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NEWS JANUARY 2016 - DECEMBER 2016

ARGENTINA

NEW ZEALAND: New Zealand divisional filing practice warning.

Actual damages derived from trademark infringement must be proved before the courts / Trademarks are meant to be used and not merely sold.

There is a widespread consensus among the different Divisions of the Federal Court of Appeals, sharing that trademark infringement causing an unjustified damage should be compensated.

ARGENTINA

NEW ZEALAND: New Zealand divisional filing practice warning.

New accelerated examination for patent applications.

On September 19th, 2016 the Argentine Patent and Trademark Office (ARPTO) issued a Resolution that will come into force on October 15th, 2016 pursuant to which patent applicants will be able to request accelerated examination of patent applications.

AUSTRALIA-EPO

NEW ZEALAND: New Zealand divisional filing practice warning.

Patent Prosecution Highway (PPH).

Pilot program between the Australian Patent Office and the European Patent Office (EPO) started on July 1st, 2016.

BAHRAIN

NEW ZEALAND: New Zealand divisional filing practice warning.

Bahrain increases official fees - Online publication of accepted trademark applications.

Bahrain increases official fees (1,392USD) to conform to the Law 6/2016 of the GCC Trademark Law.

CAMBODIA

NEW ZEALAND: New Zealand divisional filing practice warning.

New procedures to record exclusive distributorships.

The Ministry of Commerce introduced a new regulation on the procedures to record and file permission letters for imported goods bearing exclusive trademarks.

CAYMAN ISLANDS

NEW ZEALAND: New Zealand divisional filing practice warning.

Registry changes.

Started in August 1st, 2016 patent and trademark annual fee payments will no longer be accepted in advance of January 1st in the year in which they fall due.

DIJIBOUTI

NEW ZEALAND: New Zealand divisional filing practice warning.

Accession to PCT.

Patent Cooperation Treaty (PCT).

INDONESIA

NEW ZEALAND: New Zealand divisional filing practice warning.

Recordal of intellectual property licensing agreements.

The Indonesian Government recently issued the Ministry of Law and Human Rights Regulation No. 8 Year 2016 on the recordal of Intellectual Property (IP) Licensing Agreements.

IRAQ

NEW ZEALAND: New Zealand divisional filing practice warning.

New requirements for trademark registration in class 5.

All trademark application shall contain the following information in order to proceed with the registration procedure:

BRAZIL

NEW ZEALAND: New Zealand divisional filing practice warning.

New possibilities for applying for priority examination at the BRPTO.

Any interested party can now request priority examination status for a patent application by another applicant.

CHINA

NEW ZEALAND: New Zealand divisional filing practice warning.

PATENTS: SIPO issued three regulations to promote China's patent law enforcement. TRADEMARKS- More goods and services are acceptable for trademark registration. LITIGATION- New Judicial Interpretation on Patent Infringement.

SIPO issued three regulations to promote China's patent law enforcement: (i) guide of determining patent tort; (ii) evident rule on patent administrative enforcement; and (iii) guide on patent disputes administration mediation.

EUROPEAN PATENT OFFICE

NEW ZEALAND: New Zealand divisional filing practice warning.

Changes to the EPO opposition procedure.

Changes to the EPO opposition procedure came into force on July 1st, 2016.

HONG KONG

NEW ZEALAND: New Zealand divisional filing practice warning.

Patents (Amendment) Ordinance 2016.

Key changes that will hopefully be implemented by early 2018.

INDIA

NEW ZEALAND: New Zealand divisional filing practice warning.

The Indian Government's Patent (Amendments) Rules 2016.

The Indian Government's Patent (Amendments) Rules 2016 came into effect on May 16th, 2016. The purpose of these amendments is to speed up the patent prosecution before the Indian Patent Office.

JAPAN - VIETNAM

NEW ZEALAND: New Zealand divisional filing practice warning.

PPH program.

A bilateral agreement has been signed between National Office of Intellectual Property of Vietnam (NOIP) and Japan (PPH - Patent Prosecution Highway).

RUSSIA

NEW ZEALAND: New Zealand divisional filing practice warning.

A National Intellectual Property Registry started operating online in Russia on April, 2016.

