08 Aug Quarterly IP Law Update Q3 2017
PATENT LAW UPDATE
RUSSIAN FEDERATION: The Hague Agreement is designed to facilitate the protection of industrial designs in multiple countries or regions by allowing applicants to file a single application in a single language (English, French or Spanish). The Hague Agreement was first adopted in 1925, as amended by the Geneva Act of July 2, 1999[1]. More than 50 states and inter- governmental organizations are members of the Geneva Act of the Hague Agreement, including the European Union, the African Intellectual Property Organisation, the United States, Japan, South Korea and the United Kingdom. The Russian Federation signed the Geneva Act on July 6, 1999 but did not ratify it until March 29, 2017, when the Russian Federation Council approved the Law on Ratification of the Geneva Act of the Hague Agreement. The law was signed by the Russian President on April 3 and will be effective October 1, 2017[2].
Russia requires substantive examination, and may refuse protection for industrial designs within 12 months from the date of publication of the international registration. The period of industrial design protection is 25 year, with the possibility of renewing every five-year.
INDIAN UNION: From 3rd July 2017 the patent certificates will be generated through an automated system after the patent is granted by the Controller and shall be made available on the official website and transmitted to the applicants concerned or their authorized patent agents at the email address on record. Applicants are advised to update on the e-filing portal with a valid email address.
Indian Patent Office is now available as a Receiving Office[3] and an International Searching Authority (ISA)[4].
Fee Indian Rupees (INR)
Search fee (Rule 16.1(a)) 10,000 (2,500 for an individual)
Additional fee (Rule 40.2(a)) 10,000 (2,500 for an individual)
Protest fee (Rule 40.2(e) and 68.3(e)) 4,000 (1,000 for an individual)
Late furnishing fee (Rule 13ter.1(c) and 13ter.2) 4,000 (1,000 for an individual)
The Indian Receiving Office requires an address for service in India, but there is no need for an agent. Electronic filing is available[5].
However, it should be noted that unless there is a bilateral agreement between the IPO and the USPTO regarding the IPO-ISA/IPEA, American inventors and applicants cannot avail the opportunity to use the IPO-ISA.
On 29 June 2017, the Ministry of Consumer Affairs, Food and Public Distribution of India has approved amendments to the Legal Metrology Packaged Commodities Rules, 2011 (PCR Amendments), effective from 1 January 2018. Medical devices such as stents, valves, orthopedic implants, syringes, tools for operations, etc., are declared as drugs under the Drugs and Cosmetics Act, 1940. The PCR Amendments mandatorily require drugs to display Maximum Retail Price (MRP) along with other declarations as required under the PCR.
IPO on Computer Related Inventions (CRIs): The IPO has issued revised guidelines for examination of CRIs on 30 June 2017 (Revised Guidelines), effective immediately. The Revised Guidelines do not expressly lay down any specific tests, indicators, or determinants on patentability of CRIs, but removed illustrative examples on non-patentable and patentable claims.
Reminder: The Indian patent applications shall be examined only on filing the request for substantive examination within 48 months from the priority date of the application or from the date of filing the application whichever is earlier. If the request is not filed the application shall be deemed to have been withdrawn by the applicant. Within 1 month from the date of the application publication or 1 month from the date of the request for examination whichever is later, the Controller refers the application and specification and other documents to the Examiner, who submits a report to the Controller ordinarily within one month but not exceeding 3 months from the date of reference of the application by the Controller, who would dispose of the report within one month from the date of receipt of such report and issue the first examination report – ordinarily within 6 months from the date of the request for the examination or from the date of publication whichever is later.
Technology and Innovation Support Center[6]: The WIPO Technology and Innovation Support Center (TISC) program provides innovators in developing countries with access to locally based, high quality technology information and related services, helping them to exploit their innovative potential and to create, protect, and manage their intellectual property (IP) rights. Over 500 TISCs operate worldwide. Services offered by TISCs may include:
- Access to online patent and non-patent (scientific and technical) resources and IP-related publications;
- Assistance in searching and retrieving technology information;
- Training in database search;
- On-demand searches (novelty, state-of-the-art and infringement);
- Monitoring technology and competitors;
- Basic information on industrial property laws, management and strategy, and technology commercialization and marketing.
The Department of Industrial Policy and Promotion (DIPP) of India and World Intellectual Property Organization (WIPO) have signed an agreement to establish Technology and Innovation Support Centers (TISC) and the Cell for IPR Promotion and Management (CIPAM) is designated as the National Focal point for the TISC national network.
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CYPRUS[7]: Amendments to the IP Box Regime in order to comply with the guidelines and requirements of the OECD. The new amendments bring the legislation in Cyprus on the taxation of Royalties (IP Box) in full compliance with OECD. Although the old IP box regime will continue to apply to Qualifying IP, until the end of June 2021, the amendments are effective as from 30th of June 2016. A Qualifying IP that was acquired directly or indirectly from a related person during the period from 2nd of January 2016 until 30th of June 2016.
