NEWS JANUARY 2017 - DECEMBER 2017
GUATEMALA
December 04, 2017
On July 2017, the Foreign Ministry published the ratification of the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled.
SINGAPORE
December 04, 2017
On 30 October 2017, the Intellectual Property Office of Singapore (IPOS) published its revised Examination Guidelines.
SOUTH KOREA
December 04, 2017
As of September 22nd, Korean Design Protection Act has been amended. Out of the several changes, we believe the following two are of most import:
ARGENTINA
December 04, 2017
On November 1st, the Argentine Agroindustry agency issued a resolution in its official Gazette, detailing the institution and registration of Geographical Indications (GI's) and Appellations of Origin (AO's) from the European Union in accordance with ongoing discussions between the EU and MERCOSUR, with the aim of signing a free-trade agreement.
THAILAND
December 04, 2017
On September 1, 2017, the Thai Department of Intellectual Property started accepting applications for sound trademark registration.
TUNISA
December 04, 2017
As of December 1, 2017 patents will be validated in Tunisia and thus regarded as national Tunisian patents. Tunisia becomes the third non-EU member state, following Morocco and Moldova, where this is possible. Companies and inventors from all around the world will be able to easily extend the scope of their patent protection to Tunisia.
BRAZIL
December 04, 2017
The Brazilian Patent Office recently issued a resolution ruling the new procedures to register software in the country. These rules are already in force and, in a nutshell, (i) institute a completely electronic process (including the acceptance of documents with electronic signature), (ii) implement a so-called hash digital summary which confers a safe way to protect the registered software and (iii) standardize the rates of all software services (reducing most of the official fees).
The EPO and Brazil launched a joint Patent Prosecution Highway (PPH) pilot program to enable work-sharing and accelerate patent prosecution at both offices, with the aim of improving the global IP system, supporting applicants and encouraging innovation.
It will initially run for two years and will entitle applicants, whose claims have been found to be patentable by either the EPO or INPI, to ask for accelerated processing of their corresponding applications, pending before the other office.The Brazilian Patent Office recently issued a resolution regulating the scope of the PPH. It will start December 1st and will be in force for 2 years.
There will be a limit of 300 petitions accepted per year and limited to a patent family first filed in Brazil of the EPO.
The applications have to be within the following technologies: basic chemistry; organic chemistry; fine chemicals; macromolecular chemistry and polymers; medical technology.
Finally, there are certain additional requirements that need to be met:
- Filing must have been published/application must have been disclosed.
- Examination must have been requested.
- A response to an office action in Brazil cannot be pending.
- Annuities must be paid.
- No other priority examination request must have been granted.
- The patent cannot be the object of litigation.
- The application cannot be a divisional one (with one exception: that the divisional comes from the original application, consequence of a lack of unity objection raised by the Office of Earlier Examination).
Similarly, on November 13th, the Brazilian Patent Office and the Chinese Patent Office signed a memorandum of understanding, setting up the basis for a PPH program pursuant to which applicants will be able to seek for an accelerated examination whose Chinese/Brazilian counterpart has been already approved.
The PPH program is expected in the near future and we will keep you posted of any developments. As of today, it is expected to cover the following areas: IT, packaging, measurement and chemistry. In addition, the INPI has recently entered into discussions regarding the institution of Geographical Indications for EU countries.
This has been a point of contention for the Brazilian bloc, but talks are underway as of last week which may bring the additional protection to specification of certain products which are attached to specific European locales.
Some opposition has been noted, specifically in some cases as outlined below:
- GI may conflict with existing plant variety / animal breeds, which would prove impossible to define the origin of the product.
- The GI may conflict with acquired rights, which would cause possible interference.
- The GI may conflict with an identical or similar name already registered or with registration in process for the same product or similar, which would prejudice the decision to purchase by the consumer.
- The GI may conflict with generic name or common use in Brazilian product, necessitating in this case, that the use in good faith and the date of beginning of production must be proven.
CHILE
December 04, 2017
The Chamber of the Chilean Senate continued to debate the merits and oppositions in the regulation of bioequivalent medicines and their allowance in the marketplace. The aim is to avoid the vertical integration of pharmacies and laboratories, which would be able to dictate quasi monopolistic pricing and to provide medications which have the same therapeutic results, but with a more accessible pricing to the public.
