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.
As a consequence of this, the Copyright Law will have to be modified. A new project of Law has already been presented (number 5149), which is in process of consideration and approval.
SINGAPORE
December 04, 2017
On 30 October 2017, the Intellectual Property Office of Singapore (IPOS) published its revised Examination Guidelines.
The main changes include the extension up to a year of the grace period provision, the ability to shift amongst substantive and supplementary examination and the dismissal of post-grant amendment claims which are obviously invalid.
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:
The grace period is extended from 6 to 12 months, which can be claimed any time before the applications is granted/rejected; priority documents no longer need to be submitted as long as an access code of WIPO DAS is provided.
THAILAND
December 04, 2017
On September 1, 2017, the Thai Department of Intellectual Property started accepting applications for sound trademark registration.
The following is required: 1) list of goods or services; 2) a detailed written description of the sound and specifying whether the sound is categorized as a human or animal sound, a piece of music/melody, or other type of sounds; and an audio recording of the mark. The trademark must not directly represent a product's properties, or be sounds naturally made by the product or a result of the use of the product.
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.
The validation agreement with Tunisia brings to 43 the number of countries where an invention can be protected through the single European examination and grant procedure (covering a market of some 700 million inhabitants).
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.
As such, on November 2nd the following list of GI's and AO's were published in the Official Gazette, allowing 3rd party opposition until December 1st, based on legitimate interest for invocation:
- The GI / AO is the generic name of the product (or common name that identifies the product in Argentina).
- The GI / AO is a trademark that has been registered in good faith and is in force, or where rights to a trademark have been acquired through use in good faith before the publication of the GI and/or DO.
- The GI / AO is an identical or similar name that has been recognized as an AO and may mislead consumers as to the true identity of the product.
- The GI / AO may mislead consumers as to the true qualities and/or characteristics of the product.
- The GI / AO may indicate or suggest, in the designation or display of the product, that the product originates from a geographical area other than the true place of origin and may mislead consumers as to its geographical origin.
- The GI / AO are a plant variety or breed that may mislead consumers as to the true geographical origin of the product.
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.
The bill modification was approved by vote in the senate and allows for the registration of drugs in Chile, which are not currently accessible and are also deemed necessary for the people. This bioequivalence will also extend to those who are in charge of prescribing medication, who until now, have been obliged to prescribe a specific brand of a drug. The new allowance, as voted in the senate will allow for the proposition of any brand of equivalent drug by a doctor, which will have the same therapeutic effect.
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:
- Notification of admission and transfers of requests for cancellation to holders of trademarks that are result of a territorial extension made through Madrid Protocol and do not have representative or agent in Colombia, will be through publication in the Gazette of Industrial Property.
- Voluntary claim amendments are subject to a fee.
- Applications of Industrial Designs will require certain specifications in its views and presentations (i.e., they must be accompanied of 6 views: top, bottom, right side, left side, front and rear, and isometric perspective; they can be presented graphically or photographically; etc).
- Divisional applications of Industrial Designs can be filed before the grant or denial of the design.
- The Superintendent will register the cancellation of an international trademark application extended in Colombia if the International Office communicates the cancellation of the international trademark at the request of the origin office within 5 years following the registration of international trademark.
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.
Once registered, these Entities have the obligation to file the prices which will be charged to their affiliates. These prices will have to be approved by the IP Registry and, later, published in the Official Gazette. Something similar will happen with the agreements of reciprocal representation which will also have to be published. An opposition by a third party against the prices will be possible and, in case of controversy, a mediation process will need to be followed.
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:
- Summons to Oral Proceedings: Former practice required that the applicant be given the opportunity to respond to at least one examination report prior to being summoned to Oral Proceedings. Based on the current version of the Guidelines, if the examiner considers that the Search Opinion does not place the application in order for acceptance, the Examiner Division can summon the applicant to Oral Proceedings even if the applicant has not received yet an examination report. The Guidelines indicate however, that this can occur only in exceptional circumstances, requiring that certain conditions be met.