PHILIPPINES[8]: The Patent Prosecution Highway (PPH) Pilot Program between the Intellectual Property Office of the Philippines (IPOPHL) and the European Patent Office (EPO) took effect on 01 July 2017. PPH leverages on the fast-track patent examination procedures already available in the IP Offices to allow applicants to obtain corresponding patents faster and more efficiently. The IPOPHL-EPO PPH Pilot Program replicates the participation conditions and requirements currently applied in PPH Programs operational worldwide, in particular the IP5 and the Global PPH (GPPH) Programs. It also reflects the PPH Global Principles developed within the framework of the PPH Working Group.
PATENT PROSECUTION HIGHWAY (PPH)[9]: A unified PPH Form has been adopted by 19 countries and regions including China, Europe, Sweden, Finland, Austria, Israel, Hungary, Spain, Portugal, Norway, Australia, the United States, Russia, Canada, Denmark, the United Kingdom, South Korea, Japan, and Egypt.
TRADEMARK LAW UPDATE
INDIA: Opposition Due Within 4 Months From The Publication Date
Trade Marks Act § 42[10]. Notice of Opposition. – (l) A notice of opposition to the registration of a trademark under sub-section (l) of section 21, with such particulars as specified in Rule 43, shall be filed in Form TM-0 within four months from the date of publication of the trademark journal in which the application for registration of the trademark was advertised or re advertised.
Counterstatement: Due Date Is 2 Months From The Notice Of Opposition
Trade Marks Act § 44 (1) The counterstatement required by sub-section (2) of section 21 shall be sent on Form TM-0 within two months from the receipt by the applicant of the copy of the notice of opposition from the Registrar and shall set out what facts, if any, alleged in the notice of opposition, are admitted by the applicant. A copy of the counterstatement shall be ordinarily served by the Registrar to the opponent within two months from the date of receipt of the same.
CAYMAN ISLANDS (KY)[11]: The Patent, Trademarks, and Design Rights Registration Laws adopted on December 19, 2016, effective from August 1, 2017, were published on May 26, 2017, liberating the Cayman Islands’ Trademark law from the UK/EU dependence. Under the new Trademarks Law, Cayman Islands’ TMs can be obtained directly from Cayman Islands. It is no longer necessary to register TMs in UK/EU to obtain Cayman Islands’ TMs.
Disclaimer[12]: 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 editor.
[1] The Geneva Act (1999) of the Hague Agreement Concerning the International Registration of Industrial Designs: http://www.wipo.int/edocs/pubdocs/en/designs/453/wipo_pub_453.pdf
[2] The Accession of the Russian Federation to the Geneva Act of the Hague Agreement http://www.wipo.int/edocs/mdocs/hague/en/h_sym_ge_14/h_sym_ge_14_ref_kiriy.pdf; Russia Ratifies Geneva Act Of Hague Agreement On Industrial Designs: https://www.petosevic.com/resources/news/2017/04/3690; Updates on documents signed http://en.kremlin.ru/acts/news/54183;
[3] Receiving Offices, INDIAN PATENT OFFICE: http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexc/ax_c_in.pdf
[4]International Searching Authorities, INDIAN PATENT OFFICE http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexd/ax_d_in.pdf
ISA/IPEA Agreement – IN/IB http://www.wipo.int/export/sites/www/pct/en/texts/agreements/ag_in.pdf
Filing international applications for patent under the Patent Cooperation Treaty http://www.ipindia.nic.in/writereaddata/images/pdf/pct-filing.pdf
[5] Receiving Offices, INDIAN PATENT OFFICE: http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexc/ax_c_in.pdf
[6]Technology and Innovation Support Center http://pib.nic.in/newsite/PrintRelease.aspx?relid=161624
[7] The new Cyprus IP Box Regime http://docs.wixstatic.com/ugd/25cbc7_d66d3aaa15ed466fbd20f01f266d70fb.pdf?utm_source=Mondaq&utm_medium=syndication&utm_campaign=inter-article-link
[8] IMPLEMENTATION OF THE PATENTPROSECUTION HIGHWAY (PPH) PILOTPROGRAMME BETWEEN THE INTELLECTUALPROPERTY OFFICE OF THE PHILIPPINES ANDTHE EUROPEAN PATENT OFFICE: http://www.ipophil.gov.ph/images/Patents/MemoCircularNo_17-007.pdf
[9] Unified PPH Request Form Adopted by 19 PPH Authorities: http://english.sipo.gov.cn/news/official/201707/t20170713_1312550.html
[10] GOVERNMENT OF INDIA MINISTRY OF COMMERCE AND INDUSTRY (DEPARTMENT OF INDUSTRIAL POLICY AND PROMOTION) Notification 6 March 2017: The Trade Marks Rules http://www.ipindia.nic.in/writereaddata/Portal/News/312_1_TRADE_MARKS_RULES_2017__English.pdf
India Announces New Trade Mark Rules http://www.mondaq.com/india/x/574446/Trademark/India+Announces+New+Trade+Mark+Rules
Revised Trade Mark Rules in India http://www.lexology.com/library/detail.aspx?g=84dc0c9f-bb59-4cc2-918c-ee76255ee182
[11] CAYMAN ISLANDS GAZETTE: http://www.gov.ky/portal/pls/portal/docs/1/12418495.PDF
[12] 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. Specialist or registered agent’s advice should be sought about your specific circumstances and specific country.
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