The Argentine Patent Office (National Institute of Industrial Property) has issued a new resolution N° 56/2016 through which the prosecution of local patent applications claiming priority of foreign applications could be speeded up if the corresponding foreign application has been granted. Please find attached a translation into English for your records.
After filing a request based on this resolution, the application will be granted if:
a) The scope of the claims of the application submitted in ARGENTINA is less than or equal to the scope of the claims of the corresponding foreign patent;
b) No conflictive prior art is found among the Argentinean Patent data base;
c) There are no foreign prior art found between the filing date in Argentina and the issuance date of the equivalent patent.
d) the subject matter claimed in the national patent application does not fall under the exceptions to patentability of the Argentinean patent law;
e) There are no oppositions submitted by third parties;
f) The foreign office that conducted the study of the equivalent patent applied the same standards of patentability requirements apply in Argentina.
It is also important to consider that this Resolution may be used only if the substantive examination of the application has not been started.
On June 9, 2016, Kuwait deposited its instrument of accession to the PCT, thus becoming the 149th Contracting State of the PCT, and on September 9, 2016, will become bound by the PCT. Consequently, any international application filed on or after September 9, 2016 will automatically include the designation of Kuwait. Also, because Kuwait will be bound by Chapter II of the PCT, it will automatically be elected in any demand filed in respect of an international application filed on or after September 9, 2016. Furthermore, nationals and residents of Kuwait will be entitled, as from September 9, 2016, to file international applications under the PCT.
In accordance with the provisions of the new patent law adopted by Montenegro on July 16, 2015, patent holders who acquired rights in Serbia and Montenegro by June 3, 2006 or in the Republic of Serbia by May 28, 2008 were allowed to revalidate their rights in Montenegro by filing a request to this effect within six months from August 6, 2015, the date of coming into force of this new law.
Patent offices receiving the highest number of applications in 2014 were China, with 928,177 filings, followed by the US (578,802), Japan (325,989), the Republic of Korea (210,292) and the European Patent Office (EPO, 152,662). If the current trend continues, China’s State Intellectual Property Office (SIPO) is set to become the first office to receive a million applications in a single year. China (+12.5%), the EPO (+3.2%), the Republic of Korea (+2.8%) and the US (+1.3%) saw growth in 2014. Japan recorded a 0.7% decline.
Innovators filed some 2.7 million patent applications to mark another worldwide annual rise in 2014, as application activity in China outstripped the combined total in its next-closest followers, the United States and Japan.
There has been a change in the time limit for entry into the national phase before the Commerce and Intellectual Property Office (CIPO) (Saint Vincent and the Grenadines) as a designated and elected Office. The time limit is now 31 months from the priority date.
On December 7, 2015, the Lao People’s Democratic Republic (Lao PDR) deposited its instrument of accession to the Madrid Protocol, making Lao PDR the 97th member of the Madrid System and the fifth country from the Association of Southeast Asian Nations (ASEAN) to join.
The Qatari Patent Office (QPTO) has decided to extend the payment of filing and annuity fees until 30 September 2015. The said decision applies to applications filed after the commencement of operations of the QPTO from 1 November 2012 through 31 December 2014.
A notification has been issued to owners of pending and registered trademarks with an allotted official number from 0001 to 5000. Trademark owners must re-submit the following documents for the purpose of updating the official files at the Registry:
(-) Photocopies of the official filing forms, which include copies of the application as filed, together with copies of any requests for renewal and/or any subsequent changes of ownership;
(-) Power of attorney, incorporating a verified Portuguese translation, legalized up to an Angolan Consul;
(-) A certificate of incorporation/extract from the Commercial Register with verified Portuguese translation legalised up to an Angolan Consul.
All documents are to be submitted by September 28, 2015. Failure to comply may lead to the invalidation of the trademark(s).
Indian PTO decided that entering the National Phase in India from a PCT application must be only done with the specification as published at WIPO during the International Phase. Amending the specification drawings or claims at the time of national entry is a “malpractice and a surreptitious action”.
The new Law on Patents harmonizes national patent legislation with the EU and the relevant international treaties. The new law regulates the enforcement of patent rights before the courts.
As from July 14, 2015, the National Institute of Industrial Property (Chile), in addition to the European Patent Office, the Spanish Patent and Trademark Office and the United States Patent and Trademark Office, as competent International Searching and Preliminary Examining Authority for international applications filed by nationals and residents of the Dominican Republic with the National Office of Industrial Property (or the International Bureau) as receiving Office.