The Registry is designed to become an efficient means of dealing with infringements of exclusive rights on the Internet, as well as proving the ownership of intellectual property rights.

SAUDI ARABIA

NEW ZEALAND: New Zealand divisional filing practice warning.

Final step towards regional trademark law.

The new GCC Trademark Law and Implementing Regulations will come into force on September 28th, 2016.

SINGAPORE

NEW ZEALAND: New Zealand divisional filing practice warning.

Guidelines for examining Computer Implemented Inventions (CIIS) issued by IPOS.

Important updates that will apply to new patent applications on or after May 16th, 2016.

SINGAPORE

NEW ZEALAND: New Zealand divisional filing practice warning.

The Intellectual Property Office raises the bar on post-grant amendments.

On July 19th, 2016 the IPO announced that post-grant amendments may not be possible if:

KUWAIT

NEW ZEALAND: New Zealand divisional filing practice warning.

Stops accepting patent application and remits to GCC patent office.

The Kuwaiti Ministry of Trade and Industry approved Law no.115 of 2016 on the regulations implementing patent Law no. 71 of 2013.

NEW ZEALAND

NEW ZEALAND: New Zealand divisional filing practice warning.

New Zealand divisional filing practice warning.

The three main new Act divisional issues are:

TAIWAN

NEW ZEALAND: New Zealand divisional filing practice warning.

New practice for submitting documents.

New practice for submitting priority documents for new patent applications filed in Taiwan became effective on July 1st, 2016.

THAILAND

NEW ZEALAND: New Zealand divisional filing practice warning.

Trademark Act Amendments usher in Thailand's accession to the Madrid Protocol.

Among the amendments that became effective on July 28th, 2016 it is important to point out the new chapter on trademark registration.

WIPO

NEW ZEALAND: New Zealand divisional filing practice warning.

New Special Service: Expedited establishment of an attestation or of a certified copy from the International Register.

As from June 6th, 2016, users of the Madrid System will be able to request the expedited establishment of an attestation or of a certified copy from the International Register.

BRAZIL

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

The Brazilian PTO strengthens its position against ANVISA's issuance of opinions regarding patentability of applications related to pharmaceutical inventions. Within the frame of a litigation raised by a pharmaceutical company against ANVISA, the Brazilian Patent Office has filed an opinion regarding the role that ANVISA is adopting in the examination of patent applications.

COLOMBIA

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

Obligation to pay Examination Fees after every amendment of the claims or spec.

Some important changes recently imposed by the Colombian Patent Office, effective immediately, will impact the procedure of patent applications. The Colombian Patent Office has issued Resolution No.3719 dated February 2, 2016, by means of which it has regulated, (i) divisional and conversion of patent applications (a complete information will follow shortly as the changes need to be further explained) and (ii) the examination of patent applications in process.

GUATEMALA

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

Approval of Accession to the Trademark Law Treaty and Regulations, signed in Geneva on 1994.

Guatemala has approved the accession to the Trademark Law Treaty (TLT) (1994), administered by the World Intellectual Property Organization which will enter into force on March 31, 2016. The accession is aimed at simplifying the filing of applications and expediting the registration of trademarks.

MEXICO

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

Implementation of new trademark opposition system.

On April 28th, the Mexican Industrial Property Law was amended to implement the new trademark opposition system which was approved at the end of 2015.

URUGUAY

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

Uruguayan Patent Office is expected a ratification of interest in patent applications.

Based on a resolution issued early this year, the Uruguayan Patent Office is expected to request holders of patent applications filed before 2010 to ratify if they are still interested in pursuing their patent applications.

VENEZUELA

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

More convenient current exchange rate.

After increasing substantially the official fees, the Venezuelan Government has now approved a new official currency exchange rate with the US Dollar. As a result of that, the official fees to be paid may enjoy a more convenient exchange, so that payments are decreased.

EUROPEAN PATENT OFFICE

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

Pending enlarged board of appeal decision on partial priority.

In case G1/15, the EPO's Enlarged Board of Appeal is considering the question of whether a patent publication can be cited as prior art against a second application which derives from the same parent.

EUROPEAN UNION

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

Trade Secrets.

