Quarterly IP Law Update Q2 2017

Quarterly IP Law Update Q2 2017

PATENT LAW UPDATE

Cayman Islands (KY) (BRITISH OVERSEAS TERRITORIES)1: The Patents and Trade Marks (Amendment) Law 2016 is expected to come into force in the first half of 2017, and will maintainthe status quo for patents while paving the way for a new trademarks law. The Design Rights Registration Law 2016 allows owners of UK registered designs and registered Community designs the opportunity to extend their registered design rights to the Cayman Islands. However, the registration of designs with Registrar of Design Rights has to be through a registered agent in the Cayman Islands2.

Spain (ES): Spain’s new Law No. 24/2015 of July 24, 2015, on Patents became effective on April 1, 20173, with the following notable changes:

1) A request for examination is required either along with the application in Spain or within three months after the publication of the application, along with the required examination fee. Failure to submit the request and the fee within the time period will result in the withdrawl/abandonment of the application.
2) Within six months following the publication of the grant in the “Official Bulletin of Industrial Property,” any person may oppose the grant.
3) The applicant for a patent may file an administrative appeal against the decision to reject the patent application by the Spanish Patent and Trademark Office.
4) The Spanish Office of Patents and Trademarks will review requests for the SPC for medicines, and plant protection products, and extensions thereof, subject to payment of the fee. The request and the final decision will be published in the Official Bulletin of Industrial Property. The maintenance fee for the SPC set based on the duration of the certificate, may be made in one lump sum.
5) The patentee is obliged to exploit the patented invention either himself or person authorized by him through his execution in Spain or in the territory of a Member State of the World Trade Organization, so that such exploitation is sufficient to meet demand in the Spanish mark, within four years from the filing date of the patent application or three years from the date your grant is published in the Official Bulletin of Industrial Property. The burden of proof is upon the patentee that the invention is being worked.
6) An annuity may be paid with a surcharge of 25 percent within the first three months and 50 percent within the next three, up to a maximum of six months delay after the deadline for payment of the annuity.

Ecuador: Ecuador is a member of the Andean Community and is subject to supranational Decisions 486 (Intellectual Property), 345 (Plant Variety Rights), 351 (Copyrights) and 391 (Traditional Knowledge). However, the Organic Code for the Social Economy of Knowledge, Creativity and Innovation (INGENIOS Code) published in the Official Register on December 9, 2016. Under the INGENIOS Code4, the following changes are notable. Unpantable Subject Matter: new forms of a known substance, such as salts, esters, ethers, complexes, combinations and other derivatives; polymorphs, metabolites, pure forms, particle sizes, and isomers of a known substance; genetic resources containing biological diversity and agro-biodiversity. Patent Ownership: To receive patent royalties, inventors employed by corporations retain at least 25 percent of the patent ownership, while inventors employed by universities and research centers retain at least 40 percent of the patent ownership. Compulsory License may be granted from the third year of the patent grant or from the fourth year after the application for the license, if the patent has not been used or if this was suspended for more than one year (Working Requirement).

TRADEMARK LAW UPDATE

Turkey (TR): Effective on April 30, 2017, the Director General of the World Intellectual Property Organization (WIPO) has established the following new amounts, in Swiss francs, of the individual fee that is payable when Turkey is designated in an international application, in a designation subsequent to an international registration and in respect of the renewal of an international registration in which it has been designated5:

Application or Subsequent Designation – for one class of goods or services CHF 143 – for each additional class CHF 028

Renewal – independent of the number of classes CHF 140

Cayman Islands (KY): The Trade Marks Law, 2016 abolishes the extension of a trademark which had to be first registered in the UK prior to being extended to the Cayman Islands by providing a mechanism for the direct registration of trade marks in the Cayman Islands6.

Iran: Iran has launched a search engine for trademarks7. Once a trade mark application has been published in the Iranian Trade Mark Gazette, any interested party may, within 30 days after the publication date8.

Disclaimer9: Every effort has been made to verify the accuracy of items in the Quarterly IP Law Update. However, readers are urged to check independently on specific matters from their corresponding foreign agents. For further information or support, please contact the editor10.