- Refund of fees: The revised Guidelines also confirm that if an application is withdrawn before the examination begins the fees paid are fully refunded. Also, if the application is withdrawn before the expiration of the term to reply the first substantive communication, 50% of the fees paid will be refunded.
- Products of essentially biological processes: Finally, the Guidelines amend Rules 27 and 28, setting out that plants and animals exclusively obtained by essentially biological processes are excluded from patentability under article 53(b) of the European Patent Convention.
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.
Indonesia has also joined the Protocol, becoming the 100th member, which will enter into force on January 2nd, 2018. From that time on, local brand owners will be able to file a single international application under the Madrid System to protect their marks in the territories of the System's other members. Likewise, foreign enterprises and brand owners can use the Madrid System to seek trademark protection for their products and services in Indonesia.
On this occasion, the Madrid System takes another step toward expanding its geographical coverage while offering brand owners in Thailand access to 115 additional international markets.
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.
Amongst the rules which can be expected, the following may be highlighted: a) It will follow a first-to-file principle; b) Smell and touch signs, visual marks, and perceivable sound may be subject of trademark protection; c) Trademarks will be valid for 10 years, renewable; d) trademarks, service marks, certification marks and collective marks can be registered; as well as geographical indications; e) and a new Myanmar Intellectual Property office and new IP Courts will be established. Civil and criminal actions will be available and trademark rights will be enforceable through customs.
Finally, a transition period is expected. Owners of registered trademarks will be required to re-register their trademarks within a certain period of time.
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).
The implementing regulations will be issued shortly, which will determine the official fees, the supporting documents or the duration of the examination period.
As a consequence of the implementation, the opposition period is reduced, from 90 days to 60 days, trademarks are defined broadly (including colors, sounds and smells), there should be a stronger protection for well-known trademarks as well as, in general, for trademark infringements.
We are waiting to see if, as happened in other countries, the implementation of the GCC Trade Mark Law results also in a substantial increase of the official fees.
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.
Two of the main changes introduced, if not the most important ones, are the obligatory nature of the substantive examination for patent applications (farewell to the granting of patents without having been examined) and the extension of the subject matter protected by utility model (these without examination). The forecast was that, after the entry into force, there would be a notable reduction in the number of patent applications, accompanied by the corresponding transfer to utility model applications. The data available so far indicates that there has indeed been a decrease in the number of patent applications and that the alleged transfer to utility models is not so clear. It may still be early, though, to extract definite conclusions as to the future trends in the country and we will have to continue waiting for a more solid hypothesis.
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.
The 2017 Special 301 Report mentioned the concern for the long delays in the examination of both patent and trademark applications, with a reported average pendency of nearly two and a half years for trademarks and almost 11 years for patents, as well as for the National Sanitary Regulatory Agency's (ANVISA) duplicate review of pharmaceutical patent applications.Brazil is currently undergoing a process of addressing these issues. This article aims at providing an overall picture of where the country is and what can be expected.
The main challenges are summarized in the newsletter which can be downloaded by clicking the link bellow, "
Complete bulletin in PDF".
ARGENTINA
August 01, 2017
The Argentinian Patent Office has recently increased their schedule of official fees.
Some of the new fees will be applicable on August 1st, others on October 1st. The increase exceeds 30% in many cases (from 80 to 105, the filing of a trademark, from 204 to 286 the filing of a patent and from 169 to 239 the request of patent examination) and a new official fee has been introduced to request an accelerated patent prosecution.
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.
The Trademarks Law will set forth the establishment of a TM Registry in the Cayman Islands for the registration of local trademarks, which will follow the Nice classification. It will no longer be possible to extend UK, EU or international trade mark registrations to the Cayman Islands.
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.
Any PCT applications filed on or after the effective date will include the designation of Jordan; likewise, it will be possible to file international patent applications through the Jordanian Patent Office.
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.
According to regulations, an applicant will have a non-extendable 3 months from the date of notification, for the amendment of any formal defects.
