NEWS JANUARY 2015 - DECEMBER 2015
ALGERIA
November 16, 2015
Algeria has acceded to the Madrid Protocol for the International Registration of Marks. On July 31, 2015, the Government of the People's Democratic Republic of Algeria deposited with the Director General of WIPO its instrument of accession to the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
The Protocol will enter into force with respect to Algeria on October 31, 2015.
EUROPE
November 16, 2015
The European Parliament, European Council and European Commission have reached an agreement in relation to a new European Union trade mark reform package, which represent the most substantial change to EU trade mark law since the Community Trade Mark was introduced
These changes are aimed at providing a simpler registration system, with reduced fees for new applications and renewals, as well as more robust powers for TM owners to prevent the entering and circulation of counterfeit goods within the European Union. The new provisions should start to come into effect in the second quarter of 2016 and will then have to be transposed into national law in a period of three years.
ISRAEL
November 16, 2015
On July 13, 2015, a new Designs Bill passed its first reading in the Israeli Parliament - the Knesset.
The new Designs Law still needs to be enacted but it is intended to provide a new definition for "product" encompassing graphic symbols and typographic typefaces, set forth international novelty (compared to the current local novelty), confer protection to unregistered designs, establish a grace period and set forth some provisions for Israel's accession to The Hague Agreement.
CAMBODIA - TAIWAN
November 16, 2015
As a consequence of the agreement between the Intellectual Property Office of Singapore and the Cambodian Ministry of Industry, owners of granted Singaporean patents can now re-register their patents in Cambodia.
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THAILAND
November 16, 2015
Effective July 2015, the Thailand Patent Office is requiring to submit the following documents within 90 days from the filing date: PoA, Assignment document and, if applicable, a Statement of Applicant's Right to Apply for a Patent.
Previously, applicants were allowed to file two 90-day extension requests, followed by a final 30-day extension request for submitting such documents.
JAPAN
November 16, 2015
Pursuant to a direction of the Ministry of Agriculture of Japan (MAFF), protection for geographical indications is now possible in Japan.
It is aimed at protecting the name of regional brand products with high quality and reputation obtained through a singular production process and natural characteristics. So far, geographical indications were protected through the Regional Collective Trademark System under Japanese trademark law.
INDIA
November 16, 2015
The Indian Patent Office has released its Guidelines for Examination of Computer Related Inventions with the purpose of providing a more uniform and consistent guidelines for the examination of patent applications in this field. The guidelines are available in English on the IPO's website.
The following may be highlighted: "a mathematical or business method or a computer program per se or algorithms" is not patentable. Some guidance has been provided for the interpretation of this section: "For being considered patentable, the subject matter should involve either: (a) a novel hardware, or (b) a novel hardware with a novel computer program, or (c) a novel computer program with a known hardware, which goes beyond the normal interaction with such hardware and affects a change in the functionality and/or performance of the existing hardware".
"A computer program, when running on or loaded into a computer, going beyond the "normal" physical interactions between the software and the hardware on which it is run, and is capable of bringing further technical effect may not be considered as exclusion under these provisions".
COLOMBIA
November 16, 2015
The Colombian Patent Office is now conducting a review of patent applications shortly after they are filed, in order to verify if the application contains claims not allowed under their legislation - i.e.: method claims, second uses, Suisse type claims and others.
If they find that the application contains evident unacceptable claims, they are issuing an Official Action requesting the applicant to amend such claims, giving the applicant the chance to modify the claiming chapter by deleting those claims not allowed - without the payment of voluntary modification. Likewise, when recording the answer to the official action, applicant is allowed to pay the respective official taxes for the exceeding claims.
AUSTRALIA
November 16, 2015
The High Court of Australia in the Myriad Genetics appeal has decided that an isolated nucleic acid sequence, coding for a BRCA1 protein,
with specific variations from the norm that are indicative of susceptibility to breast cancer and ovarian cancer, is not a patentable invention within the meaning of the Australian Patents Act.
CHINA
November 16, 2015
China announced the reduction of certain administrative fees related to IP matters. In particular, fees for filing a TM application, for designation over 10 items of goods or services per class as well as the filing fee for each additional item.
Also, fees for Computer software copyright registration as well as the new plant variety annuities after the sixth year enjoy certain reduction.
SPAIN
November 16, 2015
Changes in the Criminal Code in Spain are effective as of July 1st, 2015. These changes are aimed at broadening the scope of criminal offences against IP rights, affecting, in particular, fight against counterfeiters and street sellers.
