet registered (i.e. are still in the application stage), a new application will need to be filed in Montenegro, which will retain the original filing/priority date of the application filed in the Union of Serbia and Montenegro (and in the Republic of Serbia as from 3 June 2006). Such rights will continue their examination and registration procedure in Montenegro itself. This applies to all unregistered applications which were filed in the Union of Serbia and Montenegro (before 3 June 2006) and the applications filed in Serbia (between 3 June 2006 and the date of the formal inauguration of the Montenegrin Intellectual Property Office). Applicants must submit proof of the relevant applications, together with all supporting documentation filed with the Serbian Intellectual Property Office, within 6 months from the date of the inauguration of the Intellectual Property Office (whenever that may be).
Particular provisions apply to international trade mark registrations, patents filed under the PCT and EPC procedures, and international design registrations, and we would be pleased to provide further details of these if required.
SERBIA
All national Intellectual Property Rights registered or applied for in Yugoslavia, Serbia and Montenegro and Serbia, continue to be automatically valid in the Republic of Serbia (country code RS) as a successor State.
KOSOVO
Kosovo, although still formally a part of Serbia, has adopted its own Patent Act which entered into force on 21 December 2004. According to this Act, registered IP rights before the Serbia and Montenegro Intellectual Property Office will no longer be valid in the territory of Kosovo once the Kosovo Intellectual Property Office is inaugurated. Therefore, revalidation of Intellectual Property rights registered in Yugoslavia or Serbia and Montenegro will be required in Kosovo, and according to the Patent Act of Kosovo, the deadline for revalidating registered rights from Serbia and Montenegro in Kosovo will be 12 months from the date of inauguration of the Intellectual Property Office there.
We have today been advised that the Kosovo IP office will start functioning on 19 November 2007. From this date, it will be possible to file applications for the revalidation of existing Yugoslavian or Serbia and Montenegrin registrations, and to file new independent applications for trade marks, patents and designs.
The rights eligible for revalidation in Kosovo are all those rights registered in Serbia/Yugoslavia before 19 November 2007. All rights which have been applied for, but not registered, before 19 November 2007 in Serbia must be re-filed in Kosovo in order for the rights to exist there, but such re-applications will maintain the original application dates of the Serbia/Yugoslavia applications.
As mentioned above, the deadline for effecting the revalidation in Kosovo of existing registrations is 12 months starting from 19 November 2007 (i.e. on or before 18 November 2008). In order to revalidate an existing registration in Kosovo, the following documentation is required:
- Proof of valid right in Serbia/Yugoslavia;
- Power of Attorney, simply signed.
All former Serbian/Yugoslav rights which are not revalidated during this period will cease to be valid in Kosovo. As from 19 November 2007, Kosovo exists as a separate IP jurisdiction, and all new applications will be treated independently from those in Serbia.
Should you wish to be advised of the costs involved in revalidating existing registrations or filing new applications in Kosovo, or you require any further information or assistance in safeguarding your rights in these jurisdictions, please do not hesitate to contact us.
We will update this website as soon as we have any further news.
14th November 2007
Iraq - Abolition of the Boycott Declaration Requirement - update
Further to the article posted on this website on 30 July 2007 regarding the apparent cancellation of the requirement for an Israeli Boycott Declaration in respect of trade mark and patent applications, we have now received advice that the Declaration is, in fact, still required by the Patent Office. The Declaration must therefore still be filed in respect of patent (but not trade mark) applications.
7th November 2007
Angola - Accession to PCT and Paris Convention
The Republic of Angola (country code: AO) became the 138th PCT Contracting State on 27 September 2007. The PCT will enter into force for this State on 27 December 2007, and as of that date, Angola may be designated in international applications.
The Republic of Angola also deposited its instrument of accession to the Paris Convention for the Protection of Industrial Property on 27 September 2007, and the Paris Convention will therefore enter into force there on 27 December 2007.
Please note, however, that the law in Angola has not yet been amended to recognize the PCT, and it therefore unlikely that PCT national phase applications will be prosecuted until such time as the relevant laws have been put into place. Furthermore, it is not clear at the present time as to whether such national phase applications will afford any enforceable rights. You may therefore decide that it is preferable, until the law has been amended to provide for PCT applications, to file Convention patent applications in Angola until this situation has been resolved.
We will monitor this situation on a regular basis, and further details will be posted on this website as soon as any developments have occurred.
11th October 2007
Yemen - Recent developments in Intellectual Property Laws
Yemen joined the Paris Convention Agreement in March 2007, and it is therefore now possible to claim priority in respect of trade marks within 6 months, designs within 6 months and patents within 1 year from the filing date of the earliest filed application.
Furthermore, the long-overdue regulations implementing the patent provisions of the Intellectual Property Law of Yemen (Law no. 19 of October 1994) finally came into force on 2 July 2007, and patent applications will therefore now start to be processed by the Yemeni Patent Office. Until now, the Patent Office in Yemen merely accepted the filing of patent applications, which were then held in abeyance pending the issuance of the regulations. The new regulations now provide for the examination and publication of patent applications, the grant of patents, and the payment of annuities.
The main features of the implementing regulations are as follows:
- Patent applications are examined as to form, novelty, and industrial applicability.
- Patent applications are published in the Official Gazette upon acceptance.
- Oppositions may be filed within 6 months from the publication date.
- Patents are granted for a term of 15 years from the filing date.
- Renewal fees are due annually, on each anniversary of the filing date. A 6-month grace period is provided for late payment with a surcharge.
- Absolute novelty is required. However, disclosure of an invention in an official or officially recognized national/international exhibitions shall not be taken into consideration if it occurred within a 6-month grace period preceding the filing date of the patent application.
- Patents of Addition are provided for.
The implementing regulations specify that the following documents are required for filing a patent application in Yemen:
1- Power of Attorney, legalized to the level of the Yemeni Consulate - due 60 days from the filing date;
2- Extract from the commercial register, legalized to the level of the Yemeni Consulate - due within 60 days from the filing date;
3- Deed of Assignment from the inventor(s), legalized to the level of the Yemeni Consulate - due within 60 days from the filing date;
4- Abstract of the invention, in English and Arabic - due within 60 days from the filing date;
5- Specification, in English and Arabic - due within 60 days from the filing date;
6- Certified copy of priority document(s), if priority is claimed - due within 90 days of the filing date.
Please do not hesitate to contact us if you have any further queries in this matter.
9th August 2007
Ghana - Two-Tier System for Trade Mark Renewal Terms
Pursuant to the previous posting regarding this matter, our local advisers have taken up the matter with the Head of the Legislative Drafting Section who has confirmed that the Act was drafted incorrectly, as it was not their intention to create the two-tier system which is now in operation. We understand that the legislation will be amended to reflect a ten year renewal term for all marks, regardless of when they are registered. Further information will be posted on the website in due course.
30th July 2007
Iraq - Abolition of the Boycott Declaration Requirement
We are pleased to advise that the Iraqi authorities have cancelled the previous requirement that an Israeli Boycott Declaration should be submitted in respect of trade mark and patent applications. Whilst the Boycott Declaration was not required at the time of filing an application, the Registry was previously refusing to process applications until such a Declaration had been filed.
It is hoped that the backlog of pending applications may now be progressed to publication.
30th July 2007
Ghana - Two-Tier System for Trade Mark Renewal Terms
The Trade Marks Act 2004 entered into force in Ghana on 29 January 2004.
This modernised the law in a number of respects, introducing the Nice Classification, service marks, and a ten year renewal term, replacing the previous regime of an initial term of seven years and a fourteen year renewal term.
However, we have recently discovered that the new renewal term only applies to trade marks filed on or after 29 January 2004. Registrations obtained before the new law entered into force are still subject to the old regime of seven and fourteen years. We believe that this is due to clumsily phrased transitional provisions in the new Act.
Whilst the new Act repeals the former law and states that trade marks registered under the old law "shall remain in forceand shall be deemed to have been registered under this Act", Section 53(4) of the 2004 Act states that trade marks registered under the old law "shall be due for renewal for a period of fourteen years from the date of expiration of the original registration or of the last renewal of the registration and upon renewal shall be reclassified in accordance with the International Classification". Unfortunately, the Act does not explicitly state that upon renewal, the renewal term under the 2004 Act will apply.
Our local advisers agree that this situation is most unfortunate and that it would not have been the intention of the legislators to create the two-tier system currently applied by the Registry. The matter has been referred to the Registrar-General, the Attorney General and the Head of the Legislative Drafting Team at the Ministry of Justice, and it is hoped that the matter can be resolved soon.
16th July 2007
Vietnam - "Use" claims deemed unpatentable
We have just learnt that the Ministry of Science and Technology in Vietnam has issued a Circular No. 01/2007/TT-BKHCN providing guidelines for implementing the procedure of Establishing Industrial Property Rights. This Circular took effect on 09 May 2007 and supersedes the previous provisions on this matter. One point of particular note is that use claims are not considered to be patentable subject matter. We do not totally agree with this provision, and indeed the Vietnamese Patent Office has not issued any further official decision in respect of any case which includes such use claims.
Further details will be posted on this website as and when they are received.
3rd July 2007
Antigua - New Patents Act
Further to our recent article on this website regarding the introduction of a new patent law in Antigua, we have just learnt that the Registrar has allowed an extension of time for filing patent applications under the old Act, which will expire on 15 July 2007. If you wish to file any patent applications for the registration of granted UK or European (UK) patents, please therefore send us your instructions as soon as possible so that we may ensure that this deadline is met.
