Global Intellectual Property co-operations and legislative reforms
Slovakia
As of September 1, 2023, applicants seeking to protect their innovations in Slovakia will be able to utilize a newly introduced official alternative to a provisional patent application in the country.
The filing of a provisional patent application remains unavailable in the jurisdiction, however it has previously been possible for applicants to file incomplete patent applications, even if they do not contain all of the necessary information for registration, in order to secure a date of filing. The applicant could then request extensions of time to provide the necessary information to the IPO.
The introduction of an official alternative route to a provisional patent application means that applicants in Slovakia may now submit an application containing minimal details for the purposes of obtaining a filing date, but will not have to request extensions of time for the submission of further documentation and obtain approval for the same from the IPO. Instead, applicants will have a guaranteed 12-month period to provide further application details and documents, extendable at the applicant’s request, before being required to provide all necessary information.
The newly introduced process may prove more time effective than a fully fledged provisional route provided for by some other jurisdictions, as applicants in Slovakia will not have to submit a non-provisional application for conversion purposes. Further, applications filed in this manner in Slovakia may also be filed in some foreign IP offices.
Argentina
Argentina introduced the possibility of requesting partial revocations of trademark registrations due to lack of use as of June 12, 2023, applicable to both new trademark registrations and renewals.
Prior to the new revocation provisions, using a mark to identify any product or service, even if it belonged to an unrelated class, was sufficient to meet the usage requirement and prevent a revocation action. This, in turn, allowed for the security of registrations for defensive trademarks in classes unrelated to the actual goods or services the trademark is used for.
Following the new provisions, however, partial revocation of a trademark registration is now applicable to goods or services covered by the registration for which the trademark hasn't been utilized within the five years preceding the submission of the revocation request.
It is not possible to revoke a trademark used to identify related or similar products or services, even those included in other classes, or if it is part of a trade name related to the products or services protected by the registration.
The introduction of partial revocation of trademark registrations is hoped to eliminate and mitigate potential issues in relation to trademarks causing consumer confusion with regard to unused marks coexisting with others in the market.
EPO
The "ten-day rule" in relation to communications sent by the European Patent Office (EPO) will be abolished with respect to documents dated November 1, 2023 onwards.
This rule mandates that a notification sent by the EPO through registered mail is considered received by the recipient ten days following the date specified on the sent documents, allowing for a consistent method of establishing a date of receipt of notification for applicants. The rule also mitigated the possibility of potential delays in delivery services, and meant that applicants had a "grace period" of 10 days regardless of whether the document was received earlier than the tenth day.
In light of the organization's efforts to move towards a fully digitalized document delivery system, the ten-day rule will subsequently become obsolete, with official EPO mail sent electronically or by post deemed delivered as of the date printed on the documents. As such, the ten-day rule will not apply to any correspondence dated on or after November 1, 2023.
Abolishing this rule will likely cause an increase in extension requests and further processing requests from attorneys who have not yet updated their systems, or those who may receive late instructions from their clients. Nevertheless, safeguards will be provided for cases where a document is not received at all, or is received more than 7 days after the date printed on the documents.
Qatar
As of August 10, 2023, Qatar officially adopted and enacted the Gulf Cooperation Council Trademark Law.
Several significant amendments have subsequently been enforced regarding trademark registration procedures in the country. Notably, a substantial rise in official fees has been implemented by the introduction of the GCC law, and this increase will have retroactive implications for pending trademark cases currently progressing toward registration. Moreover both the publication and registration fees must be paid within 30 days from the date of receipt of the notification from the trademark office.
Furthermore, the publication period has been shortened from four months to 60 days, which will likely decrease the time expected for the registration of a trademark in the jurisdiction. It is now also possible for applicants to register sound and smell marks, and multiclass trademark applications are now also allowed, subject to approval by the respective registry. These modifications represent a significant shift in trademark registration practices.
The GCC trademark legislation intends to establish a harmonized set of procedural guidelines for trademark applications, registrations, and enforcement across GCC member states. Nevertheless, it does not introduce a centralized registration system, therefore applicants are required to submit trademark applications in each country respectively at the national level if GCC-wide protection is sought.
The adoption of the GCC legislation in Qatar demonstrates a step toward regional cooperation and harmonization of GCC member states.
Brazil
As of August 1, 2023, the Hague Agreement entered into force in Brazil, with the country having deposited its instrument of accession to the 1999 Geneva Act of the Hague Agreement on February 13, 2023. The accession to the same means that Brazil constitutes the 71st Contracting Party to the 1999 Act, the 79th member of the Hague Union, and the 96th country to join and utilize the Hague System.
The Hague System itself allows for the registration of industrial designs in all 96 member states by way of a single “international” application. Applications can be filed through the Brazilian IP office, and one design containing up to 20 variants can be included per application.
The introduction of the Hague System in Brazil comes with the potential to be more cost effective than filing in each national jurisdiction individually, and the use of one filing for all countries also simplifies procedures by removing the need to draft multiple different applications.
Chile
As of August 1, 2023, the IP Office of Chile (INAPI) officially became an International Searching Authority (ISA), as well as an International Preliminary Examining Authority (IPEA) office with respect to applicants in Brazil. As such, Brazilian applicants may now opt to process their patent applications via the Patent Cooperation Treaty (PCT) with the INAPI. The same also applies vice versa, with the Brazilian INPI also able to function as an ISA/IPEA for Chilean or domiciled applicants.
The introduction of the possibility for both Brazil and Chile to act as an ISA or IPEA for one another comes as a result of the signing of a cooperation agreement under the services provided by both offices in their role as International Authorities of the PCT. The cooperation agreement facilitates the mutual designation of both countries to serve as PCT ISA/IPEAs for their respective national applicants.
The mutual agreement further solidifies the strength of the INAPI and INPI in the IP sphere of Latin American, whereby both remain the only two in the region that possess the mark of ISA and IPEA PCT offices.
The Chilean INAPI also signed a Patent Prosecution Highway (PPH) agreement with the European Patent Office (EPO) in July 2023. The PPH is set to provide for an accelerated procedure for the processing of patent applications by way of the mutual exchange of examination findings in relation to patent applications.
A PPH agreement works on the basis that if examination has been undertaken by an Office of Prior Examination, the findings of such examination may be shared with the office of second filing if there is a mutual PPH agreement in place. This, in turn, allows for an expedited patent examination process leading to a shorter registration period for applicants, and the shared workload allows for a lesser burden on the IP offices and their resources.
Furthermore, Chile and the European Patent Office (EPO) signed a cooperation agreement pertaining to the exchange of information, strategy, and effective promotion between both offices. The cooperation is set to be valid for an initial period of 5 years.
The collaboration between Chile and the EPO on both fronts is hoped to contribute to the improvement of the international patent system, in addition to reinforcing the promotion of IP matters and investment within the international field.