Worldwide amendments to intellectual property legislation and systems
Romania
The IPO of Romania implemented amended intellectual property fees as of January 1, 2023. The IP fees of the country are renewed on this date annually, and are calculated at the BNR rate as a result of the RON to EUR exchange rate published by the National Bank of Romania on October 1 of each year.
The implementation of the updated fee schedule was closely followed by the adoption of amendments to the trademark law of Romania, which entered into effect on January 14, 2023. The newly altered legislation contains changes pertaining to the handling of trademark revocation and invalidation applications.
Whilst such applications were previously handled by the Bucharest Tribunal, the parties concerned in such matters can now choose whether to bring an invalidation or revocation action either before the Romanian IPO, or before the court.
Applications for revocation and invalidation are subject to a preliminary examination to confirm the formal requirements, including whether they contain the correct party details, information regarding both the contested trademark and its owner, as well as the legal grounds, relevant goods and services, and substantive arguments alongside supporting evidence.
Defendants will be notified of such applications and granted a period of 30 days to submit a statement of defence, to which the plaintiff may file a counter-response within 10 days. Thereafter, the matter may proceed to the hearings stage.
Decisions relating to revocation and invalidations may be contested before the Bucharest Tribunal within 30 days from notification, and may be further appealed before the Bucharest Court of Appeal.
South Korea
The Intellectual Property Office of South Korea has introduced a patent fee reduction system aimed at assisting small and medium sized-businesses (SMEs) within the country with their intellectual property costs.
A significant 70% cost reduction for SMEs applies to the respective fees in relation to the filing of a patent application, examination, patent registration for the first 3 years, and for a request for trial to confirm the scope of active rights. A generous 50% decrease in fees is also available in relation to costs for applications for joint research results between SMEs and non-SMEs, as well as for patent registration fees for 4 years. In order to make use of the reduced patent fees, businesses are obligated to provide proof of SME status.
Such decreases in fees may prove invaluable to small businesses amidst recent economic uncertainty, and may help to encourage an upsurge of innovation in South Korean markets through more accessible IP protection.
Serbia
The country of Serbia has introduced amendments to certain fees pertaining to intellectual property matters by way of the Law on the Republic Administrative Fees. Said cost alterations entered into force as of December 20, 2022, and are payable to the Serbian Intellectual Property Office.
Amidst some of the most poignant changes, the fee for the filing of a request to enter a European patent into the Serbian IPO Patent Register has increased to 8210 RSD.
Further, the obtainment of a paper copy of a certificate of patent grant is no longer obligatory, however, should rights owners wish, the same may be provided upon the payment of 220 RSD per page. A 7000 RSD fee has also been newly introduced in relation to the issuance of a certificate of patent grant in electronic form, a service which was previously free of charge.
GCC
The Gulf Cooperation Council Patent Office (GCCPO) has provided further information in relation to several amendments to its patent system which were implemented on January 1, 2023.
From the turn of the new year, the GCC Office resumed the acceptance of patent applications submitted via the Paris convention and national, non-PCT routes on behalf of the jurisdictions Bahrain and Kuwait.
Applications filed with the GCCPO should be accompanied by the prescribed official fees, and designate Bahrain and/or Kuwait, with the possibility of the designation of further countries hoped to follow in due course. Upon formality checks and acceptance by the office, the examination fees will be communicated to the applicant's agent for payment. Applications will then be subject to formal and substantive examination by the GCCPO, meaning that the National Patent Offices of Bahrain and Kuwait will not participate in the examination.
Applications granted by the GCCPO will only have legal effect in the jurisdiction of the designated patent office, such as Bahrain and/or Kuwait, and are no longer validated for all member states of the GCC as they would have been previously. The patent certificates will, however, be issued in electronic form and by the local Patent Office of Kuwait or Bahrain.
The GCCPO has also introduced a number of amendments to its schedule of official patent fees. As such, the cost for the filing of a patent application has decreased by 25% from 2000 SAR to 1500 SAR for individuals, and also by 25% from 4000 SAR to 3000 SAR for applications filed by businesses. The fee for an official patent search has, on the other hand, increased significantly, with individuals now paying 1000 SAR as opposed to 100 SAR, and the cost for businesses inflating to 2000 SAR from 200 SAR, comprising a 900% increase.
Saudi Arabia
On December 7, 2022 the Apostille Convention, alongside new regulations pertaining to official documentation, entered into force in the Kingdom of Saudi Arabia has enforced. As of said date, it is no longer obligatory to provide Consular attested documents for certain matters, with Apostilled documentation being accepted from countries that are party to the Convention. Such documentation is likely to be required in relation to intellectual property matters.
UPC
It has recently been announced that the Unitary Patent (UP) and the Unified Patent Court (UPC) have been postponed and are subsequently due to launch simultaneously in June 2023. The system was initially hoped to be in operation by March of this year, with the sunrise period commencing 3 months prior in January 2023.
Once implemented, the UPC sunrise period will provide an opportunity for patent owners to "opt-out" of the UPC system, or exclude their European patents from the scope of UPC litigation, instead opting for such litigation to be conducted in the respective jurisdiction as is the present case.
OAPI
December 15, 2022 marked the accession of the African Intellectual Property Organization (OAPI) to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.
The OAPI now comprises one of only two intergovernmental organizations to join the Lisbon System, and now joins 16 other OAPI members states including Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Côte d’Ivoire, Gabon, Guinea, Guinea Bissau, Equatorial Guinea, Mali, Mauritania, Niger, Senegal and Togo.
Accession to the Geneva Act affords the opportunity for producers of quality products linked directly to its origin to file a single application to the WIPO, accompanied by one set of fees, to obtain protection of designations of their products by way of either appellation of origin, or geographical indication.
The accession of the OAPI to the Geneva Act of the Lisbon Agreement marks a significant step toward a more global and modernized approach to intellectual property protection.
Mauritius
The Republic of Mauritius deposited its instrument of accession to the Patent Cooperation Treaty (PCT) on December 15, 2022, marking the 157th Contracting State to join the Treaty.
The PCT allows applicants to file one "international" patent application, accompanied by the payment of a single set of fees, designating any or all PCT member states for further filing. An international application serves as a basis for further national patent proceedings in the PCT countries of the applicant(s) interest, providing a regional or national route of protection in each member state designated.
The Mauritian Industrial Property Act of 2019, which entered into force in February 2022, already incorporates provisions pertaining to PCT applications, meaning that once the PCT enters into force in respect of Mauritius on March 15, 2023, applicants will be able to designate and enter the national phase in the country.
The accession of Mauritius to the PCT indicates a positive advancement in the modernisation of the intellectual property system of the country, and aligns with international IP standards and cooperation in relation to patent filing and protection.