Weekly Patent Update – Oct 2021 (2 of 3)

“On the 12/10/2021 the Department of Registrar of Companies and Intellectual Property Law of 2021 (N133(I)/2021) was published in the Official Gazette of the Republic of Cyprus, on the basis of which the Department of Registrar of Companies and Official Receiver (DRCOR) is renamed the Department of Registrar of Companies and Intellectual Property (DRCIP), and the Intellectual and Industrial Property Section is renamed, Intellectual Property Section.

The change in the Department’s name was deemed necessary, given the establishment of the Department of Insolvency in 2020 (N68(I)/2020) and the transfer of all competencies, powers and duties of the Official Receiver to the Insolvency Department, but also because of the need for the Department’s name to reflect the entire range of competencies, powers and duties as implemented by the Companies and the Intellectual Property Sections.

It is noted that on the basis of the provisions of section 7(1) of the Law, any reference to, among other things, the Department of Registrar of Companies and Official Receiver in any law, regulation, scheme of service and/or public document which does not relate to the competencies of the Department of Insolvency, should be read as reference to the Department of Registrar of Companies and Intellectual Property.”

“Details

The Department of Registrar of Companies and Intellectual Property Law of 2021 (N133(I)/2021) was published in the Official Gazette of the Republic of Cyprus, on the basis of which the Department of Registrar of Companies and Official Receiver (DRCOR) is renamed the Department of Registrar of Companies and Intellectual Property (DRCIP), and the Intellectual and Industrial Property Section is renamed, Intellectual Property Section.

Registrar of Companies and Intellectual Property Law 133(I)/2021“

“The Bureau of Patents (BOP) has uploaded the most commonly used forms by applicants

and agents to assist them in filing their requests and responses to BOP services and office actions.

“Guided by Director General Rowel S. Barba’s BRIGHT 2020-2025 agenda, particularly raising

the ante for customer service and going back to basics, this is among BOP’s initiative to provide applicant-friendly services by uploading the template forms downloadable from the website which will make it easier to accomplish and submit,” BOP Director Lolibeth R. Medrano explained.

Now downloadable on the IPOPHL website, the fillable PDF request forms allow easy encoding of data and require applicants or agents to provide essential information to clearly communicate to the BOP their requests and responses.

The filled out forms are then uploaded to the eDocFile for Patents together with other relevant attachments. This ensures that only the necessary data is supplied to and received by IPOPHL and that no information is unclear or misrepresented.

The forms are also designed as checklists to guide applicants on what documents to attach to their request or responses. The forms aim to minimize rejections based on lack of requisite submissions and ease client submissions.

Such initiative is an effort to continuously streamline the filing of requests or responses and improve IPOPHL’s services to stakeholders.

The next batch of downloadable forms is being drafted and will be uploaded within the 1st half of 2022.”

“Last Friday, on 15 October 2021, the Slovenian government deposited its instrument of ratification for the Protocol on the Provisional Application of UPC Agreement (PAP-Protocol) and the UPC Agreement itself, bringing the Unified Patent Court one step closer to its launch.

Thanks to the Slovenian ratification and following the recent ratification of the PAP-Protocol by the German government, one last ratification (or expression to be bound) is now necessary in order for the Court to enter the final phase of its set-up.

The deposit of the last remaining ratification of the PAP-Protocol (or expression to be bound) will trigger the start of the period of provisional application (PAP) and therefore the implementation of the UPC as an international organization. During this phase of provisional application, the following will take place, in particular: the adoption of the secondary legislation and the Court’s first budget, the completion of the electronic case management system including stress testing, the process to select and appoint the judges of the Court.”

“Information to help you protect, manage and enforce your intellectual property (IP) rights in Singapore.

This page provides practical information to help you make the most of your IP when doing business in?Singapore.?

If you plan to do business in?Singapore,?or if you are already trading there, it is essential to know how to manage and enforce your IP as private property rights.

British businesses looking for access to intellectual property advice and support should contact our ?South East Asia attaché team, based in the High Commission in Singapore.

The Intellectual Property Office Singapore (IPOS) is the body responsible for operating the patent, industrial design and trade mark system in Singapore.

Trade marks

The Singapore trade mark system is similar to the UK’s. Trade marks protect symbols, colours or other devices used to identify a business’ products or services. A trade mark is valid for ten years, then may be renewed indefinitely for further ten-year periods.

To protect a trade mark in Singapore you can:

Apply direct to IPOS via the IPOS portal or smartphone app IPOS Go.

