International progression of Intellectual Property legislation, fee schedules, and co-operations
Ukraine
As of September 16, 2023, a new intellectual property fee schedule entered into effect with respect to IP matters in Ukraine.
As per the amended fee schedule,the newly introduced fee for the filing of an opposition to a patent application constitutes 6,000 UAH. An increase in fees has been seen for the annuities for the certificate of supplementary protection of a patent, with the cost rising by an approximate 27% from 30,000 UAH to 38,000 UAH for years one to five of validity.
The new fee schedule also sees the cost for expanding the term of assigning a new representative and address for correspondence for a foreign person or stateless person, as well as the fee in relation to extending the term of validity of rights to an industrial design, constitute 800 UAH. Also set at a rate of 800 UAH is the fee for the filing of a request to divide an application for an invention, utility model, or requesting changes to an application due to the division of an industrial design application.
Further, the new fee introduced for conducting a search comprises 3,000 UAH, whilst the new fee for the filing of a divisional application for an industrial design is 6,800 UAH.
Set at substantially higher rates in comparison to the aforementioned fees, the cost for invalidating the rights to an invention, utility model, or industrial design before the Chamber of Appeals are implemented as at a rate of 32,000 UAH whilst the fee for including a designation depicting or imitating the official name and/or international letter code of the state of Ukraine in a trademark is set at 24,000 UAH.
The new fee schedule also introduces costs for both the full and partial waiver of rights to an invention or utility model in addition to costs pertaining to the restoration of rights for IP in case of missed terms for payment of fees.
In addition to new fees, and in a further response to the ongoing circumstances in Ukraine, a new extension of time for deadlines surrounding IP matters in the European Union Intellectual Property Office (EUIPO) entered into force. The extension of time for such deadlines extends until November 16, 2023 and encompasses all time limits expiring between September 15, 2023 and November 15, 2023 inclusive.
The time extensions are available to all parties in proceedings before the Office who reside or have a registered office in Ukraine, and are hoped to provide a reasonable opportunity for parties to respond to deadlines and actions before the Office.
Also relating to IP matters in jurisdiction, the EUIPO and the new Ukrainian National Office for Intellectual Property and Innovations (UANIPIO) signed a Memorandum of Understanding (MoU) aiming to solidify Ukraine's IP system and benefit both local and international IP applicants.
Slovenia
IP Law Amendments
Amendments to the Slovenian Industrial Property Act entered into force on July 27, 2023, facilitating the harmonization of national legislation with the European Patent Convention (EPC) and international law in line with the introduction of the Unitary Patent System.
As per the amended legislation, patent applicants may now have their patents entered into the Slovenian Intellectual Property Office (SIPO) Patent Register as a national patent in the event that the EPO does not grant unitary effect for a European Patent (EP) due to formal reasons. As such, the amendments prevent instances of EP's being registered simultaneously as both a Unitary Patent as well as a national patent.
The new law also stipulates additional methods facilitating the maintenance of patent validity for national patents. As such, patent validity can be extended beyond the initial ten-year period through the submission of several written documents which will form the basis of a declaratory decision from the SIPO.
Changes to trademark procedures have also been enforced through the amended legislation. As such, the SIPO will now hear matters in relation to trademark revocation and declaration of invalidity as opposed to the previous method of the District Court hearing such matters. An official fee of 500 EUR for revocation or declarations of invalidity before the SIPO has also been implemented. Pending revocation and declaration of invalidity procedures which were instigated prior to the enforcement of the amended law will be subject to the previous procedures.
Additionally, the new provisions also limit each party in proceedings to filing only two writs each, whereas there was no such limitation prior, and stipulate that evidence which is in a foreign language must be translated into Slovenian.
Further amendments to the law clarify the requirements for proving the reputation of EU trademarks, with the law now expressly stipulating that in order to prove reputation for an EU trademark, reputation should be demonstrated in the EU overall, as opposed to reputation merely in Slovenia.
The amendments to the legislation in Slovenia and subsequent harmonization with EU and international law are set to simplify procedures for IP matters in the country, making them more efficient and cost effective.
Further, as of September 27, 2023, a new provision has reduced the period for requesting an extension of proceedings after missing a deadline, specifically in relation to fulfilling necessary obligations during a rights acquisition process, from six months to just four months. This change may have implications for legal certainty for EP applications, especially if a deadline for national phase entry is missed.
Lastly, it is no longer necessary for Powers of Attorney (POAs) to be provided to representatives in written form.
EPO Agreement
A Working Agreement between the SIPO and the European Patent Organisation has also been signed regarding search co-operation between the two offices.
This Agreement will allow applicants to obtain information in a faster manner with regard to patent granting, enabling national patent applicants to discover whether their invention is patentable within just a few months of filing.
This collaboration between Slovenia and the EPO is set to allow for a more cost effective method for applicants for EPs and international patent applications which have been pre-examined by the European Patent Office.