4th June 2007
Antigua - New Patents Act
We have been advised that a new Patents Act has recently come into force in Antigua, which repeals the previous Patents Act and Registration of United Kingdom Patents Act, and which introduces a requirement of absolute novelty. Whilst we have received a copy of and reviewed the new law, it is unclear as to whether it is actually deemed to be in force yet, and the implementing regulations have not yet been finalized. Furthermore, the Patent Registry has been refusing to accept new applications until such time as the provisions of the new law and regulations have been clarified. The fees payable and documents required for filing new patent applications in Antigua are also not clear, but we do understand that it will no longer be possible to base applications on UK registrations.
Other provisions of the new law include:-
- Applications may be filed with priority claims;
- Third parties may apply to the court to invalidate a patent, based on the grounds that, inter alia, the invention relates to excluded subject matter, lacks novelty, inventive step and/or industrial applicability, or the description is not sufficiently clear and complete.
- The term of a patent is twenty years counted from the filing date of the application for grant. Annual renewal fees are payable on the first and each subsequent anniversary of the filing date. A six-month grace period is allowed for the payment of renewal fees.
- Provisions for the filing and processing of PCT applications have been introduced.
Further details will be posted on this website as and when they are received.
1st June 2007
Antigua - New Trade Marks Act 2003 and Regulations
The Trade Marks Act 2003 entered into force in Antigua in April 2007.
The new Act abolishes the dual system of local applications, and applications based on existing UK marks. It is no longer possible to base an application in Antigua on a UK registration; however, the new Act adopts the International Classification, and allows for the registration of service marks. Whilst the new law and regulations do not specifically state so, it is believed that the Ninth Edition of the Nice Classification will be operative.
Other provisions of the new law include:-
- Applications may be filed with priority claims;
- Applications will be published for opposition, the opposition term being three months;
- Cancellation of registrations for non-use will be possible, the relevant period being three years;
- The law makes provision for the registration of collective marks;
- Licences maybe recorded for the first time. In order to be valid, the licence must provide for effective quality control of the goods/services by the licensor.
- The term of a registration will be ten years, counted from the application date. A six-month grace period is allowed for the payment of renewal fees.
- The law makes provision for the implementation of the Madrid Protocol in Antigua. However, the corresponding regulations governing the processing of International Registrations have yet to issue.
22nd May 2007
Antigua - New Trade Marks Act and Regulations
We have been advised that a new Trade Marks Act came into force in Antigua on 9 April 2007. Whilst details of the new law have yet to be received, we understand that it will no longer be possible to base applications on UK registrations, but substantive applications will follow the international classification and furthermore, it will be possible to register service marks.
This is the only information we have available at the moment, but further details will be posted on this website as and when they are received.
19th April 2007
Malta - Closing of National Route via PCT
Malta has informed WIPO that it has closed its national route via the PCT. Thus, any international application filed on after Malta's date of accession to the PCT, 1 March 2007, will include the designation of Malta only for a European patent, and not also for a national patent.
11th April 2007
Nigeria - Registration of Service Marks
The Registrar has implemented the provisions of sections 42 and 45 of the Trade Marks Act to incorporate service marks into the classification system used in Nigeria, and the Registry has started to accept applications for service marks with immediate effect.
Contrary to the Registry's previous announcement regarding the service mark classification, it is the Ninth Edition of the Nice Classification which has been adopted.
It should be borne in mind that the sudden introduction of service mark protection is open to challenge, and there is a strong possibility that it will be found to be invalid if challenged in the courts. This is because sections 42 and 45, which empower the Registrar to alter the classification system used in Nigeria, both refer to the classification of goods and do not refer to services. We have been advised that the Registrar's argument that services are "intangible goods" is unlikely to find favour in the courts.
Although the legality of this sudden change in practice is open to question, we recommend that any clients who would be interested in filing their service marks in Nigeria should do so as soon as possible.
3rd April 2007
Syria - New Intellectual Property Law
Law No. 8 of 2007, for Distinctive Marks, Geographical Indications and Industrial Designs and Models, will enter into force on April 12, 2007.
According to the law, a trade mark shall be registered if it is distinctive, and may consist of words, letters, numbers, figures, colours, or other signs that are visually perceptible. The law provides protection for collective, certification and service marks, and recognises internationally well-known trade marks even if they are not registered in Syria. The law introduces opposition proceedings for the first time, where a period of 90 days from the publication date will be given during which any third party can oppose a trade mark application.
The law also brings in developments in the Intellectual Property (IP) field including, improved customs measures, a specialized court to settle IP cases and the regulation of IP agents in Syria.
With respect to the duration of protection, a registered trade mark is valid for 10 years from the date of filing the application, renewable for similar consecutive periods. Non-use of the trade mark for continuous three years without a legitimate reason makes it subject for cancellation by any interested person.
We have been advised that the new law introduces a single class registration system for trade marks which is something of a retrograde step and will cause additional expense for many trade mark proprietors. However, this has yet to be confirmed, as have the fees applicable under the new law. Full details of the new law have yet to be clarified, but further information will be posted on our website as and when it is received.
30th March 2007
Dominican Republic - Accession to the PCT
On 28 February 2007, The Dominican Republic deposited its instrument of accession to the PCT, and on 28 May 2007, will become bound by the PCT. Consequently, any international application filed on or after 28 May 2007 will automatically include the designation of The Dominican Republic, and the application can enter the national phase in The Dominican Republic at 30 months from the earliest priority date.
5th March 2007
Malta - Malta Joins European Patent Convention
On 1 December 2006, Malta deposited its instrument of accession to the European Patent Convention (EPC), and will become bound by that Convention on 1 March 2007. This brings the number of Contracting States of the EPC to 32. Any international application filed on or after 1 March 2007 will therefore include the designation of Malta for a European patent.
12th February 2007
Bahrain - Bahrain Joins PCT
On 18 December 2006, Bahrain deposited its instrument of accession to the PCT, and on 18 March 2007, will become bound by the PCT. Consequently, any international application filed on or after 18 March 2007 will automatically include the designation of Bahrain.
Furthermore, because Bahrain will be bound by Chapter II of the PCT, it will automatically be elected in any demand for international preliminary examination filed in respect of an international application filed on or after 18 March 2007.
12th February 2007
Tonga - Trade Marks Registry destroyed by fire
We have been advised that as a result of civil unrest in Tonga, the Ministry of Commerce, which houses the Trade Marks Registry, has been completely destroyed by fire. All files were lost in the fire, and substantial delays can be expected in respect of all trade marks for the foreseeable future.
The Registry is still operating on a skeleton staff in temporary premises, so new applications, and renewals of existing cases, can be accepted. Reconstituting the Registry's files will take some time, but we can assure all of our clients with existing cases that their files have already been sent to the Registry's temporary offices.
Further information will be posted on this website as and when it is received.
4th January 2007
Burundi - New Trade Marks Law
We have received and reviewed a draft of the new Burundi Trade Marks Law.
Whilst the date of coming into force of this new law has not yet been set, the following points are worth noting at this stage :-- Trade Marks, Service Marks, Collective Marks, Certification Marks and Commercial Names will be registerable under the new law;
- Rights accrue to the first party to use, and a Trade Mark application can be refused registration on the basis prior unregistered use by a third party in Burundi;
- There is provision for the Registrar to allow the concurrent existence of identical marks for identical goods or services on the register;
- Convention priority can be claimed;
- Applications can be based on a Paris Union or WTO home registration;
- Renewal is due 10 years from the filing date in Burundi, and every 10 years thereafter;
- There is a 6 month grace period for attending to the renewal, with a late fine;
- All license agreements must include a provision for the licensor to retain quality control;
- Compulsory licenses can be issued by the Registry.
It is not clear at this stage what effect the new law will have on existing registrations, as there is at present no renewal due for Trade Marks in Burundi.
We shall publish further news as soon as we are able.
22nd December 2006
Mozambique - Increase in Official Fees
New official fees for trade marks, patents and other IP matters in Mozambique were enacted in the Official Gazette on 13 December 2006 and will become effective on 11 February 2007. We hope to be able to release our new scale of fees by mid-January 2007. For those who regularly use Lysaght & Co. for their Mozambique trade mark and patent work, we also draw your attention to the fact that the power of attorney required for filing has just changed. Please contact us to obtain a copy of the new form for your future use.
20th December 2006
Malta - Malta Joins PCT
On 1 December 2006, Malta deposited its instrument of accession to the PCT, and on 1 March 2007, will become bound by the PCT. Consequently, any international application filed on or after 1 March 2007 will automatically include the designation of Malta, and the application can enter the national phase in Malta at 30 months from the earliest priority date.
Also, because Malta will be bound by Chapter II of the PCT, it will automatically be elected in any demand for international preliminary examination filed in respect of an international application filed on or after 1 March 2007.
12th December 2006
Bahrain - New Patent Law
We have just learnt that a new patents law has recently been introduced in Bahrain, although we are yet to establish the main provisions of this new law. Furthermore, since the Implementing Regulations have yet to be issued, it is unclear of the impact that this law will have on the validity of revalidation applications based on published foreign patents. However, we anticipate that the new law may prevent the filing of revalidation patents in Bahrain, and may even invalidate revalidation patents which have already been filed and/or granted there.
We will keep you apprised of any further information that we can ascertain in this matter.
15th September 2006
Guinea - Validity of Renewals filed after 4 December 1998
Guinea joined OAPI on 30 January 1990 and since that date, all new applications filed at OAPI extend automatically to Guinea and it has no longer been possible to file fresh trade mark applications at the Guinea Registry. However, the Guinea Registry has continued to operate for the purpose of maintaining existing Guinea registrations.