The announcement comes with the anticipation that the KPO will soon be starting with a clean slate and beginning operation within the PCT.
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).
It is worth to mention that, should an applicant request to accelerate the examination in New Zealand, the corresponding claims cannot be broader in scope than those of the earlier examined foreign application.
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.
Also, as of March 1, 2017, a patent may be revoked in Korea through a new patent cancellation system which aims at being a more cost-effective alternative to challenge third party patents.
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.
Also, a Court has recently issued a resolution requesting the Patent Office to examine a patent application which had remained more than 10 years without having been examined. The Court indicated that also the Patent Office is subject to the constitutional principle of reasonable duration of administrative processes. This is an avenue available to patent applicants which, although not exempt of costs, may help circumventing the tremendous back-log at the Brazilian Patent Office.
Finally, it has been long since the country has been exploring measures to reduce the considerable back-log in the examination of patents. Rumor has it that the Government may present shortly a plan to reduce substantially this back-log by, presumably, set forth a simplified process by which unopposed applications filed before 2014, which are not being examined, could be granted. Apparently, pharmaceutical applications would not be suitable to this enjoy this simplified process. Presumably, again, the system would have an opt-out clause and third parties would have the possibility to file oppositions. We will follow up this closely, as it would not be exempt of problems, even though the final goal is something long expected in the sector.
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).
Additionally, the SIPO has announced that it will develop its PPH programs. Among other things, the PPH requirements on some contents in the PCT International Work Products will be eased and a new PPH pilot program between China and Egypt will be launched.
Finally, the new Rules on TRAB Hearings in Trademark Review Cases issued by the China State Administration for Industry & Commerce recently came into effect. They will include the possibility to request a hearing, where cross-examination will be available, in a procedure which was, up until now, strictly written. However, the TRAB will have sole discretion to allow or reject such petition. It is too soon to evaluate how these measures will affect the trademark practice but they are expected to facilitate and increase the analysis in the prosecution of trademark applications.
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.
- A new EU certification mark will be introduced in October, which will allow for the certifying institutions to apply for EU-wide marks, submitting regulations governing their use.
- From October 1st, applicants seeking priority must submit their claims at the time of filing, instead of being afforded the 2 month post-filing timeframe.
- Disclaimers will no longer be able to disclaim elements of a trademark in order to overcome objections to its issuance.
On 8 June 2017, the Council of the European Union adopted the new regulation on cross-border content portability. This will allow for previously signed agreements for the viewing or dissemination of movies, series, music, games or sports will be allowed to continue without incurring any additional costs to the user. This is aimed at improving the EU's digital economy and providing equal content consumption rights to all consumers, regardless of their native state within the union. However, this regulation will only apply to paid online content (providers of free services will continue to have discretion as to whether to make their services portable or not).
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.
In relation to the (i) issue, the guidelines set out a more flexible, three-step test requiring examiners to properly construe the claim and identify the actual contribution, if the contribution lies only in mathematical method, business method or algorithm, deny the claim and, if the contribution lies in the field of computer program, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. In relation to the (ii), the guidelines indicate that the description must define the interaction between hardware features and the computer program and, similarly, any functional claim language must be described with reference to structure.
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.
Under the previous requirements, applicants were required to provide the following information when filing a trademark application in class 5: Scientific name of the product, trade name of the producer, pharmaceutical formula of the product, name of manufacturing company if not the applicant, and name of local distributor, if any. All of the above have been dropped and now are substitutable by way of submitting a home registration certificate legalized up to the Iraqi Consulate.
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.
Previously, the existing law only allowed complete transfer of ownership to foreign entities rather than licensing. This will allow Israeli companies to partially monetize their intellectual property, while still being eligible for further grants to further develop the same technological platform for other applications. All such transactions (licensing and sale) are subject to the prior approval of the IIA' s research committee and trigger repayment of the grants plus penalties calculated on the basis of various formulas. Whereas previously, payments to the IIA were due in one lump sum upon the transfer of ownership in the technology, the new directives allow for repayment pro rata to installments received from the licensee.