COLOMBIA
December 04, 2017
A few months ago, the Superintendent of Industry and Commerce resolved to amend a few regulations of the Single Circular of Intellectual Property of Colombia. We summarize below what we think are some of the main changes:
EL SALVADOR
December 04, 2017
As a consequence of the need to clarify certain procedures related to copyrights in El Salvador, the applicable IP Laws have been amended. Among other things, the process to register an Entity of Collective Management ("Entidad de Gestion Colectiva") has been modified. If the corresponding requirements, which are clearly specified, are not met, the registration is denied.
EPO
December 04, 2017
The EPO published the last revised version of its Guidelines for Examination of Patent applications. This version came into effect on November 1st. Among the different changes, we believe the following are worth mentioning:
EUROPEAN UNION TRADEMARKS
December 04, 2017
On October 01, 2017 the second phase of Regulation (EU) 2015/2424 of December 16, 2015 concerning the new rules governing the former Community Trademarks (now European Union Trademarks) became effective. Said new rules refer to practical and technical issues, being the purpose of this notice to focus on practical aspects which may be summarized as follows:
What you see/hear is what you get. One of the main consequences of this statement concerns the graphical representation of a European Union Trademark (hereinafter EUTM) which has opened the possibility to file new type of EUTMs such as:
- Sound marks consisting exclusively of a sound or combination of sounds.
- Motion marks consisting of, or extending to, a movement or a change in the position of the elements of the mark.
- Multimedia marks consisting of, or extending to, the combination of image and sound.
- Hologram marks consisting of elements with holographic characteristics.
The main feature of the above mentioned EUTMs is the possibility to submit MP3 and MP4 files to meet the representation requirement, a possibility not available before October 01, 2017, in addition (now optional) to a graphic representation, for example, a musical notation for sound marks.
Moreover, pure figurative marks have been sub-classified to introduce new types, such as:
- Position marks consisting of the specific way in which the trade mark is placed on or affixed to the product.
- Pattern marks consisting exclusively of a set of elements that are repeated regularly.
- Colour marks consisting exclusively of a single colour without contour or a combination of colours without contours.
- Three dimensional marks have been renamed to read "Shape marks" which may consist either of a strict shape mark (no word elements) or a shape mark containing word elements.
Smell, taste and smell marks are not admitted at present as with the current technical means in hand they cannot be represented on the register properly as to meet the current requirements.
INDONESIA AND THAILAND
December 04, 2017
On August 7, 2017, Thailand joined the Madrid Protocol, becoming the 99th Contracting Party. The Protocol entered into force on November 7. Local brand owners in Thailand can begin using the Madrid System to protect their marks in the 114 territories of the System's other 98 members by filing a single international application and paying a single set of fees.
MYANMAR
December 04, 2017
Myanmar has been working towards its first ever formal trademark law for the past years. Its enactment is expected at the end of this year, which would bring certainty and clarifications on trademark prosecution in the country.
OMAN
December 04, 2017
On Monday July 31, 2017, a Royal Decree was published in the Official Gazette formalizing the implementation of the GCC Trademark Law. Oman becomes the fourth member of the Gulf Cooperation Council to implement its Trade Mark Law, after Kuwait, Bahrain and Saudi Arabia (UAE and Qatar have not yet implemented).
SPAIN
December 04, 2017
It has already been more than half a year since the new Patent Law in Spain came into force. This allows us to carry out, although with a small sample size, a first balance of the predictions that, in turn, were made about the trend of the requests.
BRAZIL
October 10, 2017
For the past few months many articles have appeared in relation to the different challenges that Brazil has in terms of prosecuting patents. These challenges have been present in the country for quite a long time and have been consistently mentioned by the Office of the United States Trade Representative.
ARGENTINA
August 01, 2017
The Argentinian Patent Office has recently increased their schedule of official fees.
CAYMAN ISLANDS
August 01, 2017
The Design Rights Registration Law and the Trademark Law enter into force on August 1st, 2016. The Design Rights Law will provide for existing registered UK and EU design rights to be registered in, and extended to, the Cayman Islands.
BRAZIL
August 01, 2017
The Brazilian Patent and Trademark Office, which has been long since notorious for its decade long backlog of workloads in patent granting, has staked a landmark decision to award a preliminary injunction to a pharmaceutical company. The Court of Appeals considers that there may be cases in which future damages may not be enough to prevent irreparable damage and has allowed an interim injunction based on a patent application. This may set the precedent for other cases to be reviewed and processed on a more expeditious basis.
CHINA
August 01, 2017
In March, the State Council of China issued a guideline on counterfeiting and IPR infringements demanding better market supervision system and improvements to the law, regulations and standards with appropriate information technology utilized in supervision. A group of IPR protection centers will be established to fast-track cases involving IPR infringement, according to the head of the State Intellectual Property Office (SIPO).