On 4 December 1998, the OAPI Extension Regulation came into force which enables the owners of OAPI trade marks to extend their rights to new countries that join OAPI, including (retroactively), Guinea. This Regulation further provides that Trade Mark Offices of new countries joining OAPI are required to transfer all their files to OAPI, and that such rights should thereafter be maintained at OAPI. However, Guinea has not complied with this requirement and has continued to renew its own trade marks.
We have for some time been trying to obtain clarification from OAPI regarding the legality of this situation. During a recent meeting with the OAPI Officials it was indicated that it is up to Guinea to take the appropriate steps to comply with the provisions of the Extension Regulation and that OAPI has no influence over this. Furthermore, in OAPI's opinion, regardless of whether Guinea complies with the Extension Regulation, in terms of the Regulation the validity of renewal certificates issued by the Guinea Registry for renewals due after 4 December 1998, is open to challenge.
The OAPI Officials are investigating what can be done to regularise this situation, but until this problem has been resolved, the enforceability of Guinea renewals effected since 4 December 1998 is uncertain, and we recommend that from now on the OAPI route is used to maintain Guinea trade mark rights.
The options are as follows:
- If there is an existing corresponding OAPI registration filed after 30 January 1990, this automatically covers Guinea, and no further action is required.
- If there is an existing corresponding OAPI registrations filed before 30 January 1990, this can be extended to Guinea, as well as the other territories that joined OAPI (Mali, Equatorial Guinea, and Guinea Bissau) - if appropriate.
- If there is no existing corresponding OAPI registration either:
i) a fresh OAPI application can be filed, which will cover all the OAPI states, including Guinea, from the date of filing.
ii) A currently valid Guinea Registration can be extended to OAPI, maintaining the Guinea prior rights. The cost is 635.00 GBP . Please note, however, that the term of protection granted is the remaining period of the Guinea registration and OAPI renewal fees will be payable on the expiry of the Guinea registration. (Cost 905.00 GBP).
iii) OAPI have verbally indicated that a currently valid Guinea trade mark can be renewed at OAPI when it next falls due, without the requirement to pay an extension fee. (Cost 905.00 GBP).
However in respect of both options ii) and iii) until the necessary amendments have been made to the OAPI Regulations, it is not certain whether OAPI will accept as a valid registration, a Guinea trade mark that has been renewed by the Guinea Registry after 4 December 1998.
5th July 2006
Cape Verde - Trade Mark Protection
According to information recently received, it is now possible to deposit Trade Mark Applications with the Cape Verde Authorities, despite the fact that there is no actual Intellectual Property Law Legislation in place.
We have been advised that the authorities are accepting applications on the basis of the Portuguese Industrial Property Law of 1940. The Decree-Law No. 7/2003 of 7 April 2003 has not yet been approved and implemented but, according to our sources, this is currently underway.
Because of the uncertainty of the current situation, we are somewhat sceptical as to how valid any applications filed under the present arrangement may be, and we would recommend that our clients wait until proper legislation is in place before filing applications. However, we are willing to accept and file any applications at the owner's own risk, if they so wish.
Our charges for filing applications at the present time are as follows:- Trade Mark Application in up to five items of goods or services - GBP 735.00
Each additional group of five items of goods or services - GBP 90.00
The above charges exclude translations and communication disbursements.
A Power of Attorney legalised up to a Cape Verde Embassy is required and MUST be filed with the application. If legalisation cannot be obtained up to a Cape Verde Embassy, legalisation by Apostille will be accepted and further legalisation can be obtained locally at additional cost.
Furthermore, Cape Verde is operating a single-class registration system.
8th June 2006
Guernsey - Trade Marks (Bailiwick of Guernsey) Ordinance 2006
The new Trade Mark law of Guernsey came into force on 1 June 2006.
The Ordinance establishes a two-tier system of registration. For the first time, substantive registrations are possible, known to the authorities as "primary registrations". However, it will also be possible to seek re-registration of a UK trade mark in Guernsey, as under the previous law. Whilst the Regulations have yet to be published, it is understood that it is also possible to apply for the re-registration of a Community Trade Mark as well as an International Registration designating the UK. It is not currently known whether a re-registration application will take the date of the corresponding UK mark, or whether the date of filing in Guernsey will be the effective date of filing. It is hoped that the Regulations will shed some light on this, and these are expected to be published shortly.
The text of the new law mirrors the UK Trade Marks Act 1994 to the extent that it is almost identical to it. It therefore makes provision for Guernsey to join the Paris Convention, the Madrid Protocol, and gives the authorities power to enforce the Community Trade Mark Regulation at some stage in future. Whilst the law enables the Registrar to refuse applications on absolute or relative grounds, it is our understanding that examination on relative grounds will not actually take place. Instead, there is a section on the application forms requiring applicants or their agents to state that " as far as (they) are aware, having made reasonable enquiries, the registration of this mark is not prohibited by Section 5 (relative grounds of refusal for registration)". Thus, searching prior to filing will be vital if an application for a primary registration is filed, and we also recommend to applicants for re-registration of marks, particularly CTMs, search in Guernsey prior to filing. However, the efficiency of the search facility provided by the Registry be remains to be seen.
We can now publish our charges for filing applications and renewals under the new law, and our scale of fees is available for download from this page. The cost of applying for a primary registration is very high considering the size of Guernsey as a market for trade mark owners; the official fees are more than in the UK. However, it is thought that the Primary Registration system will mainly be used by local traders in Guernsey who have no wish to register their marks in the UK and/or at OHIM first.
8th June 2006
Guernsey - Trade Marks (Bailiwick of Guernsey) Ordinance 2006
Despite the fact that the new Trade Marks Law of Guernsey will enter into force on 1 June 2006, the regulations and the transitional provisions have yet to be published by the Guernsey authorities. However, we are in a position to provide the following information.
The new law is substantive and replaces the existing law allowing only re-registration of existing national registrations in the UK. The text of the new law mirrors the UK Trade Marks Act 1994 to the extent that it is almost identical to it. It therefore makes provision for Guernsey to join the Paris Convention, the Madrid Protocol, and gives the authorities power to enforce the Community Trade Mark Regulation at some stage in future.
The new law differentiates between applications for "primary registration", namely an application for a substantive registration, and an application for re-registration of an existing mark, such as a UK Registration. Whilst the Regulations have yet to be published, it is thought that applications may also be based on CTM Registrations, as well as International Registrations covering the UK.
The new law requires applicants to complete a Declaration that the registration of the trade mark is not prohibited by Section 5, which concerns relative grounds for refusal. We consider that this places an unreasonable onus on applicants, as it should be the Registrar's duty to ensure that an application complies with the requirements of the law. We consider that whilst this requirement may cause difficulties for those applying for a "primary registration", those applying to re-register an existing UK registration would probably be more comfortable with making the statement.
The States of Guernsey published the Official Fees at the end of last week. The fee for filing a new substantive application is significantly more than expected, although there is a lower figure for a "re-registration" application (accompanied by evidence of registration in the UK). For this reason, as well as that mentioned above, we recommend that those wishing to register their trade marks in Guernsey continue to base applications on existing registrations, either at OHIM or in the UK.
It is not currently known whether a "re-registration" application will take the date of the corresponding UK mark, or whether the date of filing in Guernsey will be the effective date of filing.
Our charges for filing under the new law are currently being determined and we will publish these as soon as possible.
31st May 2006
Uruguay - Circular
We refer to our article of 13 February 2006.
We have been advised that a procedure has now been established which may allow applicants to expedite the prosecution of their patent applications. Recently, our associate in Uruguay met with the Director of the Uruguayan Patent Office, and it was agreed that the prosecution of applications may be expedited by submitting details of the allowance of any corresponding applications by Patent Offices abroad which relate to the same subject matter of the invention.
Fort this purpose, we would need to file a writ informing the Uruguayan Patent Office of the equivalent patents and indicating that, if necessary, the applicant would be prepared to modify the claims on record so as to conform with those granted abroad.
In any case, the Uruguayan application will be subjected to substantive examination as required by the local legislation, but the results of the examination carried out in other countries will serve to accelerate this procedure.
We would therefore recommend that you send to us the grant details of any patents which have been allowed elsewhere in relation to your inventions, so that we may submit this information to the Patent Office in Uruguay.
Please do not hesitate to contact us if you have any questions.
21st April 2006
Guernsey - The Trade Marks (Bailiwick of Guernsey) Ordinance 2006
We have received word from our contacts in Guernsey that a new law has been passed which is expected to enter into force on 1 June 2006. The new law is substantive and replaces the existing law allowing only re-registration of existing national registrations in the UK. The text of the new law mirrors the UK Trade Marks Act 1994 to the extent that it is almost identical to it. It therefore makes provision for Guernsey to join the Paris Convention, the Madrid Protocol, and gives the authorities power to enforce the Community Trade Mark Regulation at some stage in future. Although we are assured that the new law will be effective as of 1 June 2006 , no regulations, fees or transitional provisions have been published. We will post further information on this website as and when details unfold.
