Argentina
Two legislative projects addressing ISP's liability and Data Protection.
Over the past months, two relevant drafts of regulations have been issued in
Argentina. The first one addresses IPS's liability and has received preliminary
approval by the Senate. The second is a draft of new data protection bill and has been
posted on the website of the Argentine Data Protection Agency. read more
The first law would
specifically address the liability of Internet Service Providers which, until now, was
only ruled by general Civil law damage principles. The draft, preliminarily approved by
the Senate, would surely provide legal certainty in the area. As it is now, it indicates
that the ISP's would only be liable if they fail to remove content having been required
to do so by a Court, indicating also that ISP's do not have a general obligation to
monitor potential infringements in their platform. The draft on Data Protection is
inspired on the EU General Data Protection Regulation that will come into effect in
2018 and addresses issues such as, among others: the recognition of individuals - not
companies - as data subjects, the introduction of new criteria to determine whether
Argentine law is applicable or rules for international transfers of personal data. The
draft on Data Protection is expected to be sent to the President later this year and
discussed by Congress in 2018.
Brazil
Memorandum of Understanding between Anvisa and INPI - Draft of Guidelines for Chemical patents - Simplified analysis of license agreements.
Brazil has experienced several developments in recent months. Even though some of
them may be seen as merely symbolic or drafts pending approval, all of them show
that things are moving forward in the country to ease and update the prosecution of
patent and trademark applications. read more
On April 12, a Memorandum of Understanding was signed between the BPO (INPI)
and the Brazilian Health Regulatory Agency ("ANVISA"), which intends to address the
problem related to the faculties assigned to ANVISA in the examination process of
pharmaceutical patent applications. In accordance with this MOU, ANVISA would only
be responsible for analyzing aspects related to public health, not related to
patentability criteria.
Also, it is worth noting that the INPI issued a draft of guidelines for patent applications
in the chemical field and is accepting comments until May 16, 2017. The new
guidelines address important issues which, as the draft is right now, are regulated as
follows: chemical compounds defined by its physical, physicochemical or biological
properties are not accepted; product by process claims can only be accepted when
there is no other way to define the compound; the crystalline structure of a polymorph
may be characterized by Single-Crystal X-Ray diffraction although, if this is not
provided, the Powder X-Ray diffraction could be used associated with at least another
identification method; a new use of a known compound defined by its dose,
administration, etc. is not considered as novel, even though new therapeutic activity
of a compound could be patented if in vivo tests are presented. As of today, these
guidelines are only a draft and will be closely monitored to see how the INPI addresses
this important issues. However, we understand they are a good sign showing the
INPI's intention to update its guidelines and provide more legal certainty in a
traditionally conflictive area.
A Normative Instruction has been issued to reduce and simplify the scope of the
examination by the INPI of technology transfer and IP license agreements. The INPI
should now focus, strictly, on formalities applicable to this agreement and not on the
merits of the agreement. In particular, the INPI will no longer examine the payment
clause of IP license agreements and, therefore, they will merely state that they do not
examine if the rules pertaining to tax and foreign exchange control law are meet by
the parties in the agreement.
Finally, as explained in our previous Newsletter, the shock produced by the issuance
of Resolution 174 in relation to the assignment of priority rights has finally cleared up.
In accordance with Resolution 179, which revokes Resolution 174, assignments of
priority documents signed after the filing date of the PCT application are valid and
everything goes back to normal again. The assignment document will still need to be
filed within 60 days of the national entry in Brazil and translated into Portuguese. Also,
if the change of ownership has not been registered yet at the WIPO, a copy of the
assignment needs to be filed upon entering the national phase in Brazil.
The above changes will have to be monitored but we think it is fair to say that they
show that the Brazilian authorities are trying to improve the prosecution of patent and
trademarks in the country.
Chile
New Bill related to personal data and IP strategy to stimulate innovation.
On Monday, March 13, 2017, a bill was sent to the Senate seeking to increase
protection of personal data privacy to fulfill international standards. read more
Should it be
approved by the Senate, the bill will incorporate a series of new principles in this
subject affecting the concept and requisites for consenting the use of personal data,
restricting the automated processing of data, creating a Personal Data Protection
Agency, regulating international data transfer and adopting certain security measures
as well as the requirement to report them. The bill would enter in force 13 months
after its publication, although it sets forth a 4-year period for previously existent
databases to adapt their practices to the new regulations.
The Chilean Patent and Trademark Office (INAPI) recently presented its IP
Development Strategy to stimulate research and development in the country. It
consists, essentially, in a battery of 60 proposals that can be viewed in the following
link: http://www.inapi.cl/portal/publicaciones/608/articles-9870_recurso_1.pdf
The above two developments and the recent creation of the Science and Technology
Ministry demonstrate the commitment of Chile to keep improving an already quite
sophisticated intellectual property system in Latin America.
China
New IP Courts - Reduction of trademark official fees - Amended patent examination guidelines.