The European Parliament voted in favor of the Trade Secrets Directive on April. The Directive pretends to harmonize trade secrets laws across Europe, defying what constitutes trade secret and providing remedies for misappropriation.

TUNISIA

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

Law approving European Patent Validation.

Following the agreement between the EPO and the Tunisian Patent Office, European Patent Validation Law will enter into force in Tunisia once the implementing regulations are issued.

INDIA

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

New guidelines for Computer-related inventions

On February 19th, the Indian Patent Office amended its guidelines to provide clarity for patent examiners and practitioners on patenting computer-related inventions (CRIs).

KUWAIT

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

PATENTS - Decision to suspend the acceptance of applications. TRADEMARKS - Changes in the prosecution of trademarks.

Pursuant to an unexpected decision, and shortly after Kuwait's Council of Ministers voted and published on March 27, 2016 a new law, Law no. 11/2016, which paves the way for the country's accession to the PCT, the Kuwaiti Patent Office has decided to stop accepting patent applications.

CHINA

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

Announcement to introduce new measures to facilitate the prosecution of Trademarks.

On March 24th, the Chinese Trademark Office announced the introduction of new measures to facilitate the prosecution of trademarks.

INDIA

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

New trademark rules are expected.

The new trademark rules have been published for "Public Comments". These changes bring significant Amendments to current Trademark Rules.

INDIA

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

Stay on the abandonment of trademark applications and oppositions.

On March 29th, 2016 the Indian Trademark Registry surprisingly decided to abandon approximately 200,000 applications and 20,000 oppositions.

INDONESIA

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

Issuance of the implementing regulation for recording license agreements.

Current applicable Law in Indonesia requires that all license agreements regarding IP rights (copyright and related rights, patents, marks, industrial design, integrated-circuit layout design, and trade secrets) are registered for recordation at the Ministry of Law and Human Rights of the Republic of Indonesia.

JAPAN

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

Paris Route applications can be filed in any language / Examination handbook for Product-by-process claims.

As of April 1st, Paris route applications filed in Japan can be filed in any language and then, within 16 months of the priority date, file the Japanese translation.

LAOS

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

License agreements need to be registered locally.

The Lao People's Democratic Republic has notified that the recording of licenses in the International Register of the WIPO shall have no effect in the Lao People's Democratic Republic.

TAIWAN

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

New Guidelines for examination of Design Patents.

In April 2016, amended Guidelines for the substantive examination of design patents are applicable in Taiwan.

SOUTH KOREA

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

Amendment of the patent and trademark laws.

As of June 30th, some relevant amendments in the Korean Patent Act will enter into effect. Among others, (i) any interested party can file a cancellation action against a patent application, (ii) the time frame to request examination for patents filed after March 1st, 2017, will be shortened to 3 years from the filing date and (iii) the burden of proof in patent infringement actions will be switched to the alleged infringer, in case they do not produce relevant material or information if requested by the Court.

SOUTH KOREA - TAIWAN

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

The Taiwan-Korea Electronic Exchange of Priority Documents (PDX) Program launched on January 1, 2016.

Under the PDX program, an applicant who first files an invention or utility model patent application with the TIPO and who subsequently files an application with the KIPO claiming priority of the earlier Taiwan patent application may request the KIPO to adopt electronic priority documents.

VIETNAM - JAPAN

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

Patent Prosecution Highway Pilot Program.

Vietnam launched on April 1st a PPH pilot program with the Japan Patent Office applicable to Vietnamese patent applications (i) claiming priority to a Japanese application under the Paris Convention, (ii) PCT national stage entries in Vietnam of applications filed with the Japanese Patent Office without priority, as well as (iii) applications as indicated in (ii) which claim priority from a PCT application.

AUSTRALIA

BRAZIL: The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.

Issuance of new Guidelines for Computer-Implemented inventions.

On February 1st, 2016, the Australian Patent Office released the new guidelines for assessing whether computer-related inventions relate to patentable subject matter.

ANDORRA

JAPAN: Lowered fees for trademark registrations and renewals.

Patents may now be filed

As of January 25th, 2016 patent applications can be filed in Andorra. Even though the patent law had been approved back in 1999, it had never entered into force.

ARGENTINA

JAPAN: Lowered fees for trademark registrations and renewals.

Changes in the trademark opposition process.