15th March 2006
Kosovo - New Patent Law
- Requirement for inventive step, industrial applicability and absolute novelty
- Provision for claiming priority from applications filed in a member state of the Paris Convention or World Trade Organisation
- Provision for protection of biological material
- Exclusion of patent protection for (inter alia) animal breeds, plant varieties, biological processes for the production of plants or animals, the human body at various stages of development including the sequence or partial sequence of a gene, diagnostic or surgical methods or methods of treatment on the human or animal body
- Automatic acceptance of patentability decisions issued by the EPO or other PCT International Preliminary Examination Authorities for corresponding foreign applications
- 20 year term of protection subject to the payment of annuities for the third and following years from the date of filing
- Transitional provision for revalidation within a period of 12 months in respect of applications pending or patents registered at the Intellectual Property Office of Serbia and Montenegro at the time of coming into force of the Kosovo Patent Law, as well as PCT applications filed at the International Bureau designating Serbia and Montenegro which are pending at the time of coming into force of the Kosovo Patent Law
02nd March 2006
Kosovo - New Intellectual Property Law
With the inevitability that Kosovo will soon become an independent sovereign state, breaking away from Serbia & Montenegro, moves are at an advanced stage for establishing separate Intellectual Property laws for Kosovo.
We have forged good links with a local associate in Kosovo, and have been informed that the Kosovo Intellectual Property Office is due to open on 31 March 2006. However, from past experience in dealing with this region of the world we would suspect that the office is more likely to open during the second half of 2006.
Once the Kosovo I.P. laws have come in to force, and the I.P. Office is open, rights previously registered in Serbia and Montenegro will no longer be valid in Kosovo. However, there will be a 12 month “window of opportunity” for owners to extend Serbia and Montenegro rights to Kosovo.
We strongly recommend obtaining I.P. rights in the Kosovo area and, wherever possible, retaining priority rights gained via Serbia and Montenegro, as the region is a stronghold for counterfeiting activities. Just in the past six months, our local associates have intervened in more than 20 cases of counterfeit products.
If you require more information about extending existing Serbia and Montenegro I.P. rights to Kosovo, or indeed the filing of new trade marks or patents in Kosovo, please let us know.
01st March 2006
Malta - Annuity Payments
Further to our previous website article in this matter, we have now received a copy of the official circular issued by the Maltese Registry, which clarifies that annuities now fall due on the second anniversary of the local filing date and annually thereafter in respect of all patent applications filed on or after 1 January 2005 (not 1 January 2006 as previously advised).
For all applications filed before 1 January 2005, annuities will continue to fall due on the fourth and each subsequent anniversary of the local filing date.
We will endeavour to write to our clients regarding each Maltese patent case individually, when annuities become due for payment.
If you have any questions in this matter, please do not hesitate to contact us.
20th February 2006
Uruguay - Circular
We have recently been informed by our associate in Uruguay that the Uruguayan Patent Office has now initiated examination of patent applications. In order to try and decrease the backlog and thus avoid unnecessary delays in respect of pending applications, an official notice will be issued on each pending application. The official notice will allocate a term of ten (10) days for the Applicant to state continued interest in the application, or whether it is to be abandoned.
However, instead of waiting for the official notice to issue, the Patent Commissioner will accept the filing of a single Writ per Applicant, stating the Applicant’s continued interest to continue prosecution of the cases detailed on a list attached thereto.
This would, to some extent, expedite prosecution, as we would not have to wait for the issue of an official notice in respect of each pending application.
We feel that, at this stage, it would be prudent for all of our clients to undertake an investigation into their pending patent applications in Uruguay and let us know which pending applications are still of interest and which are to lapse.
There is no risk in waiting for the official notice to issue in respect of each pending application, provided we can receive your urgent response thereto when the notice does issue. However, please note that, in the absence of any instructions to the contrary by the deadline set in the official notice, we will respond to the notice to the effect that the captioned application is still of interest.
Please do not hesitate to contact us if anything is unclear or if you have any questions.
13th February 2006
Chile - New Industrial Property Law –Update
Further to our previous articles on this website, in which we reported that that the Chilean Law on Industrial Property was finally enacted on 1 December 2005, we can now confirm that the revalidation of foreign granted patents is no longer possible under the new law, as a requirement of absolute novelty has now been introduced. Other provisions of importance in the new law include the broadening of the definition of patentable subject matter and the extension of the term of a patent from 15 years calculated from the registration date to 20 years calculated from the filing date. Annuities are now payable for consecutive ten-yearly periods, after a patent application has been accepted. These provisions apply only to patent applications filed after the date of introduction into force of the new law (1 December 2005). Please let us know if you have any questions in this regard.
30th January 2006
Malta - Annuity Payments
We have just been advised that the provisions in the Maltese Patent law for the payment of annuities have been amended, with effect from 1 January 2006. The amendments have the result that, for all patent applications filed after 1 January 2006, annuities become payable on the second anniversary of the local filing date and annually thereafter. Previously, annuities only became payable on the fourth and each subsequent anniversary of the local filing date. The Patent Office has not yet issued their circular in this regard, nor have the revised annuity fees been promulgated. We will report to you more fully, especially regarding whether this amendment will affect existing applications for which annuity payments have already commenced, as soon as we have received further clarification of these changes. If you have any questions in this matter, please do not hesitate to contact us.
11th January 2006
Chile - New Industrial Property Law – Update
Further to our previous articles on this website, we can now report that the Chilean Law on Industrial Property was finally enacted on 1 December 2005. The new legislation serves to amend the previous patent and trade mark laws in order to comply with International Treaties such as TRIPS and the Free Trade Agreements signed with the EU and the USA. We are currently seeking further clarification of the provisions of the new legislation, and we will post further articles on our website when we have obtained this clarification.
11th January 2006
Sao Tome and Principe - New Intellectual Property Law – Patents
Following on from our article on this website summarising the new intellectual property law relating to trade marks in the jurisdiction of Sao Tome and Principe, we have managed to obtain some information relating to the patent law.
As with trade marks, the current patent law has been in existence in Sao Tome since 2001, but since then it has not been possible to file patent applications under this law due to the absence of the corresponding implementing regulations. It appears that these regulations have now issued, and we therefore understand that patent applications can now be filed in Sao Tome.
We have yet to receive a copy of the law and regulations, but we can advise that Sao Tome is a member of the Paris Convention for the Protection of Industrial Property, and it is therefore possible to claim priority from one or more prior applications. The official language in Sao Tome is Portuguese, and the specification of the invention (including a title, description, claims, abstract and drawings, if any) must therefore be translated into this language and filed in duplicate. Certain subject matter, including methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body, are excluded from patentability, although products for use in such methods may be protected. Examination is carried out as to form, and substantive examination is also carried out to determine whether the invention meets the criteria of novelty, inventive step and industrial applicability.
The term of a patent in Sao Tome is 20 years from the filing date, subject to the payment of annuities on each anniversary of the filing date. A grace period of six months is provided for the late payment of annuity fees, subject to a surcharge.
The holder of a patent is obliged to exploit the patented invention, and a compulsory licence may be granted if the holder does not fulfil this obligation.
We will publish any further information that we are able to glean in this matter, but please do not hesitate to contact us if you have any specific questions.
03rd October 2005
Chile - New Industrial Property Law – Patents - Update
This article serves to update you on the situation detailed in our earlier article on this website, dated 29 April 2005, concerning the introduction of the long-awaited Industrial Property Law in Chile.
We have just learnt, although this information is yet to be officially confirmed, that the new legislation is likely to be published in the Official Gazette (and will thus come into force) by the middle of October 2005. It is therefore critical that you send us any instructions for the revalidation of foreign patents as soon as possible, to ensure that they can be validly filed before the new law comes into force.
We believe that, whilst the new law will not provide for the filing of new revalidation application, pending revalidation applications will remain valid.
Any further information on this subject will be published promptly.
30th September 2005
Saudi Arabia - Rejection of Patent Applications Based on Foreign Granted Patents filed under the Old Law
The examination of applications has now commenced, but contrary to earlier assurances by the Patent Office that the rights in all applications filed under the old law would be safeguarded, the Patent Office has started to issue notices of rejection of applications based on foreign granted patents on the grounds that the novelty requirements under the new law have not been met.
The problem would appear to be that the new law repeals the old law and there are no saving provisions for applications filed under the old law that do not meet the new registration criteria. Our associates have held numerous meetings with the Saudi Patent Office to try to find a solution, but without success. We have been advised that the only way to change the Patent Office approach would be to obtain a contrary ruling from the Appeal Committee.
Unfortunately, this can only be done on a case-by-case basis by filing a request for full examination and response to Patent Office rejection notice and subsequent appeal if the rejection is sustained. Our associates have advised that there are many other applicants in the same position, but the Committee has not yet issued a decision in this regard and our associates are therefore unable to predict the outcome of the appeal.
29th September 2005
Sao Tome and Principe - New Intellectual Property Law
We have been advised that trade mark applications are now being accepted in Sao Tome & Principe. Since 1975, when independence was gained from Portugal, there has been no effective intellectual property legislation in Sao Tome and Principe, and therefore no provision for registering these rights. However, an informal practice has evolved of publishing Cautionary Notices in local newspapers.
The Industrial Property Act is dated 04 September 2001, but the implementing regulations have only recently been published. We have been unsuccessful in obtaining the actual date of when the law came into force, but we believe this to be in the past 2 – 3 weeks.
We have yet to receive a copy of the law and regulations, but further details will be posted on the website as they become available. At the moment the details we have of the new law are very sketchy. We understand that a power of attorney is not required for the filing of a new application, but the Registrar may call for one at some stage during examination. However, at present, no example form of power of attorney has been issued by the Registry.
The publication and re-publication of cautionary notices in Sao Tome is now not a worthwhile practice, and we would therefore recommend that all those clients who have filed cautionary notices in Sao Tome in the past, apply immediately for the formal registration of their trade mark rights there.