After establishing specialized IP Courts in Beijing, Shanghai and Guangzhou, the
Chinese Supreme People's Court has recently approved the establishment of
specialized IP tribunals in the cities of Wuhan, Nanjing, Suzhou and Chengdu, which
have been experiencing a substantial increase in complex IP litigation issues. read more
These new tribunals will have jurisdiction over intellectual property cases and will be formed by judges with substantial experience in this subject.
Also, the Chinese Trade Mark Office announced a reduction of official fees as of 1st
April 2017, including the fees for a trade mark application, renewal, opposition and
fees for most types of recordals.
Finally, the Chinese Patent office (SIPO) has issued its amended Patent Examination
Guidelines, which became effective on 1 April 2017. The amended guidelines bring
several changes and clarifications, in particular in relation to business models and
computer implemented inventions. It also affects the possibility to make allowable
amendments in invalidation proceedings and introduces changes in the suspension of
proceedings before the patent office as a consequence of civil court proceedings.
Egypt
Increase in official fees.
As a consequence of the drastic drop in the value of the local currency, the Egyptian
Patent Office decided to increase the official fees of some patent related services,
including substantive examination fees, read more
with a retroactive effect for all new patent applications filed on or after February 13, 2017.
Japan
PPH programs with Argentina, Brazil and Taiwan.
The Japan Patent Office agreed to start a Patent Prosecution Highway program with
the National Institute of Industrial Property of Brazil (INPI) on April 1, 2017, and with
the Chilean Patent and Trademark Office (INAPI) on August 1, 2017. read more
The agreement with the INPI implies that both sides will accept petitions for two years
or until reaching 200 applications filed with each office. The JPO will accept application
in any technical field; the INPI will accept them in IT and machinery, mainly for
automotive-related technologies.
On March 14, 2017, the JPO and the INAPI held a commissioners meeting in Santiago
and agreed to start the PPH pilot program on August 1, 2017.
Moreover, the JPO and the Patent Office of Argentina should start a PPH pilot program
on April 1, 2017.
As a result of the start of these programs with Brazil, Argentina and Chile, the number
of JPO's partner IP offices overseas under the PPH program comes to 38. The JPO will
release details of the PPH program between Japan and Brazil, Argentina and Chile on
its website upon the start of the respective PPH programs.
Jordan
Accession to the PCT.
The Director General of the World Intellectual Property Organization (WIPO) had the
honor of notifying the deposit by the Government of the Hashemite Kingdom of
Jordan of its instrument of accession to the Patent Cooperation Treaty, read more
which will enter into force with respect to Jordan on June 9, 2017.
Mexico
New criteria on Assignment Documents.
As a consequence of new criteria in the implementations of the rules of procedure, the
Mexican Patent Office is requesting that the certified Inventor Assignments be
stamped with the Apostille of the Hague Convention. read more
This requirement is based in article 9, fraction IX, of the already applicable Regulation of the Intellectual Property Law, which had not been applied in the past. However, this has been recently changed and this provision will be requested from now on in relation to assignment
agreements.
Saudia Arabia
Change in opposition proceedings - Increase in official fees.
As a consequence of the GCC Trademark Law being adopted by Saudi Arabia,
opposition procedure has been adjusted to a purely administrative proceeding. read more
Oppositions may be filed by any interested party within 60 days from last publication
date in the Official Gazette and no proof of use can be requested by the applicant. If
use is to be contested, separate non-use cancellation proceedings must be initiated.
In addition to that, Saudi Arabia has increased again the official fees, in this particular
case those related to the recordal of assignment, license, mortgage, and limitations
of goods, amendment of mark, merger, change of name and change of address.
Singapore
Revised fees for patents and trademarks - PCT applications now accepted in Chinese.
The Intellectual Property Office of Singapore announced that, as of April 1st, new
official fees, Patent filing, search and examination, as well as trademark filing fees are
reduced. However, fees for renewing and maintaining applications are substantially
increased. read more
On another matter, the Intellectual Property Office of Singapore is now accepting
Chinese as a language for PCT applications, becoming the second International
Search Authority (ISA) and International Preliminary Examining Authority (IPEA)
other than the Chinese Patent Office to conduct searches and examinations in
Chinese.
UAE
New law against counterfeiting.
The UAE has approved a new law against commercial fraud and the importation of
counterfeit goods. read more
It is effective immediately from the date of publication and aims at strengthening the ability of intellectual property rights owners to enforce these rights in the UAE. The law defines
counterfeited goods as those "identical to or similar to the legally registered trademark" and increases the penalties for Commercial Fraud Offenses.
Uruguay
Parliament receives bill of law to join the PCT.
After many rumors about the possibility of Argentina and Uruguay starting the process of becoming member states of the PCT, on March 13, 2017, the Presidency of Uruguay sent to Parliament a bill of law to join the PCT. read more
The bill of law supports the adoption of the PCT by Uruguay and the project will now be analyzed and debated by the Parliament. It is not possible to predict if and when would it be approved, but we will monitor it and will inform you of any developments.