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ASIA - PACIFIC
November 16, 2015
On October 4th, 2015, Ministers of the mentioned 12 countries signed this agreement which, among other things, intends to create a platform for regional economic integration, reduce barriers and facilitate the development of production and supply chains.
Chapter 18 of the TPP Agreement contains provisions on IP rights. It implements a number of measures that are aimed at providing a more robust protection for intellectual property rights as well as to promote cooperation between its members in relation to the protection and enforcement of throughout the region.
GAMBIA
November 16, 2015
The Government of The Gambia deposited with the Director General of WIPO its instrument of accession to the Madrid Protocol.
The Madrid Protocol will enter into force, with respect to The Gambia, on December 18, 2015.
KUWAIT
November 16, 2015
The Ministry of Commerce and Industry, Patents and Trademarks in Kuwait has verbally announced that the official fees for trademarks registration will be substantially.
New fees are expected to be applicable for all new applications filed after December 21, 2015 although it may also be retroactively applied for pending trademark applications regarding their publication and registration.
WIPO
July 30, 2015
WIPO launched the multilingual interface of ePCT, marking a major expansion of its global gateway for online filing and management of international patent applications.
Nine More Languages Now Supported in International Patent Application Filing and Management. The ePCT user interface is now available in Arabic, Chinese, French, German, Japanese, Korean, Portuguese, Russian and Spanish.
LEBANON
July 30, 2015
The Lebanese Ministry of Economy & Trade recently issued new a memorandum requiring that all powers of attorney of foreign applicants must be legalized by the Lebanese Consulate abroad.
The ruling affects all IP matters related to Trademarks, Patents and Industrial Designs (including renewals, changes of name, address and assignments).
UAE
July 30, 2015
On 29 May 2015, the announced increase in Official Fees comes into effect. Pursuant to Ministerial Resolution no. 9 of 2015, the official fees for trademark matters have doubled almost across the board in comparison with their current level.
The increase will also affect patent filings and title updates but annuity maintenance fees will not be subject to any change.
CHINA
July 30, 2015
China's State Administration for Industry and Commerce finally has released its guidelines on the application of the PRC Anti-Monopoly Law ("AML") to intellectual property rights ("Guidelines").
The Guidelines will come into force on August 1, 2015. Among other things, it rules on safe harbor for technology agreements, it prohibits specific contractual clauses, it includes a list of conducts that are prohibited for patent pools with a dominant position and contain specific provisions dealing with the standard essential patents context.
BRAZIL
July 30, 2015
The draft rules on patentable subject matter, patentability requirements and their examination by the INPI per se, with specific provisions in relation to novelty,
inventive activity, industrial application, as well as definition of prior art and the person skilled in the art, non-patentable subject matter and Markush formulas. These guidelines are subject to public consultation until May 14, 2015.
KAZAKHSTAN
July 30, 2015
The IP legal framework was amended on 7 April 2015, coming into effect on 20 April 2015.
This Law introduced amendments regarding exhaustion of rights and parallel import, it simplifies the process to register the assignment and license of trademarks, reduces the timing for trademark registration and changes the list of absolute grounds to reject a trademark registration.
QATAR
July 30, 2015
The Qatar IP Office stated that annuity fees must be paid along with the filing fees for all new PCT patent applications. Annuities shall be calculated as of the International filing date and not the actual filing date in Qatar.
Consequently, in addition to the filling fees, the 2nd and, if applicable, the 3rd annuity fees will need to be paid at the time of filing the national application.
VENEZUELA
July 30, 2015
On May 5, 2015, the Venezuelan PTO published the new increased fees for all IP matters in Venezuela.
The new increased fees are exorbitant and the local association of Industrial Property Agents filed an appeal with the Supreme Court hoping to block the increase in official Fees. As of May 28, 2015, foreign applicants/owners will have to pay such fees in US Dollars directly to the PTO's account.
TAIWAN
July 30, 2015
As of April 1st, 2015, the TIPO accepts requests for deferment of substantive examination of an invention patent application at the same time of requesting such examination or thereafter but, in any case, within 3 years of the application filing
For applications which claim priority, the first date for calculation of this time limit is the date on which the application concerned is filed with the TIPO.
CHINA - SINGAPORE
July 30, 2015
On 18 May 2015, China and Singapore signed a Memorandum of Understanding on trade mark cooperation enhancing exchanges on trade mark registration, examination practices, protection and enforcement.
