On February 10, 2017, Italy became the twelfth country to ratify the Unified Patent Court (“UPC”) Agreement. Initially Italy objected to the UPC, but subsequently decided to become a participating member state for both the UPC and the European Unitary Patent if the UPC comes into effect in December 2017. Both the UK and Germany will need to ratify the UPC Agreement for it to come into force.
USPTO: Changes in requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases: The United States Patent and Trademark Office(USPTO) amends its rules concerning the examination of affidavits or declarations of continued use or excusable nonuse filed pursuant to section 8 of the Trademark Act. Specifically, under the regulations enacted herein, the USPTO may require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in commerce in the United States for all the good/services identified in the registrations, unless excusable nonuse is claimed in whole or in part. The amended rules will allow the USPTO to require additional proof of use to verify the accuracy of claims that a trademark is in use in commerce in connection with particular good/services identified in the registration. Action: Final Rule Effective Dates: This rule was originally to become effective on February 17,2017, but has now been postponed until March 21, 2017. The 60-day delay in the effective date is necessary to give agency officials the opportunity for further review of the issues of law and policy raised by the rule. Fee Changes Under the New Requirements for Section 8 of the Trademark Act: The fee for electronic filing affidavits under Sections 8 increased from $100 to $125 per class under the new fee rule. The fee for filing a paper affidavit under §8 of the Act; increased from $100 to $225 per class under the new fee rule.
The transitional provisions of Antigua’s Trade Marks Act 2003 (‘2003 Act’) will shorten the life of some marks and require renewal by March 1, 2017, regardless of the renewal period in effect at the mark’s grant or last renewal. Potentially affected marks were applied for or last renewed between March 2003 and February 2007. Marks applied for or last renewed in March 2007 or beyond should already be governed by the 2003 Act’s ten-year renewal deadline. The Trade Marks Act 2003 entered into force on March 1, 2007. The 2003 Act replaced two previous acts (one concerning U.K. mark extensions and one concerning local registrations).The 2003 Act preserved marks registered under the Prior Acts but accelerated the next renewal deadline for some of the preserved marks. Previous certificates of registration or renewal may not reflect an accurate renewal date. Pursuant to Section 27 of the 2003 Act, all trademarks registered under one of the Prior Acts must be renewed, at the latest, by March 1, 2017. Consequently, marks registered or renewed under one of the Prior Acts between March 2, 2003 and February 28, 2007, may be due for renewal earlier than previously anticipated. Because the application date governs the renewal date in Antigua & Barbuda, the registrations affected include marks applied for when the Prior Acts were in force but granted after the 2003 Act came into force in 2007. The 2003 Act also provides a six-month grace period for late payment of renewal fees. Renewals of marks originally granted under the Prior Acts will be reclassified according to the Nice Classification system upon renewal. Source: Caribbean IP- USA
A new Law for Trademarks entered into force upon being published in the Official Gazette of January 10, 2017. The Law brings the principles of trademarks, geographical indications, industrial designs, patents and utility models under one roof. These were previously regulated by different decree laws. The Law also restructures the Turkish Patent Institute under the name of the Turkish Patent and Trademark Institute (“Institute”) and introduces very significant amendments to the legislative environment surrounding each type of industrial property. Here are some major changes introduced by the new Laws: TRADEMARKS Colors and sound marks have been included in the definition of signs which may be protected as a trademark. Trademark applications consisting solely of or identically comprising the registered geographical indication will be rejected on absolute grounds at the examination phase by the Institute. Introduction of Consent Letters by which the owner of an earlier trademark may consent to the registration and the use of an identical or similar trademark, later filed for the same or similar goods or services. Opposition Period of 2 months as of Publication Date in the Official Trademark Bulletin Evidence of use for five consecutive years or fair excuse of non-use ( for rights the excuse of non-use period of which are terminated and referred as the bases of a proposed opposition) is to be well grounded if/where requested by the applicant of the contested application. Partial renewal option has been introduced providing the holders the option to renew their trademarks for interested classes only Bad Faith Cited as an Explicit Ground for Opposition and Invalidity PATENTS For patents without examination to grant a term of protection of 7 years is no longer a valid type of protection for claim of inventions. For utility model certificates a statutory novelty search request is now required. Interested third parties now have the right to file opposition against the publication of search report issued for Utility Model Certificates as an effective tool to lead to the rejection of the said right if/where arguments as discussed are attested to be affirmative. Evocative of the opposition procedures following the grant of a European Patent, interested third parties now has the right to file opposition within six months for the rejection of a granted patent as of the date of publication of grant. Annuities are due to be paid as of the third anniversary as of date of actual filing.
Cambodia is set to become the first Asian country to recognize European patents on its territory. The agreement will enter into force once it has been adopted into Cambodian law, tentatively 1st July 2017. Pharmaceutical products will consequently be excluded from the agreement for the duration of the transitional period. “The new validation agreement with Cambodia is positive news for the development of the European patent system,” said EPO President Benoît Battistelli. “It extends its attractiveness beyond the European market and its immediate neighborhood. The recognition of the European patent by an Asian country demonstrates its global impact, also in the context of a least-developed economy.” Cambodia sees this agreement as an incentive for owners of European patents to consider investing in Cambodia, thereby strengthening the country’s economic development. Source: EPO News
Government fees for Renewal (and Use of Patent) within time limit including publication and recordal into National Registry are: $53US for the 1st variation, and $35 for each additional variation from the 2nd. The fees for Trademark Renewals within time limit including examination, use, publication, and recordal into National Registry are: $53 US for the 1st class and $35 for each additional class from the 2nd. Source: tilleke.com
Iran recently announced that a legalized extract from the commercial register is required for new trademark applications and oppositions and must be submitted within 60 days from filing date. A signed copy is required at the time of filing. With respect to renewal applications, a notarized extract from the commercial register is sufficient. Source: SabaIP.com
Pursuant to amending the Patents Law in 2016, the Jordanian Council of Ministers approved the accession of Jordan to the Patent Cooperation Treaty (PCT). Accordingly, the instrument of accession is being prepared by the Ministry of Industry and Trade and Supply and will be signed on behalf of the government of Jordan and submitted at the World Intellectual Property Organization (WIPO). Source: SabaIP.com
A new regulation (no. 818/2016) on Fees for Patents, Trademarks, Designs etc., has been adopted by the Minister of Industries and Commerce entered into force on January 1, 2017. Source: www.els.is/en/new-regulation-fees-patents-trade-marks-and-designs
The London Protocol reduces the translation requirements for a granted European patent upon validation in EPC member states that subscribe to the protocol. A European patent granted in English, French or German will now have the same effect as a Belgium patent without any further translation requirements. The new law will be applicable to European Patents granted on or after January 1, 2017. Patents which were granted before this date will still require a full translation of an English specification in either French, Dutch, or German. Source: www.nlo.eu