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Registration of EU Geographical Indications

On November 1st, the Argentine Agroindustry agency issued a resolution in its official Gazette, detailing the institution and registration of Geographical Indications (GI's) and Appellations of Origin (AO's) from the European Union in accordance with ongoing discussions between the EU and MERCOSUR, with the aim of signing a free-trade agreement.  read more 


Software registration - PPH Program with EPO - New Memorandum of Understanding with Chinese Patent Office.

The Brazilian Patent Office recently issued a resolution ruling the new procedures to register software in the country. These rules are already in force and, in a nutshell, (i) institute a completely electronic process (including the acceptance of documents with electronic signature), (ii) implement a so-called hash digital summary which confers a safe way to protect the registered software and (iii) standardize the rates of all software services (reducing most of the official fees).

The EPO and Brazil launched a joint Patent Prosecution Highway (PPH) pilot program to enable work-sharing and accelerate patent prosecution at both offices, with the aim of improving the global IP system, supporting applicants and encouraging innovation.

It will initially run for two years and will entitle applicants, whose claims have been found to be patentable by either the EPO or INPI, to ask for accelerated processing of their corresponding applications, pending before the other office.The Brazilian Patent Office recently issued a resolution regulating the scope of the PPH. It will start December 1st and will be in force for 2 years.

There will be a limit of 300 petitions accepted per year and limited to a patent family first filed in Brazil of the EPO.

The applications have to be within the following technologies: basic chemistry; organic chemistry; fine chemicals; macromolecular chemistry and polymers; medical technology.

Finally, there are certain additional requirements that need to be met:

- Filing must have been published/application must have been disclosed.

- Examination must have been requested.

- A response to an office action in Brazil cannot be pending.

- Annuities must be paid.

- No other priority examination request must have been granted.

- The patent cannot be the object of litigation.

- The application cannot be a divisional one (with one exception: that the divisional comes from the original application, consequence of a lack of unity objection raised by the Office of Earlier Examination).

Similarly, on November 13th, the Brazilian Patent Office and the Chinese Patent Office signed a memorandum of understanding, setting up the basis for a PPH program pursuant to which applicants will be able to seek for an accelerated examination whose Chinese/Brazilian counterpart has been already approved.

The PPH program is expected in the near future and we will keep you posted of any developments. As of today, it is expected to cover the following areas: IT, packaging, measurement and chemistry. In addition, the INPI has recently entered into discussions regarding the institution of Geographical Indications for EU countries.

This has been a point of contention for the Brazilian bloc, but talks are underway as of last week which may bring the additional protection to specification of certain products which are attached to specific European locales.

Some opposition has been noted, specifically in some cases as outlined below:

- GI may conflict with existing plant variety / animal breeds, which would prove impossible to define the origin of the product.

- The GI may conflict with acquired rights, which would cause possible interference.

- The GI may conflict with an identical or similar name already registered or with registration in process for the same product or similar, which would prejudice the decision to purchase by the consumer.

- The GI may conflict with generic name or common use in Brazilian product, necessitating in this case, that the use in good faith and the date of beginning of production must be proven.

  read more 


Vertical Integration of Labs and Bioequivalent Drug Regulations

The Chamber of the Chilean Senate continued to debate the merits and oppositions in the regulation of bioequivalent medicines and their allowance in the marketplace. The aim is to avoid the vertical integration of pharmacies and laboratories, which would be able to dictate quasi monopolistic pricing and to provide medications which have the same therapeutic results, but with a more accessible pricing to the public.   read more 


Amendments to the Single Circular of Intellectual Property of Colombia.

A few months ago, the Superintendent of Industry and Commerce resolved to amend a few regulations of the Single Circular of Intellectual Property of Colombia. We summarize below what we think are some of the main changes:   read more 


Reforming Copyright Intellectual Property Law.