Among other things, pursuant to this memorandum Singapore and China will exchange information and best practices related to trade mark registration and protection, develop capacity-building activities such as training on the examination of trade marks, oppositions, and dispute resolution, proceedings, Facilitate exchanges of IP officials and experts and conduct joint activities such as conferences on developments in the field of trade mark.
BRITISH VIRGIN ISLANDS
July 30, 2015
A new Trade Marks Act comes into force on 1 September 2015. Among other things, a new scale of official fees will be introduced
and the present "dual" registration system, which permitted an application to be filed independently or based on a UK registration, will be omitted.
EGYPT - JAPAN
July 30, 2015
Egypt and Japan began a two-year PPH agreement pursuant to which applications accepted to be granted in Japan may be subject to an accelerated examination in Egypt if the applicants request it.
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PHILLIPINES - KOREA
July 30, 2015
The Intellectual Property Office of the Philippines (IPOP) and the Korean Intellectual Property Office (KIPO) have started a 2 year pilot Patent Prosecution Highway (PPH) program.
The PPH allows applicants to a fast-track examination by using the examination conducted by the office or vice versa.
AUSTRALIA - CHINA
July 30, 2015
The Governments of Australia and China signed on June 17th, 2015, signed a Free Trade agreement with a number of IP implications.
Among other things, both countries agree to cooperate to protect registered trademarks as well as collective marks or marks that acquire protection through use and applicants will be provided with the opportunity to amend or correct applications.
WIPO
July 30, 2015
Effective July 1st, 2015, a requirement has been introduced, for applicants making an express request for early national phase entry, to file any request for the restoration of the right of priority at the designated or elected Office...
within one month from the date of receipt of the request for early national phase entry (rather than one month from the expiration of the normal period for entering the national phase);
KOREA - TAIWAN
July 30, 2015
Under the PPH Program, if one of the claims of an invention application is determined to be allowable in either Patent Office,
the application will be eligible for accelerated examination in the counterpart Office. In accordance to this memorandum, the applicability of PPH does not limit to the scenario where office actions from the Office of First Filing should be issued prior to those from the Office of Second Filing. Additionally, both offices will also exchange priority documents by electronic means.
JAPAN - TAIWAN
July 30, 2015
Japan and Taiwan agreed on a Cooperative Program which serves the purpose of saving patent applicants - redundant efforts to deposit multiple duplicates of the biological materials, or microorganisms,
in each respective country where the application is filed. The Guidelines provide a procedural standard for a series of measures for depositing biological materials under the Cooperative Program.
SINGAPORE
July 30, 2015
Following the appointment, at the 46th session of the Assembly of the PCT Union which was held in September 2014, of the Intellectual Property Office of Singapore (IPOS) as International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the PCT
(see PCT Newsletter No. 10/2014), the Office has notified WIPO that it will begin operating as ISA and IPEA with effect from 1 September 2015. Furthermore, it will also act as an Authority specified for supplementary search (SISA).
WIPO
July 30, 2015
On 6 July 2015, the Estonian Patent Office and the German Patent and Trade Mark Office joined the Global PPH (GPPH), bringing the number of Offices that have signed up to the pilot to 21. It is recalled that under this pilot, it is possible for a request for accelerated processing to be made at any participating office based on work products
(including, where applicable, a PCT written opinion from either the ISA or the IPEA, or an international preliminary report on patentability (IPRP) (Chapter II)), from any one of the other participating offices, provided that at least one claim has been found to be patentable by the office of earlier examination, and that any other applicable eligibility criteria are met. The pilot uses a single set of qualifying requirements and aims to simplify and improve the existing PPH network to make it more accessible to users.