Make an international trade mark application and select Singapore as a designated country. More information on international trade mark can be found in the protecting your trade mark abroad page.

Good to know

There are no restrictions regarding nationality or residency for trade mark application however, an address in Singapore must be provided in your application.

Patents

Like in the UK, patents for inventions can be protected for up to 20 years in Singapore. All patent rights in Singapore are subject to the payment of annual fees after they’ve been granted.

To protect your innovation with a patent in Singapore you can:

File an application directly to IPOS.

File an international patent application and select Singapore as a designated country. This can reduce the cost and effort of applying for patents in multiple countries. More information on international patents can be found in the protecting your patents abroad page.

File an ASEAN application via ASEAN Patent Examination Co-operation (ASPEC). This can reduce cost and effort of applying for patents in multiple ASEAN countries.

Good to know

Singapore operates a ‘first to file’ principle. If two people apply for a patent on an identical invention, the first one to file the application will be awarded the patent. Singapore does operate grace period where you can register a patent within 12 months of any public disclosure.

There are no restrictions regarding nationality or residency however, an address in Singapore must be provided in your application.

You can file a patent yourself in Singapore but it is recommended that you seek advice from an IP professional.

Designs

In Singapore, design protection initially last for 5 years and can be extended for two consecutive periods i.e. protection can last for a maximum of 15 years.

To protect your design in Singapore you can:

File an application directly to IPOS.

File an international design application and select Singapore as a designated country. This can reduce the cost and effort of applying for designs in multiple countries. More information on international designs can be found in the protecting your designs abroad page.

Good to know

Singapore operates a ‘first to file’ principle. If two people apply for an identical design, the first one to file the application will be awarded the protection. Singapore does operate grace period where you can register a design within 12 months of any public disclosure.

There are no restrictions regarding nationality or residency however, an address in Singapore must be provided in your application.

Copyright

As in the UK, copyright is an automatic right under Singapore law.

Copyright in Singapore protects works that are original and expressed in a tangible form, for example, recorded on tape or written down.

The length of protection varies but generally lasts for 70 years counted from 1 January of the year following the author’s death.

Enforcing your rights

IP enforcement is generally effective in Singapore. If your IP rights are infringed, there are 3 main options for enforcing the. including civil litigation, criminal prosecution, and customs seizures however mediation via legal professionals is often an effective and lower cost option.

Civil litigation can be used for patent, copyright of trade mark infringements only where the remedies can range from damages, injunction of the disposal of infringing goods. IP rights holders can initiate private criminal prosecutions which can result in fines and/or imprisonment.

If you suspect goods infringing your trade mark or copyright are being imported into Singapore, you can notify customs of suspected shipments. If infringing goods are detained, you have 10 days to begin legal proceedings from the date of detention. Businesses will need to be proactive about monitoring for infringing shipments and not rely on notification from customs.

More information

Visit these pages for more information about exporting to Signapore and to report a market access barrier on IP in Singapore.

UK ASEAN Business Council (UKABC) provides awareness on the latest opportunities in the region for UK companies looking to enter markets across Southeast Asia including Singapore.

British Chamber of Commerce in Singapore provide a variety of business advice, services, and support to businesses in Singapore.

The British High Commission Singapore supports UK businesses in Singapore.”

Any sections that have been updated are in bold.

“Who can act as agent?

Any attorney certified by the Liberia Intellectual Property Office (LIPO) and registered by the Legal Bar Association or any IP agent certified by LIPO.”

“Does the Office accept requests for restoration of the right of priority (PCT Rule 49ter.2)?

Yes, the Office applies both the “unintentional” and the “due care” criteria to such requests”

“LR.04 EXAMINATION. The Office will examine or provide for the examination of patent applications as to substance. A request for examination must be filed which is subject to the payment of a fee. The request shall be deemed to have been filed when the examination fee has been paid. Failure to make the request within the prescribed time limit will cause the application to lapse.”

“LR.06 ANNUAL FEES. In order to maintain the patent or the patent application, annual fees must be paid in advance for each year starting one year after the international filing date. The annual maintenance fee shall become due on the eve of each anniversary of the international filing date. A period of grace of six months shall be allowed for the late payment of the annual fee on payment of the prescribed surcharge fee. If an annual fee is not paid, the patent application shall be deemed to have been withdrawn or the patent shall lapse.”