Please do not hesitate to contact us if you require information about the cost of filing applications.
16th May 2005
St Kitts and Nevis - New Patents Act: Revalidation of granted UK/EP(UK) patents no longer possible
This article serves to update you on the situation detailed in our earlier article on this website, concerning the introduction of a new patents law in St Kitts-Nevis.
As advised previously, we have been in detailed discussions with our St Kitts associate to try and find a solution to the serious problems and inconsistencies created by the introduction of the new law, which as you will remember introduced a requirement of absolute novelty, but which did not provide any transitional provisions under which granted UK patents could still validly be registered.
In turn, our associate has taken our complaints and concerns directly to the Attorney General, who has considered our position in detail and discussed the matter with the Registrar herself. I have just been advised of the outcome of those discussions, and it appears that the Attorney General has agreed for the Registrar to use her discretionary powers under Section 58 of the current Act, to allow the continued reregistration of granted UK and EP(UK) patents until such time as St Kitts-Nevis joins the Patent Cooperation Treaty.
Section 58 of the Patents Act reads as follows:
- (1) Where the Registrar is satisfied that the circumstances justify it, he may, upon the written request of any interested person, and upon such terms as he may direct, extend the time for doing any act or taking any proceeding under this Act and Regulations.
- (2) The extension may be granted even though the time for doing the act or taking the proceeding has expired.
The Registrar has agreed to act accordingly, such that pending reregistration applications which have been filed since the implementation of the new law and patents granted under the new law will be considered by the Registrar to be valid. Similarly, the Registrar will continue to accept new reregistration applications which we file at the St Kitts Registry, until such time as the new Implementing Regulations are issued and/or the jurisdiction joins the PCT. In this regard, we have been advised that the necessary instruments for St Kitts’ accession to the PCT are to be prepared in due course, although it is not known how long this will take.
In view of the above developments, our associate has formally applied to the Registrar for an extension of time in respect of the filing of pending and future patent applications. However, we would point out that we do not endorse the Registrar’s view that these patents would be valid, as we do not consider the new patent law to provide any basis for the legitimate filing of patents based on published granted UK patents. Thus, whilst we will of course accept any future instructions that you may have for the filing of such reregistration applications, and forward any such Certificates of Registration to you once they have issued, we regret that we cannot endorse the validity of such patents.
It has yet to be decided whether the Registrar will introduce suitable transitional provisions in the long-awaited Implementing Regulations, or alternatively supplementary legislation, which will retroactively sanction the filing of reregistration applications in St Kitts. If such provisions or legislation are implemented, we admit that we will feel more comfortable about endorsing the validity of the patents in question. Until such time, however, we regret that we cannot consider these patents to be legally binding and authoritative.
Please note that the Regulations for the new Patents Act have still not been issued, and there is therefore still no provision for the payment of annuities. We will keep you apprised of all developments in this regard.
If you have any queries on any of the above points, please do not hesitate to contact us. Finally, please appreciate that, whilst we endeavour to ensure that our information is accurate and current, we cannot be held responsible for any misinformation or inaccuracies.
29th April 2005
Chile - New Industrial Property Law - Patents
The long-awaited Industrial Property Law No.19,996 has finally been approved in Chile and published in the Official Gazette, following a long debate by Congress. The new legislation amends the current law in order to comply with international treaties, especially TRIPS, and with the free trade agreements recently signed with the European Union and the USA.
The new law will not come into effect until its supplemental regulations are drafted and published in the Official Gazette. The current Chilean government has announced that it intends to publish these regulations by mid-2005.
This article only discusses the patent-related provisions of the new law. Should you require further information regarding other forms of intellectual property, please do not hesitate to contact us.
Of particular significance is the fact that the new patent law will no longer allow for the revalidation of granted foreign patents. We would therefore recommend that you send us any instructions for the revalidation of foreign patents as soon as possible, to ensure that they are validly filed before the new law comes into force.
Other provisions of importance in the new law include the broadening of the definition of patentable subject matter; the extension of the term of a patent from 15 years calculated from the registration date to 20 years calculated from the filing date; and the introduction of the requirement to pay annuities on an annual basis. These provisions will apply only to patent applications filed after the introduction into force of the new law.
We will obtain further clarification once the implementing regulations have issued and we have more information regarding the implications of the new law. In the meantime, please do not hesitate to contact us should you require any further details.
29th April 2005
St Kitts and Nevis - New Patents Act: Revalidation of granted UK/EP(UK) patents no longer possible
We have just learnt that a new Patents Act (No. 9 of 2000) came into force in St Kitts and Nevis on 1 June 2002. We regret that we have only just determined this important development, despite many months of queries, research and correspondence with various sources, and we would point out that the introduction of this new law appears to be virtually unknown – indeed, even the UK Patent Office and WIPO are apparently unaware of this significant development. We have ourselves just advised these two organisations of the news and have asked them to update their own websites, which to date still reflect the legislative provisions of the previous patent law in St Kitts.
Although we are yet to receive full and comprehensive advice on the provisions of the new law (in particular, regarding the requirement to pay annuities on old-law patents), we have managed to obtain a copy of the new law and have studied it to ascertain the implications of particular significance. We have ascertained that the Regulations for the new Patents Act have not yet been issued, despite several promises by the St Kitts Registry that they would issue “shortly”. Thus, there are several maters of great importance which cannot be resolved until these Regulations have issued.
Of particular significance is the fact that a requirement of absolute novelty has been introduced by the new law. Thus, the new law does not provide for the filing of applications for the reregistration of foreign granted patents in St Kitts. The new Act does include transitional provisions, which set a period of 12 months from entry into force of the Act during which proprietors of UK or European(UK) patents could apply for the reregistration of their patents in St Kitts, but this transitional period expired on 31 May 2003.
Notwithstanding the expiry of these transitional provisions, we would point out that the St Kitts Registry has still been issuing filing certificates in respect of those patent applications for the reregistration of granted UK patents which we have inadvertently filed in the past two years, but unfortunately it appears that these applications are actually invalid in view of the new Act. However, the apparent acceptance of these applications (which we anticipate will also proceed to grant) illustrates the uncertainty and apparent lack of understanding by the Registry officials in St Kitts.
We have also been advised that, whilst the new Patents Act applies the provisions of, inter alia, the Paris Convention, St Kitts has in fact not yet acceded to this or any other such Convention. Thus, it appears that priority cannot yet be claimed in a patent application, despite the indications to the contrary in the Act.
Our inference from the above discussions is the extremely unsatisfactory conclusion that a patent applicant cannot file an application for the reregistration of a granted UK or EP(UK) patent in St Kitts because of the new requirement for absolute novelty, but similarly cannot file a substantive application claiming priority from an earlier application. Thus, an applicant appears to have very little scope for protecting their patent rights, other than by filing a substantive application without a claim to priority before the invention is published anywhere in the world.
As you will appreciate, these matters are still very much uncertain, and we have immediately written to our associate to try and implement a safety net for applicants. In particular, we have requested that the Regulations, once issued, include a provision which retroactively extends the transitional provisions provided for in the Act under which a reregistration application based on a granted UK or EP(UK) patent could validly be filed. In this way, at least the applicant would be able to continue validly to file such reregistration applications until such time as the Regulations have been introduced, and indeed those reregistration applications which we have filed to date under the new law and which are potentially vulnerable to attack by a third party would be retroactively validated. We hope to be successful in this approach.
We summarise below some other provisions of particular significance in the new Patents Act:
Requirements for patentability An invention must now satisfy the requirements of absolute novelty, inventive step and industrial applicability, and it must not relate to “excluded” subject matter (please see below).
Exclusions from patentability The new Act lists several exclusions from patentability in St Kitts. Of particular note is the exclusion of methods of treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practised on the human or animal body. This exclusion does not extend to products for use in any of these methods.
Requirements for new applications New patent applications must contain a request for grant of a patent and a specification comprising a description of the invention, a claim or claims, any drawings referred to therein, and an abstract. If the applicant is not the inventor or a joint inventor, a written statement justifying his entitlement to the rights to the patent must be filed.
Divisional applications Divisional applications may be filed at any time whilst the parent application is still pending, but must not include any matter which was not disclosed in the initial application as filed.
PCT Patent Applications The new Patents Act gives full effect to the Patent Co-operation Treaty (PCT), although St Kitts is not yet a signatory thereto.
Term of protection and payment of annuities The new Act introduces a term of protection for patents of 20 years from the filing date, subject to the payment of annuities. This term applies equally to patents which were granted under the old Act, again subject to the payment of annuities, although it is not clear whether the term of reregistration patents based on granted UK or EP(UK) patents is now considered to run from the filing date in St Kitts rather than the filing date of the base UK or EP(UK) patent. We are awaiting clarification in this regard.
Annuities are payable annually on the first and each subsequent anniversary of the filing date in St Kitts, although they can be paid within a period of grace of 6 months along with a late fine. In respect of applications based on granted UK/EP(UK) patents which were filed under the old law or during the transitional period of 1 year from the date of commencement of the new Act, we are again seeking clarification as to whether the due date for the payment of annuities is considered to be the anniversary of the UK/EP(UK) filing date rather than the anniversary of the filing date in St Kitts.
Notwithstanding the above requirements of the new law, the absence of the accompanying Regulations means that there is currently no provision for the payment of annuities. We have, however, been assured by our associate that we will be able to validly effect these payments once the new Regulations are issued.