JORDAN
August 01, 2017
The accession procedures of Jordan to the Patent Cooperation Treaty (PCT) with the Secretary General of WIPO have been completed and took effect on 9 June 2017, making Jordan the 152nd member.
KUWAIT
August 01, 2017
The Kuwaiti Patent Office recently announced that, in collaboration with the Gulf Cooperation Council Patent Office, they have completed all outstanding formal examinations for patents. It is anticipated that the KPO will communicate this news directly to the agents of records and advise on the next steps that are, at the moment, still unclear.
NEW ZAELAND
August 01, 2017
The Intellectual Property Office of New Zealand has recently joined the Global Patent Prosecution Highway (GPPH). It offers patent applicants in New Zealand with the possibility to accelerate their applications which meet the requirements set forth in this agreement (for example, when at least one claim of a patent is accepted by one of the participating national patent offices).
EUROPEAN UNION
August 01, 2017
Many amendments made to the EU Trademark Regulation, made on 3/23/16 will begin to come into effect in the next months, specifically four significant reforms on 1 October 2017.- Removal of graphical representation requirements - In theory this will facilitate the ease of registration for nontraditional trademarks with the EUIPO. Instead of being solely graphical, marks can be presented in whatever form is deemed relevant by the competent authorities in enabling the public recognition of the subject matter in question.
INDIA
August 01, 2017
The Indian Patent Office issued, with immediate effect, another revised Guidelines on Examination of Computer Related Invention in order to provide a much needed clarity in the examination of these inventions. Amongst the major changes, we can highlight those related to (i) the test used for examining CRIs and (ii) the basis required in the specification to support CRIs.
IRAK
August 01, 2017
The Trademark Office in Iraq has reworked their formalities for TM registrations in class 5(A), where they now require only a soft copy of the home registration certificate to be submitted in support of trademark applications upon filing, whereas the original copy legalized up to the Iraqi Consulate can be submitted within six month-time from the date of filing, without incurring additional fees.
ISRAEL
August 01, 2017
The Israel Innovation Authority (the IIA) has published new directives which allow the licensing of IIA-funded technology outside of Israel. The IIA was set up in January 2017 to replace the Office of the Chief Scientist of the Israeli Ministry of Economics and to administer government grants, extended to Israeli companies under the Law for the Encouragement of Research and Development in Industry, launched in 1984.
SOUTH KOREA
August 01, 2017
Several amendments to the Design Protection Act were published on March 21 2017. The amendments will come into effect on September 22 2017. Among others, the grace period is extended from six months to one year and, in order to proof priority, other documents such as the World Intellectual Property Office's Digital Access Service will be valid.
PERU
August 01, 2017
New articles have been drafted in the registration of TM's in Peru. These have a number of defining features which have come into effect as of June 2017. Article 2 states that if a power of attorney has already been registered in public registries, it can also be enforced before the INDECOPI. In addition to this, any information which may be lacking at the time of filing, such as representation of the mark, the express description of products and / or services or the proof of payment of the fee will result in no formal date of entrance being assigned.
SPAIN
August 01, 2017
The implementation of the new Patents Act in April of 2017, has allowed for the submission of protective letters, which will be accepted by all courts handling patent cases. Protective letters are to be effective for three months.
TAIWAN
August 01, 2017
The Taiwanese Intellectual Property Organization has recently published a new draft regarding their Trade Secrets Act. According to the Draft, any intentional use of misappropriated trade secrets outside of Taiwan will be pursued only on receipt of a formal complaint.
THAILAND
August 01, 2017
Thailand has made recent additions to its IP law in order to combat online infringement. This will come into place via two major sections.
TURKEY
August 01, 2017
Industrial Property in Turkey have undergone an overhaul and transitioned from being governed by Decree Laws to Constitutional Law. The recently enacted IP Law underlines the developing IP market in Turkey as a result of growing economic conditions and the scope of EU integration as constant additional clauses were unable to keep up with the changing conditions.
ARGENTINA
May 04, 2017
Over the past months, two relevant drafts of regulations have been issued inArgentina. The first one addresses IPS's liability and has received preliminaryapproval by the Senate. The second is a draft of new data protection bill and has beenposted on the website of the Argentine Data Protection Agency.
CHILE
May 04, 2017
On Monday, March 13, 2017, a bill was sent to the Senate seeking to increase
protection of personal data privacy to fulfill international standards.
CHINA
May 04, 2017
After establishing specialized IP Courts in Beijing, Shanghai and Guangzhou, the Chinese Supreme People's Court has recently approved the establishment of specialized IP tribunals in the cities of Wuhan, Nanjing, Suzhou and Chengdu, which have been experiencing a substantial increase in complex IP litigation issues.