Also, the Israeli Patent Office recently announced some new guidelines relating, among others, to Uniformity of Invention, medical use claims, green applications and extensions of term to respond to office actions.
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.
Article 13 of the regulation marks an interesting difference between the consequences of submitting a withdrawal of the claim and the withdrawal of a proceeding. In this way, the withdrawal of the procedure generates that the resolutions issued during the procedure of the procedure are rendered ineffective. On the other hand, the withdrawal of the claim means that the resolution has the same effects as a resolution declaring the claim denied or unfounded.
Additionally, the Peruvian Electronic Gazette has been implemented, where applications will be published. Applicants/representatives will have to monitor the content of the Electronic Gazette and it will be presumed that every person is aware of the content of such publications. Errors in the electronic publication shall be requested to be amended within the term to file opposition (30 working days). Also, This publication decreases the cost of the publication and facilitates the access to the information regarding the administrative proceedings of registration.
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.
This three-month term is one of the differences between the Patents Act and the Unified Patent Court's Rules of Procedure, as the latter establishes that a protective letter is effective for six months, which is extendable for another six months if the party that filed the protective letter requests such an extension (Rule 207.9).
The Spanish Supreme Court issued a resolution a few months ago indicating that the denominative trademark "Toro" is valid and do not incur in any of the absolute prohibitions of the EU Trademark Regulations, even though bulls (toros) may be seen as an icon of Spain. The social use that may be done of a particular image of a "toro" does not render the term generic. However, that denominative trademark "Toro" cannot result in the cancellation of the trademark application "Badtoro", as the addition of the English word "Bad" creates a neologism which does not imply a risk of confusion of the consumers in the market. However, this fight is still not over as the EU Court has to resolve an appeal against the EUIPO decision not to grant the mix trademark "BadToro". According to the Supreme Court, there is no risk of contradiction between the two procedures since the appeal before the EUIPO relates to a mix sign, not a denominative one, which also takes into account the Osborne's mix trademark, which consists in the drawing of a bull, and which enjoys a wide-spread notoriety.
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.
Committing trade secret misappropriation beyond the Taiwan is a crime being publicly prosecuted under the current law. However, as the practice demonstrates, evidence collection and fact finding in the course of investigation of trade secret infringement case can be both difficult and time-consuming. It becomes even harder when the stolen secret is to be used abroad. Going forward, if a victim is able to withdraw the complaint against offenders who cooperate with the investigation, it may also provide an incentive for some suspects to reveal the truth and thus facilitates and advances the course of the criminal investigation.
Other implications in this new draft will include the ability of unrecognized foreign entities to file a complaint, the discretionary limitation of disclosure of trade secrets during the course of trial discovery and reciprocal treatment of Foreign Trade Secrets for countries or institutions that enter into a relevant bilateral treaty or agreement with the Taiwanese governing body and/or organization/institution.
The TIPO has also brought into effect, starting July 1st , a new process in evaluating the inventiveness of an application, indicating that if an expert, in view of the prior art, would have arrived at the claimed invention through logical analysis, inference or routine work and experimentation, the claimed invention is obvious and can be easily accomplished. Also, the TIPO has revised its guidelines in relation to post-grant patent amendments, aiming at providing clearer rules for determining whether a post-grant amendment substantially enlarges or alters the scope of the claims as issued.
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.
The first being the Copyright Act, which governs the culpability of ISP's and removes their burden, in addition to allowing for injunctions to be filed which force removal of content from the marketplace. The second consequence of the recent act is in reference to computer crime. Under the previous CCA, it was difficult to define the person or entity which was infringing on IP law with regard to dissemination of pirated or illegally obtained content. Under the new law, a plaintiff (with the approval of a digital economic minister), has the right to file an injunction for cessation of operation of the given site or online entity if any such material is found to be distributed.
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.