Whilst the above situation is clearly unsatisfactory to all concerned, we regret that the St Kitts authorities do not appear to understand the havoc that they have created. We believe that the action which we are now taking is the best solution at present, but please do not hesitate to contact us should you require any further assistance. We will, of course, advise you as soon as the new Regulations have issued, and at that time we will revisit the issue of annuity payments.
If you have any queries on any of the above points, please do not hesitate to contact us. Finally, please appreciate that, whilst we endeavour to ensure that our information is accurate and current, we cannot be held responsible for any misinformation or inaccuracies.
21st March 2005
OAPI - Restoration of Priority Rights
We are pleased to report that the Restoration Regulation has been revised by the OAPI Administrative Council to recognise that priority rights lost as a result of failing to file priority documents within the time limit provided by the law, can be restored.
In the past, applications for restoration of lost priority rights based on this ground were rejected as inadmissible, but following continuous lobbying on our part and several successful appeals overturning these rejections, OAPI has finally recognised that this is a valid ground for restoration.
09th February 2005
India - Amendments to Patents Act
The Indian Patents Act has recently been amended, with effect from 1 January 2005. A summary of the more significant changes is given below:
- Claims directed to food, drug and chemical products per se are now patentable.
- New and non-obvious uses of known substances are now patentable.
- Computer programmes with technical application or in combination with hardware are now patentable.
- Any International Depository Authority established under the Budapest Treaty is now automatically recognized as an authorized depository authority.
- Pre-grant publication of an application may be stopped if the application is withdrawn within 15 months of the filing date or the priority date, whichever is earlier.
- An applicant is entitled to enjoy equivalent privileges to those of a patentee, as from the date of pre-grant publication of an application, except for the right to sue a third party for infringement (which right will accrue only from the date of grant of a patent). However, this privilege is not afforded to applicants of mail-box applications filed before 1 January 2005.
- Third-party representation by way of opposition to the grant of patent on limited grounds is now only possible at the pre-grant stage of a patent application.
- Post-grant opposition procedure before the Patent office is now available, within one year of the grant of patent, along with a procedure for the revocation of a patent.
- A patent will immediately proceed to grant once an application is found to be in order by the Patent Office. The requirements of making a separate request for grant and the payment of a final grant fee have been abolished.
- The mandatory requirement of registering a document affecting the title or interest in a patent (e.g. an assignment, license etc.) within one year from the date of execution of the document has been abolished. However, it is still a requirement that an agreement affecting the title or interest in a patent must be in writing in order to be considered valid, and also the provision to record the interest of the beneficiary in the Register of patents has been maintained.
- Compulsory licences for making and exporting drugs to countries in which there is insufficient or no manufacturing capacity of the drug will be available, to address public health problems.
- Provisions for the grant of Exclusive Marketing Rights (EMR) have been repealed.
- Any country, group of countries or inter-conventional organization party to the WTO, PCT or Paris Convention is now automatically recognized as a convention country for the purpose of claiming priority.
- The official fees for patent applications have been increased, and a fee is now payable in respect of complete specifications of more than 30 pages in length and for claims in excess of 10.
This summary is not a comprehensive account of the amendments made to the Indian Patents Act, but is intended to summarise some of the more significant changes which have occurred. If you have any questions or require further information, please do not hesitate to contact us.
04th January 2005
Bosnia & Herzegovina - Annuity payments in respect of patent applications
The Bosnian Patent Office has recently changed its policy regarding the payment of patent annuities. From now on, annuity fees will become payable on the filing date of a patent application (i.e. in respect of the first year), and annually thereafter. For PCT national phase applications, the first payment will be due on the international filing date. Previously, annuities were only payable in respect of the third and each subsequent year from the filing date.
We would point out that the Bosnian Patent Office has not issued a written statement to support this change of policy. However, in order to comply with the articles and deadlines for payment stipulated in the new Tariff of Official Fees, we would recommend that all annuities are paid in respect of the first and each subsequent year, for all pending patent applications. Back annuities must also be paid in respect of all pending applications (whether or not they were filed before the introduction of the new provisions).
At present, in view of the large number of pending applications in Bosnia and Herzegovina, the Patent Office is still permitting the payment of any due annuities in response to an official invitation and without any late fine being payable, just before the grant of a patent occurs (i.e. the grant of a patent cannot occur until all due annuities are paid). Nevertheless, we would recommend that any outstanding annuities be paid as soon as possible, in view of the current uncertainties in this matter and the lack of any official policy statement. Similarly, although there is currently no official deadline for the payment of any future annuities, and notwithstanding the Patent Office’s current policy of allowing these annuities to be paid any time before the grant of a patent, we would recommend that these fees are paid annually, on each anniversary of the filing date.
We would be pleased to assist you in attending to the payment of any outstanding annuities. If you require an indication of the costs involved, please do not hesitate to contact Mrs. Sara Lloyd of our Annuities Department for further information.
09th December 2004
Ghana - New Trade Marks Act
The new Ghana Trade Marks Act (Act No. 664 of 2004), entered into force on 29 January 2004. The Act introduced a number of fundamental changes, but implementing regulations have yet to be published. The Registry is continuing to operate as far as possible using The Trade Mark Regulations L.I. 667 of 1970 (from the previous Trade Marks Act), but this has led to some confusion.
The major changes are summarised as follows:
Introduction of protection for service marks, became effective on 01 December 2004 as per a Notice from the Registrar General. The 8th Edition of the Nice Classification will be followed
The new Act makes provision for the claiming of Paris Convention priority rights.
Both the initial terms of protection and the subsequent renewal terms have changed from 7 and 14 years respectively to consecutive periods of 10 years. We are unsure at present whether, in the absence of the implementing regulations, whether the new term has been introduced
The new Act has dispensed with the terminology “registered user” and instead speaks simply of licenses. However a license is not enforceable vis a vis third parties unless it has been recorded at the Trade Marks Office.
A trade mark which is well-known in Ghana, may not be registered by any other person except the rightful owner of that well-known trade mark.
07th December 2004
Morocco - NEW INDUSTRIAL PROPERTY LAW effective 18 DECEMBER 2004
We write to report that following the publication of the Implementing Regulations, the new Moroccan Industrial Property Law comes into force on 18 December 2004. The principal changes to note are as follows:-
General
The existing laws of Morocco and Tangier have been repealed and the new law covers the whole territory of Morocco, including the Tangier Zone.
All patent, trade mark and design applications/registrations filed in Morocco or the Tangier Zone before 18 December 2004 automatically extend to the whole territory of Morocco, with effect from 18 December 2004.
Introduction of provisions for the protection of Layout Designs.
Introduction of provisions for the protection of Plant Varieties.
Introduction of a non-extendible deadline of 3 months from the date of filing to complete all filing formalities.
Increase in official fees.
Patents
Provision for the protection of pharmaceutical compositions, products and remedies including processes and apparatus to obtain them. Methods of treatment of the human or animal body, however, are excluded from protection.
Introduction of compulsory licences for non-working within four years from the date of filing or three years from grant (whichever is later), and Government Licences in respect of medicines, or products/processes for obtaining or manufacturing medicines, if such medicines are not made available to the public in sufficient quantity or quality, or are sold at inflated prices. Failure to work a patent is no longer a ground for revocation of patent rights.
Introduction of block annuity payments - annuities are payable every five years in advance, instead of annually.
The first annuity fee is included in the filing fee, the 2nd - 5th annuities are payable on the 1st anniversary of the filing date and the 6th - 10th annuities are payable on the 5th anniversary of the filing date and so on.
In respect of applications and registrations filed prior to 18 December 2004, the remaining annuities due for the current five year block will be payable on the next due date after 18 December 2004.
Designs
Term of protection reduced from 25 to 5 years, renewable for two consecutive five year periods.
Trade Marks
Term of protection reduced from 20 to 10 years, renewable every 10 years from the date of filing, or last renewal date. Applications for registration or renewal filed under the old law will remain in force for a 20 year term.
It is possible to apply for early renewal under the old law, of trade marks due between 18 December 2004 and 17 June 2005 to take advantage of the 20 year term of protection.
Introduction of 6 month period of grace for the payment of renewal fees.
Introduction of severe civil and penal sanctions for counterfeiting and infringement of registered rights.
If we can be of further assistance, please let us know.
05th November 2004
Saudi Arabia - New Ordinance on Patents, Designs and Plant Varieties
A new ordinance on patents, industrial designs, plant varieties and layout designs came into force in Saudi Arabia on 6 September 2004. The new ordinance repeals the previous patent law, and also introduces for the first time the provision for legal protection of industrial designs, plant varieties and layout designs of integrated circuits. The law is a result of the negotiations arising during the accession of the Kingdom of Saudi Arabia to the World Trade Organisation, as well as the ratification of the Paris and Berne Conventions.
A summary of the main provisions of the new ordinance are provided below:
A requirement of absolute novelty has been introduced in the patent law. It is therefore no longer possible to file an application for the revalidation of a corresponding foreign granted patent.
Convention priority can now be claimed within 12 months for patents and plant varieties and 6 months for industrial designs.
The term of protection of a patent is 20 years from the filing date for patents and plant varieties (except for trees and vineyards, which benefit from 25 years of protection) and 10 years for industrial designs. Layout designs of integrated circuits are afforded 10 years of protection from the filing date or from the date of commercial use, without exceeding 15 years from the date on which the design was created.
Compulsory licensing is provided for.
Annuities are now due annually in respect of patents, designs, plant varieties and integrated circuits. Anuities must be paid within three months of the first day of January of each year following the filing date of the application (previously, annuities were only payable after the grant of a patent). A further three months’ grace period is available, subject to the payment of a surcharge.
