Brazil
The Brazilian PTO strengthens its position against ANVISA's issuance of opinions.
The Brazilian PTO strengthens its position against ANVISA's issuance of opinions regarding patentability of applications related to pharmaceutical inventions. Within the frame of a litigation raised by a pharmaceutical company against ANVISA, the Brazilian Patent Office has filed an opinion regarding the role that ANVISA is adopting in the examination of patent applications. read more
The Patent Office states that there is no legal provision supporting the issuance of opinions on patentability by ANVISA and claims for avoiding the "subterfuges" that ANVISA's interpretation imply. The divergent interpretation will most likely be maintained but this opinion reinforces the position of the Brazilian Patent Office against ANVISA's interference in the examination of patent applications.
Colombia
Obligation to pay Examination Fees after every amendment of the claims or spec.
Some important changes recently imposed by the Colombian Patent Office, effective immediately, will impact the procedure of patent applications. The Colombian Patent Office has issued Resolution No.3719 dated February 2, 2016, by means of which it has regulated, (i) divisional and conversion of patent applications (a complete information will follow shortly as the changes need to be further explained) and (ii) the examination of patent applications in process. read more
In relation to this second (ii) issue, when the applicant in its response to the examination of patentability modifies: the claim chapter, the description of the invention or presents a new claim chapter, it is necessary to pay again, the fee for the examination of patentability. Please note that the Patent Office, if deemed necessary, can request up to two (2) new exams and/or office actions. However, the Patent Office will have 18 months from the publication of the patent application and 9 months for utility mode applications to issue the office actions. These changes are effective also to pending prosecution of patent applications.
Guatemala
Approval of Accession to the Trademark Law Treaty and Regulations, signed in Geneva on 1994.
Guatemala has approved the accession to the Trademark Law Treaty (TLT) (1994), administered by the World Intellectual Property Organization which will enter into force on March 31, 2016. The accession is aimed at simplifying the filing of applications and expediting the registration of trademarks. read more
Among other things, it should result in the acceptance of multiclass applications. The TLT will have to be now implemented by the Guatemalan authorities.
Mexico
Implementation of new trademark opposition system.
On April 28th, the Mexican Industrial Property Law was amended to implement the new trademark opposition system which was approved at the end of 2015. read more
These amendments will imply that within 10 business days of receiving a trademark application, it will be published in the Gazette. Anyone interested will be able to file an opposition within 1 month from the publication.
Uruguay
Uruguayan Patent Office is expected a ratification of interest in patent applications.
Based on a resolution issued early this year, the Uruguayan Patent Office is expected to request holders of patent applications filed before 2010 to ratify if they are still interested in pursuing their patent applications. read more
If no reply is filed to this request, patent applications may be considered abandoned.
Venezuela
More convenient current exchange rate.
After increasing substantially the official fees, the Venezuelan Government has now approved a new official currency exchange rate with the US Dollar. As a result of that, the official fees to be paid may enjoy a more convenient exchange, so that payments are decreased. read more
The rate was effective on March 9th and affects payments for trademark renewals, transfers/assignments, licenses, patent and granting fees as well as payments of first annuities.
European Patent Office
Pending enlarged board of appeal decision on partial priority.
In case G1/15, the EPO's Enlarged Board of Appeal is considering the question of whether a patent publication can be cited as prior art against a second application which derives from the same parent. read more
The referral aims at obtaining clarification on the assessment of partial priority as well as regarding the so-called "poisonous divisionals". A decision is expected during 2016.
European Union
Trade Secrets.
The European Parliament voted in favor of the Trade Secrets Directive on April. The Directive pretends to harmonize trade secrets laws across Europe, defying what constitutes trade secret and providing remedies for misappropriation. read more
Once the Directive is adopted and published, it will come into force. EU Member States will have two years to implement it into national law.
Kuwait
PATENTS - Decision to suspend the acceptance of applications. TRADEMARKS - Changes in the prosecution of trademarks.
Pursuant to an unexpected decision, and shortly after Kuwait's Council of Ministers voted and published on March 27, 2016 a new law, Law no. 11/2016, which paves the way for the country's accession to the PCT, the Kuwaiti Patent Office has decided to stop accepting patent applications. read more
All applications will have to be filed before the GCC patent office if protection in Kuwait is desired. In relation to trademarks, substantial procedural changes took effect a few months ago. The following may be highlighted: Opposition period will be of 60 days as of the publication; a legalized Certificate of Incorporation or Extract from the Commercial Registry will have to be submitted with a trademark application; also, renewals, assignments or changes of address/local associate will be published.
Tunisia
Law approving European Patent Validation.
Following the agreement between the EPO and the Tunisian Patent Office, European Patent Validation Law will enter into force in Tunisia once the implementing regulations are issued. read more
After that, European patent applications will allow the designation of Tunisia and eventually for the EP grants to be validated in Tunisia.
China
Announcement to introduce new measures to facilitate the prosecution of Trademarks.
On March 24th, the Chinese Trademark Office announced the introduction of new measures to facilitate the prosecution of trademarks. read more
Some of the measures include (i) the possibility to request the expedition of some administrative procedures in case of emergency (for instance trademark assignment and renewal), (ii) the inclusion of more explanatory content in office actions to help applicants in making amendments, (iii) the possibility to share evidence in multiple connected oppositions or (iv) the extension of the scope of combined examinations on oppositions if the parties involved, marks opposed and the evidence are the same.