“LR.07 REINSTATEMENT OF RIGHTS. Reinstatement of rights may be requested where the applicant, in spite of due care required by the circumstances having been taken, failed to perform the acts referred to in Article 22(1) or 39(1)(a) within the applicable time limit. Any request for reinstatement of rights, shall be filed in writing within two months of the removal of the cause of non-compliance with the period, but at the latest within six months of expiry of the unobserved time limit. The request for reinstatement of rights shall not be deemed to have been filed until the prescribed fee has been paid. The request shall state the grounds on which it is based and shall set out the facts on which it relies. The omitted act shall be completed within the relevant period for filing the request. ”

“LR.09 RESTORATION OF THE RIGHT OF PRIORITY. Where the international application claims the priority of an earlier application and has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the Office shall, upon request of the applicant and payment of the prescribed fee, restore the right of priority with respect to that international application if the Office finds that the failure to file the international application within the priority period was unintentional or occurred in spite of due care required by the circumstances having been taken. The Office shall not refuse, totally or in part, a request for restoration of the right of priority without giving the applicant the opportunity to make observations on the intended refusal within a time limit, which shall not be less than three months counted from the date of notification.”

“LR.10 APPEALS. The applicant may lodge an appeal against a decision of the Registrar General to the Director General within two months after the date of notification of the decision to him by the Office. No fee is required. ”

“LR.11 UTILITY MODEL. Subject to what is said in paragraph LR.12, if the applicant wishes to obtain a utility model instead of a patent in Liberia on the basis of an international application, he shall so indicate to the office when performing the acts referred to in PCT Article 22 or 39. A utility model certificate shall expire at the end of the 10th year after the date of the grant of the utility model, and shall not be renewable.”

The following update has been machine-translated from Hebrew.

“The public of interns, lawyers and patent attorneys,

In accordance with the decision of the General Assembly of the International Intellectual Property Organization, WIPO, the date of entry into force of the decision of the WIPO Standards Committee on Sequence Listings in International and National Applications in accordance with the new ST.26 standard has been postponed from 1 January 2022 to 1 July 2022.

This and our previous notice in this matter dated 19.4.2021 are attached hereto.”

“As reported in the latest issue of epi Information, the German Federal President recently signed the ratification law of both the UPC Agreement and the Protocol on Provisional Application (“PPA”), which was published in the Federal Law Gazette on 12 August 2021.

On 27 September 2021, Germany deposited its instrument of ratification of the PPA with the General Secretariat of the Council of the European Union (“Council Secretariat”). For the PPA to enter into force, two more Signatory States of the UPC Agreement will need to express their consent to be bound by it (see Art 3(1) PPA). Slovenia is expected to do so shortly. Austria is another plausible candidate in this respect.

As published in the Slovenian Official Gazette on 24 September 2021, the Slovenian Government has issued a regulation ratifying the PPA. As a next step, Slovenia will need to deposit with the Council Secretariat the instrument to express its consent to be bound by the PPA, which is expected to be done soon (see here).

On 7 July 2021, a motion from the Austrian Federal Ministry of European and International Affairs to ratify the PPA was brought before the Nationalrat (lower Chamber of the Austrian Parliament). The Nationalrat assigned the motion to the parliamentary Committee on Research, Innovation and Digitalisation (Ausschuss für Forschung, Innovation und Digitalisierung). It is still pending with this committee. After the committee stage, the Nationalrat will need to approve the motion. Taking into account the further legislative procedure, Austria could be able to ratify the PPA as the thirteenth Signatory State before the end of Q1/2022.

The regularly updated overview on the ratification process, which has been compiled by the epi Litigation Committee, can be consulted here.”

“It is about the adaptation to Circular No. 398, of 2020, which allows establishing the mechanism to give continuity to the judicial system affected by the State of Constitutional Exception.

This Wednesday, October 20, Circular No. 455 was published in the Official Gazette , which seeks to give continuity to the judicial system in INAPI that was interrupted by the effects of the COVID-19 pandemic.

In this way, Circular No. 398 of 2020, implemented during the period of the State of Constitutional Exception, is adapted to Law No. 21,379, which modifies Law No. 21,226.

This new Circular establishes the mechanism to reactivate contentious procedures in the matter of trademarks and patents that have been affected by the health crisis, such as the suspension of evidentiary terms and the holding of pending evidence hearings, among other actions.

Likewise, it specifies that the validity of the rules it contains extend until November 30, 2021. To access Circular No. 455, click on the following link.“

“Bosnia and Herzegovina is moderately prepared in the field of intellectual property rights, according to the European Commission’s annual report on progress in the process of European integration.