1 British Overseas Territories And Crown Dependencies:
http://www.wipo.int/edocs/madrdocs/en/2015/madrid_2015_38.pdf
2 Cayman Islands: An IP Revolution Is Coming To The Cayman Islands:
http://www.mondaq.com/article.asp?articleid=573604&email_access=on&chk=916894&q=343290;
http://www.loebsmith.com/userfiles/files/Legal%20Insight%20-%20The%20New%20Cayman%20Islands%20Trademarks%20Protection%20Rules%20(2%20February%202017).pdf; http://www.caymanfinancialreview.com/2012/07/18/changes-to-patent-and-trade-marklaw-in-the-cayman-islands/
https://www.conyersdill.com/publicationfiles/
2017_03_CAY_Alert_An_IP_Revolution_is_coming_to_the_Cayman_Islands.pdf
3Is your organization ready for The New Patent Law?
http://www.clarkemodet.com/en/news/blog/2017/03/is-your-organization-ready-for-the-new-patentlaw.html#.WP6LDdcrJhE
Spain, Ley N° 24/2015, de 24 de julio, de Patentes,
http://www.wipo.int/wipolex/en/text.jsp?file_id=414370#LinkTarget_561

Article 39. Substantive Examination
A request for examination is required either along with the application in Spain or within three months after the publication of the application, along with the required examination fee. Failure to submit the request and the fee within the time period will result in the withdrawl/abandonment of the application.
Along with the request for substantive examination the applicant may submit comments to the report on the state of the art, the written opinion and the comments of third parties and modify the claims and the remaining application documents with subject to Article 48 (no new matter allowed).

Article 43. Oppositions
Within six months following the publication of the grant in the “Official Bulletin of Industrial Property,” any person may oppose the grant by any of the following reasons:
a) The claimed invention does not meet any requirements for patentability in Part II hereof.
b) His description is not sufficiently clear and complete for a person skilled in the art to carry.
c) The object of the patent granted exceeds the content of the application as filed.
Any amendments to claims or annulment resulting due to the opposition will be retroactive.

Article 44. Resources
The applicant for a patent may file an administrative appeal against the decision to reject the patent application by the Spanish Patent and Trademark Office. The patentee may modify the application subject to Article 48.

CHAPTER IV: Supplementary Protection Certificates (SPCs) for Medicinal and Plant Protection Products,
Articles 45-47
The Spanish Office of Patents and Trademarks will review requests for the SPC for medicines, and plant protection products, and extensions thereof, subject to payment of the fee. The request and the final decision will be published in the Official Bulletin of Industrial Property. The maintenance fee for the SPC set based on the duration of the certificate, may be made in one lump sum.

TITLE IX, Articles 90-101, Obligation to work and compulsory licenses
The patentee is obliged to exploit the patented invention either himself or person authorized by him through his execution in Spain or in the territory of a Member State of the World Trade Organization, so that such exploitation is sufficient to meet demand in the Spanish mark, within four years from the filing date of the patent application or three years from the date your grant is published in the Official Bulletin of Industrial Property. The burden of proof is upon the patentee that the invention is being worked.

Article 185. Fees
An annuity may be paid with a surcharge of 25 percent within the first three months and 50 percent within the next three, up to a maximum of six months delay after the deadline for payment of the annuity.

4Registro Ofi cial Nº 899 – Suplemento:
http://www.asambleanacional.gob.ec/sites/default/files/private/asambleanacional/filesasambleanacionalnameuid-29/Leyes%202013-2017/133-conocimiento/ro-cod-econ-conoc-899-sup-09-12-2016.pdf;
https://www.registroficial.gob.ec/
5 Madrid Protocol Concerning the International Registration of Marks:
http://www.wipo.int/edocs/madrdocs/en/2017/madrid_2017_7.pdf
6 Cayman Islands: An IP Revolution Is Coming To The Cayman Islands:
http://www.mondaq.com/article.asp?articleid=573604&email_access=on&chk=916894&q=343290
7 http://ip.ssaa.ir/BSigns/search.aspx : ممممم مم ممممم مم مممممم ممم ممممم مممم
8 http://www.mondaq.com/x/552260/Trademark/Opposition+Procedure+For+IRs+In+Iran
It is available only in Persian. However, webbrowser may provide English translation. The search tool provides limited information on registered trademarks.
http://iripo.ssaa.ir/Default.aspx?alias=iripo.ssaa.ir/en& and Opposition Procedure For IRs In Iran:
http://iripo.ssaa.ir/Default.aspx?tabid=4069&language=en-US
9 Disclaimer: Although every effort has been made to provide accurate information from reputable sources, the content of this law update is a general guide and CIP or the author is not responsible for inadvertent errors and/or any inaccuracies of the matter obtained from various resources cited therein. Specilist or registered agent’s advice should be sought about your specific circumstances and specific counry.
10 Dr. Rao Vepachedu at rao.vepachedu@cardinal-ip.com.

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