India
New guidelines for Computer-related inventions
On February 19th, the Indian Patent Office amended its guidelines to provide clarity for patent examiners and practitioners on patenting computer-related inventions (CRIs). read more
The guidelines, among other things, clarify that: (i) the substance of the invention must be evident outside of subject-matter that is otherwise excluded from patentability; (ii) all components must be fully described and shown; and (iii) any working relationships between components, and the effect of those relationships, must be described.
India
New trademark rules are expected.
The new trademark rules have been published for "Public Comments". These changes bring significant Amendments to current Trademark Rules. read more
It needs to be highlighted that Official Fees may increase substantially (up to 110 per cent), including fees for new trademark application, request for expedited examination, renewal, title update, etc. It is highly recommendable to consider these changes as the new fees are expected to be applicable as soon as the changes are effective.
India
Stay on the abandonment of trademark applications and oppositions.
On March 29th, 2016 the Indian Trademark Registry surprisingly decided to abandon approximately 200,000 applications and 20,000 oppositions. read more
After the confusion that this resolution created in the IP community, the High Court of Delhi issued a stay on all the abandonment orders that have been passed and directed not to undertake further abandonment of any trademark application without following due process provided under the Act. A hearing on May is expecte4d to decide on this matter, which must be followed closely.
Indonesia
Issuance of the implementing regulation for recording license agreements.
Current applicable Law in Indonesia requires that all license agreements regarding IP rights (copyright and related rights, patents, marks, industrial design, integrated-circuit layout design, and trade secrets) are registered for recordation at the Ministry of Law and Human Rights of the Republic of Indonesia. read more
Otherwise, the license agreement will not be opposable to third parties. On February 24th, 2016, the new Regulation setting forth the procedure to record such license agreements have been published. Once recordation has been effective, it is valid for a period of five years after which, a request for recordal will need to be refilled.
Japan
Paris Route applications can be filed in any language / Examination handbook for Product-by-process claims.
As of April 1st, Paris route applications filed in Japan can be filed in any language and then, within 16 months of the priority date, file the Japanese translation. read more
Also, on March 30th, the Japanese Patent Office published a Handbook on the examination of Product-by-process claims which should provide further indications to draft them in a manner acceptable for the Patent Office.
LAOS
License agreements need to be registered locally.
The Lao People's Democratic Republic has notified that the recording of licenses in the International Register of the WIPO shall have no effect in the Lao People's Democratic Republic. read more
Consequently, a license relating to an international registration of a mark shall be recorded in the national Register of the Office of Lao People's Democratic Republic in order to have effect in such country.
South Korea
Amendment of the patent and trademark laws.
As of June 30th, some relevant amendments in the Korean Patent Act will enter into effect. Among others, (i) any interested party can file a cancellation action against a patent application, (ii) the time frame to request examination for patents filed after March 1st, 2017, will be shortened to 3 years from the filing date and (iii) the burden of proof in patent infringement actions will be switched to the alleged infringer, in case they do not produce relevant material or information if requested by the Court. read more
In relation to trademarks, a complete amendment of the Korean Trademark Law will be effective on September 1st, 2016. Changes such as the following are introduced: (i) a less restricted definition of "trademark" is used; (ii) any person (not only the interested ones) may file a cancellation action against a trademark registration; and (iii) a trademark may be rejected if a similar mark exists at the time of the registration (prior, if it had existed at any time before the registration, it could already be basis for an objection).
South Korea - Taiwan
The Taiwan-Korea Electronic Exchange of Priority Documents (PDX) Program launched on January 1, 2016.
Under the PDX program, an applicant who first files an invention or utility model patent application with the TIPO and who subsequently files an application with the KIPO claiming priority of the earlier Taiwan patent application may request the KIPO to adopt electronic priority documents. read more
Such electronic priority documents can replace the paper priority documents. Likewise, an applicant who first files a patent application with the KIPO and later files an application with the TIPO may also claim priority of the earlier Korean application in the same manner. In addition, this PDX program is applicable to applications with priority claims filed within 16 months prior to the launch of this program.
Taiwan
New Guidelines for examination of Design Patents.
In April 2016, amended Guidelines for the substantive examination of design patents are applicable in Taiwan. read more
They have been amended to facilitate the practical implementation of the guidelines and affect, essentially, the interpretation of the disclosure of design drawings.
Vietnam - Japan
Patent Prosecution Highway Pilot Program.
Vietnam launched on April 1st a PPH pilot program with the Japan Patent Office applicable to Vietnamese patent applications (i) claiming priority to a Japanese application under the Paris Convention, (ii) PCT national stage entries in Vietnam of applications filed with the Japanese Patent Office without priority, as well as (iii) applications as indicated in (ii) which claim priority from a PCT application. read more
There may be other applications which may be eligible although requests will not be accepted if the Vietnamese Office has already started examination. The program is intended to be applicable for a period of three years.
Australia
Issuance of new Guidelines for Computer-Implemented inventions.
On February 1st, 2016, the Australian Patent Office released the new guidelines for assessing whether computer-related inventions relate to patentable subject matter. read more
These considerations take into account, among other things, (i) whether the contribution of the claimed invention is technical in nature; (ii) whether the invention solves a technical problem within the computer, (iii) whether the claimed method merely requires generic computer implementation, (iv) whether the computer is merely an intermediary or tool for performing the method or (v) whether the alleged invention lies in the way the method or scheme is carried out in a computer.