In the coming year, Bosnia and Herzegovina is expected to make significant efforts, primarily to improve implementation and coordination. In particular, Bosnia and Herzegovina should implement the strategy on enforcement of intellectual property rights and amend the Law on Patents.

Last year, the BiH Council of Ministers adopted a Decision on the establishment of an Interagency Body for Cooperation in the Field of Acquisition and Enforcement of Intellectual Property Rights in Bosnia and Herzegovina, which will base its work on measures and recommendations given in the Development Strategy of the BiH Institute for Intellectual Property and the Strategy for the Implementation of Intellectual Property Rights in BiH, which is the basis for defining and establishing a comprehensive and efficient system for the enforcement of intellectual property rights in accordance with the requirements of accession to the World Trade Organization (WTO) and the European Union (EU).

Regarding the amendment of the Law on Patents, in the procedure of the Parliamentary Assembly of BiH is the Proposal of the Law on Amendments to the Law on Patents, which was sent by the Council of Ministers of BiH at the proposal of the Institute for Intellectual Property of BiH, which would fully harmonize this law with the current acquis communautaire and fulfil the obligations under the Stabilization and Association Agreement (SAA).

With regard to copyright and neighbouring rights, the legislative framework is largely aligned with the EU acquis. Further alignment is needed, in particular in the area of orphan works and collective rights management. Copyright works and related rights were deposited and registered in the IIP. Six organisations in the country are authorised for the collective management of copyright and related rights, states the EC report.

In the area of industrial property rights, the legislative framework is partially aligned with the EU acquis. Further alignment is needed, in particular for patents, trademarks and trade secrets. Bosnia and Herzegovina has acceded to the relevant multilateral conventions, as required by the SAA, except for the European Patent Convention, for which it still has to adopt relevant amendments to the Law on Patents.

Regarding enforcement, „in the reporting period the Indirect Taxation Authority received only 69 requests for customs measures based on protected trademarks and issued 57 decisions on temporary retention and seizure of goods. The State Investigation and Protection Agency investigated only 36 cases of which 6 were closed while the remaining 30 cases are still under investigation “.

„The administrative and judicial capacity of the enforcement institutions remains insufficient and their cooperation needs to be strengthened. Bosnia and Herzegovina’s strategy on IPR enforcement has yet to be implemented. The country still does not have a reliable system for collecting and analysing data nor for exchanging data between the various enforcement institutions. Steps need to be taken to ensure businesses and consumers are involved in preventing counterfeiting and piracy, including through awareness-raising campaigns, across all enforcement institutions. Prosecutors, judges and court panels handling cases involving intellectual property law need to be more specialised to handle such cases in a more efficient and consistent manner”, the European Commission report said.

European Commission adopted an enlargement package for 2021 on October 19th, giving a detailed assessment of the current situation and progress made by the Western Balkans and Turkey on their path to the European Union, with particular emphasis on implementing fundamental reforms, as well as clear guidelines on forthcoming reform priorities.”

“Do you know JPO’s super-fast-tracked examination?

In addition to the ordinary “accelerated examination” previously introduced on this page (posted on 29 September 2020), the JPO offers the “super accelerated examination,” which allows for more swift prosecution.

Stated differently, applicants have three tracks to choose: regular, fast and super fast.

Applications from overseas are also eligible for the fastest track if they meet two requirements: First, they are filed with both at least one foreign IP Office and the JPO. Second, they are “working-related,” which means that the inventions pertaining to the applications have already been commercialized or are planned to be commercialized within two years.

No additional fees are required. Under this super-fast track, the average FA pendency for FY2020 is 0.9 months, and the total pendency is 2.8 months.

Follow the link below for more information!

• Outline of Super Accelerated Examination
• Accelerated Examination (posted on 29 September 2020)“

The e-mail address for the Directorate General of the Industrial Property Registry (DIGERPI) (Panama) has been updated to:

epct@mici.gob.pa

Any sections that have been updated are in bold.

“GM.08 UTILITY MODEL. Subject to paragraph GM.09, if the applicant wishes to obtain a utility model instead of a patent in Gambia, on the basis of an international application, the applicant, when performing the acts referred to in Article 22 or 39, shall so indicate to the Office. The fees relating to utility models are indicated in Annex GM.I. IPA Sec. 18 

GM.09 CONVERSION OF PATENT APPLICATION INTO UTILITY MODEL APPLICATION. An international application for a patent may be converted into a utility model application and vice-versa at any time before the grant or refusal of a patent, upon payment of the prescribed fee. The converted application will have the filing date of the initial application. An application may not be converted more than once.”