These new tribunals will have jurisdiction over intellectual property cases and will be formed by judges with substantial experience in this subject.
Also, the Chinese Trade Mark Office announced a reduction of official fees as of 1st April 2017, including the fees for a trade mark application, renewal, opposition and fees for most types of recordals.
Finally, the Chinese Patent office (SIPO) has issued its amended Patent Examination Guidelines, which became effective on 1 April 2017.
The amended guidelines bring several changes and clarifications, in particular in relation to business models and computer implemented inventions. It also affects the possibility to make allowable amendments in invalidation proceedings and introduces changes in the suspension of proceedings before the patent office as a consequence of civil court proceedings.
EGYPT
May 04, 2017
As a consequence of the drastic drop in the value of the local currency, the Egyptian
Patent Office decided to increase the official fees of some patent related services,
including substantive examination fees,
JORDAN
May 04, 2017
The Director General of the World Intellectual Property Organization (WIPO) had the
honor of notifying the deposit by the Government of the Hashemite Kingdom of
Jordan of its instrument of accession to the Patent Cooperation Treaty,
MEXICO
May 04, 2017
As a consequence of new criteria in the implementations of the rules of procedure, the
Mexican Patent Office is requesting that the certified Inventor Assignments be
stamped with the Apostille of the Hague Convention.
BRAZIL
May 04, 2017
Brazil has experienced several developments in recent months. Even though some of them may be seen as merely symbolic or drafts pending approval, all of them show that things are moving forward in the country to ease and update the prosecution of patent and trademark applications.
On April 12, a Memorandum of Understanding was signed between the BPO (INPI) and the Brazilian Health Regulatory Agency ("ANVISA"), which intends to address the problem related to the faculties assigned to ANVISA in the examination process of pharmaceutical patent applications.
In accordance with this MOU, ANVISA would only be responsible for analyzing aspects related to public health, not related to patentability criteria. Also, it is worth noting that the INPI issued a draft of guidelines for patent applications in the chemical field and is accepting comments until May 16, 2017.
The new guidelines address important issues which, as the draft is right now, are regulated as follows: chemical compounds defined by its physical, physicochemical or biological properties are not accepted; product by process claims can only be accepted when there is no other way to define the compound; the crystalline structure of a polymorph may be characterized by Single-Crystal X-Ray diffraction although, if this is not provided, the Powder X-Ray diffraction could be used associated with at least another identification method; a new use of a known compound defined by its dose, administration, etc.
is not considered as novel, even though new therapeutic activity of a compound could be patented if in vivo tests are presented.
As of today, these guidelines are only a draft and will be closely monitored to see how the INPI addresses this important issues. However, we understand they are a good sign showing the INPI's intention to update its guidelines and provide more legal certainty in a traditionally conflictive area.
A Normative Instruction has been issued to reduce and simplify the scope of the examination by the INPI of technology transfer and IP license agreements. The INPI should now focus, strictly, on formalities applicable to this agreement and not on the merits of the agreement.
In particular, the INPI will no longer examine the payment clause of IP license agreements and, therefore, they will merely state that they do not examine if the rules pertaining to tax and foreign exchange control law are meet by the parties in the agreement.
Finally, as explained in our previous Newsletter, the shock produced by the issuance of Resolution 174 in relation to the assignment of priority rights has finally cleared up.
In accordance with Resolution 179, which revokes Resolution 174, assignments of priority documents signed after the filing date of the PCT application are valid and everything goes back to normal again.
The assignment document will still need to be filed within 60 days of the national entry in Brazil and translated into Portuguese. Also, if the change of ownership has not been registered yet at the WIPO, a copy of the assignment needs to be filed upon entering the national phase in Brazil.
The above changes will have to be monitored but we think it is fair to say that they show that the Brazilian authorities are trying to improve the prosecution of patent and trademarks in the country.
JAPAN
May 04, 2017
The Japan Patent Office agreed to start a Patent Prosecution Highway program with the National Institute of Industrial Property of Brazil (INPI) on April 1, 2017, and with the Chilean Patent and Trademark Office (INAPI) on August 1, 2017.
The agreement with the INPI implies that both sides will accept petitions for two years or until reaching 200 applications filed with each office.
The JPO will accept application in any technical field; the INPI will accept them in IT and machinery, mainly for automotive-related technologies. On March 14, 2017, the JPO and the INAPI held a commissioners meeting in Santiago and agreed to start the PPH pilot program on August 1, 2017.