On July 6, 2015, the Estonian Patent Office joined the Global Patent Prosecution Highway (GPPH) pilot, launched on January 6, 2014. The GPPH aims to simplify and improve the existing bilateral PPH system by allowing patent applicants to request accelerated examination at any of the participating offices if their claims have been found acceptable by one of the offices participating in the GPPH.
it is now possible to obtain registration of trademarks in Oman the name of individuals. It is necessary to provide a Trade License or Commercial Register or Certificate of Incorporation of any company wherein the name of the individual is listed therein as a partner or manager.
In accordance with the amendments to Korean patent prosecution procedures of July 29, 2015 public disclosures made by the inventor less than 12 months before the patent filing date will not be considered prior art. and the declaration requirements at filing to claim the grace period against the applicant's own public disclosure is no longer necessary.
A new Post-Grant Oppositions (PGO) system for patents has been introduced in Japan which came into effect from April 1, 2015. The PGO procedure will exist in parallel with the procedure for a Trial for Invalidity that will remain in force.
All power of attorney submissions for handling intellectual property related cases after April 10, 2015 must be legalized by the Lebanese Consulate. The said requirement will not affect applications filed before April 10, 2015. For all foreign companies the requirements of the power of attorney legalization up to a Lebanese consulate is effective on May 1, 2015.
Seychelles Industrial Property Act covers Patents, Utility Models, Industrial Designs, Integrated Circuits, Trademarks and Geographical Indications (combined in the same part), and Unfair Competition. The Act includes enforcement provisions for both civil and criminal enforcement.
The new regulations stipulate that renewal applications should be accompanied by the proof of local use of the mark in the year preceding the renewal deadline.
The new requirements for renewal of trademark/service mark registrations are as follows:
1) A simply signed Power of Attorney
2.The number and date of the registered trademark/service mark.
3) The name, address and nationality of the applicant.
4) Proof of use.
The proof of use from in the year preceding the renewal deadline must be filed with the renewal application.
Under the new trademark law, the Trademarks (Amendment) Act, 876 of 2014, a new definition of a registrable mark has been provided as well as new infringement measures.
Official Guideline DRPI-0004-2014 (dated October 23 2014, established new requirements for the filing of applications without a power of attorney. The use of this mechanism is subject to the presentation of a certificate of good standing of the company at issue, or of a life certificate or proper identification in the case of individuals.
On January 1, 2015, the Irani Trademark Office (ITMO) issued new regulations regarding powers of attorney and the commercial register.
The United States Patent and Trademark Office proceeded to reduce the official fees, as of January 17, 2015.
As from September 25, 2014, the Assembly of the Patent Cooperation Treaty (PCT) Union, appointed the Intellectual Property Office of Singapore (IPOS) as International Authority (ISA and IPEA) under the PCT patent system.
As from March 1, 2015 European patents can be validated in Morocco as national patents.
As from December 16, 2014, the Colombian PTO has declared the Chilean National Institute of Industrial Property (INAPI) as competent International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for international applications filed by Colombian nationals and residents with the SIC or the International Bureau as receiving office.
Use of trademarks is required in Uruguay as from January 1st, 2014.
The 'class heading covers all' approach has been abolished. As from January 1, 2015 the national trademark applicants listing class headings will have coverage only for those goods or services which unambiguously fall under the class headings, whereas some of the general designations under these headings will have to be specified or otherwise refused protection.
Applicants can request a one-month extension for submitting the Korean translation when they file a South Korean national phase application. They now have up to 32 months from the priority date to submit a Korean translation when entering the Korean national phase.
Recent amendments have been introduced in the Japanese Trademark Act, providing for registration of nontraditional marks, such as color and sound. Also, non-traditional trademarks are registrable through the Madrid Protocol system.
On September 2014, and due to continuing civil unrest, the Libyan Trademarks Office has been forced to close. The local PTO has suspended all of its operations and will not be accepting new trademark applications at this stage.
A new IP legislation of Seychelles ( Industrial Property Act, 2014) has been passed by the National Assembly on April 15, 2014. New trademark and patent regulations have been included as the country is trying to become a WTO member and also to comply with the Paris Convention, the PCT and WIPO Convention.
South Sudan separated from from Sudan in 2011 as a new independent country. The Ministry of Justice is now admitting trademark applications under the provisions of the Trademarks Act of 1969 currently in force in the neighboring Sudan. The Parliament of South Sudan is analysing a Trademark Act, and until
this is passed, fresh applications may be filed with the Ministry of Justice.
Any trademarks filed now will be enforceable when the new Law comes into force and the original filing date will be preserved.