Jamaica
As of September 30, 2023 the Jamaican Trade Marks (Amendment) Rules, 2022, Resolution was enacted.
Among the most significant changes brought about by the new legislation is the alignment of Jamaican trademark law with the Madrid Protocol. The Madrid Protocol entered into effect with respect to Jamaica on March 27, 2022, allowing for applicants to file a single trademark application with the WIPO for the simultaneous consideration of protection in multiple jurisdictions, streamlining the process.
Another notable amendment is the introduction of an expanded scope of protection for non-traditional trademarks. The previous legislation provided for the protection of traditional marks such as word and picture marks, however the new law introduces the possibility of the registration of other types of marks such as sound, smell, color and holographic marks. Allowing for the registration of non-traditional trademarks in Jamaica will not only assist national trademark applicants but also those filing through the Madrid System for protection in Jamaica.
The newly implemented legislation also allows for brand owners to request the Jamaican Intellectual Property Office (JIPO) conducts pre-filing searches with relation to the registrability of trademarks filed. Previously, such requests could only be submitted on an informal basis.
Other amendments include clarification on the prohibition of the misuse of country names, flags and symbols, misappropriation of local traditional knowledge and traditional cultural expressions in relation to refusal of a trade mark application. Moreover, the JIPO now requires that trademark applicants submit a simply signed, scanned copy of an Authorisation of Agent form in order to appoint a local representative.
A new intellectual property fee schedule has also been implemented with respect to IP matters in Jamaica.
As per the amended fees, the cost for a trademark application in relation to one class now constitutes 13,700 JMD, whilst the fee for the submission of each additional class is now 4,200 JMD. The publication fee now comprises 4,000 JMD.
The fee for trademark renewal of one class is now 19,600 JMD and 4,200 JMD for the renewal of each additional class.
PPH
Several countries have collaborated and formed Patent Prosecution Highway (PPH) Agreements in recent months. November 1, 2023, for example, marked the signing of a PPH between the IP Office of France (INPI) and the IP Office of Morocco (OMPIC), whilst the Saudi Arabia IP Office (SAIP) and the Singapore IP Office (IPOS) signed a PPH just a few months prior.
A PPH Agreement facilitates the acceleration of the patent registration procedure through the co-sharing of patent examination results between IP offices. As such, applicants can file their patent application with the office of first filing, and their examination results will be shared with the office of second filing. Such collaboration means that patent examination will not have to be undertaken in full by both IP offices separately, thus accelerating the time taken for the decision in relation to the granting of a patent.
The PPH agreements introduced between the aforementioned offices represents an ongoing commitment between jurisdictions to collaborate in the IP field on an international level.
Bahrain
The Ministry of Industry and Commerce of Bahrain implemented significant reductions in fees in relation to individual patent applicants as of September 21, 2023.
As such, the fee in relation to the filing of a patent application has decreased by approx. 85% from 270 BHD to 40 BHD, whilst the fee for substantive examination has reduced by approx. 11% from 280 BHD to 250 BHD. The publication and grant fee with regard to a patent now constitutes 50 BHD, dropping by approx. 69% from 160 BHD.
The fee reductions represent an effort to encourage innovation and the filing of IP rights in the country.
Pakistan
Pakistan adopted new legal regulations and an increased IP fee schedule pertaining to the protection of industrial designs.
As per the amendments, the legislation introduces the adoption of the Locarno Classification, inclusive of 32 classes, as opposed to the previous classification which only encompassed 12 classes.
With regard to the obtainment of design rights in the country, in order to procure a design registration certificate, applicants are now required to formally submit a request for the examination process alongside payment of the requisite official fee. Moreover the new regulations have incorporated provisions for electronic filing (e-filing) to streamline the process.
Once granted, all registered designs will now be published and made available for public access in the Patents Journal of Pakistan.
Another key change introduced in the amended law is the introduction of new ways in which a representation of a design can be provided. As such, representations of a design can be submitted in the form of drawings, photographs, three-dimensional models or a combination of all three, in either black and white or color.
Further, applicants are now granted a two-month window from the date of issuance of an examination report to submit their responses. Notably, it is permissible to extend this period for a duration of up to six months, contingent upon the payment of the prescribed fees.
The amended legislation also allows for restoration of lapsed designs owing to non-compliance, so long as an extension is filed with the request and corresponding late fee.
The move to implement new legislation in Pakistan signifies a commitment toward a more contemporary IP system in the country in line with international IP systems.
Austria
Earlier this year the Austrian Patent Office halted the conduction of similarity searches with regard to trademark applications filed on and after June 1, 2023. This step is estimated to expedite the trademark registration process by at least 20%.
The alteration in trademark procedure has been brought about by amendments to the Austrian Patent law and demonstrates a modernisation in the IP field in the country.