E-Pat
Newsletter
March 2006
This E-Pat Newsletter will quartely keep you up-to-date about worldwide patent law.
CHILE – December 2005: New Industrial Property Law
MALTA – December 2005: Patent Renewal Fees amended
OMAN – December 2005: Patent Applications accepted
GREECE – January 2006: Reduction of Officials Fees
ITALY – January 2006: Finance Act 2006 – Abolition of taxes on patents
WIPO – January 2006: 8th Edition of the IPC and PCT Regulations amendments
CANADA – February 2006: Time limited window of one year following The Dutch Industries case
MACEDONIA – March 2003: Hague Agreement
CHILE – December 2005: New Industrial Property Law
A new Industrial Property Law came into force in Chile on 1 December 2005, which harmonizes the Chilean legislation with the Agreements on Trade Related Aspects of Industrials Property Rights (TRIPS). This new law which modifies the present law N°19.039 on Industrial Property was published on 11 March 2005, in the Chilean Official Gazette.
In general terms, the new Law:
- extends its protection to objects not recognized in the former code
- amends the protection statute for existing industrial privileges
- awards improved protection tools to owners affected by infringements to their rights
- expedites the procedure for the obtainment of an Industrial Privilege
Regarding
Patents, the main changes are:
- the increase
of the duration of protection from 15 years to 20 years.
- annuities are now payable for consecutive ten-yearly periods. Once
the patent has been granted, an additional payment of two monthly tax
units for the first 10 years of grant of the patent must be paid.
The
same amounts must be paid to keep the protection in force for the remaining
10 years.
- revalidation
of patents is no longer applicable.
- the term to oppose an patent application has been reduced from 60
days to 45 days.
- new provision prohibiting the patenting of essentially biological
processes for the production of plants and animals, except micro-biological
processes.
The
possibility of patenting a new use of known articles, objects or elements
has been restricted.
- integrated
circuits: This entirely new matter is regulated in the law and defines
it as the tri-dimensional disposition of elements, expressed in any
shape and design for its manufacture, having an electronic function
on which the elements, at least one of them, should be active and some
or all the interconnections are an integral part of the body or the
surface of a part of a material. To be protected they have to be original
and different from what is known.
The term of protection is of 10 years counted from the filing of the
application or the first commercial exploitation anywhere in the world.
The application can be filed before the commercial exploitation of the
integrated circuit or within the two years following the date of public
exploitation.
All patents granted after the 1st January 2000 until the entry into force of this law (1 December 2005) would be considered as having a term of 20 years counted from the date of the filing of the corresponding application, unless the term of protection is shorter than the one granted under the present law, in which case the latter will prevail.
MALTA – December 2005: Patent Renewal Fees amended
On 16 December 2005, an amendment on the payment of the patent renewal fees has been published. However, this amendment is retrospectively effective from 1 January 2005.
According to this new provision, the patent annuities are payable as from the third year from the date of filing. A grace period of 6 months from the due date is allowed for late payment.
Before the entry into force of this amendment, the patent annuities were payable as from the fifth year from the date of filing. A grace period of 6 months was also allowed for late payment.
OMAN – December 2005: Patent Applications accepted
Since December 2005, the Omani Ministry of Commerce and Industry began accepting filing of patent applications. This filing became possible due to the issuance of the schedule of official charges for patent services rendered by the Ministry.
The filing requirements are:
1.
A power of attorney executed by the applicant, duly notarized and legalized
up to the Omani Consulate.
2. A certified copy of the certificate of incorporation or an Extract
from the Commercial register of the applicant company duly legalized.
3. A deed of Assignment executed by the inventor(s), assigning their
patent rights to the applicant, also notarized and legalized up to Consulate
of Oman.
4. Certified copy of Priority documents. If the documents are not in
English, a simple English translation is required.
5. An abstract of the invention for the purpose of the publication of
the invention in the Official Gazette of no more than 200 words showing
the inventor's name, address and nationality, brief
description of the invention and claims, the technical field, the drawings,
if any and how to solve problems that may occurred.