Multiclass applications are not acceptable and separate applications are to be filed with respect to each class of goods or services. There is no provision for opposition and registration may be obtained within two to three months from filing.
European patent holders will be able to validate the legal effects of their European patents and applications on Tunisian territory, even though Tunisia is not an EPO member state. Validated European patent applications and patents will have the same legal effect as Tunisian national applications and patents, and will be subject only to Tunisian patent legislation.
In accordance with the new trademark law of May 1, 2014 the State Intellectual Property Office of the People's Republic of China accepts applications for registration of sound marks.
As from July 1, 2014, the revised Patent Examination Guidelines for Computer Software Inventions includes computer programs as statutory subject matter.
On August 1, 2014, the State Intellectual Property Office of the People's Republic of China (SIPO) commenced a two-year Patent Prosecution Highway (PPH) pilot programme with the Israeli Patent Office.
On May 14, 2014 the UK government passed the Intellectual Property Act 2014, including new provisions for Industrial Designs. This new law strengthen design protection through the introduction of criminal penalties for copying UK registered designs, helping designers enforce their rights and introduces a design rights opinions service with the aim of enabling more IP disputes to be settled without resorting to expensive and time-consuming litigation.
As from March 3, 2015, the Intellectual Property Office of the Philippines (IPOPHL) will reckon the annual fees for divisional applications from the publication date of the parent applications.
On March 21, 2014 the Russian Federation annexed Crimea to its territory. On July 22, 2014 Russia's President Vladimir Putin signed a law regulating IP protection on the territory of the Crimean Peninsula.
According to the law, Russia recognizes the exclusive rights to inventions, utility models, industrial designs, trademarks, service marks and appellations of origin that were originally registered in Ukraine and owned by the parties permanently residing or located in Crimea, provided that the rights are re-registered on the basis of applications submitted to the Russian PTO by IP right owners who had become citizens of the Russian Federation or by former Ukrainian legal entities that had been re-registered as legal entities in the Russian company register.
The United States Patent and Trademark Office (USPTO) has specified the Israel Patent Office (ILPO), in addition to the Australian Patent Office, the European Patent Office, the Federal Service for Intellectual Property (Rospatent) (Russian Federation), the Korean Intellectual Property Office and the United States Patent and Trademark Office, as competent International Searching (ISA) and Preliminary Examining Authority (IPEA) for certain international applications filed by nationals and residents of the United States of America with the USPTO as receiving Office, with effect from October 1, 2014.
The requirements as to who can act as agent before the Mexican Institute of Industrial Property as receiving Office and as designated (or elected) Office have been relaxed . From now on, any resident of Mexico can now act as agent.
The National Intellectual Property Center of Georgia (Sakpatenti) has specified the Austrian Patent Office, in addition to the European Patent Office, the Federal Service for Intellectual Property (Rospatent) (Russian Federation) and the United States Patent and Trademark Office, as competent International Searching (ISA) and Preliminary Examining Authority (IPEA) for international applications filed by nationals and residents of Georgia with the National Intellectual Property Center as receiving Office, with effect from May 12, 2014.
With effect from July 2, 2014, the Canadian Intellectual Property Office, in its capacity as receiving Office, no longer requires that an agent be appointed.
As we announced before, Lithuania will close its national route with effect from September 4, 2014. Applicants desiring protection in Lithuania will therefore only be able to enter the regional phase before the European Patent Office, noting that, since Lithuania became bound by the European Patent Convention (EPC) on December 1, 2004, international applications filed on or after that date automatically include the designation of Lithuania for a European patent.
The National Institute of Industrial Property (France), in its capacity as receiving Office,waives to submit either a separate power of attorney or a copy of a general power of attorney, with effect from June 2, 2014. Particular instances in which the Office continues to require that a power of attorney be submitted are, however, as follows:
(-) if the agent is a an IP attorney registered before the local PTO, an enterprise or a public institution contractually bound to the applicant, a specialized professional organization;
(-) in case of reasonable doubt regarding the agent's entitlement to act; (-) in the case of a common representative.
A power of attorney is always required where the agent or common representative submits any notice of withdrawal during the international phase.
In view of the recent changes in the Regulation governing Ethiopia, it is necessary to re-register all trademarks filed prior to July 7, 2006 by June 23, 2014.
Also, trademarks registered between July 7, 2006 and December 24, 2012 and due for renewal prior to June 23, 2014 do not need to be formally amended. However, for trademarks registered between July 7, 2006 and December 24, 2012 and due for renewal after June 23, 2014, a new certificate will have to be obtained, amending the previously issued 6-year renewal.