The new IP Law has five main sections (Trademark Protection, Geographical Signs and Traditional Product Names, Design Rights, Patent Rights and Common Procedures for the establishment and Operation of the Turkish Trademark and Patent Office). A few of the many changes that will be implemented are the following: a three year protection is conferred to unregistered designs as long as the other party was aware of the unregistered design and acted in bad faith and the removal of the non-substantive patent examination which was available before, by which the invention was provided with 7 years protection.
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,
with a retroactive effect for all new patent applications filed on or after February 13, 2017.
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,
which will enter into force with respect to Jordan on June 9, 2017.
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.
This requirement is based in article 9, fraction IX, of the already applicable Regulation of the Intellectual Property Law, which had not been applied in the past. However, this has been recently changed and this provision will be requested from now on in relation to assignment
agreements.
Argentina
May 04, 2017
Over the past months, two relevant drafts of regulations have been issued in
Argentina. The first one addresses IPS's liability and has received preliminary
approval by the Senate. The second is a draft of new data protection bill and has been
posted on the website of the Argentine Data Protection Agency.
The first law would
specifically address the liability of Internet Service Providers which, until now, was
only ruled by general Civil law damage principles. The draft, preliminarily approved by
the Senate, would surely provide legal certainty in the area. As it is now, it indicates
that the ISP's would only be liable if they fail to remove content having been required
to do so by a Court, indicating also that ISP's do not have a general obligation to
monitor potential infringements in their platform. The draft on Data Protection is
inspired on the EU General Data Protection Regulation that will come into effect in
2018 and addresses issues such as, among others: the recognition of individuals - not
companies - as data subjects, the introduction of new criteria to determine whether
Argentine law is applicable or rules for international transfers of personal data. The
draft on Data Protection is expected to be sent to the President later this year and
discussed by Congress in 2018.
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.
Should it be
approved by the Senate, the bill will incorporate a series of new principles in this
subject affecting the concept and requisites for consenting the use of personal data,
restricting the automated processing of data, creating a Personal Data Protection
Agency, regulating international data transfer and adopting certain security measures
as well as the requirement to report them. The bill would enter in force 13 months
after its publication, although it sets forth a 4-year period for previously existent
databases to adapt their practices to the new regulations.
The Chilean Patent and Trademark Office (INAPI) recently presented its IP
Development Strategy to stimulate research and development in the country. It
consists, essentially, in a battery of 60 proposals that can be viewed in the following
link: http://www.inapi.cl/portal/publicaciones/608/articles-9870_recurso_1.pdf
The above two developments and the recent creation of the Science and Technology
Ministry demonstrate the commitment of Chile to keep improving an already quite
sophisticated intellectual property system in Latin America.
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.
UAE
May 04, 2017
The UAE has approved a new law against commercial fraud and the importation of
counterfeit goods.
It is effective immediately from the date of publication and aims at strengthening the ability of intellectual property rights owners to enforce these rights in the UAE. The law defines
counterfeited goods as those "identical to or similar to the legally registered trademark" and increases the penalties for Commercial Fraud Offenses.
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.
The bill of law supports the adoption of the PCT by Uruguay and the project will now be analyzed and debated by the Parliament. It is not possible to predict if and when would it be approved, but we will monitor it and will inform you of any developments.
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.
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.
Oppositions may be filed by any interested party within 60 days from last publication
date in the Official Gazette and no proof of use can be requested by the applicant. If
use is to be contested, separate non-use cancellation proceedings must be initiated.
In addition to that, Saudi Arabia has increased again the official fees, in this particular
case those related to the recordal of assignment, license, mortgage, and limitations
of goods, amendment of mark, merger, change of name and change of address.
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.
On another matter, the Intellectual Property Office of Singapore is now accepting
Chinese as a language for PCT applications, becoming the second International
Search Authority (ISA) and International Preliminary Examining Authority (IPEA)
other than the Chinese Patent Office to conduct searches and examinations in
Chinese.
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).
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). Sincerely,
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).
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.
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.
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.
We hope you find it useful and please do not hesitate to contact us if you have any queries or require further information. In order to access this file, please click on the link bellow "
Complete bulletin in PDF".