6. Detailed description of the invention in English and Arabic showing
the following:
• Title of the invention
• Technical field
• Technical background
• Disclosure of the invention
• Description of drawings
• Detailed description of the invention
• Method of industrial application of invention
• Claims
• Abstract of invention
• Drawings, if any
The above documents can be filed within 3 months from the date of filing.
The patent protection is valid for twenty years as of the date of grant. The invention shall also be protected as of the date of filing the patent application, to the date of the patent grant.
The opposition period is 60 days from the publication of the abstract in the Official Gazette.
The annuities are payable from the second year of the patent life from the Registration date. No Grace period for late payment of the renewal fees is allowed.
Priority can be claimed under Paris convention provided that the application filed in Oman within twelve (12) months from the first filing.
After three years of granting the patent of invention, a compulsory license can be requested for any of the following reasons:
1.
Non working of a patent in a serious and effective manner during three
years of the patent grant.
2. Cease of exploiting the patent of the invention by the patent beneficiary
for two consecutive years.
3. Rejection of the proprietor of the patent to contractually license
the exploitation of the patent which may lead to failure of establishing
or developing industrial or commercial activities in the Sultanate of
Oman.
GREECE – January 2006: Reduction of Officials Fees
The Greek Patent Office has decided to reduce the official fees of the Industrial designs and the Utility Models.
For Industrial Designs, as from 1 January 2006, no annuity is due for the first 5-year period of protection.
For Utility Models, as from 1 January 2006, no annuity is due for the third and fourth year of protection.
ITALY – January 2006: Finance Act 2006 – Abolition of taxes on patents
On 22 December 2005, the Italian Parliament approved among the measures provided for by the Finance Act 2006, the cancellation of government Grant and stamp duties for the filing and maintenance of patents, utility models and industrial models and designs.
Therefore, from 1 January 2006, new applications should be made without paying the filing duties and it will be no longer necessary to provide payment of renewal fees for the maintenance in force of existing rights.
For design registrations, the request for the five-year extension must be filed, even though the payment of the quinquennial tax is not required.
For supplementary protection certificates and trademarks, the payment of taxes has not been abolished.
WIPO – January 2006: 8th Edition of the IPC and PCT Regulations amendments
The
new updated edition of the International Patent Classification (IPC)
has entered into force on 1 January 2006. This is the eight edition
of the IPC. As from that date, all published patent documents should
be classified according to the new edition.
For more information go to www.wipo.int/classifications/ipc/ipc8
Amendments to the Regulations under the Patent Cooperation Treaty (PCT) have been adopted by the Assembly of the PCT Union on 5 October 2005. These amendments will take effect from 1 April 2006.
For
more information go to www.wipo.int/edocs/notdocs/en/pct/treaty_pct_172-annex1.html
In the field of the PCT reform, the member’s states of the PCT
Union have decided to include the Arabic language within the publication
languages of the PCT.
CANADA – February 2006: Time limited window of one year following The Dutch Industries case
On 1 February 2006, the new article 78.6 of the Patent Act (Bill C-29) entered into force in Canada.
This new article provides a one-year time limit to rectify past fees that were incorrectly paid at the small entity level.
According to this new section, for a period starting from 1 February 2006 and ending 1 February 2007, corrective payments for each past instance where an official fee has been mistakenly paid in the amount to a Small Entity will be accepted.
In 2003, the Federal Court of Appeal ruled that entity size is determined once: when the patent application process is first engaged. The Court's decision did not support the prior common understanding that, as the entity changed size, so would the required fee.
The revision of the Patent Act will provide patent holders/applicants with a one-year time limit for the correction of past fee payments in situations where a fee was incorrectly paid at the lower small entity fee level instead of the higher large entity fee level.
MACEDONIA – March 2003: Hague Agreement
The Former Yugoslav Republic of Macedonia has deposited on 22 December 2005, its instrument of accession to the Geneva Act of the Hague Agreement concerning The International Registration of Industrial Designs. This Act will enter into force on 22 March 2006.
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