The Intellectual Property Office of Singapore (IPOS) has introduced new option for the settlement of Intellectual Property (IP) disputes through a direct collaboration with the World Intellectual Property Organization Arbitration and Mediation Center (WIPO AMC). This procedure will be cheaper and faster.
Under a totally new statutory regime there are many options for challenging the validity of a patent application or a patent granted on it. Relevant prior art can be brought to the attention of the New Zealand Commissioner of Patents.
As from April 1, 2014 it is necessary to file a legalized Power of Attorney (POA) together with a trademark application. Late filings are no longer available.
The 30-month time limits under PCT Article 22(1) and 39(1)(a) may be extended by up to 18 months, provided that the applicant pays the prescribed fee. The Office also notified the IB that certain other time limits may also be extended for periods of 6 or 18 months or longer, but only at the discretion of the Registrar.
As from July 1, 2014 a patent in Sweden can also be granted in English. All patent documents may be furnished in Swedish or in English. However, a translation of the claims into Swedish is required where a patent in English is sought. The claims in English are considered to be the original claims.
The Japan Patent Office has specified the cases where the transmittal fee, payable to it as receiving Office, is reduced: This fee is reduced by two thirds where the application is filed in Japanese by an individual, a small or medium-sized enterprise that has commenced business or been established less than ten years, or a micro enterprise. The Office in its capacity as designated (or elected) Office, has also notified the following information regarding reductions in the fee for request for examination: The fee for request for examination is reduced where an international search report has been established. Moreover, reductions are available to individuals, small and medium-sized enterprises, micro enterprises, academic institutions and certain other entities.
Any Italian agent whose name appears on a list maintained by the WIPO Office, any lawyer or attorney-at-law whose name appears in the respective professional roll can act as an agent.
The German Patent and Trade Mark Office has notified the International Bureau (IB) of a change concerning the types of national protection available in Germany via the PCT. Patents of addition are no longer available with effect from 1 April 2014.
The State Intellectual Property Office of the People’s Republic of China as designated (or elected) Office has removed the requirement for the furnishing of a translation of the international application in two copies.
Lithuania will close its national route with effect from September 4, 2014. Applicants desiring protection in Lithuania will therefore no longer be able to enter the national phase in that country; they will only be able to enter the regional phase before the European Patent Office.
The Industrial Property Office of Iran has specified, with effect from January 20, 2014, the European Patent Office and the Federal Service for Intellectual Property (Rospatent) (Russian Federation) as competent International Searching and Preliminary Examining Authorities for international applications filed by nationals and residents of the Islamic Republic of Iran with the Industrial Property Office as receiving Office.
There have been changes in the requirements as to who can act as agent before the Canadian Intellectual Property Office as designated (or elected) Office. Ads from February 2014, any person or firm whose name is entered on the Canadian register of patent agents can now act as such.
There is a new trademark act already in force that changes some basic concepts on trademarks.
In accordance with a new law passed in October 2013, the trademark law has been amended to make it mandatory for trademark owners to use their trademarks "publicly and effectively," under the risk of cancellation of the trademark registration for lack of use.
In accordance with the new procedures adopted for patent prosecution, the applicant must provide, in response to the Notice Prior to Examination, a list of relevant prior art and details of citations in corresponding applications in other countries.
As from January 1, 2014, the Portuguese National Institute of Industrial Property commenced a patent prosecution highway programme based on applications under the Patent Cooperation Treaty (PCT) with the Chinese State Intellectual Property Office.
The Korean Intellectual Property Office (KIPO) has recently announced changes to the Trademark Examination Guideline. TUnder these changes (went into effect on January 1, 2014) it is now possible to register two-letters trademarks and revised the standard for proving secondary meaning of a trademark among other decisions.
In accordance with a High Court decision methods of treating the human body by the administration of a therapeutic drug constitute patent-eligible subject matter in Australia.
The Brazilian PTO published in October 2013 Resolution N° 113/2013, stating that patent applications/registrations having two or more annuities due for payment will be shelved or extinct in a definitively manner, that is to say, without the possibility of restoration provided for in article 87 of the Brazilian IP Law.
The Trademark Registrar requests a legalized deed of assignment, merger, and change of name documents along with a sworn translation before accepting the recordal.
The Indian PTO introduced the QR Code(s) system to authenticate documents issued by the Intellectual Property Office, to be printed on the renewal certificates.
The Slovak IPO introduced the following online trademark submission requests: transfer, renewal, change of applicant or owner, opposition, revocation, and declaration of invalidity.