ARGENTINA
July 30, 2015
The Argentine Patent and Trademark Office has increased the official fees. A first increase will become effective on August 8, 2015, while a second increase is scheduled to become effective on October 1, 2015. Here follows a list of the current and future official charges for the main items. Kindly note that the specific amounts may vary depending on the actual rate of exchange
Item Current Aug 8, 2015 Oct 1, 2015
Trademark Application USD 65 USD 75 USD 83
Trademark Renewal USD 82 USD 94 USD 104
Trademark Opposition USD 52 USD 60 USD 67
Design Application USD 65 USD 75 USD 83
Design Renewal USD 65 USD 75 USD 83
Basic Patent Application
- up to 10 claims USD 196 USD 225 USD 248
- each claim in excess of 10 USD 9 USD 10 USD 11
Expedited Publication USD 33 USD 38 USD 41
Substantive examination request
- up to 10 claims USD 163 USD 188 USD 207
- each claim in excess of 10 USD 9 USD 10 USD 11
Annuities 1-3 (each) USD 65 USD 75 USD 83
Annuities 4-6 (each) USD 163 USD 188 USD 208
Annuities 7-20 (each) USD 326 USD 375 USD 413
EUROPE
July 30, 2015
The EPO has now answered this question with an announcement on 24 June 2015 that unitary patent renewal fees will be set using the so-called 'Top 4' fee schedule, which will be reviewed in four years' time.
It seems reasonable to expect that the fee schedule will increase ahead of inflation over the next decade as more countries joint the system. A detailed analysis of renewal costs needs to be made to evaluate the potential costs, depending on the number of countries interesting for the applicant, with the corresponding risks of using the unitary system.
ARGENTINA
April 17, 2015
The new guidelines published in 2012 keep on putting obstacles and limitations to the patentability of pharmaceutical products. These guidelines are subject to revision of the competent Courts.
As of today, they contain provisions such as the following: A polymorph is not an invention but rather a property of the corresponding substance; when the molecular structure of a racemic compound is revealed, also its enantiomers are revealed for an expert in the art; the disclosure of the basic formula of compounds described through Markush formula equals to the disclosure of each compound resulting of the substitution of the radicals; a compound described through a Markush formula will have to be exemplified in the specification for it to be protected; there will be no selection inventions even if an element of the previously described group provides superior properties.
AUSTRALIA
April 17, 2015
The Australian Patent Office announces that it is now in a position to withdraw its notification of incompatibility under Section 703(f) of the Administrative Instructions (in relation to filing requirements and the basic common standard as to the means of transmittal),
with effect from 13 February 2015
CAMBODIA
April 17, 2015
On 20 January 2015, the Intellectual Property Office of Singapore and Cambodia's Ministry of Industry signed a Memorandum of Understanding according to which patent search and examination reports from IPOS will be recognized in Cambodia.
The MOU aims at facilitating the process for obtaining protection in Cambodia, although details of the work procedures between IPOS and MIH are not yet available.
CHINA
April 17, 2015
Three specialized IP courts in Beijing, Shanghai and Guangzhou have become operational in China. The new IP courts will serve as the court of first instance for, among others, (1) technically complex civil and administrative patents cases, technology secrets, computer software,
(2) administrative cases related to copyright, trade mark and unfair competition conducted by departments of the State Council or local people?s governments at county level or above, and (3) civil cases involving the recognition of well-known trademarks. It is expected that this specialization will quickly increase the effectiveness of the legal system and the Chinese IP environment in general.
COSTA RICA
April 17, 2015
Until recently, the Patent Office was not enforcing the provision in Costa Rican Patent Law which set forth a deadline of three months as from the notification of favorable examination to pay the granting fees.
After serving the favorable notice, no deadline was applied. Going forward, examiners will now enforce the mentioned provision and will require payment of granting fees within a period of three months. This practice is expected to be applied to applications which have already received a favorable report but whose granting fees have not been paid.
EUROPE
April 17, 2015
The Court of Justice of the European Union issued a resolution providing some clarification regarding the meaning of human embryo used in the Biotech Directive. It concludes that an organism which is incapable of developing into a human being does not constitute a human embryo within the meaning of the Biotech Directive. Formerly, the European Court of Justice (C 34/10) sustained that the concept of "human embryo" includes unfertilized human ova whose division and further development have been stimulated by parthenogenesis, based on the fact that such ova are capable of commencing the process of development into a human being.
In the ECJ´s resolution it is held that in order to be considered a human embryo, an unfertilized human ovum must have the inherent capacity of developing into a human being. Consequently, the mere fact that a parthenogenetically activated human ovum can commence a process of development is insufficient for it to be regarded as a human embryo.
INDIA
April 17, 2015
On January 1st, the Indian Patent Office released a notice announcing the enforcement of the amendments to the Indian rules on designs.
These amendments basically affect the official fee structure and in certain administrative functions, introducing as well a new type of entity for calculation of applicable fees.
ISRAEL
April 17, 2015
The Israeli Patent Office has issued a Circular which aims at providing clarity with regards to the possibility of registering shapes of objects and containers either as trademarks and/or as designs.
