Quarterly IP Law Update Q4 2016

Quarterly IP Law Update Q4 2016

PATENT LAW UPDATE

Canada (CA)[1]: Effective 11 October 2016, Canadian patents will be issued 6 weeks after the payment of the final fee (issue fee) in the application. Therefore, applicants have only 6 weeks to file divisional applications after the payment of the issue fee.

Cambodia (Democratic Kampuchea, KH)[2]: The Kingdom of Cambodia (KH) acceded to the Patent Cooperation Treaty (PCT). Consequently, any international application filed on or after 8 December 2016 will automatically include the designation of KH.

Djibouti (DJ)[3]: Djibouti (DJ) acceded to the PCT. Consequently, any international application filed on or after 8 December 2016 will automatically include the designation of DJ.

Dominican Republic (DO)[4]: Effective 1 November 2016, ePCT-Filing with applicable fee reductions is available in DO, e.g., a reduction of USD 307 would be applied if the application is filed electronically (the request, description, claims and abstract in character coded format).

Indonesia (ID)[5]: Indonesia enacted a new patent law with sweeping changes effective 26 (or 28) August 2016*. All patent applications in Indonesia filed on or after the effective date will be processed under the new patent regime. Therefore, it is important to note the changes and the requirements for applications in Indonesia, e.g., petty patent, unpatentable subject matter such as second use and computer programs, disclosure obligations, and infringement exemptions.

India (IN)[6]: India introduced an expedited examination that requires the Indian Patent Office (IPO) to grant or finally reject a patent application within 18 months. A request for the expedited examination can be filed at the time of filing a patent application or within 48 months from the filing date of the application. Non-Indian and Non-Iranian patent applicants who do not qualify as start-ups and Indian and Iranian patent applicants who did not choose India as ISA or IPEA are not eligible to request the expedited examination.   However, the number of such requests per year are limited at the discretion of the IPO. For the year 2016, the IPO will accept a maximum of 1000 requests for the expedited examination under Rule 24C(13), submitted on or before 31 December 2016.

Kuwait (KR)[7]: Kuwait acceded to the PCT in 2016. Consequently, any international application filed on or after 9 September 2016 will automatically include the designation of Kuwait.

PCT[8]: The deadline for requesting supplementary international search has been extended from 19 to 22 months from the priority date, effective 1 July 2017.

Turkey[9]: The Turkish Patent Institute (TPI) has been recognized as an International Searching and Preliminary Examining Authority under the PCT (document PCT/A/48/4), effective from a future date yet to be determined.

TRADEMARK LAW UPDATE

Belarus (BY)[10]: Under the new trademark law in the Republic of Belarus effective 15 July 2016, trademark applicants must specify the International Classification of Goods and Services (the Nice Classification) in which the trademark is to be registered in their trademark applications.

Brunei Darussalam (BN)[11]: Brunei acceded to the Madrid Protocol for the International Registration of Marks as the 98th member of the Madrid System, effective 6 January 2017. Next year onwards, Brunei applicants can protect their trademarks in all the 114 territories of 98 members, by filing a single international application in one language and paying one set of fees in a single currency.

Cayman Islands (KY)[12]: The General Registry of the Cayman Islands prohibits advance payment of annuities, Practice Note No. 01/2016, effective August 1, 2016, requiring all trademark and patent annuity fee payments to be made in a fixed time period from January 1 through March 31 of the annuity due year, with a penalty applicable to fees paid after 31 March. As a result, it is important to pay annuities by March 31st, but not before January 1st.

Korea (KR)[13]: The Korean Intellectual Property Office (KIPO) announced a major revision of the South Korean Trademark Act effective 1 September 2016. The new provisions include, among many others, the following:

  • Legal standing no longer necessary to file a request for cancellation due to non-use of the trademark. Up to now, a party requesting cancellation due to the non-use of the trademark had to prove that he/she is doing business in the same field as the trademark owner or that he/she is owning an application which is similar to the challenged trademark. By eliminating these conditions, the law revision will make it easier for third parties to challenge unused marks.
  • Electronic use of trademarks accepted: According to the revised law, also the electronic use such as e.g. in e-commerce or other electronic services will be recognized as one of the possible types of trademark use
  • Elimination of the one year period during which registration of a new mark similar to an expunged mark is not permitted: According to the revised law, applicants no longer have to wait until the end of this period to submit their application for the desired

  Thailand (TH)[14]: In line with international standards, Thailand has implemented a comprehensive revision of its Trademark Act effective 28 July 2016. Some of the most important provisions are as follows:

  • Introduction of sound marks, three-dimensional marks and shape marks
  • Permission of trademark filings in multiple classes (previously only single class filings possible)
  • Abolition of requirement for a registration of a mark in association with another identical or similar mark of the same owner
  • Reduction of period for filing amendments, appeals or oppositions from previously 90 days to 60 days calculated from the day of receipt of related order from the Trademark Office
  • The increase of time period for paying registration fees from 30 to 60 days.
  • Introduction of a renewal grace period of six months from expiry date with a 20% surcharge
  • Flat fee for applications with more than six products

  The United States (US)[15]: Effective 14 January 2017, the amended rules pertinent to practice before the Trademark Trial and Appeal Board (TTAB) require all filings be made through ESTTA. The amended Rules of Practice in Trademark Cases include amendments to 37 CFR §§ 2.92-2.195.   Yemen (YE)[16]: Effective 6 June 2016, applicants must specify goods and services in the International Classification of Goods and Services (the Nice Classification) for which registration is sought in their trademark applications. Trademark applications with just class headings are no longer accepted.