The Argentinian Congress has passed a law pursuant to which the mediation proceedings will no longer suspend the 1 year term to settle trademark oppositions. As of March 26th, 2016,

BRAZIL

JAPAN: Lowered fees for trademark registrations and renewals.

Pilot program with US to examination of patents.

A bilateral agreement between the USPTO and BRPTO has recently been enacted allowing for a PPH request. The program will be valid for a period of two years (or until 150 US or BR priority applications are accepted by each of the offices following this program). Please note

CHILE

JAPAN: Lowered fees for trademark registrations and renewals.

Amendments of Medicinal Products.

On January 4th, 2016, a series of amendments were introduced to the bill of law that modifies the Health Code in order to regulate generic bioequivalent pharmaceutical products and prevent the vertical integration of pharmaceutical laboratories and pharmacies. Among other provisions

COSTA RICA

JAPAN: Lowered fees for trademark registrations and renewals.

Annuities will be "retroactively" paid as from the international filing date.

Costa Rican Patent Office is changing its interpretation on the calculation term to pay patent annuities. As a result, overdue annuities are to be paid retroactive from the international application date.

COLOMBIA

JAPAN: Lowered fees for trademark registrations and renewals.

New official fees.

The Superintendence of Industry and Trade of Colombia has issued Resolution No.73446 of 2015, approving the new official taxes for patents, industrial models, industrial designs, trademarks, collective marks and similar, which have come into effect as of January 1st 2016. There are some

EUROPEAN UNION

JAPAN: Lowered fees for trademark registrations and renewals.

New Directive on Trade Secrets.

On 15 December 2015 the negotiating teams of the European Parliament and the Council reached a preliminary agreement on the text of the Directive o. The Commission participated in the negotiations as a facilitator. The agreement will need to be formalized

EUROPEAN UNION

JAPAN: Lowered fees for trademark registrations and renewals.

New trademark reforms.

The EU trademark reform legislative package has been approved and will enter into force on March 23rd, 2016. The OHIM will now be called EU Intellectual Property Office (EUIPO) and community trademarks will be EU trademarks (EUTM). This legislative package aims at

JAPAN

JAPAN: Lowered fees for trademark registrations and renewals.

Lowered fees for trademark registrations and renewals.

Effective April 1st, 2016, fees for trademark registration and renewals are lowered as follows.

Office fee per class (JPY) Current New Reduction Registration fee for 10 years 37,600 - 28,200 - 9,400 - for 5 years 21,900 - 16,400 - 4,400 Renewal fee for 10 years 48,500 - 38,800 - 9,700 - for 5 years 28,300 - 22,600 - 5,700

LAOS

JAPAN: Lowered fees for trademark registrations and renewals.

Accession to Madrid Protocol.

The Government of the Lao People's Democratic Republic (Lao PDR) deposited with the Director General of WIPO its instrument of accession to the Madrid Protocol for the International Registration of Marks on December 7, 2015. With this accession,

MEXICO

JAPAN: Lowered fees for trademark registrations and renewals.

Future opposition system in Trademarks

Last November 10th, 2015, a proposal to amend the Mexican IP Law was published. The proposal needs to be studied but, if approved it will set up an opposition system for trademarks in Mexico.

SAUDI ARABIA

JAPAN: Lowered fees for trademark registrations and renewals.

New regulations for PCT national phases.

Saudi Arabia has recently implemented new regulations on its Patent Law concerning the national stage entry of PCT patent applications. These new regulations

TURKMENISTAN

JAPAN: Lowered fees for trademark registrations and renewals.

Accession to the 1999 Act:

the Government of Turkmenistan deposited with WIPO its instrument of accession to the Geneva (1999) Act of the Hague Agreement

VENEZUELA

JAPAN: Lowered fees for trademark registrations and renewals.

New increase of official fees.

In accordance to recent Official Gazette 40.846, the Venezuelan Government has established a new and increased Official Tributary Unit. The Tax Unit is

VIETNAM

JAPAN: Lowered fees for trademark registrations and renewals.

Patent acceleration program with Japanese Patent Office.

A PPH program will begin on April 1st, 2016 to enable accelerated patent examination based on the findings of the Japanese Patent Office.