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JAPAN
April 17, 2015
As of 1 April 2015, Japanese IP laws were amended. Among other things, Patent Law will (1) adopt a post grant opposition system,
2) non-traditional marks including sounds, moving marks, holograms, colors will be protected and (3) the abandonment of an IP right may be avoided for a legitimate reason, even when a critical deadline has passed.
MEXICO
April 17, 2015
Since 9 February 2015, new guidelines apply in Mexico for the approval and renewal of Biologics.
The Mexican Official Standard Rule NOM-257-SSA1-2014 for Biologics entered into effect. In addition to reinforce those provisions already existed in the Mexican Law to guarantee safety, efficacy and quality of biologics, it confers to the Evaluation Subcommittee on Biotechnological Products the authority to evaluate the data related to clinical trials, approval or renewal of innovator biologics and to evaluate the characterization of biologics as innovators, reference or bioequivalent products.
EUROPE
April 17, 2015
In case C-577/13 the ECJ has resolved that when a basic patent claims a product comprising an active ingredient which is the sole-subject matter of the invention, it is not possible to obtain a second SPC conferring protection to a combination of that active ingredient and another substance which is not novel.
Based on this consideration, the ECJ did not answer the questions referred for a preliminary ruling related to the possibility of amending the claims after the grant of a patent and considers such amended claims to be the "basic patent in forcé" for the purposes of fulfilling the conditions set out in Article 3(a) of Regulation No. 469/2009
JAPAN
April 17, 2015
The Japan Patent Office withdraws certain notifications of incompatibility with its national law regarding the notification and effect on restoration of right of priority.
This means that the Japanese Office, as receiving or designated office, would consider requests for restoration of the right of priority and, if the necessary conditions are met, would accept such a decision made by another Office acting as receiving office (for international applications filed on or after 1 April 2015). Furthermore, the Japanese office has announced that it applies the "due care" criterion to requests for restoration of the right of priority, and no fees will be due for such requests.
MOROCCO
April 17, 2015
Applicants of European patents filed as of 1 March 2015 have the option of requesting validation in Morocco, which would have the same effect as a national Moroccan patent and whose enforcement will be subject to Moroccan patent law.
The formalities are similar to the validation in the other member states of the EPC and French or Arabic translation of the granted EP claims should be valid. European Patent applications will enjoy "provisional protection" in Morocco as with any other state party to the EPC.
NORWAY
April 17, 2015
On 26 September 2014, Norway joined the London Agreement. As a consequence, all European patents granted on or after 1 January 2015 will enjoy the provisions of the London Agreement pursuant to which a Norwegian translation of the specification will not be required as long as it is available in English (either because the patent has been granted in English or because an English translation has been provided).
However, a Norwegian translation of the claims is indeed required. It is relevant to note that these rules will not apply to patents granted before January 1st which are amended later on, within opposition, appeal or limitation proceedings.
SINGAPORE
April 17, 2015
The EPO and the IPO of Singapore signed an agreement to set forth a pilot program enabling an applicant whose claims have been determined to be patentable to have a corresponding application filed with a PPH partner office processed in an accelerated manner.
A PPH request can be based either on the latest PCT work product (WO-ISA or IPER) or on the national work product established during the processing of a national application or a PCT application that has entered the national phase before the EPO or IPOS, where this work product determines one or more claims to be patentable. The PPH pilot program commenced on 6 January 2015 and will end on 5 January 2018.
SAUDI ARABIA
April 17, 2015
As a consequence of the Saudi Patent Office becoming a Receiving Office, international applications may be filed at the using WIPO's ePCT filing system.
The SPO received the first PCT national stage entries on 3 February 2015. The requirements, annuity due dates, and fees are the same as for national filings.
JAPAN
April 17, 2015
The United States of America and Japan have joined the Hague System for the International Registration of Industrial Designs, adding two of the world's biggest economies to a WIPO-administered registry that supports creators worldwide.
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CAMBODIA
April 17, 2015
The Madrid Protocol will enter into force, with respect to Zimbabwe, on 11 March 2015 and to Cambodia on 5 June 2015. With regard to Cambodia, said instrument of accession was accompanied by a declaration whereby the time limit of one year to notify a provisional
refusal of protection is replaced by 18 months, and a provisional refusal resulting from an opposition may be notified after the expiry of the 18 month time limit.