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[17].

[1] Process for the issuance of patents: https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04121.html

[2] PCT News Letter: http://www.wipo.int/edocs/pctndocs/en/2016/pct_news_2016_9.pdf;

PCT Notification No. 210 Patent Cooperation Treaty (PCT): http://www.wipo.int/treaties/en/notifications/pct/treaty_pct_210.html

Evelyn instruments of accession to the Patent Cooperation Treaty (PCT):

http://www.cambodiaip.gov.kh/NewsDetail.aspx?id=110038;

http://www.wipo.int/members/en/contact.jsp?country_id=90; http://www.cambodiaip.gov.kh/

[3] Djibouti’s accession to the PCT: http://www.wipo.int/pct/en/new_pct_contracting_states.html;

PCT Applicant’s Guide – International Phase – Annex B1

http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexb1/ax_b_dj.pdf

[4] NATIONAL OFFICE OF INDUSTRIAL PROPERTY (DOMINICAN REPUBLIC) DO:

http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexc/ax_c_do.pdf

[5] PCT Applicant’s Guide – National Phase – National Chapter – ID; DIRECTORATE GENERAL OF INTELLECTUAL PROPERTY (INDONESIA) ID: http://www.wipo.int/pct/guide/en/gdvol2/annexes/id.pdf

*If the law was signed by the president on 26 August 2016, the law became effective on that day. Consult with your Indonesian patent attorney/agent for the correct effective date.

[6] Public Notice: http://www.ipindia.nic.in/writereaddata/Portal/News/240_1_publicNotice_14June2016.pdf

Patents (Amendment) Rules 2016:

http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_42_1_Patent__Amendment_Rules_2016_16May2016.pdf

[7] Kuwait officially joins the PCT:

http://www.epo.org/searching-for-patents/helpful-resources/asian/asia-updates/2016/20162206.html

PCT Newsletter: New PCT Contracting State: Kuwait (country code: KW):

http://www.wipo.int/edocs/pctndocs/en/2016/pct_news_2016_6.pdf

[8] PCT Newsletter: http://www.wipo.int/edocs/pctndocs/en/2016/pct_news_2016_5.pdf

[9] APPOINTMENT OF THE TURKISH PATENT INSTITUTE AS AN INTERNATIONAL SEARCHING AND PRELIMINARY EXAMINING AUTHORITY UNDER THE PCT: http://www.wipo.int/edocs/mdocs/pct/en/pct_ctc_29/pct_ctc_29_2.pdf

[10] INTELLECTUAL PROPERTY NEWS: http://www.msp.ua/news/belarus-trademark-law-amendments.html

List of Goods and Services in Class Order: http://web2.wipo.int/classifications/nice/nicepub/en/fr/edition-20160101/taxonomy/

Goods and services: https://euipo.europa.eu/ohimportal/en/goods-and-services

[11]Brunei Darussalam Joins the Madrid System:

http://www.wipo.int/madrid/en/news/2016/news_0020.html

[12] Important Changes Regarding Annual Fee Payment in the Cayman Islands:

http://www.caribbean-ip.com/important-changes-regarding-annual-fee-payments-in-the-cayman-islands.html

[13] Korea: Amended South Korean Trademark Act to enter into force in September:

http://www.epo.org/searching-for-patents/helpful-resources/asian/asia-updates/2016/20160812.html:

http://www.kipo.go.kr/kpo/user.tdf?a=user.ip_info.amend_law.BoardApp&board_id=amend_law&catmenu=m04_01_02

[14] The Royal Gazette dated 29 April 2016:

http://app-thca.krisdika.go.th/Naturesig/CheckSig?whichLaw=law2&folderName=%a447&lawPath=%a447-20-9999-update;

(https://translate.google.com/translate?sl=auto&tl=en&js=y&prev=_t&hl=en&ie=UTF-8&u=http%3A%2F%2Fapp-thca.krisdika.go.th%2FNaturesig%2FCheckSig%3FwhichLaw%3Dlaw2%26folderName%3D%25a447%26lawPath%3D%25a447-20-9999-update&edit-text=)

[15]37 CFR Part 2 Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice   https://www.uspto.gov/sites/default/files/documents/81%20FR%2069950.pdf   [16] YEMEN: Use of Class Headings in Trademark Applications Discontinued: http://www.inta.org/INTABulletin/Pages/Yemen_7112.aspx

[17] Dr. Rao Vepachedu at rao.vepachedu@cardinal-ip.com

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