On November 27, 2013, Slovenia adopted an amendment to the Industrial Property Act regulating new time frames for filing the request for continuation of proceedings after missing a deadline.
The last amendments to the industrial design law in Montenegro increased the number of enforcement-related changes, providing new possibilities for the industrial design holders filing infringement lawsuits.
The United States House of Representatives passed in December 2013 the Innovation Act, a new patent reform bill to amend the America Invents Act and to check abusive patent troll litigation procedures.
Under the new rule, it is not necessary to file at least one claim with the application. Claims may be added after the filing date. Anyway all material in the claims must be supported by the specification. The new rules also allow an application to incorporate a previously-filed application by reference, instead of requiring a full specification.
Under the previous system abandoned patent applications and lapsed patents may be revived for a period of two years after the abandonment if the abandonment was unintentional. After that period on unavoidable basis may be used. The new rule permits revival anytime if the abandonment was unintentional.
On October 16, 2013 the European Patent Office (EPO) and the State Agency on Intellectual Property of the Republic of Moldova (AGEPI) signed an agreement under which applicants will be able to validate their European patent applications and EPO-granted patents in Moldova. Moldova is neither a contracting state nor an extension state to the European Patent Convention (EPC).
As from October 9, 2013 it is possible to file PCT applications in Iran. Accordingly, the Iranian Patent Office will accept any National Phase filings from any PCT applications filed after October 9, 2013. National phase applications must be filed within 30 months of the PCT application date.
As from October 2013, it is possible to file trademark applications online before the Saudi Arabia Trademark Office (SATMO). With this system the examination of applications is speeded up and it is now possible to monitor the status of your application online.
The Libyan Trade Mark Office (LTMO) was closed due to the national war from February 2011 to 14 April 2013. Now, the LTMO has confirmed that it is possible to file renewal applications for expired trademarks and renewals coming before the end of this year and those due in year 2014.
An applicant may request prioritized examination of an application where the applicant is over 60 years of age and the claims in the application are being infringed, or grant of patent is a condition for obtaining funding.
The extension of the patent term was created in relation to an approved medicinal or agricultural product where the patent could not be used after it was granted as a result of pharmaceutical or agricultural regulatory approval requirements. The regulatory approval applies only to the first regulatory approval for 'a new chemical entity'.
Effective October 15, 2013, the Indian Patent Office (IPO) becomes functioning as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA), under the Patent Cooperation Treaty (PCT).
On top of the the legalized power of attorney, when the opponent is a Corporation, it is now required a photocopy of certificate of incorporation, an extract from the commercial register, or a certificate issued by the Chamber of Commerce.
In the Kurdish Trademark Office (the second Trademark Authority in the country) any application filed before 25th of each month will be examined and published in the monthly trademarks Journal at the end of that month.
In order to harmonize their national legislation with EU requirements, Ukraine has established a new compulsory licensing system of pharmaceutical patents by allowing Ukrainian companies to produce such patented products.
The Eurasian Patent Organization (EAPO) has abolished the accelerated examination of patent applications as of March 1, 2013.
The Japan Patent Office (JPO) and the Department of Intellectual Property (DIP), the Ministry of Commerce, Kingdom of Thailand, agreed to commence a Patent Prosecution Highway (PPH) program on January 1, 2014.
The Republic of Tunisia deposited, on July 16, 2013, its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The Madrid Protocol will enter into force on October 16, 2013.
New Zealand has formally acceded to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. With this step the local PTO concludes the reclassification of trademarks to ensure that all trademarks are now classified according to the Nice Classification.
Among other changes. the amendment enables patent owners to request damages for infringement as from the publication of the application, provided that the granted patent has the same scope as the initially published application.
Legislative amendments recently passed in China increased infringer’s fines based on revenue from the illegal use of a trademark. There will be heavier fines for reoffenders.
While the Canadian Patent Office CIPO currently has Mottainai PPH agreements with the patent offices of Finland, Japan, Spain, the UK and the US and conventional PPH agreements with the patent offices of Denmark, Germany, Israel, and Korea, effective July 29, 2013, all of PPH agreements will adopt the Mottainai standards
Nowadays, there are two trademark offices currently operating in Iraq: the Trademark Directorate of Baghdad and another one established in the Kurdish region. Which one should we use?
The Brazilian Patent Office (INPI) published a new resolution that substantially modifies the procedure for obtaining a declaration on the “well-known” or famous status of a mark.
The Patents Act 2013 will replace the current legislation and will bring New Zealand patent law up to date in several respects, including the modernization of the processes for granting, among others.