Moreover, the JPO and the Patent Office of Argentina should start a PPH pilot program on April 1, 2017.
As a result of the start of these programs with Brazil, Argentina and Chile, the number of JPO's partner IP offices overseas under the PPH program comes to 38.
The JPO will release details of the PPH program between Japan and Brazil, Argentina and Chile on its website upon the start of the respective PPH programs.
UAE
May 04, 2017
The UAE has approved a new law against commercial fraud and the importation ofcounterfeit goods.
URUGUAY
May 04, 2017
After many rumors about the possibility of Argentina and Uruguay starting the process of becoming member states of the PCT, on March 13, 2017, the Presidency of Uruguay sent to Parliament a bill of law to join the PCT.
SAUDIA ARABIA
May 04, 2017
As a consequence of the GCC Trademark Law being adopted by Saudi Arabia,
opposition procedure has been adjusted to a purely administrative proceeding.
SINGAPORE
May 04, 2017
The Intellectual Property Office of Singapore announced that, as of April 1st, new
official fees, Patent filing, search and examination, as well as trademark filing fees are
reduced. However, fees for renewing and maintaining applications are substantially
increased.
BRAZIL
January 31, 2017
On October 18th, 2016, the INPI published Resolution INPI/PR No. 172/2016, whose objective is to improve Resolution INPI/PR No. 107/2013 which deals with the application of Article 125 of Law 9,279/1996. The first of the amendments concerns with the wording of items I and II of article 3 of the Resolution INPI / PR No. 107/2013; the second amendment contemplated in Resolution INPI / PR No. 172/2016 refers to Article 9 of the previous Resolution, which deals with the new requirements for the recognition of well-known trademarks already identified under the terms of Resolution INPI / PR No. 107/2013; finally the amendment of article 10 of the previous Resolution, establishing that the competence for the investigation of appeals is from the General Coordination of Appeals and Administrative Proceedings of Nullity (CGREC).
CAYMAN ISLANDS
January 31, 2017
A new trademark law has been published in the Cayman Islands which is expected to come into force in early 2017.
The new law will include a local trademark registry; applications will be examined on absolute and relative grounds for refusal of registration and contains also provisions for a opposition as well as revocation proceedings for non-use.
There will also be provision for the registration of collective and certification marks. Furthermore, clients will still be required to pay annual maintenance fees in order to maintain a registration's validity.
CHILE
January 31, 2017
On October 19th, 2016, both offices updated the existing cooperation agreement since February 2012.
The agreement signed between the SIPO and INAPI allows the exchange of information related to modernizations, management and development of both offices. It also increases the training of INAPI's officials in different aspects of intellectual property, the sharing of knowledge and strengthens the cooperation on patent examination.
MEXICO - AUSTRIA
January 31, 2017
On October 25th, 2016, the Mexican Institute of Intellectual Property (IMPI) and the Austrian Patent Office (APO) signed three different collaboration agreements that will strengthen relationships between both offices.
The three agreements are: Memorandum of Understanding on IP Cooperation, (ii) implementation of an Accelerated Patent Prosecution Highway (PPH) and, (iii) formalizing the recognition by the IMPI to the APO as International Search Authority (ISA) and International Preliminary Examining Authority (IPEA).
URUGUAY
January 31, 2017
On October 6th, 2016, MIEM-NCPA, launched the first phase of Online Presentation System (SPL).
This new system involves a new step into the process of implementation of information technology management procedures and administrative tasks of the NCPA, which result in a more modern and appropriate management to the public policies promoted by the present administration e-government. The most significant changes of the first phase are:
(i) it won't be necessary for Intellectual Property Agents to come to the office in order to certify shipments of written requests (SIWeb) and payments (SPO), which will be made exclusively through user SIWeb,
(ii) confirmation processing requests sent via SIWeb, or rejection of the response including justification thereof and,
(iii) titles request issued in digital format and sent to the email box.
VENEZUELA
January 31, 2017
The Trademark Office recently published an official notice requesting all opponents to ratify their legal/administrative interest in opposition proceedings filed by November 8th, 2016.If no brief ratifying legal/administrative interest is filed, the Trademark Office will estimate that the opposing parties have lost interest and will consider the oppositions abandoned. On the other hand, if opponents ratify legal their interest, the Trademark Office will render and publish its resolution deciding the opposition fields.
SPAIN AND LATIN AMERICA
January 01, 2017
We are pleased to provide you with a publication summarizing some of the most important IP developments in Spain and Latin America as well as a few issues which will require further attention in 2017.