As a consequence of the need to clarify certain procedures related to copyrights in El Salvador, the applicable IP Laws have been amended. Among other things, the process to register an Entity of Collective Management ("Entidad de Gestion Colectiva") has been modified. If the corresponding requirements, which are clearly specified, are not met, the registration is denied.   read more 


Changes to the Guidelines for Examination of European Patent applications.

The EPO published the last revised version of its Guidelines for Examination of Patent applications. This version came into effect on November 1st. Among the different changes, we believe the following are worth mentioning:   read more 


The Second Phase - What you see/hear is what you get.

On October 01, 2017 the second phase of Regulation (EU) 2015/2424 of December 16, 2015 concerning the new rules governing the former Community Trademarks (now European Union Trademarks) became effective. Said new rules refer to practical and technical issues, being the purpose of this notice to focus on practical aspects which may be summarized as follows:

What you see/hear is what you get. One of the main consequences of this statement concerns the graphical representation of a European Union Trademark (hereinafter EUTM) which has opened the possibility to file new type of EUTMs such as:

- Sound marks consisting exclusively of a sound or combination of sounds.

- Motion marks consisting of, or extending to, a movement or a change in the position of the elements of the mark.

- Multimedia marks consisting of, or extending to, the combination of image and sound.

- Hologram marks consisting of elements with holographic characteristics.

The main feature of the above mentioned EUTMs is the possibility to submit MP3 and MP4 files to meet the representation requirement, a possibility not available before October 01, 2017, in addition (now optional) to a graphic representation, for example, a musical notation for sound marks.

Moreover, pure figurative marks have been sub-classified to introduce new types, such as:

- Position marks consisting of the specific way in which the trade mark is placed on or affixed to the product.

- Pattern marks consisting exclusively of a set of elements that are repeated regularly.

- Colour marks consisting exclusively of a single colour without contour or a combination of colours without contours.

- Three dimensional marks have been renamed to read "Shape marks" which may consist either of a strict shape mark (no word elements) or a shape mark containing word elements.

Smell, taste and smell marks are not admitted at present as with the current technical means in hand they cannot be represented on the register properly as to meet the current requirements.

  read more 


Accession to Marrakesh Treaty.

On July 2017, the Foreign Ministry published the ratification of the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled.   read more 


Join Madrid Protocol.

On August 7, 2017, Thailand joined the Madrid Protocol, becoming the 99th Contracting Party. The Protocol entered into force on November 7. Local brand owners in Thailand can begin using the Madrid System to protect their marks in the 114 territories of the System's other 98 members by filing a single international application and paying a single set of fees.   read more 


New Trademark Law Expected shortly.

Myanmar has been working towards its first ever formal trademark law for the past years. Its enactment is expected at the end of this year, which would bring certainty and clarifications on trademark prosecution in the country.   read more 


Adoption of GCC TM Law.

On Monday July 31, 2017, a Royal Decree was published in the Official Gazette formalizing the implementation of the GCC Trademark Law. Oman becomes the fourth member of the Gulf Cooperation Council to implement its Trade Mark Law, after Kuwait, Bahrain and Saudi Arabia (UAE and Qatar have not yet implemented).   read more 


Revision of Examination Guidelines.

On 30 October 2017, the Intellectual Property Office of Singapore (IPOS) published its revised Examination Guidelines.   read more 


Six months with the New Patent Law.

It has already been more than half a year since the new Patent Law in Spain came into force. This allows us to carry out, although with a small sample size, a first balance of the predictions that, in turn, were made about the trend of the requests.  read more 


Amendments to Korean Design Protection Act.

As of September 22nd, Korean Design Protection Act has been amended. Out of the several changes, we believe the following two are of most import:   read more 


Acceptance of sound trademark applications.

On September 1, 2017, the Thai Department of Intellectual Property started accepting applications for sound trademark registration.   read more 


European Patent Validation.

As of December 1, 2017 patents will be validated in Tunisia and thus regarded as national Tunisian patents. Tunisia becomes the third non-EU member state, following Morocco and Moldova, where this is possible. Companies and inventors from all around the world will be able to easily extend the scope of their patent protection to Tunisia.  read more