Infringement actions and appeals of Patent Office actions may be filed before the competent committee, and the decisions of this committee may in turn be appealed at the Board of Grievance within sixty days.
Please note that the Implementing Regulations in respect of this law have not yet been issued, and there are therefore many uncertainties and queries regarding the applicability of the new provisions to cases which were filed and/or granted under the previous law. We will keep you apprised of any further information that we can glean in this regard, as soon as we are able to do so.
Please do not hesitate to contact us should you require any further information.
02nd November 2004
Laos - New Patent and Design Legislation
New legislation has been introduced in Laos, with effect from 1 September 2004, which provides for the official filing of applications for patents, petty patents and industrial designs. A brief summary of these provisions is given below:
Patents
- Patents may be granted in Laos with respect to both products and processes.
- Inventions must satisfy the criteria of novelty, inventive step and industrial applicability.
- Priority may be claimed under the Paris Convention.
- The application must be filed in the Lao language.
- Grant of a patent is anticipated to occur around 50 months after the filing date. The Laos Patent Office will rely on the results of examination of corresponding foreign applications issued by foreign Patent Offices. The applicant should therefore provide (i) a certified copy of the results of search or examination carried out with respect to the foreign application in respect of the same invention by the relevant Foreign Patent Office; (ii) a copy of the patent granted on the basis of the foreign application in respect of the same invention or (iii) a copy of a final decision made by a Court or relevant Organization on refusal of grant of a patent for the same invention filed abroad.
- Patents will be granted for 20 years from the filing date, subject to the payment of annuities.
- The documentary requirements for filing a patent application are as follows:
- Three copies of description, claims, abstract and formal drawings (if any), in English language, for translation;
- Notarized Power of Attorney from applicant;
- Certified copy of priority document(s) and English translation thereof (if not in English);
- Three copies of a search report issued by any examining body of a foreign country or by any International Searching Authority in respect of the invention;
- International Classification code in respect of the invention.
Petty Patents
- Petty patents may be granted in Laos with respect to devices (machines, electrical or electronic devices, tools, etc.).
- Priority may be claimed under the Paris Convention.
- The application must be filed in the Lao language.
- Grant of a petty patent is anticipated to occur around 12 months after the filing date.
- Petty patents will be granted for 7 years from the filing date, subject to the payment of annuities.
- The documentary requirements for filing a petty patent application are as follows:
- Three copies of description, claims, abstract and formal drawings (if any), in English language;
- Notarized Power of Attorney from applicant;
- Certified copy of priority document(s) and English translation thereof (if not in English);
- Three copies of a search report issued by any examining body of a foreign country or by any International Searching Authority in respect of the invention;
- International Classification code in respect of the device.
Industrial Designs
- Industrial design applications may be filed on the basis of either two dimensional drawings or photographs, or on three-dimensional forms of the design.
- Priority may be claimed under the Paris Convention.
- Registration of an industrial design is anticipated to occur around 6 months after the filing date.
- Only granted designs will be the subject of publication, and this publication may be deferred during the first 12 months after the date of filing or priority claimed.
- Industrial designs will be registered for an initial period of 5 years from the filing date, which term will be renewable for a further two consecutive periods of 5 years upon the payment of renewal fees. Annuities will apparently also be payable during the lifetime of the registration.
- The documentary requirements for filing an application for an industrial design are as follows:
- Four sets of drawings or photographs of the design, comprising perspective, top, bottom, front, back, right side and left side views.
- Description of drawings or photographs, in English language;
- Notarized Power of Attorney from applicant;
- Certified copy of priority document(s) and English translation thereof (if not in English);
- International Classification code under the Locarno agreement
If you have any questions on any of the above matters, please do not hesitate to contact us.
23rd September 2004
Singapore - Patents (Amendment) Rules 2004
The Singapore Patent Law has been amended with effect from 1 July 2004, with the aim of providing a more balanced and efficient system for patent applicants. Changes of particular significance are summarised below.
- The introduction of new two-track system for examination of patent applications, and changes to the prescribed deadlines;
- Removal of the requirement to furnish a copy of the priority document(s), unless specifically requested by Registrar;
- Prompt publication of patent applications after 18 months from earliest priority date;
- The introduction of more stringent conditions for grant of a patent;
- The possibility of Patent Term Extension;
- The possibility of post-grant search and examination;
- Changes to the enforceability of patent rights;
- Amendments to the grounds on which a patent can be revoked;
- An increase in certain of the official fees, and the introduction of further official fees.
For more details, please click on the following link :-
Singapore Patents (Amendment) Rules 2004 (DEAD LINK - please contact admin@lysaght.co.uk)
12th July 2004
Singapore - Singapore Trade Marks (Amendment) Act 2004
Singapore has made a number of amendments to its trade marks law. The new Act will come into effect on 1 July 2004, and its main provisions are as follows:-
- The new law provides a Statutory definition of ?dilution? and expands the definitions of relative grounds to incorporate dilution as grounds for refusal of an application.
- The term ?visually perceptible? has been deleted from the definition of trade mark, to allow registrations of sounds, smells, etc.
- Well-known trade marks are clearly defined and protected by the amended law.
- The Act provides a clear definition of ?counterfeit goods? & ?counterfeit trade mark?.
- Under the new law it is only possible to claim priority from the first filed case in a Convention country, rather than any earlier application filed less than 6 months before the date of application in Singapore
- The term of a registration runs from application date, regardless of whether priority is claimed
- A 6 month grace period for renewal has been introduced, during which period a late fine is applicable
- restoration possible within 6 months of removal
- It is not necessary to record a licence for the terms of the licence to be effective against third parties
Please do not hesitate to contact us if you require any further information concerning the new law.
29th June 2004
Pakistan - Registration of Service Marks
The Trade Marks Ordinance 2001, and the Trade Mark Rules 2004, entered into force in Pakistan on 19 April 2004. Chief among the changes introduced by the new law are the introduction of service marks, and the fact that priority claims are now possible.
27th April 2004
Hong Kong
We are pleased to advise that the official fees in respect of patent and industrial design matters in Hong Kong will be substantially reduced with effect from 7 May 2004.
Applicants can take advantage of these fee reductions immediately, since a patent or design application can be filed without the simultaneous payment of the filing and advertisement fees, and these fees can then be paid within one month of the filing date of the application. In this way, an applicant can delay the payment of the filing and advertisement fees until on or after 7 May 2004, after which date the reduced fees will be applicable.
Renewal fees in respect of patents and designs which are paid on or after 7 May 2004 will also be at a reduced rate.
Please let us know if you have any questions in this matter.
22nd April 2004
Community Trade Marks - Entitlement of Channel Islands Companies to own Community Trade Marks
The Regulations governing Community Trade Marks have been amended as of 19 February 2004. A principal effect of the amended regulations is that any company or individual may now apply for, and own, Community Trade Marks. The relevant provision (Article 5) now reads as follows:-
?Any natural or legal person, including authorities established under public law, may be the proprietor of a Community Trade Mark?.
Previously, entitlement to apply to register CTMs was restricted to nationals of, and companies domiciled in, member States of the Paris Convention, which excluded applicants from Jersey and Guernsey, as well as various Caribbean jurisdictions. This was a source of much frustration for our local clients, many of whom have business interests in Europe due to our close proximity to France. We are delighted that the Community Trade Mark Office have repealed this provision after many years of lobbying from ourselves.
31st March 2004
Madagascar - First Trade Mark Renewals
It has been possible to file trade marks in Madagascar since 10 August 1994 and many registrations will soon be reaching the end of their first ten year term. During this time we have maintained close links with the Madagascar Intellectual Property Office through our exclusive relationship with an authorised Madagascar agent, and we shall be pleased to assist you with the renewal of your trade marks. For more information, please contact us by e-mail at: admin@lysaght.co.uk
17th March 2004
Zanzibar - Adoption of the International Classification system for Trade Marks
With immediate effect, Zanzibar has adopted the Trade Mark International Classification system (8th Edition of Nice Classification) for goods and services.
Up until now, trade marks in Zanzibar have been classified according to Schedule III - the Pre-1938 U.K. Classification system, and only the registration of goods was possible.
Should you, or your clients, wish to register service marks in Zanzibar, please let us know and we will send you details of the documents required and our charges.
We are attempting to establish the exact date of the coming into force of the new rules that allow International Classification of trade marks in Zanzibar, and also how the authorities wish to treat the re-classification of existing registrations. We believe that a separate application will still be required for each class of goods/services.
For more information, please contact Steve Le Feuvre: steve@lysaght.co.uk
08th March 2004
Bahrain - New Patent Law
We have just learnt that a new patents law has recently been introduced in Bahrain, although we are yet to establish the main provisions of this new law. Furthermore, since the Implementing Regulations have yet to be issued, it is unclear of the impact that this law will have on the validity of revalidation applications based on published foreign patents. However, we anticipate that the new law may prevent the filing of revalidation patents in Bahrain, and may even invalidate revalidation patents which have already been filed and/or granted there.
We will keep you apprised of any further information that we can ascertain in this matter.
08th March 2004
Nauru - Registrar of Patents
We are pleased to advise that a Registrar of Patents has now been appointed in Nauru, and Certificates of Registration are finally being issued. We understand that registration fees are now being accepted on pending cases, and we hope that we will begin to receive the long-awaited Certificates of Registration in the near future.
Please let us know if you have any questions in this matter.
08th March 2004
OAPI - Amendment of Regulation for Extension of existing rights to new territories
On 18 December 2003, the OAPI Administrative Council passed a resolution to amend the regulation concerning the extension of rights in respect of new OAPI member states.
An OAPI registration covers those territories that were members of OAPI at the time of filing the application for registration. The Extension Regulation of 4 December 1998 introduced procedures for the extension of an existing OAPI registration to states not originally covered by that registration, or to extend existing registered rights in a new OAPI member state, to the other OAPI states. There was a non-extendible deadline of 18 months in which to apply for the extension of rights.
Under the revised regulation, extension of rights may now be requested at any time during the life of the existing registration, subject to the payment of a late fine if the extension application is filed more than 20 months after the date of the new member state joining OAPI. Accordingly, it will now be possible to apply for extension of rights for which previous deadlines were missed.
Current OAPI members are:- Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Equatorial Guinea (23 Nov 2000), Gabon, Guinea (30 Jan 90), Guinea Bissau, (8 Jul 98), Ivory Coast, Mali (30 Sep 84), Mauritania, Niger, Senegal, Togo. (Dates of adhesion of new member states are indicated in brackets).
04th February 2004
Saudi Arabia - Revalidation of foreign granted patents
We previously warned that the revalidation of foreign granted patents in Saudi Arabia could shortly become unallowable by virtue of an expected change to the laws there.
We can now report that this anticipated development has indeed occurred. On 25 January 2004, the Saudi Arabian Patent Office made an announcement that, with immediate effect, it is no longer possible to revalidate foreign granted patents in Saudi Arabia. This important development has occurred in preparation for Saudi Arabia?s accession to the Paris Convention, which comes into effect from 11 March 2004. It appears that the Patent Office wished to prevent a huge influx of last-minute revalidation applications in the run-up to the date of accession to the Paris Convention, and so is refusing to accept any further such applications forthwith.
As a consequence of this decision, non-Convention patent applications may now only be validly filed in Saudi Arabia if the invention has not been disclosed anywhere in the world prior to the filing date. However, Saudi Arabia?s accession to the Paris Convention means that, from 11 March 2004, applicants will also be able to file Convention applications (within 12 months from the earliest claimed priority date).
With respect to existing revalidation applications and registrations, the Saudi Patent Office has assured us that these will not be jeopardised by the new changes to the law. Thus, it appears that any existing revalidation cases, whether pending or granted, will be unaffected by these changes.
Please do not hesitate to contact us should you require any further information.
02nd February 2004
Cyprus - Patents - Validity of registrations based on European(UK) patents
This article will be of particular interest to our clients with patents or patent applications in Cyprus based on EP(UK) patents.
You may be aware that the registration in Cyprus of European patents designating the UK (hereinafter referred to as ?EP(UK) reregistration) has recently been the subject of a Supreme Court decision in Cyprus. The Court decision related to a particular EP(UK) reregistration which had been granted in Cyprus prior to the enactment of the current Cypriot Patents Law 16(1)/1998). A third party had filed an administrative recourse seeking the revocation of the patent on the grounds that it contravened the provisions of the old Patents Act Cap. 266. The Court decision held that the patent in question was invalid in Cyprus because Cap. 266 provided only for the reregistration of UK national patents, the substantive examination of which is carried out by the UK Patent Office, and did not extend to EP(UK) patents (the substantive examination of which is carried out by the EPO).
In spite of this prejudicial decision, we wish to assure you that it does not render invalid all Cypriot EP(UK) reregistration patents granted before 1997. An Administrative Recourse decision affects only the administrative decision against which the recourse was filed (i.e. in this case, the Registrar?s decision to accept the reregistration of the specific EP(UK) patent in question). Thus, all other EP(UK) reregistration patents which were granted in Cyprus under the old law continue to be valid. The only way of attacking the validity of these patents is by filing a specific Administrative Recourse against each such registration, and this must be done within 75 days from the date of publication of the relevant administrative decision. In the case of grant of a patent, which is an administrative decision issued by the Registrar of Patents, the 75 day time limit usually commences from the date of advertisement of the patent in the Official Gazette of the Republic. Thus, in most cases, this deadline has already lapsed. The only exception would be in the case of a patent for which the Court considers the advertisement in the Official Gazette to be unclear as to the precise subject matter of the patent in question. In such a case, the crucial date for the purpose of calculating the 75 day time limit would be the date on which the complainant took notice of the granted patent.
Should you have any questions in this regard, please do not hesitate to contact us.
09th January 2004
Argentina - Patents - New Rule P-225 for payment of annuities
You may be aware that a new law (Patent Act 24481) came into force in 1995, which established a term of protection of 20 years from the application date of a patent and which required annuities to be paid at the end of the month in which each anniversary of the application date fell. Under the previous law (Patent Act 111), a term of 15 years from the grant date of a patent was provided for, and annuities were payable on each anniversary of the grant date.
On 19 November 2003, the Argentine Patent Office issued a resolution, Rule P-225, in an attempt to normalise the payment dates of annuities in this hybrid system. According to the new resolution, which will come into force on 12 April 2004 and which will supersede all previous annuity payment regimes, annuities will become payable on each anniversary of the filing date of the patent application, beginning on the first anniversary that falls after the issuance of the notification of grant of the patent. Annuities may be paid late, within a six month grace period, but a surcharge will then also become due.
With regard to patent applications which were granted under the old law (Patent Act 111), annuities will, to date, have been paid on each anniversary of the date of notification of grant. From now on, in view of Rule P-225, annuities will fall due on each anniversary of the application date.
With regard to patent applications which were/are granted under the new law (Patent Act 24481), annuities will similarly fall due, in advance, on each anniversary of the application date. The first payment must be made on the first anniversary of the application date which occurs after the grant of the patent, and it must include payment of the annuities in respect of the third and each subsequent year until the year in which grant occurs. Since annuities must be paid in advance, this first payment must therefore also include that for the next anniversary of the application date. Subsequent annuities will then be payable, in advance, on each anniversary of the application date.
Since no transitional provisions have been included in Rule P-225, we are of the opinion that annuity payments should be made in accordance with the provisions of this Rule with immediate effect, rather than as of 12 April 2004. Accordingly, please ensure that annuities are paid in advance, on each anniversary of the application date, from now on.
We would be happy to assist you in the payment of any annuities in this regard, should you wish. Please let us know if we may be of any further assistance.
08th December 2003
Egypt - Increase in Official Fees for Patent Matters
In August 2003, the Egyptian Patent Office significantly increased its official fees. For instance, the fee for filing a patent application has increased more than fourteen-fold, whilst the fee for the 20th year annuity has increased nearly seven-fold.
Please rest assured that these increases will not be reflected in our own professional charges, nor those of our Egyptian associate, and we are therefore pleased to advise you that we are maintaining our competitive prices.
Should you have any queries in this regard, please do not hesitate to contact us.
24th September 2003
Kenya - Trade Marks (Amendment) Act 2002
It has always been our understanding that the Trade Marks (Amendment) Act 2002 would only be brought into effect after the Implementing Regulations had been published. However, as the Regulations will have a retrospective effect when they are published, the Trade Marks Registry has taken it upon themselves to issue certificates of registration and renewal indicating the term under the new law.
However, further confusion has arisen, because of the manner in which the Registry is applying the terms of the new law. The Trade Marks (Amendment) Act 2002 is dated 23 August 2002, and when the Implementing Regulations have been published, its terms will have effect as of that date. We consider that this should mean that applications filed before 23 August 2002 were filed under the terms of the old law, and should carry an initial term of 7 years. Similarly, registrations with a renewal date before 23 August 2002 should be renewed for a period of 14 years. Any applications filed on or after 23 August 2002 should carry an initial term of 10 years, and any registrations due for renewal on or after 23 August 2002 should be renewed for 10 years.
However, the Kenyan Trade Marks Registry has stated that ?all marks whose date of renewal was due on or before 23 August 2002 and whose application for renewal had been received at the Registry by then should be renewed for 14 years while all the rest should be renewed for 10 years" and that "all marks that have been advertised on or before 23 August 2002 should be registered for an initial period of 7 years while all the rest should be registered for an initial period of 10 years.? We cannot accept that this interpretation is correct, and we are taking issue with the Registry on the matter.
Developments will be posted on the website as and when they occur.
22nd September 2003
India - Implementation of New Trade Marks Act
We have just been advised that the Indian Trade Marks Act 1999 entered into force on 15 September 2003. The main changes to the law are as follows.
- 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
At the moment, we do not have a copy of the implementing rules, or of the official fees under the new law. Further information will be posted on the website as and when it is received.
16th September 2003
Malaysia - New Patent Term
There has been a recent revision to the law relating to the term of patents in Malaysia, which took effect from 14 August 2003.
Before this revision, patents were granted for a term of 15 years from the grant date, whereas now, patents will be granted for a term of 20 years from the filing date.
In respect of patents which have been filed since 14 August 2003, the new term of 20 years from the filing date will therefore apply. With respect to patents filed before 14 August 2003, the term will be 15 years from the date of grant OR 20 years from the date of filing, whichever expires later.
10th September 2003
Taiwan - New Trade Mark Law
Taiwan is to introduce a new Trade Mark Law which is due to enter into force on 28 November 2003. The new Law has been introduced as a consequence of Taiwan?s membership of the World Trade Organisation since 1 January 2002 and incorporates many provisions of TRIPS. Among the major changes will be:
Broader definition of a trade mark, to incorporate sounds & 3-dimensional trade marks
Protection for famous marks. Registration of trade marks which would dilute the distinctiveness or reputation of a famous mark is not allowed, even for dissimilar goods or services
Multi-class appli |
